[Title 37 CFR ]
[Code of Federal Regulations (annual edition) - July 1, 1999 Edition]
[From the U.S. Government Printing Office]


          37



          Patents, Trademarks, and Copyrights



[[Page i]]

                         Revised as of July 1, 1999

          CONTAINING
          A CODIFICATION OF DOCUMENTS
          OF GENERAL APPLICABILITY
          AND FUTURE EFFECT

          AS OF JULY 1, 1999
          With Ancillaries
          Published by
          the Office of the Federal Register
          National Archives and Records
          Administration

          as a Special Edition of
          the Federal Register

[[Page ii]]

                                      




                     U.S. GOVERNMENT PRINTING OFFICE
                            WASHINGTON : 1999



               For sale by U.S. Government Printing Office
 Superintendent of Documents, Mail Stop: SSOP, Washington, DC 20402-9328

[[Page iii]]




                            Table of Contents



                                                                    Page
  Explanation.................................................       v

  Title 37:
          Chapter I--Patent and Trademark Office, Department 
          of Commerce                                                3
          Chapter II--Copyright Office, Library of Congress        337
          Chapter IV--Assistant Secretary for Technology 
          Policy, Department of Commerce                           525
          Chapter V--Under Secretary for Technology, 
          Department of Commerce                                   549
  Finding Aids:
    Material Approved for Incorporation by Reference..........     557
    Table of CFR Titles and Chapters..........................     559
    Alphabetical List of Agencies Appearing in the CFR........     577
    List of CFR Sections Affected.............................     587

[[Page iv]]


      


                     ----------------------------

                     Cite this Code:  CFR
                     To cite the regulations in 
                       this volume use title, 
                       part and section number. 
                       Thus, 37 CFR 1.1 refers to 
                       title 37, part 1, section 
                       1.

                     ----------------------------

[[Page v]]



                               EXPLANATION

    The Code of Federal Regulations is a codification of the general and 
permanent rules published in the Federal Register by the Executive 
departments and agencies of the Federal Government. The Code is divided 
into 50 titles which represent broad areas subject to Federal 
regulation. Each title is divided into chapters which usually bear the 
name of the issuing agency. Each chapter is further subdivided into 
parts covering specific regulatory areas.
    Each volume of the Code is revised at least once each calendar year 
and issued on a quarterly basis approximately as follows:

Title 1 through Title 16.................................as of January 1
Title 17 through Title 27..................................as of April 1
Title 28 through Title 41...................................as of July 1
Title 42 through Title 50................................as of October 1

    The appropriate revision date is printed on the cover of each 
volume.

LEGAL STATUS

    The contents of the Federal Register are required to be judicially 
noticed (44 U.S.C. 1507). The Code of Federal Regulations is prima facie 
evidence of the text of the original documents (44 U.S.C. 1510).

HOW TO USE THE CODE OF FEDERAL REGULATIONS

    The Code of Federal Regulations is kept up to date by the individual 
issues of the Federal Register. These two publications must be used 
together to determine the latest version of any given rule.
    To determine whether a Code volume has been amended since its 
revision date (in this case, July 1, 1999), consult the ``List of CFR 
Sections Affected (LSA),'' which is issued monthly, and the ``Cumulative 
List of Parts Affected,'' which appears in the Reader Aids section of 
the daily Federal Register. These two lists will identify the Federal 
Register page number of the latest amendment of any given rule.

EFFECTIVE AND EXPIRATION DATES

    Each volume of the Code contains amendments published in the Federal 
Register since the last revision of that volume of the Code. Source 
citations for the regulations are referred to by volume number and page 
number of the Federal Register and date of publication. Publication 
dates and effective dates are usually not the same and care must be 
exercised by the user in determining the actual effective date. In 
instances where the effective date is beyond the cut-off date for the 
Code a note has been inserted to reflect the future effective date. In 
those instances where a regulation published in the Federal Register 
states a date certain for expiration, an appropriate note will be 
inserted following the text.

OMB CONTROL NUMBERS

    The Paperwork Reduction Act of 1980 (Pub. L. 96-511) requires 
Federal agencies to display an OMB control number with their information 
collection request.

[[Page vi]]

Many agencies have begun publishing numerous OMB control numbers as 
amendments to existing regulations in the CFR. These OMB numbers are 
placed as close as possible to the applicable recordkeeping or reporting 
requirements.

OBSOLETE PROVISIONS

    Provisions that become obsolete before the revision date stated on 
the cover of each volume are not carried. Code users may find the text 
of provisions in effect on a given date in the past by using the 
appropriate numerical list of sections affected. For the period before 
January 1, 1986, consult either the List of CFR Sections Affected, 1949-
1963, 1964-1972, or 1973-1985, published in seven separate volumes. For 
the period beginning January 1, 1986, a ``List of CFR Sections 
Affected'' is published at the end of each CFR volume.

INCORPORATION BY REFERENCE

    What is incorporation by reference? Incorporation by reference was 
established by statute and allows Federal agencies to meet the 
requirement to publish regulations in the Federal Register by referring 
to materials already published elsewhere. For an incorporation to be 
valid, the Director of the Federal Register must approve it. The legal 
effect of incorporation by reference is that the material is treated as 
if it were published in full in the Federal Register (5 U.S.C. 552(a)). 
This material, like any other properly issued regulation, has the force 
of law.
    What is a proper incorporation by reference? The Director of the 
Federal Register will approve an incorporation by reference only when 
the requirements of 1 CFR part 51 are met. Some of the elements on which 
approval is based are:
    (a) The incorporation will substantially reduce the volume of 
material published in the Federal Register.
    (b) The matter incorporated is in fact available to the extent 
necessary to afford fairness and uniformity in the administrative 
process.
    (c) The incorporating document is drafted and submitted for 
publication in accordance with 1 CFR part 51.
    Properly approved incorporations by reference in this volume are 
listed in the Finding Aids at the end of this volume.
    What if the material incorporated by reference cannot be found? If 
you have any problem locating or obtaining a copy of material listed in 
the Finding Aids of this volume as an approved incorporation by 
reference, please contact the agency that issued the regulation 
containing that incorporation. If, after contacting the agency, you find 
the material is not available, please notify the Director of the Federal 
Register, National Archives and Records Administration, Washington DC 
20408, or call (202) 523-4534.

CFR INDEXES AND TABULAR GUIDES

    A subject index to the Code of Federal Regulations is contained in a 
separate volume, revised annually as of January 1, entitled CFR Index 
and Finding Aids. This volume contains the Parallel Table of Statutory 
Authorities and Agency Rules (Table I). A list of CFR titles, chapters, 
and parts and an alphabetical list of agencies publishing in the CFR are 
also included in this volume.
    An index to the text of ``Title 3--The President'' is carried within 
that volume.
    The Federal Register Index is issued monthly in cumulative form. 
This index is based on a consolidation of the ``Contents'' entries in 
the daily Federal Register.
    A List of CFR Sections Affected (LSA) is published monthly, keyed to 
the revision dates of the 50 CFR titles.

[[Page vii]]


REPUBLICATION OF MATERIAL

    There are no restrictions on the republication of material appearing 
in the Code of Federal Regulations.

INQUIRIES

    For a legal interpretation or explanation of any regulation in this 
volume, contact the issuing agency. The issuing agency's name appears at 
the top of odd-numbered pages.
    For inquiries concerning CFR reference assistance, call 202-523-5227 
or write to the Director, Office of the Federal Register, National 
Archives and Records Administration, Washington, DC 20408.

SALES

    The Government Printing Office (GPO) processes all sales and 
distribution of the CFR. For payment by credit card, call 202-512-1800, 
M-F, 8 a.m. to 4 p.m. e.s.t. or fax your order to 202-512-2233, 24 hours 
a day. For payment by check, write to the Superintendent of Documents, 
Attn: New Orders, P.O. Box 371954, Pittsburgh, PA 15250-7954. For GPO 
Customer Service call 202-512-1803.

ELECTRONIC SERVICES

    The full text of the Code of Federal Regulations, The United States 
Government Manual, the Federal Register, Public Laws, Weekly Compilation 
of Presidential Documents and the Privacy Act Compilation are available 
in electronic format at www.access.gpo.gov/nara (``GPO Access''). For 
more information, contact Electronic Information Dissemination Services, 
U.S. Government Printing Office. Phone 202-512-1530, or 888-293-6498 
(toll-free). E-mail, [email protected].
    The Office of the Federal Register also offers a free service on the 
National Archives and Records Administration's (NARA) World Wide Web 
site for public law numbers, Federal Register finding aids, and related 
information. Connect to NARA's web site at www.nara.gov/fedreg. The NARA 
site also contains links to GPO Access.

                              Raymond A. Mosley,
                                    Director,
                          Office of the Federal Register.

July 1, 1999.

[[Page ix]]



                               THIS TITLE

    Title 37--Patents, Trademarks and Copyrights is composed of one 
volume. The contents of this volume represent all current regulations 
codified under this title of the CFR as of July 1, 1999.

    In this revision, the parts in chapter I, subchapter A are regrouped 
according to subject matter. All parts pertaining to patents--parts 1 
and 5--appear sequentially. All parts pertaining to trademarks--parts 2 
and 6--follow, also in sequence. Part 3 which pertains to both patents 
and trademarks follows part 1. Appropriate notes are inserted in the 
text to guide the user.

    For this volume, Cheryl E. Sirofchuck was Chief Editor. The Code of 
Federal Regulations publication program is under the direction of 
Frances D. McDonald, assisted by Alomha S. Morris.

[[Page x]]




[[Page 1]]



             TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS




  --------------------------------------------------------------------
                                                                    Part

chapter i--Patent and Trademark Office, Department of 
  Commerce..................................................           1

chapter ii--Copyright Office, Library of Congress...........         201

chapter iv--Assistant Secretary for Technology Policy, 
  Department of Commerce....................................         401

chapter v--Under Secretary for Technology, Department of 
  Commerce..................................................         501

[[Page 3]]



    CHAPTER I--PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE




  --------------------------------------------------------------------


  Editorial Note: Chapter I--Patent and Trademark Office, Department of 
Commerce, Subchapter A--General, contains patent and trademark 
regulations. Subchapter A has been restructured to allow parts 
pertaining to patent regulations and trademark regulations to be grouped 
separately.

                          SUBCHAPTER A--GENERAL

                                 PATENTS

Part                                                                Page
1               Rules of practice in patent cases...........           5
3               Assignment, recording and rights of assignee         180
4               [Reserved]

5               Secrecy of certain inventions and licenses 
                    to export and file applications in 
                    foreign countries.......................         184
7               [Reserved]

                Index I--Rules relating to patents..........         193

                               TRADEMARKS

2               Rules of practice in trademark cases........         217
4               [Reserved]

6               Classification of goods and services under 
                    the Trademark Act.......................         273
                Index II--Rules relating to trademarks......         277

             PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE

10              Representation of others before the Patent 
                    and Trademark Office....................         296
15-15a          [Reserved]

                Index III--Rules relating to practice before 
                    the Patent and Trademark Office.........         327
            SUBCHAPTER B--GOVERNMENT INVENTIONS JURISDICTION
100-102         [Reserved]

             SUBCHAPTER C--PROTECTION OF FOREIGN MASK WORKS
150             Requests for Presidential proclamations 
                    pursuant to 17 U.S.C. 902(a)(2).........         334


[[Page 5]]



                          SUBCHAPTER A--GENERAL



                                 PATENTS



PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents




                      Subpart A--General Provisions

                 General Information and Correspondence

Sec.
1.1  Addresses for correspondence with the Patent and Trademark Office.
1.2  Business to be transacted in writing.
1.3  Business to be conducted with decorum and courtesy.
1.4  Nature of correspondence and signature requirements.
1.5  Identification of application, patent or registration.
1.6  Receipt of correspondence.
1.7  Times for taking action: Expiration on Saturday, Sunday or Federal 
          holiday.
1.8  Certificate of mailing or transmission.
1.9  Definitions.
1.10  Filing of correspondence by ``Express Mail.''

          Records and Files of the Patent and Trademark Office

1.11  Files open to the public.
1.12  Assignment records open to public inspection.
1.13  Copies and certified copies.
1.14  Patent applications preserved in confidence.
1.15  Requests for identifiable records.

                        Fees and Payment of Money

1.16  National application filing fees.
1.17  Patent application processing fees.
1.18  Patent issue fees.
1.19  Document supply fees.
1.20  Post issuance fees.
1.21  Miscellaneous fees and charges.
1.22  Fees payable in advance.
1.23  Method of payment.
1.24  Coupons.
1.25  Deposit accounts.
1.26  Refunds.
1.27  Statement of status as small entity.
1.28  Effect on fees of failure to establish status, or change status, 
          as a small entity.

                Subpart B--National Processing Provisions

     Prosecution of Application and Appointment of Attorney or Agent

1.31  Applicants may be represented by a registered attorney or agent.
1.32  [Reserved]
1.33  Correspondence respecting patent applications, reexamination 
          proceedings, and other proceedings.
1.34  Recognition for representation.
1.36  Revocation of power of attorney or authorization; withdrawal of 
          attorney or agent.

                       Who May Apply for a Patent

1.41  Applicant for patent.
1.42  When the inventor is dead.
1.43  When the inventor is insane or legally incapacitated.
1.44  Proof of authority.
1.45  Joint inventors.
1.46  Assigned inventions and patents.
1.47  Filing when an inventor refuses to sign or cannot be reached.
1.48  Correction of inventorship in a patent application, other than a 
          reissue application.

                             The Application

1.51  General requisites of an application.
1.52  Language, paper, writing, margins.
1.53  Application number, filing date, and completion of application.
1.54  Parts of application to be filed together; filing receipt.
1.55  Claim for foreign priority.
1.56  Duty to disclose information material to patentability.
1.57  [Reserved]
1.58  Chemical and mathematical formulae and tables.
1.59  Expungement of information or copy of papers in application file.
1.60--162  [Reserved]

                           Oath or Declaration

1.63  Oath or declaration.
1.64  Person making oath or declaration.
1.66  Officers authorized to administer oaths.
1.67  Supplemental oath or declaration.
1.68  Declaration in lieu of oath.
1.69  Foreign language oaths and declarations.
1.70  [Reserved]

                              Specification

1.71  Detailed description and specification of the invention.
1.72  Title and abstract.
1.73  Summary of the invention.
1.74  Reference to drawings.
1.75  Claim(s).
1.77  Arrangement of application elements.
1.78  Claiming benefit of earlier filing date and cross-references to 
          other applications.
1.79  Reservation clauses not permitted.

[[Page 6]]

                              The Drawings

1.81  Drawings required in patent application.
1.83  Content of drawing.
1.84  Standards for drawings.
1.85  Corrections to drawings.
1.88  [Reserved]

                       Models, Exhibits, Specimens

1.91  Models or exhibits not generally admitted as part of application 
          or patent.
1.92  [Reserved]
1.93  Specimens.
1.94  Return of models, exhibits or specimens.
1.95  Copies of exhibits.
1.96  Submission of computer program listings.

                    Information Disclosure Statement

1.97  Filing information disclosure statement.
1.98  Content of information disclosure statement.
1.99  [Reserved]

                       Examination of Applications

1.101  [Reserved]
1.102  Advancement of examination.
1.103  Suspension of action.
1.104  Nature of examination.
1.105--1.109  [Reserved]
1.110  Inventorship and date of invention of the subject matter of 
          individual claims.

              Action by Applicant and Further Consideration

1.111  Reply by applicant or patent owner.
1.112  Reconsideration before final action.
1.113  Final rejection or action.

                               Amendments

1.115  [Reserved]
1.116  Amendments after final action or appeal.
1.117--1.119  [Reserved]
1.121  Manner of making amendments.
1.122--1.124  [Reserved]
1.125  Substitute specification.
1.126  Numbering of claims.
1.127  Petition from refusal to admit amendment.

                         Transitional Provisions

1.129  Transitional procedures for limited examination after final 
          rejection and restriction practice.

                    Affidavits Overcoming Rejections

1.130  Affidavit or declaration to disqualify commonly owned patent as 
          prior art.
1.131  Affidavit or declaration of prior invention to overcome cited 
          patent or publication.
1.132  Affidavits or declarations traversing grounds of rejection.

                               Interviews

1.133  Interviews.

         Time for Reply by Applicant; Abandonment of Application

1.134  Time period for reply to an Office action.
1.135  Abandonment for failure to reply within time period.
1.136  Extensions of time.
1.137  Revival of abandoned application or lapsed patent.
1.138  Express abandonment.
1.139  [Reserved]

          Joinder of Inventions in One Application; Restriction

1.141  Different inventions in one national application.
1.142  Requirement for restriction.
1.143  Reconsideration of requirement.
1.144  Petition from requirement for restriction.
1.145  Subsequent presentation of claims for different invention.
1.146  Election of species.

                             Design Patents

1.151  Rules applicable.
1.152  Design drawings.
1.153  Title, description and claim, oath or declaration.
1.154  Arrangement of application elements.
1.155  Issue of design patents.

                              Plant Patents

1.161  Rules applicable.
1.162  Applicant, oath or declaration.
1.163  Specification and arrangement of application elements.
1.164  Claim.
1.165  Plant drawings.
1.166  Specimens.
1.167  Examination.

                                Reissues

1.171  Application for reissue.
1.172  Applicants, assignees.
1.173  Specification.
1.174  Drawings.
1.175  Reissue oath or declaration.
1.176  Examination of reissue.
1.177  Reissue in divisions.
1.178  Original patent.
1.179  Notice of reissue application.

                Petitions and Action by the Commissioner

1.181  Petition to the Commissioner.
1.182  Questions not specifically provided for.
1.183  Suspension of rules.
1.184  [Reserved]

[[Page 7]]

         Appeal to the Board of Patent Appeals and Interferences

1.191  Appeal to Board of Patent Appeals and Interferences.
1.192  Appellant's brief.
1.193  Examiner's answer and reply brief.
1.194  Oral hearing.
1.195  Affidavits or declarations after appeal.
1.196  Decision by the Board of Patent Appeals and Interferences.
1.197  Action following decision.
1.198  Reopening after decision.

                        Miscellaneous Provisions

1.248  Service of papers; manner of service; proof of service in cases 
          other than interferences.

                   Protests and Public Use Proceedings

1.291  Protests by the public against pending applications.
1.292  Public use proceedings.
1.293  Statutory invention registration.
1.294  Examination of request for publication of a statutory invention 
          registration and patent application to which the request is 
          directed.
1.295  Review of decision finally refusing to publish a statutory 
          invention registration.
1.296  Withdrawal of request for publication of statutory invention 
          registration.
1.297  Publication of statutory invention registration.

        Review of Patent and Trademark Office Decisions by Court

1.301  Appeal to U.S. Court of Appeals for the Federal Circuit.
1.302  Notice of appeal.
1.303  Civil action under 35 U.S.C. 145, 146, 306.
1.304  Time for appeal or civil action.

                      Allowance and Issue of Patent

1.311  Notice of allowance.
1.312  Amendments after allowance.
1.313  Withdrawal from issue.
1.314  Issuance of patent.
1.315  Delivery of patent.
1.316  Application abandoned for failure to pay issue fee.
1.317  Lapsed patents; delayed payment of balance of issue fee.
1.318  [Reserved]

                               Disclaimer

1.321  Statutory disclaimers, including terminal disclaimers.

                     Correction of Errors in Patent

1.322  Certificate of correction of Office mistake.
1.323  Certificate of correction of applicant's mistake.
1.324  Correction of inventorship in patent.
1.325  Other mistakes not corrected.

                           Arbitration Awards

1.331-1.334  [Reserved]
1.335  Filing of notice of arbitration awards.

                           Amendment of Rules

1.351  Amendments to rules will be published.
1.352  [Reserved]

                            Maintenance Fees

1.362  Time for payment of maintenance fees.
1.363  Fee address for maintenance fee purposes.
1.366  Submission of maintenance fees.
1.377  Review of decision refusing to accept and record payment of a 
          maintenence fee filed prior to expiration of patent.
1.378  Acceptance of delayed payment of maintenance fee in expired 
          patent to reinstate patent.

             Subpart C--International Processing Provisions

                           General Information

1.401  Definitions of terms under the Patent Cooperation Treaty.
1.412  The United States Receiving Office.
1.413  The United States International Searching Authority.
1.414  The United States Patent and Trademark Ofice as a Designated 
          Office or Elected Office.
1.415  The International Bureau.
1.416  The United States International Preliminary Examining Authority.
1.419  Display of currently valid control number under the Paperwork 
          Reduction Act.

                Who May File an International Application

1.421  Applicant for international application.
1.422  When the inventor is dead.
1.423  When the inventor is insane or legally incapacitated.
1.424  Joint inventors.
1.425  Filing by other than inventor.

                      The International Application

1.431  International application requirements.
1.432  Designation of States and payment of designation and confirmation 
          fees.
1.433  Physical requirements of international application.
1.434  The request.
1.435  The description.
1.436  The claims.
1.437  The drawings.

[[Page 8]]

1.438  The abstract.

                                  Fees

1.445  International application filing, processing and search fees.
1.446  Refund of international application filing and processing fees.

                                Priority

1.451  The priority claim and priority document in an international 
          application.

                             Representation

1.455  Representation in international applications.

                       Transmittal of Record Copy

1.461  Procedures for transmittal of record copy to the International 
          Bureau.

                                 Timing

1.465  Timing of application processing based on the priority date.
1.468  Delays in meeting time limits.

                               Amendments

1.471  Corrections and amendments during international processing.
1.472  Changes in person, name, or address of applicants and inventors.

                           Unity of Invention

1.475  Unity of invention before the International Searching Authority, 
          the International Preliminary Examining Authority and during 
          the national stage.
1.476  Determination of unity of invention before the International 
          Searching Authority.
1.477  Protest to lack of unity of invention before the International 
          Searching Authority.

                  International Preliminary Examination

1.480  Demand for international preliminary examination.
1.481  Payment of international preliminary examination fees.
1.482  International preliminary examination fees.
1.484  Conduct of international preliminary examination.
1.485  Amendments by applicant during international preliminary 
          examination.
1.488  Determination of unity of invention before the International 
          Preliminary Examining Authority.
1.489  Protest to lack of unity of invention before the International 
          Preliminary Examining Authority.

                             National Stage

1.491  Entry into the national stage.
1.492  National stage fees.
1.494  Entering the national stage in the United States of America as a 
          Designated Office.
1.495  Entering the national stage in the United States of America as an 
          Elected Office.
1.496  Examination of international applications in the national stage.
1.497  Oath or declaration under 35 U.S.C. 371(c)(4).
1.499  Unity of invention during the national stage.

                   Subpart D--Reexamination of Patents

                          Citation of Prior Art

1.501  Citation of prior art in patent files.

                        Request for Reexamination

1.510  Request for reexamination.
1.515  Determination of the request for reexamination.
1.520  Reexamination at the initiative of the Commissioner.

                              Reexamination

1.525  Order to reexamine.
1.530  Statement; amendment by patent owner.
1.535  Reply by requester.
1.540  Consideration of responses.
1.550  Conduct of reexamination proceedings.
1.552  Scope of reexamination in reexamination proceedings.
1.555  Information material to patentability in reexamination 
          proceedings.
1.560  Interviews in reexamination proceedings.
1.565  Concurrent office proceedings.

                               Certificate

1.570  Issuance of reexamination certificate after reexamination 
          proceedings.

                        Subpart E--Interferences

1.601  Scope of rules, definitions.
1.602  Interest in applications and patents involved in an interference.
1.603  Interference between applications; subject matter of the 
          interference.
1.604  Request for interference between applications by an applicant.
1.605  Suggestion of claim to applicant by examiner.
1.606  Interference between an application and a patent; subject matter 
          of the interference.
1.607  Request by applicant for interference with patent.
1.608  Interference between an application and a patent; prima facie 
          showing by applicant.
1.609  Preparation of interference papers by examiner.

[[Page 9]]

1.610  Assignment of interference to administrative patent judge, time 
          period for completing interference.
1.611  Declaration of interference.
1.612  Access to applications.
1.613  Lead attorney, same attorney representing different parties in an 
          interference, withdrawal of attorney or agent.
1.614  Jurisdiction over interference.
1.615  Suspension of ex parte prosecution.
1.616  Sanctions for failure to comply with rules or order or for taking 
          and maintaining a frivolous position.
1.617  Summary judgment against applicant.
1.618  Return of unauthorized papers.
1.621  Preliminary statement, time for filing, notice of filing.
1.622  Preliminary statement, who made invention, where invention made.
1.623  Preliminary statement; invention made in United States, a NAFTA 
          country, or a WTO member country.
1.624  Preliminary statement; invention made in a place other than the 
          United States, a NAFTA country, or a WTO member country.
1.625  Preliminary statement; derivation by an opponent.
1.626  Preliminary statement; earlier application.
1.627  Preliminary statement; sealing before filing, opening of 
          statement.
1.628  Preliminary statement; correction of error.
1.629  Effect of preliminary statement.
1.630  Reliance on earlier application.
1.631  Access to preliminary statement, service of preliminary 
          statement.
1.632  Notice of intent to argue abandonment, suppression, or 
          concealment by opponent.
1.633  Preliminary motions.
1.634  Motion to correct inventorship.
1.635  Miscellaneous motions.
1.636  Motions, time for filing.
1.637  Content of motions.
1.638  Opposition and reply; time for filing opposition and reply.
1.639  Evidence in support of motion, opposition, or reply.
1.640  Motions, hearing and decision, redeclaration of interference, 
          order to show cause.
1.641  Unpatentability discovered by administrative patent judge.
1.642  Addition of application or patent to interference.
1.643  Prosecution of interference by assignee.
1.644  Petitions in interferences.
1.645  Extension of time, late papers, stay of proceedings.
1.646  Service of papers, proof of service.
1.647  Translation of document in foreign language.
1.651  Setting times for discovery and taking testimony, parties 
          entitled to take testimony.
1.652  Judgment for failure to take testimony or file record.
1.653  Record and exhibits.
1.654  Final hearing.
1.655  Matters considered in rendering a final decision.
1.656  Briefs for final hearing.
1.657  Burden of proof as to date of invention.
1.658  Final decision.
1.659  Recommendation.
1.660  Notice of reexamination, reissue, protest, or litigation.
1.661  Termination of interference after judgment.
1.662  Request for entry of adverse judgment; reissue filed by patentee.
1.663  Status of claim of defeated applicant after interference.
1.664  Action after interference.
1.665  Second interference.
1.666  Filing of interference settlement agreements.
1.671  Evidence must comply with rules.
1.672  Manner of taking testimony.
1.673  Notice of examination of witness.
1.674  Persons before whom depositions may be taken.
1.675  Examination of witness, reading and signing transcript of 
          deposition.
1.676  Certification and filing by officer, marking exhibits.
1.677  Form of an affidavit or a transcript of deposition.
1.678  Time for filing transcript of deposition.
1.679  Inspection of transcript.
1.682  Official records and printed publications.
1.683  Testimony in another interference, proceeding, or action.
1.684  [Reserved]
1.685  Errors and irregularities in depositions.
1.687  Additional discovery.
1.688  Use of discovery.
1.690  Arbitration of interferences.

                   Subpart F--Extension of Patent Term

1.701  Extension of patent term due to prosecution delay.
1.710  Patents subject to extension of the patent term.
1.720  Conditions for extension of patent term.
1.730  Applicant for extension of patent term.
1.740  Application for extension of patent term.
1.741  Filing date of application.
1.750  Determination of eligibility for extension of patent term.

[[Page 10]]

1.760  Interim extension of patent term under 35 U.S.C. 156(e)(2).
1.765  Duty of disclosure in patent term extension proceedings.
1.770  Express withdrawal of application for extension of patent term.
1.775  Calculation of patent term extension for a human drug, antibiotic 
          drug or human biological product.
1.776  Calculation of patent term extension for a food additive or color 
          additive.
1.777  Calculation of patent term extension for a medical device.
1.778  Calculation of patent term extension for an animal drug product.
1.779  Calculation of patent term extension for a veterinary biological 
          product.
1.780  Certificate of extension of patent term.
1.785  Multiple applications for extension of term of the same patent or 
          of different patents for the same regulatory review period for 
          a product.
1.790  Interim extension of patent term under 35 U.S.C. 156(d)(5).
1.791  Termination of interim extension granted prior to regulatory 
          approval of a product for commercial marketing or use.

             Subpart G--Biotechnology Invention Disclosures

                     Deposit of Biological Material

1.801  Biological material.
1.802  Need or Opportunity to make a deposit.
1.803  Acceptable depository.
1.804  Time of making an original deposit.
1.805  Replacement or supplement of deposit.
1.806  Term of deposit.
1.807  Viability of deposit.
1.808  Furnishing of samples.
1.809  Examination procedures.

    Application Disclosures Containing Nucleotide and/or Amino Acid 
                                Sequences

1.821  Nucleotide and/or amino acid sequence disclosures in patent 
          applications.
1.822  Symbols and format to be used for nucleotide and/or amino acid 
          sequence data.
1.823  Requirements for nucleotide and/or amino acid sequences as part 
          of the application papers.
1.824  Form and format for nucleotide and/or amino acid sequence 
          submissions in computer readable form.
1.825  Amendments to or replacement of sequence listing and computer 
          readable copy thereof.

Appendix A to Subpart G to Part 1--Sample Sequence Listing

    Authority: 35 U.S.C. 6 and 23, unless otherwise noted.

    Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.

    Editorial Note: In Patent and Trademark Office publications and 
usage the part number is omitted from the numbers of Secs. 1.1 to 1.352 
and the numbers to the right of the decimal point correspond with the 
respective rule numbers.



                      Subpart A--General Provisions

                 General Information and Correspondence



Sec. 1.1  Addresses for correspondence with the Patent and Trademark Office.

    (a) Except for Sec. 1.1(a)(3) (i) and (ii), all correspondence 
intended for the Patent and Trademark Office must be addressed to either 
``Commissioner of Patents and Trademarks, Washington, DC 20231'' or to 
specific areas within the Office as set out in paragraphs (a) (1), (2) 
and (3)(iii) of this section. When appropriate, correspondence should 
also be marked for the attention of a particular office or individual.
    (1) Patent correspondence. All correspondence concerning patent 
matters processed by organizations reporting to the Assistant 
Commissioner for Patents should be addressed to ``Assistant Commissioner 
for Patents, Washington, DC 20231.''
    (2) Trademark correspondence. All correspondence concerning 
trademark matters, except for trademark-related documents sent to the 
Assignment Division for recordation and requests for certified and 
uncertified copies of trademark application and registration documents, 
should be addressed to ``Assistant Commissioner for Trademarks, 2900 
Crystal Drive, Arlington, Virginia 22202-3513.'' This includes 
correspondence intended for the Trademark Trial and Appeal Board.
    (3) Office of Solicitor correspondence. (i) Correspondence relating 
to pending litigation required by court rule or order to be served on 
the Solicitor shall be hand-delivered to the Office of the Solicitor or 
shall be mailed to: Office of the Solicitor, P.O. Box 15667, Arlington, 
Virginia 22215; or such other address as may be designated in writing in 
the litigation. See Secs. 1.302(c) and 2.145(b)(3) for filing a notice 
of appeal

[[Page 11]]

to the U.S. Court of Appeals for the Federal Circuit.
    (ii) Correspondence relating to disciplinary proceedings pending 
before an Administrative Law Judge or the Commissioner shall be mailed 
to: Office of the Solicitor, P.O. Box 16116, Arlington, Virginia 22215.
    (iii) All other correspondence to the Office of the Solicitor shall 
be addressed to: Box 8, Commissioner of Patents and Trademarks, 
Washington, DC 20231.
    (iv) Correspondence improperly addressed to a Post Office Box 
specified in paragraphs (a)(3) (i) and (ii) of this section will not be 
filed elsewhere in the Patent and Trademark Office, and may be returned.
    (b) Letters and other communications relating to international 
applications during the international stage and prior to the assignment 
of a national serial number should be additionally marked ``Box PCT.''
    (c) Requests for reexamination should be additionally marked ``Box 
Reexam.''
    (d) Payments of maintenance fees in patents and other communications 
relating thereto should be additionally marked ``Box M. Fee.''
    (e) Communications relating to interferences and applications or 
patents involved in an interference should be additionally marked ``BOX 
INTERFERENCE.''
    (f) All applications for extension of patent term and any 
communications relating thereto intended for the Patent and Trademark 
Office should be additionally marked ``Box Patent Ext.'' When 
appropriate, the communication should also be marked to the attention of 
a particular individual, as where a decision has been rendered.
    (g) [Reserved]
    (h) In applications under section 1(b) of the Trademark Act, 15 
U.S.C. 1051(b), all statements of use filed under section 1(d) of the 
Act, and requests for extensions of time therefor, should be 
additionally marked ``Box ITU.''
    (i) The filing of all provisional applications and any 
communications relating thereto should be additionally marked ``Box 
Provisional Patent Application.''
    Note: Sections 1.1 to 1.26 are applicable to trademark cases as well 
as to national and international patent cases except for provisions 
specifically directed to patent cases. See Sec. 1.9 for definitions of 
``national application'' and ``international application.''

(Pub. L. 94-131, 89 Stat. 685)

[46 FR 29181, May 29, 1981, as amended at 49 FR 34724, Aug. 31, 1984; 49 
FR 48451, Dec. 12, 1984; 52 FR 9394, Mar. 24, 1987; 53 FR 16413, May 9, 
1988; 54 FR 37588, Sept. 11, 1989; 60 FR 20220, Apr. 25, 1995; 61 FR 
56446, Nov. 1, 1996]



Sec. 1.2  Business to be transacted in writing.

    All business with the Patent and Trademark Office should be 
transacted in writing. The personal attendance of applicants or their 
attorneys or agents at the Patent and Trademark Office is unnecessary. 
The action of the Patent and Trademark Office will be based exclusively 
on the written record in the Office. No attention will be paid to any 
alleged oral promise, stipulation, or understanding in relation to which 
there is disagreement or doubt.



Sec. 1.3  Business to be conducted with decorum and courtesy.

    Applicants and their attorneys or agents are required to conduct 
their business with the Patent and Trademark Office with decorum and 
courtesy. Papers presented in violation of this requirement will be 
submitted to the Commissioner and will be returned by the Commissioner's 
direct order. Complaints against examiners and other employees must be 
made in correspondence separate from other papers.

[61 FR 56446, Nov. 1, 1996]



Sec. 1.4  Nature of correspondence and signature requirements.

    (a) Correspondence with the Patent and Trademark Office comprises:
    (1) Correspondence relating to services and facilities of the 
Office, such as general inquiries, requests for publications supplied by 
the Office, orders for printed copies of patents or trademark 
registrations, orders for copies of records, transmission of assignments 
for recording, and the like, and
    (2) Correspondence in and relating to a particular application or 
other proceeding in the Office. See particularly

[[Page 12]]

the rules relating to the filing, processing, or other proceedings of 
national applications in subpart B, Secs. 1.31 to 1.378; of 
international applications in subpart C, Secs. 1.401 to 1.499; of 
reexamination of patents in subpart D, Secs. 1.501 to 1.570; of 
interferences in subpart E; Secs. 1.601 to 1.690; of extension of patent 
term in subpart F, Secs. 1.710 to 1.785; and of trademark applications 
Secs. 2.11 to 2.189.
    (b) Since each application file should be complete in itself, a 
separate copy of every paper to be filed in an application should be 
furnished for each application to which the paper pertains, even though 
the contents of the papers filed in two or more applications may be 
identical.
    (c) Since different matters may be considered by different branches 
or sections of the Patent and Trademark Office, each distinct subject, 
inquiry or order should be contained in a separate letter to avoid 
confusion and delay in answering letters dealing with different 
subjects.
    (d)(1) Each piece of correspondence, except as provided in 
paragraphs (e) and (f) of this section, filed in a patent or trademark 
application, reexamination proceeding, patent or trademark interference 
proceeding, patent file or trademark registration file, trademark 
opposition proceeding, trademark cancellation proceeding, or trademark 
concurrent use proceeding, which requires a person's signature, must 
either:
    (i) Be an original, that is, have an original signature personally 
signed in permanent ink by that person; or
    (ii) Be a direct or indirect copy, such as a photocopy or facsimile 
transmission (Sec. 1.6(d)), of an original. In the event that a copy of 
the original is filed, the original should be retained as evidence of 
authenticity. If a question of authenticity arises, the Patent and 
Trademark Office may require submission of the original.
    (2) The presentation to the Office (whether by signing, filing, 
submitting, or later advocating) of any paper by a party, whether a 
practitioner or non-practitioner, constitutes a certification under 
Sec. 10.18(b) of this chapter. Violations of Sec. 10.18(b)(2) of this 
chapter by a party, whether a practitioner or non-practitioner, may 
result in the imposition of sanctions under Sec. 10.18(c) of this 
chapter. Any practitioner violating Sec. 10.18(b) may also be subject to 
disciplinary action. See Secs. 10.18(d) and 10.23(c)(15).
    (e) Correspondence requiring a person's signature and relating to 
registration to practice before the Patent and Trademark Office in 
patent cases, enrollment and disciplinary investigations, or 
disciplinary proceedings must be submitted with an original signature 
personally signed in permanent ink by that person.
    (f) When a document that is required by statute to be certified must 
be filed, a copy, including a photocopy or facsimile transmission, of 
the certification is not acceptable.
    (g) An applicant who has not made of record a registered attorney or 
agent may be required to state whether assistance was received in the 
preparation or prosecution of the patent application, for which any 
compensation or consideration was given or charged, and if so, to 
disclose the name or names of the person or persons providing such 
assistance. Assistance includes the preparation for the applicant of the 
specification and amendments or other papers to be filed in the Patent 
and Trademark Office, as well as other assistance in such matters, but 
does not include merely making drawings by draftsmen or stenographic 
services in typing papers.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2707, Jan. 20, 1982; 49 
FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28, 1988; 58 FR 54501, Oct. 
22, 1993; 62 FR 53180, Oct. 10, 1997]



Sec. 1.5  Identification of application, patent or registration.

    (a) No correspondence relating to an application should be filed 
prior to receipt of the application number from the Patent and Trademark 
Office. When a letter directed to the Patent and Trademark Office 
concerns a previously filed application for a patent, it must identify 
on the top page in a conspicuous location, the application number 
(consisting of the series code and the serial number; e.g., 07/123,456),

[[Page 13]]

or the serial number and filing date assigned to that application by the 
Patent and Trademark Office, or the international application number of 
the international application. Any correspondence not containing such 
identification will be returned to the sender where a return address is 
available. The returned correspondence will be accompanied by a cover 
letter which will indicate to the sender that if the returned 
correspondence is resubmitted to the Patent and Trademark Office within 
two weeks of the mailing date on the cover letter, the original date of 
receipt of the correspondence will be considered by the Patent and 
Trademark Office as the date of receipt of the correspondence. 
Applicants may use either the Certificate of Mailing or Transmission 
procedure under Sec. 1.8 or the Express Mail procedure under Sec. 1.10 
for resubmissions of returned correspondence if they desire to have the 
benefit of the date of deposit with the United States Postal Service. If 
the returned correspondence is not resubmitted within the two-week 
period, the date of receipt of the resubmission will be considered to be 
the date of receipt of the correspondence. The two-week period to 
resubmit the returned correspondence will not be extended. In addition 
to the application number, all letters directed to the Patent and 
Trademark Office concerning applications for patents should also state 
the name of the applicant, the title of the invention, the date of 
filing the same, and, if known, the group art unit or other unit within 
the Patent and Trademark Office responsible for considering the letter 
and the name of the examiner or other person to which it has been 
assigned.
    (b) When the letter concerns a patent other than for purposes of 
paying a maintenance fee, it should state the number and date of issue 
of the patent, the name of the patentee, and the title of the invention. 
For letters concerning payment of a maintenance fee in a patent, see the 
provisions of Sec. 1.366(c).
    (c) A letter relating to a trademark application should identify it 
as such and by the name of the applicant and the serial number and 
filing date of the application. A letter relating to a registered 
trademark should identify it by the name of the registrant and by the 
number and date of the certificate.
    (d) A letter relating to a reexamination proceeding should identify 
it as such by the number of the patent undergoing reexamination, the 
reexamination request control number assigned to such proceeding and, if 
known, the group art unit and name of the examiner to which it has been 
assigned.
    (e) When a paper concerns an interference, it should state the names 
of the parties and the number of the interference. The name of the 
examiner-in-chief assigned to the interference (Sec. 1.610) and the name 
of the party filing the paper should appear conspicuously on the first 
page of the paper.
    (f) When a paper concerns a provisional application, it should 
identify the application as such and include the application number.


(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 46 FR 29181, May 29, 1981; 49 
FR 552, Jan. 4, 1984; 49 FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28, 
1988; 58 FR 54501, Oct. 22, 1993;61 FR 42802, Aug. 19, 1996; 61 FR 
56446, Nov. 1, 1996]



Sec. 1.6  Receipt of correspondence.

    (a) Date of receipt and Express Mail date of deposit. Correspondence 
received in the Patent and Trademark Office is stamped with the date of 
receipt except as follows:
    (1) The Patent and Trademark Office is not open for the filing of 
correspondence on any day that is a Saturday, Sunday or Federal holiday 
within the District of Columbia. Except for correspondence transmitted 
by facsimile as provided for in paragraph (a)(3) of this section, no 
correspondence is received in the Patent and Trademark Office on 
Saturdays, Sundays or Federal holidays within the District of Columbia.
    (2) Correspondence filed in accordance with Sec. 1.10 will be 
stamped with the date of deposit as ``Express Mail'' with the United 
States Postal Service.
    (3) Correspondence transmitted by facsimile to the Patent and 
Trademark Office will be stamped with the date on

[[Page 14]]

which the complete transmission is received in the Patent and Trademark 
Office unless that date is a Saturday, Sunday, or Federal holiday within 
the District of Columbia, in which case the date stamped will be the 
next succeeding day which is not a Saturday, Sunday, or Federal holiday 
within the District of Columbia.
    (b) Patent and Trademark Office Post Office pouch. Mail placed in 
the Patent and Trademark Office pouch up to midnight on any day, except 
Saturdays, Sundays and Federal holidays within the District of Columbia, 
by the post office at Washington, DC, serving the Patent and Trademark 
Office, is considered as having been received in the Patent and 
Trademark Office on the day it was so placed in the pouch by the U.S. 
Postal Service.
    (c) Correspondence delivered by hand. In addition to being mailed, 
correspondence may be delivered by hand during hours the Office is open 
to receive correspondence.
    (d) Facsimile transmission. Except in the cases enumerated below, 
correspondence, including authorizations to charge a deposit account, 
may be transmitted by facsimile. The receipt date accorded to the 
correspondence will be the date on which the complete transmission is 
received in the Patent and Trademark Office, unless that date is a 
Saturday, Sunday, or Federal holiday within the District of Columbia. 
See Sec. 1.6(a)(3). To facilitate proper processing, each transmission 
session should be limited to correspondence to be filed in a single 
application or other proceeding before the Patent and Trademark Office. 
The application number of a patent or trademark application, the control 
number of a reexamination proceeding, the interference number of an 
interference proceeding, the patent number of a patent, or the 
registration number of a trademark should be entered as a part of the 
sender's identification on a facsimile cover sheet. Facsimile 
transmissions are not permitted and if submitted, will not be accorded a 
date of receipt, in the following situations:
    (1) Correspondence as specified in Sec. 1.4(e), requiring an 
original signature;
    (2) Certified documents as specified in Sec. 1.4(f);
    (3) Correspondence which cannot receive the benefit of the 
certificate of mailing or transmission as specified in Sec. 1.8(a)(2)(i) 
(A) through (D) and (F), Sec. 1.8(a)(2)(ii)(A), and 
Sec. 1.8(a)(2)(iii)(A), except that a continued prosecution application 
under Sec. 1.53(d) may be transmitted to the Office by facsimile;
    (4) Drawings submitted under Secs. 1.81, 1.83 through 1.85, 1.152, 
1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;
    (5) A request for reexamination under Sec. 1.510;
    (6) Correspondence to be filed in a patent application subject to a 
secrecy order under Secs. 5.1 through 5.5 of this chapter and directly 
related to the secrecy order content of the application;
    (7) Requests for cancellation or amendment of a registration under 
section 7(e) of the Trademark Act, 15 U.S.C. 1057(e); and certificates 
of registration surrendered for cancellation or amendment under section 
7(e) of the Trademark Act, 15 U.S.C. 1057(e);
    (8) Correspondence to be filed with the Trademark Trial and Appeal 
Board, except the notice of ex parte appeal;
    (9) Correspondence to be filed in an interference proceeding which 
consists of a preliminary statement under Sec. 1.621; a transcript of a 
deposition under Sec. 1.676 or of interrogatories, cross-
interrogatories, or recorded answers under Sec. 1.684(c); or an 
evidentiary record and exhibits under Sec. 1.653.
    (e) Interruptions in U.S. Postal Service. If interruptions or 
emergencies in the United States Postal Service which have been so 
designated by the Commissioner occur, the Patent and Trademark Office 
will consider as filed on a particular date in the Office any 
correspondence which is:
    (1) Promptly filed after the ending of the designated interruption 
or emergency; and
    (2) Accompanied by a statement indicating that such correspondence 
would have been filed on that particular date if it were not for the 
designated interruption or emergency in the United States Postal 
Service.
    (f) Facsimile transmission of a patent application under 
Sec. 1.53(d). In the event that the Office has no evidence of receipt of 
an application under Sec. 1.53(d) (a continued prosecution application) 
transmitted to the Office by facsimile

[[Page 15]]

transmission, the party who transmitted the application under 
Sec. 1.53(d) may petition the Commissioner to accord the application 
under Sec. 1.53(d) a filing date as of the date the application under 
Sec. 1.53(d) is shown to have been transmitted to and received in the 
Office,
    (1) Provided that the party who transmitted such application under 
Sec. 1.53(d):
    (i) Informs the Office of the previous transmission of the 
application under Sec. 1.53(d) promptly after becoming aware that the 
Office has no evidence of receipt of the application under Sec. 1.53(d);
    (ii) Supplies an additional copy of the previously transmitted 
application under Sec. 1.53(d); and
    (iii) Includes a statement which attests on a personal knowledge 
basis or to the satisfaction of the Commissioner to the previous 
transmission of the application under Sec. 1.53(d) and is accompanied by 
a copy of the sending unit's report confirming transmission of the 
application under Sec. 1.53(d) or evidence that came into being after 
the complete transmission and within one business day of the complete 
transmission of the application under Sec. 1.53(d).
    (2) The Office may require additional evidence to determine if the 
application under Sec. 1.53(d) was transmitted to and received in the 
Office on the date in question.

[58 FR 54501, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993; 61 FR 56447, 
Nov. 1, 1996; 62 FR 53180, Oct. 10, 1997]



Sec. 1.7  Times for taking action: Expiration on Saturday, Sunday or Federal holiday.

    Whenever periods of time are specified in this part in days, 
calendar days are intended. When the day, or the last day fixed by 
statute or by or under this part for taking any action or paying any fee 
in the Patent and Trademark Office falls on Saturday, Sunday, or on a 
Federal holiday within the District of Columbia, the action may be 
taken, or the fee paid, on the next succeeding day which is not a 
Saturday, Sunday, or a Federal holiday. See Sec. 1.304 for time for 
appeal or for commencing civil action.


(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2707, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983]



Sec. 1.8  Certificate of mailing or transmission.

    (a) Except in the cases enumerated in paragraph (a)(2) of this 
section, correspondence required to be filed in the Patent and Trademark 
Office within a set period of time will be considered as being timely 
filed if the procedure described in this section is followed. The actual 
date of receipt will be used for all other purposes.
    (1) Correspondence will be considered as being timely filed if:
    (i) The correspondence is mailed or transmitted prior to expiration 
of the set period of time by being:
    (A) Addressed as set out in Sec. 1.1(a) and deposited with the U.S. 
Postal Service with sufficient postage as first class mail; or
    (B) Transmitted by facsimile to the Patent and Trademark Office in 
accordance with Sec. 1.6(d); and
    (ii) The correspondence includes a certificate for each piece of 
correspondence stating the date of deposit or transmission. The person 
signing the certificate should have reasonable basis to expect that the 
correspondence would be mailed or transmitted on or before the date 
indicated.
    (2) The procedure described in paragraph (a)(1) of this section does 
not apply to, and no benefit will be given to a Certificate of Mailing 
or Transmission on the following:
    (i) Relative to Patents and Patent Applications--
    (A) The filing of a national patent application specification and 
drawing or other correspondence for the purpose of obtaining an 
application filing date, including a request for a continued prosecution 
application under Sec. 1.53(d);
    (B) The filing of correspondence in an interference which an 
examiner-in-chief orders to be filed by hand or ``Express Mail'';
    (C) The filing of agreements between parties to an interference 
under 35 U.S.C. 135(c);

[[Page 16]]

    (D) The filing of an international application for patent;
    (E) The filing of correspondence in an international application 
before the U.S. Receiving Office, the U.S. International Searching 
Authority, or the U.S. International Preliminary Examining Authority;
    (F) The filing of a copy of the international application and the 
basic national fee necessary to enter the national stage, as specified 
in Sec. 1.494(b) or Sec. 1.495(b).
    (ii) Relative to Trademark Registrations and Trademark 
Applications--
    (A) The filing of a trademark application.
    (B)-(F) [Reserved]
    (iii) Relative to Disciplinary Proceedings--
    (A) Correspondence filed in connection with a disciplinary 
proceeding under part 10 of this chapter.
    (B) [Reserved]
    (b) In the event that correspondence is considered timely filed by 
being mailed or transmitted in accordance with paragraph (a) of this 
section, but not received in the Patent and Trademark Office, and the 
application is held to be abandoned or the proceeding is dismissed, 
terminated, or decided with prejudice, the correspondence will be 
considered timely if the party who forwarded such correspondence:
    (1) Informs the Office of the previous mailing or transmission of 
the correspondence promptly after becoming aware that the Office has no 
evidence of receipt of the correspondence;
    (2) Supplies an additional copy of the previously mailed or 
transmitted correspondence and certificate; and
    (3) Includes a statement which attests on a personal knowledge basis 
or to the satisfaction of the Commissioner to the previous timely 
mailing or transmission. If the correspondence was sent by facsimile 
transmission, a copy of the sending unit's report confirming 
transmission may be used to support this statement.
    (c) The Office may require additional evidence to determine if the 
correspondence was timely filed.

[58 FR 54502, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993, as amended at 61 
FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997]



Sec. 1.9  Definitions.

    (a)(1) A national application as used in this chapter means a U.S. 
application for patent which was either filed in the Office under 35 
U.S.C. 111, or which entered the national stage from an international 
application after compliance with 35 U.S.C. 371.
    (2) A provisional application as used in this chapter means a U.S. 
national application for patent filed in the Office under 35 U.S.C. 
111(b).
    (3) A nonprovisional application as used in this chapter means a 
U.S. national application for patent which was either filed in the 
Office under 35 U.S.C. 111(a), or which entered the national stage from 
an international application after compliance with 35 U.S.C. 371.
    (b) An international application as used in this chapter means an 
international application for patent filed under the Patent Cooperation 
Treaty prior to entering national processing at the Designated Office 
stage.
    (c) An independent inventor as used in this chapter means any 
inventor who (1) has not assigned, granted, conveyed, or licensed, and 
(2) is under no obligation under contract or law to assign, grant, 
convey, or license, any rights in the invention to any person who could 
not likewise be classified as an independent inventor if that person had 
made the invention, or to any concern which would not qualify as a small 
business concern or a nonprofit organization under this section.
    (d) A small business concern as used in this chapter means any 
business concern meeting the size standards set forth in 13 CFR Part 121 
to be eligible for reduced patent fees. Questions related to size 
standards for a small business concern may be directed to: Small 
Business Administration, Size Standards Staff, 409 Third Street, SW, 
Washington, DC 20416.
    (e) A nonprofit organization as used in this chapter means (1) a 
university or other institution of higher education located in any 
country; (2) an organization of the type described in section 501(c)(3) 
of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)(3)) and exempt 
from taxation under section 501(a) of the Internal Revenue

[[Page 17]]

Code (26 U.S.C. 501(a)); (3) any nonprofit scientific or educational 
organization qualified under a nonprofit organization statute of a state 
of this country (35 U.S.C. 201(i)); or (4) any nonprofit organization 
located in a foreign country which would qualify as a nonprofit 
organization under paragraphs (e)(2) or (3) of this section if it were 
located in this country.
    (f) A small entity as used in this chapter means an independent 
inventor, a small business concern, or a non-profit organization 
eligible for reduced patent fees.
    (g) For definitions in interferences see Sec. 1.601.
    (h) A Federal holiday within the District of Columbia as used in 
this chapter means any day, except Saturdays and Sundays, when the 
Patent and Trademark Office is officially closed for business for the 
entire day.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 
1113, 1123)

[43 FR 20461, May 11, 1978, as amended at 47 FR 40139, Sept. 10, 1982; 
47 FR 43275, Sept. 30, 1982; 49 FR 48451, Dec. 12, 1984; 60 FR 20220, 
Apr. 25, 1995; 61 FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997]



Sec. 1.10  Filing of correspondence by ``Express Mail.''

    (a) Any correspondence received by the Patent and Trademark Office 
(Office) that was delivered by the ``Express Mail Post Office to 
Addressee'' service of the United States Postal Service (USPS) will be 
considered filed in the Office on the date of deposit with the USPS. The 
date of deposit with the USPS is shown by the ``date-in'' on the 
``Express Mail'' mailing label or other official USPS notation. If the 
USPS deposit date cannot be determined, the correspondence will be 
accorded the Office receipt date as the filing date. See Sec. 1.6(a).
    (b) Correspondence should be deposited directly with an employee of 
the USPS to ensure that the person depositing the correspondence 
receives a legible copy of the ``Express Mail'' mailing label with the 
``date-in'' clearly marked. Persons dealing indirectly with the 
employees of the USPS (such as by deposit in an ``Express Mail'' drop 
box) do so at the risk of not receiving a copy of the ``Express Mail'' 
mailing label with the desired ``date-in'' clearly marked. The paper(s) 
or fee(s) that constitute the correspondence should also include the 
``Express Mail'' mailing label number thereon. See paragraphs (c), (d) 
and (e) of this section.
    (c) Any person filing correspondence under this section that was 
received by the Office and delivered by the ``Express Mail Post Office 
to Addressee'' service of the USPS, who can show that there is a 
discrepancy between the filing date accorded by the Office to the 
correspondence and the date of deposit as shown by the ``date-in'' on 
the ``Express Mail'' mailing label or other official USPS notation, may 
petition the Commissioner to accord the correspondence a filing date as 
of the ``date-in'' on the ``Express Mail'' mailing label or other 
official USPS notation, provided that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has accorded, or will accord, a filing date other than 
the USPS deposit date;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail;'' and
    (3) The petition includes a true copy of the ``Express Mail'' 
mailing label showing the ``date-in,'' and of any other official 
notation by the USPS relied upon to show the date of deposit.
    (d) Any person filing correspondence under this section that was 
received by the Office and delivered by the ``Express Mail Post Office 
to Addressee'' service of the USPS, who can show that the ``date-in'' on 
the ``Express Mail'' mailing label or other official notation entered by 
the USPS was incorrectly entered or omitted by the USPS, may petition 
the Commissioner to accord the correspondence a filing date as of the 
date the correspondence is shown to have been deposited with the USPS, 
provided that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has accorded, or will accord, a filing date based upon 
an incorrect entry by the USPS;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the

[[Page 18]]

paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail''; and
    (3) The petition includes a showing which establishes, to the 
satisfaction of the Commissioner, that the requested filing date was the 
date the correspondence was deposited in the ``Express Mail Post Office 
to Addressee'' service prior to the last scheduled pickup for that day. 
Any showing pursuant to this paragraph must be corroborated by evidence 
from the USPS or that came into being after deposit and within one 
business day of the deposit of the correspondence in the ``Express Mail 
Post Office to Addressee'' service of the USPS.
    (e) Any person mailing correspondence addressed as set out in 
Sec. 1.1(a) to the Office with sufficient postage utilizing the 
``Express Mail Post Office to Addressee'' service of the USPS but not 
received by the Office, may petition the Commissioner to consider such 
correspondence filed in the Office on the USPS deposit date, provided 
that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has no evidence of receipt of the correspondence;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail'';
    (3) The petition includes a copy of the originally deposited 
paper(s) or fee(s) that constitute the correspondence showing the number 
of the ``Express Mail'' mailing label thereon, a copy of any returned 
postcard receipt, a copy of the ``Express Mail'' mailing label showing 
the ``date-in,'' a copy of any other official notation by the USPS 
relied upon to show the date of deposit, and, if the requested filing 
date is a date other than the ``date-in'' on the ``Express Mail'' 
mailing label or other official notation entered by the USPS, a showing 
pursuant to paragraph (d)(3) of this section that the requested filing 
date was the date the correspondence was deposited in the ``Express Mail 
Post Office to Addressee'' service prior to the last scheduled pickup 
for that day; and
    (4) The petition includes a statement which establishes, to the 
satisfaction of the Commissioner, the original deposit of the 
correspondence and that the copies of the correspondence, the copy of 
the ``Express Mail'' mailing label, the copy of any returned postcard 
receipt, and any official notation entered by the USPS are true copies 
of the originally mailed correspondence, original ``Express Mail'' 
mailing label, returned postcard receipt, and official notation entered 
by the USPS.
    (f) The Office may require additional evidence to determine if the 
correspondence was deposited as ``Express Mail'' with the USPS on the 
date in question.

[61 FR 56447, Nov. 1, 1996 as amended at 62 FR 53181, Oct. 10, 1997]

          Records and Files of the Patent and Trademark Office



Sec. 1.11  Files open to the public.

    (a) After a patent has been issued or a statutory invention 
registration has been published, the specification, drawings and all 
papers relating to the case in the file of the patent or statutory 
invention registration are open to inspection by the public, and copies 
may be obtained upon paying the fee therefor. See Sec. 2.27 for 
trademark files.
    (b) All reissue applications, all applications in which the Office 
has accepted a request to open the complete application to inspection by 
the public, and related papers in the application file, are open to 
inspection by the public, and copies may be furnished upon paying the 
fee therefor. The filing of reissue applications, other than continued 
prosecution applications under Sec. 1.53(d) of reissue applications, 
will be announced in the Official Gazette. The announcement shall 
include at least the filing date, reissue application and original 
patent numbers, title, class and subclass, name of the inventor, name of 
the owner of record, name of the attorney or agent of record, and 
examining group to which the reissue application is assigned.
    (c) All requests for reexamination for which the fee under 
Sec. 1.20(c) has been paid, will be announced in the Official Gazette. 
Any reexaminations at the initiative of the Commissioner pursuant to 
Sec. 1.520 will also be announced in the Official Gazette. The 
announcement

[[Page 19]]

shall include at least the date of the request, if any, the 
reexamination request control number or the Commissioner initiated order 
control number, patent number, title, class and subclass, name of the 
inventor, name of the patent owner of record, and the examining group to 
which the reexamination is assigned.
    (d) All papers or copies thereof relating to a reexamination 
proceeding which have been entered of record in the patent or 
reexamination file are open to inspection by the general public, and 
copies may be furnished upon paying the fee therefor.
    (e) The file of any interference involving a patent, a statutory 
invention registration, a reissue application, or an application on 
which a patent has been issued or which has been published as a 
statutory invention registration, is open to inspection by the public, 
and copies may be obtained upon paying the fee therefor, if:
    (1) The interference has terminated or
    (2) An award of priority or judgment has been entered as to all 
parties and all counts.


(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[46 FR 29181, May 29, 1981, as amended at 47 FR 41272, Sept. 17, 1982; 
50 FR 9378, Mar. 7, 1985; 60 FR 14518, Mar. 17, 1995; 62 FR 53181, Oct. 
10, 1997]



Sec. 1.12  Assignment records open to public inspection.

    (a)(1) Separate assignment records are maintained in the Patent and 
Trademark Office for patents and trademarks. The assignment records, 
relating to original or reissue patents, including digests and indexes, 
for assignments recorded on or after May 1, 1957, and assignment records 
relating to pending or abandoned trademark applications and to trademark 
registrations, for assignments recorded on or after January 1, 1955, are 
open to public inspection at the Patent and Trademark Office, and copies 
of those assignment records may be obtained upon request and payment of 
the fee set forth in Secs. 1.19 and 2.6 of this chapter.
    (2) All records of assignments of patents recorded before May 1, 
1957, and all records of trademark assignments recorded before January 
1, 1955, are maintained by the National Archives and Records 
Administration (NARA). The records are open to public inspection. 
Certified and uncertified copies of those assignment records are 
provided by NARA upon request and payment of the fees required by NARA.
    (b) Assignment records, digests, and indexes, relating to any 
pending or abandoned patent application are not available to the public. 
Copies of any such assignment records and information with respect 
thereto shall be obtainable only upon written authority of the applicant 
or applicant's assignee or attorney or agent or upon a showing that the 
person seeking such information is a bona fide prospective or actual 
purchaser, mortgagee, or licensee of such application, unless it shall 
be necessary to the proper conduct of business before the Office or as 
provided by these rules.
    (c) Any request by a member of the public seeking copies of any 
assignment records of any pending or abandoned patent application 
preserved in confidence under Sec. 1.14, or any information with respect 
thereto, must:
    (1) Be in the form of a petition accompanied by the petition fee set 
forth in Sec. 1.17(i); or
    (2) Include written authority granting access to the member of the 
public to the particular assignment records from the applicant or 
applicant's assignee or attorney or agent of record.
    (d) An order for a copy of an assignment or other document should 
identify the reel and frame number where the assignment or document is 
recorded. If a document is identified without specifying its correct 
reel and frame, an extra charge as set forth in Sec. 1.21(j) will be 
made for the time consumed in making a search for such assignment.


(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[47 FR 41272, Sept. 17, 1982, as amended at 54 FR 6900, Feb. 15, 1989; 
56 FR 65151, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991; 57 FR 29641, 
July 6, 1992; 60 FR 20221, Apr. 25, 1995; 61 FR 42802, Aug. 19, 1996]



Sec. 1.13  Copies and certified copies.

    (a) Non-certified copies of patents and trademark registrations and 
of any

[[Page 20]]

records, books, papers, or drawings within the jurisdiction of the 
Patent and Trademark Office and open to the public, will be furnished by 
the Patent and Trademark Office to any person, and copies of other 
records or papers will be furnished to persons entitled thereto, upon 
payment of the fee therefor.
    (b) Certified copies of the patents and trademark registrations and 
of any records, books, papers, or drawings within the jurisdiction of 
the Patent and Trademark Office and open to the public or persons 
entitled thereto will be authenticated by the seal of the Patent and 
Trademark Office and certified by the Commissioner, or in his name 
attested by an officer of the Patent and Trademark Office authorized by 
the Commissioner, upon payment of the fee for the certified copy.

[58 FR 54508, Oct. 22, 1993]



Sec. 1.14  Patent applications preserved in confidence.

    (a) Patent applications are generally preserved in confidence 
pursuant to 35 U.S.C. 122. No information will be given concerning the 
filing, pendency, or subject matter of any application for patent, and 
no access will be given to, or copies furnished of, any application or 
papers relating thereto, except as set forth in this section.
    (1) Status information includes information such as whether the 
application is pending, abandoned, or patented, as well as the 
application number and filing date (or international filing date or date 
of entry into the national stage).
    (i) Status information concerning an application may be supplied:
    (A) When copies of, or access to, the application may be provided 
pursuant to paragraph (a)(3) of this section;
    (B) When the application is identified by application number or 
serial number and filing date in a published patent document or in a 
U.S. application open to public inspection; or
    (C) When the application is the national stage of an international 
application in which the United States of America has been indicated as 
a Designated State.
    (ii) Status information concerning an application may also be 
supplied when the application claims the benefit of the filing date of 
an application for which status information may be provided pursuant to 
paragraph (a)(1)(i) of this section.
    (2) Copies of an application-as-filed may be provided to any person, 
upon written request accompanied by the fee set forth in 
Sec. 1.19(b)(1), without notice to the applicant, if the application is 
incorporated by reference in a U.S. patent.
    (3) Copies of (upon payment of the fee set forth in 
Sec. 1.19(b)(2)), and access to, an application file wrapper and 
contents may be provided to any person, upon written request, without 
notice to the applicant, when the application file is available and:
    (i) It has been determined by the Commissioner to be necessary for 
the proper conduct of business before the Office or warranted by other 
special circumstances;
    (ii) The application is open to the public as provided in 
Sec. 1.11(b);
    (iii) Written authority in that application from the applicant, the 
assignee of the application, or the attorney or agent of record has been 
granted; or
    (iv) The application is abandoned, but not if the application is in 
the file jacket of a pending application under Sec. 1.53(d), and is:
    (A) Referred to in a U.S. patent;
    (B) Referred to in a U.S. application open to public inspection;
    (C) An application which claims the benefit of the filing date of a 
U.S. application open to public inspection; or
    (D) An application in which the applicant has filed an authorization 
to lay open the complete application to the public.
    (b) Complete applications (Sec. 1.51(a)) which are abandoned may be 
destroyed and hence may not be available for access or copies as 
permitted by paragraph (a)(3)(iv) of this section after 20 years from 
their filing date, except those to which particular attention has been 
called and which have been marked for preservation.
    (c) Applications for patents which disclose, or which appear to 
disclose, or which purport to disclose, inventions or discoveries 
relating to atomic energy are reported to the Department of Energy, 
which Department will be given access to such applications, but

[[Page 21]]

such reporting does not constitute a determination that the subject 
matter of each application so reported is in fact useful or an invention 
or discovery or that such application in fact discloses subject matter 
in categories specified by sections 151(c) and 151(d) of the Atomic 
Energy Act of 1954, 68 Stat. 919; 42 U.S.C. 2181 (c) and (d).
    (d) Any decision of the Board of Patent Appeals and Interferences, 
or any decision of the Commissioner on petition, not otherwise open to 
public inspection shall be published or made available for public 
inspection if:
    (1) The Commissioner believes the decision involves an 
interpretation of patent laws or regulations that would be of important 
precedent value; and
    (2) The applicant, or any party involved in the interference, does 
not within one month after being notified of the intention to make the 
decision public, object in writing on the ground that the decision 
discloses a trade secret or other confidential information.

If a decision discloses such information, the applicant or party shall 
identify the deletions in the text of the decision considered necessary 
to protect the information. If it is considered the entire decision must 
be withheld from the public to protect such information, the applicant 
or party must explain why. Applicants or parties will be given time, not 
less than twenty days, to request reconsideration and seek court review 
before any portions of decisions are made public over their objection. 
See Sec. 2.27 for trademark applications.
    (e) Any request by a member of the public seeking access to, or 
copies of, any pending or abandoned application preserved in confidence 
pursuant to paragraph (a) of this section, or any papers relating 
thereto, must:
    (1) Be in the form of a petition and be accompanied by the petition 
fee set forth in Sec. 1.17(i); or
    (2) Include written authority granting access to the member of the 
public in that particular application from the applicant or the 
applicant's assignee or attorney or agent of record.
    (f) Information as to the filing of an application will be published 
in the Official Gazette in accordance with Sec. 1.47(a) and (b).
    (g) Copies of an application file for which the United States acted 
as the International Preliminary Examining Authority, or copies of a 
document in such an application file, will be furnished in accordance 
with Patent Cooperation Treaty (PCT) Rule 94.2 or 94.3, upon payment of 
the appropriate fee (Sec. 1.19(b)(2) or Sec. 1.19(b)(3)).
    Note: See Sec. 1.612(a) for access by an interference party to a 
pending or abandoned application.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 
1113, 1123)

[42 FR 5593, Jan. 28, 1977, as amended at 43 FR 20462, May 11, 1978; 49 
FR 48451, Dec. 12, 1984; 50 FR 9378, Mar. 7, 1985; 54 FR 6900, Feb. 15, 
1989; 56 FR 55461, Oct. 28, 1991; 58 FR 54509, Oct. 22, 1993; 60 FR 
20221, Apr. 25, 1995; 61 FR 42802, Aug. 19, 1996; 62 FR 53182, Oct. 10, 
1997; 63 FR 29617, June 1, 1998]



Sec. 1.15  Requests for identifiable records.

    (a) Requests for records, not disclosed to the public as part of the 
regular informational activity of the Patent and Trademark Office and 
which are not otherwise dealt with in the rules in this part, shall be 
made in writing, with the envelope and the letter clearly marked 
``Freedom of Information Request.'' Each such request, so marked, should 
be submitted by mail addressed to the ``Patent and Trademark Office, 
Freedom of Information Request Control Desk, Box 8, Washington, DC 
20231,'' or hand delivered to the Office of the Solicitor, Patent and 
Trademark Office, Arlington, Virginia. The request will be processed in 
accordance with the procedures set forth in part 4 of title 15, Code of 
Federal Regulations.
    (b) Any person whose request for records has been initially denied 
in whole or in part, or has not been timely determined, may submit a 
written appeal as provided in Sec. 4.8 of title 15, Code of Federal 
Regulations.
    (c) Procedures applicable in the event of service of process or in 
connection with testimony of employees on official matters and 
production of official documents of the Patent and Trademark Office in 
civil legal proceedings not involving the United States shall

[[Page 22]]

be those established in parts 15 and 15a of title 15, Code of Federal 
Regulations.

[53 FR 47686, Nov. 25, 1988]

                        Fees and Payment of Money



Sec. 1.16  National application filing fees.

    (a) Basic fee for filing each application for an original patent, 
except provisional, design or plant applications:

By a small entity (Sec. 1.9(f))--$380.00
By other than a small entity--$760.00

    (b) In addition to the basic filing fee in an original application, 
except provisional applications, for filing or later presentation of 
each independent claim in excess of 3:

By a small entity (Sec. 1.9(f))--$39.00
By other than a small entity--$78.00

    (c) In addition to the basic filing fee in an original application, 
except provisional applications, for filing or later presentation of 
each claim in excess of 20 (Note that Sec. 1.75(c) indicates how 
multiple dependent claims are considered for fee purposes.):

By a small entity (Sec. 1.9(f))--$9.00
By other than a small entity--$18.00

    (d) In addition to the basic filing fee in an original application, 
except provisional applications, if the application contains, or is 
amended to contain, a multiple dependent claim(s), per application:

By a small entity (Sec. 1.9(f))--$130.00
By other than a small entity--$260.00

    (e) Surcharge for filing the basic filing fee or oath or declaration 
on a date later than the filing date of the application, except 
provisional applications:
By a small entity (Sec. 1.9(f))...................................$65.00
By other than a small entity.....................................$130.00
    (f) Basic fee for filing each design application:
By a small entity (Sec. 1.9(f))--$155.00
By other than a small entity--$310.00
    (g) Basic fee for filing each plant application, except provisional 
applications:
By a small entity (Sec. 1.9(f))--$240.00
By other than a small entity--$480.00
    (h) Basic fee for filing each reissue application:
By a small entity (Sec. 1.9(f))--$380.00
By other than a small entity--$760.00
    (i) In addition to the basic filing fee in a reissue application, 
for filing or later presentation of each independent claim which is in 
excess of the number of independent claims in the original patent:
By a small entity (Sec. 1.9(f))--$39.00
By other than a small entity--$78.00
    (j) In addition to the basic filing fee in a reissue application, 
for filing or later presentation of each claim (whether independent or 
dependent) in excess of 20 and also in excess of the number of claims in 
the original patent (Note that Sec. 1.75(c) indicates how multiple 
dependent claims are considered for fee purposes.):
By a small entity (Sec. 1.9(f))--$9.00
By other than a small entity--$18.00
    (k) Basic fee for filing each provisional application:
By a small entity (Sec. 1.9(f))...................................$75.00
By other than a small entity.....................................$150.00
    (l) Surcharge for filing the basic filing fee or cover sheet 
(Sec. 1.51(c)(1)) on a date later than the filing date of the 
provisional application:
By a small entity (Sec. 1.9(f))--$25.00
By other than a small entity--$50.00
    (m) If the additional fees required by paragraphs (b), (c), (d), (i) 
and (j) of this section are not paid on filing or on later presentation 
of the claims for which the additional fees are due, they must be paid 
or the claims must be canceled by amendment, prior to the expiration of 
the time period set for reply by the Office in any notice of fee 
deficiency.
    Note: See Secs. 1.445, 1.482 and 1.492 for international application 
filing and processing fees.

[56 FR 65151, Dec. 13, 1991, as amended at 57 FR 38194, Aug. 21, 1992; 
60 FR 20221, Apr. 25, 1995; 60 FR 41022, Aug. 11, 1995; 61 FR 39587, 
July 30, 1996; 61 FR 43400, Aug. 22, 1996; 62 FR 40452, July 29, 1997; 
62 FR 53182, Oct. 10, 1997; 63 FR 67579, Dec. 8, 1998]



Sec. 1.17  Patent application processing fees.

    (a) Extension fees pursuant to Sec. 1.136(a):
    (1) For reply within first month:

By a small entity (Sec. 1.9(f))--$55.00
By other than a small entity--$110.00

    (2) For reply within second month:

By a small entity (Sec. 1.9(f))--$190.00
By other than a small entity--$380.00

    (3) For reply within third month:

By a small entity (Sec. 1.9(f))--$435.00
By other than a small entity--$870.00


[[Page 23]]


    (4) For reply within fourth month:

By a small entity (Sec. 1.9(f))--$680.00
By other than a small entity--$1,360.00

    (5) For reply within fifth month:

By a small entity (Sec. 1.9(f))--$925.00
By other than a small entity--$1,850.00

    (b) For filing a notice of appeal from the examiner to the Board of 
Patent Appeals and Interferences:

By a small entity (Sec. 1.9(f))--$150.00
By other than a small entity--$300.00

    (c) In addition to the fee for filing a notice of appeal, for filing 
a brief in support of an appeal:

By a small entity (Sec. 1.9 (f))--$150.00
By other than a small entity--$300.00

    (d) For filing a request for an oral hearing before the Board of 
Patent Appeals and Interferences in an appeal under 35 U.S.C. 134:

By a small entity (Sec. 1.9(f))--$130.00
By other than a small entity--$260.00

    (e)-(g) [Reserved]
    (h) For filing a petition to the Commissioner under a section listed 
below which refers to this paragraph--$130.00

Sec. 1.182--For decision on a question not specifically provided for.
Sec. 1.183--To suspend the rules.
Sec. 1.295--For review of refusal to publish a statutory invention 
registration.
Sec. 1.377--For review of decision refusing to accept and record payment 
of a maintenance fee filed prior to expiration of a patent.
Sec. 1.378(e)--For reconsideration of decision on petition refusing to 
accept delayed payment of maintenance fee in an expired patent.
Sec. 1.644(e)--For petition in an interference.
Sec. 1.644(f)--For request for reconsideration of a decision on petition 
in an interference.
Sec. 1.666(c)--For late filing of interference settlement agreement.
Sec. 5.12--For expedited handling of a foreign filing license.
Sec. 5.15--For changing the scope of a license.
Sec. 5.25--For retroactive license.

    (i) For filing a petition to the Commissioner under a section listed 
below which refers to this paragraph--$130.00

Sec. 1.12--For access to an assignment record.
Sec. 1.14--For access to an application.
Sec. 1.41--To supply the name or names of the inventor or inventors 
after the filing date without an oath or declaration as prescribed by 
Sec. 1.63, except in provisional applications.
Sec. 1.47--For filing by other than all the inventors or a person not 
the inventor.
Sec. 1.48--For correction of inventorship, except in provisional 
applications.
Sec. 1.53--To accord a filing date, except in provisional applications.
Sec. 1.55--For entry of late priority papers.
Sec. 1.59--For expungement and return of information.
Sec. 1.84--For accepting color drawings or photographs.
Sec. 1.91--For entry of a model or exhibit.
Sec. 1.97(d)--To consider an information disclosure statement.
Sec. 1.102--To make an application special.
Sec. 1.103--To suspend action in application.
Sec. 1.177--For divisional reissues to issue separately.
Sec. 1.312--For amendment after payment of issue fee.
Sec. 1.313--To withdraw an application from issue.
Sec. 1.314--To defer issuance of a patent.
Sec. 1.666(b)--For access to an interference settlement agreement.
Sec. 3.81--For a patent to issue to assignee, assignment submitted after 
payment of the issue fee.

    (j) For filing a petition to institute a public use proceeding under 
Sec. 1.292--$1,510.00
    (k) For processing an application filed with a specification in a 
non-English language (Sec. 1.52(d))--$130.00
    (l) For filing a petition:
    (1) For the revival of an unavoidably abandoned application under 35 
U.S.C. 111, 133, 364, or 371, or
    (2) For delayed payment of the issue fee under 35 U.S.C. 151 
(Sec. 1.137(a)):

By a small entity (Sec. 1.9(f))--$55.00
By other than a small entity--$110.00

    (m) For filing a petition:
    (1) For revival of an unintentionally abandoned application, or
    (2) For the unintentionally delayed payment of the fee for issuing a 
patent (Sec. 1.137(b)):

By a small entity (Sec. 1.9(f))--$605.00
By other than a small entity--$1,210.00

    (n) For requesting publication of a statutory invention registration 
prior to the mailing of the first examiner's action pursuant to 
Sec. 1.104--$920.00 reduced by the amount of the application basic 
filing fee paid.
    (o) For requesting publication of a statutory invention registration 
after the mailing of the first examiner's action pursuant to 
Sec. 1.104--$1,840.00 reduced by the amount of the application basic 
filing fee paid.
    (p) For submission of an information disclosure statement under 
Sec. 1.97(c)--$240.00

[[Page 24]]

    (q) For filing a petition to the Commissioner under a section listed 
below which refers to this paragraph--$50.00.

Sec. 1.41--To supply the name or names of the inventor or inventors 
after the filing date without a cover sheet as prescribed by 
Sec. 1.51(c)(1) in a provisional application.
Sec. 1.48--For correction of inventorship in a provisional application.
Sec. 1.53--To accord a provisional application a filing date or to 
convert a nonprovisional application filed under Sec. 1.53(b) to a 
provisional application under Sec. 1.53(c).

    (r) For entry of a submission after final rejection under 
Sec. 1.129(a):

By a small entity (Sec. 1.9(f))--$380.00
By other than a small entity--$760.00

    (s) For each additional invention requested to be examined under 
Sec. 1.129(b):

By a small entity (Sec. 1.9(f))--$380.00
By other than a small entity--$760.00


[56 FR 65152, Dec. 13, 1991, as amended at 57 FR 2033, Jan 17, 1992; 57 
FR 32439, July 22, 1992; 58 FR 38723, July 20, 1993; 58 FR 45841, Aug. 
31, 1993; 59 FR 43740, Aug. 25, 1994; 60 FR 20221, Apr. 25, 1995; 60 FR 
41022, Aug. 11, 1995; 61 FR 39587, July 30, 1996; 62 FR 40452, July 29, 
1997; 62 FR 53182, Oct. 10, 1997; 62 FR 61235, Nov. 17, 1997; 63 FR 
67580, Dec. 8, 1998]



Sec. 1.18  Patent issue fees.

    (a) Issue fee for issuing each original or reissue patent, except a 
design or plant patent:

By a small entity (Sec. 1.9(f))--$605.00
By other than a small entity--$1,210.00

    (b) Issue fee for issuing a design patent:

By a small entity (Sec. 1.9(f))--$215.00
By other than a small entity--$430.00

    (c) Issue fee for issuing a plant patent:

By a small entity (Sec. 1.9(f))--$290.00
By other than a small entity--$580.00

[63 FR 67580, Dec. 8, 1998]



Sec. 1.19  Document supply fees.

    The Patent and Trademark Office will supply copies of the following 
documents upon payment of the fees indicated:
    (a) Uncertified copies of patents:
    (1) Printed copy of a patent, including a design patent, statutory 
invention registration, or defensive publication document, except patent 
or statutory invention registration containing color drawing:
    (i) Regular service--$3.00
    (ii) Overnight delivery to PTO Box or overnight fax--$6.00
    (iii) Expedited service for copy ordered by expedited mail or fax 
delivery service and delivered to the customer within two workdays--
$25.00
    (2) Printed copy of a plant patent in color--$15.00
    (3) Copy of a utility patent or statutory invention registration 
containing color drawing (see Sec. 1.84(a)(2))--$25.00
    (b) Certified and uncertified copies of Office documents:
    (1) Certified or uncertified copy of patent application as filed
    (i) Regular service--$15.00
    (ii) Expedited regular service--$30.00
    (2) Certified or uncertified copy of patent-related file wrapper and 
contents--$150.00
    (3) Certified or uncertified copies of Office records, per document 
except as otherwise provided in this section--$25.00
    (4) For assignment records, abstract of title and certification, per 
patent--$25.00
    (c) Library service (35 U.S.C. 13): For providing to libraries 
copies of all patents issued annually, per annum--$50.00
    (d) For list of all United States patents and statutory invention 
registrations in a subclass--$3.00
    (e) Uncertified statement as to status of the payment of maintenance 
fees due on a patent or expiration of a patent--$10.00
    (f) Uncertified copy of a non-United States patent document, per 
document--$25.00
    (g) To compare and certify copies made from Patent and Trademark 
Office records, but not prepared by the Patent and Trademark Office, per 
copy of document--$25.00
    (h) Additional filing receipts; duplicate; or corrected due to 
applicant error--$25.00

[56 FR 65152, Dec. 13, 1991, as amended at 57 FR 38195, Aug. 21, 1992; 
58 FR 38723, July 20, 1993; 60 FR 41022, Aug. 11, 1995; 62 FR 40452, 
July 29, 1997]



Sec. 1.20  Post issuance fees.

    (a) For providing a certificate of correction for applicant's 
mistake:

(Sec. 1.323)--$100.00


[[Page 25]]


    (b) Petition for correction of inventorship in patent (Sec. 1.324)--
$130.00
    (c) For filing a request for reexamination (Sec. 1.510(a))--
$2,520.00
    (d) For filing each statutory disclaimer (Sec. 1.321):

By a small entity (Sec. 1.9(f))--$55.00
By other than a small entity--$110.00

    (e) For maintaining an original or reissue patent, except a design 
or plant patent, based on an application filed on or after December 12, 
1980, in force beyond four years; the fee is due by three years and six 
months after the original grant:

By a small entity (Sec. 1.9(f))--$470.00
By other than a small entity--$940.00

    (f) For maintaining an original or reissue patent, except a design 
or plant patent, based on an application filed on or after December 12, 
1980, in force beyond eight years; the fee is due by seven years and six 
months after the original grant:

By a small entity (Sec. 1.9(f))--$950.00
By other than a small entity--$1,900.00

    (g) For maintaining an original or reissue patent, except a design 
or plant patent, based on an application filed on or after December 12, 
1980, in force beyond twelve years; the fee is due by eleven years and 
six months after the original grant:

By a small entity (Sec. 1.9(f))--$1,455.00
By other than a small entity--$2,910.00

    (h) Surcharge for paying a maintenance fee during the six-month 
grace period following the expiration of three years and six months, 
seven years and six months, and eleven years and six months after the 
date of the original grant of a patent based on an application filed on 
or after December 12, 1980:

By a small entity (Sec. 1.9(f))--$65.00
By other than a small entity--$130.00

    (i) Surcharge for accepting a maintenance fee after expiration of a 
patent for non-timely payment of a maintenance fee where the delay in 
payment is shown to the satisfaction of the Commissioner to have been--
    (1) Unavoidable--$700.00
    (2) Unintentional--$1,640.00
    (j) For filing an application for extension of the term of a patent 
(Sec. 1.740)--$1,060.00
    (1) Application for extension under Sec. 1.740--$1,120.00
    (2) Initial application for interim extension under Sec. 1.790--
$420.00
    (3) Subsequent application for interim extension under Sec. 1.790--
$220.00

[56 FR 65153, Dec. 13, 1991, as amended at 57 FR 38195, Aug. 21, 1992; 
57 FR 56450, Nov. 30, 1992; 58 FR 44280, Aug. 20, 1993; 60 FR 41022, 
Aug. 11, 1995; 61 FR 39588, July 30, 1996; 62 FR 40453, July 29, 1997; 
63 FR 67580, Dec. 8, 1998]



Sec. 1.21  Miscellaneous fees and charges.

    The Patent and Trademark Office has established the following fees 
for the services indicated:
    (a) Registration of attorneys and agents:
    (1) For admission to examination for registration to practice:
    (i) Application Fee (non-refundable)--$40.00
    (ii) Registration examination fee--$310.00
    (2) On registration to practice--$100.00
    (3) For reinstatement to practice--$40.00
    (4) For certificate of good standing as an attorney or agent--$10.00

Suitable for framing--$20.00

    (5) For review of a decision of the Director of Enrollment and 
Discipline under Sec. 10.2(c)--$130.00
    (6) For requesting regrading of an examination under Sec. 10.7(c):
    (i) Regrading of morning section (PTO Practice and Procedure)--
$230.00
    (ii) Regrading of afternoon section (Claim Drafting)--$230.00
    (b) Deposit accounts:
    (1) For establishing a deposit account--$10.00
    (2) Service charge for each month when the balance at the end of the 
month is below $1,000--$25.00
    (3) Service charge for each month when the balance at the end of the 
month is below $300 for restricted subscription deposit accounts used 
exclusively for subscription order of patent copies as issued--$25.00
    (c) Disclosure document: For filing a disclosure document--$10.00
    (d) Delivery box: Local delivery box rental, per annum--$50.00
    (e) International type search reports: For preparing an 
international type search report of an international type

[[Page 26]]

search made at the time of the first action on the merits in a national 
patent application--$40.00
    (f) [Reserved]
    (g) Self-service copy charge, per page--$0.25
    (h) For recording each assignment, agreement or other paper relating 
to the property in a patent or application, per property--$40.00
    (i) Publication in Official Gazette: For publication in the Official 
Gazette of a notice of the availability of an application or a patent 
for licensing or sale:

Each application or patent--$25.00

    (j) Labor charges for services, per hour or fraction thereof--$40.00
    (k) For items and services that the Commissioner finds may be 
supplied, for which fees are not specified by statute or by this part, 
such charges as may be determined by the Commissioner with respect to 
each such item or service--Actual Cost
    (l) For processing and retaining any application abandoned pursuant 
to Sec. 1.53(f), unless the required basic filing fee (Sec. 1.16)has 
been paid--$130.00
    (m) For processing each check returned ``unpaid'' by a bank--$50.00
    (n) For handling an application in which proceedings are terminated 
pursuant to Sec. 1.53(e)--$130.00
    (o) Marginal cost, paid in advance, for each hour of terminal 
session time, including print time, using Automated Patent System full-
text search capabilities, prorated for the actual time used. The 
Commissioner may waive the payment by an individual for access to the 
Automated Patent System full-text search capability (APS-Text) upon a 
showing of need or hardship, and if such waiver is in the public 
interest--$40.00  

[56 FR 65153, Dec. 13, 1991, as amended at 57 FR 38195, Aug. 21, 1992; 
57 FR 40493, Sept. 3, 1992; 59 FR 43741, Aug. 25, 1994; 60 FR 20222, 
Apr. 25, 1995; 60 FR 41022, Aug. 11, 1995; 61 FR 39588, July 30, 1996; 
61 FR 43400, Aug. 22, 1996; 62 FR 40453, July 29, 1997; 62 FR 53183, 
Oct. 10, 1997; 63 FR 67580, Dec. 8, 1998]



Sec. 1.22  Fees payable in advance.

    (a) Patent and trademark fees and charges payable to the Patent and 
Trademark Office are required to be paid in advance, that is, at the 
time of requesting any action by the Office for which a fee or charge is 
payable with the exception that under Sec. 1.53 applications for patent 
may be assigned a filing date without payment of the basic filing fee.
    (b) All patent and trademark fees paid to the Patent and Trademark 
Office should be itemized in each individual application, patent or 
other proceeding in such a manner that it is clear for which purpose the 
fees are paid.


(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2708, Jan. 20, 1983]



Sec. 1.23  Method of payment.

    All payments of money required for Patent and Trademark Office fees, 
including fees for the processing of international applications 
(Sec. 1.445), should be made in U.S. specie, Treasury notes, national 
bank notes, post office money orders, or by certified check. If sent in 
any other form, the Office may delay or cancel the credit until 
collection is made. Money orders and checks must be made payable to the 
Commissioner of Patents and Trademarks. Remittances from foreign 
countries must be payable and immediately negotiable in the United 
States for the full amount of the fee required. Money sent by mail to 
the Patent and Trademark Office will be at the risk of the sender; 
letters containing money should be registered.


(Pub. L. 94-131, 89 Stat. 685)

[43 FR 20462, May 11, 1978]



Sec. 1.24  Coupons.

    Coupons in denominations of three dollars, for the purchase of 
patents, designs, defensive publications, statutory invention 
registrations, and trademark registrations are sold by the Patent and 
Trademark Office for the convenience of the general public; these 
coupons may not be used for any other purpose. The three-dollar coupons 
are sold individually and in books of 50 for $150.00. These coupons are 
good until used; they may be transferred but cannot be redeemed.

[56 FR 65153, Dec. 13, 1991]

[[Page 27]]



Sec. 1.25  Deposit accounts.

    (a) For the convenience of attorneys, and the general public in 
paying any fees due, in ordering services offered by the Office, copies 
of records, etc., deposit accounts may be established in the Patent and 
Trademark Office upon payment of the fee for establishing a deposit 
account (Sec. 1.21(b)(1)). A minimum deposit of $1,000 is required for 
paying any fees due or in ordering any services offered by the Office. 
However, a minimum deposit of $300 may be paid to establish a restricted 
subscription deposit account used exclusively for subscription order of 
patent copies as issued. At the end of each month, a deposit account 
statement will be rendered. A remittance must be made promptly upon 
receipt of the statement to cover the value of items or services charged 
to the account and thus restore the account to its established normal 
deposit. An amount sufficient to cover all fees, services, copies, etc., 
requested must always be on deposit. Charges to accounts with 
insufficient funds will not be accepted. A service charge 
(Sec. 1.21(b)(2)) will be assessed for each month that the balance at 
the end of the month is below $1,000. For restricted subscription 
deposit accounts, a service charge (Sec. 1.21(b)(3)) will be assessed 
for each month that the balance at the end of the month is below $300.
    (b) Filing, issue, appeal, international-type search report, 
international application processing, petition, and post-issuance fees 
may be charged against these accounts if sufficient funds are on deposit 
to cover such fees. A general authorization to charge all fees, or only 
certain fees, set forth in Secs. 1.16 to 1.18 to a deposit account 
containing sufficient funds may be filed in an individual application, 
either for the entire pendency of the application or with respect to a 
particular paper filed. An authorization to charge to a deposit account 
the fee for a request for reexamination pursuant to Sec. 1.510 and any 
other fees required in a reexamination proceeding in a patent may also 
be filed with the request for reexamination. An authorization to charge 
a fee to a deposit account will not be considered payment of the fee on 
the date the authorization to charge the fee is effective as to the 
particular fee to be charged unless sufficient funds are present in the 
account to cover the fee.


(35 U.S.C. 6, Pub. L. 97-247)

[49 FR 553, Jan. 4, 1984, as amended at 50 FR 31826, Aug. 6, 1985]



Sec. 1.26  Refunds.

    (a) Any fee paid by actual mistake or in excess of that required 
will be refunded, but a mere change of purpose after the payment of 
money, as when a party desires to withdraw an application, an appeal, or 
a request for oral hearing, will not entitle a party to demand such a 
return. Amounts of twenty-five dollars or less will not be returned 
unless specifically requested within a reasonable time, nor will the 
payer be notified of such amounts; amounts over twenty-five dollars may 
be returned by check or, if requested, by credit to a deposit account.
    (b) [Reserved]
    (c) If the Commissioner decides not to institute a reexamination 
proceeding, a refund of $1,690 will be made to the requester of the 
proceeding. Reexamination requesters should indicate whether any refund 
should be made by check or by credit to a deposit account.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[47 FR 41274, Sept. 17, 1982, as amended at 50 FR 31826, Aug. 6, 1985; 
54 FR 6902, Feb. 15, 1989; 56 FR 65153, Dec. 13, 1991; 57 FR 38195, Aug. 
21, 1992; 62 FR 53183, Oct. 10, 1997]



Sec. 1.27  Statement of status as small entity.

    (a) Any person seeking to establish status as a small entity 
(Sec. 1.9(f) of this part) for purposes of paying fees in an application 
or a patent must file a statement in the application or patent prior to 
or with the first fee paid as a small entity. Such a statement need only 
be filed once in an application or patent and remains in effect until 
changed.
    (b) When establishing status as a small entity pursuant to paragraph 
(a) of this section, any statement filed on behalf of an independent 
inventor must be signed by the independent inventor except as provided 
in Sec. 1.42, Sec. 1.43, or Sec. 1.47 of this part and must state that 
the inventor qualifies as an independent inventor in accordance with

[[Page 28]]

Sec. 1.9(c) of this part. Where there are joint inventors in an 
application, each inventor must file a statement establishing status as 
an independent inventor in order to qualify as a small entity. Where any 
rights have been assigned, granted, conveyed, or licensed, or there is 
an obligation to assign, grant, convey, or license, any rights to a 
small business concern, a nonprofit organization, or any other 
individual, a statement must be filed by the individual, the owner of 
the small business concern, or an official of the small business concern 
or nonprofit organization empowered to act on behalf of the small 
business concern or nonprofit organization identifying their status. For 
purposes of a statement under this paragraph, a license to a Federal 
agency resulting from a funding agreement with that agency pursuant to 
35 U.S.C. 202(c)(4) does not constitute a license as set forth in 
Sec. 1.9 of this part.
    (c)(1) Any statement filed pursuant to paragraph (a) of this section 
on behalf of a small business concern must:
    (i) Be signed by the owner or an official of the small business 
concern empowered to act on behalf of the concern;
    (ii) State that the concern qualifies as a small business concern as 
defined in Sec. 1.9(d); and
    (iii) State that the exclusive rights to the invention have been 
conveyed to and remain with the small business concern or, if the rights 
are not exclusive, that all other rights belong to small entities as 
defined in Sec. 1.9.
    (2) Where the rights of the small business concern as a small entity 
are not exclusive, a statement must also be filed by the other small 
entities having rights stating their status as such. For purposes of a 
statement under this paragraph, a license to a Federal agency resulting 
from a funding agreement with that agency pursuant to 35 U.S.C. 
202(c)(4) does not constitute a license as set forth in Sec. 1.9 of this 
part.
    (d)(1) Any statement filed pursuant to paragraph (a) of this section 
on behalf of a nonprofit organization must:
    (i) Be signed by an official of the nonprofit organization empowered 
to act on behalf of the organization;
    (ii) State that the organization qualifies as a nonprofit 
organization as defined in Sec. 1.9(e) of this part specifying under 
which one of Sec. 1.9(e) (1), (2), (3), or (4) of this part the 
organization qualifies; and
    (iii) State that exclusive rights to the invention have been 
conveyed to and remain with the organization or if the rights are not 
exclusive that all other rights belong to small entities as defined in 
Sec. 1.9 of this part.
    (2) Where the rights of the nonprofit organization as a small entity 
are not exclusive, a statement must also be filed by the other small 
entities having rights stating their status as such. For purposes of a 
statement under this paragraph, a license to a Federal agency pursuant 
to 35 U.S.C. 202(c)(4) does not constitute a conveyance of rights as set 
forth in this paragraph.

[62 FR 53183, Oct. 10, 1997]



Sec. 1.28  Effect on fees of failure to establish status, or change status, as a small entity.

    (a)(1) The failure to establish status as a small entity 
(Secs. 1.9(f) and 1.27 of this part) in any application or patent prior 
to paying, or at the time of paying, any fee precludes payment of the 
fee in the amount established for small entities. A refund pursuant to 
Sec. 1.26 of this part, based on establishment of small entity status, 
of a portion of fees timely paid in full prior to establishing status as 
a small entity may only be obtained if a statement under Sec. 1.27 and a 
request for a refund of the excess amount are filed within two months of 
the date of the timely payment of the full fee. The two-month time 
period is not extendable under Sec. 1.136. Status as a small entity is 
waived for any fee by the failure to establish the status prior to 
paying, at the time of paying, or within two months of the date of 
payment of, the fee.
    (2) Status as a small entity must be specifically established in 
each application or patent in which the status is available and desired. 
Status as a small entity in one application or patent does not affect 
any other application or patent, including applications or patents which 
are directly or indirectly dependent upon the application or patent in 
which the status has been established. The refiling of an application 
under Sec. 1.53 as a continuation, division,

[[Page 29]]

or continuation-in-part (including a continued prosecution application 
under Sec. 1.53(d)), or the filing of a reissue application requires a 
new determination as to continued entitlement to small entity status for 
the continuing or reissue application. A nonprovisional application 
claiming benefit under 35 U.S.C. 119(e), 120, 121, or 365(c) of a prior 
application, or a reissue application may rely on a statement filed in 
the prior application or in the patent if the nonprovisional application 
or the reissue application includes a reference to the statement in the 
prior application or in the patent or includes a copy of the statement 
in the prior application or in the patent and status as a small entity 
is still proper and desired. The payment of the small entity basic 
statutory filing fee will be treated as such a reference for purposes of 
this section.
    (3) Once status as a small entity has been established in an 
application or patent, the status remains in that application or patent 
without the filing of a further statement pursuant to Sec. 1.27 of this 
part unless the Office is notified of a change in status.
    (b) Once status as a small entity has been established in an 
application or patent, fees as a small entity may thereafter be paid in 
that application or patent without regard to a change in status until 
the issue fee is due or any maintenance fee is due. Notification of any 
change in status resulting in loss of entitlement to small entity status 
must be filed in the application or patent prior to paying, or at the 
time of paying, the earliest of the issue fee or any maintenance fee due 
after the date on which status as a small entity is no longer 
appropriate pursuant to Sec. 1.9 of this part. The notification of 
change in status may be signed by the applicant, any person authorized 
to sign on behalf of the assignee, or an attorney or agent of record or 
acting in a representative capacity pursuant to Sec. 1.34(a) of this 
part.
    (c) If status as a small entity is established in good faith, and 
fees as a small entity are paid in good faith, in any application or 
patent, and it is later discovered that such status as a small entity 
was established in error or that through error the Office was not 
notified of a change in status as required by paragraph (b) of this 
section, the error will be excused upon payment of the deficiency 
between the amount paid and the amount due. The deficiency is based on 
the amount of the fee, for other than a small entity, in effect at the 
time the deficiency is paid in full.
    (d)(1) Any attempt to fraudulently (i) establish status as a small 
entity or (ii) pay fees as a small entity shall be considered as a fraud 
practiced or attempted on the Office.
    (2) Improperly and with intent to deceive
    (i) Establishing status as a small entity, or
    (ii) Paying fees as a small entity shall be considered as a fraud 
practiced or attempted on the Office.

(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)

[47 FR 40140, Sept. 10, 1982, as amended at 49 FR 553, Jan. 4, 1984; 57 
FR 2033, Jan. 17, 1992; 58 FR 54509, Oct. 22, 1993; 60 FR 20222, Apr. 
25, 1995; 62 FR 53183, Oct. 10, 1997]



                Subpart B--National Processing Provisions

     Prosecution of Application and Appointment of Attorney or Agent



Sec. 1.31  Applicants may be represented by a registered attorney or agent.

    An applicant for patent may file and prosecute his or her own case, 
or he or she may be represented by a registered attorney, registered 
agent, or other individual authorized to practice before the Patent and 
Trademark Office in patent cases. See Secs. 10.6 and 10.9 of this 
subchapter. The Patent and Trademark Office cannot aid in the selection 
of a registered attorney or agent.

[50 FR 5171, Feb. 6, 1985]



Sec. 1.32  [Reserved]



Sec. 1.33  Correspondence respecting patent applications, reexamination proceedings, and other proceedings.

    (a) The applicant, the assignee(s) of the entire interest (see 
Secs. 3.71 and 3.73) or an attorney or agent of record (see 
Sec. 1.34(b)) may specify a correspondence address to which 
communications

[[Page 30]]

about the application are to be directed. All notices, official letters, 
and other communications in the application will be directed to the 
correspondence address or, if no such correspondence address is 
specified, to an attorney or agent of record (see Sec. 1.34(b)), or, if 
no attorney or agent is of record, to the applicant, so long as a post 
office address has been furnished in the application. Double 
correspondence with an applicant and an attorney or agent, or with more 
than one attorney or agent, will not be undertaken. If more than one 
attorney or agent is made of record and a correspondence address has not 
been specified, correspondence will be held with the one last made of 
record.
    (b) Amendments and other papers filed in the application must be 
signed by:
    (1) An attorney or agent of record appointed in compliance with 
Sec. 1.34(b);
    (2) A registered attorney or agent not of record who acts in a 
representative capacity under the provisions of Sec. 1.34(a);
    (3) The assignee of record of the entire interest, if there is an 
assignee of record of the entire interest;
    (4) An assignee of record of an undivided part interest, and any 
assignee(s) of the remaining interest and any applicant retaining an 
interest, if there is an assignee of record of an undivided part 
interest; or
    (5) All of the applicants (Secs. 1.42, 1.43 and 1.47) for patent, 
unless there is an assignee of record of the entire interest and such 
assignee has taken action in the application in accordance with 
Secs. 3.71 and 3.73.
    (c) All notices, official letters, and other communications for the 
patent owner or owners in a reexamination proceeding will be directed to 
the attorney or agent of record (see Sec. 1.34(b)) in the patent file at 
the address listed on the register of patent attorneys and agents 
maintained pursuant to Secs. 10.5 and 10.11 or, if no attorney or agent 
is of record, to the patent owner or owners at the address or addresses 
of record. Amendments and other papers filed in a reexamination 
proceeding on behalf of the patent owner must be signed by the patent 
owner, or if there is more than one owner by all the owners, or by an 
attorney or agent of record in the patent file, or by a registered 
attorney or agent not of record who acts in a representative capacity 
under the provisions of Sec. 1.34(a). Double correspondence with the 
patent owner or owners and the patent owner's attorney or agent, or with 
more than one attorney or agent, will not be undertaken. If more than 
one attorney or agent is of record and a correspondence address has not 
been specified, correspondence will be held with the last attorney or 
agent made of record.
    (d) A ``correspondence address'' or change thereto may be filed with 
the Patent and Trademark Office during the enforceable life of the 
patent. The ``correspondence address'' will be used in any 
correspondence relating to maintenance fees unless a separate ``fee 
address'' has been specified. See Sec. 1.363 for ``fee address'' used 
solely for maintenance fee purposes.

[36 FR 12617, July 2, 1971, as amended at 46 FR 29181, May 29, 1981; 49 
FR 34724, Aug. 31, 1984; 50 FR 5171, Feb. 6, 1985; 62 FR 53184, Oct. 10, 
1997]



Sec. 1.34  Recognition for representation.

    (a) When a registered attorney or agent acting in a representative 
capacity appears in person or signs a paper in practice before the 
Patent and Trademark Office in a patent case, his or her personal 
appearance or signature shall constitute a representation to the Patent 
and Trademark Office that under the provisions of this subchapter and 
the law, he or she is authorized to represent the particular party in 
whose behalf he or she acts. In filing such a paper, the registered 
attorney or agent should specify his or her registration number with his 
or her signature. Further proof of authority to act in a representative 
capacity may be required.
    (b) When an attorney or agent shall have filed his or her power of 
attorney, or authorization, duly executed by the person or persons 
entitled to prosecute an application or a patent involved in a 
reexamination proceeding, he or she is a principal attorney of record in 
the case. A principal attorney or agent, so appointed, may appoint an 
associate

[[Page 31]]

attorney or agent who shall also then be of record.

[46 FR 29181, May 29, 1981, as amended at 50 FR 5171, Feb. 6, 1985]



Sec. 1.36  Revocation of power of attorney or authorization; withdrawal of attorney or agent.

    A power of attorney or authorization of agent may be revoked at any 
stage in the proceedings of a case, and an attorney or agent may 
withdraw, upon application to and approval by the Commissioner. An 
attorney or agent, except an associate attorney or agent whose address 
is the same as that of the principal attorney or agent, will be notified 
of the revocation of the power of attorney or authorization, and the 
applicant or patent owner will be notified of the withdrawal of the 
attorney or agent. An assignment will not of itself operate as a 
revocation of a power or authorization previously given, but the 
assignee of the entire interest may revoke previous powers and be 
represented by an attorney or agent of the assignee's own selection. See 
Sec. 1.613(d) for withdrawal of an attorney or agent of record in an 
interference.

[49 FR 48452, Dec. 12, 1984]

                       Who May Apply for a Patent



Sec. 1.41  Applicant for patent.

    (a) A patent is applied for in the name or names of the actual 
inventor or inventors.
    (1) The inventorship of a nonprovisional application is that 
inventorship set forth in the oath or declaration as prescribed by 
Sec. 1.63, except as provided for in Sec. 1.53(d)(4) and Sec. 1.63(d). 
If an oath or declaration as prescribed by Sec. 1.63 is not filed during 
the pendency of a nonprovisional application, the inventorship is that 
inventorship set forth in the application papers filed pursuant to 
Sec. 1.53(b), unless a petition under this paragraph accompanied by the 
fee set forth in Sec. 1.17(i) is filed supplying or changing the name or 
names of the inventor or inventors.
    (2) The inventorship of a provisional application is that 
inventorship set forth in the cover sheet as prescribed by 
Sec. 1.51(c)(1). If a cover sheet as prescribed by Sec. 1.51(c)(1) is 
not filed during the pendency of a provisional application, the 
inventorship is that inventorship set forth in the application papers 
filed pursuant to Sec. 1.53(c), unless a petition under this paragraph 
accompanied by the fee set forth in Sec. 1.17(q) is filed supplying or 
changing the name or names of the inventor or inventors.
    (3) In a nonprovisional application filed without an oath or 
declaration as prescribed by Sec. 1.63 or a provisional application 
filed without a cover sheet as prescribed by Sec. 1.51(c)(1), the name 
or names of person or persons believed to be the actual inventor or 
inventors should be provided for identification purposes when the 
application papers pursuant to Sec. 1.53(b) or (c) are filed. If no name 
of a person believed to be an actual inventor is so provided, the 
application should include an applicant identifier consisting of 
alphanumeric characters.
    (b) Unless the contrary is indicated the word ``applicant'' when 
used in these sections refers to the inventor or joint inventors who are 
applying for a patent, or to the person mentioned in Secs. 1.42, 1.43, 
or 1.47 who is applying for a patent in place of the inventor.
    (c) Any person authorized by the applicant may file an application 
for patent on behalf of the inventor or inventors, but an oath or 
declaration for the application (Sec. 1.63) can only be made in 
accordance with Sec. 1.64.
    (d) A showing may be required from the person filing the application 
that the filing was authorized where such authorization comes into 
question.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983, as amended at 62 
FR 53184, Oct. 10, 1997]



Sec. 1.42  When the inventor is dead.

    In case of the death of the inventor, the legal representative 
(executor, administrator, etc.) of the deceased inventor may make the 
necessary oath or declaration, and apply for and obtain the patent. 
Where the inventor dies during the time intervening between the filing 
of the application and the granting of a patent thereon, the letters 
patent may be issued to the

[[Page 32]]

legal representative upon proper intervention.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2709, Jan. 20, 1983]



Sec. 1.43  When the inventor is insane or legally incapacitated.

    In case an inventor is insane or otherwise legally incapacitated, 
the legal representative (guardian, conservator, etc.) of such inventor 
may make the necessary oath or declaration, and apply for and obtain the 
patent.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2709, Jan. 20, 1983]



Sec. 1.44  Proof of authority.

    In the cases mentioned in Secs. 1.42 and 1.43, proof of the power or 
authority of the legal representative must be recorded in the Patent and 
Trademark Office or filed in the application before the grant of a 
patent.

(35 U.S.C. 6, 111, 116, 117, 118)



Sec. 1.45  Joint inventors.

    (a) Joint inventors must apply for a patent jointly and each must 
make the required oath or declaration: neither of them alone, nor less 
than the entire number, can apply for a patent for an invention invented 
by them jointly, except as provided in Sec. 1.47.
    (b) Inventors may apply for a patent jointly even though
    (1) They did not physically work together or at the same time,
    (2) Each inventor did not make the same type or amount of 
contribution, or
    (3) Each inventor did not make a contribution to the subject matter 
of every claim of the application.
    (c) If multiple inventors are named in a nonprovisional application, 
each named inventor must have made a contribution, individually or 
jointly, to the subject matter of at least one claim of the application 
and the application will be considered to be a joint application under 
35 U.S.C. 116. If multiple inventors are named in a provisional 
application, each named inventor must have made a contribution, 
individually or jointly, to the subject matter disclosed in the 
provisional application and the provisional application will be 
considered to be a joint application under 35 U.S.C. 116.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2709, Jan. 20, 1983, as amended at 50 FR 9379, Mar. 7, 1985; 60 
FR 20222, Apr. 25, 1995]



Sec. 1.46  Assigned inventions and patents.

    In case the whole or a part interest in the invention or in the 
patent to be issued is assigned, the application must still be made or 
authorized to be made, and an oath or declaration signed, by the 
inventor or one of the persons mentioned in Sec. 1.42, 1.43, or 1.47. 
However, the patent may be issued to the assignee or jointly to the 
inventor and the assignee as provided in Sec. 3.81.

(35 U.S.C. 6, Pub. L. 97-247)

[57 FR 29642, July 6, 1992]



Sec. 1.47  Filing when an inventor refuses to sign or cannot be reached.

    (a) If a joint inventor refuses to join in an application for patent 
or cannot be found or reached after diligent effort, the application may 
be made by the other inventor on behalf of himself or herself and the 
nonsigning inventor. The oath or declaration in such an application must 
be accompanied by a petition including proof of the pertinent facts, the 
fee set forth in Sec. 1.17(i) and the last known address of the 
nonsigning inventor. The Patent and Trademark Office shall, except in a 
continued prosecution application under Sec. 1.53(d), forward notice of 
the filing of the application to the nonsigning inventor at said address 
and publish notice of the filing of the application in the Official 
Gazette. The nonsigning inventor may subsequently join in the 
application on filing an oath or declaration complying with Sec. 1.63.
    (b) Whenever all of the inventors refuse to execute an application 
for patent, or cannot be found or reached after diligent effort, a 
person to whom an inventor has assigned or agreed in writing to assign 
the invention or who otherwise shows sufficient proprietary interest in 
the matter justifying such action may make application for patent on 
behalf of and as agent for all the inventors. The oath or declaration in 
such an application must be accompanied by a petition including proof of

[[Page 33]]

the pertinent facts, a showing that such action is necessary to preserve 
the rights of the parties or to prevent irreparable damage, the fee set 
forth in Sec. 1.17(i), and the last known address of all of the 
inventors. The Office shall, except in a continued prosecution 
application under Sec. 1.53(d), forward notice of the filing of the 
application to all of the inventors at the addresses stated in the 
application and publish notice of the filing of the application in the 
Official Gazette. An inventor may subsequently join in the application 
on filing an oath or declaration complying with Sec. 1.63.

[62 FR 53184, Oct. 10, 1997]



Sec. 1.48  Correction of inventorship in a patent application, other than a reissue application.

    (a) If the inventive entity is set forth in error in an executed 
Sec. 1.63 oath or declaration in an application, other than a reissue 
application, and such error arose without any deceptive intention on the 
part of the person named as an inventor in error or on the part of the 
person who through error was not named as an inventor, the application 
may be amended to name only the actual inventor or inventors. When the 
application is involved in an interference, the amendment must comply 
with the requirements of this section and must be accompanied by a 
motion under Sec. 1.634. Such amendment must be accompanied by:
    (1) A petition including a statement from each person being added as 
an inventor and from each person being deleted as an inventor that the 
error in inventorship occurred without deceptive intention on his or her 
part;
    (2) An oath or declaration by the actual inventor or inventors as 
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or 1.47;
    (3) The fee set forth in Sec. 1.17(i); and
    (4) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b)).
    (b) If the correct inventors are named in a nonprovisional 
application, other than a reissue application, and the prosecution of 
the application results in the amendment or cancellation of claims so 
that fewer than all of the currently named inventors are the actual 
inventors of the invention being claimed in the application, an 
amendment must be filed deleting the name or names of the person or 
persons who are not inventors of the invention being claimed. When the 
application is involved in an interference, the amendment must comply 
with the requirements of this section and must be accompanied by a 
motion under Sec. 1.634. Such amendment must be accompanied by:
    (1) A petition including a statement identifying each named inventor 
who is being deleted and acknowledging that the inventor's invention is 
no longer being claimed in the application; and
    (2) The fee set forth in Sec. 1.17(i).
    (c) If a nonprovisional application, other than a reissue 
application, discloses unclaimed subject matter by an inventor or 
inventors not named in the application, the application may be amended 
to add claims to the subject matter and name the correct inventors for 
the application. When the application is involved in an interference, 
the amendment must comply with the requirements of this section and must 
be accompanied by a motion under Sec. 1.634. Such amendment must be 
accompanied by:
    (1) A petition including a statement from each person being added as 
an inventor that the amendment is necessitated by amendment of the 
claims and that the inventorship error occurred without deceptive 
intention on his or her part;
    (2) An oath or declaration by the actual inventor or inventors as 
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or 1.47;
    (3) The fee set forth in Sec. 1.17(i); and
    (4) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b)).
    (d) If the name or names of an inventor or inventors were omitted in 
a provisional application through error without any deceptive intention 
on the part of the omitted inventor or inventors, the provisional 
application may be amended to add the name or names of the omitted 
inventor or inventors. Such amendment must be accompanied by:

[[Page 34]]

    (1) A petition including a statement that the inventorship error 
occurred without deceptive intention on the part of the omitted inventor 
or inventors; and
    (2) The fee set forth in Sec. 1.17(q).
    (e) If a person or persons were named as an inventor or inventors in 
a provisional application through error without any deceptive intention 
on the part of such person or persons, an amendment may be filed in the 
provisional application deleting the name or names of the person or 
persons who were erroneously named. Such amendment must be accompanied 
by:
    (1) A petition including a statement by the person or persons whose 
name or names are being deleted that the inventorship error occurred 
without deceptive intention on the part of such person or persons;
    (2) The fee set forth in Sec. 1.17(q); and
    (3) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b)).
    (f)(1) If the correct inventor or inventors are not named on filing 
a nonprovisional application under Sec. 1.53(b) without an executed oath 
or declaration under Sec. 1.63, the later submission of an executed oath 
or declaration under Sec. 1.63 during the pendency of the application 
will act to correct the earlier identification of inventorship.
    (2) If the correct inventor or inventors are not named on filing a 
provisional application without a cover sheet under Sec. 1.51(c)(1), the 
later submission of a cover sheet under Sec. 1.51(c)(1) during the 
pendency of the application will act to correct the earlier 
identification of inventorship.
    (g) The Office may require such other information as may be deemed 
appropriate under the particular circumstances surrounding the 
correction of inventorship.

[62 FR 53185, Oct. 10, 1997]

                             The Application



Sec. 1.51  General requisites of an application.

    (a) Applications for patents must be made to the Commissioner of 
Patents and Trademarks.
    (b) A complete application filed under Sec. 1.53(b) comprises:
    (1) A specification as prescribed by 35 U.S.C. 112, including a 
claim or claims, see Secs. 1.71 to 1.77;
    (2) An oath or declaration, see Sec. 1.63 and Sec. 1.68;
    (3) Drawings, when necessary, see Secs. 1.81 to 1.85; and
    (4) The prescribed filing fee, see Sec. 1.16.
    (c) A complete provisional application filed under Sec. 1.53(c) 
comprises:
    (1) A cover sheet identifying:
    (i) The application as a provisional application,
    (ii) The name or names of the inventor or inventors, (see 
Sec. 1.41(a)(2)),
    (iii) The residence of each named inventor,
    (iv) The title of the invention,
    (v) The name and registration number of the attorney or agent (if 
applicable),
    (vi) The docket number used by the person filing the application to 
identify the application (if applicable),
    (vii) The correspondence address, and
    (viii) The name of the U.S. Government agency and Government 
contract number (if the invention was made by an agency of the U.S. 
Government or under a contract with an agency of the U.S. Government);
    (2) A specification as prescribed by the first paragraph of 35 
U.S.C. 112, see Sec. 1.71;
    (3) Drawings, when necessary, see Secs. 1.81 to 1.85; and
    (4) The prescribed filing fee, see Sec. 1.16.
    (d) Applicants are encouraged to file an information disclosure 
statement in nonprovisional applications. See Sec. 1.97 and Sec. 1.98. 
No information disclosure statement may be filed in a provisional 
application.

[62 FR 53185, Oct. 10, 1997]



Sec. 1.52  Language, paper, writing, margins.

    (a) The application, any amendments or corrections thereto, and the 
oath or declaration must be in the English language except as provided 
for in Sec. 1.69 and paragraph (d) of this section, or be accompanied by 
a translation of the application and a translation of any corrections or 
amendments into the English language together with a

[[Page 35]]

statement that the translation is accurate. All papers which are to 
become a part of the permanent records of the Patent and Trademark 
Office must be legibly written either by a typewriter or mechanical 
printer in permanent dark ink or its equivalent in portrait orientation 
on flexible, strong, smooth, non-shiny, durable, and white paper. All of 
the application papers must be presented in a form having sufficient 
clarity and contrast between the paper and the writing thereon to permit 
the direct reproduction of readily legible copies in any number by use 
of photographic, electrostatic, photo-offset, and microfilming processes 
and electronic reproduction by use of digital imaging and optical 
character recognition. If the papers are not of the required quality, 
substitute typewritten or mechanically printed papers of suitable 
quality will be required. See Sec. 1.125 for filing substitute 
typewritten or mechanically printed papers constituting a substitute 
specification when required by the Office.
    (b) Except for drawings, the application papers (specification, 
including claims, abstract, oath or declaration, and papers as provided 
for in this part) and also papers subsequently filed, must have each 
page plainly written on only one side of a sheet of paper, with the 
claim or claims commencing on a separate sheet and the abstract 
commencing on a separate sheet. See Secs. 1.72(b) and 1.75(h). The 
sheets of paper must be the same size and either 21.0 cm. by 29.7 cm. 
(DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches). Each sheet 
must include a top margin of at least 2.0 cm. (\3/4\ inch), a left side 
margin of at least 2.5 cm. (1 inch), a right side margin of at least 2.0 
cm. (\3/4\ inch), and a bottom margin of at least 2.0 cm. (\3/4\ inch), 
and no holes should be made in the sheets as submitted. The lines of the 
specification, and any amendments to the specification, must be 1\1/2\ 
or double spaced. The pages of the specification including claims and 
abstract must be numbered consecutively, starting with 1, the numbers 
being centrally located above or preferably, below, the text. See 
Sec. 1.84 for drawings.
    (c) Any interlineation, erasure, cancellation or other alteration of 
the application papers filed should be made on or before the signing of 
any accompanying oath or declaration pursuant to Sec. 1.63 referring to 
those application papers and should be dated and initialed or signed by 
the applicant on the same sheet of paper. Application papers containing 
alterations made after the signing of an oath or declaration referring 
to those application papers must be supported by a supplemental oath or 
declaration under Sec. 1.67(c). After the signing of the oath or 
declaration referring to the application papers, amendments may only be 
made in the manner provided by Sec. 1.121.
    (d) An application may be filed in a language other than English. An 
English translation of the non-English-language application, a statement 
that the translation is accurate, and the fee set forth in Sec. 1.17(k) 
are required to be filed with the application or within such time as may 
be set by the Office.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 
1113, 1123)

[43 FR 20462, May. 11, 1978, as amended at 47 FR 41275, Sept. 17, 1982; 
48 FR 2709, Jan. 20, 1983; 49 FR 554, Jan. 4, 1984; 57 FR 2033, Jan. 17, 
1992; 61 FR 42803, Aug. 19, 1996; 62 FR 53186, Oct. 10, 1997]



Sec. 1.53  Application number, filing date, and completion of application.

    (a) Application number. Any papers received in the Patent and 
Trademark Office which purport to be an application for a patent will be 
assigned an application number for identification purposes.
    (b) Application filing requirements--Nonprovisional application. The 
filing date of an application for patent filed under this section, 
except for a provisional application under paragraph (c) of this section 
or a continued prosecution application under paragraph (d) of this 
section, is the date on which a specification as prescribed by 35 U.S.C. 
112 containing a description pursuant to Sec. 1.71 and at least one 
claim pursuant to Sec. 1.75, and any drawing required by Sec. 1.81(a) 
are filed in the Patent and Trademark Office. No new matter may be 
introduced into an application after

[[Page 36]]

its filing date. A continuing application, which may be a continuation, 
divisional, or continuation-in-part application, may be filed under the 
conditions specified in 35 U.S.C. 120, 121 or 365(c) and Sec. 1.78(a).
    (1) A continuation or divisional application that names as inventors 
the same or fewer than all of the inventors named in the prior 
application may be filed under this paragraph or paragraph (d) of this 
section.
    (2) A continuation-in-part application (which may disclose and claim 
subject matter not disclosed in the prior application) or a continuation 
or divisional application naming an inventor not named in the prior 
application must be filed under this paragraph.
    (c) Application filing requirements--Provisional application. The 
filing date of a provisional application is the date on which a 
specification as prescribed by the first paragraph of 35 U.S.C. 112, and 
any drawing required by Sec. 1.81(a) are filed in the Patent and 
Trademark Office. No amendment, other than to make the provisional 
application comply with the patent statute and all applicable 
regulations, may be made to the provisional application after the filing 
date of the provisional application.
    (1) A provisional application must also include the cover sheet 
required by Sec. 1.51(c)(1) or a cover letter identifying the 
application as a provisional application. Otherwise, the application 
will be treated as an application filed under paragraph (b) of this 
section.
    (2) An application for patent filed under paragraph (b) of this 
section may be converted to a provisional application and be accorded 
the original filing date of the application filed under paragraph (b) of 
this section,
    (i) Provided that a petition requesting the conversion, with the fee 
set forth in Sec. 1.17(q), is filed prior to the earliest of:
    (A) Abandonment of the application filed under paragraph (b) of this 
section;
    (B) Payment of the issue fee on the application filed under 
paragraph (b) of this section;
    (C) Expiration of twelve months after the filing date of the 
application filed under paragraph (b) of this section; or
    (D) The filing of a request for a statutory invention registration 
under Sec. 1.293 in the application filed under paragraph (b) of this 
section.
    (ii) The grant of any such petition will not entitle applicant to a 
refund of the fees which were properly paid in the application filed 
under paragraph (b) of this section.
    (3) A provisional application is not entitled to the right of 
priority under 35 U.S.C. 119 or 365(a) or Sec. 1.55, or to the benefit 
of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or 
Sec. 1.78 of any other application. No claim for priority under 
Sec. 1.78(a)(3) may be made in a design application based on a 
provisional application. No request under Sec. 1.293 for a statutory 
invention registration may be filed in a provisional application. The 
requirements of Secs. 1.821 through 1.825 regarding application 
disclosures containing nucleotide and/or amino acid sequences are not 
mandatory for provisional applications.
    (d) Application filing requirements--Continued prosecution 
(nonprovisional) application. (1) A continuation or divisional 
application (but not a continuation-in-part) of a prior nonprovisional 
application may be filed as a continued prosecution application under 
this paragraph, provided that:
    (i) The prior nonprovisional application is either:
    (A) Complete as defined by Sec. 1.51(b); or
    (B) The national stage of an international application in compliance 
with 35 U.S.C. 371; and
    (ii) The application under this paragraph is filed before the 
earliest of:
    (A) Payment of the issue fee on the prior application, unless a 
petition under Sec. 1.313(b)(5) is granted in the prior application;
    (B) Abandonment of the prior application; or
    (C) Termination of proceedings on the prior application.
    (2) The filing date of a continued prosecution application is the 
date on which a request on a separate paper for an application under 
this paragraph is filed. An application filed under this paragraph:

[[Page 37]]

    (i) Must identify the prior application;
    (ii) Discloses and claims only subject matter disclosed in the prior 
application;
    (iii) Names as inventors the same inventors named in the prior 
application on the date the application under this paragraph was filed, 
except as provided in paragraph (d)(4) of this section;
    (iv) Includes the request for an application under this paragraph, 
will utilize the file jacket and contents of the prior application, 
including the specification, drawings and oath or declaration from the 
prior application, to constitute the new application, and will be 
assigned the application number of the prior application for 
identification purposes; and
    (v) Is a request to expressly abandon the prior application as of 
the filing date of the request for an application under this paragraph.
    (3) The filing fee for a continued prosecution application filed 
under this paragraph is:
    (i) The basic filing fee as set forth in Sec. 1.16; and
    (ii) Any additional Sec. 1.16 fee due based on the number of claims 
remaining in the application after entry of any amendment accompanying 
the request for an application under this paragraph and entry of any 
amendments under Sec. 1.116 unentered in the prior application which 
applicant has requested to be entered in the continued prosecution 
application.
    (4) An application filed under this paragraph may be filed by fewer 
than all the inventors named in the prior application, provided that the 
request for an application under this paragraph when filed is 
accompanied by a statement requesting deletion of the name or names of 
the person or persons who are not inventors of the invention being 
claimed in the new application. No person may be named as an inventor in 
an application filed under this paragraph who was not named as an 
inventor in the prior application on the date the application under this 
paragraph was filed, except by way of a petition under Sec. 1.48.
    (5) Any new change must be made in the form of an amendment to the 
prior application as it existed prior to the filing of an application 
under this paragraph. No amendment in an application under this 
paragraph (a continued prosecution application) may introduce new matter 
or matter that would have been new matter in the prior application. Any 
new specification filed with the request for an application under this 
paragraph will not be considered part of the original application 
papers, but will be treated as a substitute specification in accordance 
with Sec. 1.125.
    (6) The filing of a continued prosecution application under this 
paragraph will be construed to include a waiver of confidentiality by 
the applicant under 35 U.S.C. 122 to the extent that any member of the 
public, who is entitled under the provisions of Sec. 1.14 to access to, 
copies of, or information concerning either the prior application or any 
continuing application filed under the provisions of this paragraph, may 
be given similar access to, copies of, or similar information concerning 
the other application or applications in the file jacket.
    (7) A request for an application under this paragraph is the 
specific reference required by 35 U.S.C. 120 to every application 
assigned the application number identified in such request. No amendment 
in an application under this paragraph may delete this specific 
reference to any prior application.
    (8) In addition to identifying the application number of the prior 
application, applicant should furnish in the request for an application 
under this paragraph the following information relating to the prior 
application to the best of his or her ability:
    (i) Title of invention;
    (ii) Name of applicant(s); and
    (iii) Correspondence address.
    (9) Envelopes containing only requests and fees for filing an 
application under this paragraph should be marked ``Box CPA.'' Requests 
for an application under this paragraph filed by facsimile transmission 
should be clearly marked ``Box CPA.''
    (e) Failure to meet filing date requirements. (1) If an application 
deposited under paragraph (b), (c), or (d) of this section does not meet 
the requirements of such paragraph to be entitled to a filing date, 
applicant will be so notified, if a correspondence address has

[[Page 38]]

been provided, and given a time period within which to correct the 
filing error.
    (2) Any request for review of a notification pursuant to paragraph 
(e)(1) of this section, or a notification that the original application 
papers lack a portion of the specification or drawing(s), must be by way 
of a petition pursuant to this paragraph. Any petition under this 
paragraph must be accompanied by the fee set forth in Sec. 1.17(i) in an 
application filed under paragraphs (b) or (d) of this section, and the 
fee set forth in Sec. 1.17(q) in an application filed under paragraph 
(c) of this section. In the absence of a timely (Sec. 1.181(f)) petition 
pursuant to this paragraph, the filing date of an application in which 
the applicant was notified of a filing error pursuant to paragraph 
(e)(1) of this section will be the date the filing error is corrected.
    (3) If an applicant is notified of a filing error pursuant to 
paragraph (e)(1) of this section, but fails to correct the filing error 
within the given time period or otherwise timely (Sec. 1.181(f)) take 
action pursuant to this paragraph, proceedings in the application will 
be considered terminated. Where proceedings in an application are 
terminated pursuant to this paragraph, the application may be disposed 
of, and any filing fees, less the handling fee set forth in 
Sec. 1.21(n), will be refunded.
    (f) Completion of application subsequent to filing--Nonprovisional 
(including continued prosecution) application. If an application which 
has been accorded a filing date pursuant to paragraph (b) of this 
section, including a continuation, divisional, or continuation-in-part 
application, does not include the appropriate filing fee or an oath or 
declaration by the applicant pursuant to Sec. 1.63 or Sec. 1.175, or, if 
an application which has been accorded a filing date pursuant to 
paragraph (d) of this section does not include the appropriate filing 
fee, applicant will be so notified, if a correspondence address has been 
provided, and given a period of time within which to file the fee, oath 
or declaration, and the surcharge as set forth in Sec. 1.16(e) in order 
to prevent abandonment of the application. See Sec. 1.63(d) concerning 
the submission of a copy of the oath or declaration from the prior 
application for a continuation or divisional application. If the 
required filing fee is not timely paid, or if the processing and 
retention fee set forth in Sec. 1.21(l) is not paid within one year of 
the date of mailing of the notification required by this paragraph, the 
application may be disposed of. The notification pursuant to this 
paragraph may be made simultaneously with any notification pursuant to 
paragraph (e) of this section. If no correspondence address is included 
in the application, applicant has two months from the filing date to 
file the basic filing fee, the oath or declaration in an application 
under paragraph (b) of this section, and the surcharge as set forth in 
Sec. 1.16(e) in order to prevent abandonment of the application; or, if 
no basic filing fee has been paid, one year from the filing date to pay 
the processing and retention fee set forth in Sec. 1.21(l) to prevent 
disposal of the application.
    (g) Completion of application subsequent to filing--Provisional 
application. If a provisional application which has been accorded a 
filing date pursuant to paragraph (c) of this section does not include 
the appropriate filing fee or the cover sheet required by 
Sec. 1.51(c)(1), applicant will be so notified, if a correspondence 
address has been provided, and given a period of time within which to 
file the fee, cover sheet, and the surcharge as set forth in 
Sec. 1.16(l) in order to prevent abandonment of the application. If the 
required filing fee is not timely paid, the application may be disposed 
of. The notification pursuant to this paragraph may be made 
simultaneously with any notification pursuant to paragraph (e) of this 
section. If no correspondence address is included in the application, 
applicant has two months from the filing date to file the basic filing 
fee, cover sheet, and the surcharge as set forth in Sec. 1.16(l) in 
order to prevent abandonment of the application.
    (h) Subsequent treatment of application--Nonprovisional (including 
continued prosecution) application. An application for a patent filed 
under paragraphs (b) or (d) of this section will not be placed on the 
files for examination until all its required parts, complying

[[Page 39]]

with the rules relating thereto, are received, except that certain minor 
informalities may be waived subject to subsequent correction whenever 
required.
    (i) Subsequent treatment of application--Provisional application. A 
provisional application for a patent filed under paragraph (c) of this 
section will not be placed on the files for examination and will become 
abandoned no later than twelve months after its filing date pursuant to 
35 U.S.C. 111(b)(1).
    (j) Filing date of international application. The filing date of an 
international application designating the United States of America is 
treated as the filing date in the United States of America under PCT 
Article 11(3), except as provided in 35 U.S.C. 102(e).

[62 FR 53186, Oct. 10, 1997, as amended at 63 FR 5734, Feb. 4, 1998]



Sec. 1.54  Parts of application to be filed together; filing receipt.

    (a) It is desirable that all parts of the complete application be 
deposited in the Office together; otherwise, a letter must accompany 
each part, accurately and clearly connecting it with the other parts of 
the application. See Sec. 1.53 (f) and (g) with regard to completion of 
an application.
    (b) Applicant will be informed of the application number and filing 
date by a filing receipt, unless the application is an application filed 
under Sec. 1.53(d).

[62 FR 53188, Oct. 10, 1997]



Sec. 1.55  Claim for foreign priority.

    (a) An applicant in a nonprovisional application may claim the 
benefit of the filing date of one or more prior foreign applications 
under the conditions specified in 35 U.S.C. 119 (a) through (d) and 172. 
The claim to priority need be in no special form and may be made by the 
attorney or agent if the foreign application is referred to in the oath 
or declaration as required by Sec. 1.63. The claim for priority and the 
certified copy of the foreign application specified in 35 U.S.C. 119(b) 
must be filed in the case of an interference (Sec. 1.630), when 
necessary to overcome the date of a reference relied upon by the 
examiner, when specifically required by the examiner, and in all other 
situations, before the patent is granted. If the claim for priority or 
the certified copy of the foreign application is filed after the date 
the issue fee is paid, it must be accompanied by a petition requesting 
entry and by the fee set forth in Sec. 1.17(i). If the certified copy is 
not in the English language, a translation need not be filed except in 
the case of interference; or when necessary to overcome the date of a 
reference relied upon by the examiner; or when specifically required by 
the examiner, in which event an English language translation must be 
filed together with a statement that the translation of the certified 
copy is accurate.
    (b) An applicant in a nonprovisional application may under certain 
circumstances claim priority on the basis of one or more applications 
for an inventor's certificate in a country granting both inventor's 
certificates and patents. To claim the right of priority on the basis of 
an application for an inventor's certificate in such a country under 35 
U.S.C. 119(d), the applicant when submitting a claim for such right as 
specified in paragraph (a) of this section, shall include an affidavit 
or declaration. The affidavit or declaration must include a specific 
statement that, upon an investigation, he or she is satisfied that to 
the best of his or her knowledge, the applicant, when filing the 
application for the inventor's certificate, had the option to file an 
application for either a patent or an inventor's certificate as to the 
subject matter of the identified claim or claims forming the basis for 
the claim of priority.

[60 FR 20224, Apr. 25, 1995, as amended at 62 FR 53188, Oct. 10, 1997]



Sec. 1.56  Duty to disclose information material to patentability.

    (a) A patent by its very nature is affected with a public interest. 
The public interest is best served, and the most effective patent 
examination occurs when, at the time an application is being examined, 
the Office is aware of and evaluates the teachings of all information 
material to patentability. Each individual associated with the filing 
and prosecution of a patent application has a duty of candor and good 
faith in dealing with the Office, which includes a duty to disclose to 
the Office

[[Page 40]]

all information known to that individual to be material to patentability 
as defined in this section. The duty to disclose information exists with 
respect to each pending claim until the claim is cancelled or withdrawn 
from consideration, or the application becomes abandoned. Information 
material to the patentability of a claim that is cancelled or withdrawn 
from consideration need not be submitted if the information is not 
material to the patentability of any claim remaining under consideration 
in the application. There is no duty to submit information which is not 
material to the patentability of any existing claim. The duty to 
disclose all information known to be material to patentability is deemed 
to be satisfied if all information known to be material to patentability 
of any claim issued in a patent was cited by the Office or submitted to 
the Office in the manner prescribed by Secs. 1.97(b)-(d) and 1.98. 
However, no patent will be granted on an application in connection with 
which fraud on the Office was practiced or attempted or the duty of 
disclosure was violated through bad faith or intentional misconduct. The 
Office encourages applicants to carefully examine:
    (1) Prior art cited in search reports of a foreign patent office in 
a counterpart application, and
    (2) The closest information over which individuals associated with 
the filing or prosecution of a patent application believe any pending 
claim patentably defines, to make sure that any material information 
contained therein is disclosed to the Office.
    (b) Under this section, information is material to patentability 
when it is not cumulative to information already of record or being made 
of record in the application, and
    (1) It establishes, by itself or in combination with other 
information, a prima facie case of unpatentability of a claim; or
    (2) It refutes, or is inconsistent with, a position the applicant 
takes in:
    (i) Opposing an argument of unpatentability relied on by the Office, 
or
    (ii) Asserting an argument of patentability.

A prima facie case of unpatentability is established when the 
information compels a conclusion that a claim is unpatentable under the 
preponderance of evidence, burden-of-proof standard, giving each term in 
the claim its broadest reasonable construction consistent with the 
specification, and before any consideration is given to evidence which 
may be submitted in an attempt to establish a contrary conclusion of 
patentability.
    (c) Individuals associated with the filing or prosecution of a 
patent application within the meaning of this section are:
    (1) Each inventor named in the application;
    (2) Each attorney or agent who prepares or prosecutes the 
application; and
    (3) Every other person who is substantively involved in the 
preparation or prosecution of the application and who is associated with 
the inventor, with the assignee or with anyone to whom there is an 
obligation to assign the application.
    (d) Individuals other than the attorney, agent or inventor may 
comply with this section by disclosing information to the attorney, 
agent, or inventor.

[57 FR 2034, Jan. 17, 1992]



Sec. 1.57  [Reserved]



Sec. 1.58  Chemical and mathematical formulae and tables.

    (a) The specification, including the claims, may contain chemical 
and mathematical formulas, but shall not contain drawings or flow 
diagrams. The description portion of the specification may contain 
tables; claims may contain tables either if necessary to conform to 35 
U.S.C. 112 or if otherwise found to be desirable.
    (b) [Reserved]
    (c) Chemical and mathematical formulae and tables must be presented 
in compliance with Sec. 1.52 (a) and (b), except that chemical and 
mathematical formulae or tables may be placed in a landscape orientation 
if they cannot be presented satisfactorily in a portrait orientation. 
Typewritten characters used in such formulae and tables must be chosen 
from a block (nonscript) type

[[Page 41]]

font or lettering style having capital letters which are at least 0.21 
cm. (0.08 inch) high (e.g., elite type). A space at least 0.64 cm. (\1/
4\ inch) high should be provided between complex formulae and tables and 
the text. Tables should have the lines and columns of data closely 
spaced to conserve space, consistent with a high degree of legibility.


(Pub. L. 94-131, 89 Stat. 685)

[43 FR 20463, May 11, 1978, as amended at 61 FR 42803, Aug. 19, 1996]



Sec. 1.59  Expungement of information or copy of papers in application file.

    (a)(1) Information in an application will not be expunged and 
returned, except as provided in paragraph (b) of this section. See 
Sec. 1.618 for return of unauthorized and improper papers in 
interferences.
    (2) Information forming part of the original disclosure (i.e., 
written specification including the claims, drawings, and any 
preliminary amendment specifically incorporated into an executed oath or 
declaration under Secs. 1.63 and 1.175) will not be expunged from the 
application file.
    (b) Information, other than what is excluded by paragraph (a)(2) of 
this section, may be requested to be expunged and returned to applicant 
upon petition under this paragraph and payment of the petition fee set 
forth in Sec. 1.17(i). Any petition to expunge and return information 
from an application must establish to the satisfaction of the 
Commissioner that the return of the information is appropriate.
    (c) Upon request by an applicant and payment of the fee specified in 
Sec. 1.19(b), the Office will furnish copies of an application, unless 
the application has been disposed of (see Sec. 1.53 (e), (f) and (g)). 
The Office cannot provide or certify copies of an application that has 
been disposed of.

[62 FR 53188, Oct. 10, 1997]



Secs. 1.60--1.62  [Reserved]

                           Oath or Declaration



Sec. 1.63  Oath or declaration.

    (a) An oath or declaration filed under Sec. 1.51(b)(2) as a part of 
an application must:
    (1) Be executed in accordance with either Sec. 1.66 or Sec. 1.68;
    (2) Identify the specification to which it is directed;
    (3) Identify each inventor by: full name, including the family name, 
and at least one given name without abbreviation together with any other 
given name or initial, and the residence, post office address and 
country of citizenship of each inventor; and
    (4) State whether the inventor is a sole or joint inventor of the 
invention claimed.
    (b) In addition to meeting the requirements of paragraph (a), the 
oath or declaration must state that the person making the oath or 
declaration:
    (1) Has reviewed and understands the contents of the specification, 
including the claims, as amended by any amendment specifically referred 
to in the oath or declaration;
    (2) Believes the named inventor or inventors to be the original and 
first inventor or inventors of the subject matter which is claimed and 
for which a patent is sought; and
    (3) Acknowledges the duty to disclose to the Office all information 
known to the person to be material to patentability as defined in 
Sec. 1.56.
    (c) In addition to meeting the requirements of paragraphs (a) and 
(b) of this section, the oath or declaration in any application in which 
a claim for foreign priority is made pursuant to Sec. 1.55 must identify 
the foreign application for patent or inventor's certificate on which 
priority is claimed, and any foreign application having a filing date 
before that of the application on which priority is claimed, by 
specifying the application number, country, day, month and year of its 
filing.
    (d)(1) A newly executed oath or declaration is not required under 
Sec. 1.51(b)(2) and Sec. 1.53(f) in a continuation or divisional 
application, provided that:
    (i) The prior nonprovisional application contained an oath or 
declaration as prescribed by paragraphs (a) through (c) of this section;
    (ii) The continuation or divisional application was filed by all or 
by fewer than all of the inventors named in the prior application;

[[Page 42]]

    (iii) The specification and drawings filed in the continuation or 
divisional application contain no matter that would have been new matter 
in the prior application; and
    (iv) A copy of the executed oath or declaration filed in the prior 
application, showing the signature or an indication thereon that it was 
signed, is submitted for the continuation or divisional application.
    (2) The copy of the executed oath or declaration submitted under 
this paragraph for a continuation or divisional application must be 
accompanied by a statement requesting the deletion of the name or names 
of the person or persons who are not inventors in the continuation or 
divisional application.
    (3) Where the executed oath or declaration of which a copy is 
submitted for a continuation or divisional application was originally 
filed in a prior application accorded status under Sec. 1.47, the copy 
of the executed oath or declaration for such prior application must be 
accompanied by:
    (i) A copy of the decision granting a petition to accord Sec. 1.47 
status to the prior application, unless all inventors or legal 
representatives have filed an oath or declaration to join in an 
application accorded status under Sec. 1.47 of which the continuation or 
divisional application claims a benefit under 35 U.S.C. 120, 121, or 
365(c); and
    (ii) If one or more inventor(s) or legal representative(s) who 
refused to join in the prior application or could not be found or 
reached has subsequently joined in the prior application or another 
application of which the continuation or divisional application claims a 
benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently 
executed oath(s) or declaration(s) filed by the inventor or legal 
representative to join in the application.
    (4) Where the power of attorney (or authorization of agent) or 
correspondence address was changed during the prosecution of the prior 
application, the change in power of attorney (or authorization of agent) 
or correspondence address must be identified in the continuation or 
divisional application. Otherwise, the Office may not recognize in the 
continuation or divisional application the change of power of attorney 
(or authorization of agent) or correspondence address during the 
prosecution of the prior application.
    (5) A newly executed oath or declaration must be filed in a 
continuation or divisional application naming an inventor not named in 
the prior application.
    (e) A newly executed oath or declaration must be filed in any 
continuation-in-part application, which application may name all, more, 
or fewer than all of the inventors named in the prior application. The 
oath or declaration in any continuation-in-part application must also 
state that the person making the oath or declaration acknowledges the 
duty to disclose to the Office all information known to the person to be 
material to patentability as defined in Sec. 1.56 which became available 
between the filing date of the prior application and the national or PCT 
international filing date of the continuation-in-part application.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2711, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983, as amended at 57 
FR 2034, Jan. 17, 1992; 60 FR 20225, Apr. 25, 1995; 62 FR 53188, Oct. 
10, 1997]



Sec. 1.64  Person making oath or declaration.

    (a) The oath or declaration must be made by all of the actual 
inventors except as provided for in Sec. 1.42, 1.43, or 1.47.
    (b) If the person making the oath or declaration is not the inventor 
(Sec. 1.42, 1.43, or 1.47), the oath or declaration shall state the 
relationship of the person to the inventor and, upon information and 
belief, the facts which the inventor is required to state.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2711, Jan. 20, 1983]



Sec. 1.66  Officers authorized to administer oaths.

    (a) The oath or affirmation may be made before any person within the 
United States authorized by law to administer oaths. An oath made in a 
foreign country may be made before any diplomatic or consular officer of 
the United States authorized to administer oaths, or before any officer 
having an

[[Page 43]]

official seal and authorized to administer oaths in the foreign country 
in which the applicant may be, whose authority shall be proved by a 
certificate of a diplomatic or consular officer of the United States, or 
by an apostille of an official designated by a foreign country which, by 
treaty or convention, accords like effect to apostilles of designated 
officials in the United States. The oath shall be attested in all cases 
in this and other countries, by the proper official seal of the officer 
before whom the oath or affirmation is made. Such oath or affirmation 
shall be valid as to execution if it complies with the laws of the State 
or country where made. When the person before whom the oath or 
affirmation is made in this country is not provided with a seal, his 
official character shall be established by competent evidence, as by a 
certificate from a clerk of a court of record or other proper officer 
having a seal.
    (b) When the oath is taken before an officer in a country foreign to 
the United States, any accompanying application papers, except the 
drawings, must be attached together with the oath and a ribbon passed 
one or more times through all the sheets of the application, except the 
drawings, and the ends of said ribbon brought together under the seal 
before the latter is affixed and impressed, or each sheet must be 
impressed with the official seal of the officer before whom the oath is 
taken. If the papers as filed are not properly ribboned or each sheet 
impressed with the seal, the case will be accepted for examination, but 
before it is allowed, duplicate papers, prepared in compliance with the 
foregoing sentence, must be filed.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[47 FR 41275, Sept. 17, 1982]



Sec. 1.67  Supplemental oath or declaration.

    (a) A supplemental oath or declaration meeting the requirements of 
Sec. 1.63 may be required to be filed to correct any deficiencies or 
inaccuracies present in an earlier filed oath or declaration.
    (b) A supplemental oath or declaration meeting the requirements of 
Sec. 1.63 must be filed when a claim is presented for matter originally 
shown or described but not substantially embraced in the statement of 
invention or claims originally presented or when an oath or declaration 
submitted in accordance with Sec. 1.53(f) after the filing of the 
specification and any required drawings specifically and improperly 
refers to an amendment which includes new matter. No new matter may be 
introduced into a nonprovisional application after its filing date even 
if a supplemental oath or declaration is filed. In proper situations, 
the oath or declaration here required may be made on information and 
belief by an applicant other than the inventor.
    (c) A supplemental oath or declaration meeting the requirements of 
Sec. 1.63 must also be filed if the application was altered after the 
oath or declaration was signed or if the oath or declaration was signed:
    (1) In blank;
    (2) Without review thereof by the person making the oath or 
declaration; or
    (3) Without review of the specification, including the claims, as 
required by Sec. 1.63(b)(1).

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2711, Jan. 20, 1983, as amended at 57 FR 2034, Jan. 17, 1992; 60 
FR 20225, Apr. 25, 1995; 62 FR 53189, Oct. 10, 1997]



Sec. 1.68  Declaration in lieu of oath.

    Any document to be filed in the Patent and Trademark Office and 
which is required by any law, rule, or other regulation to be under oath 
may be subscribed to by a written declaration. Such declaration may be 
used in lieu of the oath otherwise required, if, and only if, the 
declarant is on the same document, warned that willful false statements 
and the like are punishable by fine or imprisonment, or both (18 U.S.C. 
1001) and may jeopardize the validity of the application or any patent 
issuing thereon. The declarant must set forth in the body of the 
declaration that all statements made of the declarant's own knowledge 
are true and that all statements made on information and belief are 
believed to be true.

[49 FR 48452, Dec. 12, 1984]

[[Page 44]]



Sec. 1.69  Foreign language oaths and declarations.

    (a) Whenever an individual making an oath or declaration cannot 
understand English, the oath or declaration must be in a language that 
such individual can understand and shall state that such individual 
understands the content of any documents to which the oath or 
declaration relates.
    (b) Unless the text of any oath or declaration in a language other 
than English is a form provided or approved by the Patent and Trademark 
Office, it must be accompanied by an English translation together with a 
statement that the translation is accurate, except that in the case of 
an oath or declaration filed under Sec. 1.63, the translation may be 
filed in the Office no later than two months from the date applicant is 
notified to file the translation.

(35 U.S.C. 6, Pub. L. 97-247)

[42 FR 5594, Jan. 28, 1977, as amended at 48 FR 2711, Jan. 20, 1983; 62 
FR 53189, Oct. 10, 1997]



Sec. 1.70  [Reserved]

                              Specification

    Authority: Secs. 1.71 to 1.79 also issued under 35 U.S.C. 112.



Sec. 1.71  Detailed description and specification of the invention.

    (a) The specification must include a written description of the 
invention or discovery and of the manner and process of making and using 
the same, and is required to be in such full, clear, concise, and exact 
terms as to enable any person skilled in the art or science to which the 
invention or discovery appertains, or with which it is most nearly 
connected, to make and use the same.
    (b) The specification must set forth the precise invention for which 
a patent is solicited, in such manner as to distinguish it from other 
inventions and from what is old. It must describe completely a specific 
embodiment of the process, machine, manufacture, composition of matter 
or improvement invented, and must explain the mode of operation or 
principle whenever applicable. The best mode contemplated by the 
inventor of carrying out his invention must be set forth.
    (c) In the case of an improvement, the specification must 
particularly point out the part or parts of the process, machine, 
manufacture, or composition of matter to which the improvement relates, 
and the description should be confined to the specific improvement and 
to such parts as necessarily cooperate with it or as may be necessary to 
a complete understanding or description of it.
    (d) A copyright or mask work notice may be placed in a design or 
utility patent application adjacent to copyright and mask work material 
contained therein. The notice may appear at any appropriate portion of 
the patent application disclosure. For notices in drawings, see 
Sec. 1.84(s). The content of the notice must be limited to only those 
elements provided for by law. For example, ``1983 
John Doe'' (17 U.S.C. 401) and `` *M* John Doe'' (17 U.S.C. 909) would 
be properly limited and, under current statutes, legally sufficient 
notices of copyright and mask work, respectively. Inclusion of a 
copyright or mask work notice will be permitted only if the 
authorization language set forth in paragraph (e) of this section is 
included at the beginning (preferably as the first paragraph) of the 
specification.
    (e) The authorization shall read as follows:

    A portion of the disclosure of this patent document contains 
material which is subject to (copyright or mask work) protection. The 
(copyright or mask work) owner has no objection to the facsimile 
reproduction by anyone of the patent document or the patent disclosure, 
as it appears in the Patent and Trademark Office patent file or records, 
but otherwise reserves all (copyright or mask work) rights whatsoever.

[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 47808, Nov. 28, 1988; 
58 FR 38723, July 20, 1993]



Sec. 1.72  Title and abstract.

    (a) The title of the invention, which should be as short and 
specific as possible, should appear as a heading on the first page of 
the specification, if it does not otherwise appear at the beginning of 
the application.
    (b) A brief abstract of the technical disclosure in the 
specification must

[[Page 45]]

commence on a separate sheet, preferably following the claims, under the 
heading ``Abstract of the Disclosure.'' The purpose of the abstract is 
to enable the Patent and Trademark Office and the public generally to 
determine quickly from a cursory inspection the nature and gist of the 
technical disclosure. The abstract shall not be used for interpreting 
the scope of the claims.

(Pub. L. 94-131, 89 Stat. 685)

[31 FR 12922, Oct. 4, 1966, as amended at 43 FR 20464, May 11, 1978; 61 
FR 42803, Aug. 19, 1996]



Sec. 1.73  Summary of the invention.

    A brief summary of the invention indicating its nature and 
substance, which may include a statement of the object of the invention, 
should precede the detailed description. Such summary should, when set 
forth, be commensurate with the invention as claimed and any object 
recited should be that of the invention as claimed.



Sec. 1.74  Reference to drawings.

    When there are drawings, there shall be a brief description of the 
several views of the drawings and the detailed description of the 
invention shall refer to the different views by specifying the numbers 
of the figures and to the different parts by use of reference letters or 
numerals (preferably the latter).



Sec. 1.75  Claim(s).

    (a) The specification must conclude with a claim particularly 
pointing out and distinctly claiming the subject matter which the 
applicant regards as his invention or discovery.
    (b) More than one claim may be presented provided they differ 
substantially from each other and are not unduly multiplied.
    (c) One or more claims may be presented in dependent form, referring 
back to and further limiting another claim or claims in the same 
application. Any dependent claim which refers to more than one other 
claim (``multiple dependent claim'') shall refer to such other claims in 
the alternative only. A multiple dependent claim shall not serve as a 
basis for any other multiple dependent claim. For fee calculation 
purposes under Sec. 1.16, a multiple dependent claim will be considered 
to be that number of claims to which direct reference is made therein. 
For fee calculation purposes, also, any claim depending from a multiple 
dependent claim will be considered to be that number of claims to which 
direct reference is made in that multiple dependent claim. In addition 
to the other filing fees, any original application which is filed with, 
or is amended to include, multiple dependent claims must have paid 
therein the fee set forth in Sec. 1.16(d). Claims in dependent form 
shall be construed to include all the limitations of the claim 
incorporated by reference into the dependent claim. A multiple dependent 
claim shall be construed to incorporate by reference all the limitations 
of each of the particular claims in relation to which it is being 
considered.
    (d)(1) The claim or claims must conform to the invention as set 
forth in the remainder of the specification and the terms and phrases 
used in the claims must find clear support or antecedent basis in the 
description so that the meaning of the terms in the claims may be 
ascertainable by reference to the description. (See Sec. 1.58(a).)
    (2) See Secs. 1.141 to 1.146 as to claiming different inventions in 
one application.
    (e) Where the nature of the case admits, as in the case of an 
improvement, any independent claim should contain in the following 
order:
    (1) A preamble comprising a general description of all the elements 
or steps of the claimed combination which are conventional or known,
    (2) A phrase such as ``wherein the improvement comprises,'' and
    (3) Those elements, steps and/or relationships which constitute that 
portion of the claimed combination which the applicant considers as the 
new or improved portion.
    (f) If there are several claims, they shall be numbered 
consecutively in Arabic numerals.
    (g) The least restrictive claim should be presented as claim number 
1, and all dependent claims should be grouped together with the claim or 
claims to which they refer to the extent practicable.
    (h) The claim or claims must commence on a separate sheet.

[[Page 46]]

    (i) Where a claim sets forth a plurality of elements or steps, each 
element or step of the claim should be separated by a line indentation.

(35 U.S.C. 6; 15 U.S.C. 1113, 1126)

[31 FR 12922, Oct. 4, 1966, as amended at 36 FR 12690, July 3, 1971; 37 
FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; 47 FR 41276, Sept. 
17, 1982; 61 FR 42803, Aug. 19, 1996]



Sec. 1.77  Arrangement of application elements.

    (a) The elements of the application, if applicable, should appear in 
the following order:
    (1) Utility Application Transmittal Form.
    (2) Fee Transmittal Form.
    (3) Title of the invention; or an introductory portion stating the 
name, citizenship, and residence of the applicant, and the title of the 
invention.
    (4) Cross-reference to related applications.
    (5) Statement regarding federally sponsored research or development.
    (6) Reference to a ``Microfiche appendix.'' (See Sec. 1.96 (c)). The 
total number of microfiche and total number of frames should be 
specified.
    (7) Background of the invention.
    (8) Brief summary of the invention.
    (9) Brief description of the several views of the drawing.
    (10) Detailed description of the invention.
    (11) Claim or claims.
    (12) Abstract of the Disclosure.
    (13) Drawings.
    (14) Executed oath or declaration.
    (15) Sequence Listing (See Secs. 1.821 through 1.825).
    (b) The elements set forth in paragraphs (a)(3) through (a)(5), 
(a)(7) through (a)(12) and (a)(15) of this section should appear in 
upper case, without underlining or bold type, as section headings. If no 
text follows the section heading, the phrase ``Not Applicable'' should 
follow the section heading.

[61 FR 42803, Aug. 19, 1996]



Sec. 1.78  Claiming benefit of earlier filing date and cross-references to other applications.

    (a)(1) A nonprovisional application may claim an invention disclosed 
in one or more prior filed copending nonprovisional applications or 
copending international applications designating the United States of 
America. In order for a nonprovisional application to claim the benefit 
of a prior filed copending nonprovisional application or copending 
international application designating the United States of America, each 
prior application must name as an inventor at least one inventor named 
in the later filed nonprovisional application and disclose the named 
inventor's invention claimed in at least one claim of the later filed 
nonprovisional application in the manner provided by the first paragraph 
of 35 U.S.C. 112. In addition, each prior application must be:
    (i) An international application entitled to a filing date in 
accordance with PCT Article 11 and designating the United States of 
America; or
    (ii) Complete as set forth in Sec. 1.51(b); or
    (iii) Entitled to a filing date as set forth in Sec. 1.53(b) or 
Sec. 1.53(d) and include the basic filing fee set forth in Sec. 1.16; or
    (iv) Entitled to a filing date as set forth in Sec. 1.53(b) and have 
paid therein the processing and retention fee set forth in Sec. 1.21(l) 
within the time period set forth in Sec. 1.53(f).
    (2) Except for a continued prosecution application filed under 
Sec. 1.53(d), any nonprovisional application claiming the benefit of one 
or more prior filed copending nonprovisional applications or 
international applications designating the United States of America must 
contain or be amended to contain in the first sentence of the 
specification following the title a reference to each such prior 
application, identifying it by application number (consisting of the 
series code and serial number) or international application number and 
international filing date and indicating the relationship of the 
applications. The request for a continued prosecution application under 
Sec. 1.53(d) is the specific reference required by 35 U.S.C. 120 to the 
prior application. The identification of an application by application 
number under this section is the specific reference required by 35 
U.S.C. 120 to every application assigned that application number. Cross-
references to other related applications may be made when appropriate 
(see Sec. 1.14(a)).

[[Page 47]]

    (3) A nonprovisional application other than for a design patent may 
claim an invention disclosed in one or more prior filed copending 
provisional applications. Since a provisional application can be pending 
for no more than twelve months, the last day of pendency may occur on a 
Saturday, Sunday, or Federal holiday within the District of Columbia 
which for copendency would require the nonprovisional application to be 
filed on or prior to the Saturday, Sunday, or Federal holiday. In order 
for a nonprovisional application to claim the benefit of one or more 
prior filed copending provisional applications, each prior provisional 
application must name as an inventor at least one inventor named in the 
later filed nonprovisional application and disclose the named inventor's 
invention claimed in at least one claim of the later filed 
nonprovisional application in the manner provided by the first paragraph 
of 35 U.S.C. 112. In addition, each prior provisional application must 
be:
    (i) Complete as set forth in Sec. 1.51(c); or
    (ii) Entitled to a filing date as set forth in Sec. 1.53(c) and 
include the basic filing fee set forth in Sec. 1.16(k).
    (4) Any nonprovisional application claiming the benefit of one or 
more prior filed copending provisional applications must contain or be 
amended to contain in the first sentence of the specification following 
the title a reference to each such prior provisional application, 
identifying it as a provisional application, and including the 
provisional application number (consisting of series code and serial 
number).
    (b) Where two or more applications filed by the same applicant 
contain conflicting claims, elimination of such claims from all but one 
application may be required in the absence of good and sufficient reason 
for their retention during pendency in more than one application.
    (c) Where an application or a patent under reexamination and at 
least one other application naming different inventors are owned by the 
same party and contain conflicting claims, and there is no statement of 
record indicating that the claimed inventions were commonly owned or 
subject to an obligation of assignment to the same person at the time 
the later invention was made, the assignee may be called upon to state 
whether the claimed inventions were commonly owned or subject to an 
obligation of assignment to the same person at the time the later 
invention was made, and if not, indicate which named inventor is the 
prior inventor.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)

[36 FR 7312, Apr. 17, 1971, as amended at 50 FR 9380, Mar. 7, 1985; 50 
FR 11366, Mar. 21, 1985; 58 FR 54509, Oct. 22, 1993; 60 FR 20225, Apr. 
25, 1995; 61 FR 42804, Aug. 19, 1996; 62 FR 53189, Oct. 10, 1997]



Sec. 1.79  Reservation clauses not permitted.

    A reservation for a future application of subject matter disclosed 
but not claimed in a pending application will not be permitted in the 
pending application, but an application disclosing unclaimed subject 
matter may contain a reference to a later filed application of the same 
applicant or owned by a common assignee disclosing and claiming that 
subject matter.

                              The Drawings

    Authority: Secs. 1.81 to 1.88 also issued under 35 U.S.C. 113.



Sec. 1.81  Drawings required in patent application.

    (a) The applicant for a patent is required to furnish a drawing of 
his or her invention where necessary for the understanding of the 
subject matter sought to be patented; this drawing, or a high quality 
copy thereof, must be filed with the application. Since corrections are 
the responsibility of the applicant, the original drawing(s) should be 
retained by the applicant for any necessary future correction.
    (b) Drawings may include illustrations which facilitate an 
understanding of the invention (for example, flow sheets in cases of 
processes, and diagrammatic views).

[[Page 48]]

    (c) Whenever the nature of the subject matter sought to be patented 
admits of illustration by a drawing without its being necessary for the 
understanding of the subject matter and the applicant has not furnished 
such a drawing, the examiner will require its submission within a time 
period of not less than two months from the date of the sending of a 
notice thereof.
    (d) Drawings submitted after the filing date of the application may 
not be used to overcome any insufficiency of the specification due to 
lack of an enabling disclosure or otherwise inadequate disclosure 
therein, or to supplement the original disclosure thereof for the 
purpose of interpretation of the scope of any claim.

[43 FR 4015, Jan. 31, 1978, as amended at 53 FR 47808, Nov. 28, 1988]



Sec. 1.83  Content of drawing.

    (a) The drawing in a nonprovisional application must show every 
feature of the invention specified in the claims. However, conventional 
features disclosed in the description and claims, where their detailed 
illustration is not essential for a proper understanding of the 
invention, should be illustrated in the drawing in the form of a 
graphical drawing symbol or a labeled representation (e.g., a labeled 
rectangular box).
    (b) When the invention consists of an improvement on an old machine 
the drawing must when possible exhibit, in one or more views, the 
improved portion itself, disconnected from the old structure, and also 
in another view, so much only of the old structure as will suffice to 
show the connection of the invention therewith.
    (c) Where the drawings in a nonprovisional application do not comply 
with the requirements of paragraphs (a) and (b) of this section, the 
examiner shall require such additional illustration within a time period 
of not less than two months from the date of the sending of a notice 
thereof. Such corrections are subject to the requirements of 
Sec. 1.81(d).

[31 FR 12923, Oct. 4, 1966, as amended at 43 FR 4015, Jan. 31, 1978; 60 
FR 20226, Apr. 25, 1995]



Sec. 1.84  Standards for drawings.

    (a) Drawings. There are two acceptable categories for presenting 
drawings in utility patent applications:
    (1) Black ink. Black and white drawings are normally required. India 
ink, or its equivalent that secures solid black lines, must be used for 
drawings, or
    (2) Color. On rare occasions, color drawings may be necessary as the 
only practical medium by which to disclose the subject matter sought to 
be patented in a utility patent application or the subject matter of a 
statutory invention registration. The Patent and Trademark Office will 
accept color drawings in utility patent applications and statutory 
invention registrations only after granting a petition filed under this 
paragraph explaining why the color drawings are necessary. Any such 
petition must include the following:
    (i) The fee set forth in Sec. 1.17(i);
    (ii) Three (3) sets of color drawings; and
    (iii) The specification must contain the following language as the 
first paragraph in that portion of the specification relating to the 
brief description of the drawing:

    The file of this patent contains at least one drawing executed in 
color. Copies of this patent with color drawing(s) will be provided by 
the Patent and Trademark Office upon request and payment of the 
necessary fee.


If the language is not in the specification, a proposed amendment to 
insert the language must accompany the petition.
    (b) Photographs--(1) Black and white. Photographs are not ordinarily 
permitted in utility patent applications. However, the Office will 
accept photographs in utility patent applications only after the 
granting of a petition filed under this paragraph which requests that 
photographs be accepted. Any such petition must include the following:
    (i) The fee set forth in Sec. 1.17(i); and
    (ii) Three (3) sets of photographs. Photographs must either be 
developed on double weight photographic paper or be permanently mounted 
on bristol board. The photographs must be of sufficient quality so that 
all details in the

[[Page 49]]

drawings are reproducible in the printed patent.
    (2) Color. Color photographs will be accepted in utility patent 
applications if the conditions for accepting color drawings have been 
satisfied. See paragraph (a)(2) of this section.
    (c) Identification of drawings. Identifying indicia, if provided, 
should include the application number or the title of the invention, 
inventor's name, docket number (if any), and the name and telephone 
number of a person to call if the Office is unable to match the drawings 
to the proper application. This information should be placed on the back 
of each sheet of drawings a minimum distance of 1.5 cm. (\5/8\ inch) 
down from the top of the page. In addition, a reference to the 
application number, or, if an application number has not been assigned, 
the inventor's name, may be included in the left-hand corner, provided 
that the reference appears within 1.5 cm. (\5/8\ inch) from the top of 
the sheet.
    (d) Graphic forms in drawings. Chemical or mathematical formulae, 
tables, and waveforms may be submitted as drawings, and are subject to 
the same requirements as drawings. Each chemical or mathematical formula 
must be labeled as a separate figure, using brackets when necessary, to 
show that information is properly integrated. Each group of waveforms 
must be presented as a single figure, using a common vertical axis with 
time extending along the horizontal axis. Each individual waveform 
discussed in the specification must be identified with a separate letter 
designation adjacent to the vertical axis.
    (e) Type of paper. Drawings submitted to the Office must be made on 
paper which is flexible, strong, white, smooth, non-shiny, and durable. 
All sheets must be free from cracks, creases, and folds. Only one side 
of the sheet shall be used for the drawing. Each sheet must be 
reasonably free from erasures and must be free from alterations, 
overwritings, and interlineations. Photographs must either be developed 
on double weight photographic paper or be permanently mounted on bristol 
board. See paragraph (b) of this section for other requirements for 
photographs.
    (f) Size of paper. All drawing sheets in an application must be the 
same size. One of the shorter sides of the sheet is regarded as its top. 
The size of the sheets on which drawings are made must be:
    (1) 21.0 cm. by 29.7 cm. (DIN size A4), or
    (2) 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches).
    (g) Margins. The sheets must not contain frames around the sight 
(i.e., the usable surface), but should have scan target points (i.e., 
cross-hairs) printed on two catercorner margin corners. Each sheet must 
include a top margin of at least 2.5 cm. (1 inch), a left side margin of 
at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (\5/
8\ inch), and a bottom margin of at least 1.0 cm. (\3/8\ inch), thereby 
leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 
cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm. 
by 24.4 cm. (6\15/16\ by 9\5/8\ inches) on 21.6 cm. by 27.9 cm. (8\1/2\ 
by 11 inch) drawing sheets.
    (h) Views. The drawing must contain as many views as necessary to 
show the invention. The views may be plan, elevation, section, or 
perspective views. Detail views of portions of elements, on a larger 
scale if necessary, may also be used. All views of the drawing must be 
grouped together and arranged on the sheet(s) without wasting space, 
preferably in an upright position, clearly separated from one another, 
and must not be included in the sheets containing the specifications, 
claims, or abstract. Views must not be connected by projection lines and 
must not contain center lines. Waveforms of electrical signals may be 
connected by dashed lines to show the relative timing of the waveforms.
    (1) Exploded views. Exploded views, with the separated parts 
embraced by a bracket, to show the relationship or order of assembly of 
various parts are permissible. When an exploded view is shown in a 
figure which is on the same sheet as another figure, the exploded view 
should be placed in brackets.
    (2) Partial views. When necessary, a view of a large machine or 
device in its entirety may be broken into partial views on a single 
sheet, or extended over several sheets if there is no loss in

[[Page 50]]

facility of understanding the view. Partial views drawn on separate 
sheets must always be capable of being linked edge to edge so that no 
partial view contains parts of another partial view. A smaller scale 
view should be included showing the whole formed by the partial views 
and indicating the positions of the parts shown. When a portion of a 
view is enlarged for magnification purposes, the view and the enlarged 
view must each be labeled as separate views.
    (i) Where views on two or more sheets form, in effect, a single 
complete view, the views on the several sheets must be so arranged that 
the complete figure can be assembled without concealing any part of any 
of the views appearing on the various sheets.
    (ii) A very long view may be divided into several parts placed one 
above the other on a single sheet. However, the relationship between the 
different parts must be clear and unambiguous.
    (3) Sectional views. The plane upon which a sectional view is taken 
should be indicated on the view from which the section is cut by a 
broken line. The ends of the broken line should be designated by Arabic 
or Roman numerals corresponding to the view number of the sectional 
view, and should have arrows to indicate the direction of sight. 
Hatching must be used to indicate section portions of an object, and 
must be made by regularly spaced oblique parallel lines spaced 
sufficiently apart to enable the lines to be distinguished without 
difficulty. Hatching should not impede the clear reading of the 
reference characters and lead lines. If it is not possible to place 
reference characters outside the hatched area, the hatching may be 
broken off wherever reference characters are inserted. Hatching must be 
at a substantial angle to the surrounding axes or principal lines, 
preferably 45 deg.. A cross section must be set out and drawn to show 
all of the materials as they are shown in the view from which the cross 
section was taken. The parts in cross section must show proper 
material(s) by hatching with regularly spaced parallel oblique strokes, 
the space between strokes being chosen on the basis of the total area to 
be hatched. The various parts of a cross section of the same item should 
be hatched in the same manner and should accurately and graphically 
indicate the nature of the material(s) that is illustrated in cross 
section. The hatching of juxtaposed different elements must be angled in 
a different way. In the case of large areas, hatching may be confined to 
an edging drawn around the entire inside of the outline of the area to 
be hatched. Different types of hatching should have different 
conventional meanings as regards the nature of a material seen in cross 
section.
    (4) Alternate position. A moved position may be shown by a broken 
line superimposed upon a suitable view if this can be done without 
crowding; otherwise, a separate view must be used for this purpose.
    (5) Modified forms. Modified forms of construction must be shown in 
separate views.
    (i) Arrangement of views. One view must not be placed upon another 
or within the outline of another. All views on the same sheet should 
stand in the same direction and, if possible, stand so that they can be 
read with the sheet held in an upright position. If views wider than the 
width of the sheet are necessary for the clearest illustration of the 
invention, the sheet may be turned on its side so that the top of the 
sheet, with the appropriate top margin to be used as the heading space, 
is on the right-hand side. Words must appear in a horizontal, left-to-
right fashion when the page is either upright or turned so that the top 
becomes the right side, except for graphs utilizing standard scientific 
convention to denote the axis of abscissas (of X) and the axis of 
ordinates (of Y).
    (j) View for Official Gazette. One of the views should be suitable 
for publication in the Official Gazette as the illustration of the 
invention.
    (k) Scale. (1) The scale to which a drawing is made must be large 
enough to show the mechanism without crowding when the drawing is 
reduced in size to two-thirds in reproduction. Views of portions of the 
mechanism on a larger scale should be used when necessary to show 
details clearly. Two or more sheets may be used if one does not give 
sufficient room. The number of sheets should be kept to a minimum.

[[Page 51]]

    (2) When approved by the examiner, the scale of the drawing may be 
graphically represented. Indications such as ``actual size'' or ``scale 
\1/2\'' on the drawings, are not permitted, since these lose their 
meaning with reproduction in a different format.
    (3) Elements of the same view must be in proportion to each other, 
unless a difference in proportion is indispensable for the clarity of 
the view. Instead of showing elements in different proportion, a 
supplementary view may be added giving a larger-scale illustration of 
the element of the initial view. The enlarged element shown in the 
second view should be surrounded by a finely drawn or ``dot-dash'' 
circle in the first view indicating its location without obscuring the 
view.
    (l) Character of lines, numbers, and letters. All drawings must be 
made by a process which will give them satisfactory reproduction 
characteristics. Every line, number, and letter must be durable, clean, 
black (except for color drawings), sufficiently dense and dark, and 
uniformly thick and well-defined. The weight of all lines and letters 
must be heavy enough to permit adequate reproduction. This requirement 
applies to all lines however fine, to shading, and to lines representing 
cut surfaces in sectional views. Lines and strokes of different 
thicknesses may be used in the same drawing where different thicknesses 
have a different meaning.
    (m) Shading. The use of shading in views is encouraged if it aids in 
understanding the invention and if it does not reduce legibility. 
Shading is used to indicate the surface or shape of spherical, 
cylindrical, and conical elements of an object. Flat parts may also be 
lightly shaded. Such shading is preferred in the case of parts shown in 
perspective, but not for cross sections. See paragraph (h)(3) of this 
section. Spaced lines for shading are preferred. These lines must be 
thin, as few in number as practicable, and they must contrast with the 
rest of the drawings. As a substitute for shading, heavy lines on the 
shade side of objects can be used except where they superimpose on each 
other or obscure reference characters. Light should come from the upper 
left corner at an angle of 45 deg.. Surface delineations should 
preferably be shown by proper shading. Solid black shading areas are not 
permitted, except when used to represent bar graphs or color.
    (n) Symbols. Graphical drawing symbols may be used for conventional 
elements when appropriate. The elements for which such symbols and 
labeled representations are used must be adequately identified in the 
specification. Known devices should be illustrated by symbols which have 
a universally recognized conventional meaning and are generally accepted 
in the art. Other symbols which are not universally recognized may be 
used, subject to approval by the Office, if they are not likely to be 
confused with existing conventional symbols, and if they are readily 
identifiable.
    (o) Legends. Suitable descriptive legends may be used, or may be 
required by the Examiner, where necessary for understanding of the 
drawing, subject to approval by the Office. They should contain as few 
words as possible.
    (p) Numbers, letters, and reference characters. (1) Reference 
characters (numerals are preferred), sheet numbers, and view numbers 
must be plain and legible, and must not be used in association with 
brackets or inverted commas, or enclosed within outlines, e.g., 
encircled. They must be oriented in the same direction as the view so as 
to avoid having to rotate the sheet. Reference characters should be 
arranged to follow the profile of the object depicted.
    (2) The English alphabet must be used for letters, except where 
another alphabet is customarily used, such as the Greek alphabet to 
indicate angles, wavelengths, and mathematical formulas.
    (3) Numbers, letters, and reference characters must measure at least 
.32 cm. (\1/8\ inch) in height. They should not be placed in the drawing 
so as to interfere with its comprehension. Therefore, they should not 
cross or mingle with the lines. They should not be placed upon hatched 
or shaded surfaces. When necessary, such as indicating a surface or 
cross section, a reference character may be underlined and a blank space 
may be left in the hatching or shading where the character occurs so 
that it appears distinct.

[[Page 52]]

    (4) The same part of an invention appearing in more than one view of 
the drawing must always be designated by the same reference character, 
and the same reference character must never be used to designate 
different parts.
    (5) Reference characters not mentioned in the description shall not 
appear in the drawings. Reference characters mentioned in the 
description must appear in the drawings.
    (q) Lead lines. Lead lines are those lines between the reference 
characters and the details referred to. Such lines may be straight or 
curved and should be as short as possible. They must originate in the 
immediate proximity of the reference character and extend to the feature 
indicated. Lead lines must not cross each other. Lead lines are required 
for each reference character except for those which indicate the surface 
or cross section on which they are placed. Such a reference character 
must be underlined to make it clear that a lead line has not been left 
out by mistake. Lead lines must be executed in the same way as lines in 
the drawing. See paragraph (l) of this section.
    (r) Arrows. Arrows may be used at the ends of the lines, provided 
that their meaning is clear, as follows:
    (1) On a lead line, a freestanding arrow to indicate the entire 
section towards which it points;
    (2) On a lead line, an arrow touching a line to indicate the surface 
shown by the line looking along the direction of the arrow; or
    (3) To show the direction of movement.
    (s) Copyright or Mask Work Notice. A copyright or mask work notice 
may appear in the drawing, but must be placed within the sight of the 
drawing immediately below the figure representing the copyright or mask 
work material and be limited to letters having a print size of .32 cm. 
to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be 
limited to only those elements provided for by law. For example, 
``1983 John Doe'' (17 U.S.C. 401) and ``*M* John 
Doe'' (17 U.S.C. 909) would be properly limited and, under current 
statutes, legally sufficient notices of copyright and mask work, 
respectively. Inclusion of a copyright or mask work notice will be 
permitted only if the authorization language set forth in Sec. 1.71(e) 
is included at the beginning (preferably as the first paragraph) of the 
specification.
    (t) Numbering of sheets of drawings. The sheets of drawings should 
be numbered in consecutive Arabic numerals, starting with 1, within the 
sight as defined in paragraph (g) of this section. These numbers, if 
present, must be placed in the middle of the top of the sheet, but not 
in the margin. The numbers can be placed on the right-hand side if the 
drawing extends too close to the middle of the top edge of the usable 
surface. The drawing sheet numbering must be clear and larger than the 
numbers used as reference characters to avoid confusion. The number of 
each sheet should be shown by two Arabic numerals placed on either side 
of an oblique line, with the first being the sheet number, and the 
second being the total number of sheets of drawings, with no other 
marking.
    (u) Numbering of views. (1) The different views must be numbered in 
consecutive Arabic numerals, starting with 1, independent of the 
numbering of the sheets and, if possible, in the order in which they 
appear on the drawing sheet(s). Partial views intended to form one 
complete view, on one or several sheets, must be identified by the same 
number followed by a capital letter. View numbers must be preceded by 
the abbreviation ``FIG.'' Where only a single view is used in an 
application to illustrate the claimed invention, it must not be numbered 
and the abbreviation ``FIG.'' must not appear.
    (2) Numbers and letters identifying the views must be simple and 
clear and must not be used in association with brackets, circles, or 
inverted commas. The view numbers must be larger than the numbers used 
for reference characters.
    (v) Security markings. Authorized security markings may be placed on 
the drawings provided they are outside the sight, preferably centered in 
the top margin.
    (w) Corrections. Any corrections on drawings submitted to the Office 
must be durable and permanent.

[[Page 53]]

    (x) Holes. No holes should be made by applicant in the drawing 
sheets. (See Sec. 1.152 for design drawings, Sec. 1.165 for plant 
drawings, and Sec. 1.174 for reissue drawings.)

[58 FR 38723, July 20, 1993; 58 FR 45841, 45842, Aug. 31, 1993, as 
amended at 61 FR 42804, Aug. 19, 1996; 62 FR 53190, Oct. 10, 1997]



Sec. 1.85  Corrections to drawings.

    (a) The requirements of Sec. 1.84 relating to drawings will be 
strictly enforced. A drawing not executed in conformity thereto, if 
suitable for reproduction, may be admitted for examination but in such 
case a new drawing must be furnished.
    (b) The Patent and Trademark Office will not release drawings in 
applications having a filing date after January 1, 1989, or any drawings 
from any applications after January 1, 1991, for purposes of correction. 
If corrections are necessary, new corrected drawings must be submitted 
within the time set by the Office.
    (c) When corrected drawings are required to be submitted at the time 
of allowance, the applicant is required to submit acceptable drawings 
within three months from the mailing of the ``Notice of Allowability.'' 
Within that three-month period, two weeks should be allowed for review 
of the drawings by the Drafting Branch. If the Office finds that 
correction is necessary, the applicant must submit a new corrected 
drawing to the Office within the original three-month period to avoid 
the necessity of obtaining an extension of time and paying the extension 
fee. Therefore, the applicant should file corrected drawings as soon as 
possible following the receipt of the Notice of Allowability. The 
provisions with respect to obtaining an extension of time relates only 
to the late filing of corrected drawings. The time limit for payment of 
the issue fee is a fixed three-month period which cannot be extended as 
set forth in 35 U.S.C. 151.

[53 FR 47810, Nov. 28, 1988]



Sec. 1.88  [Reserved]

                       Models, Exhibits, Specimens

    Authority: Secs. 1.91 to 1.95 also issued under 35 U.S.C. 114.



Sec. 1.91  Models or exhibits not generally admitted as part of application or patent.

    (a) A model or exhibit will not be admitted as part of the record of 
an application unless it:
    (1) Substantially conforms to the requirements of Sec. 1.52 or 
Sec. 1.84;
    (2) Is specifically required by the Office; or
    (3) Is filed with a petition under this section including:
    (i) The petition fee as set forth in Sec. 1.17(i); and
    (ii) An explanation of why entry of the model or exhibit in the file 
record is necessary to demonstrate patentability.
    (b) Notwithstanding the provisions of paragraph (a) of this section, 
a model, working model, or other physical exhibit may be required by the 
Office if deemed necessary for any purpose in examination of the 
application.

[62 FR 53190, Oct. 10, 1997]



Sec. 1.92  [Reserved]



Sec. 1.93  Specimens.

    When the invention relates to a composition of matter, the applicant 
may be required to furnish specimens of the composition, or of its 
ingredients or intermediates, for the purpose of inspection or 
experiment.



Sec. 1.94  Return of models, exhibits or specimens.

    Models, exhibits, or specimens in applications which have become 
abandoned, and also in other applications on conclusion of the 
prosecution, may be returned to the applicant upon demand and at his 
expense, unless it be deemed necessary that they be preserved in the 
Office. Such physical exhibits in contested cases may be returned to the 
parties at their expense. If not claimed within a reasonable time, they 
may be disposed of at the discretion of the Commissioner.



Sec. 1.95  Copies of exhibits.

    Copies of models or other physical exhibits will not ordinarily be 
furnished by the Office, and any model or exhibit in an application or 
patent shall not be taken from the Office except in the custody of an 
employee of

[[Page 54]]

the Office specially authorized by the Commissioner.



Sec. 1.96  Submission of computer program listings.

    (a) General. Descriptions of the operation and general content of 
computer program listings should appear in the description portion of 
the specification. A computer program listing for the purpose of this 
section is defined as a printout that lists in appropriate sequence the 
instructions, routines, and other contents of a program for a computer. 
The program listing may be either in machine or machine-independent 
(object or source) language which will cause a computer to perform a 
desired procedure or task such as solve a problem, regulate the flow of 
work in a computer, or control or monitor events. Computer program 
listings may be submitted in patent applications as set forth in 
paragraphs (b) and (c) of this section.
    (b) Material which will be printed in the patent. If the computer 
program listing is contained on ten printout pages or less, it must be 
submitted either as drawings or as part of the specification.
    (1) Drawings. If the listing is submitted as drawings, it must be 
submitted in the manner and complying with the requirements for drawings 
as provided in Sec. 1.84. At least one figure numeral is required on 
each sheet of drawing.
    (2) Specification. (i) If the listing is submitted as part of the 
specification, it must be submitted in accordance with the provisions of 
Sec. 1.52, at the end of the description but before the claims.
    (ii) Any listing submitted as part of the specification must be 
direct printouts (i.e., not copies) from the computer's printer with 
dark solid black letters not less than 0.21 cm. high, on white, unshaded 
and unlined paper, and the sheets should be submitted in a protective 
cover. Any amendments must be made by way of submission of substitute 
sheets.
    (c) As an appendix which will not be printed. If a computer program 
listing printout is eleven or more pages long, applicants must submit 
such listing in the form of microfiche, referred to in the specification 
(see Sec. 1.77(a)(6)). Such microfiche filed with a patent application 
is to be referred to as a ``microfiche appendix.'' The ``microfiche 
appendix'' will not be part of the printed patent. Reference in the 
application to the ``microfiche appendix'' must be made at the beginning 
of the specification at the location indicated in Sec. 1.77(a)(6). Any 
amendments thereto must be made by way of revised microfiche.
    (1) Availability of appendix. Such computer program listings on 
microfiche will be available to the public for inspection, and 
microfiche copies thereof will be available for purchase with the file 
wrapper and contents, after a patent based on such application is 
granted or the application is otherwise made publicly available.
    (2) Submission requirements. Except as modified or clarified in this 
paragraph (c)(2), computer-generated information submitted as a 
``microfiche appendix'' to an application shall be in accordance with 
the standards set forth in 36 CFR part 1230 (Micrographics).
    (i) Film submitted shall be a first generation (camera film) 
negative appearing microfiche (with emulsion on the back side of the 
film when viewed with the images right-reading).
    (ii) Reduction ratio of microfiche submitted should be 24:1 or a 
similar ratio where variation from said ratio is required in order to 
fit the documents into the image area of the microfiche format used.
    (iii) At least the left-most third (50 mm. x 12 mm.) of the header 
or title area of each microfiche submitted shall be clear or positive 
appearing so that the Patent and Trademark Office can apply an 
application number and filing date thereto in an eye-readable form. The 
middle portion of the header shall be used by applicant to apply an eye-
readable application identification such as the title and/or the first 
inventor's name. The attorney's docket number may be included. The final 
right-hand portion of the microfiche shall contain sequence information 
for the microfiche, such as 1 of 4, 2 of 4, etc.
    (iv) Additional requirements which apply specifically to microfiche 
of filmed paper copy:

[[Page 55]]

    (A) The first frame of each microfiche submitted shall contain a 
test target.
    (B) The second frame of each microfiche submitted must contain a 
fully descriptive title and the inventor's name as filed.
    (C) The pages or lines appearing on the microfiche frames should be 
consecutively numbered.
    (D) Pagination of the microfiche frames shall be from left to right 
and from top to bottom.
    (E) At a reduction of 24:1, resolution of the original microfilm 
shall be at least 120 lines per mm. (5.0 target).
    (F) An index, when included, should appear in the last frame (lower 
right-hand corner when data is right-reading) of each microfiche.
    (v) Microfiche generated by Computer Output Microfilm.
    (A) The first frame of each microfiche submitted should contain a 
resolution test frame.
    (B) The second frame of each microfiche submitted must contain a 
fully descriptive title and the inventor's name as filed.
    (C) The pages or lines appearing on the microfiche frames should be 
consecutively numbered.
    (D) It is preferred that pagination of the microfiche frames be from 
left to right and top to bottom but the alternative, i.e., from top to 
bottom and from left to right, is also acceptable.
    (E) An index, when included, should appear on the last frame (lower 
right-hand corner when data is right-reading) of each microfiche.

[61 FR 42804, Aug. 19, 1996]

                    Information Disclosure Statement



Sec. 1.97  Filing of information disclosure statement.

    (a) In order for an applicant for a patent or for a reissue of a 
patent to have an information disclosure statement in compliance with 
Sec. 1.98 considered by the Office during the pendency of the 
application, it must satisfy paragraph (b), (c), or (d) of this section.
    (b) An information disclosure statement shall be considered by the 
Office if filed by the applicant:
    (1) Within three months of the filing date of a national 
application;
    (2) Within three months of the date of entry of the national stage 
as set forth in Sec. 1.491 in an international application; or
    (3) Before the mailing date of a first Office action on the merits, 
whichever event occurs last.
    (c) An information disclosure statement shall be considered by the 
Office if filed by the applicant after the period specified in paragraph 
(b) of this section, provided that the information disclosure statement 
is filed before the mailing date of either a final action under 
Sec. 1.113, or a notice of allowance under Sec. 1.311, whichever occurs 
first, and is accompanied by either:
    (1) A statement as specified in paragraph (e) of this section; or
    (2) The fee set forth in Sec. 1.17(p).
    (d) An information disclosure statement shall be considered by the 
Office if filed by the applicant after the period specified in paragraph 
(c) of this section, provided that the information disclosure statement 
is filed on or before payment of the issue fee and is accompanied by:
    (1) A statement as specified in paragraph (e) of this section;
    (2) A petition requesting consideration of the information 
disclosure statement; and
    (3) The petition fee set forth in Sec. 1.17(i).
    (e) A statement under this section must state either:
    (1) That each item of information contained in the information 
disclosure statement was cited in a communication from a foreign patent 
office in a counterpart foreign application not more than three months 
prior to the filing of the information disclosure statement; or
    (2) That no item of information contained in the information 
disclosure statement was cited in a communication from a foreign patent 
office in a counterpart foreign application, and, to the knowledge of 
the person signing the statement after making reasonable inquiry, no 
item of information contained in the information disclosure statement 
was known to any individual designated in Sec. 1.56(c) more than three 
months prior to the filing of the information disclosure statement.

[[Page 56]]

    (f) No extensions of time for filing an information disclosure 
statement are permitted under Sec. 1.136. If a bona fide attempt is made 
to comply with Sec. 1.98, but part of the required content is 
inadvertently omitted, additional time may be given to enable full 
compliance.
    (g) An information disclosure statement filed in accordance with 
this section shall not be construed as a representation that a search 
has been made.
    (h) The filing of an information disclosure statement shall not be 
construed to be an admission that the information cited in the statement 
is, or is considered to be, material to patentability as defined in 
Sec. 1.56(b).
    (i) Information disclosure statements, filed before the grant of a 
patent, which do not comply with this section and Sec. 1.98 will be 
placed in the file, but will not be considered by the Office.

[57 FR 2034, Jan. 17, 1992, as amended at 59 FR 32658, June 24, 1994; 60 
FR 20226, Apr. 25, 1995; 61 FR 42805, Aug. 19, 1996; 62 FR 53190, Oct. 
10, 1997]



Sec. 1.98  Content of information disclosure statement.

    (a) Any information disclosure statement filed under Sec. 1.97 shall 
include:
    (1) A list of all patents, publications, or other information 
submitted for consideration by the Office;
    (2) A legible copy of:
    (i) Each U.S. and foreign patent;
    (ii) Each publication or that portion which caused it to be listed; 
and
    (iii) All other information or that portion which caused it to be 
listed, except that no copy of a U.S. patent application need be 
included; and
    (3) A concise explanation of the relevance, as it is presently 
understood by the individual designated in Sec. 1.56(c) most 
knowledgeable about the content of the information, of each patent, 
publication, or other information listed that is not in the English 
language. The concise explanation may be either separate from the 
specification or incorporated therein.
    (b) Each U.S. patent listed in an information disclosure statement 
shall be identified by patentee, patent number and issue date. Each 
foreign patent or published foreign patent application shall be 
identified by the country or patent office which issued the patent or 
published the application, an appropriate document number, and the 
publication date indicated on the patent or published application. Each 
publication shall be identified by author (if any), title, relevant 
pages of the publication, date and place of publication.
    (c) When the disclosures of two or more patents or publications 
listed in an information disclosure statement are substantively 
cumulative, a copy of one of the patents or publications may be 
submitted without copies of the other patents or publications provided 
that a statement is made that these other patents or publications are 
cumulative. If a written English-language translation of a non-English 
language document, or portion thereof, is within the possession, custody 
or control of, or is readily available to any individual designated in 
Sec. 1.56(c), a copy of the translation shall accompany the statement.
    (d) A copy of any patent, publication or other information listed in 
an information disclosure statement is not required to be provided if it 
was previously cited by or submitted to the Office in a prior 
application, provided that the prior application is properly identified 
in the statement and relied upon for an earlier filing date under 35 
U.S.C. 120.

[57 FR 2035, Jan. 17, 1992]



Sec. 1.99  [Reserved]

                       Examination of Applications

    Authority: Secs. 1.101 to 1.108 also issued under 35 U.S.C. 131, 
132.



Sec. 1.101  [Reserved]



Sec. 1.102  Advancement of examination.

    (a) Applications will not be advanced out of turn for examination or 
for further action except as provided by this part, or upon order of the 
Commissioner to expedite the business of the Office, or upon filing of a 
request under paragraph (b) of this section or upon filing a petition 
under paragraphs (c) or (d) of this section with a showing

[[Page 57]]

which, in the opinion of the Commissioner, will justify so advancing it.
    (b) Applications wherein the inventions are deemed of peculiar 
importance to some branch of the public service and the head of some 
department of the Government requests immediate action for that reason, 
may be advanced for examination.
    (c) A petition to make an application special may be filed without a 
fee if the basis for the petition is the applicant's age or health or 
that the invention will materially enhance the quality of the 
environment or materially contribute to the development or conservation 
of energy resources.
    (d) A petition to make an application special on grounds other than 
those referred to in paragraph (c) of this section must be accompanied 
by the petition fee set forth in Sec. 1.17(i).

(36 U.S.C. 6; 15 U.S.C. 1113, 1123)

[24 FR 10332, Dec. 22, 1959, as amended at 47 FR 41276, Sept. 17, 1982; 
54 FR 6903, Feb. 15, 1989; 60 FR 20226, Apr. 25, 1995; 62 FR 53191, Oct. 
10, 1997]



Sec. 1.103  Suspension of action.

    (a) Suspension of action by the Office will be granted for good and 
sufficient cause and for a reasonable time specified upon petition by 
the applicant and, if such cause is not the fault of the Office, the 
payment of the fee set forth in Sec. 1.17(i). Action will not be 
suspended when a reply by the applicant to an Office action is required.
    (b) If action by the Office on an application is suspended when not 
requested by the applicant, the applicant shall be notified of the 
reasons therefor.
    (c) Action by the examiner may be suspended by order of the 
Commissioner in the case of applications owned by the United States 
whenever publication of the invention by the granting of a patent 
thereon might be detrimental to the public safety or defense, at the 
request of the appropriate department or agency.
    (d) Action on applications in which the Office has accepted a 
request to publish a defensive publication will be suspended for the 
entire pendency of these applications except for purposes relating to 
patent interference proceedings under subpart E.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[24 FR 10332, Dec. 22, 1959, as amended at 47 FR 41276, Sept. 17, 1982; 
50 FR 9381, Mar. 7, 1985; 54 FR 6903, Feb. 15, 1989; 60 FR 20226, Apr. 
25, 1995; 62 FR 53191, Oct. 10, 1997]



Sec. 1.104  Nature of examination.

    (a) Examiner's action. (1) On taking up an application for 
examination or a patent in a reexamination proceeding, the examiner 
shall make a thorough study thereof and shall make a thorough 
investigation of the available prior art relating to the subject matter 
of the claimed invention. The examination shall be complete with respect 
both to compliance of the application or patent under reexamination with 
the applicable statutes and rules and to the patentability of the 
invention as claimed, as well as with respect to matters of form, unless 
otherwise indicated.
    (2) The applicant, or in the case of a reexamination proceeding, 
both the patent owner and the requester, will be notified of the 
examiner's action. The reasons for any adverse action or any objection 
or requirement will be stated and such information or references will be 
given as may be useful in aiding the applicant, or in the case of a 
reexamination proceeding the patent owner, to judge the propriety of 
continuing the prosecution.
    (3) An international-type search will be made in all national 
applications filed on and after June 1, 1978.
    (4) Any national application may also have an international-type 
search report prepared thereon at the time of the national examination 
on the merits, upon specific written request therefor and payment of the 
international-type search report fee set forth in Sec. 1.21(e). The 
Patent and Trademark Office does not require that a formal report of an 
international-type search be prepared in order to obtain a search fee 
refund in a later filed international application.
    (5) Copending applications will be considered by the examiner to be 
owned by, or subject to an obligation of assignment to, the same person 
if:
    (i) The application files refer to assignments recorded in the 
Patent and

[[Page 58]]

Trademark Office in accordance with part 3 of this chapter which convey 
the entire rights in the applications to the same person or 
organization; or
    (ii) Copies of unrecorded assignments which convey the entire rights 
in the applications to the same person or organization are filed in each 
of the applications; or
    (iii) An affidavit or declaration by the common owner is filed which 
states that there is common ownership and states facts which explain why 
the affiant or declarant believes there is common ownership, which 
affidavit or declaration may be signed by an official of the corporation 
or organization empowered to act on behalf of the corporation or 
organization when the common owner is a corporation or other 
organization; or
    (iv) Other evidence is submitted which establishes common ownership 
of the applications.
    (b) Completeness of examiner's action. The examiner's action will be 
complete as to all matters, except that in appropriate circumstances, 
such as misjoinder of invention, fundamental defects in the application, 
and the like, the action of the examiner may be limited to such matters 
before further action is made. However, matters of form need not be 
raised by the examiner until a claim is found allowable.
    (c) Rejection of claims. (1) If the invention is not considered 
patentable, or not considered patentable as claimed, the claims, or 
those considered unpatentable will be rejected.
    (2) In rejecting claims for want of novelty or for obviousness, the 
examiner must cite the best references at his or her command. When a 
reference is complex or shows or describes inventions other than that 
claimed by the applicant, the particular part relied on must be 
designated as nearly as practicable. The pertinence of each reference, 
if not apparent, must be clearly explained and each rejected claim 
specified.
    (3) In rejecting claims the examiner may rely upon admissions by the 
applicant, or the patent owner in a reexamination proceeding, as to any 
matter affecting patentability and, insofar as rejections in 
applications are concerned, may also rely upon facts within his or her 
knowledge pursuant to paragraph (d)(2) of this section.
    (4) Subject matter which is developed by another person which 
qualifies as prior art only under 35 U.S.C. 102(f) or (g) may be used as 
prior art under 35 U.S.C. 103 against a claimed invention unless the 
entire rights to the subject matter and the claimed invention were 
commonly owned by the same person or organization or subject to an 
obligation of assignment to the same person or organization at the time 
the claimed invention was made.
    (5) The claims in any original application naming an inventor will 
be rejected as being precluded by a waiver in a published statutory 
invention registration naming that inventor if the same subject matter 
is claimed in the application and the statutory invention registration. 
The claims in any reissue application naming an inventor will be 
rejected as being precluded by a waiver in a published statutory 
invention registration naming that inventor if the reissue application 
seeks to claim subject matter:
    (i) Which was not covered by claims issued in the patent prior to 
the date of publication of the statutory invention registration; and
    (ii) Which was the same subject matter waived in the statutory 
invention registration.
    (d) Citation of references. (1) If domestic patents are cited by the 
examiner, their numbers and dates, and the names of the patentees must 
be stated. If foreign published applications or patents are cited, their 
nationality or country, numbers and dates, and the names of the 
patentees must be stated, and such other data must be furnished as may 
be necessary to enable the applicant, or in the case of a reexamination 
proceeding, the patent owner, to identify the published applications or 
patents cited. In citing foreign published applications or patents, in 
case only a part of the document is involved, the particular pages and 
sheets containing the parts relied upon must be identified. If printed 
publications are cited, the author (if any), title, date, pages or 
plates, and place of publication, or place where a copy can be found, 
shall be given.

[[Page 59]]

    (2) When a rejection in an application is based on facts within the 
personal knowledge of an employee of the Office, the data shall be as 
specific as possible, and the reference must be supported, when called 
for by the applicant, by the affidavit of such employee, and such 
affidavit shall be subject to contradiction or explanation by the 
affidavits of the applicant and other persons.
    (e) Reasons for allowance. If the examiner believes that the record 
of the prosecution as a whole does not make clear his or her reasons for 
allowing a claim or claims, the examiner may set forth such reasoning. 
The reasons shall be incorporated into an Office action rejecting other 
claims of the application or patent under reexamination or be the 
subject of a separate communication to the applicant or patent owner. 
The applicant or patent owner may file a statement commenting on the 
reasons for allowance within such time as may be specified by the 
examiner. Failure to file such a statement does not give rise to any 
implication that the applicant or patent owner agrees with or acquiesces 
in the reasoning of the examiner.

[62 FR 53191, Oct. 10, 1997]



Secs. 1.105--1.109  [Reserved]



Sec. 1.110  Inventorship and date of invention of the subject matter of individual claims.

    When more than one inventor is named in an application or patent, 
the Patent and Trademark Office, when necessary for purposes of an 
Office proceeding, may require an applicant, patentee, or owner to 
identify the inventive entity of the subject matter of each claim in the 
application or patent. Where appropriate, the invention dates of the 
subject matter of each claim and the ownership of the subject matter on 
the date of invention may be required of the applicant, patentee or 
owner. See also Secs. 1.78(c) and 1.130.

[61 FR 42805, Aug. 19, 1996]

              Action by Applicant and Further Consideration

    Authority: Secs. 1.111 to 1.113 also issued under 35 U.S.C. 132.



Sec. 1.111  Reply by applicant or patent owner.

    (a) After the Office action, if adverse in any respect, the 
applicant or patent owner, if he or she persists in his or her 
application for a patent or reexamination proceeding, must reply thereto 
and may request reconsideration or further examination, with or without 
amendment.
    (b) In order to be entitled to reconsideration or further 
examination, the applicant or patent owner must reply to the Office 
action. The reply by the applicant or patent owner must be reduced to a 
writing which distinctly and specifically points out the supposed errors 
in the examiner's action and must reply to every ground of objection and 
rejection in the prior Office action. The reply must present arguments 
pointing out the specific distinctions believed to render the claims, 
including any newly presented claims, patentable over any applied 
references. If the reply is with respect to an application, a request 
may be made that objections or requirements as to form not necessary to 
further consideration of the claims be held in abeyance until allowable 
subject matter is indicated. The applicant's or patent owner's reply 
must appear throughout to be a bona fide attempt to advance the 
application or the reexamination proceeding to final action. A general 
allegation that the claims define a patentable invention without 
specifically pointing out how the language of the claims patentably 
distinguishes them from the references does not comply with the 
requirements of this section.
    (c) In amending in response to a rejection of claims in an 
application or patent undergoing reexamination, the applicant or patent 
owner must clearly point out the patentable novelty which he or she 
thinks the claims present in view of the state of the art disclosed by 
the references cited or the objections made. He or she must also show 
how the amendments avoid such references or objections. (See Secs. 1.135 
and 1.136 for time for reply.)

[46 FR 29182, May 29, 1981, as amended at 62 FR 53192, Oct. 10, 1997]

[[Page 60]]



Sec. 1.112  Reconsideration before final action.

    After reply by applicant or patent owner (Sec. 1.111) to a non-final 
action, the application or patent under reexamination will be 
reconsidered and again examined. The applicant or patent owner will be 
notified if claims are rejected, or objections or requirements made, in 
the same manner as after the first examination. Applicant or patent 
owner may reply to such Office action in the same manner provided in 
Sec. 1.111, with or without amendment, unless such Office action 
indicates that it is made final (Sec. 1.113).

[62 FR 53192, Oct. 10, 1997]



Sec. 1.113  Final rejection or action.

    (a) On the second or any subsequent examination or consideration by 
the examiner the rejection or other action may be made final, whereupon 
applicant's or patent owner's reply is limited to appeal in the case of 
rejection of any claim (Sec. 1.191), or to amendment as specified in 
Sec. 1.116. Petition may be taken to the Commissioner in the case of 
objections or requirements not involved in the rejection of any claim 
(Sec. 1.181). Reply to a final rejection or action must include 
cancellation of, or appeal from the rejection of, each rejected claim. 
If any claim stands allowed, the reply to a final rejection or action 
must comply with any requirements or objections as to form.
    (b) In making such final rejection, the examiner shall repeat or 
state all grounds of rejection then considered applicable to the claims 
in the application, clearly stating the reasons in support thereof.

[62 FR 53192, Oct. 10, 1997]

                               Amendments

    Authority: Secs. 1.115 to 1.127 also issued under 35 U.S.C. 132.



Sec. 1.115  [Reserved]



Sec. 1.116  Amendments after final action or appeal.

    (a) After a final rejection or other final action (Sec. 1.113), 
amendments may be made cancelling claims or complying with any 
requirement of form expressly set forth in a previous Office action. 
Amendments presenting rejected claims in better form for consideration 
on appeal may be admitted. The admission of, or refusal to admit, any 
amendment after final rejection, and any related proceedings, will not 
operate to relieve the application or patent under reexamination from 
its condition as subject to appeal or to save the application from 
abandonment under Sec. 1.135.
    (b) If amendments touching the merits of the application or patent 
under reexamination are presented after final rejection, or after appeal 
has been taken, or when such amendment might not otherwise be proper, 
they may be admitted upon a showing of good and sufficient reasons why 
they are necessary and were not earlier presented.
    (c) No amendment can be made as a matter of right in appealed cases. 
After decision on appeal, amendments can only be made as provided in 
Sec. 1.198, or to carry into effect a recommendation under Sec. 1.196.

[24 FR 10332, Dec. 22, 1959, as amended at 46 FR 29183, May 29, 1981; 62 
FR 53192, Oct. 10, 1997]



Secs. 1.117--1.119  [Reserved]



Sec. 1.121  Manner of making amendments.

    (a) Amendments in nonprovisional applications, other than reissue 
applications: Amendments in nonprovisional applications, excluding 
reissue applications, are made by filing a paper, in compliance with 
Sec. 1.52, directing that specified amendments be made.
    (1) Specification other than the claims. Except as provided in 
Sec. 1.125, amendments to add matter to, or delete matter from, the 
specification, other than to the claims, may only be made as follows:
    (i) Instructions for insertions: The precise point in the 
specification must be indicated where an insertion is to be made, and 
the matter to be inserted must be set forth.
    (ii) Instructions for deletions: The precise point in the 
specification must be indicated where a deletion is to be made, and the 
matter to be deleted must be set forth or otherwise indicated.

[[Page 61]]

    (iii) Matter deleted by amendment can be reinstated only by a 
subsequent amendment presenting the previously deleted matter as a new 
insertion.
    (2) Claims. Amendments to the claims may only be made as follows:
    (i) Instructions for insertions and deletions: A claim may be 
amended by specifying only the exact matter to be deleted or inserted by 
an amendment and the precise point where the deletion or insertion is to 
be made, where the changes are limited to:
    (A) Deletions and/or
    (B) The addition of no more than five (5) words in any one claim; or
    (ii) Claim cancellation or rewriting: A claim may be amended by 
directions to cancel the claim or by rewriting such claim with 
underlining below the matter added and brackets around the matter 
deleted. The rewriting of a claim in this form will be construed as 
directing the deletion of the previous version of that claim. If a 
previously rewritten claim is again rewritten, underlining and 
bracketing will be applied relative to the previous version of the 
claim, with the parenthetical expression ``twice amended,'' ``three 
times amended,'' etc., following the original claim number. The original 
claim number followed by that parenthetical expression must be used for 
the rewritten claim. No interlineations or deletions of any prior 
amendment may appear in the currently submitted version of the claim. A 
claim canceled by amendment (not deleted and rewritten) can be 
reinstated only by a subsequent amendment presenting the claim as a new 
claim with a new claim number.
    (3) Drawings. (i) Amendments to the original application drawings 
are not permitted. Any change to the application drawings must be by way 
of a substitute sheet of drawings for each sheet changed submitted in 
compliance with Sec. 1.84.
    (ii) Where a change to the drawings is desired, a sketch in 
permanent ink showing proposed changes in red, to become part of the 
record, must be filed for approval by the examiner and should be in a 
separate paper.
    (4) [Reserved]
    (5) The disclosure must be amended, when required by the Office, to 
correct inaccuracies of description and definition, and to secure 
substantial correspondence between the claims, the remainder of the 
specification, and the drawings.
    (6) No amendment may introduce new matter into the disclosure of an 
application.
    (b) Amendments in reissue applications: Amendments in reissue 
applications are made by filing a paper, in compliance with Sec. 1.52, 
directing that specified amendments be made.
    (1) Specification other than the claims. Amendments to the 
specification, other than to the claims, may only be made as follows:
    (i) Amendments must be made by submission of the entire text of a 
newly added or rewritten paragraph(s) with markings pursuant to 
paragraph (b)(1)(iii) of this section, except that an entire paragraph 
may be deleted by a statement deleting the paragraph without 
presentation of the text of the paragraph.
    (ii) The precise point in the specification must be indicated where 
the paragraph to be amended is located.
    (iii) Underlining below the subject matter added to the patent and 
brackets around the subject matter deleted from the patent are to be 
used to mark the amendments being made.
    (2) Claims. Amendments to the claims may only be made as follows:
    (i)(A) The amendment must be made relative to the patent claims in 
accordance with paragraph (b)(6) of this section and must include the 
entire text of each claim which is being amended by the current 
amendment and of each claim being added by the current amendment with 
markings pursuant to paragraph (b)(2)(i)(C) of this section, except that 
a patent claim or added claim should be cancelled by a statement 
cancelling the patent claim or added claim without presentation of the 
text of the patent claim or added claim.
    (B) Patent claims must not be renumbered and the numbering of any 
claims added to the patent must follow the number of the highest 
numbered patent claim.
    (C) Underlining below the subject matter added to the patent and 
brackets around the subject matter deleted

[[Page 62]]

from the patent are to be used to mark the amendments being made. If a 
claim is amended pursuant to paragraph (b)(2)(i)(A) of this section, a 
parenthetical expression ``amended,'' ``twice amended,'' etc., should 
follow the original claim number.
    (ii) Each amendment submission must set forth the status (i.e., 
pending or cancelled) as of the date of the amendment, of all patent 
claims and of all added claims.
    (iii) Each amendment when originally submitted must be accompanied 
by an explanation of the support in the disclosure of the patent for the 
amendment along with any additional comments on page(s) separate from 
the page(s) containing the amendment.
    (3) Drawings. (i) Amendments to the original patent drawings are not 
permitted. Any change to the patent drawings must be by way of a new 
sheet of drawings with the amended figures identified as ``amended'' and 
with added figures identified as ``new'' for each sheet changed 
submitted in compliance with Sec. 1.84.
    (ii) Where a change to the drawings is desired, a sketch in 
permanent ink showing proposed changes in red, to become part of the 
record, must be filed for approval by the examiner and should be in a 
separate paper.
    (4) The disclosure must be amended, when required by the Office, to 
correct inaccuracies of description and definition, and to secure 
substantial correspondence between the claims, the remainder of the 
specification, and the drawings.
    (5) No reissue patent shall be granted enlarging the scope of the 
claims of the original patent unless applied for within two years from 
the grant of the original patent, pursuant to 35 U.S.C. 251. No 
amendment to the patent may introduce new matter or be made in an 
expired patent.
    (6) All amendments must be made relative to the patent 
specification, including the claims, and drawings, which is in effect as 
of the date of filing of the reissue application.
    (c) Amendments in reexamination proceedings: Any proposed amendment 
to the description and claims in patents involved in reexamination 
proceedings must be made in accordance with Sec. 1.530(d).

[62 FR 53192, Oct. 10, 1997; 62 FR 61235, Nov. 17, 1997]



Secs. 1.122--1.24  [Reserved]



Sec. 1.125  Substitute specification.

    (a) If the number or nature of the amendments or the legibility of 
the application papers renders it difficult to consider the application, 
or to arrange the papers for printing or copying, the Office may require 
the entire specification, including the claims, or any part thereof, be 
rewritten.
    (b) A substitute specification, excluding the claims, may be filed 
at any point up to payment of the issue fee if it is accompanied by:
    (1) A statement that the substitute specification includes no new 
matter; and
    (2) A marked-up copy of the substitute specification showing the 
matter being added to and the matter being deleted from the 
specification of record.
    (c) A substitute specification submitted under this section must be 
submitted in clean form without markings as to amended material.
    (d) A substitute specification under this section is not permitted 
in a reissue application or in a reexamination proceeding.

[62 FR 53193, Oct. 10, 1997]



Sec. 1.126  Numbering of claims.

    The original numbering of the claims must be preserved throughout 
the prosecution. When claims are canceled the remaining claims must not 
be renumbered. When claims are added, they must be numbered by the 
applicant consecutively beginning with the number next following the 
highest numbered claim previously presented (whether entered or not). 
When the application is ready for allowance, the examiner, if necessary, 
will renumber the claims consecutively in the order in which they appear 
or in such order as may have been requested by applicant.

[62 FR 53194, Oct. 10, 1997]

[[Page 63]]



Sec. 1.127  Petition from refusal to admit amendment.

    From the refusal of the primary examiner to admit an amendment, in 
whole or in part, a petition will lie to the Commissioner under 
Sec. 1.181.

                         Transitional Provisions



Sec. 1.129  Transitional procedures for limited examination after final rejection and restriction practice.

    (a) An applicant in an application, other than for reissue or a 
design patent, that has been pending for at least two years as of June 
8, 1995, taking into account any reference made in such application to 
any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is 
entitled to have a first submission entered and considered on the merits 
after final rejection under the following circumstances: The Office will 
consider such a submission, if the first submission and the fee set 
forth in Sec. 1.17(r) are filed prior to the filing of an appeal brief 
and prior to abandonment of the application. The finality of the final 
rejection is automatically withdrawn upon the timely filing of the 
submission and payment of the fee set forth in Sec. 1.17(r). If a 
subsequent final rejection is made in the application, applicant is 
entitled to have a second submission entered and considered on the 
merits after the subsequent final rejection under the following 
circumstances: The Office will consider such a submission, if the second 
submission and a second fee set forth in Sec. 1.17(r) are filed prior to 
the filing of an appeal brief and prior to abandonment of the 
application. The finality of the subsequent final rejection is 
automatically withdrawn upon the timely filing of the submission and 
payment of the second fee set forth in Sec. 1.17(r). Any submission 
filed after a final rejection made in an application subsequent to the 
fee set forth in Sec. 1.17(r) having been twice paid will be treated as 
set forth in Sec. 1.116. A submission as used in this paragraph 
includes, but is not limited to, an information disclosure statement, an 
amendment to the written description, claims or drawings and a new 
substantive argument or new evidence in support of patentability.
    (b)(1) In an application, other than for reissue or a design patent, 
that has been pending for at least three years as of June 8, 1995; 
taking into account any reference made in the application to any earlier 
filed application under 35 U.S.C. 120, 121, and 365(c), no requirement 
for restriction or for the filing of divisional applications shall be 
made or maintained in the application after June 8, 1995, except where:
    (i) The requirement was first made in the application or any earlier 
filed application under 35 U.S.C. 120, 121 and 365(c) prior to April 8, 
1995;
    (ii) The examiner has not made a requirement for restriction in the 
present or parent application prior to April 8, 1995, due to actions by 
the applicant; or
    (iii) The required fee for examination of each additional invention 
was not paid.
    (2) If the application contains more than one independent and 
distinct invention and a requirement for restriction or for the filing 
of divisional applications cannot be made or maintained pursuant to this 
paragraph, applicant will be so notified and given a time period to:
    (i) Elect the invention or inventions to be searched and examined, 
if no election has been made prior to the notice, and pay the fee set 
forth in Sec. 1.17(s) for each independent and distinct invention 
claimed in the application in excess of one which applicant elects;
    (ii) Confirm an election made prior to the notice and pay the fee 
set forth in Sec. 1.17(s) for each independent and distinct invention 
claimed in the application in addition to the one invention which 
applicant previously elected; or
    (iii) File a petition under this section traversing the requirement. 
If the required petition is filed in a timely manner, the original time 
period for electing and paying the fee set forth in Sec. 1.17(s) will be 
deferred and any decision on the petition affirming or modifying the 
requirement will set a new time period to elect the invention or 
inventions to be searched and examined and to pay the fee set forth in

[[Page 64]]

Sec. 1.17(s) for each independent and distinct invention claimed in the 
application in excess of one which applicant elects.
    (3) The additional inventions for which the required fee has not 
been paid will be withdrawn from consideration under Sec. 1.142(b). An 
applicant who desires examination of an invention so withdrawn from 
consideration can file a divisional application under 35 U.S.C. 121.
    (c) The provisions of this section shall not be applicable to any 
application filed after June 8, 1995.

[60 FR 20226, Apr. 25, 1995]

                    Affidavits Overcoming Rejections



Sec. 1.130  Affidavit or declaration to disqualify commonly owned patent as prior art.

    (a) When any claim of an application or a patent under reexamination 
is rejected under 35 U.S.C. 103 in view of a U.S. patent which is not 
prior art under 35 U.S.C. 102(b), and the inventions defined by the 
claims in the application or patent under reexamination and by the 
claims in the patent are not identical but are not patentably distinct, 
and the inventions are owned by the same party, the applicant or owner 
of the patent under reexamination may disqualify the patent as prior 
art. The patent can be disqualified as prior art by submission of:
    (1) A terminal disclaimer in accordance with Sec. 1.321(c), and
    (2) An oath or declaration stating that the application or patent 
under reexamination and the patent are currently owned by the same 
party, and that the inventor named in the application or patent under 
reexamination is the prior inventor under 35 U.S.C. 104.
    (b) When an application or a patent under reexamination claims an 
invention which is not patentably distinct from an invention claimed in 
a commonly owned patent with the same or a different inventive entity, a 
double patenting rejection will be made in the application or a patent 
under reexamination. A judicially created double patenting rejection may 
be obviated by filing a terminal disclaimer in accordance with 
Sec. 1.321(c).

[61 FR 42805, Aug. 19, 1996]



Sec. 1.131  Affidavit or declaration of prior invention to overcome cited patent or publication.

    (a) (1) When any claim of an application or a patent under 
reexamination is rejected under 35 U.S.C. 102 (a) or (e), or 35 U.S.C. 
103 based on a U.S. patent to another or others which is prior art under 
35 U.S.C. 102 (a) or (e) and which substantially shows or describes but 
does not claim the same patentable invention, as defined in 
Sec. 1.601(n), or on reference to a foreign patent or to a printed 
publication, the inventor of the subject matter of the rejected claim, 
the owner of the patent under reexamination, or the party qualified 
under Secs. 1.42, 1.43, or 1.47, may submit an appropriate oath or 
declaration to overcome the patent or publication. The oath or 
declaration must include facts showing a completion of the invention in 
this country or in a NAFTA or WTO member country before the filing date 
of the application on which the U.S. patent issued, or before the date 
of the foreign patent, or before the date of the printed publication. 
When an appropriate oath or declaration is made, the patent or 
publication cited shall not bar the grant of a patent to the inventor or 
the confirmation of the patentability of the claims of the patent, 
unless the date of such patent or printed publication is more than one 
year prior to the date on which the inventor's or patent owner's 
application was filed in this country.
    (2) A date of completion of the invention may not be established 
under this section before December 8, 1993, in a NAFTA country, or 
before January 1, 1996, in a WTO member country other than a NAFTA 
country.
    (b) The showing of facts shall be such, in character and weight, as 
to establish reduction to practice prior to the effective date of the 
reference, or conception of the invention prior to the effective date of 
the reference coupled with due diligence from prior to said date to a 
subsequent reduction to practice or to the filing of the application. 
Original exhibits of drawings or

[[Page 65]]

records, or photocopies thereof, must accompany and form part of the 
affidavit or declaration of their absence satisfactorily explained.

[53 FR 23734, June 23, 1988, as amended at 60 FR 21044, May 1, 1995; 61 
FR 42806, Aug. 19, 1996]



Sec. 1.132  Affidavits or declarations traversing grounds of rejection.

    When any claim of an application or a patent under reexamination is 
rejected on reference to a U.S. patent which substantially shows or 
describes but does not claim the same patentable invention, as defined 
in Sec. 1.601(n), on reference to a foreign patent, on reference to a 
printed publication, or on reference to facts within the personal 
knowledge of an employee of the Office, or when rejected upon a mode or 
capability of operation attributed to a reference, or because the 
alleged invention is held to be inoperative, lacking in utility, 
frivolous, or injurious to public health or morals, affidavits or 
declarations traversing these references or objections may be received.

[61 FR 42806, Aug. 19, 1996]

                               Interviews



Sec. 1.133  Interviews.

    (a) Interviews with examiners concerning applications and other 
matters pending before the Office must be had in the examiners' rooms at 
such times, within office hours, as the respective examiners may 
designate. Interviews will not be permitted at any other time or place 
without the authority of the Commissioner. Interviews for the discussion 
of the patentability of pending applications will not be had before the 
first official action thereon. Interviews should be arranged for in 
advance.
    (b) In every instance where reconsideration is requested in view of 
an interview with an examiner, a complete written statement of the 
reasons presented at the interview as warranting favorable action must 
be filed by the applicant. An interview does not remove the necessity 
for reply to Office actions as specified in Secs. 1.111 and 1.135.

(35 U.S.C. 132)

[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53194, Oct. 10, 1997]

         Time for Reply by Applicant; Abandonment of Application

    Authority: Secs. 1.135 to 1.138 also issued under 35 U.S.C. 133.



Sec. 1.134  Time period for reply to an Office action.

    An Office action will notify the applicant of any non-statutory or 
shortened statutory time period set for reply to an Office action. 
Unless the applicant is notified in writing that a reply is required in 
less than six months, a maximum period of six months is allowed.

[62 FR 53194, Oct. 10, 1997]



Sec. 1.135  Abandonment for failure to reply within time period.

    (a) If an applicant of a patent application fails to reply within 
the time period provided under Sec. 1.134 and Sec. 1.136, the 
application will become abandoned unless an Office action indicates 
otherwise.
    (b) Prosecution of an application to save it from abandonment 
pursuant to paragraph (a) of this section must include such complete and 
proper reply as the condition of the application may require. The 
admission of, or refusal to admit, any amendment after final rejection 
or any amendment not responsive to the last action, or any related 
proceedings, will not operate to save the application from abandonment.
    (c) When reply by the applicant is a bona fide attempt to advance 
the application to final action, and is substantially a complete reply 
to the non-final Office action, but consideration of some matter or 
compliance with some requirement has been inadvertently omitted, 
applicant may be given a new time period for reply under Sec. 1.134 to 
supply the omission.

[62 FR 53194, Oct. 10, 1997]



Sec. 1.136  Extensions of time.

    (a)(1) If an applicant is required to reply within a nonstatutory or 
shortened statutory time period, applicant may extend the time period 
for reply up to the earlier of the expiration of any maximum period set 
by statute or five months after the time period set for reply, if a 
petition for an extension

[[Page 66]]

of time and the fee set in Sec. 1.17(a) are filed, unless:
    (i) Applicant is notified otherwise in an Office action;
    (ii) The reply is a reply brief submitted pursuant to Sec. 1.193(b);
    (iii) The reply is a request for an oral hearing submitted pursuant 
to Sec. 1.194(b);
    (iv) The reply is to a decision by the Board of Patent Appeals and 
Interferences pursuant to Sec. 1.196, Sec. 1.197 or Sec. 1.304; or
    (v) The application is involved in an interference declared pursuant 
to Sec. 1.611.
    (2) The date on which the petition and the fee have been filed is 
the date for purposes of determining the period of extension and the 
corresponding amount of the fee. The expiration of the time period is 
determined by the amount of the fee paid. A reply must be filed prior to 
the expiration of the period of extension to avoid abandonment of the 
application (Sec. 1.135), but in no situation may an applicant reply 
later than the maximum time period set by statute, or be granted an 
extension of time under paragraph (b) of this section when the 
provisions of this paragraph are available. See Sec. 1.136(b) for 
extensions of time relating to proceedings pursuant to Secs. 1.193(b), 
1.194, 1.196 or 1.197; Sec. 1.304 for extension of time to appeal to the 
U.S. Court of Appeals for the Federal Circuit or to commence a civil 
action; Sec. 1.550(c) for extension of time in reexamination 
proceedings; and Sec. 1.645 for extension of time in interference 
proceedings.
    (3) A written request may be submitted in an application that is an 
authorization to treat any concurrent or future reply, requiring a 
petition for an extension of time under this paragraph for its timely 
submission, as incorporating a petition for extension of time for the 
appropriate length of time. An authorization to charge all required 
fees, fees under Sec. 1.17, or all required extension of time fees will 
be treated as a constructive petition for an extension of time in any 
concurrent or future reply requiring a petition for an extension of time 
under this paragraph for its timely submission. Submission of the fee 
set forth in Sec. 1.17(a) will also be treated as a constructive 
petition for an extension of time in any concurrent reply requiring a 
petition for an extension of time under this paragraph for its timely 
submission.
    (b) When a reply cannot be filed within the time period set for such 
reply and the provisions of paragraph (a) of this section are not 
available, the period for reply will be extended only for sufficient 
cause and for a reasonable time specified. Any request for an extension 
of time under this paragraph must be filed on or before the day on which 
such reply is due, but the mere filing of such a request will not effect 
any extension under this paragraph. In no situation can any extension 
carry the date on which reply is due beyond the maximum time period set 
by statute. See Sec. 1.304 for extension of time to appeal to the U.S. 
Court of Appeals for the Federal Circuit or to commence a civil action; 
Sec. 1.645 for extension of time in interference proceedings; and 
Sec. 1.550(c) for extension of time in reexamination proceedings.

[62 FR 53194, Oct. 10, 1997]



Sec. 1.137  Revival of abandoned application or lapsed patent.

    (a) Unavoidable. Where the delay in reply was unavoidable, a 
petition may be filed to revive an abandoned application or a lapsed 
patent pursuant to this paragraph. A grantable petition pursuant to this 
paragraph must be accompanied by:
    (1) The required reply, unless previously filed. In a nonprovisional 
application abandoned for failure to prosecute, the required reply may 
be met by the filing of a continuing application. In an application or 
patent, abandoned or lapsed for failure to pay the issue fee or any 
portion thereof, the required reply must be the payment of the issue fee 
or any outstanding balance thereof;
    (2) The petition fee as set forth in Sec. 1.17(l);
    (3) A showing to the satisfaction of the Commissioner that the 
entire delay in filing the required reply from the due date for the 
reply until the filing of a grantable petition pursuant to this 
paragraph was unavoidable; and
    (4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d)) 
required pursuant to paragraph (c) of this section.

[[Page 67]]

    (b) Unintentional. Where the delay in reply was unintentional, a 
petition may be filed to revive an abandoned application or a lapsed 
patent pursuant to this paragraph. A grantable petition pursuant to this 
paragraph must be accompanied by:
    (1) The required reply, unless previously filed. In a nonprovisional 
application abandoned for failure to prosecute, the required reply may 
be met by the filing of a continuing application. In an application or 
patent, abandoned or lapsed for failure to pay the issue fee or any 
portion thereof, the required reply must be the payment of the issue fee 
or any outstanding balance thereof;
    (2) The petition fee as set forth in Sec. 1.17(m);
    (3) A statement that the entire delay in filing the required reply 
from the due date for the reply until the filing of a grantable petition 
pursuant to this paragraph was unintentional. The Commissioner may 
require additional information where there is a question whether the 
delay was unintentional; and
    (4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d)) 
required pursuant to paragraph (c) of this section.
    (c) In a design application, a utility application filed before June 
8, 1995, or a plant application filed before June 8, 1995, any petition 
to revive pursuant to this section must be accompanied by a terminal 
disclaimer and fee as set forth in Sec. 1.321 dedicating to the public a 
terminal part of the term of any patent granted thereon equivalent to 
the period of abandonment of the application. Any terminal disclaimer 
pursuant to this paragraph must also apply to any patent granted on any 
continuing application that contains a specific reference under 35 
U.S.C. 120, 121, or 365(c) to the application for which revival is 
sought. The provisions of this paragraph do not apply to lapsed patents.
    (d) Any request for reconsideration or review of a decision refusing 
to revive an abandoned application or lapsed patent upon petition filed 
pursuant to this section, to be considered timely, must be filed within 
two months of the decision refusing to revive or within such time as set 
in the decision. Unless a decision indicates otherwise, this time period 
may be extended under the provisions of Sec. 1.136.
    (e) A provisional application, abandoned for failure to timely 
respond to an Office requirement, may be revived pursuant to this 
section so as to be pending for a period of no longer than twelve months 
from its filing date. Under no circumstances will a provisional 
application be regarded as pending after twelve months from its filing 
date.

[62 FR 53194, Oct. 10, 1997]



Sec. 1.138  Express abandonment.

    An application may be expressly abandoned by filing in the Patent 
and Trademark Office a written declaration of abandonment signed by the 
applicant and the assignee of record, if any, and identifying the 
application. An application may also be expressly abandoned by filing a 
written declaration of abandonment signed by the attorney or agent of 
record. A registered attorney or agent acting under the provision of 
Sec. 1.34(a), or of record, may also expressly abandon a prior 
application as of the filing date granted to a continuing application 
when filing such a continuing application. Express abandonment of the 
application may not be recognized by the Office unless it is actually 
received by appropriate officials in time to act thereon before the date 
of issue.

[49 FR 48452, Dec. 12, 1984]



Sec. 1.139  [Reserved]

          Joinder of Inventions in One Application; Restriction

    Authority: Secs. 1.141 to 1.147 also issued under 35 U.S.C. 121.



Sec. 1.141  Different inventions in one national application.

    (a) Two or more independent and distinct inventions may not be 
claimed in one national application, except that more than one species 
of an invention, not to exceed a reasonable number, may be specifically 
claimed in different claims in one national application, provided the 
application also includes an allowable claim generic to all the claimed 
species and all the claims to species in excess of one are written in

[[Page 68]]

dependent form (Sec. 1.75) or otherwise include all the limitations of 
the generic claim.
    (b) Where claims to all three categories, product, process of 
making, and process of use, are included in a national application, a 
three way requirement for restriction can only be made where the process 
of making is distinct from the product. If the process of making and the 
product are not distinct, the process of using may be joined with the 
claims directed to the product and the process of making the product 
even though a showing of distinctness between the product and process of 
using the product can be made.

[52 FR 20046, May 28, 1987]



Sec. 1.142  Requirement for restriction.

    (a) If two or more independent and distinct inventions are claimed 
in a single application, the examiner in an Office action will require 
the applicant in the reply to that action to elect an invention to which 
the claims will be restricted, this official action being called a 
requirement for restriction (also known as a requirement for division). 
Such requirement will normally be made before any action on the merits; 
however, it may be made at any time before final action.
    (b) Claims to the invention or inventions not elected, if not 
canceled, are nevertheless withdrawn from further consideration by the 
examiner by the election, subject however to reinstatement in the event 
the requirement for restriction is withdrawn or overruled.

[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53195, Oct. 10, 1997]



Sec. 1.143  Reconsideration of requirement.

    If the applicant disagrees with the requirement for restriction, he 
may request reconsideration and withdrawal or modification of the 
requirement, giving the reasons therefor. (See Sec. 1.111.) In 
requesting reconsideration the applicant must indicate a provisional 
election of one invention for prosecution, which invention shall be the 
one elected in the event the requirement becomes final The requirement 
for restriction will be reconsidered on such a request. If the 
requirement is repeated and made final the examiner will at the same 
time act on the claims to the invention elected.



Sec. 1.144  Petition from requirement for restriction.

    After a final requirement for restriction, the applicant, in 
addition to making any reply due on the remainder of the action, may 
petition the Commissioner to review the requirement. Petition may be 
deferred until after final action on or allowance of claims to the 
invention elected, but must be filed not later than appeal. A petition 
will not be considered if reconsideration of the requirement was not 
requested (see Sec. 1.181).

[62 FR 53195, Oct. 10, 1997]



Sec. 1.145  Subsequent presentation of claims for different invention.

    If, after an office action on an application, the applicant presents 
claims directed to an invention distinct from and independent of the 
invention previously claimed, the applicant will be required to restrict 
the claims to the invention previously claimed if the amendment is 
entered, subject to reconsideration and review as provided in 
Secs. 1.143 and 1.144.



Sec. 1.146  Election of species.

    In the first action on an application containing a generic claim to 
a generic invention (genus) and claims to more than one patentably 
distinct species embraced thereby, the examiner may require the 
applicant in the reply to that action to elect a species of his or her 
invention to which his or her claim will be restricted if no claim to 
the genus is found to be allowable. However, if such application 
contains claims directed to more than a reasonable number of species, 
the examiner may require restriction of the claims to not more than a 
reasonable number of species before taking further action in the 
application.

[62 FR 53195, Oct. 10, 1997]

[[Page 69]]

                             Design Patents



Sec. 1.151  Rules applicable.

    The rules relating to applications for patents for other inventions 
or discoveries are also applicable to applications for patents for 
designs except as otherwise provided.

(35 U.S.C. 171)



Sec. 1.152  Design drawings.

    (a) The design must be represented by a drawing that complies with 
the requirements of Sec. 1.84, and must contain a sufficient number of 
views to constitute a complete disclosure of the appearance of the 
design.
    (1) Appropriate and adequate surface shading should be used to show 
the character or contour of the surfaces represented. Solid black 
surface shading is not permitted except when used to represent the color 
black as well as color contrast. Broken lines may be used to show 
visible environmental structure, but may not be used to show hidden 
planes and surfaces which cannot be seen through opaque materials. 
Alternate positions of a design component, illustrated by full and 
broken lines in the same view are not permitted in a design drawing.
    (2) Color photographs and color drawings are not permitted in design 
applications in the absence of a grantable petition pursuant to 
Sec. 1.84(a)(2). Photographs and ink drawings are not permitted to be 
combined as formal drawings in one application. Photographs submitted in 
lieu of ink drawings in design patent applications must comply with 
Sec. 1.84(b) and must not disclose environmental structure but must be 
limited to the design for the article claimed.
    (b) Any detail shown in the ink or color drawings or photographs 
(formal or informal) deposited with the original application papers 
constitutes an integral part of the disclosed and claimed design, except 
as otherwise provided in this paragraph. This detail may include, but is 
not limited to, color or contrast, graphic or written indicia, including 
identifying indicia of a proprietary nature, surface ornamentation on an 
article, or any combination thereof.
    (1) When any detail shown in informal drawings or photographs does 
not constitute an integral part of the disclosed and claimed design, a 
specific disclaimer must appear in the original application papers 
either in the specification or directly on the drawings or photographs. 
This specific disclaimer in the original application papers will provide 
antecedent basis for the omission of the disclaimed detail(s) in later-
filed drawings or photographs.
    (2) When informal color drawings or photographs are deposited with 
the original application papers without a disclaimer pursuant to 
paragraph (b)(1) of this section, formal color drawings or photographs, 
or a black and white drawing lined to represent color, will be required.

[62 FR 53195, Oct. 10, 1997]



Sec. 1.153  Title, description and claim, oath or declaration.

    (a) The title of the design must designate the particular article. 
No description, other than a reference to the drawing, is ordinarily 
required. The claim shall be in formal terms to the ornamental design 
for the article (specifying name) as shown, or as shown and described. 
More than one claim is neither required nor permitted.
    (b) The oath or declaration required of the applicant must comply 
with Sec. 1.63.


(35 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 29 FR 18503, Dec. 29, 1964; 
48 FR 2712, Jan. 20, 1983]



Sec. 1.154  Arrangement of application elements.

    (a) The elements of the design application, if applicable, should 
appear in the following order:
    (1) Design Application Transmittal Form.
    (2) Fee Transmittal Form.
    (3) Preamble, stating name of the applicant, title of the design, 
and a brief description of the nature and intended use of the article in 
which the design is embodied.
    (4) Cross-reference to related applications.

[[Page 70]]

    (5) Statement regarding federally sponsored research or development.
    (6) Description of the figure or figures of the drawing.
    (7) Feature Description.
    (8) A single claim.
    (9) Drawings or photographs.
    (10) Executed oath or declaration (See Sec. 1.153(b)).
    (b) [Reserved]

[61 FR 42806, Aug. 19, 1996, as amended at 62 FR 53196, Oct. 10, 1997]



Sec. 1.155  Issue of design patents.

    If, on examination, it appears that the applicant is entitled to a 
design patent under the law, a notice of allowance will be sent to the 
applicant, or applicant's attorney or agent, calling for the payment of 
the issue fee (Sec. 1.18(b)). If this issue fee is not paid within three 
months of the date of the notice of allowance, the application shall be 
regarded as abandoned.

[62 FR 53196, Oct. 10, 1997]

                              Plant Patents



Sec. 1.161  Rules applicable.

    The rules relating to applications for patent for other inventions 
or discoveries are also applicable to applications for patents for 
plants except as otherwise provided.



Sec. 1.162  Applicant, oath or declaration.

    The applicant for a plant patent must be the person who has invented 
or discovered and asexually reproduced the new and distinct variety of 
plant for which a patent is sought (or as provided in Secs. 1.42, 1.43, 
and 1.47). The oath or declaration required of the applicant, in 
addition to the averments required by Sec. 1.63, must state that he or 
she has asexually reproduced the plant. Where the plant is a newly found 
plant the oath or declaration must also state that it was found in a 
cultivated area.


(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2713, Jan. 20, 1983]



Sec. 1.163  Specification and arrangement of application elements.

    (a) The specification must contain as full and complete a disclosure 
as possible of the plant and the characteristics thereof that 
distinguish the same over related known varieties, and its antecedents, 
and must particularly point out where and in what manner the variety of 
plant has been asexually reproduced. In the case of a newly found plant, 
the specification must particularly point out the location and character 
of the area where the plant was discovered.
    (b) Two copies of the specification (including the claim) must be 
submitted, but only one signed oath or declaration is required.
    (c) The elements of the plant application, if applicable, should 
appear in the following order:
    (1) Plant Application Transmittal Form.
    (2) Fee Transmittal Form.
    (3) Title of the invention.
    (4) Cross-reference to related applications.
    (5) Statement regarding federally sponsored research or development.
    (6) Background of the invention.
    (7) Brief summary of the invention.
    (8) Brief description of the drawing.
    (9) Detailed Botanical Description.
    (10) A single claim.
    (11) Abstract of the Disclosure.
    (12) Drawings (in duplicate).
    (13) Executed oath or declaration.
    (14) Plant color coding sheet.
    (d) A plant color coding sheet as used in this section means a sheet 
that specifies a color coding system as designated in a color 
dictionary, and lists every plant structure to which color is a 
distinguishing feature and the corresponding color code which best 
represents that plant structure.

(35 U.S.C. 112, 162; 35 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2713, Jan. 20, 1983; 61 
FR 42806, Aug. 19, 1996; 62 FR 53196, Oct. 10, 1997]



Sec. 1.164  Claim.

    The claim shall be in formal terms to the new and distinct variety 
of the specified plant as described and illustrated, and may also recite 
the principal distinguishing characteristics. More than one claim is not 
permitted.


(35 U.S.C. 162)

[[Page 71]]



Sec. 1.165  Plant drawings.

    (a) Plant patent drawings should be artistically and competently 
executed and must comply with the requirements of Sec. 1.84. View 
numbers and reference characters need not be employed unless required by 
the examiner. The drawing must disclose all the distinctive 
characteristics of the plant capable of visual representation.
    (b) The drawing may be in color and when color is a distinguishing 
characteristic of the new variety, the drawing must be in color. Two 
copies of color drawings or color photographs must be submitted.

[58 FR 38726, July 20, 1993]



Sec. 1.166  Specimens.

    The applicant may be required to furnish specimens of the plant, or 
its flower or fruit, in a quantity and at a time in its stage of growth 
as may be designated, for study and inspection. Such specimens, properly 
packed, must be forwarded in conformity with instructions furnished to 
the applicant. When it is not possible to forward such specimens, plants 
must be made available for official inspection where grown.


(35 U.S.C. 114, 161)



Sec. 1.167  Examination.

    Applications may be submitted by the Patent and Trademark Office to 
the Department of Agriculture for study and report.

[62 FR 53196, Oct. 10, 1997]

                                Reissues

    Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.



Sec. 1.171  Application for reissue.

    An application for reissue must contain the same parts required for 
an application for an original patent, complying with all the rules 
relating thereto except as otherwise provided, and in addition, must 
comply with the requirements of the rules relating to reissue 
applications.

[62 FR 53196, Oct. 10, 1997]



Sec. 1.172  Applicants, assignees.

    (a) A reissue oath must be signed and sworn to or declaration made 
by the inventor or inventors except as otherwise provided (see 
Secs. 1.42, 1.43, 1.47), and must be accompanied by the written consent 
of all assignees, if any, owning an undivided interest in the patent, 
but a reissue oath may be made and sworn to or declaration made by the 
assignee of the entire interest if the application does not seek to 
enlarge the scope of the claims of the original patent. All assignees 
consenting to the reissue must establish their ownership interest in the 
patent by filing in the reissue application a submission in accordance 
with the provisions of Sec. 3.73(b) of this chapter.
    (b) A reissue will be granted to the original patentee, his legal 
representatives or assigns as the interest may appear.

(35 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2713, Jan. 20, 1983; 62 
FR 53196, Oct. 10, 1997]



Sec. 1.173  Specification.

    The specification of the reissue application must include the entire 
specification and claims of the patent, with the matter to be omitted by 
reissue enclosed in square brackets; and any additions made by the 
reissue must be underlined, so that the old and the new specifications 
and claims may be readily compared. Claims should not be renumbered and 
the numbering of claims added by reissue should follow the number of the 
highest numbered patent claim. No new matter shall be introduced into 
the specification.



Sec. 1.174  Drawings.

    (a) The drawings upon which the original patent was issued may be 
used in reissue applications if no changes whatsoever are to be made in 
the drawings. In such cases, when the reissue application is filed, the 
applicant must submit a temporary drawing which may consist of a copy of 
the printed drawings of the patent or a photoprint of the original 
drawings of the size required for original drawing.
    (b) Amendments which can be made in a reissue drawing, that is, 
changes

[[Page 72]]

from the drawing of the patent, are restricted.


(36 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2713, Jan. 20, 1983]



Sec. 1.175  Reissue oath or declaration.

    (a) The reissue oath or declaration in addition to complying with 
the requirements of Sec. 1.63, must also state that:
    (1) The applicant believes the original patent to be wholly or 
partly inoperative or invalid by reason of a defective specification or 
drawing, or by reason of the patentee claiming more or less than the 
patentee had the right to claim in the patent, stating at least one 
error being relied upon as the basis for reissue; and
    (2) All errors being corrected in the reissue application up to the 
time of filing of the oath or declaration under this paragraph arose 
without any deceptive intention on the part of the applicant.
    (b)(1) For any error corrected, which is not covered by the oath or 
declaration submitted under paragraph (a) of this section, applicant 
must submit a supplemental oath or declaration stating that every such 
error arose without any deceptive intention on the part of the 
applicant. Any supplemental oath or declaration required by this 
paragraph must be submitted before allowance and may be submitted:
    (i) With any amendment prior to allowance; or
    (ii) In order to overcome a rejection under 35 U.S.C. 251 made by 
the examiner where it is indicated that the submission of a supplemental 
oath or declaration as required by this paragraph will overcome the 
rejection.
    (2) For any error sought to be corrected after allowance, a 
supplemental oath or declaration must accompany the requested correction 
stating that the error(s) to be corrected arose without any deceptive 
intention on the part of the applicant.
    (c) Having once stated an error upon which the reissue is based, as 
set forth in paragraph (a)(1), unless all errors previously stated in 
the oath or declaration are no longer being corrected, a subsequent oath 
or declaration under paragraph (b) of this section need not specifically 
identify any other error or errors being corrected.
    (d) The oath or declaration required by paragraph (a) of this 
section may be submitted under the provisions of Sec. 1.53(f).

[62 FR 53196, Oct. 10, 1997]



Sec. 1.176  Examination of reissue.

    An original claim, if re-presented in the reissue application, is 
subject to reexamination, and the entire application will be examined in 
the same manner as original applications, subject to the rules relating 
thereto, excepting that division will not be required. Applications for 
reissue will be acted on by the examiner in advance of other 
applications, but not sooner than two months after announcement of the 
filing of the reissue application has appeared in the Official Gazette.

[42 FR 5595, Jan. 28, 1977]



Sec. 1.177  Reissue in divisions.

    The Commissioner may, in his or her discretion, cause several 
patents to be issued for distinct and separate parts of the thing 
patented, upon demand of the applicant, and upon payment of the required 
fee for each division. Each division of a reissue constitutes the 
subject of a separate specification descriptive of the part or parts of 
the invention claimed in such division; and the drawing may represent 
only such part or parts, subject to the provisions of Secs. 1.83 and 
1.84. On filing divisional reissue applications, they shall be referred 
to the Commissioner. Unless otherwise ordered by the Commissioner upon 
petition and payment of the fee set forth in Sec. 1.17(i), all the 
divisions of a reissue will issue simultaneously; if there is any 
controversy as to one division, the others will be withheld from issue 
until the controversy is ended, unless the Commissioner orders 
otherwise.

[60 FR 20227, Apr. 25, 1995]



Sec. 1.178  Original patent.

    The application for a reissue must be accompanied by an offer to 
surrender the original patent. The application should also be 
accompanied by the original patent, or if the original is

[[Page 73]]

lost or inaccessible, by an affidavit or declaration to that effect. The 
application may be accepted for examination in the absence of the 
original patent or the affidavit or declaration, but one or the other 
must be supplied before the case is allowed. If a reissue be refused, 
the original patent will be returned to applicant upon his request.

[24 FR 10332, Dec. 22, 1959, as amended at 34 FR 18857, Nov. 26, 1969]



Sec. 1.179  Notice of reissue application.

    When an application for a reissue is filed, there will be placed in 
the file of the original patent a notice stating that an application for 
reissue has been filed. When the reissue is granted or the reissue 
application is otherwise terminated, the fact will be added to the 
notice in the file of the original patent.

                Petitions and Action by the Commissioner

    Authority: 35 U.S.C. 6; 15 U.S.C. 1113, 1123.



Sec. 1.181  Petition to the Commissioner.

    (a) Petition may be taken to the Commissioner:
    (1) From any action or requirement of any examiner in the ex parte 
prosecution of an application which is not subject to appeal to the 
Board of Patent Appeals and Interferences or to the court;
    (2) In cases in which a statute or the rules specify that the matter 
is to be determined directly by or reviewed by the Commissioner; and
    (3) To invoke the supervisory authority of the Commissioner in 
appropriate circumstances. For petitions in interferences, see 
Sec. 1.644.
    (b) Any such petition must contain a statement of the facts involved 
and the point or points to be reviewed and the action requested. Briefs 
or memoranda, if any, in support thereof should accompany or be embodied 
in the petition; and where facts are to be proven, the proof in the form 
of affidavits or declarations (and exhibits, if any) must accompany the 
petition.
    (c) When a petition is taken from an action or requirement of an 
examiner in the ex parte prosecution of an application, it may be 
required that there have been a proper request for reconsideration 
(Sec. 1.111) and a repeated action by the examiner. The examiner may be 
directed by the Commissioner to furnish a written statement, within a 
specified time, setting forth the reasons for his decision upon the 
matters averred in the petition, supplying a copy thereof to the 
petitioner.
    (d) Where a fee is required for a petition to the Commissioner the 
appropriate section of this part will so indicate. If any required fee 
does not accompany the petition, the petition will be dismissed.
    (e) Oral hearing will not be granted except when considered 
necessary by the Commissioner.
    (f) Except as otherwise provided in these rules, any such petition 
not filed within 2 months from the action complained of, may be 
dismissed as untimely. The mere filing of a petition will not stay the 
period for reply to an Examiner's action which may be running against an 
application, nor act as a stay of other proceedings.
    (g) The Commissioner may delegate to appropriate Patent and 
Trademark Office officials the determination of petitions.

[24 FR 10332, Dec. 22, 1959, as amended at 34 FR 18857, Nov. 26, 1969; 
47 FR 41278, Sept. 17, 1982; 49 FR 48452, Dec. 12, 1984]



Sec. 1.182  Questions not specifically provided for.

    All situations not specifically provided for in the regulations of 
this part will be decided in accordance with the merits of each 
situation by or under the authority of the Commissioner, subject to such 
other requirements as may be imposed, and such decision will be 
communicated to the interested parties in writing. Any petition seeking 
a decision under this section must be accompanied by the petition fee 
set forth in Sec. 1.17(h).

[62 FR 53196, Oct. 10, 1997]



Sec. 1.183  Suspension of rules.

    In an extraordinary situation, when justice requires, any 
requirement of the regulations in this part which is not a requirement 
of the statutes may be suspended or waived by the Commissioner or the 
Commissioner's designee,

[[Page 74]]

sua sponte, or on petition of the interested party, subject to such 
other requirements as may be imposed. Any petition under this section 
must be accompanied by the petition fee set forth in Sec. 1.17(h).

[47 FR 41278, Sept. 17, 1982]



Sec. 1.184  [Reserved]

         Appeal to the Board of Patent Appeals and Interferences

    Authority: Secs. 1.191 to 1.198 also issued under 35 U.S.C. 134.



Sec. 1.191  Appeal to Board of Patent Appeals and Interferences.

    (a) Every applicant for a patent or for reissue of a patent, and 
every owner of a patent under reexamination, any of whose claims has 
been twice or finally (Sec. 1.113) rejected, may appeal from the 
decision of the examiner to the Board of Patent Appeals and 
Interferences by filing a notice of appeal and the fee set forth in 
Sec. 1.17(b) within the time period provided under Secs. 1.134 and 1.136 
for reply.
    (b) The signature requirement of Sec. 1.33 does not apply to a 
notice of appeal filed under this section.
    (c) An appeal when taken must be taken from the rejection of all 
claims under rejection which the applicant or patent owner proposes to 
contest. Questions relating to matters not affecting the merits of the 
invention may be required to be settled before an appeal can be 
considered.
    (d) The time periods set forth in Secs. 1.191 and 1.192 are subject 
to the provisions of Sec. 1.136 for patent applications and 
Sec. 1.550(c) for reexamination proceedings. The time periods set forth 
in Secs. 1.193, 1.194, 1.196 and 1.197 are subject to the provisions of 
Sec. 1.136(b) for patent applications or Sec. 1.550(c) for reexamination 
proceedings. See Sec. 1.304(a) for extensions of time for filing a 
notice of appeal to the U.S. Court of Appeals for the Federal Circuit or 
for commencing a civil action.
    (e) Jurisdiction over the application or patent under reexamination 
passes to the Board of Patent Appeals and Interferences upon transmittal 
of the file, including all briefs and examiner's answers, to the Board. 
Prior to the entry of a decision on the appeal, the Commissioner may sua 
sponte order the application remanded to the examiner.

(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)

[46 FR 29183, May 29, 1981, as amended at 49 FR 555, Jan. 4, 1984; 49 FR 
48453, Dec. 12, 1984; 54 FR 29552, July 13, 1989; 58 FR 54510, Oct. 22, 
1993; 62 FR 53196, Oct. 10, 1997]



Sec. 1.192  Appellant's brief.

    (a) Appellant must, within two months from the date of the notice of 
appeal under Sec. 1.191 or within the time allowed for reply to the 
action from which the appeal was taken, if such time is later, file a 
brief in triplicate. The brief must be accompanied by the fee set forth 
in Sec. 1.17(c) and must set forth the authorities and arguments on 
which appellant will rely to maintain the appeal. Any arguments or 
authorities not included in the brief will be refused consideration by 
the Board of Patent Appeals and Interferences, unless good cause is 
shown.
    (b) On failure to file the brief, accompanied by the requisite fee, 
within the time allowed, the appeal shall stand dismissed.
    (c) The brief shall contain the following items under appropriate 
headings and in the order indicated below unless the brief is filed by 
an applicant who is not represented by a registered practitioner:
    (1) Real party in interest. A statement identifying the real party 
in interest, if the party named in the caption of the brief is not the 
real party in interest.
    (2) Related appeals and interferences. A Statement identifying by 
number and filing date all other appeals or interferences known to 
appellant, the appellant's legal representative, or assignee which will 
directly affect or be directly affected by or have a bearing on the 
Board's decision in the pending appeal.
    (3) Status of claims. A statement of the status of all the claims, 
pending or cancelled, and identifying the claims appealed.
    (4) Status of amendments. A statement of the status of any amendment 
filed subsequent to final rejection.
    (5) Summary of invention. A concise explanation of the invention 
defined in the claims involved in the appeal,

[[Page 75]]

which shall refer to the specification by page and line number, and to 
the drawing, if any, by reference characters.
    (6) Issues. A concise statement of the issues presented for review.
    (7) Grouping of claims. For each ground of rejection which appellant 
contests and which applies to a group of two or more claims, the Board 
shall select a single claim from the group and shall decide the appeal 
as to the ground of rejection on the basis of that claim alone unless a 
statement is included that the claims of the group do not stand or fall 
together and, in the argument under paragraph (c)(8) of this section, 
appellant explains why the claims of the group are believed to be 
separately patentable. Merely pointing out differences in what the 
claims cover is not an argument as to why the claims are separately 
patentable.
    (8) Argument. The contentions of appellant with respect to each of 
the issues presented for review in paragraph (c)(6) of this section, and 
the basis therefor, with citations of the authorities, statutes, and 
parts of the record relied on. Each issue should be treated under a 
separate heading.
    (i) For each rejection under 35 U.S.C. 112, first paragraph, the 
argument shall specify the errors in the rejection and how the first 
paragraph of 35 U.S.C. 112 is complied with, including, as appropriate, 
how the specification and drawings, if any,
    (A) Describe the subject matter defined by each of the rejected 
claims,
    (B) Enable any person skilled in the art to make and use the subject 
matter defined by each of the rejected claims, and
    (C) Set forth the best mode contemplated by the inventor of carrying 
out his or her invention.
    (ii) For each rejection under 35 U.S.C. 112, second paragraph, the 
argument shall specify the errors in the rejection and how the claims 
particularly point out and distinctly claim the subject matter which 
applicant regards as the invention.
    (iii) For each rejection under 35 U.S.C. 102, the argument shall 
specify the errors in the rejection and why the rejected claims are 
patentable under 35 U.S.C. 102, including any specific limitations in 
the rejected claims which are not described in the prior art relied upon 
in the rejection.
    (iv) For each rejection under 35 U.S.C. 103, the argument shall 
specify the errors in the rejection and, if appropriate, the specific 
limitations in the rejected claims which are not described in the prior 
art relied on in the rejection, and shall explain how such limitations 
render the claimed subject matter unobvious over the prior art. If the 
rejection is based upon a combination of references, the argument shall 
explain why the references, taken as a whole, do not suggest the claimed 
subject matter, and shall include, as may be appropriate, an explanation 
of why features disclosed in one reference may not properly be combined 
with features disclosed in another reference. A general argument that 
all the limitations are not described in a single reference does not 
satisfy the requirements of this paragraph.
    (v) For any rejection other than those referred to in paragraphs 
(c)(8) (i) to (iv) of this section, the argument shall specify the 
errors in the rejection and the specific limitations in the rejected 
claims, if appropriate, or other reasons, which cause the rejection to 
be in error.
    (9) Appendix. An appendix containing a copy of the claims involved 
in the appeal.
    (d) If a brief is filed which does not comply with all the 
requirements of paragraph (c) of this section, appellant will be 
notified of the reasons for non-compliance and provided with a period of 
one month within which to file an amended brief. If appellant does not 
file an amended brief during the one-month period, or files an amended 
brief which does not overcome all the reasons for non-compliance stated 
in the notification, the appeal will stand dismissed.

(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)

[36 FR 5850, Mar. 30, 1971, as amended at 53 FR 23734, June 23, 1988; 58 
FR 54510, Oct. 22, 1993; 60 FR 14518, Mar. 17, 1995; 62 FR 53196, Oct. 
10, 1997]

[[Page 76]]



Sec. 1.193  Examiner's answer and reply brief.

    (a)(1) The primary examiner may, within such time as may be directed 
by the Commissioner, furnish a written statement in answer to 
appellant's brief including such explanation of the invention claimed 
and of the references and grounds of rejection as may be necessary, 
supplying a copy to appellant. If the primary examiner finds that the 
appeal is not regular in form or does not relate to an appealable 
action, the primary examiner shall so state.
    (2) An examiner's answer must not include a new ground of rejection, 
but if an amendment under Sec. 1.116 proposes to add or amend one or 
more claims and appellant was advised that the amendment under 
Sec. 1.116 would be entered for purposes of appeal and which individual 
rejection(s) set forth in the action from which the appeal was taken 
would be used to reject the added or amended claim(s), then the appeal 
brief must address the rejection(s) of the claim(s) added or amended by 
the amendment under Sec. 1.116 as appellant was so advised and the 
examiner's answer may include the rejection(s) of the claim(s) added or 
amended by the amendment under Sec. 1.116 as appellant was so advised. 
The filing of an amendment under Sec. 1.116 which is entered for 
purposes of appeal represents appellant's consent that when so advised 
any appeal proceed on those claim(s) added or amended by the amendment 
under Sec. 1.116 subject to any rejection set forth in the action from 
which the appeal was taken.
    (b)(1) Appellant may file a reply brief to an examiner's answer 
within two months from the date of such examiner's answer. See 
Sec. 1.136(b) for extensions of time for filing a reply brief in a 
patent application and Sec. 1.550(c) for extensions of time for filing a 
reply brief in a reexamination proceeding. The primary examiner must 
either acknowledge receipt and entry of the reply brief or withdraw the 
final rejection and reopen prosecution to respond to the reply brief. A 
supplemental examiner's answer is not permitted, unless the application 
has been remanded by the Board of Patent Appeals and Interferences for 
such purpose.
    (2) Where prosecution is reopened by the primary examiner after an 
appeal or reply brief has been filed, appellant must exercise one of the 
following two options to avoid abandonment of the application:
    (i) File a reply under Sec. 1.111, if the Office action is not 
final, or a reply under Sec. 1.113, if the Office action is final; or
    (ii) Request reinstatement of the appeal. If reinstatement of the 
appeal is requested, such request must be accompanied by a supplemental 
appeal brief, but no new amendments, affidavits (Secs. 1.130, 1.131 or 
1.132) or other evidence are permitted.

[62 FR 53197, Oct. 10, 1997]



Sec. 1.194  Oral hearing.

    (a) An oral hearing should be requested only in those circumstances 
in which appellant considers such a hearing necessary or desirable for a 
proper presentation of the appeal. An appeal decided without an oral 
hearing will receive the same consideration by the Board of Patent 
Appeals and Interferences as appeals decided after oral hearing.
    (b) If appellant desires an oral hearing, appellant must file, in a 
separate paper, a written request for such hearing accompanied by the 
fee set forth in Sec. 1.17(d) within two months from the date of the 
examiner's answer. If appellant requests an oral hearing and submits 
therewith the fee set forth in Sec. 1.17(d), an oral argument may be 
presented by, or on behalf of, the primary examiner if considered 
desirable by either the primary examiner or the Board. See Sec. 1.136(b) 
for extensions of time for requesting an oral hearing in a patent 
application and Sec. 1.550(c) for extensions of time for requesting an 
oral hearing in a reexamination proceeding.
    (c) If no request and fee for oral hearing have been timely filed by 
appellant, the appeal will be assigned for consideration and decision. 
If appellant has requested an oral hearing and has submitted the fee set 
forth in Sec. 1.17(d), a day of hearing will be set, and due notice 
thereof given to appellant and to the primary examiner. A hearing will 
be held as stated in the notice, and oral argument will be limited to 
twenty minutes for appellant and fifteen

[[Page 77]]

minutes for the primary examiner unless otherwise ordered before the 
hearing begins. If the Board decides that a hearing is not necessary, 
the Board will so notify appellant.

[62 FR 53197, Oct. 10, 1997]



Sec. 1.195  Affidavits or declarations after appeal.

    Affidavits, declarations, or exhibits submitted after the case has 
been appealed will not be admitted without a showing of good and 
sufficient reasons why they were not earlier presented.

[34 FR 18858, Nov. 26, 1969]



Sec. 1.196  Decision by the Board of Patent Appeals and Interferences.

    (a) The Board of Patent Appeals and Interferences, in its decision, 
may affirm or reverse the decision of the examiner in whole or in part 
on the grounds and on the claims specified by the examiner or remand the 
application to the examiner for further consideration. The affirmance of 
the rejection of a claim on any of the grounds specified constitutes a 
general affirmance of the decision of the examiner on that claim, except 
as to any ground specifically reversed.
    (b) Should the Board of Patent Appeals and Interferences have 
knowledge of any grounds not involved in the appeal for rejecting any 
pending claim, it may include in the decision a statement to that effect 
with its reasons for so holding, which statement constitutes a new 
ground of rejection of the claim. A new ground of rejection shall not be 
considered final for purposes of judicial review. When the Board of 
Patent Appeals and Interferences makes a new ground of rejection, the 
appellant, within two months from the date of the decision, must 
exercise one of the following two options with respect to the new ground 
of rejection to avoid termination of proceedings (Sec. 1.197(c)) as to 
the rejected claims:
    (1) Submit an appropriate amendment of the claims so rejected or a 
showing of facts relating to the claims so rejected, or both, and have 
the matter reconsidered by the examiner, in which event the application 
will be remanded to the examiner. The new ground of rejection is binding 
upon the examiner unless an amendment or showing of facts not previously 
of record be made which, in the opinion of the examiner, overcomes the 
new ground of rejection stated in the decision. Should the examiner 
reject the claims, appellant may again appeal pursuant to Secs. 1.191 
through 1.195 to the Board of Patent Appeals and Interferences.
    (2) Request that the application be reheard under Sec. 1.197(b) by 
the Board of Patent Appeals and Interferences upon the same record. The 
request for rehearing must address the new ground of rejection and state 
with particularity the points believed to have been misapprehended or 
overlooked in rendering the decision and also state all other grounds 
upon which rehearing is sought. Where request for such rehearing is 
made, the Board of Patent Appeals and Interferences shall rehear the new 
ground of rejection and, if necessary, render a new decision which shall 
include all grounds of rejection upon which a patent is refused. The 
decision on rehearing is deemed to incorporate the earlier decision for 
purposes of appeal, except for those portions specifically withdrawn on 
rehearing, and is final for the purpose of judicial review, except when 
noted otherwise in the decision.
    (c) Should the decision of the Board of Patent Appeals and 
Interferences include an explicit statement that a claim may be allowed 
in amended form, appellant shall have the right to amend in conformity 
with such statement which shall be binding on the examiner in the 
absence of new references or grounds of rejection.
    (d) The Board of Patent Appeals and Interferences may require 
appellant to address any matter that is deemed appropriate for a 
reasoned decision on the pending appeal. Appellant will be given a non-
extendable time period within which to respond to such a requirement.
    (e) Whenever a decision of the Board of Patent Appeals and 
Interferences includes or allows a remand, that decision shall not be 
considered a final decision. When appropriate, upon conclusion of 
proceedings on remand before

[[Page 78]]

the examiner, the Board of Patent Appeals and Interferences may enter an 
order otherwise making its decision final.
    (f) See Sec. 1.136(b) for extensions of time to take action under 
this section in a patent application and Sec. 1.550(c) for extensions of 
time in a reexamination proceeding.

[49 FR 48453, Dec. 12, 1984, as amended at 54 FR 29552, July 13, 1989; 
58 FR 54510, Oct. 22, 1993; 62 FR 53197, Oct. 10, 1997]



Sec. 1.197  Action following decision.

    (a) After decision by the Board of Patent Appeals and Interferences, 
the application will be returned to the examiner, subject to appellant's 
right of appeal or other review, for such further action by appellant or 
by the examiner, as the condition of the application may require, to 
carry into effect the decision.
    (b) Appellant may file a single request for rehearing within two 
months from the date of the original decision, unless the original 
decision is so modified by the decision on rehearing as to become, in 
effect, a new decision, and the Board of Patent Appeals and 
Interferences so states. The request for rehearing must state with 
particularity the points believed to have been misapprehended or 
overlooked in rendering the decision and also state all other grounds 
upon which rehearing is sought. See Sec. 1.136(b) for extensions of time 
for seeking rehearing in a patent application and Sec. 1.550(c) for 
extensions of time for seeking rehearing in a reexamination proceeding.
    (c) Termination of proceedings. Proceedings are considered 
terminated by the dismissal of an appeal or the failure to timely file 
an appeal to the court or a civil action (Sec. 1.304) except:
    (1) Where claims stand allowed in an application or
    (2) Where the nature of the decision requires further action by the 
examiner.

The date of termination of proceedings is the date on which the appeal 
is dismissed or the date on which the time for appeal to the court or 
review by civil action (Sec. 1.304) expires. If an appeal to the court 
or a civil action has been filed, proceedings are considered terminated 
when the appeal or civil action is terminated. An appeal to the U.S. 
Court of Appeals for the Federal Circuit is terminated when the mandate 
is received by the Office. A civil action is terminated when the time to 
appeal the judgment expires.

(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)

[46 FR 29184, May 29, 1981, as amended at 49 FR 48453, Dec. 12, 1984; 54 
FR 29552, July 13, 1989; 58 FR 54510, Oct. 22, 1993; 62 FR 53198, Oct. 
10, 1997]



Sec. 1.198  Reopening after decision.

    Cases which have been decided by the Board of Patent Appeals and 
Interferences will not be reopened or reconsidered by the primary 
examiner except under the provisions of Sec. 1.196 without the written 
authority of the Commissioner, and then only for the consideration of 
matters not already adjudicated, sufficient cause being shown.

[24 FR 10332, Dec. 22, 1959, as amended at 49 FR 48453, Dec. 12, 1984]

                        Miscellaneous Provisions



Sec. 1.248  Service of papers; manner of service; proof of service in cases other than interferences.

    (a) Service of papers must be on the attorney or agent of the party 
if there be such or on the party if there is no attorney or agent, and 
may be made in any of the following ways:
    (1) By delivering a copy of the paper to the person served;
    (2) By leaving a copy at the usual place of business of the person 
served with someone in his employment;
    (3) When the person served has no usual place of business, by 
leaving a copy at the person's residence, with some person of suitable 
age and discretion who resides there;
    (4) Transmission by first class mail. When service is by mail the 
date of mailing will be regarded as the date of service;
    (5) Whenever it shall be satisfactorily shown to the Commissioner 
that none of the above modes of obtaining or serving the paper is 
practicable, service may be by notice published in the Official Gazette.
    (b) Papers filed in the Patent and Trademark Office which are 
required

[[Page 79]]

to be served shall contain proof of service. Proof of service may appear 
on or be affixed to papers filed. Proof of service shall include the 
date and manner of service. In the case of personal service, proof of 
service shall also include the name of any person served, certified by 
the person who made service. Proof of service may be made by:
    (1) An acknowledgement of service by or on behalf of the person 
served or
    (2) A statement signed by the attorney or agent containing the 
information required by this section.
    (c) See Sec. 1.646 for service of papers in interferences.

[46 FR 29184, May 29, 1981, as amended at 49 FR 48454, Dec. 12, 1984]

                   Protests and Public Use Proceedings



Sec. 1.291  Protests by the public against pending applications.

    (a) Protests by a member of the public against pending applications 
will be referred to the examiner having charge of the subject matter 
involved. A protest specifically identifying the application to which 
the protest is directed will be entered in the application file if:
    (1) The protest is submitted prior to the mailing of a notice of 
allowance under Sec. 1.311; and
    (2) The protest is either served upon the applicant in accordance 
with Sec. 1.248, or filed with the Office in duplicate in the event 
service is not possible.
    (b) Protests raising fraud or other inequitable conduct issues will 
be entered in the application file, generally without comment on those 
issues. Protests which do not adequately identify a pending patent 
application will be returned to the protestor and will not be further 
considered by the Office. A protest submitted in accordance with the 
second sentence of paragraph (a) of this section will be considered by 
the Office if the application is still pending when the protest and 
application file are brought before the examiner and it includes:
    (1) A listing of the patents, publications, or other information 
relied upon;
    (2) A concise explanation of the relevance of each listed item;
    (3) A copy of each listed patent or publication or other item of 
information in written form or at least the pertinent portions thereof; 
and
    (4) An English language translation of all the necessary and 
pertinent parts of any non-English language patent, publication, or 
other item of information in written form relied upon.
    (c) A member of the public filing a protest in an application under 
paragraph (a) of this section will not receive any communications from 
the Office relating to the protest, other than the return of a self-
addressed postcard which the member of the public may include with the 
protest in order to receive an acknowledgment by the Office that the 
protest has been received. In the absence of a request by the Office, an 
applicant has no duty to, and need not, reply to a protest. The limited 
involvement of the member of the public filing a protest pursuant to 
paragraph (a) of this section ends with the filing of the protest, and 
no further submission on behalf of the protestor will be considered, 
except for additional prior art, or unless such submission raises new 
issues which could not have been earlier presented.

[47 FR 21752, May 19, 1982, as amended at 57 FR 2035, Jan. 17, 1992; 61 
FR 42806, Aug. 19, 1996; 62 FR 53198, Oct. 10, 1997]



Sec. 1.292  Public use proceedings.

    (a) When a petition for the institution of public use proceedings, 
supported by affidavits or declarations is found, on reference to the 
examiner, to make a prima facie showing that the invention claimed in an 
application believed to be on file had been in public use or on sale 
more than one year before the filing of the application, a hearing may 
be had before the Commissioner to determine whether a public use 
proceeding should be instituted. If instituted, the Commissioner may 
designate an appropriate official to conduct the public use proceeding, 
including the setting of times for taking testimony, which shall be 
taken as provided by Secs. 1.671 through 1.685. The petitioner will be 
heard in the proceedings but after decision therein will not be heard 
further in the prosecution of the application for patent.
    (b) The petition and accompanying papers, or a notice that such a 
petition

[[Page 80]]

has been filed, shall be entered in the application file if:
    (1) The petition is accompanied by the fee set forth in 
Sec. 1.17(j);
    (2) The petition is served on the applicant in accordance with 
Sec. 1.248, or filed with the Office in duplicate in the event service 
is not possible; and
    (3) The petition is submitted prior to the mailing of a notice of 
allowance under Sec. 1.311.
    (c) A petition for institution of public use proceedings shall not 
be filed by a party to an interference as to an application involved in 
the interference. Public use and on sale issues in an interference shall 
be raised by a preliminary motion under Sec. 1.633(a).


(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[42 FR 5595, Jan. 28, 1977, as amended at 49 FR 48454, Dec. 12, 1984; 61 
FR 42807, Aug. 19, 1996]



Sec. 1.293  Statutory invention registration.

    (a) An applicant for an original patent may request, at any time 
during the pendency of applicant's pending complete application, that 
the specification and drawings be published as a statutory invention 
registration. Any such request must be signed by (1) the applicant and 
any assignee of record or (2) an attorney or agent of record in the 
application.
    (b) Any request for publication of a statutory invention 
registration must include the following parts:
    (1) A waiver of the applicant's right to receive a patent on the 
invention claimed effective upon the date of publication of the 
statutory invention registration;
    (2) The required fee for filing a request for publication of a 
statutory invention registration as provided for in Sec. 1.17 (n) or 
(o);
    (3) A statement that, in the opinion of the requester, the 
application to which the request is directed meets the requirements of 
35 U.S.C. 112; and
    (4) A statement that, in the opinion of the requester, the 
application to which the request is directed complies with the formal 
requirements of this part for printing as a patent.
    (c) A waiver filed with a request for a statutory invention 
registration will be effective, upon publication of the statutory 
invention registration, to waive the inventor's right to receive a 
patent on the invention claimed in the statutory invention registration, 
in any application for an original patent which is pending on, or filed 
after, the date of publication of the statutory invention registration. 
A waiver filed with a request for a statutory invention registration 
will not affect the rights of any other inventor even if the subject 
matter of the statutory invention registration and an application of 
another inventor are commonly owned. A waiver filed with a request for a 
statutory invention registration will not affect any rights in a patent 
to the inventor which issued prior to the date of publication of the 
statutory invention registration unless a reissue application is filed 
seeking to enlarge the scope of the claims of the patent. See also 
Sec. 1.104(c)(5).

(Approved by the Office of Management and Budget under control number 
0651-0018)

[50 FR 9382, Mar. 7, 1985, as amended at 62 FR 53198, Oct. 10, 1997]



Sec. 1.294  Examination of request for publication of a statutory invention registration and patent application to which the request is directed.

    (a) Any request for a statutory invention registration will be 
examined to determine if the requirements of Sec. 1.293 have been met. 
The application to which the request is directed will be examined to 
determine (1) if the subject matter of the application is appropriate 
for publication, (2) if the requirements for publication are met, and 
(3) if the requirements of 35 U.S.C. 112 and Sec. 1.293 of this part are 
met.
    (b) Applicant will be notified of the results of the examination set 
forth in paragraph (a) of this section. If the requirements of 
Sec. 1.293 and this section are not met by the request filed, the 
notification to applicant will set a period of time within which to 
comply with the requirements in order to avoid abandonment of the 
application. If the application does not meet the requirements of 35 
U.S.C. 112, the notification to applicant will include a rejection under 
the appropriate provisions of 35

[[Page 81]]

U.S.C. 112. The periods for reply established pursuant to this section 
are subject to the extension of time provisions of Sec. 1.136. After 
reply by the applicant, the application will again be considered for 
publication of a statutory invention registration. If the requirements 
of Sec. 1.293 and this section are not timely met, the refusal to 
publish will be made final. If the requirements of 35 U.S.C. 112 are not 
met, the rejection pursuant to 35 U.S.C. 112 will be made final.
    (c) If the examination pursuant to this section results in approval 
of the request for a statutory invention registration the applicant will 
be notified of the intent to publish a statutory invention registration.

[50 FR 9382, Mar. 7, 1985, as amended at 62 FR 53198, Oct. 10, 1997]



Sec. 1.295  Review of decision finally refusing to publish a statutory invention registration.

    (a) Any requester who is dissatisfied with the final refusal to 
publish a statutory invention registration for reasons other than 
compliance with 35 U.S.C. 112 may obtain review of the refusal to 
publish the statutory invention registration by filing a petition to the 
Commissioner accompanied by the fee set forth in Sec. 1.17(h) within one 
month or such other time as is set in the decision refusing publication. 
Any such petition should comply with the requirements of Sec. 1.181(b). 
The petition may include a request that the petition fee be refunded if 
the final refusal to publish a statutory invention registration for 
reasons other than compliance with 35 U.S.C. 112 is determined to result 
from an error by the Patent and Trademark Office.
    (b) Any requester who is dissatisfied with a decision finally 
rejecting claims pursuant to 35 U.S.C. 112 may obtain review of the 
decision by filing an appeal to the Board of Patent Appeals and 
Interferences pursuant to Sec. 1.191. If the decision rejecting claims 
pursuant to 35 U.S.C. 112 is reversed, the request for a statutory 
invention registration will be approved and the registration published 
if all of the other provisions of Sec. 1.293 and this section are met.

(Approved by the Office of Management and Budget under control number 
0651-0018)

[50 FR 9382, Mar. 7, 1985]



Sec. 1.296  Withdrawal of request for publication of statutory invention registration.

    A request for a statutory invention registration, which has been 
filed, may be withdrawn prior to the date of the notice of the intent to 
publish a statutory invention registration issued pursuant to 
Sec. 1.294(c) by filing a request to withdraw the request for 
publication of a statutory invention registration. The request to 
withdraw may also include a request for a refund of any amount paid in 
excess of the application filing fee and a handling fee of $130.00 which 
will be retained. Any request to withdraw the request for publication of 
a statutory invention registration filed on or after the date of the 
notice of intent to publish issued pursuant to Sec. 1.294(c) must be in 
the form of a petition pursuant to Sec. 1.183 accompanied by the fee set 
forth in Sec. 1.17(h).

[56 FR 65153, Dec. 13, 1991]



Sec. 1.297  Publication of statutory invention registration.

    (a) If the request for a statutory invention registration is 
approved the statutory invention registration will be published. The 
statutory invention registration will be mailed to the requester at the 
correspondence address as provided for in Sec. 1.33(a). A notice of the 
publication of each statutory invention registration will be published 
in the Official Gazette.
    (b) Each statutory invention registration published will include a 
statement relating to the attributes of a statutory invention 
registration. The statement will read as follows:

    A statutory invention registration is not a patent. It has the 
defensive attributes of a patent but does not have the enforceable 
attributes of a patent. No article or advertisement or the like may use 
the term patent, or any term suggestive of a patent, when referring to a 
statutory invention registration. For more specific information on the 
rights

[[Page 82]]

associated with a statutory invention registration see 35 U.S.C. 157.

[50 FR 9383, Mar. 7, 1985, as amended at 50 FR 31826, Aug. 6, 1985]

        Review of Patent and Trademark Office Decisions by Court



Sec. 1.301  Appeal to U.S. Court of Appeals for the Federal Circuit.

    Any applicant or any owner of a patent involved in a reexamination 
proceeding dissatisfied with the decision of the Board of Patent Appeals 
and Interferences, and any party to an interference dissatisfied with 
the decision of the Board of Patent Appeals and Interferences, may 
appeal to the U.S. Court of Appeals for the Federal Circuit. The 
appellant must take the following steps in such an appeal:
    (a) In the Patent and Trademark Office file a written notice of 
appeal directed to the Commissioner (see Secs. 1.302 and 1.304); and
    (b) In the Court, file a copy of the notice of appeal and pay the 
fee for appeal, as provided by the rules of the Court.

[54 FR 29552, July 13, 1989]



Sec. 1.302  Notice of appeal.

    (a) When an appeal is taken to the U.S. Court of Appeals for the 
Federal Circuit, the appellant shall give notice thereof to the 
Commissioner within the time specified in Sec. 1.304.
    (b) In interferences, the notice must be served as provided in 
Sec. 1.646.
    (c) A notice of appeal, if mailed to the Office, shall be addressed 
as follows: Box 8, Commissioner of Patents and Trademarks, Washington, 
DC 20231.

[50 FR 9383, Mar. 7, 1985, as amended at 53 FR 16414, May 9, 1988]



Sec. 1.303  Civil action under 35 U.S.C. 145, 146, 306.

    (a) Any applicant or any owner of a patent involved in a 
reexamination proceeding dissatisfied with the decision of the Board of 
Patent Appeals and Interferences, and any party dissatisfied with the 
decision of the Board of Patent Appeals and Interferences, may, instead 
of appealing to the U.S. Court of Appeals for the Federal Circuit 
(Sec. 1.301), have remedy by civil action under 35 U.S.C. 145 or 146, as 
appropriate. Such civil action must be commenced within the time 
specified in Sec. 1.304.
    (b) If an applicant in an ex parte case or an owner of a patent 
involved in a reeexamination proceeding has taken an appeal to the U.S. 
Court of Appeals for the Federal Circuit, he or she thereby waives his 
or her right to proceed under 35 U.S.C. 145.
    (c) If any adverse party to an appeal taken to the U.S. Court of 
Appeals for the Federal Circuit by a defeated party in an interference 
proceeding files notice with the Commissioner within twenty days after 
the filing of the defeated party's notice of appeal to the court 
(Sec. 1.302), that he or she elects to have all further proceedings 
conducted as provided in 35 U.S.C. 146, the notice of election must be 
served as provided in Sec. 1.646.

(35 U.S.C. 6; 15 U.S.C. 1123)

[47 FR 47381, Oct. 26, 1982, as amended at 49 FR 48454, Dec. 12, 1984; 
54 FR 29553, July 13, 1989]



Sec. 1.304  Time for appeal or civil action.

    (a)(1) The time for filing the notice of appeal to the U.S. Court of 
Appeals for the Federal Circuit (Sec. 1.302) or for commencing a civil 
action (Sec. 1.303) is two months from the date of the decision of the 
Board of Patent Appeals and Interferences. If a request for rehearing or 
reconsideration of the decision is filed within the time period provided 
under Sec. 1.197(b) or Sec. 1.658(b), the time for filing an appeal or 
commencing a civil action shall expire two months after action on the 
request. In interferences, the time for filing a cross-appeal or cross-
action expires:
    (i) 14 days after service of the notice of appeal or the summons and 
complaint; or
    (ii) Two months after the date of decision of the Board of Patent 
Appeals and Interferences, whichever is later.
    (2) The time periods set forth in this section are not subject to 
the provisions of Secs. 1.136, 1.550(c) or 1.645 (a) or (b).
    (3) The Commissioner may extend the time for filing an appeal or 
commencing a civil action:
    (i) For good cause shown if requested in writing before the 
expiration of the

[[Page 83]]

period for filing an appeal or commencing a civil action, or
    (ii) Upon written request after the expiration of the period for 
filing an appeal or commencing a civil action upon a showing that the 
failure to act was the result of excusable neglect.
    (b) The times specified in this section in days are calendar days. 
The times specified herein in months are calendar months except that one 
day shall be added to any two-month period which includes February 28. 
If the last day of the time specified for appeal or commencing a civil 
action falls on a Saturday, Sunday or Federal holiday in the District of 
Columbia, the time is extended to the next day which is neither a 
Saturday, Sunday nor a Federal holiday.
    (c) If a defeated party to an interference has taken an appeal to 
the U.S. Court of Appeals for the Federal Circuit and an adverse party 
has filed notice under 35 U.S.C. 141 electing to have all further 
proceedings conducted under 35 U.S.C. 146 (Sec. 1.303(c)), the time for 
filing a civil action thereafter is specified in 35 U.S.C. 141. The time 
for filing a cross-action expires 14 days after service of the summons 
and complaint.

[54 FR 29553, July 13, 1989, as amended at 58 FR 54502, Oct. 22, 1993; 
62 FR 53198, Oct. 10, 1997]

                      Allowance and Issue of Patent



Sec. 1.311  Notice of allowance.

    (a) If, on examination, it shall appear that the applicant is 
entitled to a patent under the law, a notice of allowance will be sent 
to applicant at the correspondence address indicated in Sec. 1.33, 
calling for the payment of a specified sum constituting the issue fee 
(Sec. 1.18), which shall be paid within 3 months from the date of the 
mailing of the notice of allowance.
    (b) An authorization to charge the issue fee (Sec. 1.18) to a 
deposit account may be filed in an individual application, either before 
or after mailing of the notice of allowance. Where an authorization to 
charge the issue fee to a deposit account has been filed before the 
mailing of the notice of allowance, the issue fee will be automatically 
charged to the deposit account at the time of mailing the notice of 
allowance.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[47 FR 41279, Sept. 17, 1982]



Sec. 1.312  Amendments after allowance.

    (a) No amendment may be made as a matter of right in an application 
after the mailing of the notice of allowance. Any amendment pursuant to 
this paragraph filed before the payment of the issue fee may be entered 
on the recommendation of the primary examiner, approved by the 
Commissioner, without withdrawing the case from issue.
    (b) Any amendment pursuant to paragraph (a) of this section filed 
after the date the issue fee is paid must be accompanied by a petition 
including the fee set forth in Sec. 1.17(i) and a showing of good and 
sufficient reasons why the amendment is necessary and was not earlier 
presented. For reissue applications, see Sec. 1.175(b), which requires a 
supplemental oath or declaration to accompany the amendment.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[47 FR 41280, Sept. 17, 1982, as amended at 58 FR 54510, Oct. 22, 1993; 
60 FR 20227, Apr. 25, 1995; 62 FR 53198, Oct. 10, 1997]



Sec. 1.313  Withdrawal from issue.

    (a) Applications may be withdrawn from issue for further action at 
the initiative of the Office or upon petition by the applicant. Any such 
petition by the applicant must include a showing of good and sufficient 
reasons why withdrawal of the application is necessary and, if the 
reason for the withdrawal is not the fault of the Office, must be 
accompanied by the fee set forth in Sec. 1.17(i). If the application is 
withdrawn from issue, a new notice of allowance will be sent if the 
application is again allowed. Any amendment accompanying a petition to 
withdraw an application from issue must comply with the requirements of 
Sec. 1.312.
    (b) When the issue fee has been paid, the application will not be 
withdrawn from issue for any reason except:
    (1) A mistake on the part of the Office;
    (2) A violation of Sec. 1.56 or illegality in the application;
    (3) Unpatentability of one or more claims;

[[Page 84]]

    (4) For interference; or
    (5) For abandonment to permit consideration of an information 
disclosure statement under Sec. 1.97 in a continuing application.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[47 FR 41280, Sept. 17, 1982, as amended at 57 FR 2035, Jan. 17, 1992; 
60 FR 20227, Apr. 25, 1995]



Sec. 1.314  Issuance of patent.

    If payment of the issue fee is timely made, the patent will issue in 
regular course unless the application is withdrawn from issue 
(Sec. 1.313), or issuance of the patent is deferred. Any petition by the 
applicant requesting a deferral of the issuance of a patent must be 
accompanied by the fee set forth in Sec. 1.17(i) and must include a 
showing of good and sufficient reasons why it is necessary to defer 
issuance of the patent.

[60 FR 20227, Apr. 25, 1995]



Sec. 1.315  Delivery of patent.

    The patent will be delivered or mailed upon issuance to the 
correspondence address of record. See Sec. 1.33(a).

[61 FR 42807, Aug. 19, 1996]



Sec. 1.316  Application abandoned for failure to pay issue fee.

    If the issue fee is not paid within three months from the date of 
the notice of allowance, the application will be regarded as abandoned. 
Such an abandoned application will not be considered as pending before 
the Patent and Trademark Office.

[62 FR 53198, Oct. 10, 1997]



Sec. 1.317  Lapsed patents; delayed payment of balance of issue fee.

    If the issue fee paid is the amount specified in the notice of 
allowance, but a higher amount is required at the time the issue fee is 
paid, any remaining balance of the issue fee is to be paid within three 
months from the date of notice thereof and, if not paid, the patent will 
lapse at the termination of the three-month period.

[62 FR 53198, Oct. 10, 1997]



Sec. 1.318  [Reserved]

                               Disclaimer



Sec. 1.321  Statutory disclaimers, including terminal disclaimers.

    (a) A patentee owning the whole or any sectional interest in a 
patent may disclaim any complete claim or claims in a patent. In like 
manner any patentee may disclaim or dedicate to the public the entire 
term, or any terminal part of the term, of the patent granted. Such 
disclaimer is binding upon the grantee and its successors or assigns. A 
notice of the disclaimer is published in the Official Gazette and 
attached to the printed copies of the specification. The disclaimer, to 
be recorded in the Patent and Trademark Office, must:
    (1) Be signed by the patentee, or an attorney or agent of record;
    (2) Identify the patent and complete claim or claims, or term being 
disclaimed. A disclaimer which is not a disclaimer of a complete claim 
or claims, or term will be refused recordation;
    (3) State the present extent of patentee's ownership interest in the 
patent; and
    (4) Be accompanied by the fee set forth in Sec. 1.20(d).
    (b) An applicant or assignee may disclaim or dedicate to the public 
the entire term, or any terminal part of the term, of a patent to be 
granted. Such terminal disclaimer is binding upon the grantee and its 
successors or assigns. The terminal disclaimer, to be recorded in the 
Patent and Trademark Office, must:
    (1) Be signed:
    (i) By the applicant, or
    (ii) If there is an assignee of record of an undivided part 
interest, by the applicant and such assignee, or
    (iii) If there is an assignee of record of the entire interest, by 
such assignee, or
    (iv) By an attorney or agent of record;
    (2) Specify the portion of the term of the patent being disclaimed;
    (3) State the present extent of applicant's or assignee's ownership 
interest in the patent to be granted; and
    (4) Be accompanied by the fee set forth in Sec. 1.20(d).

[[Page 85]]

    (c) A terminal disclaimer, when filed to obviate a judicially 
created double patenting rejection in a patent application or in a 
reexamination proceeding, must:
    (1) Comply with the provisions of paragraphs (b)(2) through (b)(4) 
of this section;
    (2) Be signed in accordance with paragraph (b)(1) of this section if 
filed in a patent application or in accordance with paragraph (a)(1) of 
this section if filed in a reexamination proceeding; and
    (3) Include a provision that any patent granted on that application 
or any patent subject to the reexamination proceeding shall be 
enforceable only for and during such period that said patent is commonly 
owned with the application or patent which formed the basis for the 
rejection.

[58 FR 54510, Oct. 22, 1993, as amended at 61 FR 42807, Aug. 19, 1996]

                     Correction of Errors in Patent



Sec. 1.322  Certificate of correction of Office mistake.

    (a) A certificate of correction under 35 U.S.C. 254 may be issued at 
the request of the patentee or the patentee's assignee. Such certificate 
will not be issued at the request or suggestion of anyone not owning an 
interest in the patent, nor on motion of the Office, without first 
notifying the patentee (including any assignee of record) and affording 
the patentee an opportunity to be heard. When the request relates to a 
patent involved in an interference, the request shall comply with the 
requirements of this section and shall be accompanied by a motion under 
Sec. 1.635.
    (b) If the nature of the mistake on the part of the Office is such 
that a certificate of correction is deemed inappropriate in form, the 
Commissioner may issue a corrected patent in lieu thereof as a more 
appropriate form for certificate of correction, without expense to the 
patentee.

(35 U.S.C. 254)

[24 FR 10332, Dec. 22, 1959, as amended at 49 FR 48454, Dec. 12, 1984]



Sec. 1.323  Certificate of correction of applicant's mistake.

    Whenever a mistake of a clerical or typographical nature or of minor 
character which was not the fault of the Office, appears in a patent and 
a showing is made that such mistake occurred in good faith, the 
Commissioner may, upon payment of the fee set forth in Sec. 1.20(a), 
issue a certificate, if the correction does not involve such changes in 
the patent as would constitute new matter or would require 
reexamination. A request for a certificate of correction of a patent 
involved in an interference shall comply with the requirements of this 
section and shall be accompanied by a motion under Sec. 1.635.

[49 FR 48454, Dec. 12, 1984]



Sec. 1.324  Correction of inventorship in patent.

    (a) Whenever through error a person is named in an issued patent as 
the inventor, or through error an inventor is not named in an issued 
patent and such error arose without any deceptive intention on his or 
her part, the Commissioner may, on petition, or on order of a court 
before which such matter is called in question, issue a certificate 
naming only the actual inventor or inventors. A petition to correct 
inventorship of a patent involved in an interference must comply with 
the requirements of this section and must be accompanied by a motion 
under Sec. 1.634.
    (b) Any petition pursuant to paragraph (a) of this section must be 
accompanied by:
    (1) A statement from each person who is being added as an inventor 
and from each person who is being deleted as an inventor that the 
inventorship error occurred without any deceptive intention on his or 
her part;
    (2) A statement from the current named inventors who have not 
submitted a statement under paragraph (b)(1) of this section either 
agreeing to the change of inventorship or stating that they have no 
disagreement in regard to the requested change;
    (3) A statement from all assignees of the parties submitting a 
statement under paragraphs (b)(1) and (b)(2) of this section agreeing to 
the change of inventorship in the patent, which

[[Page 86]]

statement must comply with the requirements of Sec. 3.73(b) of this 
chapter; and
    (4) The fee set forth in Sec. 1.20(b).

[62 FR 53199, Oct. 10, 1997]



Sec. 1.325  Other mistakes not corrected.

    Mistakes other than those provided for in Secs. 1.322, 1.323, 1.324, 
and not affording legal grounds for reissue or for reexamination, will 
not be corrected after the date of the patent.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2714, Jan. 20, 1983]

                           Arbitration Awards



Sec. 1.331-1.334  [Reserved]



Sec. 1.335  Filing of notice of arbitration awards.

    (a) Written notice of any award by an arbitrator pursuant to 35 
U.S.C. 294 must be filed in the Patent and Trademark Office by the 
patentee, or the patentee's assignee or licensee. If the award involves 
more than one patent a separate notice must be filed for placement in 
the file of each patent. The notice must set forth the patent number, 
the names of the inventor and patent owner, and the names and addresses 
of the parties to the arbitration. The notice must also include a copy 
of the award.
    (b) If an award by an arbitrator pursuant to 35 U.S.C. 294 is 
modified by a court, the party requesting the modification must file in 
the Patent and Trademark Office, a notice of the modification for 
placement in the file of each patent to which the modification applies. 
The notice must set forth the patent number, the names of the inventor 
and patent owner, and the names and addresses of the parties to the 
arbitration. The notice must also include a copy of the court's order 
modifying the award.
    (c) Any award by an arbitrator pursuant to 35 U.S.C. 294 shall be 
unenforceable until any notices required by paragraph (a) or (b) of this 
section are filed in the Patent and Trademark Office. If any required 
notice is not filed by the party designated in paragraph (a) or (b) of 
this section, any party to the arbitration proceeding may file such a 
notice.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2714, Jan. 20, 1983]

                           Amendment of Rules



Sec. 1.351  Amendments to rules will be published.

    All amendments to the regulations in this part will be published in 
the Official Gazette and in the Federal Register.



Sec. 1.352  [Reserved]

                            Maintenance Fees



Sec. 1.362  Time for payment of maintenance fees.

    (a) Maintenance fees as set forth in Secs. 1.20 (e) through (g) are 
required to be paid in all patents based on applications filed on or 
after December 12, 1980, except as noted in paragraph (b) of this 
section, to maintain a patent in force beyond 4, 8 and 12 years after 
the date of grant.
    (b) Maintenance fees are not required for any plant patents or for 
any design patents. Maintenance fees are not required for a reissue 
patent if the patent being reissued did not require maintenance fees.
    (c) The application filing dates for purposes of payment of 
maintenance fees are as follows:
    (1) For an application not claiming benefit of an earlier 
application, the actual United States filing date of the application.
    (2) For an application claiming benefit of an earlier foreign 
application under 35 U.S.C. 119, the United States filing date of the 
application.
    (3) For a continuing (continuation, division, continuation-in-part) 
application claiming the benefit of a prior patent application under 35 
U.S.C. 120, the actual United States filing date of the continuing 
application.
    (4) For a reissue application, including a continuing reissue 
application claiming the benefit of a reissue application under 35 
U.S.C. 120, United States filing date of the original non-reissue 
application on which the patent reissued is based.

[[Page 87]]

    (5) For an international application which has entered the United 
States as a Designated Office under 35 U.S.C. 371, the international 
filing date granted under Article 11(1) of the Patent Cooperation Treaty 
which is considered to be the United States filing date under 35 U.S.C. 
363.
    (d) Maintenance fees may be paid in patents without surcharge during 
the periods extending respectively from:
    (1) 3 years through 3 years and 6 months after grant for the first 
maintenance fee,
    (2) 7 years through 7 years and 6 months after grant for the second 
maintenance fee, and
    (3) 11 years through 11 years and 6 months after grant for the third 
maintenance fee.
    (e) Maintenance fees may be paid with the surcharge set forth in 
Sec. 1.20(h) during the respective grace periods after:
    (1) 3 years and 6 months and through the day of the 4th anniversary 
of the grant for the first maintenance fee.
    (2) 7 years and 6 months and through the day of the 8th anniversary 
of the grant for the second maintenance fee, and
    (3) 11 years and 6 months and through the day of the 12th 
anniversary of the grant for the third maintenance fee.
    (f) If the last day for paying a maintenance fee without surcharge 
set forth in paragraph (d) of this section, or the last day for paying a 
maintenance fee with surcharge set forth in paragraph (e) of this 
section, falls on a Saturday, Sunday, or a federal holiday within the 
District of Columbia, the maintenance fee and any necessary surcharge 
may be paid under paragraph (d) or paragraph (e) respectively on the 
next succeeding day which is not a Saturday, Sunday, or federal holiday.
    (g) Unless the maintenance fee and any applicable surcharge is paid 
within the time periods set forth in paragraphs (d), (e) or (f) of this 
section, the patent will expire as of the end of the grace period set 
forth in paragraph (e) of this section. A patent which expires for the 
failure to pay the maintenance fee will expire at the end of the same 
date (anniversary date) the patent was granted in the 4th, 8th, or 12th 
year after grant.
    (h) The periods specified in Secs. 1.362 (d) and (e) with respect to 
a reissue application, including a continuing reissue application 
thereof, are counted from the date of grant of the original non-reissue 
application on which the reissued patent is based.

[49 FR 34724, Aug. 31, 1984, as amended at 56 FR 65154, Dec. 13, 1991; 
58 FR 54511, Oct. 22, 1993]



Sec. 1.363  Fee address for maintenance fee purposes.

    (a) All notices, receipts, refunds, and other communications 
relating to payment or refund of maintenance fees will be directed to 
the correspondence address used during prosecution of the application as 
indicated in Sec. 1.33(a) unless:
    (1) A fee address for purposes of payment of maintenance fees is set 
forth when submitting the issue fee, or
    (2) A change in the correspondence address for all purposes is filed 
after payment of the issue fee, or
    (3) A fee address or a change in the ``fee address'' is filed for 
purposes of receiving notices, receipts and other correspondence 
relating to the payment of maintenance fees after the payment of the 
issue fee, in which instance, the latest such address will be used.
    (b) An assignment of a patent application or patent does not result 
in a change of the ``correspondence address'' or ``fee address'' for 
maintenance fee purposes.

[49 FR 34725, Aug. 31, 1984]



Sec. 1.366  Submission of maintenance fees.

    (a) The patentee may pay maintenance fees and any necessary 
surcharges, or any person or organization may pay maintenance fees and 
any necessary surcharges on behalf of a patentee. Authorization by the 
patentee need not be filed in the Patent and Trademark Office to pay 
maintenance fees and any necessary surcharges on behalf of the patentee.
    (b) A maintenance fee and any necessary surcharge submitted for a 
patent must be submitted in the amount due on the date the maintenance 
fee and any necessary surcharge are paid. A maintenance fee or surcharge 
may be paid in the manner set forth in Sec. 1.23 or

[[Page 88]]

by an authorization to charge a deposit account established pursuant to 
Sec. 1.25. Payment of a maintenance fee and any necessary surcharge or 
the authorization to charge a deposit account must be submitted within 
the periods set forth in Sec. 1.362 (d), (e), or (f). Any payment or 
authorization of maintenance fees and surcharges filed at any other time 
will not be accepted and will not serve as a payment of the maintenance 
fee except insofar as a delayed payment of the maintenance fee is 
accepted by the Commissioner in an expired patent pursuant to a petition 
filed under Sec. 1.378. Any authorization to charge a deposit account 
must authorize the immediate charging of the maintenance fee and any 
necessary surcharge to the deposit account. Payment of less than the 
required amount, payment in a manner other than that set forth 
Sec. 1.23, or in the filing of an authorization to charge a deposit 
account having insufficient funds will not constitute payment of a 
maintenance fee or surcharge on a patent. The procedures set forth in 
Sec. 1.8 or Sec. 1.10 may be utilized in paying maintenance fees and any 
necessary surcharges.
    (c) In submitting maintenance fees and any necessary surcharges, 
identification of the patents for which maintenance fees are being paid 
must include the following:
    (1) The patent number; and
    (2) The application number of the United States application for the 
patent on which the maintenance fee is being paid.
    (d) Payment of maintenance fees and any surcharges should identify 
the fee being paid for each patent as to whether it is the 3\1/2\-, 7\1/
2\-, or 11\1/2\-year fee, whether small entity status is being changed 
or claimed, the amount of the maintenance fee and any surcharge being 
paid, and any assigned customer number. If the maintenance fee and any 
necessary surcharge is being paid on a reissue patent, the payment must 
identify the reissue patent by reissue patent number and reissue 
application number as required by paragraph (c) of this section and 
should also include the original patent number.
    (e) Maintenance fee payments and surcharge payments relating thereto 
must be submitted separate from any other payments for fees or charges, 
whether submitted in the manner set forth in Sec. 1.23 or by an 
authorization to charge a deposit account. If maintenance fee and 
surcharge payments for more than one patent are submitted together, they 
should be submitted on as few sheets as possible with the patent numbers 
listed in increasing patent number order. If the payment submitted is 
insufficient to cover the maintenance fees and surcharges for all the 
listed patents, the payment will be applied in the order the patents are 
listed, beginning at the top of the listing.
    (f) Notification of any change in status resulting in loss of 
entitlement to small entity status must be filed in a patent prior to 
paying, or at the time of paying, the earliest maintenance fee due after 
the date on which status as a small entity is no longer appropriate. See 
Sec. 1.28(b).
    (g) Maintenance fees and surcharges relating thereto will not be 
refunded except in accordance with Secs. 1.26 and 1.28(a).

[49 FR 34725, Aug. 31, 1984, as amended at 58 FR 54503, Oct. 22, 1993; 
62 FR 53199, Oct. 10, 1997]



Sec. 1.377  Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.

    (a) Any patentee who is dissatisfied with the refusal of the Patent 
and Trademark Office to accept and record a maintenance fee which was 
filed prior to the expiration of the patent may petition the 
Commissioner to accept and record the maintenance fee.
    (b) Any petition under this section must be filed within 2 months of 
the action complained of, or within such other time as may be set in the 
action complained of, and must be accompanied by the fee set forth in 
Sec. 1.17(h). The petition may include a request that the petition fee 
be refunded if the refusal to accept and record the maintenance fee is 
determined to result from an error by the Patent and Trademark Office.
    (c) Any petition filed under this section must comply with the 
requirements of Sec. 1.181(b) and must be signed by an attorney or agent 
registered to

[[Page 89]]

practice before the Patent and Trademark Office, or by the patentee, the 
assignee, or other party in interest.

[49 FR 34725, Aug. 31, 1984, as amended at 62 FR 53199, Oct. 10, 1997]



Sec. 1.378  Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.

    (a) The Commissioner may accept the payment of any maintenance fee 
due on a patent after expiration of the patent if, upon petition, the 
delay in payment of the maintenance fee is shown to the satisfaction of 
the Commissioner to have been unavoidable (paragraph (b) of this 
section) or unintentional (paragraph (c) of this section) and if the 
surcharge required by Sec. 1.20(i) is paid as a condition of accepting 
payment of the maintenance fee. If the Commissioner accepts payment of 
the maintenance fee upon petition, the patent shall be considered as not 
having expired, but will be subject to the conditions set forth in 35 
U.S.C. 41(c)(2).
    (b) Any petition to accept an unavoidably delayed payment of a 
maintenance fee filed under paragraph (a) of this section must include:
    (1) The required maintenance fee set forth in Sec. 1.20 (e) through 
(g);
    (2) The surcharge set forth in Sec. 1.20(i)(1); and
    (3) A showing that the delay was unavoidable since reasonable care 
was taken to ensure that the maintenance fee would be paid timely and 
that the petition was filed promptly after the patentee was notified of, 
or otherwise became aware of, the expiration of the patent. The showing 
must enumerate the steps taken to ensure timely payment of the 
maintenance fee, the date and the manner in which patentee became aware 
of the expiration of the patent, and the steps taken to file the 
petition promptly.
    (c) Any petition to accept an unintentionally delayed payment of a 
maintenance fee filed under paragraph (a) of this section must be filed 
within twenty-four months after the six-month grace period provided in 
Sec. 1.362(e) and must include:
    (1) The required maintenance fee set forth in Sec. 1.20 (e) through 
(g);
    (2) The surcharge set forth in Sec. 1.20(i)(2); and
    (3) A statement that the delay in payment of the maintenance fee was 
unintentional.
    (d) Any petition under this section must be signed by an attorney or 
agent registered to practice before the Patent and Trademark Office, or 
by the patentee, the assignee, or other party in interest.
    (e) Reconsideration of a decision refusing to accept a maintenance 
fee upon petition filed pursuant to paragraph (a) of this section may be 
obtained by filing a petition for reconsideration within two months of, 
or such other time as set in, the decision refusing to accept the 
delayed payment of the maintenance fee. Any such petition for 
reconsideration must be accompanied by the petition fee set forth in 
Sec. 1.17(h). After decision on the petition for reconsideration, no 
further reconsideration or review of the matter will be undertaken by 
the Commissioner. If the delayed payment of the maintenance fee is not 
accepted, the maintenance fee and the surcharge set forth in 
Sec. 1.20(i) will be refunded following the decision on the petition for 
reconsideration, or after the expiration of the time for filing such a 
petition for reconsideration, if none is filed. Any petition fee under 
this section will not be refunded unless the refusal to accept and 
record the maintenance fee is determined to result from an error by the 
Patent and Trademark Office.

[49 FR 34726, Aug. 31, 1984, as amended at 50 FR 9383, Mar. 7, 1985; 58 
FR 44282, Aug. 20, 1993; 62 FR 53199, Oct. 10, 1997]



             Subpart C--International Processing Provisions

    Authority: Pub. L. 94-131, 89 Stat. 685; Pub. L. 99-616, 35 U.S.C. 
351 through 376.

    Source: 43 FR 20466, May 11, 1978, unless otherwise noted.

                           General Information



Sec. 1.401  Definitions of terms under the Patent Cooperation Treaty.

    (a) The abbreviation PCT and the term Treaty mean the Patent 
Cooperation Treaty.
    (b) International Bureau means the World Intellectual Property 
Organization located in Geneva, Switzerland.

[[Page 90]]

    (c) Administrative Instructions means that body of instructions for 
operating under the Patent Cooperation Treaty referred to in PCT Rule 
89.
    (d) Request, when capitalized, means that element of the 
international application described in PCT Rules 3 and 4.
    (e) International application, as used in this subchapter is defined 
in Sec. 1.9(b).
    (f) Priority date for the purpose of computing time limits under the 
Patent Cooperation Treaty is defined in PCT Art. 2 (xi). Note also 
Sec. 1.465.
    (g) Demand, when capitalized, means that document filed with the 
International Preliminary Examining Authority which requests an 
international preliminary examination.
    (h) Annexes means amendments made to the claims, description or the 
drawings before the International Preliminary Examining Authority.
    (i) Other terms and expressions in this subpart C not defined in 
this section are to be taken in the sense indicated in PCT Art. 2 and 35 
U.S.C. 351.

[43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987]



Sec. 1.412  The United States Receiving Office.

    (a) The United States Patent and Trademark Office is a Receiving 
Office only for applicants who are residents or nationals of the United 
States of America.
    (b) The Patent and Trademark Office, when acting as a Receiving 
Office, will be identified by the full title ``United States Receiving 
Office'' or by the abbreviation ``RO/US.''
    (c) The major functions of the Receiving Office include:
    (1) According of international filing dates to international 
applications meeting the requirements of PCT Art. 11(1), and PCT Rule 
20;
    (2) Assuring that international applications meet the standards for 
format and content of PCT Art. 14(1), PCT Rule 9, 26, 29.1, 37, 38, 91, 
and portions of PCT Rules 3 through 11;
    (3) Collecting and, when required, transmitting fees due for 
processing international applications (PCT Rule 14, 15, 16);
    (4) Transmitting the record and search copies to the International 
Bureau and International Searching Authority, respectively (PCT Rules 22 
and 23); and
    (5) Determining compliance with applicable requirements of part 5 of 
this chapter.
    (6) Reviewing and, unless prescriptions concerning national security 
prevent the application from being so transmitted (PCT Rule 19.4), 
transmitting the international application to the International Bureau 
for processing in its capacity as a Receiving Office:
    (i) Where the United States Receiving Office is not the competent 
Receiving Office under PCT Rule 19.1 or 19.2 and Sec. 1.421(a); or
    (ii) Where the international application is not in English but is in 
a language accepted under PCT Rule 12.1(a) by the International Bureau 
as a Receiving Office; or
    (iii) Where there is agreement and authorization in accordance with 
PCT Rule 19.4(a)(iii).

[43 FR 20466, May 11, 1978, as amended at 60 FR 21439, May 2, 1995; 63 
FR 29617, June 1, 1998]



Sec. 1.413  The United States International Searching Authority.

    (a) Pursuant to appointment by the Assembly, the United States 
Patent and Trademark Office will act as an International Searching 
Authority for international applications filed in the United States 
Receiving Office and in other Receiving Offices as may be agreed upon by 
the Commissioner, in accordance with agreement between the Patent and 
Trademark Office and the International Bureau (PCT Art. 16(3)(b)).
    (b) The Patent and Trademark Office, when acting as an International 
Searching Authority, will be identified by the full title ``United 
States International Searching Authority'' or by the abbreviation ``ISA/
US.''
    (c) The major functions of the International Searching Authority 
include:
    (1) Approving or establishing the title and abstract;
    (2) Considering the matter of unity of invention;
    (3) Conducting international and international-type searches and 
preparing international and international-

[[Page 91]]

type search reports (PCT Art. 15, 17 and 18, and PCT Rules 25, 33 to 45 
and 47); and
    (4) Transmitting the international search report to the applicant 
and the International Bureau.



Sec. 1.414  The United States Patent and Trademark Office as a Designated Office or Elected Office.

    (a) The United States Patent and Trademark Office will act as a 
Designated Office or Elected Office for international applications in 
which the United States of America has been designated or elected as a 
State in which patent protection is desired.
    (b) The United States Patent and Trademark Office, when acting as a 
Designated Office or Elected Office during international processing will 
be identified by the full title ``United States Designated Office'' or 
by the abbreviation ``DO/US'' or by the full title ``United States 
Elected Office'' or by the abbreviation ``EO/US''.
    (c) The major functions of the United States Designated Office or 
Elected Office in respect to international applications in which the 
United States of America has been designated or elected, include:
    (1) Receiving various notifications throughout the international 
stage and
    (2) Accepting for national stage examination international 
applications which satisfy the requirements of 35 U.S.C. 371.

[52 FR 20047, May 28, 1987]



Sec. 1.415  The International Bureau.

    (a) The International Bureau is the World Intellectual Property 
Organization located at Geneva, Switzerland. It is the international 
intergovernmental organization which acts as the coordinating body under 
the Treaty and the Regulations (PCT Art. 2 (xix) and 35 U.S.C. 351 (h)).
    (b) The major functions of the International Bureau include:
    (1) Publishing of international applications and the International 
Gazette;
    (2) Transmitting copies of international applications to Designated 
Offices;
    (3) Storing and maintaining record copies; and
    (4) Transmitting information to authorities pertinent to the 
processing of specific international applications.



Sec. 1.416  The United States International Preliminary Examining Authority.

    (a) Pursuant to appointment by the Assembly, the United States 
Patent and Trademark Office will act as an International Preliminary 
Examining Authority for international applications filed in the United 
States Receiving Office and in other Receiving Offices as may be agreed 
upon by the Commissioner, in accordance with agreement between the 
Patent and Trademark Office and the International Bureau.
    (b) The United States Patent and Trademark Office, when acting as an 
International Preliminary Examining Authority, will be identified by the 
full title ``United States International Preliminary Examining 
Authority'' or by the abbreviation ``IPEA/US.''
    (c) The major functions of the International Preliminary Examining 
Authority include:
    (1) Receiving and checking for defects in the Demand;
    (2) Forwarding Demands in accordance with PCT Rule 59.3;
    (3) Collecting the handling fee for the International Bureau and the 
preliminary examination fee for the United States International 
Preliminary Examining Authority;
    (4) Informing applicant of receipt of the Demand;
    (5) Considering the matter of unity of invention;
    (6) Providing an international preliminary examination report which 
is a non-binding opinion on the questions of whether the claimed 
invention appears: to be novel, to involve an inventive step (to be 
nonobvious), and to be industrially applicable; and
    (7) Transmitting the international preliminary examination report to 
applicant and the International Bureau.

[52 FR 20047, May 28, 1987, as amended at 63 FR 29617, June 1, 1998]



Sec. 1.419  Display of currently valid control number under the Paperwork Reduction Act.

    (a) Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 
et

[[Page 92]]

seq.), the collection of information in this subpart has been reviewed 
and approved by the Office of Management and Budget under control number 
0651-0021.
    (b) Notwithstanding any other provision of law, no person is 
required to respond to nor shall a person be subject to a penalty for 
failure to comply with a collection of information subject to the 
requirements of the Paperwork Reduction Act unless that collection of 
information displays a currently valid Office of Management and Budget 
control number. This section constitutes the display required by 44 
U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of 
information under Office of Management and Budget control number 0651-
0021 (see 5 CFR 1320.5(b)(2)(ii)(D)).

[63 FR 29617, June 1, 1998]

                Who May File an International Application



Sec. 1.421  Applicant for international application.

    (a) Only residents or nationals of the United States of America may 
file international applications in the United States Receiving Office. 
If an international application does not include an applicant who is 
indicated as being a resident or national of the United States of 
America, and at least one applicant:
    (1) Has indicated a residence or nationality in a PCT Contracting 
State, or
    (2) Has no residence or nationality indicated; applicant will be so 
notified and, if the international application includes a fee amount 
equivalent to that required by Sec. 1.445(a)(5), the international 
application will be forwarded for processing to the International Bureau 
acting as a Receiving Office. (See also Sec. 1.412(c)(6).)
    (b) Although the United States Receiving Office will accept 
international applications filed by any resident or national of the 
United States of America for international processing, an international 
application designating the United States of America will be accepted by 
the Patent and Trademark Office for the national stage only if filed by 
the inventor or as provided in Sec. 1.422, 1.423 or Sec. 1.425.
    (c) International applications which do not designate the United 
States of America may be filed by the assignee or owner.
    (d) The attorney or agent of the applicant may sign the 
international application Request and file the international application 
for the applicant if the international application when filed is 
accompanied by a separate power of attorney to that attorney or agent 
from the applicant. The separate power of attorney from the applicant 
may be submitted after filing if sufficient cause is shown for not 
submitting it at the time of filing. Note that paragraph (b) of this 
section requires that the applicant be the inventor if the United States 
of America is designated.
    (e) Any indication of different applicants for the purpose of 
different Designated Offices must be shown on the Request portion of the 
international application.
    (f) Changes in the person, name, or address of the applicant of an 
international application shall be made in accordance with PCT Rule 
92bis.
    (g) The wording of PCT Rule 92bis is as follows:

    PCT Rule 92bis--Recording of Changes in Certain Indications in the 
Request or the Demand

         92bis Recording of Changes by the International Bureau

    (a) The International Bureau shall, on the request of the applicant 
or the receiving Office, record changes in the following indications 
appearing in the request or demand:
    (i) Person name, residence, nationality or address of the applicant,
    (ii) Person, name or address of the agent, the common representative 
or the inventor.
    (b) The International Bureau shall not record the requested change 
if the request for recording is received by it after the expiration:
    (i) Of the time limit referred to in Article 22(1), where Article 
39(1) is not applicable with respect to any Contracting State;
    (ii) Of the time limit referred to in Article 39(1)(a), where 
Article 39(1) is applicable with respect to at least one Contracting 
State.

[43 FR 20466, May 11, 1978, as amended at 53 FR 47810, Nov. 28, 1988; 60 
FR 21440, May 2, 1995]

[[Page 93]]



Sec. 1.422  When the inventor is dead.

    In case of the death of the inventor, the legal representative 
(executor, administrator, etc.) of the deceased inventor may file an 
international application which designates the United States of America.



Sec. 1.423  When the inventor is insane or legally incapacitated.

    In case an inventor is insane or otherwise legally incapacitated, 
the legal representative (guardian, conservator, etc.) of such inventor 
may file an international application which designates the United States 
of America.



Sec. 1.424  Joint inventors.

    Joint inventors must jointly file an international application which 
designates the United States of America; the signature of either of them 
alone, or less than the entire number will be insufficient for an 
invention invented by them jointly, except as provided in Sec. 1.425.



Sec. 1.425  Filing by other than inventor.

    Where an international application which designates the United 
States of America is filed and where one or more inventors refuse to 
sign the Request for the international application or cannot be found or 
reached after diligent effort, the Request need not be signed by such 
inventor if it is signed by another applicant. Such international 
application must be accompanied by a statement explaining to the 
satisfaction of the Commissioner the lack of the signature concerned.

[62 FR 53199, Oct. 10, 1997]

                      The International Application



Sec. 1.431  International application requirements.

    (a) An international application shall contain, as specified in the 
Treaty and the Regulations, a Request, a description, one or more 
claims, an abstract, and one or more drawings (where required). (PCT 
Art. 3(2) and section 207 of the Administrative Instructions.)
    (b) An international filing date will be accorded by the United 
States Receiving Office, at the time to receipt of the international 
application, provided that:
    (1) At least one applicant (Sec. 1.421) is a United States resident 
or national and the papers filed at the time of receipt of the 
international application so indicate (35 U.S.C. 361(a), PCT Art. 
11(1)(i)).
    (2) The international application is in the English language (35 
U.S.C. 361(c), PCT Art. 11(1)(ii)).
    (3) The international application contains at least the following 
elements (PCT Art. 11(1)(iii)):
    (i) An indication that it is intended as an international 
application (PCT Rule 4.2);
    (ii) The designation of at least one Contracting State of the 
International Patent Cooperation Union (Sec. 1.432);
    (iii) The name of the applicant, as perscribed (note Secs. 1.421-
1.424);
    (iv) A part which on the face of it appears to be a description; and
    (v) A part which on the face of it appears to be a claim.
    (c) Payment of the basic portion of the international fee (PCT Rule 
15.2) and the transmittal and search fees (Sec. 1.445) may be made in 
full at the time the international application papers required by 
paragraph (b) of this section are deposited or within one month 
thereafter. The basic, transmittal, and search fee payable is the basic, 
transmittal, and search fee in effect on the receipt date of the 
international application.
    (1) If the basic, transmittal and search fees are not paid within 
one month from the date of receipt of the international application and 
prior to the sending of a notice of deficiency, applicant will be 
notified and given one month within which to pay the deficient fees plus 
a late payment fee equal to the greater of:
    (i) Fifty percent of the amount of the deficient fees up to a 
maximum amount equal to the basic fee; or
    (ii) An amount equal to the transmittal fee (PCT Rule 16bis).
    (2) The one-month time limit set pursuant to this paragraph to pay 
deficient fees may not be extended.
    (d) If the payment needed to cover the transmittal fee, the basic 
fee, the search fee, one designation fee and the

[[Page 94]]

late payment fee pursuant to paragraph (c) of this section is not timely 
made in accordance with PCT Rule 16bis.1(e), the Receiving Office will 
declare the international application withdrawn under PCT Article 
14(3)(a).

[43 FR 20466, May 11, 1978, as amended at 50 FR 9383, Mar. 7, 1985; 52 
FR 20047, May 28, 1987; 58 FR 4344, Jan. 14, 1993; 63 FR 29618, June 1, 
1998]



Sec. 1.432  Designation of States and payment of designation and confirmation fees.

    (a) The designation of States including an indication that applicant 
wishes to obtain a regional patent, where applicable, shall appear in 
the Request upon filing and must be indicated as set forth in PCT Rule 
4.9 and section 115 of the Administrative Instructions. Applicant must 
specify at least one national or regional designation on filing of the 
international application for a filing date to be granted.
    (b) If the fees necessary to cover all the national and regional 
designations specified in the Request are not paid by the applicant 
within one year from the priority date or within one month from the date 
of receipt of the international application if that month expires after 
the expiration of one year from the priority date, applicant will be 
notified and given one month within which to pay the deficient 
designation fees plus a late payment fee. The late payment fee shall be 
equal to the greater of fifty percent of the amount of the deficient 
fees up to a maximum amount equal to the basic fee, or an amount equal 
to the transmittal fee (PCT Rule 16bis). The one-month time limit set in 
the notification of deficient designation fees may not be extended. 
Failure to timely pay at least one designation fee will result in the 
withdrawal of the international application.
    (1) The one designation fee must be paid:
    (i) Within one year from the priority date;
    (ii) Within one month from the date of receipt of the international 
application if that month expires after the expiration of one year from 
the priority date; or
    (iii) With the late payment fee defined in this paragraph within the 
time set in the notification of the deficient designation fees or in 
accordance with PCT Rule 16bis.1(e).
    (2) If after a notification of deficient designation fees the 
applicant makes timely payment, but the amount paid is not sufficient to 
cover the late payment fee and all designation fees, the Receiving 
Office will, after allocating payment for the basic, search, transmittal 
and late payment fees, allocate the amount paid in accordance with PCT 
Rule 16bis.1(c) and withdraw the unpaid designations. The notification 
of deficient designation fees pursuant to this paragraph may be made 
simultaneously with any notification pursuant to Sec. 1.431(c).
    (c) The amount payable for the designation fee set forth in 
paragraph (b) is:
    (1) The designation fee in effect on the filing date of the 
international application, if such fee is paid in full within one month 
from the date of receipt of the international application;
    (2) The designation fee in effect on the date such fee is paid in 
full, if such fee is paid in full later than one month from the date of 
receipt of the international application but within one year from the 
priority date;
    (3) The designation fee in effect on the date one year from the 
priority date, if the fee was due one year from the priority date, and 
such fee is paid in full later than one month from the date of receipt 
of the international application and later than one year from the 
priority date; or
    (4) The designation fee in effect on the international filing date, 
if the fee was due one month from the international filing date and 
after one year from the priority date, and such fee is paid in full 
later than one month from the date of receipt of the international 
application and later than one year from the priority date.
    (d) On filing the international application, in addition to 
specifying at least one national or regional designation under PCT Rule 
4.9(a), applicant may also indicate under PCT Rule 4.9(b) that all other 
designations permitted under the Treaty are made.
    (1) Indication of other designations permitted by the Treaty under 
PCT

[[Page 95]]

Rule 4.9(b) must be made in a statement on the Request that any 
designation made under this paragraph is subject to confirmation (PCT 
Rule 4.9(c)) not later than the expiration of 15 months from the 
priority date by:
    (i) Filing a written notice with the United States Receiving Office 
specifying the national and/or regional designations being confirmed;
    (ii) Paying the designation fee for each designation being 
confirmed; and
    (iii) Paying the confirmation fee specified in Sec. 1.445(a)(4).
    (2) Unconfirmed designations will be considered withdrawn. If the 
amount submitted is not sufficient to cover the designation fee and the 
confirmation fee for each designation being confirmed, the Receiving 
Office will allocate the amount paid in accordance with any priority of 
designations specified by applicant. If applicant does not specify any 
priority of designations, the allocation of the amount paid will be made 
in accordance with PCT Rule 16bis.1(c).

[58 FR 4344, Jan. 14, 1993, as amended at 63 FR 29618, June 1, 1998]



Sec. 1.433  Physical requirements of international application.

    (a) The international application and each of the documents that may 
be referred to in the check list of the Request (PCT Rule 3.3(a)(ii)) 
shall be filed in one copy only.
    (b) All sheets of the international application must be on A4 size 
paper (21.0 x 29.7 cm.).
    (c) Other physical requirements for international applications are 
set forth in PCT Rule 11 and sections 201-207 of the Administrative 
Instructions.



Sec. 1.434  The request.

    (a) The request shall be made on a standardized form (PCT Rules 3 
and 4). Copies of printed Request forms are available from the Patent 
and Trademark Office. Letters requesting printed forms should be marked 
``Box PCT.''
    (b) The Check List portion of the Request form should indicate each 
document accompanying the international application on filing.
    (c) All information, for example, addresses, names of States and 
dates, shall be indicated in the Request as required by PCT Rule 4 and 
Administrative Instructions 110 and 201.
    (d) International applications which designate the United States of 
America shall include:
    (1) The name, address and signature of the inventor, except as 
provided by Secs. 1.421(d), 1.422, 1.423 and 1.425;
    (2) A reference to any copending national application or 
international application designating the United States of America, if 
the benefit of the filing date for the prior copending application is to 
be claimed.

[43 FR 20466, May 11, 1978, as amended at 58 FR 4345, Jan. 14, 1993]



Sec. 1.435  The description.

    (a) The application must meet the requirements as to the content and 
form of the description set forth in PCT Rules 5, 9, 10, and 11 and 
sections 204 and 208 of the Administrative Instructions.
    (b) In international applications designating the United States the 
description must contain upon filing an indication of the best mode 
contemplated by the inventor for carrying out the claimed invention.

[43 FR 20466, May 11, 1978, as amended at 63 FR 29618, June 1, 1998]



Sec. 1.436  The claims.

    The requirements as to the content and format of claims are set 
forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered 
to. The number of the claims shall be reasonable, considering the nature 
of the invention claimed.



Sec. 1.437  The drawings.

    (a) Subject to paragraph (b) of this section, when drawings are 
necessary for the understanding of the invention, or are mentioned in 
the description, they must be part of an international application as 
originally filed in the United States Receiving Office in order to 
maintain the international filing date during the national stage (PCT 
Art. 7).
    (b) Drawings missing from the application upon filing will be 
accepted if such drawings are received within 30 days of the date of 
first receipt of the

[[Page 96]]

incomplete papers. If the missing drawings are received within the 30-
day period, the international filing date shall be the date on which 
such drawings are received. If such drawings are not timely received, 
all references to drawings in the international application shall be 
considered non-existent (PCT Art. 14(2), Administrative Instruction 
310).
    (c) The physical requirements for drawings are set forth in PCT Rule 
11 and shall be adhered to.



Sec. 1.438  The abstract.

    (a) Requirements as to the content and form of the abstract are set 
forth in PCT Rule 8, and shall be adhered to.
    (b) Lack of an abstract upon filing of an international application 
will not affect the granting of a filing date. However, failure to 
furnish an abstract within one month from the date of the notification 
by the Receiving Office will result in the international appplication 
being declared withdrawn.

                                  Fees



Sec. 1.445  International application filing, processing and search fees.

    (a) The following fees and charges for international applications 
are established by the Commissioner under the authority of 35 U.S.C. 
376:
    (1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14)--
$240.00
    (2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
    (i) Where a corresponding prior United States National application 
filed under 35 U.S.C. 111(a) with the filing fee under Sec. 1.16(a) has 
been filed-- 450.00
    (ii) For all situations not provided for in paragraph (a)(2)(i) of 
this section--700.00
    (3) A supplemental search fee when required, per additional 
invention--210.00
    (4) A confirmation fee (PCT Rule 96) equal to fifty percent of the 
sum of designation fees for the national and regional designations being 
confirmed (Sec. 1.432(d)).
    (5) A fee equivalent to the transmittal fee in paragraph (a)(1) of 
this section for transmittal of an international application to the 
International Bureau for processing in its capacity as a Receiving 
Office (PCT Rule 19.4).
    (b) The basic fee and designation fee portions of the international 
fee shall be prescribed in PCT Rule 15.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987; 54 
FR 9432, Mar. 7, 1989; 60 FR 41023, Aug. 11, 1995; 61 FR 39588, July 30, 
1996; 63 FR 29619, June 1, 1998]



Sec. 1.446  Refund of international application filing and processing fees.

    (a) Money paid for international application fees, where paid by 
actual mistake or in excess, such as a payment not required by law or 
Treaty and its Regulations, will be refunded.
    (b) [Reserved]
    (c) Refund of the supplemental search fees will be made if such 
refund is determined to be warranted by the Commissioner or the 
Commissioner's designee acting under PCT Rule 40.2(c).
    (d) The international and search fees will be refunded if no 
international filing date is accorded or if the application is withdrawn 
before transmittal of the record copy to the International Bureau (PCT 
Rules 15.6 and 16.2). The search fee will be refunded if the application 
is withdrawn before transmittal of the search copy to the International 
Searching Authority. The transmittal fee will not be refunded.
    (e) The handling fee (Sec. 1.482(b)) will be refunded (PCT Rule 
57.6) only if:
    (1) The Demand is withdrawn before the Demand has been sent by the 
International Preliminary Examining Authority to the International 
Bureau, or
    (2) The Demand is considered not to have been submitted (PCT Rule 
54.4(a)).

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 
FR 31826, Aug. 6, 1985; 58 FR 4345, Jan. 14, 1993]

                                Priority



Sec. 1.451  The priority claim and priority document in an international application.

    (a) The claim for priority must, subject to paragraph (d) of this 
section, be made on the Request (PCT Rule 4.10) in a manner complying 
with sections 110 and 115 of the Administrative Instructions.

[[Page 97]]

    (b) Whenever the priority of an earlier United States national 
application is claimed in an international application, the applicant 
may request in a letter of transmittal accompanying the international 
application upon filing with the United States Receiving Office or in a 
separate letter filed in the Receiving Office not later than 16 months 
after the priority date, that the Patent and Trademark Office prepare a 
certified copy of the national application for transmittal to the 
International Bureau (PCT Article 8 and PCT Rule 17). The fee for 
preparing a certified copy is stated in Sec. 1.19 (b)(1).
    (c) If a certified copy of the priority document is not submitted 
together with the international application on filing, or, if the 
priority application was filed in the United States and a request and 
appropriate payment for preparation of such a certified copy do not 
accompany the international application on filing or are not filed 
within 16 months of the priority date, the certified copy of the 
priority document must be furnished by the applicant to the 
International Bureau or to the United States Receiving Office within the 
time limit specified in PCT Rule 17.1(a).
    (d) The applicant may correct or add a priority claim in accordance 
with PCT Rule 26bis.1.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 
FR 11366, Mar. 21, 1985; 54 FR 6903, Feb. 15, 1989; 58 FR 4345, Jan. 14, 
1993; 63 FR 29619, June 1, 1998]

                             Representation



Sec. 1.455  Representation in international applications.

    (a) Applicants of international applications may be represented by 
attorneys or agents registered to practice before the Patent and 
Trademark Office or by an applicant appointed as a common representative 
(PCT Art. 49, Rules 4.8 and 90 and Sec. 10.10). If applicants have not 
appointed an attorney or agent or one of the applicants to represent 
them, and there is more than one applicant, the applicant first named in 
the request and who is entitled to file in the U.S. Receiving Office 
shall be considered to be the common representative of all the 
applicants. An attorney or agent having the right to practice before a 
national office with which an international application is filed and for 
which the United States is an International Searching Authority or 
International Preliminary Examining Authority may be appointed to 
represent the applicants in the international application before that 
authority. An attorney or agent may appoint an associate attorney or 
agent who shall also then be of record (PCT Rule 90.1(d)). The 
appointment of an attorney or agent, or of a common representative, 
revokes any earlier appointment unless otherwise indicated (PCT Rule 
90.6 (b) and (c)).
    (b) Appointment of an agent, attorney or common representative (PCT 
Rule 4.8) must be effected either in the Request form, signed by all 
applicants, or in a separate power of attorney submitted either to the 
United States Receiving Office or to the International Bureau.
    (c) Powers of attorney and revocations thereof should be submitted 
to the United States Receiving Office until the issuance of the 
international search report.
    (d) The addressee for correspondence will be as indicated in section 
108 of the Administrative Instructions.

[43 FR 20466, May 11, 1978, as amended at 50 FR 5171, Feb. 6, 1985; 58 
FR 4345, Jan. 14, 1993]

                       Transmittal of Record Copy



Sec. 1.461  Procedures for transmittal of record copy to the International Bureau.

    (a) Transmittal of the record copy of the international application 
to the International Bureau shall be made by the United States Receiving 
Office or as provided by PCT Rule 19.4.
    (b) [Reserved]
    (c) No copy of an international application may be transmitted to 
the International Bureau, a foreign Designated Office, or other foreign 
authority by the United States Receiving Office or the applicant, unless 
the applicable requirements of part 5 of this chapter have been 
satisfied.

[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 63 
FR 29619, June 1, 1998]

[[Page 98]]

                                 Timing



Sec. 1.465  Timing of application processing based on the priority date.

    (a) For the purpose of computing time limits under the Treaty, the 
priority date shall be defined as in PCT Art. 2(xi).
    (b) When a claimed priority date is corrected or added under PCT 
Rule 26bis.1(a), or withdrawn under PCT Rule 90bis.3, or considered not 
to have been made under PCT Rule 26bis.2, the priority date for the 
purposes of computing any non-expired time limits will be the date of 
the earliest valid remaining priority claim of the international 
application, or if none, the international filing date.
    (c) When corrections under PCT Art. 11(2), Art. 14(2) or PCT Rule 
20.2(a) (i) or (iii) are timely submitted, and the date of receipt of 
such corrections falls later than one year from the claimed priority 
date or dates, the Receiving Office shall proceed under PCT Rule 
26bis.2.

[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998]



Sec. 1.468  Delays in meeting time limits.

    Delays in meeting time limits during international processing of 
international applications may only be excused as provided in PCT Rule 
82. For delays in meeting time limits in a national application, see 
Sec. 1.137.

                               Amendments



Sec. 1.471  Corrections and amendments during international processing.

    (a) Except as otherwise provided in this paragraph, all corrections 
submitted to the United States Receiving Office or United States 
International Searching Authority must be in English, in the form of 
replacement sheets in compliance with PCT Rules 10 and 11, and 
accompanied by a letter that draws attention to the differences between 
the replaced sheets and the replacement sheets. Replacement sheets are 
not required for the deletion of lines of text, the correction of simple 
typographical errors, and one addition or change of not more than five 
words per sheet. These changes may be stated in a letter and, if 
appropriate, the United States Receiving Office will make the deletion 
or transfer the correction to the international application, provided 
that such corrections do not adversely affect the clarity and direct 
reproducibility of the application (PCT Rule 26.4). Amendments that do 
not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.
    (b) Amendments of claims submitted to the International Bureau shall 
be as prescribed by PCT Rule 46.

[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998]



Sec. 1.472  Changes in person, name, or address of applicants and inventors.

    All requests for a change in person, name or address of applicants 
and inventor be sent to the United States Receiving Office until the 
time of issuance of the international search report. Thereafter requests 
for such changes should be submitted to the International Bureau.

[43 FR 20466, May 11, 1978. Redesignated at 52 FR 20047, May 28, 1987]

                           Unity of Invention



Sec. 1.475  Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.

    (a) An international and a national stage application shall relate 
to one invention only or to a group of inventions so linked as to form a 
single general inventive concept (``requirement of unity of 
invention''). Where a group of inventions is claimed in an application, 
the requirement of unity of invention shall be fulfilled only when there 
is a technical relationship among those inventions involving one or more 
of the same or corresponding special technical features. The expression 
``special technical features'' shall mean those technical features that 
define a contribution which each of the claimed inventions, considered 
as a whole, makes over the prior art.
    (b) An international or a national stage application containing 
claims to different categories of invention will be considered to have 
unity of invention if

[[Page 99]]

the claims are drawn only to one of the following combinations of 
categories:
    (1) A product and a process specially adapted for the manufacture of 
said product; or
    (2) A product and a process of use of said product; or
    (3) A product, a process specially adapted for the manufacture of 
the said product, and a use of the said product; or
    (4) A process and an apparatus or means specifically designed for 
carrying out the said process; or
    (5) A product, a process specially adapted for the manufacture of 
the said product, and an apparatus or means specifically designed for 
carrying out the said process.
    (c) If an application contains claims to more or less than one of 
the combinations of categories of invention set forth in paragraph (b) 
of this section, unity of invention might not be present.
    (d) If multiple products, processes of manufacture or uses are 
claimed, the first invention of the category first mentioned in the 
claims of the application and the first recited invention of each of the 
other categories related thereto will be considered as the main 
invention in the claims, see PCT Article 17(3)(a) and Sec. 1.476(c).
    (e) The determination whether a group of inventions is so linked as 
to form a single general inventive concept shall be made without regard 
to whether the inventions are claimed in separate claims or as 
alternatives within a single claim.

[58 FR 4345, Jan. 14, 1993]



Sec. 1.476  Determination of unity of invention before the International Searching Authority.

    (a) Before establishing the international search report, the 
International Searching Authority will determine whether the 
international application complies with the requirement of unity of 
invention as set forth in Sec. 1.475.
    (b) If the International Searching Authority considers that the 
international application does not comply with the requirement of unity 
of invention, it shall inform the applicant accordingly and invite the 
payment of additional fees (note Sec. 1.445 and PCT Art. 17(3)(a) and 
PCT Rule 40). The applicant will be given a time period in accordance 
with PCT Rule 40.3 to pay the additional fees due.
    (c) In the case of non-compliance with unity of invention and where 
no additional fees are paid, the international search will be performed 
on the invention first mentioned (``main invention'') in the claims.
    (d) Lack of unity of invention may be directly evident before 
considering the claims in relation to any prior art, or after taking the 
prior art into consideration, as where a document discovered during the 
search shows the invention claimed in a generic or linking claim lacks 
novelty or is clearly obvious, leaving two or more claims joined thereby 
without a common inventive concept. In such a case the International 
Searching Authority may raise the objection of lack of unity of 
invention.

[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May 
28, 1987; 58 FR 4346, Jan. 14, 1993]



Sec. 1.477  Protest to lack of unity of invention before the International Searching Authority.

    (a) If the applicant disagrees with the holding of lack of unity of 
invention by the International Searching Authority, additional fees may 
be paid under protest, accompanied by a request for refund and a 
statement setting forth reasons for disagreement or why the required 
additional fees are considered excessive, or both (PCT Rule 40.2(c)).
    (b) Protest under paragraph (a) of this section will be examined by 
the Commissioner or the Commissioner's designee. In the event that the 
applicant's protest is determined to be justified, the additional fees 
or a portion thereof will be refunded.
    (c) An applicant who desires that a copy of the protest and the 
decision thereon accompany the international search report when 
forwarded to the Designated Offices, may notify the International 
Searching Authority to that effect any time prior to the issuance of the 
international search report. Thereafter, such notification

[[Page 100]]

should be directed to the International Bureau (PCT Rule 40.2(c)).

[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May 
28, 1987]

                  International Preliminary Examination



Sec. 1.480  Demand for international preliminary examination.

    (a) On the filing of a proper Demand in an application for which the 
United States International Preliminary Examining Authority is competent 
and for which the fees have been paid, the international application 
shall be the subject of an international preliminary examination. The 
preliminary examination fee (Sec. 1.482(a)(1)) and the handling fee 
(Sec. 1.482(b)) shall be due at the time of filing the Demand.
    (b) The Demand shall be made on a standardized form. Copies of 
printed Demand forms are available from the Patent and Trademark Office. 
Letters requesting printed Demand forms should be marked ``Box PCT''.
    (c) If the Demand is made prior to the expiration of the 19th month 
from the priority date and the United States of America is elected, the 
provisions of Sec. 1.495 shall apply rather than Sec. 1.494.
    (d) Withdrawal of a proper Demand prior to the start of the 
international preliminary examination will entitle applicant to a refund 
of the preliminary examination fee minus the amount of the transmittal 
fee set forth in Sec. 1.445(a)(1).

[52 FR 20048, May 28, 1987, as amended at 53 FR 47810, Nov. 28, 1988; 58 
FR 4346, Jan. 14, 1993; 63 FR 29619, June 1, 1998]



Sec. 1.481  Payment of international preliminary examination fees.

    (a) The handling and preliminary examination fees shall be paid 
within the time period set in PCT Rule 57.3. The handling fee or 
preliminary examination fee payable is the handling fee or preliminary 
examination fee in effect on the date of receipt of the Demand except 
under PCT Rule 59.3(a) where the fee payable is the fee in effect on the 
date of arrival of the Demand at the United States International 
Preliminary Examining Authority.
    (1) If the handling and preliminary fees are not paid within the 
time period set in PCT Rule 57.3, applicant will be notified and given 
one month within which to pay the deficient fees plus a late payment fee 
equal to the greater of:
    (i) Fifty percent of the amount of the deficient fees, but not 
exceeding an amount equal to double the handling fee; or
    (ii) An amount equal to the handling fee (PCT Rule 58bis.2).
    (2) The one-month time limit set in this paragraph to pay deficient 
fees may not be extended.
    (b) If the payment needed to cover the handling and preliminary 
examination fees, pursuant to paragraph (a) of this section, is not 
timely made in accordance with PCT Rule 58bis.1(d), the United States 
International Preliminary Examination Authority will declare the Demand 
to be considered as if it had not been submitted.

[63 FR 29619, June 1, 1998]



Sec. 1.482  International preliminary examination fees.

    (a) The following fees and charges for international preliminary 
examination are established by the Commissioner under the authority of 
35 U.S.C. 376:
    (1) A preliminary examination fee is due on filing the Demand:
    (i) Where an international search fee as set forth in 
Sec. 1.445(a)(2) has been paid on the international application to the 
United States Patent and Trademark Office as an International Searching 
Authority, a preliminary examination fee of--$490.00
    (ii) Where the International Searching Authority for the 
international application was an authority other than the United States 
Patent and Trademark Office, a preliminary examination fee of--$750.00
    (2) An additional preliminary examination fee when required, per 
additional invention:
    (i) Where the International Searching Authority for the 
international application was the United States Patent and Trademark 
Office--$140.00
    (ii) Where the International Searching Authority for the 
international application was an authority other than the United States 
Patent and Trademark Office--$270.00

[[Page 101]]

    (b) The handling fee is due on filing the Demand.

(35 U.S.C. 6, 376)

[52 FR 20048, May 28, 1987, as amended at 56 FR 65154, Dec. 13, 1991; 57 
FR 38196, Aug. 21, 1992; 58 FR 4346, Jan. 14, 1993; 60 FR 41023, Aug. 
11, 1995; 61 FR 39588, July 30, 1996; 62 FR 40453, July 29, 1997]



Sec. 1.484  Conduct of international preliminary examination.

    (a) An international preliminary examination will be conducted to 
formulate a non-binding opinion as to whether the claimed invention has 
novelty, involves an inventive step (is non-obvious) and is industrially 
applicable.
    (b) International preliminary examination will begin promptly upon 
receipt of a proper Demand in an application for which the United States 
International Preliminary Examining Authority is competent, for which 
the fees for international preliminary examination (Sec. 1.482) have 
been paid, and which requests examination based on the application as 
filed or as amended by an amendment which has been received by the 
United States International Preliminary Examining Authority. Where a 
Demand requests examination based on a PCT Article 19 amendment which 
has not been received, examination may begin at 20 months without 
receipt of the PCT Article 19 amendment. Where a Demand requests 
examination based on a PCT Article 34 amendment which has not been 
received, applicant will be notified and given a time period within 
which to submit the amendment.
    (1) Examination will begin after the earliest of:
    (i) Receipt of the amendment;
    (ii) Receipt of applicant's statement that no amendment will be 
made; or
    (iii) Expiration of the time period set in the notification.
    (2) No international preliminary examination report will be 
established prior to issuance of an international search report.
    (c) No international preliminary examination will be conducted on 
inventions not previously searched by an International Searching 
Authority.
    (d) The International Preliminary Examining Authority will establish 
a written opinion if any defect exists or if the claimed invention lacks 
novelty, inventive step or industrial applicability and will set a non-
extendable time limit in the written opinion for the applicant to reply.
    (e) If no written opinion under paragraph (d) of this section is 
necessary, or after any written opinion and the reply thereto or the 
expiration of the time limit for reply to such written opinion, an 
international preliminary examination report will be established by the 
International Preliminary Examining Authority. One copy will be 
submitted to the International Bureau and one copy will be submitted to 
the applicant.
    (f) An applicant will be permitted a personal or telephone interview 
with the examiner, which must be conducted during the non-extendable 
time limit for reply by the applicant to a written opinion. Additional 
interviews may be conducted where the examiner determines that such 
additional interviews may be helpful to advancing the international 
preliminary examination procedure. A summary of any such personal or 
telephone interview must be filed by the applicant as a part of the 
reply to the written opinion or, if applicant files no reply, be made of 
record in the file by the examiner.

[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62 
FR 53199, Oct. 10, 1997; 63 FR 29619, June 1, 1998]



Sec. 1.485  Amendments by applicant during international preliminary examination.

    (a) The applicant may make amendments at the time of filing the 
Demand. The applicant may also make amendments within the time limit set 
by the International Preliminary Examining Authority for reply to any 
notification under Sec. 1.484(b) or to any written opinion. Any such 
amendments must:
    (1) Be made by submitting a replacement sheet in compliance with PCT 
Rules 10 and 11.1 to 11.13 for every sheet of the application which 
differs from the sheet it replaces unless an entire sheet is cancelled; 
and
    (2) Include a description of how the replacement sheet differs from 
the replaced sheet. Amendments that do not

[[Page 102]]

comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.
    (b) If an amendment cancels an entire sheet of the international 
application, that amendment shall be communicated in a letter.

[58 FR 4346, Jan. 14, 1993, as amended at 63 FR 29620, June 1, 1998]



Sec. 1.488  Determination of unity of invention before the International Preliminary Examining Authority.

    (a) Before establishing any written opinion or the international 
preliminary examination report, the International Preliminary Examining 
Authority will determine whether the international application complies 
with the requirement of unity of invention as set forth in Sec. 1.475.
    (b) If the International Preliminary Examining Authority considers 
that the international application does not comply with the requirement 
of unity of invention, it may:
    (1) Issue a written opinion and/or an international preliminary 
examination report, in respect of the entire international application 
and indicate that unity of invention is lacking and specify the reasons 
therefor without extending an invitation to restrict or pay additional 
fees. No international preliminary examination will be conducted on 
inventions not previously searched by an International Searching 
Authority.
    (2) Invite the applicant to restrict the claims or pay additional 
fees, pointing out the categories of invention found, within a set time 
limit which will not be extended. No international preliminary 
examination will be conducted on inventions not previously searched by 
an International Searching Authority, or
    (3) If applicant fails to restrict the claims or pay additional fees 
within the time limit set for reply, the International Preliminary 
Examining Authority will issue a written opinion and/or establish an 
international preliminary examination report on the main invention and 
shall indicate the relevant facts in the said report. In case of any 
doubt as to which invention is the main invention, the invention first 
mentioned in the claims and previously searched by an International 
Searching Authority shall be considered the main invention.
    (c) Lack of unity of invention may be directly evident before 
considering the claims in relation to any prior art, or after taking the 
prior art into consideration, as where a document discovered during the 
search shows the invention claimed in a generic or linking claim lacks 
novelty or is clearly obvious, leaving two or more claims joined thereby 
without a common inventive concept. In such a case the International 
Preliminary Examining Authority may raise the objection of lack of unity 
of invention.

[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62 
FR 53200, Oct. 10, 1997]



Sec. 1.489  Protest to lack of unity of invention before the International Preliminary Examining Authority.

    (a) If the applicant disagrees with the holding of lack of unity of 
invention by the International Preliminary Examining Authority, 
additional fees may be paid under protest, accompanied by a request for 
refund and a statement setting forth reasons for disagreement or why the 
required additional fees are considered excessive, or both.
    (b) Protest under paragraph (a) of this section will be examined by 
the Commissioner or the Commissioner's designee. In the event that the 
applicant's protest is determined to be justified, the additional fees 
or a portion thereof will be refunded.
    (c) An applicant who desires that a copy of the protest and the 
decision thereon accompany the international preliminary examination 
report when forwarded to the Elected Offices, may notify the 
International Preliminary Examining Authority to that effect any time 
prior to the issuance of the international preliminary examination 
report. Thereafter, such notification should be directed to the 
International Bureau.

[52 FR 20050, May 28, 1987]

                             National Stage



Sec. 1.491  Entry into the national stage.

    An international application enters the national stage when the 
applicant

[[Page 103]]

has filed the documents and fees required by 35 U.S.C. 371(c) within the 
periods set forth in Sec. 1.494 or Sec. 1.495.

[52 FR 20050, May 28, 1987]



Sec. 1.492  National stage fees.

    The following fees and charges are established for international 
applications entering the national stage under 35 U.S.C. 371:
    (a) The basic national fee:
    (1) Where an international preliminary examination fee as set forth 
in Sec. 1.482 has been paid on the international application to the 
United States Patent and Trademark Office:

By a small entity (Sec. 1.9(f))--$335.00
By other than a small entity--$670.00

    (2) Where no international preliminary examination fee as set forth 
in Sec. 1.482 has been paid to the United States Patent and Trademark 
Office, but an international search fee as set forth in Sec. 1.445(a)(2) 
has been paid on the international application to the United States 
Patent and Trademark Office as an International Searching Authority:

By a small entity (Sec. 1.9(f))--$380.00
By other than a small entity--$760.00

    (3) Where no international preliminary examination fee as set forth 
in Sec. 1.482 has been paid and no international search fee as set forth 
in Sec. 1.445(a)(2) has been paid on the international application to 
the United States Patent and Trademark Office:

By a small entity (Sec. 1.9(f))--$485.00
By other than a small entity--$970.00

    (4) Where an international preliminary examination fee as set forth 
in Sec. 1.482 has been paid to the United States Patent and Trademark 
Office and the international preliminary examination report states that 
the criteria of novelty, inventive step (non-obviousness), and 
industrial applicability, as defined in PCT Article 33 (1) to (4) have 
been satisfied for all the claims presented in the application entering 
the national stage (see Sec. 1.496(b)):

By a small entity (Sec. 1.9(f))--$48.00
By other than a small entity--$96.00

    (5) Where a search report on the international application has been 
prepared by the European Patent Office or the Japanese Patent Office:

By a small entity (Sec. 1.9(f))--$420.00
By other than a small entity--$840.00

    (b) In addition to the basic national fee, for filing or later 
presentation of each independent claim in excess of 3:

By a small entity (Sec. 1.9(f))--$39.00
By other than a small entity--$78.00

    (c) In addition to the basic national fee, for filing or later 
presentation of each claim (whether independent or dependent) in excess 
of 20 (Note that Sec. 1.75(c) indicates how multiple dependent claims 
are considered for fee calculation purposes.):

By a small entity (Sec. 1.9(f))--$9.00
By other than a small entity--$18.00

    (d) In addition to the basic national fee, if the application 
contains, or is amended to contain, a multiple dependent claim(s), per 
application:

By a small entity (Sec. 1.9(f))--$130.00
By other than a small entity--$260.00
    (e) Surcharge for filing the oath or declaration later than 20 
months from the priority date pursuant to Sec. 1.494(c) or later than 30 
months from the priority date pursuant to Sec. 1.495(c):

By a small entity (Sec. 1.9(f))...................................$65.00
By other than a small entity.....................................$130.00

    (f) For filing an English translation of an international 
application later than 20 months after the priority date (Sec. 1.494(c)) 
or filing an English translation of the international application or of 
any annexes to the international preliminary examination report later 
than 30 months after the priority date

(Secs. 1.495 (c) and (e))........................................$130.00

    (g) If the additional fees required by paragraphs (b), (c), and (d) 
of this section are not paid on presentation of the claims for which the 
additional fees are due, they must be paid or the claims cancelled by 
amendment, prior to the expiration of the time period set for reply by 
the Office in any notice of fee deficiency.

[56 FR 65154, Dec. 13, 1991, as amended at 57 FR 38196, Aug. 21, 1992; 
58 FR 4346, Jan. 14, 1993; 60 FR 41023, Aug. 11, 1995; 61 FR 39588, July 
30, 1996; 62 FR 40453, July 29, 1997; 62 FR 53200, Oct. 10, 1997; 63 FR 
67580, Dec. 8, 1998]

[[Page 104]]



Sec. 1.494  Entering the national stage in the United States of America as a Designated Office.

    (a) Where the United States of America has not been elected by the 
expiration of 19 months from the priority date (see Sec. 1.495), the 
applicant must fulfill the requirements of PCT Article 22 and 35 U.S.C. 
371 within the time periods set forth in paragraphs (b) and (c) of this 
section in order to prevent the abandonment of the international 
application as to the United States of America. International 
applications for which those requirements are timely fulfilled will 
enter the national stage and obtain an examination as to the 
patentability of the invention in the United States of America.
    (b) To avoid abandonment of the application, the applicant shall 
furnish to the United States Patent and Trademark Office not later than 
the expiration of 20 months from the priority date:
    (1) A copy of the international application, unless it has been 
previously communicated by the International Bureau or unless it was 
originally filed in the United States Patent and Trademark Office; and
    (2) The basic national fee (see Sec. 1.492(a)). The 20-month time 
limit may not be extended.
    (c) If applicant complies with paragraph (b) of this section before 
expiration of 20 months from the priority date but omits:
    (1) A translation of the international application, as filed, into 
the English language, if it was originally filed in another language (35 
U.S.C. 371(c)(2)) and/or
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see Sec. 1.497), applicant will be so notified and given a period of 
time within which to file the translation and/or oath or declaration in 
order to prevent abandonment of the application. The payment of the 
processing fee set forth in Sec. 1.492(f) is required for acceptance of 
an English translation later than the expiration of 20 months after the 
priority date. The payment of the surcharge set forth in Sec. 1.492(e) 
is required for acceptance of the oath or declaration of the inventor 
later than the expiration of 20 months after the priority date. A 
``Sequence Listing'' need not be translated if the ``Sequence Listing'' 
complies with PCT Rule 12.1(d) and the description complies with PCT 
Rule 5.2(b).
    (d) A copy of any amendments to the claims made under PCT Article 
19, and a translation of those amendments into English, if they were 
made in another language, must be furnished not later than the 
expiration of 20 months from the priority date. Amendments under PCT 
Article 19 which are not received by the expiration of 20 months from 
the priority date will be considered to be cancelled. The 20-month time 
limit may not be extended.
    (e) Verification of the translation of the international application 
or any other document pertaining to an international application may be 
required where it is considered necessary, if the international 
application or other document was filed in a language other than 
English.
    (f) The documents and fees submitted under paragraphs (b) and (c) of 
this section must be clearly identified as a submission to enter the 
national stage under 35 U.S.C. 371, otherwise the submission will be 
considered as being made under 35 U.S.C. 111.
    (g) An international application becomes abandoned as to the United 
States 20 months from the priority date if the requirements of paragraph 
(b) of this section have not been complied with within 20 months from 
the priority date where the United States has been designated but not 
elected by the expiration of 19 months from the priority date. If the 
requirements of paragraph (b) of this section are complied with within 
20 months from the priority date but any required translation of the 
international application as filed and/or the oath or declaration are 
not timely filed, an international application will become abandoned as 
to the United States upon expiration of the time period set pursuant to 
paragraph (c) of this section.

[52 FR 20050, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 63 
FR 29620, June 1, 1998]

[[Page 105]]



Sec. 1.495  Entering the national stage in the United States of America as an Elected Office.

    (a) Where the United States of America has been elected by the 
expiration of 19 months from the priority date, the applicant must 
fulfill the requirements of 35 U.S.C. 371 within the time periods set 
forth in paragraphs (b) and (c) of this section in order to prevent the 
abandonment of the international application as to the United States of 
America. International applications for which those requirements are 
timely fulfilled will enter the national stage and obtain an examination 
as to the patentability of the invention in the United States of 
America.
    (b) To avoid abandonment of the application the applicant shall 
furnish to the United States Patent and Trademark Office not later than 
the expiration of 30 months from the priority date:
    (1) A copy of the international application, unless it has been 
previously communicated by the International Bureau or unless it was 
originally filed in the United States Patent and Trademark Office; and
    (2) The basic national fee (see Sec. 1.492(a)). The 30-month time 
limit may not be extended.
    (c) If applicant complies with paragraph (b) of this section before 
expiration of 30 months from the priority date but omits:
    (1) A translation of the international application, as filed, into 
the English language, if it was originally filed in another language (35 
U.S.C. 371(c)(2)) and/or
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see Sec. 1.497), applicant will be so notified and given a period of 
time within which to file the translation and/or oath or declaration in 
order to prevent abandonment of the application. The payment of the 
processing fee set forth in Sec. 1.492(f) is required for acceptance of 
an English translation later than the expiration of 30 months after the 
priority date. The payment of the surcharge set forth in Sec. 1.492(e) 
is required for acceptance of the oath or declaration of the inventor 
later than the expiration of 30 months after the priority date.

A ``Sequence Listing'' need not be translated if the ``Sequence 
Listing'' complies with PCT Rule 12.1(d) and the description complies 
with PCT Rule 5.2(b).
    (d) A copy of any amendments to the claims made under PCT Article 
19, and a translation of those amendments into English, if they were 
made in another language, must be furnished not later than the 
expiration of 30 months from the priority date. Amendments under PCT 
Article 19 which are not received by the expiration of 30 months from 
the priority date will be considered to be cancelled. The 30-month time 
limit may not be extended.
    (e) A translation into English of any annexes to the international 
preliminary examination report, if the annexes were made in another 
language, must be furnished not later than the expiration of 30 months 
from the priority date. Translations of the annexes which are not 
received by the expiration of 30 months from the priority date may be 
submitted within any period set pursuant to paragraph (c) of this 
section accompanied by the processing fee set forth in Sec. 1.492(f). 
Annexes for which translations are not timely received will be 
considered cancelled. The 30-month time limit may not be extended.
    (f) Verification of the translation of the international application 
or any other document pertaining to an international application may be 
required where it is considered necessary, if the international 
application or other document was filed in a language other than 
English.
    (g) The documents submitted under paragraphs (b) and (c) of this 
section must be clearly identified as a submission to enter the national 
stage under 35 U.S.C. 371, otherwise the submission will be considered 
as being made under 35 U.S.C. 111.
    (h) An international application becomes abandoned as to the United 
States 30 months from the priority date if the requirements of paragraph 
(b) of this section have not been complied with within 30 months from 
the priority date and the United States has been elected by the 
expiration of 19 months from the priority date. If the requirements of 
paragraph (b) of this

[[Page 106]]

section are complied with within 30 months from the priority date but 
any required translation of the international application as filed and/
or the oath or declaration are not timely filed, an international 
application will become abandoned as to the United States upon 
expiration of the time period set pursuant to paragraph (c) of this 
section.

[52 FR 20051, May 28, 1987, as amended at 58 FR 4347, Jan. 14, 1993; 63 
FR 29620, June 1, 1998]



Sec. 1.496  Examination of international applications in the national stage.

    (a) International applications which have complied with the 
requirements of 35 U.S.C. 371(c) will be taken up for action based on 
the date on which such requirements were met. However, unless an express 
request for early processing has been filed under 35 U.S.C. 371(f), no 
action may be taken prior to one month after entry into the national 
stage.
    (b) A national stage application filed under 35 U.S.C. 371 may have 
paid therein the basic national fee as set forth in Sec. 1.492(a)(4) if 
it contains, or is amended to contain, at the time of entry into the 
national stage, only claims which have been indicated in an 
international preliminary examination report prepared by the United 
States Patent and Trademark Office as satisfying the criteria of PCT 
Article 33(1)-(4) as to novelty, inventive step and industrial 
applicability. Such national stage applications in which the basic 
national fee as set forth in Sec. 1.492(a)(4) has been paid may be 
amended subsequent to the date of entry into the national stage only to 
the extent necessary to eliminate objections as to form or to cancel 
rejected claims. Such national stage applications in which the basic 
national fee as set forth in Sec. 1.492(a)(4) has been paid will be 
taken up out of order.

[52 FR 20051, May 28, 1987]



Sec. 1.497  Oath or declaration under 35 U.S.C. 371(c)(4).

    (a) When an applicant of an international application desires to 
enter the national stage under 35 U.S.C. 371 pursuant to Secs. 1.494 or 
1.495, he or she must file an oath or declaration that:
    (1) Is executed in accordance with either Secs. 1.66 or 1.68;
    (2) Identifies the specification to which it is directed;
    (3) Identifies each inventor and the country of citizenship of each 
inventor; and
    (4) States that the person making the oath or declaration believes 
the named inventor or inventors to be the original and first inventor or 
inventors of the subject matter which is claimed and for which a patent 
is sought.
    (b)(1) The oath or declaration must be made by all of the actual 
inventors except as provided for in Secs. 1.42, 1.43 or 1.47.
    (2) If the person making the oath or declaration is not the 
inventor, the oath or declaration shall state the relationship of the 
person to the inventor, the facts required by Secs. 1.42, 1.43 or 1.47, 
and, upon information and belief, the facts which the inventor would 
have been required to state.
    (c) If the oath or declaration meets the requirements of paragraphs 
(a) and (b) of this section, the oath or declaration will be accepted as 
complying with 35 U.S.C. 371(c)(4) and Secs. 1.494(c) or 1.495(c). 
However, if the oath or declaration does not also meet the requirements 
of Sec. 1.63, a supplemental oath or declaration in compliance with 
Sec. 1.63 will be required in accordance with Sec. 1.67.

[61 FR 42807, Aug. 19, 1996]



Sec. 1.499  Unity of invention during the national stage.

    If the examiner finds that a national stage application lacks unity 
of invention under Sec. 1.475, the examiner may in an Office action 
require the applicant in the response to that action to elect the 
invention to which the claims shall be restricted. Such requirement may 
be made before any action on the merits but may be made at any time 
before the final action at the discretion of the examiner. Review of any 
such requirement is provided under Secs. 1.143 and 1.144.

[58 FR 4347, Jan. 14, 1993]

[[Page 107]]



                   Subpart D--Reexamination of Patents

    Source: 46 FR 29185, May 29, 1981, unless otherwise noted.

                          Citation of Prior Art



Sec. 1.501  Citation of prior art in patent files.

    (a) At any time during the period of enforceability of a patent, any 
person may cite to the Patent and Trademark Office in writing prior art 
consisting of patents or printed publications which that person states 
to be pertinent and applicable to the patent and believes to have a 
bearing on the patentability of any claim of a particular patent. If the 
citation is made by the patent owner, the explanation of pertinency and 
applicability may include an explanation of how the claims differ from 
the prior art. Citations by the patent owner under Sec. 1.555 and by a 
reexamination requester under either Sec. 1.510 or Sec. 1.535 will be 
entered in the patent file during a reexamination proceeding. The entry 
in the patent file of citations submitted after the date of an order to 
reexamine pursuant to Sec. 1.525 by persons other than the patent owner, 
or a reexamination requester under either Sec. 1.510 or Sec. 1.535, will 
be delayed until the reexamination proceedings have been terminated.
    (b) If the person making the citation wishes his or her identity to 
be excluded from the patent file and kept confidential, the citation 
papers must be submitted without any identification of the person making 
the submission.
    (c) Citation of patents or printed publications by the public in 
patent files should either:

    (1) Reflect that a copy of the same has been mailed to the patent 
owner at the address as provided for in Sec. 1.33(c); or in the event 
service is not possible
    (2) Be filed with the Office in duplicate.

                        Request for Reexamination



Sec. 1.510  Request for reexamination.

    (a) Any person may, at any time during the period of enforceability 
of a patent, file a request for reexamination by the Patent and 
Trademark Office of any claim of the patent on the basis of prior art 
patents or printed publications cited under Sec. 1.501. The request must 
be accompanied by the fee for requesting reexamination set in 
Sec. 1.20(c).
    (b) Any request for reexamination must include the following parts:
    (1) A statement pointing out each substantial new question of 
patentability based on prior patents and printed publications.
    (2) An identification of every claim for which reexamination is 
requested, and a detailed explanation of the pertinency and manner of 
applying the cited prior art to every claim for which reexamination is 
requested. If appropriate the party requesting reexamination may also 
point out how claims distinguish over cited prior art.
    (3) A copy of every patent or printed publication relied upon or 
referred to in paragraph (b) (1) and (2) of this section accompanied by 
an English language translation of all the necessary and pertinent parts 
of any non-English language patent or printed publication.
    (4) The entire specification (including claims) and drawings of the 
patent for which reexamination is requested must be furnished in the 
form of cut-up copies of the original patent with only a single column 
of the printed patent securely mounted or reproduced in permanent form 
on one side of a separate paper. A copy of any disclaimer, certificate 
of correction, or reexamination certificate issued in the patent must 
also be included.
    (5) A certification that a copy of the request filed by a person 
other than the patent owner has been served in its entirety on the 
patent owner at the address as provided for in Sec. 1.33(c). The name 
and address of the party served must be indicated. If service was not 
possible, a duplicate copy must be supplied to the Office.
    (c) If the request does not include the fee for requesting 
reexamination or all of the parts required by paragraph (b) of this 
section, the person identified as requesting reexamination will be so 
notified and given an opportunity to complete the request within a 
specified time. If the fee for requesting reexamination has been paid 
but the defect in the request is not corrected within the

[[Page 108]]

specified time, the determination whether or not to institute 
reexamination will be made on the request as it then exists. If the fee 
for requesting reexamination has not been paid, no determination will be 
made and the request will be placed in the patent file as a citation if 
it complies with the requirements of Sec. 1.501(a).
    (d) The filing date of the request is:
    (1) The date on which the request including the entire fee for 
requesting reexamination is received in the Patent and Trademark Office; 
or
    (2) The date on which the last portion of the fee for requesting 
reexamination is received.
    (e) A request filed by the patent owner may include a proposed 
amendment in accordance with Sec. 1.530(d).
    (f) If a request is filed by an attorney or agent identifying 
another party on whose behalf the request is being filed, the attorney 
or agent must have a power of attorney from that party or be acting in a 
representative capacity pursuant to Sec. 1.34(a).

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[46 FR 29185, May 29, 1981, as amended at 47 FR 41282, Sept. 17, 1982; 
62 FR 53200, Oct. 10, 1997]



Sec. 1.515  Determination of the request for reexamination.

    (a) Within three months following the filing date of a request for 
reexamination, an examiner will consider the request and determine 
whether or not a substantial new question of patentability affecting any 
claim of the patent is raised by the request and the prior art cited 
therein, with or without consideration of other patents or printed 
publications. The examiner's determination will be based on the claims 
in effect at the time of the determination and will become a part of the 
official file of the patent and will be given or mailed to the patent 
owner at the address as provided for in Sec. 1.33(c) and to the person 
requesting reexamination.
    (b) Where no substantial new question of patentability has been 
found, a refund of a portion of the fee for requesting reexamination 
will be made to the requester in accordance with Sec. 1.26(c).
    (c) The requester may seek review by a petition to the Commissioner 
under Sec. 1.181 within one month of the mailing date of the examiner's 
determination refusing reexamination. Any such petition must comply with 
Sec. 1.181(b). If no petition is timely filed or if the decision on 
petition affirms that no substantial new question of patentability has 
been raised, the determination shall be final and nonappealable.



Sec. 1.520  Reexamination at the initiative of the Commissioner.

    The Commissioner, at any time during the period of enforceability of 
a patent, may determine whether or not a substantial new question of 
patentability is raised by patents or printed publications which have 
been discovered by the Commissioner or which have been brought to the 
Commissioner's attention even though no request for reexamination has 
been filed in accordance with Sec. 1.510. The Commissioner may initiate 
reexamination without a request for reexamination pursuant to 
Sec. 1.510. Normally requests from outside the Patent and Trademark 
Office that the Commissioner undertake reexamination on his own 
initiative will not be considered. Any determination to initiate 
reexamination under this section will become a part of the official file 
of the patent and will be given or mailed to the patent owner at the 
address as provided for in Sec. 1.33(c).

                              Reexamination



Sec. 1.525  Order to reexamine.

    (a) If a substantial new question of patentability is found pursuant 
to Sec. 1.515 or Sec. 1.520, the determination will include an order for 
reexamination of the patent for resolution of the question. If the order 
for reexamination resulted from a petition pursuant to Sec. 1.515(c), 
the reexamination will ordinarily be conducted by an examiner other than 
the examiner responsible for the initial determination under 
Sec. 1.515(a).
    (b) If the order for reexamination of the patent mailed to the 
patent owner at the address as provided for in

[[Page 109]]

Sec. 1.33(c) is returned to the Office undelivered, the notice published 
in the Official Gazette under Sec. 1.11(c) will be considered to be 
constructive notice and reexamination will proceed.



Sec. 1.530  Statement; amendment by patent owner.

    (a) Except as provided in Sec. 1.510(e), no statement or other 
response by the patent owner shall be filed prior to the determinations 
made in accordance with Sec. 1.515 or 1.520. If a premature statement or 
other response is filed by the patent owner it will not be acknowledged 
or considered in making the determination.
    (b) The order for reexamination will set a period of not less than 
two months from the date of the order within which the patent owner may 
file a statement on the new question of patentability including any 
proposed amendments the patent owner wishes to make.
    (c) Any statement filed by the patent owner shall clearly point out 
why the subject matter as claimed is not anticipated or rendered obvious 
by the prior art patents or printed publications, either alone or in any 
reasonable combinations. Any statement filed must be served upon the 
reexamination requester in accordance with Sec. 1.248.
    (d) Amendments in reexamination proceedings. Amendments in 
reexamination proceedings are made by filing a paper, in compliance with 
paragraph (d)(5) of this section, directing that specified amendments be 
made.
    (1) Specification other than the claims. Amendments to the 
specification, other than to the claims, may only be made as follows:
    (i) Amendments must be made by submission of the entire text of a 
newly added or rewritten paragraph(s) with markings pursuant to 
paragraph (d)(1)(iii) of this section, except that an entire paragraph 
may be deleted by a statement deleting the paragraph without 
presentation of the text of the paragraph.
    (ii) The precise point in the specification must be indicated where 
the paragraph to be amended is located.
    (iii) Underlining below the subject matter added to the patent and 
brackets around the subject matter deleted from the patent are to be 
used to mark the amendments being made.
    (2) Claims. Amendments to the claims may only be made as follows:
    (i)(A) The amendment must be made relative to the patent claims in 
accordance with paragraph (d)(8) of this section and must include the 
entire text of each claim which is being proposed to be amended by the 
current amendment and each proposed new claim being added by the current 
amendment with markings pursuant to paragraph (d)(2)(i)(C) of this 
section, except that a patent claim or previously proposed new claim 
should be cancelled by a statement cancelling the patent claim or 
proposed new claim without presentation of the text of the patent claim 
or proposed new claim.
    (B) Patent claims must not be renumbered and the numbering of any 
new claims proposed to be added to the patent must follow the number of 
the highest numbered patent claim.
    (C) Underlining below the subject matter added to the patent and 
brackets around the subject matter deleted from the patent are to be 
used to mark the amendments being made. If a claim is amended pursuant 
to paragraph (d)(2)(i)(A) of this section, a parenthetical expression 
``amended,'' ``twice amended,'' etc., should follow the original claim 
number.
    (ii) Each amendment submission must set forth the status (i.e., 
pending or cancelled) as of the date of the amendment, of all patent 
claims and of all new claims currently or previously proposed.
    (iii) Each amendment, when submitted for the first time, must be 
accompanied by an explanation of the support in the disclosure of the 
patent for the amendment along with any additional comments on page(s) 
separate from the page(s) containing the amendment.
    (3) No amendment may enlarge the scope of the claims of the patent 
or introduce new matter. No amendment may be proposed for entry in an 
expired patent. Moreover, no amendment will be incorporated into the 
patent by certificate issued after the expiration of the patent.
    (4) Although the Office actions will treat proposed amendments as 
though

[[Page 110]]

they have been entered, the proposed amendments will not be effective 
until the reexamination certificate is issued.
    (5) The form of amendments other than to the patent drawings must be 
in accordance with the following requirements. All amendments must be in 
the English language and must be legibly written either by a typewriter 
or mechanical printer in at least 11 point type in permanent dark ink or 
its equivalent in portrait orientation on flexible, strong, smooth, non-
shiny, durable, white paper. All amendments must be presented in a form 
having sufficient clarity and contrast between the paper and the writing 
thereon to permit the direct reproduction of readily legible copies in 
any number by use of photographic, electrostatic, photo-offset, and 
microfilming processes and electronic reproduction by use of digital 
imaging or optical character recognition. If the amendments are not of 
the required quality, substitute typewritten or mechanically printed 
papers of suitable quality will be required. The papers, including the 
drawings, must have each page plainly written on only one side of a 
sheet of paper. The sheets of paper must be the same size and either 
21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 
inches). Each sheet must include a top margin of at least 2.0 cm. (\3/4\ 
inch), a left side margin of at least 2.5 cm. (1 inch), a right side 
margin of at least 2.0 cm. (\3/4\ inch), and a bottom margin of at least 
2.0 cm. (\3/4\ inch), and no holes should be made in the sheets as 
submitted. The lines must be double spaced, or one and one-half spaced. 
The pages must be numbered consecutively, starting with 1, the numbers 
being centrally located, preferably below the text, or above the text.
    (6) Drawings. (i) The original patent drawing sheets may not be 
altered. Any proposed change to the patent drawings must be by way of a 
new sheet of drawings with the amended figures identified as ``amended'' 
and with added figures identified as ``new'' for each sheet change 
submitted in compliance with Sec. 1.84.
    (ii) Where a change to the drawings is desired, a sketch in 
permanent ink showing proposed changes in red, to become part of the 
record, must be filed for approval by the examiner and should be in a 
separate paper.
    (7) The disclosure must be amended, when required by the Office, to 
correct inaccuracies of description and definition and to secure 
substantial correspondence between the claims, the remainder of the 
specification, and the drawings.
    (8) All amendments to the patent must be made relative to the patent 
specification, including the claims, and drawings, which is in effect as 
of the date of filing of the request for reexamination.

[46 FR 29185, May 29, 1981, as amended at 62 FR 53200, Oct. 10, 1997]



Sec. 1.535  Reply by requester.

    A reply to the patent owner's statement under Sec. 1.530 may be 
filed by the reexamination requester within two months from the date of 
service of the patent owner's statement. Any reply by the requester must 
be served upon the patent owner in accordance with Sec. 1.248. If the 
patent owner does not file a statement under Sec. 1.530, no reply or 
other submission from the reexamination requester will be considered.



Sec. 1.540  Consideration of responses.

    The failure to timely file or serve the documents set forth in 
Sec. 1.530 or in Sec. 1.535 may result in their being refused 
consideration. No submissions other than the statement pursuant to 
Sec. 1.530 and the reply by the requester pursuant to Sec. 1.535 will be 
considered prior to examination.



Sec. 1.550  Conduct of reexamination proceedings.

    (a) All reexamination proceedings, including any appeals to the 
Board of Patent Appeals and Interferences, will be conducted with 
special dispatch within the Office. After issuance of the reexamination 
order and expiration of the time for submitting any responses thereto, 
the examination will be conducted in accordance with Secs. 1.104, 1.110 
through 1.113 and 1.116, and will result in the issuance of a 
reexamination certificate under Sec. 1.570.
    (b) The patent owner will be given at least thirty days to respond 
to any Office action. Such response may include further statements in 
response to any

[[Page 111]]

rejections or proposed amendments or new claims to place the patent in a 
condition where all claims, if amended as proposed, would be patentable.
    (c) The time for taking any action by a patent owner in a 
reexamination proceeding will be extended only for sufficient cause, and 
for a reasonable time specified. Any request for such extension must be 
filed on or before the day on which action by the patent owner is due, 
but in no case will the mere filing of the request effect any extension. 
See Sec. 1.304(a) for extensions of time for filing a notice of appeal 
to the U.S. Court of Appeals for the Federal Circuit or for commencing a 
civil action.
    (d) If the patent owner fails to file a timely and appropriate 
response to any Office action, the reexamination proceeding will be 
terminated and the Commissioner will proceed to issue a certificate 
under Sec. 1.570 in accordance with the last action of the Office.
    (e) The reexamination requester will be sent copies of Office 
actions issued during the reexamination proceeding. After filing of a 
request for reexamination by a third party requester, any document filed 
by either the patent owner or the third party requester must be served 
on the other party in the reexamination proceeding in the manner 
provided by Sec. 1.248. The document must reflect service or the 
document may be refused consideration by the Office.
    (1) The active participation of the reexamination requester ends 
with the reply pursuant to Sec. 1.535, and no further submissions on 
behalf of the reexamination requester will be acknowledged or 
considered. Further, no submissions on behalf of any third parties will 
be acknowledged or considered unless such submissions are:
    (i) In accordance with Sec. 1.510; or
    (ii) Entered in the patent file prior to the date of the order to 
reexamine pursuant to Sec. 1.525.
    (2) Submissions by third parties, filed after the date of the order 
to reexamine pursuant to Sec. 1.525, must meet the requirements of and 
will be treated in accordance with Sec. 1.501(a).

(35 U.S.C. 6, Pub. L. 97-247)

[46 FR 29185, May 29, 1981, as amended at 49 FR 556, Jan. 4, 1984; 49 FR 
48455, Dec. 12, 1984; 54 FR 29553, July 13, 1989; 62 FR 53201, Oct. 10, 
1997]



Sec. 1.552  Scope of reexamination in reexamination proceedings.

    (a) Patent claims will be reexamined on the basis of patents or 
printed publications.
    (b) Amended or new claims presented during a reexamination 
proceeding must not enlarge the scope of the claims of the patent and 
will be examined on the basis of patents or printed publications and 
also for compliance with the requirements of 35 U.S.C. 112 and the new 
matter prohibition of 35 U.S.C. 132.
    (c) Questions other than those indicated in paragraphs (a) and (b) 
of this section will not be resolved in a reexamination proceeding. If 
such questions are discovered during a reexamination proceeding, the 
existence of such questions will be noted by the examiner in an Office 
action, in which case the patent owner may desire to consider the 
advisability of filing a reissue application to have such questions 
considered and resolved.



Sec. 1.555  Information material to patentability in reexamination proceedings.

    (a) A patent by its very nature is affected with a public interest. 
The public interest is best served, and the most effective reexamination 
occurs when, at the time a reexamination proceeding is being conducted, 
the Office is aware of and evaluates the teachings of all information 
material to patentability in a reexamination proceeding. Each individual 
associated with the patent owner in a reexamination proceeding has a 
duty of candor and good faith in dealing with the Office, which includes 
a duty to disclose to the Office all information known to that 
individual to be material to patentability

[[Page 112]]

in a reexamination proceeding. The individuals who have a duty to 
disclose to the Office all information known to them to be material to 
patentability in a reexamination proceeding are the patent owner, each 
attorney or agent who represents the patent owner, and every other 
individual who is substantively involved on behalf of the patent owner 
in a reexamination proceeding. The duty to disclose the information 
exists with respect to each claim pending in the reexamination 
proceeding until the claim is cancelled. Information material to the 
patentability of a cancelled claim need not be submitted if the 
information is not material to patentability of any claim remaining 
under consideration in the reexamination proceeding. The duty to 
disclose all information known to be material to patentability in a 
reexamination proceeding is deemed to be satisfied if all information 
known to be material to patentability of any claim in the patent after 
issuance of the reexamination certificate was cited by the Office or 
submitted to the Office in an information disclosure statement. However, 
the duties of candor, good faith, and disclosure have not been complied 
with if any fraud on the Office was practiced or attempted or the duty 
of disclosure was violated through bad faith or intentional misconduct 
by, or on behalf of, the patent owner in the reexamination proceeding. 
Any information disclosure statement must be filed with the items listed 
in Sec. 1.98(a) as applied to individuals associated with the patent 
owner in a reexamination proceeding, and should be filed within two 
months of the date of the order for reexamination, or as soon thereafter 
as possible.
    (b) Under this section, information is material to patentability in 
a reexamination proceeding when it is not cumulative to information of 
record or being made of record in the reexamination proceeding, and
    (1) It is a patent or printed publication that establishes, by 
itself or in combination with other patents or printed publications, a 
prima facie case of unpatentability of a claim; or
    (2) It refutes, or is inconsistent with, a position the patent owner 
takes in:
    (i) Opposing an argument of unpatentability relied on by the Office, 
or
    (ii) Asserting an argument of patentability.

A prima facie case of unpatentability of a claim pending in a 
reexamination proceeding is established when the information compels a 
conclusion that a claim is unpatentable under the preponderance of 
evidence, burden-of-proof standard, giving each term in the claim its 
broadest reasonable construction consistent with the specification, and 
before any consideration is given to evidence which may be submitted in 
an attempt to establish a contrary conclusion of patentability.
    (c) The responsibility for compliance with this section rests upon 
the individuals designated in paragraph (a) of this section and no 
evaluation will be made by the Office in the reexamination proceeding as 
to compliance with this section. If questions of compliance with this 
section are discovered during a reexamination proceeding, they will be 
noted as unresolved questions in accordance with Sec. 1.552(c).

[57 FR 2036, Jan 17, 1992]



Sec. 1.560  Interviews in reexamination proceedings.

    (a) Interviews in reexamination proceedings pending before the 
Office between examiners and the owners of such patents or their 
attorneys or agents of record must be had in the Office at such times, 
within Office hours, as the respective examiners may designate. 
Interviews will not be permitted at any other time or place without the 
authority of the Commissioner. Interviews for the discussion of the 
patentability of claims in patents involved in reexamination proceedings 
will not be had prior to the first official action thereon. Interviews 
should be arranged for in advance. Requests that reexamination 
requesters participate in interviews with examiners will not be granted.
    (b) In every instance of an interview with an examiner, a complete 
written statement of the reasons presented at the interview as 
warranting favorable action must be filed by the patent owner. An 
interview does not remove

[[Page 113]]

the necessity for response to Office actions as specified in Sec. 1.111.



Sec. 1.565  Concurrent office proceedings.

    (a) In any reexamination proceeding before the Office, the patent 
owner shall call the attention of the Office to any prior or concurrent 
proceedings in which the patent is or was involved such as 
interferences, reissue, reexaminations, or litigation and the results of 
such proceedings.
    (b) If a patent in the process of reexamination is or becomes 
involved in litigation or a reissue application for the patent is filed 
or pending, the Commissioner shall determine whether or not to stay the 
reexamination or reissue proceeding.
    (c) If reexamination is ordered while a prior reexamination 
proceeding is pending, the reexamination proceedings will be 
consolidated and result in the issuance of a single certificate under 
Sec. 1.570.
    (d) If a reissue application and a reexamination proceeding on which 
an order pursuant to Sec. 1.525 has been mailed are pending concurrently 
on a patent, a decision will normally be made to merge the two 
proceedings or to stay one of the two proceedings. Where merger of a 
reissue application and a reexamination proceeding is ordered, the 
merged examination will be conducted in accordance with Secs. 1.171 
through 1.179 and the patent owner will be required to place and 
maintain the same claims in the reissue application and the 
reexamination proceeding during the pendency of the merged proceeding. 
The examiner's actions and any responses by the patent owner in a merged 
proceeding will apply to both the reissue application and the 
reexamination proceeding and be physically entered into both files. Any 
reexamination proceeding merged with a reissue application shall be 
terminated by the grant of the reissued patent.
    (e) If a patent in the process of reexamination is or becomes 
involved in an interference, the Commissioner may stay reexamination or 
the interference. The Commissioner will not consider a request to stay 
an interference unless a motion (Sec. 1.635) to stay the interference 
has been presented to, and denied by, an examiner-in-chief and the 
request is filed within ten (10) days of a decision by an examiner-in-
chief denying the motion for a stay or such other time as the examiner-
in-chief may set.

[46 FR 29185, May 29, 1981, as amended at 47 FR 21753, May 19, 1982; 49 
FR 48455, Dec. 12, 1984; 50 FR 23123, May 31, 1985]

                               Certificate



Sec. 1.570  Issuance of reexamination certificate after reexamination proceedings.

    (a) Upon the conclusion of reexamination proceedings, the 
Commissioner will issue a certificate in accordance with 35 U.S.C. 307 
setting forth the results of the reexamination proceeding and the 
content of the patent following the reexamination proceeding.
    (b) A certificate will be issued in each patent in which a 
reexamination proceeding has been ordered under Sec. 1.525. Any 
statutory disclaimer filed by the patent owner will be made part of the 
certificate.
    (c) The certificate will be mailed on the day of its date to the 
patent owner at the address as provided for in Sec. 1.33(c). A copy of 
the certificate will also be mailed to the requester of the 
reexamination proceeding.
    (d) If a certificate has been issued which cancels all of the claims 
of the patent, no further Office proceedings will be conducted with 
regard to that patent or any reissue applications or reexamination 
requests relating thereto.
    (e) If the reexamination proceeding is terminated by the grant of a 
reissued patent as provided in Sec. 1.565(d) the reissued patent will 
constitute the reexamination certificate required by this section and 35 
U.S.C. 307.
    (f) A notice of the issuance of each certificate under this section 
will be published in the Official Gazette on its date of issuance.

[46 FR 29185, May 29, 1981, as amended at 47 FR 21753, May 19, 1982]



                        Subpart E--Interferences

    Authority: 35 U.S.C. 6, 23, 41, and 135.

    Source: 49 FR 48455, Dec. 12, 1984, unless otherwise noted.

[[Page 114]]



Sec. 1.601  Scope of rules, definitions.

    This subpart governs the procedure in patent interferences in the 
Patent and Trademark Office. This subpart shall be construed to secure 
the just, speedy, and inexpensive determination of every interference. 
For the meaning of terms in the Federal Rules of Evidence as applied to 
interferences, see Sec. 1.671(c). Unless otherwise clear from the 
context, the following definitions apply to this subpart:
    (a) Additional discovery is discovery to which a party may be 
entitled under Sec. 1.687 in addition to discovery to which the party is 
entitled as a matter of right under Sec. 1.673 (a) and (b).
    (b) Affidavit means affidavit, declaration under Sec. 1.68, or 
statutory declaration under 28 U.S.C. 1746. A transcript of an ex parte 
deposition may be used as an affidavit.
    (c) Board means the Board of Patent Appeals and Interferences.
    (d) Case-in-chief means that portion of a party's case where the 
party has the burden of going forward with evidence.
    (e) Case-in-rebuttal means that portion of a party's case where the 
party presents evidence in rebuttal to the case-in-chief of another 
party.
    (f) A count defines the interfering subject matter between two or 
more applications or between one or more applications and one or more 
patents. At the time the interference is initially declared, a count 
should be broad enough to encompass all of the claims that are 
patentable over the prior art and designated to correspond to the count. 
When there is more than one count, each count shall define a separate 
patentable invention. Any claim of an application or patent that is 
designated to correspond to a count is a claim involved in the 
interference within the meaning of 35 U.S.C. 135(a). A claim of a patent 
or application that is designated to correspond to a count and is 
identical to the count is said to correspond exactly to the count. A 
claim of a patent or application that is designated to correspond to a 
count but is not identical to the count is said to correspond 
substantially to the count. When a count is broader in scope than all 
claims which correspond to the count, the count is a phantom count.
    (g) The effective filing date of an application is the filing date 
of an earlier application, benefit of which is accorded to the 
application under 35 U.S.C. 119, 120, 121, or 365 or, if no benefit is 
accorded, the filing date of the application. The effective filing date 
of a patent is the filing date of an earlier application, benefit of 
which is accorded to the patent under 35 U.S.C. 119, 120, 121, or 365 
or, if no benefit is accorded, the filing date of the application which 
issued as the patent.
    (h) In the case of an application, filing date means the filing date 
assigned to the application. In the case of a patent, ``filing date'' 
means the filing date assigned to the application which issued as the 
patent.
    (i) An interference is a proceeding instituted in the Patent and 
Trademark Office before the Board to determine any question of 
patentability and priority of invention between two or more parties 
claiming the same patentable invention. An interference may be declared 
between two or more pending applications naming different inventors 
when, in the opinion of an examiner, the applications contain claims for 
the same patentable invention. An interference may be declared between 
one or more pending applications and one or more unexpired patents 
naming different inventors when, in the opinion of an examiner, any 
application and any unexpired patent contain claims for the same 
patentable invention.
    (j) An interference-in-fact exists when at least one claim of a 
party that is designated to correspond to a count and at least one claim 
of an opponent that is designated to correspond to the count define the 
same patentable invention.
    (k) A lead attorney or agent is a registered attorney or agent of 
record who is primarily responsible for prosecuting an interference on 
behalf of a party and is the attorney or agent whom an administrative 
patent judge may contact to set times and take other action in the 
interference.
    (l) A party is an applicant or patentee involved in the interference 
or a legal representative or an assignee of record

[[Page 115]]

in the Patent and Trademark Office of an applicant or patentee involved 
in an interference. Where acts of party are normally performed by an 
attorney or agent, ``party'' may be construed to mean the attorney or 
agent. An inventor is the individual named as inventor in an application 
involved in an interference or the individual named as inventor in a 
patent involved in an interference.
    (m) A senior party is the party with the earliest effective filing 
date as to all counts or, if there is no party with the earliest 
effective filing date as to all counts, the party with the earliest 
filing date. A junior party is any other party.
    (n) Invention ``A'' is the same patentable invention as an invention 
``B'' when invention ``A'' is the same as (35 U.S.C. 102) or is obvious 
(35 U.S.C. 103) in view of invention ``B'' assuming invention ``B'' is 
prior art with respect to invention ``A''. Invention ``A'' is a separate 
patentable invention with respect to invention ``B'' when invention 
``A'' is new (35 U.S.C. 102) and non-obvious (35 U.S.C. 103) in view of 
invention ``B'' assuming invention ``B'' is prior art with respect to 
invention ``A''.
    (o) Sworn means sworn or affirmed.
    (p) United States means the United States of America, its 
territories and possessions.
    (q) A final decision is a decision awarding judgment as to all 
counts. An interlocutory order is any other action taken by an 
administrative patent judge or the Board in an interference, including 
the notice declaring an interference.
    (r) NAFTA country means NAFTA country as defined in section 2(4) of 
the North American Free Trade Agreement Implementation Act, Pub. L. 103-
182, 107 Stat. 2060 (19 U.S.C. 3301).
    (s) WTO member country means WTO member country as defined in 
section 2(10) of the Uruguay Round Agreements Act, Pub. L. 103-465, 108 
Stat. 4813 (19 U.S.C. 3501).

[49 FR 48455, Dec. 12, 1984; 50 FR 23123, May 31, 1985, as amended at 58 
FR 49434, Sept. 23, 1993; 60 FR 14519, Mar. 17, 1995]



Sec. 1.602  Interest in applications and patents involved in an interference.

    (a) Unless good cause is shown, an interference shall not be 
declared or continued between (1) applications owned by a single party 
or (2) applications and an unexpired patent owned by a single party.
    (b) The parties, within 20 days after an interference is declared, 
shall notify the Board of any and all right, title, and interest in any 
application or patent involved or relied upon in the interference unless 
the right, title, and interest is set forth in the notice declaring the 
interference.
    (c) If a change of any right, title, and interest in any application 
or patent involved or relied upon in the interference occurs after 
notice is given declaring the interference and before the time expires 
for seeking judicial review of a final decision of the Board, the 
parties shall notify the Board of the change within 20 days after the 
change.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14519, Mar. 17, 1995]



Sec. 1.603  Interference between applications; subject matter of the interference.

    Before an interference is declared between two or more applications, 
the examiner must be of the opinion that there is interfering subject 
matter claimed in the applications which is patentable to each applicant 
subject to a judgment in the interference. The interfering subject 
matter shall be defined by one or more counts. Each application must 
contain, or be amended to contain, at least one claim that is patentable 
over the prior art and corresponds to each count. All claims in the 
applications which define the same patentable invention as a count shall 
be designated to correspond to the count.

[60 FR 14519, Mar. 17, 1995]



Sec. 1.604  Request for interference between applications by an applicant.

    (a) An applicant may seek to have an interference declared with an 
application of another by,
    (1) Suggesting a proposed count and presenting at least one claim 
corresponding to the proposed count or

[[Page 116]]

identifying at least one claim in its application that corresponds to 
the proposed count,
    (2) Identifying the other application and, if known, a claim in the 
other application which corresponds to the proposed count, and
    (3) Explaining why an interference should be declared.
    (b) When an applicant presents a claim known to the applicant to 
define the same patentable invention claimed in a pending application of 
another, the applicant shall identify that pending application, unless 
the claim is presented in response to a suggestion by the examiner. The 
examiner shall notify the Commissioner of any instance where it appears 
an applicant may have failed to comply with the provisions of this 
paragraph.

[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 23735, June 23, 1988; 
60 FR 14519, Mar. 17, 1995]



Sec. 1.605  Suggestion of claim to applicant by examiner.

    (a) If no claim in an application is drawn to the same patentable 
invention claimed in another application or patent, the examiner may 
suggest that an applicant present a claim drawn to an invention claimed 
in another application or patent for the purpose of an interference with 
another application or a patent. The applicant to whom the claim is 
suggested shall amend the application by presenting the suggested claim 
within a time specified by the examiner, not less than one month. 
Failure or refusal of an applicant to timely present the suggested claim 
shall be taken without further action as a disclaimer by the applicant 
of the invention defined by the suggested claim. At the time the 
suggested claim is presented, the applicant may also call the examiner's 
attention to other claims already in the application or presented with 
the suggested claim and explain why the other claims would be more 
appropriate to be designated to correspond to a count in any 
interference which may be declared.
    (b) The suggestion of a claim by the examiner for the purpose of an 
interference will not stay the period for response to any outstanding 
Office action. When a suggested claim is timely presented, ex parte 
proceedings in the application will be stayed pending a determination of 
whether an interference will be declared.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14519, Mar. 17, 1995]



Sec. 1.606  Interference between an application and a patent; subject matter of the interference.

    Before an interference is declared between an application and an 
unexpired patent, an examiner must determine that there is interfering 
subject matter claimed in the application and the patent which is 
patentable to the applicant subject to a judgment in the interference. 
The interfering subject matter will be defined by one or more counts. 
The applications must contain, or be amended to contain, at least one 
claim that is patentable over the prior art and corresponds to each 
count. The claim in the application need not be, and most often will not 
be, identical to a claim in the patent. All claims in the application 
and patent which define the same patentable invention as a count shall 
be designated to correspond to the count. At the time an interference is 
initially declared (Sec. 1.611), a count shall not be narrower in scope 
than any application claim that is patentable over the prior art and 
designated to correspond to the count or any patent claim designated to 
correspond to the count. Any single patent claim designated to 
correspond to the count will be presumed, subject to a motion under 
Sec. 1.633(c), not to contain separate patentable inventions.

[60 FR 14520, Mar. 17, 1995]



Sec. 1.607  Request by applicant for interference with patent.

    (a) An applicant may seek to have an interference declared between 
an application and an unexpired patent by,
    (1) Identifying the patent,
    (2) Presenting a proposed count,
    (3) Identifying at least one claim in the patent corresponding to 
the proposed count,
    (4) Presenting at least one claim corresponding to the proposed 
count or identifying at least one claim already pending in its 
application that corresponds to the proposed count, and, if any claim of 
the patent or application

[[Page 117]]

identified as corresponding to the proposed count does not correspond 
exactly to the proposed count, explaining why each such claim 
corresponds to the proposed count, and
    (5) Applying the terms of any application claim,
    (i) Identified as corresponding to the count, and
    (ii) Not previously in the application to the disclosure of the 
application.
    (6) Explaining how the requirements of 35 U.S.C. 135(b) are met, if 
the claim presented or identified under paragraph (a)(4) of this section 
was not present in the application until more than one year after the 
issue date of the patent.
    (b) When an applicant seeks an interference with a patent, 
examination of the application, including any appeal to the Board, shall 
be conducted with special dispatch within the Patent and Trademark 
Office. The examiner shall determine whether there is interfering 
subject matter claimed in the application and the patent which is 
patentable to the applicant subject to a judgment in an interference. If 
the examiner determines that there is any interfering subject matter, an 
interference will be declared. If the examiner determines that there is 
no interfering subject matter, the examiner shall state the reasons why 
an interference is not being declared and otherwise act on the 
application.
    (c) When an applicant presents a claim which corresponds exactly or 
substantially to a claim of a patent, the applicant shall identify the 
patent and the number of the patent claim, unless the claim is presented 
in response to a suggestion by the examiner. The examiner shall notify 
the Commissioner of any instance where an applicant fails to identify 
the patent.
    (d) A notice that an applicant is seeking to provoke an interference 
with a patent will be placed in the file of the patent and a copy of the 
notice will be sent to the patentee. The identity of the applicant will 
not be disclosed unless an interference is declared. If a final decision 
is made not to declare an interference, a notice to that effect will be 
placed in the patent file and will be sent to the patentee.

[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 23735, June 23, 1988; 
58 FR 54511, Oct. 22, 1993; 60 FR 14520, Mar. 17, 1995]



Sec. 1.608  Interference between an application and a patent; prima facie showing by applicant.

    (a) When the effective filing date of an application is three months 
or less after the effective filing date of a patent, before an 
interference will be declared, either the applicant or the applicant's 
attorney or agent of record shall file a statement alleging that there 
is a basis upon which the applicant is entitled to a judgment relative 
to the patentee.
    (b) When the effective filing date of an application is more than 
three months after the effective filing date of a patent, the applicant, 
before an interference will be declared, shall file evidence which may 
consist of patents or printed publications, other documents, and one or 
more affidavits which demonstrate that applicant is prima facie entitled 
to a judgment relative to the patentee and an explanation stating with 
particularity the basis upon which the applicant is prima facie entitled 
to the judgment. Where the basis upon which an applicant is entitled to 
judgment relative to a patentee is priority of invention, the evidence 
shall include affidavits by the applicant, if possible, and one or more 
corroborating witnesses, supported by documentary evidence, if 
available, each setting out a factual description of acts and 
circumstances performed or observed by the affiant, which collectively 
would prima facie entitle the applicant to judgment on priority with 
respect to the effective filing date of the patent. To facilitate 
preparation of a record (Sec. 1.653(g)) for final hearing, an applicant 
should file affidavits on paper which is 21.8 by 27.9 cm. (8\1/2\ x 11 
inches). The significance of any printed publication or other document 
which is self-authenticating within the meaning of Rule 902 of the 
Federal Rules of Evidence or Sec. 1.671(d) and any patent shall be 
discussed in an affidavit or the explanation. Any printed publication or

[[Page 118]]

other document which is not self-authenticating shall be authenticated 
and discussed with particularity in an affidavit. Upon a showing of good 
cause, an affidavit may be based on information and belief. If an 
examiner finds an application to be in condition for declaration of an 
interference, the examiner will consider the evidence and explanation 
only to the extent of determining whether a basis upon which the 
application would be entitled to a judgment relative to the patentee is 
alleged and, if a basis is alleged, an interference may be declared.

[60 FR 14520, Mar. 17, 1995]



Sec. 1.609  Preparation of interference papers by examiner.

    When the examiner determines that an interference should be 
declared, the examiner shall forward to the Board:
    (a) All relevant application and patent files and
    (b) A statement identifying:
    (1) The proposed count or counts and, if there is more than one 
count proposed, explaining why the counts define different patentable 
inventions;
    (2) The claims of any application or patent which correspond to each 
count, explaining why each claim designated as corresponding to a count 
is directed to the same patentable invention as the count;
    (3) The claims in any application or patent which do not correspond 
to each count and explaining why each claim designated as not 
corresponding to any count is not directed to the same patentable 
invention as any count; and
    (4) Whether an applicant or patentee is entitled to the benefit of 
the filing date of an earlier application and, if so, sufficient 
information to identify the earlier application.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14520, Mar. 17, 1995]



Sec. 1.610  Assignment of interference to administrative patent judge, time period for completing interference.

    (a) Each interference will be declared by an administrative patent 
judge who may enter all interlocutory orders in the interference, except 
that only the Board shall hear oral argument at final hearing, enter a 
decision under Sec. 1.617, 1.640(e), 1.652, 1.656(i) or 1.658, or enter 
any other order which terminates the interference.
    (b) As necessary, another administrative patent judge may act in 
place of the one who declared the interference. At the discretion of the 
administrative patent judge assigned to the interference, a panel 
consisting of two or more members of the Board may enter interlocutory 
orders.
    (c) Unless otherwise provided in this subpart, times for taking 
action by a party in the interference will be set on a case-by-case 
basis by the administrative patent judge assigned to the interference. 
Times for taking action shall be set and the administrative patent judge 
shall exercise control over the interference such that the pendency of 
the interference before the Board does not normally exceed two years.
    (d) An administrative patent judge may hold a conference with the 
parties to consider simplification of any issues, the necessity or 
desirability of amendments to counts, the possibility of obtaining 
admissions of fact and genuineness of documents which will avoid 
unnecessary proof, any limitations on the number of expert witnesses, 
the time and place for conducting a deposition (Sec. 1.673(g)), and any 
other matter as may aid in the disposition of the interference. After a 
conference, the administrative patent judge may enter any order which 
may be appropriate.
    (e) The administrative patent judge may determine a proper course of 
conduct in an interference for any situation not specifically covered by 
this part.

[60 FR 14520, Mar. 17, 1995]



Sec. 1.611  Declaration of interference.

    (a) Notice of declaration of an interference will be sent to each 
party.
    (b) When a notice of declaration is returned to the Patent and 
Trademark Office undelivered, or in any other circumstance where 
appropriate, an administrative patent judge may send a copy of the 
notice to a patentee named in a patent involved in an interference or 
the patentee's assignee of record in the Patent and Trademark Office or 
order publication of an appropriate notice in the Official Gazette.

[[Page 119]]

    (c) The notice of declaration shall specify:
    (1) The name and residence of each party involved in the 
interference;
    (2) The name and address of record of any attorney or agent of 
record in any application or patent involved in the interference;
    (3) The name of any assignee of record in the Patent and Trademark 
Office;
    (4) The identity of any application or patent involved in the 
interference;
    (5) Where a party is accorded the benefit of the filing date of an 
earlier application, the identity of the earlier application;
    (6) The count or counts and, if there is more than one count, the 
examiner's explanation why the counts define different patentable 
inventions;
    (7) The claim or claims of any application or any patent which 
correspond to each count;
    (8) The examiner's explanation as to why each claim designated as 
corresponding to a count is directed to the same patentable invention as 
the count and why each claim designated as not corresponding to any 
count is not directed to the same patentable invention as any count; and
    (9) The order of the parties.
    (d) The notice of declaration may also specify the time for:
    (1) Filing a preliminary statement as provided in Sec. 1.621(a);
    (2) Serving notice that a preliminary statement has been filed as 
provided in Sec. 1.621(b); and
    (3) Filing preliminary motions authorized by Sec. 1.633.
    (e) Notice may be given in the Official Gazette that an interference 
has been declared involving a patent.

[49 FR 48455, Dec. 12, 1984; 50 FR 23123, May 31, 1985, as amended at 60 
FR 14521, Mar. 17, 1995]



Sec. 1.612  Access to applications.

    (a) After an interference is declared, each party shall have access 
to and may obtain copies of the files of any application set out in the 
notice declaring the interference, except for affidavits filed under 
Sec. 1.131 and any evidence and explanation under Sec. 1.608 filed 
separate from an amendment. A party seeking access to any abandoned or 
pending application referred to in the opponent's involved application 
or access to any pending application referred to in the opponent's 
patent must file a motion under Sec. 1.635. See Sec. 1.11(e) concerning 
public access to interference files.
    (b) After preliminary motions under Sec. 1.633 are decided 
(Sec. 1.640(b)), each party shall have access to and may obtain copies 
of any affidavit filed under Sec. 1.131 and any evidence and explanation 
filed under Sec. 1.608 in any application set out in the notice 
declaring the interference.
    (c) Any evidence and explanation filed under Sec. 1.608 in the file 
of any application identified in the notice declaring the interference 
shall be served when required by Sec. 1.617(b).
    (d) The parties at any time may agree to exchange copies of papers 
in the files of any application identified in the notice declaring the 
interference.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 53 
FR 23735, June 23, 1988; 60 FR 14521, Mar. 17, 1995]



Sec. 1.613  Lead attorney, same attorney representing different parties in an interference, withdrawal of attorney or agent.

    (a) Each party may be required to designate one attorney or agent of 
record as the lead attorney or agent.
    (b) The same attorney or agent or members of the same firm of 
attorneys or agents may not represent two or more parties in an 
interference except as may be permitted under this chapter.
    (c) An administrative patent judge may make necessary inquiry to 
determine whether an attorney or agent should be disqualified from 
representing a party in an interference. If an administrative patent 
judge is of the opinion that an attorney or agent should be 
disqualified, the administrative patent judge shall refer the matter to 
the Commissioner. The Commissioner will make a final decision as to 
whether any attorney or agent should be disqualified.
    (d) No attorney or agent of record in an interference may withdraw 
as attorney or agent of record except with the approval of an 
administrative patent

[[Page 120]]

judge and after reasonable notice to the party on whose behalf the 
attorney or agent has appeared. A request to withdraw as attorney or 
agent of record in an interference shall be made by motion (Sec. 1.635).

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14521, Mar. 17, 1995]



Sec. 1.614  Jurisdiction over interference.

    (a) The Board acquires jurisdiction over an interference when the 
interference is declared under Sec. 1.611.
    (b) When the interference is declared the interference is a 
contested case within the meaning of 35 U.S.C. 24.
    (c) The examiner shall have jurisdiction over any pending 
application until the interference is declared. An administrative patent 
judge may for a limited purpose restore jurisdiction to the examiner 
over any application involved in the interference.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14521, Mar. 17, 1995]



Sec. 1.615  Suspension of ex parte prosecution.

    (a) When an interference is declared, ex parte prosecution of an 
application involved in the interference is suspended. Amendments and 
other papers related to the application received during pendency of the 
interference will not be entered or considered in the interference 
without the consent of an administrative patent judge.
    (b) Ex parte prosecution as to specified matters may be continued 
concurrently with the interference with the consent of the 
administrative patent judge.

[60 FR 14521, Mar. 17, 1995]



Sec. 1.616  Sanctions for failure to comply with rules or order or for taking and maintaining a frivolous position.

    (a) An administrative patent judge or the Board may impose an 
appropriate sanction against a party who fails to comply with the 
regulations of this part or any order entered by an administrative 
patent judge or the Board. An appropriate sanction may include among 
others entry of an order:
    (1) Holding certain facts to have been established in the 
interference;
    (2) Precluding a party from filing a paper;
    (3) Precluding a party from presenting or contesting a particular 
issue;
    (4) Precluding a party from requesting, obtaining, or opposing 
discovery;
    (5) Awarding compensatory expenses and/or compensatory attorney 
fees; or
    (6) Granting judgment in the interference.
    (b) An administrative patent judge or the Board may impose a 
sanction, including a sanction in the form of compensatory expenses and/
or compensatory attorney fees, against a party for taking and 
maintaining a frivolous position in papers filed in the interference.
    (c) To the extent that an administrative patent judge or the Board 
has authorized a party to compel the taking of testimony or the 
production of documents or things from an individual or entity located 
in a NAFTA country or a WTO member country concerning knowledge, use, or 
other activity relevant to proving or disproving a date of invention 
(Sec. 1.671(h)), but the testimony, documents or things have not been 
produced for use in the interference to the same extent as such 
information could be made available in the United States, the 
administrative patent judge or the Board shall draw such adverse 
inferences as may be appropriate under the circumstances, or take such 
other action permitted by statute, rule, or regulation, in favor of the 
party that requested the information in the interference, including 
imposition of appropriate sanctions under paragraph (a) of this section.
    (d) A party may file a motion (Sec. 1.635) for entry of an order 
imposing sanctions, the drawing of adverse inferences or other action 
under paragraph (a), (b) or (c) of this section. Where an administrative 
patent judge or the Board on its own initiative determines that a 
sanction, adverse inference or other action against a party may be 
appropriate under paragraph (a), (b) or (c) of this section, the 
administrative patent judge or the Board shall enter an order for the 
party to show cause why the sanction, adverse inference or other action 
is not appropriate. The Board shall take action in accordance with

[[Page 121]]

the order unless, within 20 days after the date of the order, the party 
files a paper which shows good cause why the sanction, adverse inference 
or other action would not be appropriate.

[60 FR 14521, Mar. 17, 1995]



Sec. 1.617  Summary judgment against applicant.

    (a) An administrative patent judge shall review any evidence filed 
by an applicant under Sec. 1.608(b) to determine if the applicant is 
prima facie entitled to a judgment relative to the patentee. If the 
administrative patent judge determines that the evidence shows the 
applicant is prima facie entitled to a judgment relative to the 
patentee, the interference shall proceed in the normal manner under the 
regulations of this part. If in the opinion of the administrative patent 
judge the evidence fails to show that the applicant is prima facie 
entitled to a judgment relative to the patentee, the administrative 
patent judge shall, concurrently with the notice declaring the 
interference, enter an order stating the reasons for the opinion and 
directing the applicant, within a time set in the order, to show cause 
why summary judgment should not be entered against the applicant.
    (b) The applicant may file a response to the order, which may 
include an appropriate preliminary motion under Sec. 1.633 (c), (f) or 
(g), and state any reasons why summary judgment should not be entered. 
Any request by the applicant for a hearing before the Board shall be 
made in the response. Additional evidence shall not be presented by the 
applicant or considered by the Board unless the applicant shows good 
cause why any additional evidence was not initially presented with the 
evidence filed under Sec. 1.608(b). At the time an applicant files a 
response, the applicant shall serve a copy of any evidence filed under 
Sec. 1.608(b) and this paragraph.
    (c) If a response is not timely filed by the applicant, the Board 
shall enter a final decision granting summary judgment against the 
applicant.
    (d) If a response is timely filed by the applicant, all opponents 
may file a statement and may oppose any preliminary motion filed under 
Sec. 1.633 (c), (f) or (g) by the applicant within a time set by the 
administrative patent judge. The statement may set forth views as to why 
summary judgment should be granted against the applicant, but the 
statement shall be limited to discussing why all the evidence presented 
by the applicant does not overcome the reasons given by the 
administrative patent judge for issuing the order to show cause. Except 
as required to oppose a motion under Sec. 1.633 (c), (f) or (g) by the 
applicant, evidence shall not be filed by any opponent. An opponent may 
not request a hearing.
    (e) Within a time authorized by the administrative patent judge, an 
applicant may file a reply to any statement or opposition filed by any 
opponent.
    (f) When more than two parties are involved in an interference, all 
parties may participate in summary judgment proceedings under this 
section.
    (g) If a response by the applicant is timely filed, the 
administrative patent judge or the Board shall decide whether the 
evidence submitted under Sec. 1.608(b) and any additional evidence 
properly submitted under paragraphs (b) and (e) of this section shows 
that the applicant is prima facie entitled to a judgment relative to the 
patentee. If the applicant is not prima facie entitled to a judgment 
relative to the patentee, the Board shall enter a final decision 
granting summary judgment against the applicant. Otherwise, an 
interlocutory order shall be entered authorizing the interference to 
proceed in the normal manner under the regulations of this subpart.
    (h) Only an applicant who filed evidence under Sec. 1.608(b) may 
request a hearing. If that applicant requests a hearing, the Board may 
hold a hearing prior to entry of a decision under paragraph (g) of this 
section. The administrative patent judge shall set a date and time for 
the hearing. Unless otherwise ordered by the administrative patent judge 
or the Board, the applicant and any opponent will each be entitled to no 
more than 30 minutes of oral argument at the hearing.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14522, Mar. 17, 1995]

[[Page 122]]



Sec. 1.618  Return of unauthorized papers.

    (a) An administrative patent judge or the Board shall return to a 
party any paper presented by the party when the filing of the paper is 
not authorized by, or is not in compliance with the requirements of, 
this subpart. Any paper returned will not thereafter be considered in 
the interference. A party may be permitted to file a corrected paper 
under such conditions as may be deemed appropriate by an administrative 
patent judge or the Board.
    (b) When presenting a paper in an interference, a party shall not 
submit with the paper a copy of a paper previously filed in the 
interference.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14522, Mar. 17, 1995]



Sec. 1.621  Preliminary statement, time for filing, notice of filing.

    (a) Within the time set for filing preliminary motions under 
Sec. 1.633, each party may file a preliminary statement. The preliminary 
statement may be signed by any individual having knowledge of the facts 
recited therein or by an attorney or agent of record.
    (b) When a party files a preliminary statement, the party shall also 
simultaneously file and serve on all opponents in the interference a 
notice stating that a preliminary statement has been filed. A copy of 
the preliminary statement need not be served until ordered by the 
administrative patent judge.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14522, Mar. 17, 1995]



Sec. 1.622  Preliminary statement, who made invention, where invention made.

    (a) A party's preliminary statement must identify the inventor who 
made the invention defined by each count and must state on behalf of the 
inventor the facts required by paragraph (a) of Secs. 1.623, 1.624, and 
1.625 as may be appropriate. When an inventor identified in the 
preliminary statement is not an inventor named in the party's 
application or patent, the party shall file a motion under Sec. 1.634 to 
correct inventorship.
    (b) The preliminary statement shall state whether the invention was 
made in the United States, a NAFTA country (and, if so, which NAFTA 
country), a WTO member country (and, if so, which WTO member country), 
or in a place other than the United States, a NAFTA country, or a WTO 
member country. If made in a place other than the United States, a NAFTA 
country, or a WTO member country, the preliminary statement shall state 
whether the party is entitled to the benefit of 35 U.S.C. 104(a)(2).

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14522, Mar. 17, 1995]



Sec. 1.623  Preliminary statement; invention made in United States, a NAFTA country, or a WTO member country.

    (a) When the invention was made in the United States, a NAFTA 
country, or a WTO member country, or a party is entitled to the benefit 
of 35 U.S.C. 104(a)(2), the preliminary statement must state the 
following facts as to the invention defined by each count:
    (1) The date on which the first drawing of the invention was made.
    (2) The date on which the first written description of the invention 
was made.
    (3) The date on which the invention was first disclosed by the 
inventor to another person.
    (4) The date on which the invention was first conceived by the 
inventor.
    (5) The date on which the invention was first actually reduced to 
practice. If the invention was not actually reduced to practice by or on 
behalf of the inventor prior to the party's filing date, the preliminary 
statement shall so state.
    (6) The date after the inventor's conception of the invention when 
active exercise of reasonable diligence toward reducing the invention to 
practice began.
    (b) If a party intends to prove derivation, the preliminary 
statement must also comply with Sec. 1.625.
    (c) When a party alleges under paragraph (a)(1) of this section that 
a drawing was made, a copy of the first drawing shall be filed with and 
identified in the preliminary statement. When a party alleges under 
paragraph (a)(2) of

[[Page 123]]

this section that a written description of the invention was made, a 
copy of the first written description shall be filed with and identified 
in the preliminary statement. See Sec. 1.628(b) when a copy of the first 
drawing or written description cannot be filed with the preliminary 
statement.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14522, Mar. 17, 1995]



Sec. 1.624  Preliminary statement; invention made in a place other than the United States, a NAFTA country, or a WTO member country.

    (a) When the invention was made in a place other than the United 
States, a NAFTA country, or a WTO member country and a party intends to 
rely on introduction of the invention into the United States, a NAFTA 
country, or a WTO member country, the preliminary statement must state 
the following facts as to the invention defined by each count:
    (1) The date on which a drawing of the invention was first 
introduced into the United States, a NAFTA country, or a WTO member 
country.
    (2) The date on which a written description of the invention was 
first introduced into the United States, a NAFTA country, or a WTO 
member country.
    (3) The date on which the invention was first disclosed to another 
person in the United States, a NAFTA country, or a WTO member country.
    (4) The date on which the inventor's conception of the invention was 
first introduced into the United States, a NAFTA country, or a WTO 
member country.
    (5) The date on which an actual reduction to practice of the 
invention was first introduced into the United States, a NAFTA country, 
or a WTO member country. If an actual reduction to practice of the 
invention was not introduced into the United States, a NAFTA country, or 
a WTO member country, the preliminary amendment shall so state.
    (6) The date after introduction of the inventor's conception into 
the United States, a NAFTA country, or a WTO member country when active 
exercise of reasonable diligence in the United States, a NAFTA country, 
or a WTO member country toward reducing the invention to practice began.
    (b) If a party intends to prove derivation, the preliminary 
statement must also comply with Sec. 1.625.
    (c) When a party alleges under paragraph (a)(1) of this section that 
a drawing was introduced into the United States, a NAFTA country, or a 
WTO member country, a copy of that drawing shall be filed with and 
identified in the preliminary statement. When a party alleges under 
paragraph (a)(2) of this section that a written description of the 
invention was introduced into the United States, a NAFTA country, or a 
WTO member country, a copy of that written description shall be filed 
with and identified in the preliminary statement. See Sec. 1.628(b) when 
a copy of the first drawing or first written description introduced in 
the United States, a NAFTA country, or a WTO member country cannot be 
filed with the preliminary statement.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14523, Mar. 17, 1995]



Sec. 1.625  Preliminary statement; derivation by an opponent.

    (a) When a party intends to prove derivation by an opponent from the 
party, the preliminary statement must state the following as to the 
invention defined by each count:
    (1) The name of the opponent.
    (2) The date on which the first drawing of the invention was made.
    (3) The date on which the first written description of the invention 
was made.
    (4) The date on which the invention was first disclosed by the 
inventor to another person.
    (5) The date on which the invention was first conceived by the 
inventor.
    (6) The date on which the invention was first communicated to the 
opponent.
    (b) If a party intends to prove priority, the preliminary statement 
must also comply with Sec. 1.623 or Sec. 1.624.
    (c) When a party alleges under paragraph (a)(2) of this section that 
a drawing was made, a copy of the first drawing shall be filed with and 
identified in the preliminary statement. When a party alleges under 
paragraph (a)(3) of

[[Page 124]]

this section that a written description of the invention was made, a 
copy of the first written description shall be filed with and identified 
in the preliminary statement. See Sec. 1.628(b) when a first drawing or 
first written description cannot be filed with the preliminary 
statement.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14523, Mar. 17, 1995]



Sec. 1.626  Preliminary statement; earlier application.

    When a party does not intend to present evidence to prove a 
conception or an actual reduction to practice and the party intends to 
rely solely on the filing date of an earlier filed application to prove 
a constructive reduction to practice, the preliminary statement may so 
state and identify the earlier filed application with particularity.

[60 FR 14523, Mar. 17, 1995]



Sec. 1.627  Preliminary statement; sealing before filing, opening of statement.

    (a) The preliminary statement and copies of any drawing or written 
description shall be filed in a sealed envelope bearing only the name of 
the party filing the statement and the style (e.g., Jones v. Smith) and 
number of the interference. The sealed envelope should contain only the 
preliminary statement and copies of any drawing or written description. 
If the preliminary statement is filed through the mail, the sealed 
envelope should be enclosed in an outer envelope addressed to the 
Commission of Patents and Trademarks in accordance with Sec. 1.1(e).
    (b) A preliminary statement may be opened only at the direction of 
an administrative patent judge.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14523, Mar. 17, 1995]



Sec. 1.628  Preliminary statement; correction of error.

    (a) A material error arising through inadvertence or mistake in 
connection with a preliminary statement or drawings or a written 
description submitted therewith or omitted therefrom may be corrected by 
a motion (Sec. 1.635) for leave to file a corrected statement. The 
motion shall be supported by an affidavit stating the date the error was 
first discovered, shall be accompanied by the corrected statement and 
shall be filed as soon as practical after discovery of the error. If 
filed on or after the date set by the administrative patent judge for 
service of preliminary statements, the motion shall also show that 
correction of the error is essential to the interest of justice.
    (b) When a party cannot attach a copy of a drawing or written 
description to the party's preliminary statement as required by 
Sec. 1.623(c), Sec. 1.624(c) or Sec. 1.625(c), the party shall show good 
cause and explain in the preliminary statement why a copy of the drawing 
or written description cannot be attached to the preliminary statement 
and shall attach to the preliminary statement the earliest drawing or 
written description made in or introduced into the United States, a 
NAFTA country, or a WTO member country which is available. The party 
shall file a motion (Sec. 1.635) to amend its preliminary statement 
promptly after the first drawing, first written description, or drawing 
or written description first introduced into the United States, a NAFTA 
country, or a WTO member country becomes available. A copy of the 
drawing or written description may be obtained, where appropriate, by a 
motion (Sec. 1.635) for additional discovery under Sec. 1.687 or during 
a testimony period.

[60 FR 14523, Mar. 17, 1995]



Sec. 1.629  Effect of preliminary statement.

    (a) A party shall be strictly held to any date alleged in the 
preliminary statement. Doubts as to definiteness or sufficiency of any 
allegation in a preliminary statement or compliance with formal 
requirements will be resolved against the party filing the statement by 
restricting the party to its effective filing date or to the latest date 
of a period alleged in the preliminary statement, as may be appropriate. 
A party may not correct a preliminary statement except as provided by 
Sec. 1.628.
    (b) Evidence which shows that an act alleged in the preliminary 
statement occurred prior to the date alleged in the statement shall 
establish only that the act occurred as early as the date alleged in the 
statement.

[[Page 125]]

    (c) If a party does not file a preliminary statement, the party:
    (1) Shall be restricted to the party's effective filing date and
    (2) Will not be permitted to prove that:
    (i) The party made the invention prior to the party's filing date or
    (ii) Any opponent derived the invention from the party.
    (d) If a party files a preliminary statement which contains an 
allegation of a date of first drawing or first written description and 
the party does not file a copy of the first drawing or written 
description with the preliminary statement as required by Sec. 1.623(c), 
Sec. 1.624(c), or Sec. 1.625(c), the party will be restricted to the 
party's effective filing date as to that allegation unless the party 
complies with Sec. 1.628(b). The content of any drawing or written 
description submitted with a preliminary statement will not normally be 
evaluated or considered by the Board.
    (e) A preliminary statement shall not be used as evidence on behalf 
of the party filing the statement.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14523, Mar. 17, 1995]



Sec. 1.630  Reliance on earlier application.

    A party shall not be entitled to rely on the filing date of an 
earlier filed application unless the earlier application is identified 
(Sec. 1.611(c)(5)) in the notice declaring the interference or the party 
files a preliminary motion under Sec. 1.633 seeking the benefit of the 
filing date of the earlier application.

[60 FR 14524, Mar. 17, 1995]



Sec. 1.631  Access to preliminary statement, service of preliminary statement.

    (a) Unless otherwise ordered by an administrative patent judge, 
concurrently with entry of a decision on preliminary motions filed under 
Sec. 1.633 any preliminary statement filed under Sec. 1.621(a) shall be 
opened to inspection by the senior party and any junior party who filed 
a preliminary statement. Within a time set by the administrative patent 
judge, a party shall serve a copy of its preliminary statement on each 
opponent who served a notice under Sec. 1.621(b).
    (b) A junior party who does not file a preliminary statement shall 
not have access to the preliminary statement of any other party.
    (c) If an interference is terminated before the preliminary 
statements have been opened, the preliminary statements will remain 
sealed and will be returned to the respective parties who submitted the 
statements.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14524, Mar. 17, 1995]



Sec. 1.632  Notice of intent to argue abandonment, suppression or concealment by opponent.

    A notice shall be filed by a party who intends to argue that an 
opponent has abandoned, suppressed, or concealed an actual reduction to 
practice (35 U.S.C. 102(g)). A party will not be permitted to argue 
abandonment, suppression, or concealment by an opponent unless the 
notice is timely filed. Unless authorized otherwise by an administrative 
patent judge, a notice is timely when filed within ten (10) days after 
the close of the testimony-in-chief of the opponent.

[60 FR 14524, Mar. 17, 1995]



Sec. 1.633  Preliminary motions.

    A party may file the following preliminary motions:
    (a) A motion for judgment against an opponent's claim designated to 
correspond to a count on the ground that the claim is not patentable to 
the opponent. The motion shall separately address each claim alleged to 
be unpatentable. In deciding an issue raised in a motion filed under 
this paragraph (a), a claim will be construed in light of the 
specification of the application or patent in which it appears. A motion 
under this paragraph shall not be based on:
    (1) Priority of invention by the moving party as against any 
opponent or
    (2) Derivation of the invention by an opponent from the moving 
party. See Sec. 1.637(a).
    (b) A motion for judgment on the ground that there is no 
interference-in-fact. A motion under this paragraph is proper only if 
the interference involves a design application or patent or a plant 
application or patent or no claim

[[Page 126]]

of a party which corresponds to a count is identical to any claim of an 
opponent which corresponds to that count. See Sec. 1.637(a). When claims 
of different parties are presented in ``means plus function'' format, it 
may be possible for the claims of the different parties not to define 
the same patentable invention even though the claims contain the same 
literal wording.
    (c) A motion to redefine the interfering subject matter by (1) 
adding or substituting a count, (2) amending an application claim 
corresponding to a count or adding a claim in the moving party's 
application to be designated to correspond to a count, (3) designating 
an application or patent claim to correspond to a count, (4) designating 
an application or patent claim as not corresponding to a count, or (5) 
requiring an opponent who is an applicant to add a claim and to 
designate the claim to correspond to a count. See Sec. 1.637 (a) and 
(c).
    (d) A motion to substitute a different application owned by a party 
for an application involved in the interference. See Sec. 1.637 (a) and 
(d).
    (e) A motion to declare an additional interference (1) between an 
additional application not involved in the interference and owned by a 
party and an opponent's application or patent involved in the 
interference or (2) when an interference involves three or more parties, 
between less than all applications and any patent involved in the 
interference. See Sec. 1.637 (a) and (e).
    (f) A motion to be accorded the benefit of the filing date of an 
earlier filed application. See Sec. 1.637 (a) and (f).
    (g) A motion to attack the benefit accorded an opponent in the 
notice declaring the interference of the filing date of an earlier filed 
application. See Sec. 1.637 (a) and (g).
    (h) When a patent is involved in an interference and the patentee 
has on file or files an application for reissue under Sec. 1.171, a 
motion to add the application for reissue to the interference. See 
Sec. 1.637 (a) and (h).
    (i) When a motion is filed under paragraph (a), (b), or (g) of this 
section, an opponent, in addition to opposing the motion, may file a 
motion to redefine the interfering subject matter under paragraph (c) of 
this section, a motion to substitute a different application under 
paragraph (d) of this section, or a motion to add a reissue application 
to the interference under paragraph (h) of this section.
    (j) When a motion is filed under paragraph (c)(1) of this section an 
opponent, in addition to opposing the motion, may file a motion for 
benefit under paragraph (f) of this section as to the count to be added 
or substituted.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14524, Mar. 17, 1995]



Sec. 1.634  Motion to correct inventorship.

    A party may file a motion to (a) amend its application involved in 
an interference to correct inventorship as provided by Sec. 1.48 or (b) 
correct inventorship of its patent involved in an interference as 
provided in Sec. 1.324. See Sec. 1.637(a).



Sec. 1.635  Miscellaneous motions.

    A party seeking entry of an order relating to any matter other than 
a matter which may be raised under Sec. 1.633 or Sec. 1.634 may file a 
motion requesting entry of the order. See Sec. 1.637 (a) and (b).



Sec. 1.636  Motions, time for filing.

    (a) A preliminary motion under Sec. 1.633 (a) through (h) shall be 
filed within a time period set by an administrative patent judge.
    (b) A preliminary motion under Sec. 1.633 (i) or (j) shall be filed 
within 20 days of the service of the preliminary motion under Sec. 1.633 
(a), (b), (c)(1), or (g) unless otherwise ordered by an administrative 
patent judge.
    (c) A motion under Sec. 1.634 shall be diligently filed after an 
error is discovered in the inventorship of an application or patent 
involved in an interference unless otherwise ordered by an 
administrative patent judge.
    (d) A motion under Sec. 1.635 shall be filed as specified in this 
subpart or when appropriate unless otherwise ordered by an 
administrative patent judge.

[60 FR 14524, Mar. 17, 1995]

[[Page 127]]



Sec. 1.637  Content of motions.

    (a) A party filing a motion has the burden of proof to show that it 
is entitled to the relief sought in the motion. Each motion shall 
include a statement of the precise relief requested, a statement of the 
material facts in support of the motion, in numbered paragraphs, and a 
full statement of the reasons why the relief requested should be 
granted. If a party files a motion for judgment under Sec. 1.633(a) 
against an opponent based on the ground of unpatentability over prior 
art, and the dates of the cited prior art are such that the prior art 
appears to be applicable to the party, it will be presumed, without 
regard to the dates alleged in the preliminary statement of the party, 
that the cited prior art is applicable to the party unless there is 
included with the motion an explanation, and evidence if appropriate, as 
to why the prior art does not apply to the party.
    (b) Unless otherwise ordered by an administrative patent judge or 
the Board, a motion under Sec. 1.635 shall contain a certificate by the 
moving party stating that the moving party has conferred with all 
opponents in an effort in good faith to resolve by agreement the issues 
raised by the motion. The certificate shall indicate whether any 
opponent plans to oppose the motion. The provisions of this paragraph do 
not apply to a motion to suppress evidence (Sec. 1.656(h)).
    (c) A preliminary motion under Sec. 1.633(c) shall explain why the 
interfering subject matter should be redefined.
    (1) A preliminary motion seeking to add or substitute a count shall:
    (i) Propose each count to be added or substituted.
    (ii) When the moving party is an applicant, show the patentability 
to the applicant of all claims in, or proposed to be added to, the 
party's application which correspond to each proposed count and apply 
the terms of the claims to the disclosure of the party's application; 
when necessary a moving party applicant shall file with the motion an 
amendment adding any proposed claim to the application.
    (iii) Identify all claims in an opponent's application which should 
be designated to correspond to each proposed count; if an opponent's 
application does not contain such a claim, the moving party shall 
propose a claim to be added to the opponent's application. The moving 
party shall show the patentability of any proposed claims to the 
opponent and apply the terms of the claims to the disclosure of the 
opponent's application.
    (iv) Designate the claims of any patent involved in the interference 
which define the same patentable invention as each proposed count.
    (v) Show that each proposed count defines a separate patentable 
invention from every other count proposed to remain in the interference.
    (vi) Be accompanied by a motion under Sec. 1.633(f) requesting the 
benefit of the filing date of any earlier filed application, if benefit 
of the earlier filed application is desired with respect to a proposed 
count.
    (vii) If an opponent is accorded the benefit of the filing date of 
an earlier filed application in the notice of declaration of the 
interference, show why the opponent is not also entitled to benefit of 
the earlier filed application with respect to the proposed count. 
Otherwise, the opponent will be presumed to be entitled to the benefit 
of the earlier filed application with respect to the proposed count.
    (2) A preliminary motion seeking to amend an application claim 
corresponding to a count or adding a claim to be designated to 
correspond to a count shall:
    (i) Propose an amended or added claim.
    (ii) Show that the claim proposed to be amended or added defines the 
same patentable invention as the count.
    (iii) Show the patentability to the applicant of each claim proposed 
to be amended or added and apply the terms of the claim proposed to be 
amended or added to the disclosure of the application; when necessary a 
moving party applicant shall file with the motion a proposed amendment 
to the application amending the claim corresponding to the count or 
adding the proposed additional claim to the application.
    (3) A preliminary motion seeking to designate an application or 
patent claim to correspond to a count shall:
    (i) Identify the claim and the count.

[[Page 128]]

    (ii) Show the claim defines the same patentable invention as another 
claim whose designation as corresponding to the count the moving party 
does not dispute.
    (4) A preliminary motion seeking to designate an application or 
patent claim as not corresponding to a count shall:
    (i) Identify the claim and the count.
    (ii) Show that the claim does not defined the same patentable 
invention as any other claim whose designation in the notice declaring 
the interference as corresponding to the count the party does not 
dispute.
    (5) A preliminary motion seeking to require an opponent who is an 
applicant to add a claim and designate the claim as corresponding to a 
count shall:
    (i) Propose a claim to be added by the opponent.
    (ii) Show the patentability to the opponent of the claim and apply 
the terms of the claim to the disclosure of the opponent's application.
    (iii) Identify the count to which the claim shall be designated to 
correspond.
    (iv) Show the claim defines the same patentable invention as the 
count to which it will be designated to correspond.
    (d) A preliminary motion under Sec. 1.633(d) to substitute a 
different application of the moving party shall:
    (1) Identify the different application.
    (2) Certify that a complete copy of the file of the different 
application, except for documents filed under Sec. 1.131 or Sec. 1.608, 
has been served on all opponents.
    (3) Show the patentability to the applicant of all claims in, or 
proposed to be added to, the different application which correspond to 
each count and apply the terms of the claims to the disclosure of the 
different application; when necessary the applicant shall file with the 
motion an amendment adding a claim to the different application.
    (e) A preliminary motion to declare an additional interference under 
Sec. 1.633(e) shall explain why an additional interference is necessary.
    (1) When the preliminary motion seeks an additional interference 
under Sec. 1.633(e)(1), the motion shall:
    (i) Identify the additional application.
    (ii) Certify that a complete copy of the file of the additional 
application, except for documents filed under Sec. 1.131 or Sec. 1.608, 
has been served on all opponents.
    (iii) Propose a count for the additional interference.
    (iv) Show the patentability to the applicant of all claims in, or 
proposed to be added to, the additional application which correspond to 
each proposed count for the additional interference and apply the terms 
of the claims to the disclosure of the additional application; when 
necessary the applicant shall file with the motion an amendment adding 
any claim to the additional application.
    (v) When the opponent is an applicant, show the patentability to the 
opponent of any claims in, or proposed to be added to, the opponent's 
application which correspond to the proposed count and apply the terms 
of the claims to the disclosure of the opponent's application.
    (vi) Identify all claims in the opponent's application or patent 
which should be designated to correspond to each proposed count; if the 
opponent's application does not contain any such claim, the motion shall 
propose a claim to be added to the opponent's application.
    (vii) Show that each proposed count for the additional interference 
defines a separate patentable invention from all counts of the 
interference in which the motion is filed.
    (viii) Be accompanied by a motion under Sec. 1.633(f) requesting the 
benefit of the filing date of an earlier filed application, if benefit 
is desired with respect to a proposed count.
    (ix) If an opponent is accorded the benefit of the filing date of an 
earlier filed application in the notice of declaration of the 
interference, show why the opponent is not also entitled to benefit of 
the earlier filed application with respect to the proposed count. 
Otherwise, the opponent will be presumed to be entitled to the benefit 
of the earlier filed application with respect to the proposed count.

[[Page 129]]

    (2) When the preliminary motion seeks an additional interference 
under Sec. 1.633(e)(2), the motion shall:
    (i) Identify any application or patent to be involved in the 
additional interference.
    (ii) Propose a count for the additional interference.
    (iii) When the moving party is an applicant, show the patentability 
to the applicant of all claims in, or proposed to be added to, the 
party's application which correspond to each proposed count and apply 
the terms of the claims to the disclosure of the party's application; 
when necessary a moving party applicant shall file with the motion an 
amendment adding any proposed claim to the application.
    (iv) Identify all claims in any opponent's application which should 
be designated to correspond to each proposed count; if an opponent's 
application does not contain such a claim, the moving party shall 
propose a claim to be added to the opponent's application. The moving 
party shall show the patentability of any proposed claim to the opponent 
and apply the terms of the claim to the disclosure of the opponent's 
application.
    (v) Designate the claims of any patent involved in the interference 
which define the same patentable invention as each proposed count.
    (vi) Show that each proposed count for the additional interference 
defines a separate patentable invention from all counts in the 
interference in which the motion is filed.
    (vii) Be accompanied by a motion under Sec. 1.633(f) requesting the 
benefit of the filing date of an earlier filed application, if benefit 
is desired with respect to a proposed count.
    (viii) If an opponent is accorded the benefit of the filing date of 
an earlier filed application in the notice of declaration of the 
interference, show why the opponent is not also entitled to benefit of 
the earlier filed application with respect to the proposed count. 
Otherwise, the opponent will be presumed to be entitled to the benefit 
of the earlier filed application with respect to the proposed count.
    (f) A preliminary motion for benefit under Sec. 1.633(f) shall:
    (1) Identify the earlier application.
    (2) When an earlier application is an application filed in the 
United States, certify that a complete copy of the file of the earlier 
application, except for documents filed under Sec. 1.131 or Sec. 1.608, 
has been served on all opponents. When the earlier application is an 
application filed in a foreign country, certify that a copy of the 
application has been served on all opponents. If the earlier filed 
application is not in English, the requirements of Sec. 1.647 must also 
be met.
    (3) Show that the earlier application constitutes a constructive 
reduction to practice of each count.
    (g) A preliminary motion to attack benefit under Sec. 1.633(g) shall 
explain, as to each count, why an opponent should not be accorded the 
benefit of the filing date of the earlier application.
    (h) A preliminary motion to add an application for reissue under 
Sec. 1.633(h) shall:
    (1) Identify the application for reissue.
    (2) Certify that a complete copy of the file of the application for 
reissue has been served on all opponents.
    (3) Show the patentability of all claims in, or proposed to be added 
to, the application for reissue which correspond to each count and apply 
the terms of the claims to the disclosure of the application for 
reissue; when necessary a moving applicant for reissue shall file with 
the motion an amendment adding any proposed claim to the application for 
reissue.
    (4) Be accompanied by a motion under Sec. 1.633(f) requesting the 
benefit of the filing date of any earlier filed application, if benefit 
is desired.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 53 
FR 23735, June 23, 1988; 58 FR 49434, Sept. 23, 1993; 60 FR 14524, Mar. 
17, 1995]



Sec. 1.638  Opposition and reply; time for filing opposition and reply.

    (a) Unless otherwise ordered by an administrative patent judge, any 
opposition to any motion shall be filed within 20 days after service of 
the motion. An opposition shall identify any material fact set forth in 
the motion which is in dispute and include an argument why the relief 
requested in the motion should be denied.

[[Page 130]]

    (b) Unless otherwise ordered by an administrative patent judge, any 
reply shall be filed within 15 days after service of the opposition. A 
reply shall be directed only to new points raised in the opposition.

[60 FR 14525, Mar. 17, 1995]



Sec. 1.639  Evidence in support of motion, opposition, or reply.

    (a) Except as provided in paragraphs (c) through (g) of this 
section, proof of any material fact alleged in a motion, opposition, or 
reply must be filed and served with the motion, opposition, or reply 
unless the proof relied upon is part of the interference file or the 
file of any patent or application involved in the interference or any 
earlier application filed in the United States of which a party has been 
accorded or seeks to be accorded benefit.
    (b) Proof may be in the form of patents, printed publications, and 
affidavits. The pages of any affidavits filed under this paragraph 
shall, to the extent possible, be given sequential numbers, which shall 
also serve as the record page numbers for the affidavits in the event 
they are included in the party's record (Sec. 1.653). Any patents and 
printed publications submitted under this paragraph and any exhibits 
identified in affidavits submitted under this paragraph shall, to the 
extent possible, be given sequential exhibit numbers, which shall also 
serve as the exhibit numbers in the event the patents, printed 
publications and exhibits are filed with the party's record 
(Sec. 1.653).
    (c) If a party believes that additional evidence in the form of 
testimony that is unavailable to the party is necessary to support or 
oppose a preliminary motion under Sec. 1.633 or a motion to correct 
inventorship under Sec. 1,634, the party shall describe the nature of 
any proposed testimony as specified in paragraphs (d) through (g) of 
this section. If the administrative patent judge finds that testimony is 
needed to decide the motion, the administrative patent judge may grant 
appropriate interlocutory relief and enter an order authorizing the 
taking of testimony and deferring a decision on the motion to final 
hearing.
    (d) When additional evidence in the form of expert-witness testimony 
is needed in support of or opposition to a preliminary motion, the 
moving party or opponent should:
    (1) Identify the person whom it expects to use as an expert;
    (2) State the field in which the person is alleged to be an expert; 
and
    (3) State:
    (i) The subject matter on which the person is expected to testify;
    (ii) The facts and opinions to which the person is expected to 
testify; and
    (iii) A summary of the grounds and basis for each opinion.
    (e) When additional evidence in the form of fact-witness testimony 
is necessary, state the facts to which the witness is expected to 
testify.
    (f) If the opponent is to be called, or if evidence in the 
possession of the opponent is necessary, explain the evidence sought, 
what it will show, and why it is needed.
    (g) When inter partes tests are to be performed, describe the tests 
stating what they will be expected to show.

[49 FR 48455, Dec. 12, 1984, as amended at 58 FR 49434, Sept. 23, 1993; 
60 FR 14525, Mar. 17, 1995]



Sec. 1.640  Motions, hearing and decision, redeclaration of interference, order to show cause.

    (a) A hearing on a motion may be held in the discretion of the 
administrative patent judge. The administrative patent judge shall set 
the date and time for any hearing. The length of oral argument at a 
hearing on a motion is a matter within the discretion of the 
administrative patent judge. An administrative patent judge may direct 
that a hearing take place by telephone.
    (b) Unless an administrative patent judge or the Board is of the 
opinion that an earlier decision on a preliminary motion would 
materially advance the resolution of the interference, decision on a 
preliminary motion shall be deferred to final hearing. Motions not 
deferred to final hearing will be decided by an administrative patent 
judge. An administrative patent judge may consult with an examiner in 
deciding motions. An administrative patent judge may take up motions for 
decisions in any order, may grant, deny, or dismiss any motion, and may 
take such other action which will secure the just,

[[Page 131]]

speedy, and inexpensive determination of the interference. A matter 
raised by a party in support of or in opposition to a motion that is 
deferred to final hearing will not be entitled to consideration at final 
hearing unless the matter is raised in the party's brief at final 
hearing. If the administrative patent judge determines that the 
interference shall proceed to final hearing on the issue of priority or 
derivation, a time shall be set for each party to file a paper 
identifying any decisions on motions or on matters raised sua sponte by 
the administrative patent judge that the party wishes to have reviewed 
at final hearing as well as identifying any deferred motions that the 
party wishes to have considered at final hearing. Any evidence that a 
party wishes to have considered with respect to the decisions and 
deferred motions identified by the party or by an opponent for 
consideration or review at final hearing shall be filed or, if 
appropriate, noticed under Sec. 1.671(e) during the testimony-in-chief 
period of the party.
    (1) When appropriate after the time expires for filing replies to 
oppositions to preliminary motions, the administrative patent judge will 
set a time for filing any amendment to an application involved in the 
interference and for filing a supplemental preliminary statement as to 
any new counts which may become involved in the interference if a 
preliminary motion to amend or substitute a count has been filed. 
Failure or refusal of a party to timely present an amendment required by 
an administrative patent judge shall be taken without further action as 
a disclaimer by that party of the invention involved. A supplemental 
preliminary statement shall meet the requirements specified in 
Sec. 1.623, 1.624, 1.625, or 1.626, but need not be filed if a party 
states that it intends to rely on a preliminary statement previously 
filed under Sec. 1.621(a). At an appropriate time in the interference, 
and when necessary, an order will be entered redeclaring the 
interference.
    (2) After the time expires for filing preliminary motions, a further 
preliminary motion under Sec. 1.633 will not be considered except as 
provided by Sec. 1.645(b).
    (c) When a decision on any motion under Sec. 1.633, 1.634, or 1.635 
or on any matter raised sua sponte by an administrative patent judge is 
entered which does not result in the issuance of an order to show cause 
under paragraph (d) of this section, a party may file a request for 
reconsideration within 14 days after the date of the decision. The 
request for reconsideration shall be filed and served by hand or Express 
Mail. The filing of a request for reconsideration will not stay any time 
period set by the decision. The request for reconsideration shall 
specify with particularity the points believed to have been 
misapprehended or overlooked in rendering the decision. No opposition to 
a request for reconsideration shall be filed unless requested by an 
administrative patent judge or the Board. A decision ordinarily will not 
be modified unless an opposition has been requested by an administrative 
patent judge or the Board. The request for reconsideration normally will 
be acted on by the administrative patent judge or the panel of the Board 
which issued the decision.
    (d) An administrative patent judge may issue an order to show cause 
why judgment should not be entered against a party when:
    (1) A decision on a motion or on a matter raised sua sponte by an 
administrative patent judge is entered which is dispositive of the 
interference against the party as to any count;
    (2) The party is a junior party who fails to file a preliminary 
statement; or
    (3) The party is a junior party whose preliminary statement fails to 
overcome the effective filing date of another party.
    (e) When an order to show cause is issued under paragraph (d) of 
this section, the Board shall enter judgment in accordance with the 
order unless, within 20 days after the date of the order, the party 
against whom the order issued files a paper which shows good cause why 
judgment should not be entered in accordance with the order.
    (1) If the order was issued under paragraph (d)(1) of this section, 
the paper may:
    (i) Request that final hearing be set to review any decision which 
is the basis for the order as well as any other

[[Page 132]]

decision of the administrative patent judge that the party wishes to 
have reviewed by the Board at final hearing or
    (ii) Fully explain why judgment should not be entered.
    (2) Any opponent may file a response to the paper within 20 days of 
the date of service of the paper. If the order was issued under 
paragraph (d)(1) of this section and the party's paper includes a 
request for final hearing, the opponent's response must identify every 
decision of the administrative patent judge that the opponent wishes to 
have reviewed by the Board at a final hearing. If the order was issued 
under paragraph (d)(1) of this section and the paper does not include a 
request for final hearing, the opponent's response may include a request 
for final hearing, which must identify every decision of the 
administrative patent judge that the opponent wishes to have reviewed by 
the Board at a final hearing. Where only the opponent's response 
includes a request for a final hearing, the party filing the paper 
shall, within 14 days from the date of service of the opponent's 
response, file a reply identifying any other decision of the 
administrative patent judge that the party wishes to have reviewed by 
the Board at a final hearing.
    (3) The paper or the response should be accompanied by a motion 
(Sec. 1.635) requesting a testimony period if either party wishes to 
introduce any evidence to be considered at final hearing (Sec. 1.671). 
Any evidence that a party wishes to have considered with respect to the 
decisions and deferred motions identified for consideration or review at 
final hearing shall be filed or, if appropriate, noticed under 
Sec. 1.671(e) during the testimony period of the party. A request for a 
testimony period shall be construed as including a request for final 
hearing.
    (4) If the paper contains an explanation of why judgment should not 
be entered in accordance with the order, and if no party has requested a 
final hearing, the decision that is the basis for the order shall be 
reviewed based on the contents of the paper and the response. If the 
paper fails to show good cause, the Board shall enter judgment against 
the party against whom the order issued.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14525, Mar. 17, 1995]



Sec. 1.641  Unpatentability discovered by administrative patent judge.

    (a) During the pendency of an interference, if the administrative 
patent judge becomes aware of a reason why a claim designated to 
correspond to a count may not be patentable, the administrative patent 
judge may enter an order notifying the parties of the reason and set a 
time within which each party may present its views, including any 
argument and any supporting evidence, and, in the case of the party 
whose claim may be unpatentable, any appropriate preliminary motions 
under Secs. 1.633 (c), (d) and (h).
    (b) If a party timely files a preliminary motion in response to the 
order of the administrative patent judge, any opponent may file an 
opposition (Sec. 1.638(a)). If an opponent files an opposition, the 
party may reply (Sec. 1.638(b)).
    (c) After considering any timely filed views, including any timely 
filed preliminary motions under Sec. 1.633, oppositions and replies, the 
administrative patent judge shall decide how the interference shall 
proceed.

[60 FR 14526, Mar. 17, 1995]



Sec. 1.642  Addition of application or patent to interference.

    During the pendency of an interference, if the administrative patent 
judge becomes aware of an application or a patent not involved in the 
interference which claims the same patentable invention as a count in 
the interference, the administrative patent judge may add the 
application or patent to the interference on such terms as may be fair 
to all parties.

[60 FR 14526, Mar. 17, 1995]



Sec. 1.643  Prosecution of interference by assignee.

    (a) An assignee of record in the Patent and Trademark Office of the 
entire interest in an application or patent involved in an interference 
is entitled to conduct prosecution of the interference to the exclusion 
of the inventor.

[[Page 133]]

    (b) An assignee of a part interest in an application or patent 
involved in an interference may file a motion (Sec. 1.635) for entry of 
an order authorizing it to prosecute the interference. The motion shall 
show the inability or refusal of the inventor to prosecute the 
interference or other cause why it is in the interest of justice to 
permit the assignee of a part interest to prosecute the interference. 
The administrative patent judge may allow the assignee of a part 
interest to prosecute the interference upon such terms as may be 
appropriate.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14527, Mar. 17, 1995]



Sec. 1.644  Petitions in interferences.

    (a) There is no appeal to the Commissioner in an interference from a 
decision of an administrative patent judge or the Board. The 
Commissioner will not consider a petition in an interference unless:
    (1) The petition is from a decision of an administrative patent 
judge or the Board and the administrative patent judge or the Board 
shall be of the opinion that the decision involves a controlling 
question of procedure or an interpretation of a rule as to which there 
is a substantial ground for a difference of opinion and that an 
immediate decision on petition by the Commissioner may materially 
advance the ultimate termination of the interference;
    (2) The petition seeks to invoke the supervisory authority of the 
Commissioner and does not relate to the merits of priority of invention 
or patentability or the admissibility of evidence under the Federal 
Rules of Evidence; or
    (3) The petition seeks relief under Sec. 1.183.
    (b) A petition under paragraph (a)(1) of this section filed more 
than 15 days after the date of the decision of the administrative patent 
judge or the Board may be dismissed as untimely. A petition under 
paragraph (a)(2) of this section shall not be filed prior to the party's 
brief for final hearing (see Sec. 1.656). Any petition under paragraph 
(a)(3) of this section shall be timely if it is filed simultaneously 
with a proper motion under Sec. 1.633, 1.634, or 1.635 when granting the 
motion would require waiver of a rule. Any opposition to a petition 
under paragraph (a)(1) or (a)(2) of this section shall be filed within 
20 days of the date of service of the petition. Any opposition to a 
petition under paragraph (a)(3) of this section shall be filed within 20 
days of the date of service of the petition or the date an opposition to 
the motion is due, whichever is earlier.
    (c) The filing of a petition shall not stay the proceeding unless a 
stay is granted in the discretion of the administrative patent judge, 
the Board, or the Commissioner.
    (d) Any petition must contain a statement of the facts involved, in 
numbered paragraphs, and the point or points to be reviewed and the 
action requested. The petition will be decided on the basis of the 
record made before the administrative patent judge or the Board, and no 
new evidence will be considered by the Commissioner in deciding the 
petition. Copies of documents already of record in the interference 
shall not be submitted with the petition or opposition.
    (e) Any petition under paragraph (a) of this section shall be 
accompanied by the petition fee set forth in Sec. 1.17(h).
    (f) Any request for reconsideration of a decision by the 
Commissioner shall be filed within 14 days of the decision of the 
Commissioner and must be accompanied by the fee set forth in 
Sec. 1.17(h). No opposition to a request for reconsideration shall be 
filed unless requested by the Commissioner. The decision will not 
ordinarily be modified unless such an opposition has been requested by 
the Commissioner.
    (g) Where reasonably possible, service of any petition, opposition, 
or request for reconsideration shall be such that delivery is 
accomplished within one working day. Service by hand or Express Mail 
complies with this paragraph.
    (h) An oral hearing on the petition will not be granted except when 
considered necessary by the Commissioner.
    (i) The Commissioner may delegate to appropriate Patent and 
Trademark Office employees the determination of petitions under this 
section.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14527, Mar. 17, 1995]

[[Page 134]]



Sec. 1.645  Extension of time, late papers, stay of proceedings.

    (a) Except to extend the time for filing a notice of appeal to the 
U.S. Court of Appeals for the Federal Circuit or for commencing a civil 
action, a party may file a motion (Sec. 1.635) seeking an extension of 
time to take action in an interference. See Sec. 1.304(a) for extensions 
of time for filing a notice of appeal to the U.S. Court of Appeals for 
the Federal Circuit or for commencing a civil action. The motion shall 
be filed within sufficient time to actually reach the administrative 
patent judge before expiration of the time for taking action. A moving 
party should not assume that the motion will be granted even if there is 
no objection by any other party. The motion will be denied unless the 
moving party shows good cause why an extension should be granted. The 
press of other business arising after an administrative patent judge 
sets a time for taking action will not normally constitute good cause. A 
motion seeking additional time to take testimony because a party has not 
been able to procure the testimony of a witness shall set forth the name 
of the witness, any steps taken to procure the testimony of the witness, 
the dates on which the steps were taken, and the facts expected to be 
proved through the witness.
    (b) Any paper belatedly filed will not be considered except upon 
notion (Sec. 1.635) which shows good cause why the paper was not timely 
filed, or where an administrative patent judge or the Board, sua sponte, 
is of the opinion that it would be in the interest of justice to 
consider the paper. See Sec. 1.304(a) for exclusive procedures relating 
to belated filing of a notice of appeal to the U.S. Court of Appeals for 
the Federal Circuit or belated commencement of a civil action.
    (c) The provisions of Sec. 1.136 do not apply to time periods in 
interferences.
    (d) An administrative patent judge may stay proceedings in an 
interference.

[49 FR 48455, Dec. 12, 1984, as amended at 54 FR 29553, July 13, 1989; 
60 FR 14527, Mar. 17, 1995]



Sec. 1.646  Service of papers, proof of service.

    (a) A copy of every paper filed in the Patent and Trademark Office 
in an interference or an application or patent involved in the 
interference shall be served upon all other parties except:
    (1) Preliminary statements when filed under Sec. 1.621; preliminary 
statements shall be served when service is ordered by an administrative 
patent judge.
    (2) Certified transcripts and exhibits which accompany the 
transcripts filed under Sec. 1.676; copies of transcripts shall be 
served as part of a party's record under Sec. 1.653(c).
    (b) Service shall be on an attorney or agent for a party. If there 
is no attorney or agent for the party, service shall be on the party. An 
administrative patent judge may order additional service or waive 
service where appropriate.
    (c) Unless otherwise ordered by an administrative patent judge, or 
except as otherwise provided by this subpart, service of a paper shall 
be made as follows:
    (1) By handing a copy of the paper or causing a copy of the paper to 
be handed to the person served.
    (2) By leaving a copy of the paper with someone employed by the 
person at the person's usual place of business.
    (3) When the person served has no usual place of business, by 
leaving a copy of the paper at the person's residence with someone of 
suitable age and discretion then residing therein.
    (4) By mailing a copy of the paper by first class mail; when service 
is by first class mail the date of mailing is regarded as the date of 
service.
    (5) By mailing a copy of the paper by Express Mail; when service is 
by Express Mail the date of deposit with the U.S. Postal Service is 
regarded as the date of service.
    (6) When it is shown to the satisfaction of an administrative patent 
judge that none of the above methods of obtaining or serving the copy of 
the paper was successful, the administrative patent judge may order 
service by publication of an appropriate notice in the Official Gazette.

[[Page 135]]

    (d) An administrative patent judge may order that a paper be served 
by hand or Express Mail.
    (e) The due date for serving a paper is the same as the due date for 
filing the paper in the Patent and Trademark Office. Proof of service 
must be made before a paper will be considered in an interference. Proof 
of service may appear on or be affixed to the paper. Proof of service 
shall include the date and manner of service. In the case of personal 
service under paragraphs (c)(1) through (c)(3) of this section, proof of 
service shall include the names of any person served and the person who 
made the service. Proof of service may be made by an acknowledgment of 
service by or on behalf of the person served or a statement signed by 
the party or the party's attorney or agent containing the information 
required by this section. A statement of an attorney or agent attached 
to, or appearing in, the paper stating the date and manner of service 
will be accepted as prima facie proof of service.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14527, Mar. 17, 1995]



Sec. 1.647  Translation of document in foreign language.

    When a party relies on a document or is required to produce a 
document in a language other than English, a translation of the document 
into English and an affidavit attesting to the accuracy of the 
translation shall be filed with the document.

[60 FR 14528, Mar. 17, 1995]



Sec. 1.651  Setting times for discovery and taking testimony, parties entitled to take testimony.

    (a) At an appropriate stage in an interference, an administrative 
patent judge shall set a time for filing motions (Sec. 1.635) for 
additional discovery under Sec. 1.687(c) and testimony periods for 
taking any necessary testimony.
    (b) Where appropriate, testimony periods will be set to permit a 
party to:
    (1) Present its case-in-chief and/or case-in-rebuttal and/or
    (2) Cross-examine an opponent's case-in-chief and/or a case-in-
rebuttal.
    (c) A party is not entitled to take testimony to present a case-in-
chief unless:
    (1) The administrative patent judge orders the taking of testimony 
under Sec. 1.639(c);
    (2) The party alleges in its preliminary statement a date of 
invention prior to the effective filing date of the senior party;
    (3) A testimony period has been set to permit an opponent to prove a 
date of invention prior to the effective filing date of the party and 
the party has filed a preliminary statement alleging a date of invention 
prior to that date; or
    (4) A motion (Sec. 1.635) is filed showing good cause why a 
testimony period should be set.
    (d) Testimony, including any testimony to be taken in a place 
outside the United States, shall be taken and completed during the 
testimony periods set under paragraph (a) of this section. A party 
seeking to extend the period for taking testimony must comply with 
Secs. 1.635 and 1.645(a).

[56 FR 42529, Aug. 28, 1991; 56 FR 46823, Sept. 16, 1991, as amended at 
60 FR 14528, Mar. 17, 1995]



Sec. 1.652  Judgment for failure to take testimony or file record.

    If a junior party fails to timely take testimony authorized under 
Sec. 1.651, or file a record under Sec. 1.653(c), an administrative 
patent judge, with or without a motion (Sec. 1.635) by another party, 
may issue an order to show cause why judgment should not be entered 
against the junior party. When an order is issued under this section, 
the Board shall enter judgment in accordance with the order unless, 
within 15 days after the date of the order, the junior party files a 
paper which shows good cause why judgment should not be entered in 
accordance with the order. Any other party may file a response to the 
paper within 15 days of the date of service of the paper. If the party 
against whom the order was issued fails to show good cause, the Board 
shall enter judgment against the party.

[60 FR 14528, Mar. 17, 1995]

[[Page 136]]



Sec. 1.653  Record and exhibits.

    (a) Testimony shall consist of affidavits under Secs. 1.672 (b), (c) 
and (g), 1.682(c), 1.683(b) and 1.688(b), transcripts of depositions 
under Secs. 1.671(g) and 1.672(a) when a deposition is authorized by an 
administrative patent judge, transcripts of depositions under 
Secs. 1.672(d), 1.682(d), 1.683(c) and 1.688(c), agreed statements under 
Sec. 1.672(h), transcripts of interrogatories, cross-interrogatories, 
and recorded answers and copies of written interrogatories and answers 
and written requests for admissions and answers under Sec. 1.688(a).
    (b) An affidavit shall be filed as set forth in Sec. 1.677. A 
certified transcript of a deposition, including a deposition cross-
examining an affiant, shall be filed as set forth in Secs. 1.676, 1.677 
and 1.678. An original agreed statement shall be filed as set forth in 
Sec. 1.672(h).
    (c) In addition to the items specified in paragraph (b) of this 
section and within a time set by an administrative patent judge, each 
party shall file three copies and serve one copy of a record consisting 
of:
    (1) An index of the names of the witnesses for the party, giving the 
pages of the record where the direct testimony and cross-examination of 
each witness begins.
    (2) An index of exhibits briefly describing the nature of each 
exhibit and giving the page of the record where each exhibit is first 
identified and offered into evidence.
    (3) The count or counts.
    (4) Each affidavit by a witness for the party, transcript, including 
transcripts of cross-examination of any affiant who testified for the 
party and transcripts of compelled deposition testimony by a witness for 
the party, agreed statement relied upon by the party, and transcript of 
interrogatories, cross-interrogatories and recorded answers.
    (5) [Reserved]
    (6) Any evidence from another interference, proceeding, or action 
relied upon by the party under Sec. 1.683.
    (7) Each request for an admission and the admission and each written 
interrogatory and the answer upon which a party intends to rely under 
Sec. 1.688.
    (d) The pages of the record shall be consecutively numbered to the 
extent possible.
    (e) The name of each witness shall appear at the top of each page of 
each affidavit or transcript.
    (f) [Reserved]
    (g) The record may be produced by standard typographical printing or 
by any other process capable of producing a clear black permanent image. 
All printed matter except on covers must appear in at least 11 point 
type on opaque, unglazed paper. Footnotes may not be printed in type 
smaller than 9 point. The page size shall be 21.8 by 27.9 cm. (8\1/2\ by 
11 inches) (letter size) with printed matter 16.5 by 24.1 cm. (6\1/2\ by 
9\1/2\ inches). The record shall be bound with covers at their left 
edges in such manner as to lie flat when open to any page and in one or 
more volumes of convenient size (approximately 100 pages per volume is 
suggested). When there is more than one volume, the numbers of the pages 
contained in each volume shall appear at the top of the cover for each 
volume.
    (h) [Reserved]
    (i) Each party shall file its exhibits with the record specified in 
paragraph (c) of this section. Exhibits include documents and things 
identified in affidavits or on the record during the taking of oral 
depositions as well as official records and publications filed by the 
party under Sec. 1.682(a). One copy of each documentary exhibit shall be 
served. Documentary exhibits shall be filed in an envelope or folder and 
shall not be bound as part of the record. Physical exhibits, if not 
filed by an officer under Sec. 1.676(d), shall be filed with the record. 
Each exhibit shall contain a label which identifies the party submitting 
the exhibit and an exhibit number, the style of the interference (e.g., 
Jones v. Smith), and the interference number. Where possible, the label 
should appear at the bottom right-hand corner of each documentary 
exhibit. Upon termination of an interference, an administrative patent 
judge may return an exhibit to the party filing the exhibit. When any 
exhibit is returned, an order shall be entered indicating that the 
exhibit has been returned.

[[Page 137]]

    (j) Any testimony, record, or exhibit which does not comply with 
this section may be returned under Sec. 1.618(a).

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14528, Mar. 17, 1995]



Sec. 1.654  Final hearing.

    (a) At an appropriate stage of the interference, the parties will be 
given an opportunity to appear before the Board to present oral argument 
at a final hearing. An administrative patent judge may set a date and 
time for final hearing. Unless otherwise ordered by an administrative 
patent judge or the Board, each party will be entitled to no more than 
30 minutes of oral argument at final hearing. A party who does not file 
a brief for final hearing (Sec. 1.656(a)) shall not be entitled to 
appear at final hearing.
    (b) The opening argument of a junior party shall include a fair 
statement of the junior party's case and the junior party's position 
with respect to the case presented on behalf of any other party. A 
junior party may reserve a portion of its time for rebuttal.
    (c) A party shall not be entitled to argue that an opponent 
abandoned, suppressed, or concealed an actual reduction to practice 
unless a notice under Sec. 1.632 was timely filed.
    (d) After final hearing, the interference shall be taken under 
advisement by the Board. No further paper shall be filed except under 
Sec. 1.658(b) or as authorized by an administrative patent judge or the 
Board. No additional oral argument shall be had unless ordered by the 
Board.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14529, Mar. 17, 1995]



Sec. 1.655  Matters considered in rendering a final decision.

    (a) In rendering a final decision, the Board may consider any 
properly raised issue, including priority of invention, derivation by an 
opponent from a party who filed a preliminary statement under 
Sec. 1.625, patentability of the invention, admissibility of evidence, 
any interlocutory matter deferred to final hearing, and any other matter 
necessary to resolve the interference. The Board may also consider 
whether an interlocutory order should be modified. The burden of showing 
that an interlocutory order should be modified shall be on the party 
attacking the order. The abuse of discretion standard shall apply only 
to procedural matters.
    (b) A party shall not be entitled to raise for consideration at 
final hearing any matter which properly could have been raised by a 
motion under Sec. 1.633 or 1.634 unless the matter was properly raised 
in a motion that was timely filed by the party under Sec. 1.633 or 1.634 
and the motion was denied or deferred to final hearing, the matter was 
properly raised by the party in a timely filed opposition to a motion 
under Sec. 1.633 or 1.634 and the motion was granted over the opposition 
or deferred to final hearing, or the party shows good cause why the 
issue was not properly raised by a timely filed motion or opposition. A 
party that fails to contest, by way of a timely filed preliminary motion 
under Sec. 1.633(c), the designation of a claim as corresponding to a 
count, or fails to timely argue the separate patentability of a 
particular claim when the ground for unpatentability is first raised, 
may not subsequently argue to an administrative patent judge or the 
Board the separate patentability of claims designated to correspond to 
the count with respect to that ground.
    (c) In the interest of justice, the Board may exercise its 
discretion to consider an issue even though it would not otherwise be 
entitled to consideration under this section.

[60 FR 14529, Mar. 17, 1995, as amended at 64 FR 12901, Mar. 16, 1999]



Sec. 1.656  Briefs for final hearing.

    (a) Each party shall be entitled to file briefs for final hearing. 
The administrative patent judge shall determine the briefs needed and 
shall set the time and order for filing briefs.
    (b) The opening brief of a junior party shall contain under 
appropriate headings and in the order indicated:
    (1) A statement of interest indicating the full name of every party 
represented by the attorney in the interference and the name of the real 
party in interest if the party named in the caption is not the real 
party in interest.

[[Page 138]]

    (2) A statement of related cases indicating whether the interference 
was previously before the Board for final hearing and the name and 
number of any related appeal or interference which is pending before, or 
which has been decided by, the Board, or which is pending before, or 
which has been decided by, the U.S. Court of Appeals for the Federal 
Circuit or a district court in a proceeding under 35 U.S.C. 146. A 
related appeal or interference is one which will directly affect or be 
directly affected by or have a bearing on the Board's decision in the 
pending interference.
    (3) A table of contents, with page references, and a table of cases 
(alphabetically arranged), statutes, and other authorities cited, with 
references to the pages of the brief where they are cited.
    (4) A statement of the issues presented for decision in the 
interference.
    (5) A statement of the facts, in numbered paragraphs, relevant to 
the issues presented for decision with appropriate references to the 
record.
    (6) An argument, which may be preceded by a summary, which shall 
contain the contentions of the party with respect to the issues it is 
raising for consideration at final hearing, and the reasons therefor, 
with citations to the cases, statutes, other authorities, and parts of 
the record relied on.
    (7) A short conclusion stating the precise relief requested.
    (8) An appendix containing a copy of the counts.
    (c) The opening brief of the senior party shall conform to the 
requirements of paragraph (b) of this section except:
    (1) A statement of the issues and of the facts need not be made 
unless the party is dissatisfied with the statement in the opening brief 
of the junior party and
    (2) An appendix containing a copy of the counts need not be included 
if the copy of the counts in the opening brief of the junior party is 
correct.
    (d) Unless ordered otherwise by an administrative patent judge, 
briefs shall be double-spaced (except for footnotes, which may be 
single-spaced) and shall comply with the requirements of Sec. 1.653(g) 
for records except the requirement for binding.
    (e) An original and four copies of each brief must be filed.
    (f) Any brief which does not comply with the requirements of this 
section may be returned under Sec. 1.618(a).
    (g) Any party, separate from its opening brief, but filed 
concurrently therewith, may file an original and four copies of concise 
proposed findings of fact and conclusions of law. Any proposed findings 
of fact shall be in numbered paragraphs and shall be supported by 
specific references to the record. Any proposed conclusions of law shall 
be in numbered paragraphs and shall be supported by citation of cases, 
statutes, or other authority. Any opponent, separate from its opening or 
reply brief, but filed concurrently therewith, may file a paper 
accepting or objecting to any proposed findings of fact or conclusions 
of law; when objecting, a reason must be given. The Board may adopt the 
proposed findings of fact and conclusions of law in whole or in part.
    (h) If a party wants the Board in rendering its final decision to 
rule on the admissibility of any evidence, the party shall file with its 
opening brief an original and four copies of a motion (Sec. 1.635) to 
suppress the evidence. The provisions of Sec. 1.637(b) do not apply to a 
motion to suppress under this paragraph. Any objection previously made 
to the admissibility of the evidence of an opponent is waived unless the 
motion required by this paragraph is filed. A party that failed to 
challenge the admissibility of the evidence of an opponent on a ground 
that could have been raised in a timely objection under Sec. 1.672(c), 
1.682(c), 1.683(b) or 1.688(b) may not move under this paragraph to 
suppress the evidence on that ground at final hearing. An original and 
four copies of an opposition to the motion may be filed with an 
opponent's opening brief or reply brief as may be appropriate.
    (i) When a junior party fails to timely file an opening brief, an 
order may issue requiring the junior party to show cause why the Board 
should not treat failure to file the brief as a concession of priority. 
If the junior party fails to show good cause within a time

[[Page 139]]

period set in the order, judgment may be entered against the junior 
party.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14529, Mar. 17, 1995]



Sec. 1.657  Burden of proof as to date of invention.

    (a) A rebuttable presumption shall exist that, as to each count, the 
inventors made their invention in the chronological order of their 
effective filing dates. The burden of proof shall be upon a party who 
contends otherwise.
    (b) In an interference involving copending applications or involving 
a patent and an application having an effective filing date on or before 
the date the patent issued, a junior party shall have the burden of 
establishing priority by a preponderance of the evidence.
    (c) In an interference involving an application and a patent and 
where the effective filing date of the application is after the date the 
patent issued, a junior party shall have the burden of establishing 
priority by clear and convincing evidence.

[60 FR 14530, Mar. 17, 1995]



Sec. 1.658  Final decision.

    (a) After final hearing, the Board shall enter a decision resolving 
the issues raised at final hearing. The decision may enter judgment, in 
whole or in part, remand the interference to an administrative patent 
judge for further proceedings, or take further action not inconsistent 
with law. A judgment as to a count shall state whether or not each party 
is entitled to a patent containing the claims in the party's patent or 
application which correspond to the count. When the Board enters a 
decision awarding judgment as to all counts, the decision shall be 
regarded as a final decision for the purpose of judicial review (35 
U.S.C. 141-144, 146) unless a request for reconsideration under 
paragraph (b) of this section is timely filed.
    (b) Any request for reconsideration of a decision under paragraph 
(a) of this section shall be filed within one month after the date of 
the decision. The request for reconsideration shall specify with 
particularity the points believed to have been misapprehended or 
overlooked in rendering the decision. Any opposition to a request for 
reconsideration shall be filed within 14 days of the date of service of 
the request for reconsideration. Service of the request for 
reconsideration shall be by hand or Express Mail. The Board shall enter 
a decision on the request for reconsideration. If the Board shall be of 
the opinion that the decision on the request for reconsideration 
significantly modifies its original decision under paragraph (a) of this 
section, the Board may designate the decision on the request for 
reconsideration as a new decision. A decision on reconsideration is a 
final decision for the purpose of judicial review (35 U.S.C. 141-144, 
146).
    (c) A judgment in an interference settles all issues which (1) were 
raised and decided in the interference, (2) could have been properly 
raised and decided in the interference by a motion under Sec. 1.633 (a) 
through (d) and (f) through (j) or Sec. 1.634, and (3) could have been 
properly raised and decided in an additional interference with a motion 
under Sec. 1.633(e). A losing party who could have properly moved, but 
failed to move, under Sec. 1.633 or 1.634, shall be estopped to take ex 
parte or inter partes action in the Patent and Trademark Office after 
the interference which is inconsistent with that party's failure to 
properly move, except that a losing party shall not be estopped with 
respect to any claims which correspond, or properly could have 
corresponded, to a count as to which that party was awarded a favorable 
judgment.

[46 FR 29185, May 29, 1981, as amended at 54 FR 29553, July 13, 1989; 60 
FR 14530, Mar. 17, 1995]



Sec. 1.659  Recommendation.

    (a) Should the Board have knowledge of any ground for rejecting any 
application claim not involved in the judgment of the interference, it 
may include in its decision a recommended rejection of the claim. Upon 
resumption of ex parte prosecution of the application, the examiner 
shall be bound by the recommendation and shall enter and maintain the 
recommended rejection unless an amendment or showing of facts not 
previously of record is filed which, in the opinion of the examiner, 
overcomes the recommended rejection.

[[Page 140]]

    (b) Should the Board have knowledge of any ground for reexamination 
of a patent involved in the interference as to a patent claim not 
involved in the judgment of the interference, it may include in its 
decision a recommendation to the Commissioner that the patent be 
reexamined. The Commissioner will determine whether reexamination will 
be ordered.
    (c) The Board may make any other recommendation to the examiner or 
the Commissioner as may be appropriate.



Sec. 1.660  Notice of reexamination, reissue, protest, or litigation.

    (a) When a request for reexamination of a patent involved in an 
interference is filed, the patent owner shall notify the Board within 10 
days of receiving notice that the request was filed.
    (b) When an application for reissue is filed by a patentee involved 
in an interference, the patentee shall notify the Board within 10 days 
of the day the application for reissue is filed.
    (c) When a protest under Sec. 1.291 is filed against an application 
involved in an interference, the applicant shall notify the Board within 
10 days of receiving notice that the protest was filed.
    (d) A party in an interference shall notify the Board promptly of 
any litigation related to any patent or application involved in an 
interference, including any civil action commenced under 35 U.S.C. 146.
    (e) The notice required by this section is designed to assist the 
administrative patent judge and the Board in efficiently handling 
interference cases. Failure of a party to comply with the provisions of 
this section may result in sanctions under Sec. 1.616. Knowledge by, or 
notice to, an employee of the Office other than an employee of the 
Board, of the existence of the reexamination, application for reissue, 
protest, or litigation shall not be sufficient. The notice contemplated 
by this section is notice addressed to the administrative patent judge 
in charge of the interference in which the application or patent is 
involved.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14530, Mar. 17, 1995]



Sec. 1.661  Termination of interference after judgment.

    After a final decision is entered by the Board, an interference is 
considered terminated when no appeal (35 U.S.C. 141) or other review (35 
U.S.C. 146) has been or can be taken or had.



Sec. 1.662  Request for entry of adverse judgment; reissue filed by patentee.

    (a) A party may, at any time during an interference, request and 
agree to entry of an adverse judgment. The filing by a party of a 
written disclaimer of the invention defined by a count, concession of 
priority or unpatentability of the subject matter of a count, 
abandonment of the invention defined by a count, or abandonment of the 
contest as to a count will be treated as a request for entry of an 
adverse judgment against the applicant or patentee as to all claims 
which correspond to the count. Abandonment of an application, other than 
an application for reissue having a claim of the patent sought to be 
reissued involved in the interference, will be treated as a request for 
entry of an adverse judgment against the applicant as to all claims 
corresponding to all counts. Upon the filing by a party of a request for 
entry of an adverse judgment, the Board may enter judgment against the 
party.
    (b) If a patentee involved in an interference files an application 
for reissue during the interference and the reissue application does not 
include a claim that corresponds to a count, judgment may be entered 
against the patentee. A patentee who files an application for reissue 
which includes a claim that corresponds to a count shall, in addition to 
complying with the provisions of Sec. 1.660(b), timely file a 
preliminary motion under Sec. 1.633(h) or show good cause why the motion 
could not have been timely filed or would not be appropriate.
    (c) The filing of a statutory disclaimer under 35 U.S.C. 253 by a 
patentee will delete any statutorily disclaimed claims from being 
involved in the interference. A statutory disclaimer will not be treated 
as a request for entry of an adverse judgment against the patentee 
unless it results

[[Page 141]]

in the deletion of all patent claims corresponding to a count.

[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 23735, June 23, 1988; 
60 FR 14530, Mar. 17, 1995]



Sec. 1.663  Status of claim of defeated applicant after interference.

    Whenever an adverse judgment is entered as to a count against an 
applicant from which no appeal (35 U.S.C. 141) or other review (35 
U.S.C. 146) has been or can be taken or had, the claims of the 
application corresponding to the count stand finally disposed of without 
further action by the examiner. Such claims are not open to further ex 
parte prosecution.



Sec. 1.664  Action after interference.

    (a) After termination of an interference, the examiner will promptly 
take such action in any application previously involved in the 
interference as may be necessary. Unless entered by order of an 
administrative patent judge, amendments presented during the 
interference shall not be entered, but may be subsequently presented by 
the applicant subject to the provisions of this subpart provided 
prosecution of the application is not otherwise closed.
    (b) After judgment, the application of any party may be held subject 
to further examination, including an interference with another 
application.

[60 FR 14530, Mar. 17, 1995]



Sec. 1.665  Second interference.

    A second interference between the same parties will not be declared 
upon an application not involved in an earlier interference for an 
invention defined by a count of the earlier interference. See 
Sec. 1.658(c).



Sec. 1.666  Filing of interference settlement agreements.

    (a) Any agreement or understanding between parties to an 
interference, including any collateral agreements referred to therein, 
made in connection with or in contemplation of the termination of the 
interference, must be in writing and a true copy thereof must be filed 
before the termination of the interference (Sec. 1.661) as between the 
parties to the agreement or understanding.
    (b) If any party filing the agreement or understanding under 
paragraph (a) of this section so requests, the copy will be kept 
separate from the file of the interference, and made available only to 
Government agencies on written request, or to any person upon petition 
accompanied by the fee set forth in Sec. 1.17(i) and on a showing of 
good cause.
    (c) Failure to file the copy of the agreement or understanding under 
paragraph (a) of this section will render permanently unenforceable such 
agreement or understanding and any patent of the parties involved in the 
interference or any patent subsequently issued on any application of the 
parties so involved. The Commissioner may, however, upon petition 
accompanied by the fee set forth in Sec. 1.17(h) and on a showing of 
good cause for failure to file within the time prescribed, permit the 
filing of the agreement or understanding during the six month period 
subsequent to the termination of the interference as between the parties 
to the agreement or understanding.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 54 
FR 6904, Feb. 15, 1989; 60 FR 20228, Apr. 25, 1995]



Sec. 1.671  Evidence must comply with rules.

    (a) Evidence consists of testimony and referenced exhibits, official 
records and publications filed under Sec. 1.682, testimony and 
referenced exhibits from another interference, proceeding, or action 
filed under Sec. 1.683, discovery relied upon under Sec. 1.688, and the 
specification (including claims) and drawings of any application or 
patent:
    (1) Involved in the interference.
    (2) To which a party has been accorded benefit in the notice 
declaring the interference or by a preliminary motion granted under 
Sec. 1.633.
    (3) For which a party has sought, but has been denied, benefit by a 
preliminary motion under Sec. 1.633.
    (4) For which benefit was rescinded by a preliminary motion granted 
under Sec. 1.633.

[[Page 142]]

    (b) Except as otherwise provided in this subpart, the Federal Rules 
of Evidence shall apply to interference proceedings. Those portions of 
the Federal Rules of Evidence relating to criminal actions, juries, and 
other matters not relevant to interferences shall not apply.
    (c) Unless the context is otherwise clear, the following terms of 
the Federal Rules of Evidence shall be construed as follows:
    (1) Courts of the United States, U.S. Magistrate, court, trial 
court, or trier of fact means administrative patent judge or Board as 
may be appropriate.
    (2) Judge means administrative patent judge.
    (3) Judicial notice means official notice.
    (4) Civil action, civil proceeding, action, or trial, mean 
interference.
    (5) Appellate court means United States Court of Appeals for the 
Federal Circuit or a United States district court when judicial review 
is under 35 U.S.C. 146.
    (6) Before the hearing in Rule 703 of the Federal Rules of Evidence 
means before giving testimony by affidavit or oral deposition.
    (7) The trial or hearing in Rules 803(24) and 804(5) of the Federal 
Rules of Evidence means the taking of testimony by affidavit or oral 
deposition.
    (d) Certification is not necessary as a condition to admissibility 
when the record is a record of the Patent and Trademark Office to which 
all parties have access.
    (e) A party may not rely on an affidavit (including any exhibits), 
patent or printed publication previously submitted by the party under 
Sec. 1.639(b) unless a copy of the affidavit, patent or printed 
publication has been served and a written notice is filed prior to the 
close of the party's relevant testimony period stating that the party 
intends to rely on the affidavit, patent or printed publication. When 
proper notice is given under this paragraph, the affidavit, patent or 
printed publication shall be deemed as filed under Sec. 1.640(b), 
1.640(e)(3), 1.672(b) or 1.682(a), as appropriate.
    (f) The significance of documentary and other exhibits identified by 
a witness in an affidavit or during oral deposition shall be discussed 
with particularity by a witness.
    (g) A party must file a motion (Sec. 1.635) seeking permission from 
an administrative patent judge prior to compelling testimony or 
production of documents or things under 35 U.S.C. 24 or from an opposing 
party. The motion shall describe the general nature and the relevance of 
the testimony, document, or thing. If permission is granted, the party 
shall notice a deposition under Sec. 1.673 and may proceed to take 
testimony.
    (h) A party must file a motion (Sec. 1.635) seeking permission from 
an administrative patent judge prior to compelling testimony or 
production of documents or things in a foreign country.
    (1) In the case of testimony, the motion shall:
    (i) Describe the general nature and relevance of the testimony;
    (ii) Identify the witness by name or title;
    (iii) Identify the foreign country and explain why the party 
believes the witness can be compelled to testify in the foreign country, 
including a description of the procedures that will be used to compel 
the testimony in the foreign country and an estimate of the time it is 
expected to take to obtain the testimony; and
    (iv) Demonstrate that the party has made reasonable efforts to 
secure the agreement of the witness to testify in the United States but 
has been unsuccessful in obtaining the agreement, even though the party 
has offered to pay the expenses of the witness to travel to and testify 
in the United States.
    (2) In the case of production of a document or thing, the motion 
shall:
    (i) Describe the general nature and relevance of the document or 
thing;
    (ii) Identify the foreign country and explain why the party believes 
production of the document or thing can be compelled in the foreign 
country, including a description of the procedures that will be used to 
compel production of the document or thing in the foreign country and an 
estimate of the time it is expected to take to obtain production of the 
document or thing; and
    (iii) Demonstrate that the party has made reasonable efforts to 
obtain the agreement of the individual or entity

[[Page 143]]

having possession, custody, or control of the document to produce the 
document or thing in the United States but has been unsuccessful in 
obtaining that agreement, even though the party has offered to pay the 
expenses of producing the document or thing in the United States.
    (i) Evidence which is not taken or sought and filed in accordance 
with this subpart shall not be admissible.
    (j) The weight to be given deposition testimony taken in a foreign 
country will be determined in view of all the circumstances, including 
the laws of the foreign country governing the testimony. Little, if any, 
weight may be given to deposition testimony taken in a foreign country 
unless the party taking the testimony proves by clear and convincing 
evidence, as a matter of fact, that knowingly giving false testimony in 
that country in connection with an interference proceeding in the United 
States Patent and Trademark Office is punishable under the laws of that 
country and that the punishment in that country for such false testimony 
is comparable to or greater than the punishment for perjury committed in 
the United States. The administrative patent judge and the Board, in 
determining foreign law, may consider any relevant material or source, 
including testimony, whether or not submitted by a party or admissible 
under the Federal Rules of Evidence.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14530, Mar. 17, 1995]



Sec. 1.672  Manner of taking testimony.

    (a) Unless testimony must be compelled under 35 U.S.C. 24, compelled 
from a party, or compelled in a foreign country, testimony of a witness 
shall be taken by affidavit in accordance with this subpart. Testimony 
which must be compelled under 35 U.S.C. 24, compelled from a party, or 
compelled in a foreign country shall be taken by oral deposition.
    (b) A party presenting testimony of a witness by affidavit shall, 
within the time set by the administrative patent judge for serving 
affidavits, file a copy of the affidavit or, if appropriate, notice 
under Sec. 1.671(e). If the affidavit relates to a party's case-in-
chief, it shall be filed or noticed no later than the date set by an 
administrative patent judge for the party to file affidavits for its 
case-in-chief. If the affidavit relates to a party's case-in-rebuttal, 
it shall be filed or noticed no later than the date set by an 
administrative patent judge for the party to file affidavits for its 
case-in-rebuttal. A party shall not be entitled to rely on any document 
referred to in the affidavit unless a copy of the document is filed with 
the affidavit. A party shall not be entitled to rely on any thing 
mentioned in the affidavit unless the opponent is given reasonable 
access to the thing. A thing is something other than a document. The 
pages of affidavits filed under this paragraph and of any other 
testimony filed therewith under Secs. 1.683(a) and 1.688(a) shall, to 
the extent possible, be given sequential numbers which shall also serve 
as the record page numbers for the affidavits and other testimony in the 
party's record to be filed under Sec. 1.653. Exhibits identified in the 
affidavits or in any other testimony filed under Secs. 1.683(a) and 
1.688(a) and any official records and printed publications filed under 
Sec. 1.682(a) shall, to the extent possible, be given sequential exhibit 
numbers, which shall also serve as the exhibit numbers when the exhibits 
are filed with the party's record. The affidavits, testimony filed under 
Secs. 1.683(a) and 1.688(a) and exhibits shall be accompanied by an 
index of the names of the witnesses, giving the number of the page where 
the testimony of each witness begins, and by an index of the exhibits 
briefly describing the nature of each exhibit and giving the number of 
the page where each exhibit is first identified and offered into 
evidence.
    (c) If an opponent objects to the admissibility of any evidence 
contained in or submitted with an affidavit filed under paragraph (b) of 
this section, the opponent must, no later than the date set by the 
administrative patent judge for filing objections under this paragraph, 
file objections stating with particularity the nature of each objection. 
An opponent that fails to object to the admissibility of the evidence 
contained in or submitted with an affidavit on a ground that could have 
been raised in a timely objection under this paragraph will not be 
entitled to move under

[[Page 144]]

Sec. 1.656(h) to suppress the evidence on that ground. If an opponent 
timely files objections, the party may, within 20 days of the due date 
for filing objections, file one or more supplemental affidavits, 
official records or printed publications to overcome the objections. No 
objection to the admissibility of the supplemental evidence shall be 
made, except as provided by Sec. 1.656(h). The pages of supplemental 
affidavits filed under this paragraph shall, to the extent possible, be 
sequentially numbered beginning with the number following the last page 
number of the party's testimony submitted under paragraph (b) of this 
section. The page numbers assigned to the supplemental affidavits shall 
also serve as the record page numbers for the supplemental affidavits in 
the party's record filed under Sec. 1.653. Additional exhibits 
identified in supplemental affidavits and any supplemental official 
records and printed publications shall, to the extent possible, be given 
sequential numbers beginning with the number following the last number 
of the exhibits submitted under paragraph (b) of this section. The 
exhibit numbers shall also serve as the exhibit numbers when the 
exhibits are filed with the party's record. The supplemental affidavits 
shall be accompanied by an index of the names of the witnesses and an 
index of exhibits of the type specified in paragraph (b) of this 
section.
    (d) After the time expires for filing objections and supplemental 
affidavits, or earlier when appropriate, the administrative patent judge 
shall set a time within which any opponent may file a request to cross-
examine an affiant on oral deposition. If any opponents requests cross-
examination of an affiant, the party shall notice a deposition at a 
reasonable location within the United States under Sec. 1.673(e) for the 
purpose of cross-examination by any opponent. Any redirect and recross 
shall take place at the deposition. At any deposition for the purpose of 
cross-examination of a witness, the party shall not be entitled to rely 
on any document or thing not mentioned in one or more of the affidavits 
filed under paragraphs (b) and (c) of this section, except to the extent 
necessary to conduct proper redirect. The party who gives notice of a 
deposition shall be responsible for providing a translator if the 
witness does not testify in English, for obtaining a court reporter, and 
for filing a certified transcript of the deposition as required by 
Sec. 1.676. Within 45 days of the close of the period for taking cross-
examination, the party shall serve (but not file) a copy of each 
transcript on each opponent together with copies of any additional 
documentary exhibits identified by the witness during the deposition. 
The pages of the transcripts served under this paragraph shall, to the 
extent possible, be sequentially numbered beginning with the number 
following the last page number of the party's supplemental affidavits 
submitted under paragraph (c) of this section. The numbers assigned to 
the transcript pages shall also serve as the record page numbers for the 
transcripts in the party's record filed under Sec. 1.653. Additional 
exhibits identified in the transcripts, shall, to the extent possible, 
be given sequential numbers beginning with the number following the last 
number of the exhibits submitted under paragraphs (b) and (c) of this 
section. The exhibit numbers assigned to the additional exhibits shall 
also serve as the exhibit numbers when those exhibits are filed with the 
party's record. The deposition transcripts shall be accompanied by an 
index of the names of the witnesses, giving the number of the page where 
cross-examination, redirect and recross of each witness begins, and an 
index of exhibits of the type specified in paragraph (b) of this 
section.
    (e) [Reserved]
    (f) When a deposition is authorized to be taken within the United 
States under this subpart and if the parties agree in writing, the 
deposition may be taken in any place within the United States, before 
any person authorized to administer oaths, upon any notice, and in any 
manner, and when so taken may be used like other depositions.
    (g) If the parties agree in writing, the affidavit testimony of any 
witness may be submitted without opportunity for cross-examination.
    (h) If the parties agree in writing, testimony may be submitted in 
the form of an agreed statement setting forth how a particular witness 
would testify, if called, or the facts in the

[[Page 145]]

case of one or more of the parties. The agreed statement shall be filed 
in the Patent and Trademark Office. See Sec. 1.653(a).
    (i) In an unusual circumstance and upon a showing that testimony 
cannot be taken in accordance with the provisions of this subpart, an 
administrative patent judge upon motion (Sec. 1.635) may authorize 
testimony to be taken in another manner.

[60 FR 14531, Mar. 17, 1995]



Sec. 1.673  Notice of examination of witness.

    (a) A party authorized to take testimony of a witness by deposition 
shall, after complying with paragraphs (b) and (g) of this section, file 
and serve a single notice of deposition stating the time and place of 
each deposition to be taken. Depositions to be taken in the United 
States may be noticed for a reasonable time and place in the United 
States. A deposition may not be noticed for any other place without 
approval of an administrative patent judge. The notice shall specify the 
name and address of each witness and the general nature of the testimony 
to be given by the witness. If the name of a witness is not known, a 
general description sufficient to identify the witness or a particular 
class or group to which the witness belongs may be given instead.
    (b) Unless the parties agree or an administrative patent judge or 
the Board determine otherwise, a party shall serve, but not file, at 
least three working days prior to the conference required by paragraph 
(g) of this section, if service is made by hand or Express Mail, or at 
least 14 days prior to the conference if service is made by any other 
means, the following:
    (1) A list and copy of each document in the party's possession, 
custody, or control and upon which the party intends to rely at any 
deposition and
    (2) A list of and a proffer of reasonable access to things in the 
party's possession, custody, or control and upon which the party intends 
to rely at any deposition.
    (c) A party shall not be permitted to rely on any witness not listed 
in the notice, or any document not served or any thing not listed as 
required by paragraph (b) of this section:
    (1) Unless all opponents agree in writing or on the record to permit 
the party to rely on the witness, document or thing, or
    (2) Except upon a motion (Sec. 1.635) promptly filed which is 
accompanied by any proposed notice, additional documents, or lists and 
which shows good cause why the notice, documents, or lists were not 
served in accordance with this section.
    (d) Each opponent shall have a full opportunity to attend a 
deposition and cross-examine.
    (e) A party who has presented testimony by affidavit and is required 
to notice depositions for the purpose of cross-examination under 
Sec. 1.672(b), shall, after complying with paragraph (g) of this 
section, file and serve a single notice of deposition stating the time 
and place of each cross-examination deposition to be taken.
    (f) The parties shall not take depositions in more than one place at 
the same time or so nearly at the same time that reasonable opportunity 
to travel from one place of deposition to another cannot be had.
    (g) Before serving a notice of deposition and after complying with 
paragraph (b) of this section, a party shall have an oral conference 
with all opponents to attempt to agree on a mutually acceptable time and 
place for conducting the deposition. A certificate shall appear in the 
notice stating that the oral conference took place or explaining why the 
conference could not be had. If the parties cannot agree to a mutually 
acceptable place and time for conducting the deposition at the 
conference, the parties shall contact an administrative patent judge who 
shall then designate the time and place for conducting the deposition.
    (h) A copy of the notice of deposition shall be attached to the 
certified transcript of the deposition filed under Sec. 1.676(a).

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14532, Mar. 17, 1995]



Sec. 1.674  Persons before whom depositions may be taken.

    (a) A deposition shall be taken before an officer authorized to 
administer

[[Page 146]]

oaths by the laws of the United States or of the place where the 
examination is held.
    (b) Unless the parties agree in writing, the following persons shall 
not be competent to serve as an officer:
    (1) A relative or employee of a party,
    (2) A relative or employee of an attorney or agent of a party, or
    (3) A person interested, directly or indirectly, in the interference 
either as counsel, attorney, agent, or otherwise.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14533, Mar. 17, 1995]



Sec. 1.675  Examination of witness, reading and signing transcript of deposition.

    (a) Each witness before giving an oral deposition shall be duly 
sworn according to law by the officer before whom the deposition is to 
be taken.
    (b) The testimony shall be taken in answer to interrogatories with 
any questions and answers recorded in their regular order by the officer 
or by some other person, who shall be subject to the provisions of 
Sec. 1.674(b), in the presence of the officer unless the presence of the 
officer is waived on the record by agreement of all parties.
    (c) All objections made at the time of the deposition to the 
qualifications of the officer taking the deposition, the manner of 
taking it, the evidence presented, the conduct of any party, or any 
other objection to the proceeding shall be noted on the record by the 
officer. Evidence objected to shall be taken subject to any objection.
    (d) Unless the parties agree in writing or waive reading and 
signature by the witness on the record at the deposition, when the 
testimony has been transcribed a transcript of the deposition shall, 
unless the witness refuses to read and/or sign the transcript of the 
deposition, be read by the witness and then signed by the witness in the 
form of:
    (1) An affidavit in the presence of any notary or
    (2) A declaration.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14533, Mar. 17, 1995]



Sec. 1.676  Certification and filing by officer, marking exhibits.

    (a) The officer shall prepare a certified transcript of the 
deposition by attaching to a transcript of the deposition a copy of the 
notice of deposition, any exhibits to be annexed to the certified 
transcript, and a certificate signed and sealed by the officer and 
showing:
    (1) The witness was duly sworn by the officer before commencement of 
testimony by the witness.
    (2) The transcript is a true record of the testimony given by the 
witness.
    (3) The name of the person by whom the testimony was recorded and, 
if not recorded by the officer, whether the testimony was recorded in 
the presence of the officer.
    (4) The presence or absence of any opponent.
    (5) The place where the deposition was taken and the day and hour 
when the deposition began and ended.
    (6) The officer is not disqualified under Sec. 1.674.
    (b) If the parties waived any of the requirements of paragraph (a) 
of this section, the certificate shall so state.
    (c) The officer shall note on the certificate the circumstances 
under which a witness refuses to sign a transcript.
    (d) Unless the parties agree otherwise in writing or on the record 
at the deposition, the officer shall securely seal the certified 
transcript in an envelope endorsed with the style of the interference 
(e.g., Smith v. Jones), the interference number, the name of the 
witness, and the date of sealing and shall promptly forward the envelope 
to BOX INTERFERENCE, Commissioner of Patents and Trademarks, Washington, 
DC 20231. Documents and things produced for inspection during the 
examination of a witness, shall, upon request of a party, be marked for 
identification and annexed to the certified transcript, and may be 
inspected and copied by any party, except that if the person producing 
the documents and things desires to retain them, the person may:
    (1) Offer copies to be marked for identification and annexed to the 
certified transcript and to serve thereafter as originals if the person 
affords to all parties fair opportunity to verify the

[[Page 147]]

copies by comparison with the originals or
    (2) Offer the originals to be marked for identification, after 
giving to each party an opportunity to inspect and copy them, in which 
event the documents and things may be used in the same manner as if 
annexed to the certified transcript.

The exhibits shall then be filed as specified in Sec. 1.653(i). If the 
weight or bulk of a document or thing shall reasonably prevent the 
document or thing from being annexed to the certified transcript, it 
shall, unless waived on the record at the deposition by all parties, be 
authenicated by the officer and fowarded to the Commissioner in a 
separate package marked and addressed as provided in this paragraph.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14533, Mar. 17, 1995]



Sec. 1.677  Form of an affidavit or a transcript of deposition.

    (a) An affidavit or a transcript of a deposition must be on opaque, 
unglazed, durable paper approximately 21.8 by 27.9 cm. (8\1/2\ by 11 
inches) in size (letter size). The printed matter shall be double-spaced 
on one side of the paper in not smaller than 11 point type with a margin 
of 3.8 cm. (1\1/2\ inches) on the left-hand side of the page. The pages 
of each transcript must be consecutively numbered and the name of the 
witness shall appear at the top of each page (Sec. 1.653(e)). In 
transcripts of depositions, the questions propounded to each witness 
must be consecutively numbered unless paper with numbered lines is used 
and each question must be followed by its answer.
    (b) Exhibits must be numbered consecutively to the extent possible 
and each must be marked as required by Sec. 1.653(i).

[60 FR 14533, Mar. 17, 1995]



Sec. 1.678  Time for filing transcript of deposition.

    Unless otherwise ordered by an administrative patent judge, a 
certified transcript of a deposition must be filed in the Patent and 
Trademark Office within one month after the date of deposition. If a 
party refuses to file a certified transcript, the administrative patent 
judge or the Board may take appropriate action under Sec. 1.616. If a 
party refuses to file a certified transcript, any opponent may move for 
leave to file the certified transcript and include a copy of the 
transcript as part of the opponent's record.

[60 FR 14533, Mar. 17, 1995]



Sec. 1.679  Inspection of transcript.

    A certified transcript of a deposition filed in the Patent and 
Trademark Office may be inspected by any party. The certified transcript 
may not be removed from the Patent and Trademark Office unless 
authorized by an administrative patent judge upon such terms as may be 
appropriate.

[60 FR 14533, Mar. 17, 1995]



Sec. 1.682  Official records and printed publications.

    (a) A party may introduce into evidence, if otherwise admissible, an 
official record or printed publication not identified in an affidavit or 
on the record during an oral deposition of a witness, by filing a copy 
of the official record or printed publication or, if appropriate, a 
notice under Sec. 1.671(e). If the official record or printed 
publication relates to the party's case-in-chief, it shall be filed or 
noticed together with any affidavits filed by the party under 
Sec. 1.672(b) for its case-in-chief or, if the party does not serve any 
affidavits under Sec. 1.672(b) for its case-in-chief, no later than the 
date set by an administrative patent judge for the party to file 
affidavits under Sec. 1.672(b) for its case-in-chief. If the official 
record or printed publication relates to rebuttal, it shall be filed or 
noticed together with any affidavits filed by the party under 
Sec. 1.672(b) for its case-in-rebuttal or, if the party does not file 
any affidavits under Sec. 1.672(b) for its case-in-rebuttal, no later 
than the date set by an administrative patent judge for the party to 
file affidavits under Sec. 1.672(b) for its case-in-rebuttal. Official 
records and printed publications filed under this paragraph shall be 
assigned sequential exhibit numbers by the party in the manner set forth 
in

[[Page 148]]

Sec. 1.672(b). The official record and printed publications shall be 
accompanied by a paper which shall:
    (1) Identify the official record or printed publication;
    (2) Identify the portion thereof to be introduced in evidence; and
    (3) Indicate generally the relevance of the portion sought to be 
introduced in evidence.
    (b) [Reserved]
    (c) Unless otherwise ordered by an administrative patent judge, any 
written objection by an opponent to the paper or to the admissibility of 
the official record or printed publication shall be filed no later than 
the date set by the administrative patent judge for the opponent to file 
objections under Sec. 1.672(c) to affidavits submitted by the party 
under Sec. 1.672(b). An opponent who fails to object to the 
admissibility of the official record or printed publication on a ground 
that could have been raised in a timely objection under this paragraph 
will not be entitled to move under Sec. 1.656(h) to suppress the 
evidence on that ground. If an opponent timely files an objection, the 
party may respond by filing one or more supplemental affidavits, 
official records or printed publications, which must be filed together 
with any supplemental evidence filed by the party under Sec. 1.672(c) 
or, if the party does not file any supplemental evidence under 
Sec. 1.672(c), no later than the date set by an administrative patent 
judge for the party to file supplemental affidavits under Sec. 1.672(c). 
No objection to the admissibility of the supplemental evidence shall be 
made, except as provided by Sec. 1.656(h). The pages of supplemental 
affidavits and the exhibits filed under this section shall be 
sequentially numbered by the party in the manner set forth in 
Sec. 1.672(c). The supplemental affidavits and exhibits shall be 
accompanied by an index of witnesses and an index of exhibits of the 
type required by Sec. 1.672(b).
    (d) Any request by an opponent to cross-examine on oral deposition 
the affiant of a supplemental affidavit submitted under paragraph (c) of 
this section shall be filed no later than the date set by the 
administrative patent judge for the opponent to file a request to cross-
examine an affiant with respect to an affidavit served by the party 
under Sec. 1.672 (b) or (c). If any opponent requests cross-examination 
of an affiant, the party shall file notice of a deposition for a 
reasonable location within the United States under Sec. 1.673(e) for the 
purpose of cross-examination by any opponent. Any redirect and recross 
shall take place at the deposition. At any deposition for the purpose of 
cross-examination of a witness, the party shall not be entitled to rely 
on any document or thing not mentioned in one or more of the affidavits 
filed under this paragraph, except to the extent necessary to conduct 
proper redirect. The party who gives notice of a deposition shall be 
responsible for providing a translator if the witness does not testify 
in English, for obtaining a court reporter, and for filing a certified 
transcript of the deposition as required by Sec. 1.676. Within 45 days 
of the close of the period for taking cross-examination, the party shall 
serve (but not file) a copy of each deposition transcript on each 
opponent together with copies of any additional documentary exhibits 
identified by the witness during the deposition. The pages of deposition 
transcripts and exhibits served under this paragraph shall be 
sequentially numbered by the party in the manner set forth in 
Sec. 1.672(d). The deposition transcripts shall be accompanied by an 
index of the names of the witnesses, giving the number of the page where 
cross-examination, redirect and recross of each witness begins, and an 
index of exhibits of the type specified in Sec. 1.672(b).

[60 FR 14533, Mar. 17, 1995]



Sec. 1.683  Testimony in another interference, proceeding, or action.

    (a) A party may introduce into evidence, if otherwise admissible, 
testimony by affidavit or oral deposition and referenced exhibits from 
another interference, proceeding, or action involving the same parties 
by filing a copy of the affidavit or a copy of the transcript of the 
oral deposition and the referenced exhibits. If the testimony and 
referenced exhibits relate to the party's case-in-chief, they shall be 
filed together with any affidavits served by the party under 
Sec. 1.672(b) for its case-in-chief or, if the party does

[[Page 149]]

not file any affidavits under Sec. 1.672(b) for its case-in-chief, no 
later than the date set by an administrative patent judge for the party 
to file affidavits under Sec. 1.672(b) for its case-in-chief. If the 
testimony and referenced exhibits relate to rebuttal, they shall be 
filed together with any affidavits served by the party under 
Sec. 1.672(b) for its case-in-rebuttal or, if the party does not file 
any affidavits under Sec. 1.672(b) for its case-in-rebuttal, no later 
than the date set by an administrative patent judge for the party to 
file affidavits under Sec. 1.672(b) for its case-in-rebuttal. Pages of 
affidavits and deposition transcripts served under this paragraph and 
any new exhibits served therewith shall be assigned sequential numbers 
by the party in the manner set forth in Sec. 1.672(b). The testimony 
shall be accompanied by a paper which specifies with particularity the 
exact testimony to be used and demonstrates its relevance.
    (b) Unless otherwise ordered by an administrative patent judge, any 
written objection by an opponent to the paper or the admissibility of 
the testimony and referenced exhibits filed under this section shall be 
filed no later than the date set by the administrative patent judge for 
the opponent to file any objections under Sec. 1.672(c) to affidavits 
submitted by the party under Sec. 1.672(b). An opponent who fails to 
challenge the admissibility of the testimony or referenced exhibits on a 
ground that could have been raised in a timely objection under this 
paragraph will not be entitled to move under Sec. 1.656(h) to suppress 
the evidence on that ground. If an opponent timely files an objection, 
the party may respond with one or more supplemental affidavits, official 
records or printed publications, which must be filed together with any 
supplemental evidence filed by the party under Sec. 1.672(c) or, if the 
party does not file any supplemental evidence under Sec. 1.672(c), no 
later than the date set by an administrative patent judge for the party 
to file supplemental evidence under Sec. 1.672(c). No objection to the 
admissibility of the evidence contained in or submitted with a 
supplemental affidavit shall be made, except as provided by 
Sec. 1.656(h). The pages of supplemental affidavits and the exhibits 
filed under this section shall be sequentially numbered by the party in 
the manner set forth in Sec. 1.672(c). The supplemental affidavits and 
exhibits shall be accompanied by an index of witnesses and an index of 
exhibits of the type required by Sec. 1.672(b).
    (c) Any request by an opponent to cross-examine on oral deposition 
the affiant of an affidavit or supplemental affidavit submitted under 
paragraph (a) or (b) of this section shall be filed no later than the 
date set by the administrative patent judge for the opponent to file a 
request to cross-examine an affiant with respect to an affidavit filed 
by the party under Sec. 1.672 (b) or (c). If any opponent requests 
cross-examination of an affiant, the party shall file a notice of 
deposition for a reasonable location within the United States under 
Sec. 1.673(e) for the purpose of cross-examination by any opponent. Any 
redirect and recross shall take place at the deposition. At any 
deposition for the purpose of cross-examination of a witness, the party 
shall not be entitled to rely on any document or thing not mentioned in 
one or more of the affidavits filed under this paragraph, except to the 
extent necessary to conduct proper redirect. The party who gives notice 
of a deposition shall be responsible for providing a translator if the 
witness does not testify in English, for obtaining a court reporter, and 
for filing a certified transcript of the deposition as required by 
Sec. 1.676. Within 45 days of the close of the period for taking cross-
examination, the party shall serve (but not file) a copy of each 
deposition transcript on each opponent together with copies of any 
additional documentary exhibits identified by the witness during the 
deposition. The pages of deposition transcripts and exhibits served 
under this paragraph shall be sequentially numbered by the party in the 
manner set forth in Sec. 1.672(d). The deposition transcripts shall be 
accompanied by an index of the names of the witnesses, giving the number 
of the page where cross-examination, redirect and recross of each 
witness begins, and an index of exhibits of the type specified in 
Sec. 1.672(b).

[60 FR 14534, Mar. 17, 1995]



Sec. 1.684  [Reserved]

[[Page 150]]



Sec. 1.685  Errors and irregularities in depositions.

    (a) An error in a notice for taking a deposition is waived unless a 
motion (Sec. 1.635) to quash the notice is filed as soon as the error 
is, or could have been, discovered.
    (b) An objection to a qualification of an officer taking a 
deposition is waived unless:
    (1) The objection is made on the record of the deposition before a 
witness begins to testify.
    (2) If discovered after the deposition, a motion (Sec. 1.635) to 
suppress the deposition is filed as soon as the objection is, or could 
have been, discovered.
    (c) An error or irregularity in the manner in which testimony is 
transcribed, a certified transcript is signed by a witness, or a 
certified transcript is prepared, signed, certified, sealed, endorsed, 
forwarded, filed, or otherwise handled by the officer is waived unless a 
motion (Sec. 1.635) to suppress the deposition is filed as soon as the 
error or irregularity is, or could have been, discovered.
    (d) An objection to the deposition on any grounds, such as the 
competency of a witness, admissibility of evidence, manner of taking the 
deposition, the form of questions and answers, any oath or affirmation, 
or conduct of any party at the deposition, is waived unless an objection 
is made on the record at the deposition stating the specific ground of 
objection. Any objection which a party wishes considered by the Board at 
final hearing shall be included in a motion to suppress under 
Sec. 1.656(h).
    (e) Nothing in this section precludes taking notice of plain errors 
affecting substantial rights although they were not brought to the 
attention of an administrative patent judge or the Board.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14534, Mar. 17, 1995]



Sec. 1.687  Additional discovery.

    (a) A party is not entitled to discovery except as authorized in 
this subpart.
    (b) Where appropriate, a party may obtain production of documents 
and things during cross-examination of an opponent's witness or during 
the testimony period of the party's case-in-rebuttal.
    (c) Upon a motion (Sec. 1.635) brought by a party within the time 
set by an administrative patent judge under Sec. 1.651 or thereafter as 
authorized by Sec. 1.645 and upon a showing that the interest of justice 
so requires, an administrative patent judge may order additional 
discovery, as to matters under the control of a party within the scope 
of the Federal Rules of Civil Procedure, specifying the terms and 
conditions of such additional discovery. See Sec. 1.647 concerning 
translations of documents in a foreign language.
    (d) The parties may agree to discovery among themselves at any time. 
In the absence of an agreement, a motion for additional discovery shall 
not be filed except as authorized by this subpart.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14535, Mar. 17, 1995]



Sec. 1.688  Use of discovery.

    (a) If otherwise admissible, a party may introduce into evidence an 
answer to a written request for an admission or an answer to a written 
interrogatory obtained by discovery under Sec. 1.687 by filing a copy of 
the request for admission or the written interrogatory and the answer. 
If the answer relates to a party's case-in-chief, the answer shall be 
served together with any affidavits served by the party under 
Sec. 1.672(b) for its case-in-chief or, if the party does not serve any 
affidavits under Sec. 1.672(b) for its case-in-chief, no later than the 
date set by an administrative patent judge for the party to serve 
affidavits under Sec. 1.672(b) for its case-in-chief. If the answer 
relates to the party's rebuttal, the answer shall be served together 
with any affidavits served by the party under Sec. 1.672(b) for its 
case-in-rebuttal or, if the party does not serve any affidavits under 
Sec. 1.672(b) for its case-in-rebuttal, no later than the date set by an 
administrative patent judge for the party to serve affidavits under 
Sec. 1.672(b) for its case-in-rebuttal.
    (b) Unless otherwise ordered by an administrative patent judge, any 
written objection to the admissibility of an answer shall be filed no 
later than the date set by the administrative patent

[[Page 151]]

judge for the opponent to file any objections under Sec. 1.672(c) to 
affidavits submitted by the party under Sec. 1.672(b). An opponent who 
fails to challenge the admissibility of an answer on a ground that could 
have been raised in a timely objection under this paragraph will not be 
entitled to move under Sec. 1.656(h) to suppress the evidence on that 
ground. If an opponent timely files an objection, the party may respond 
with one or more supplemental affidavits, which must be filed together 
with any supplemental evidence filed by the party under Sec. 1.672(c) 
or, if the party does not file any supplemental evidence under 
Sec. 1.672(c), no later than the date set by an administrative patent 
judge for the party to file supplemental affidavits under Sec. 1.672(c). 
No objection to the admissibility of the evidence contained in or 
submitted with a supplemental affidavit shall be made, except as 
provided by Sec. 1.656(h). The pages of supplemental affidavits and the 
exhibits filed under this section shall be sequentially numbered by the 
party in the manner set forth in Sec. 1.672(c). The supplemental 
affidavits and exhibits shall be accompanied by an index of witnesses 
and an index of exhibits of the type required by Sec. 1.672(b).
    (c) Any request by an opponent to cross-examine on oral deposition 
the affiant of a supplemental affidavit submitted under paragraph (b) of 
this section shall be filed no later than the date set by the 
administrative patent judge for the opponent to file a request to cross-
examine an affiant with respect to an affidavit filed by the party under 
Sec. 1.672 (b) or (c). If any opponent requests cross-examination of an 
affiant, the party shall file a notice of deposition for a reasonable 
location within the United States under Sec. 1.673(e) for the purpose of 
cross-examination by any opponent. Any redirect and recross shall take 
place at the deposition. At any deposition for the purpose of cross-
examination of a witness, the party shall not be entitled to rely on any 
document or thing not mentioned in one or more of the affidavits filed 
under this paragraph, except to the extent necessary to conduct proper 
redirect. The party who gives notice of a deposition shall be 
responsible for providing a translator if the witness does not testify 
in English, for obtaining a court reporter, and for filing a certified 
transcript of the deposition as required by Sec. 1.676. Within 45 days 
of the close of the period for taking cross-examination, the party shall 
serve (but not file) a copy of each deposition transcript on each 
opponent together with copies of any additional documentary exhibits 
identified by the witness during the deposition. The pages of deposition 
transcripts and exhibits served under this paragraph shall be 
sequentially numbered by the party in the manner set forth in 
Sec. 1.672(d). The deposition transcripts shall be accompanied by an 
index of the names of the witnesses, giving the number of the page where 
cross-examination, redirect and recross of each witness begins, and an 
index of exhibits of the type specified in Sec. 1.672(b).
    (d) A party may not rely upon any other matter obtained by discovery 
unless it is introduced into evidence under this subpart.

[60 FR 14535, Mar. 17, 1995]



Sec. 1.690  Arbitration of interferences.

    (a) Parties to a patent interference may determine the interference 
or any aspect thereof by arbitration. Such arbitration shall be governed 
by the provisions of Title 9, United States Code. The parties must 
notify the Board in writing of their intention to arbitrate. An 
agreement to arbitrate must be in writing, specify the issues to be 
arbitrated, the name of the arbitrator or a date not more than thirty 
(30) days after the execution of the agreement for the selection of the 
arbitrator, and provide that the arbitrator's award shall be binding on 
the parties and that judgment thereon can be entered by the Board. A 
copy of the agreement must be filed within twenty (20) days after its 
execution. The parties shall be solely responsible for the selection of 
the arbitrator and the rules for conducting proceedings before the 
arbitrator. Issues not disposed of by the arbitration will be resolved 
in accordance with the procedures established in this subpart, as 
determined by the administrative patent judge.
    (b) An arbitration proceeding under this section shall be conducted 
within such time as may be authorized on a

[[Page 152]]

case-by-case basis by an administrative patent judge.
    (c) An arbitration award will be given no consideration unless it is 
binding on the parties, is in writing and states in a clear and definite 
manner the issue or issues arbitrated and the disposition of each issue. 
The award may include a statement of the grounds and reasoning in 
support thereof. Unless otherwise ordered by an administrative patent 
judge, the parties shall give notice to the Board of an arbitration 
award by filing within twenty (20) days from the date of the award a 
copy of the award signed by the arbitrator or arbitrators. When an award 
is timely filed, the award shall, as to the parties to the arbitration, 
be dispositive of the issue or issues to which it relates.
    (d) An arbitration award shall not preclude the Office from 
determining patentability of any invention involved in the interference.

[52 FR 13838, Apr. 27, 1987, as amended at 60 FR 14535, Mar. 17, 1995]



                   Subpart F--Extension of Patent Term

    Authority: 35 U.S.C. 6 and 156.

    Source: 52 FR 9394, Mar. 24, 1987, unless otherwise noted.



Sec. 1.701  Extension of patent term due to prosecution delay.

    (a) A patent, other than for designs, issued on an application filed 
on or after June 8, 1995, is entitled to extension of the patent term if 
the issuance of the patent was delayed due to:
    (1) Interference proceedings under 35 U.S.C. 135(a); and/or
    (2) The application being placed under a secrecy order under 35 
U.S.C. 181; and/or
    (3) Appellate review by the Board of Patent Appeals and 
Interferences or by a Federal court under 35 U.S.C. 141 or 145, if the 
patent was issued pursuant to a decision reversing an adverse 
determination of patentability and if the patent is not subject to a 
terminal disclaimer due to the issuance of another patent claiming 
subject matter that is not patentably distinct from that under appellate 
review.
    (b) The term of a patent entitled to extension under paragraph (a) 
of this section shall be extended for the sum of the periods of delay 
calculated under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this 
section, to the extent that these periods are not overlapping, up to a 
maximum of five years. The extension will run from the expiration date 
of the patent.
    (c)(1) The period of delay under paragraph (a)(1) of this section 
for an application is the sum of the following periods, to the extent 
that the periods are not overlapping:
    (i) With respect to each interference in which the application was 
involved, the number of days, if any, in the period beginning on the 
date the interference was declared or redeclared to involve the 
application in the interference and ending on the date that the 
interference was terminated with respect to the application; and
    (ii) The number of days, if any, in the period beginning on the date 
prosecution in the application was suspended by the Patent and Trademark 
Office due to interference proceedings under 35 U.S.C. 135(a) not 
involving the application and ending on the date of the termination of 
the suspension.
    (2) The period of delay under paragraph (a)(2) of this section for 
an application is the sum of the following periods, to the extent that 
the periods are not overlapping:
    (i) The number of days, if any, the application was maintained in a 
sealed condition under 35 U.S.C. 181;
    (ii) The number of days, if any, in the period beginning on the date 
of mailing of an examiner's answer under Sec. 1.193 in the application 
under secrecy order and ending on the date the secrecy order and any 
renewal thereof was removed;
    (iii) The number of days, if any, in the period beginning on the 
date applicant was notified that an interference would be declared but 
for the secrecy order and ending on the date the secrecy order and any 
renewal thereof was removed; and
    (iv) The number of days, if any, in the period beginning on the date 
of notification under Sec. 5.3(c) and ending on the date of mailing of 
the notice of allowance under Sec. 1.311.
    (3) The period of delay under paragraph (a)(3) of this section is 
the sum

[[Page 153]]

of the number of days, if any, in the period beginning on the date on 
which an appeal to the Board of Patent Appeals and Interferences was 
filed under 35 U.S.C. 134 and ending on the date of a final decision in 
favor of the applicant by the Board of Patent Appeals and Interferences 
or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action 
under 35 U.S.C. 145.
    (d) The period of delay set forth in paragraph (c)(3) shall be 
reduced by:
    (1) Any time during the period of appellate review that occurred 
before three years from the filing date of the first national 
application for patent presented for examination; and
    (2) Any time during the period of appellate review, as determined by 
the Commissioner, during which the applicant for patent did not act with 
due diligence. In determining the due diligence of an applicant, the 
Commissioner may examine the facts and circumstances of the applicant's 
actions during the period of appellate review to determine whether the 
applicant exhibited that degree of timeliness as may reasonably be 
expected from, and which is ordinarily exercised by, a person during a 
period of appellate review.

[60 FR 20228, Apr. 25, 1995]



Sec. 1.710  Patents subject to extension of the patent term.

    (a) A patent is eligible for extension of the patent term if the 
patent claims a product as defined in paragraph (b) of this section, 
either alone or in combination with other ingredients that read on a 
composition that received permission for commercial marketing or use, or 
a method of using such a product, or a method of manufacturing such a 
product, and meets all other conditions and requirements of this 
subpart.
    (b) The term product referred to in paragraph (a) of this section 
means--
    (1) The active ingredient of a new human drug, antibiotic drug, or 
human biological product (as those terms are used in the Federal Food, 
Drug, and Cosmetic Act and the Public Health Service Act) including any 
salt or ester of the active ingredient, as a single entity or in 
combination with another active ingredient; or
    (2) The active ingredient of a new animal drug or veterinary 
biological product (as those terms are used in the Federal Food, Drug, 
and Cosmetic Act and the Virus-Serum-Toxin Act) that is not primarily 
manufactured using recombinant DNA, recombinant RNA, hybridoma 
technology, or other processes including site specific genetic 
manipulation techniques, including any salt or ester of the active 
ingredient, as a single entity or in combination with another active 
ingredient; or
    (3) Any medical device, food additive, or color additive subject to 
regulation under the Federal Food, Drug, and Cosmetic Act.

[54 FR 30379, July 20, 1989]



Sec. 1.720  Conditions for extension of patent term.

    The term of a patent may be extended if:
    (a) The patent claims a product or a method of using or 
manufacturing a product as defined in Sec. 1.710;
    (b) The term of the patent has never been previously extended except 
for any interim extension issued pursuant to Sec. 1.760;
    (c) An application for extension is submitted in compliance with 
Sec. 1.740;
    (d) The product has been subject to a regulatory review period as 
defined in 35 U.S.C. 156(g) before its commercial marketing or use;
    (e) The product has received permission for commercial marketing or 
use and--
    (1) The permission for the commercial marketing or use of the 
product is the first received permission for commercial marketing or use 
under the provision of law under which the applicable regulatory review 
occurred, or
    (2) In the case of a patent other than one directed to subject 
matter within Sec. 1.710(b)(2) claiming a method of manufacturing the 
product that primarily uses recombinant DNA technology in the 
manufacture of the product, the permission for the commercial marketing 
or use is the first received permission for the commercial marketing or 
use of a product manufactured under the process claimed in the patent, 
or
    (3) In the case of a patent claiming a new animal drug or a 
veterinary biological product that is not covered by

[[Page 154]]

the claims in any other patent that has been extended, and has received 
permission for the commercial marketing or use in non-food-producing 
animals and in food-producing animals, and was not extended on the basis 
of the regulatory review period for use in non-food-producing animals, 
the permission for the commercial marketing or use of the drug or 
product after the regulatory review period for use in food-producing 
animals is the first permitted commercial marketing or use of the drug 
or product for administration to a food-producing animal.
    (f) The application is submitted within the sixty-day period 
beginning on the date the product first received permission for 
commercial marketing or use under the provisions of law under which the 
applicable regulatory review period occurred; or in the case of a patent 
claiming a method of manufacturing the product which primarily uses 
recombinant DNA technology in the manufacture of the product, the 
application for extension is submitted within the sixty-day period 
beginning on the date of the first permitted commercial marketing or use 
of a product manufactured under the process claimed in the patent; or in 
the case of a patent that claims a new animal drug or a veterinary 
biological product that is not covered by the claims in any other patent 
that has been extended, and said drug or product has received permission 
for the commercial marketing or use in non-food-producing animals, the 
application for extension is submitted within the sixty-day period 
beginning on the date of the first permitted commercial marketing or use 
of the drug or product for administration to a food-producing animal;
    (g) The term of the patent has not expired before the submission of 
an application in compliance with Sec. 1.741; and
    (h) No other patent term has been extended for the same regulatory 
review period for the product.

[52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30380, July 20, 1989]



Sec. 1.730  Applicant for extension of patent term.

    Any application for extension of a patent term must be submitted by 
the owner of record of the patent or its agent and must comply with the 
requirements of Sec. 1.740.



Sec. 1.740  Application for extension of patent term.

    (a) An application for extension of patent term must be made in 
writing to the Commissioner of Patents and Trademarks. A formal 
application for the extension of patent term shall include:
    (1) A complete identification of the approved product as by 
appropriate chemical and generic name, physical structure or 
characteristics;
    (2) A complete identification of the Federal statute including the 
applicable provision of law under which the regulatory review occurred;
    (3) An identification of the date on which the product received 
permission for commercial marketing or use under the provision of law 
under which the applicable regulatory review period occurred;
    (4) In the case of a drug product, an identification of each active 
ingredient in the product and as to each active ingredient, a statement 
that it has not been previously approved for commercial marketing or use 
under the Federal Food, Drug, and Cosmetic Act, the Public Health 
Service Act, or the Virus-Serum-Toxin Act, or a statement of when the 
active ingredient was approved for commercial marketing or use (either 
alone or in combination with other active ingredients), the use for 
which it was approved, and the provision of law under which it was 
approved.
    (5) A statement that the application is being submitted within the 
sixty day period permitted for submission pursuant to Sec. 1.720(f) and 
an identification of the date of the last day on which the application 
could be submitted;
    (6) A complete identification of the patent for which an extension 
is being sought by the name of the inventor, the patent number, the date 
of issue, and the date of expiration;
    (7) A copy of the patent for which an extension is being sought, 
including the entire specification (including claims) and drawings;

[[Page 155]]

    (8) A copy of any disclaimer, certificate of correction, receipt of 
maintenance fee payment, or reexamination certificate issued in the 
patent;
    (9) A statement that the patent claims the approved product or a 
method of using or manufacturing the approved product, and a showing 
which lists each applicable patent claim and demonstrates the manner in 
which each applicable patent claim reads on the approved product or 
method of using or manufacturing the approved product;
    (10) A statement, beginning on a new page, of the relevant dates and 
information pursuant to 35 U.S.C. 156(g) in order to enable the 
Secretary of Health and Human Services or the Secretary of Agriculture, 
as appropriate, to determine the applicable regulatory review period as 
follows:
    (i) For a patent claiming a human drug, antibiotic, or human 
biological product, the effective date of the investigational new drug 
(IND) application and the IND number; the date on which a new drug 
application (NDA) or a Product License Application (PLA) was initially 
submitted and the NDA or PLA number and the date on which the NDA was 
approved or the Product License issued;
    (ii) For a patent claiming a new animal drug, the date a major 
health or environmental effects test on the drug was initiated and any 
available substantiation of the date or the date of an exemption under 
subsection (j) of section 512 of the Federal Food, Drug, and Cosmetic 
Act became effective for such animal drug; the date on which a new 
animal drug application (NADA) was initially submitted and the NADA 
number; and the date on which the NADA was approved;
    (iii) For a patent claiming a veterinary biological product, the 
date the authority to prepare an experimental biological product under 
the Virus-Serum-Toxin Act became effective; the date an application for 
a license was submitted under the Virus-Serum-Toxin Act; and the date 
the license issued;
    (iv) For a patent claiming a food or color additive, the date a 
major health or environmental effects test on the additive was initiated 
and any available substantiation of that date; the date on which a 
petition for product approval under the Federal Food, Drug, and Cosmetic 
Act was initially submitted and the petition number; and the date on 
which the FDA published the Federal Register notice listing the additive 
for use;
    (v) For a patent claiming a medical device, the effective date of 
the investigational device exemption (IDE) and the IDE number, if 
applicable, or the date on which the applicant began the first clinical 
investigation involving the device if no IDE was submitted and any 
available substantiation of that date; the date on which the application 
for product approval or notice of completion of a product development 
protocol under section 515 of the Federal Food, Drug, and Cosmetic Act 
was initially submitted and the number of the application or protocol; 
and the date on which the application was approved or the protocol 
declared to be completed.
    (11) A brief description beginning on a new page of the significant 
activities undertaken by the marketing applicant during the applicable 
regulatory review period with respect to the approved product and the 
significant dates applicable to such activities;
    (12) A statement beginning on a new page that in the opinion of the 
applicant the patent is eligible for the extension and a statement as to 
the length of extension claimed, including how the length of extension 
was determined;
    (13) A statement that applicant acknowledges a duty to disclose to 
the Commissioner of Patents and Trademarks and the Secretary of Health 
and Human Services or the Secretary of Agriculture any information which 
is material to the determination of entitlement to the extension sought 
(see Sec. 1.765);
    (14) The prescribed fee for receiving and acting upon the 
application for extension (see Sec. 1.20(j)).
    (15) The name, address, and telephone number of the person to whom 
inquiries and correspondence relating to the application for patent term 
extension are to be directed;
    (16) A duplicate of the application papers, certified as such; and

[[Page 156]]

    (17) An oath or declaration as set forth in paragraph (b) of this 
section.
    (b) Any oath or declaration submitted in compliance with paragraph 
(a) of this section must be signed by the owner of record of the patent 
or its agent, specifically identify the papers and the patent for which 
an extension is sought and aver that the person signing the oath or 
declaration:
    (1) Is the owner, an official of a corporate owner authorized to 
obligate the corporation, or a patent attorney or agent authorized to 
practice before the Patent and Trademark Office and who has general 
authority from the owner to act on behalf of the owner in patent 
matters.
    (2) Has reviewed and understands the contents of the application 
being submitted pursuant to this section;
    (3) Believes the patent is subject to extension pursuant to 
Sec. 1.710;
    (4) Believes an extension of the length claimed is justified under 
35 U.S.C. 156 and the applicable regulations; and
    (5) Believes the patent for which the extension is being sought 
meets the conditions for extension of the term of a patent as set forth 
in Sec. 1.720.
    (c) If any application for extension of patent term submitted 
pursuant to this section is held to be informal, applicant may seek to 
have that holding reviewed by filing a petition with the required fee, 
as necessary, pursuant to Sec. 1.181, Sec. 1.182 or Sec. 1.183, as 
appropriate, within such time as may be set in the notice that the 
application has been held to be informal, or if no time is set, within 
one month of the date on which the application was held informal. The 
time periods set forth herein are subject to the provisions of 37 CFR 
1.136.

[54 FR 9394, Mar. 24, 1987, as amended at 54 FR 30380, July 20, 1989; 56 
FR 65155, Dec. 13, 1991]



Sec. 1.741  Filing date of application.

    (a) The filing date of an application for extension of a patent term 
is the date on which a complete application is received in the Patent 
and Trademark Office or filed pursuant to the ``Certificate of Mailing 
or Transmission'' procedures of 37 CFR 1.8 or ``Express Mail'' 
provisions of 37 CFR 1.10. A complete application shall include:
    (1) An identification of the approved product;
    (2) An identification of each Federal statute under which regulatory 
review occurred;
    (3) An identification of the patent for which an extension is being 
sought;
    (4) An identification of each claim of the patent which claims the 
approved product or a method of using or manufacturing the approved 
product;
    (5) Sufficient information to enable the Commissioner to determine 
under 35 U.S.C. 156 subsections (a) and (b) the eligibility of a patent 
for extension and the rights that will be derived from the extension and 
information to enable the Commissioner and the Secretary of Health and 
Human Services or the Secretary of Agriculture to determine the length 
of the regulatory review period; and
    (6) A brief description of the activities undertaken by the 
marketing applicant during the applicable regulatory review period with 
respect to the approved product and the significant dates applicable to 
such activities.
    (b) If any application submitted pursuant to this section is held to 
be incomplete, applicant may seek to have this holding reviewed under 
Sec. 1.181.

[52 FR 9394, Mar. 24, 1987, as amended at 59 FR 54503, Oct. 22, 1993; 61 
FR 64028, Dec. 3, 1996]



Sec. 1.750  Determination of eligibility for extension of patent term.

    A determination as to whether a patent is eligible for extension may 
be made by the Commissioner solely on the basis of the representations 
contained in the application for extension filed in compliance with 
Sec. 1.740 or Sec. 1.790. This determination may be delegated to 
appropriate Patent and Trademark Office officials and may be made at any 
time before the certificate of extension is issued. The Commissioner or 
other appropriate officials may require from applicant further 
information or make such independent inquiries as desired before a final 
determination is made on whether a patent is eligible for extension. In 
an application for extension filed in compliance with Sec. 1.740,

[[Page 157]]

a notice will be mailed to applicant containing the determination as to 
the eligibility of the patent for extension and the period of time of 
the extension, if any. This notice shall constitute the final 
determination as to the eligibility and any period of extension of the 
patent. A single request for reconsideration of a final determination 
may be made if filed by the applicant within such time as may be set in 
the notice of final determination or, if no time is set, within one 
month from the date of the final determination. The time periods set 
forth herein are subject to the provisions of Sec. 1.136.

[60 FR 25618, May 12, 1995]



Sec. 1.760  Interim extension of patent term under 35 U.S.C. 156(e)(2).

    An applicant who has filed a formal application for extension in 
compliance with Sec. 1.740 may request one or more interim extensions 
for periods of up to one year each pending a final determination on the 
application pursuant to Sec. 1.750. Any such request should be filed at 
least three months prior to the expiration date of the patent. The 
Commissioner may issue interim extensions, without a request by the 
applicant, for periods of up to one year each until a final 
determination is made. The patent owner or agent will be notified when 
an interim extension is granted and notice of the extension will be 
published in the Offical Gazette of the Patent and Trademark Office. The 
notice will be recorded in the official file of the patent and will be 
considered as part of the original patent. In no event will the interim 
extensions granted under this section be longer than the maximum period 
of extension to which the applicant would be eligible.

[52 FR 9394, Mar. 24, 1987, as amended at 60 FR 25618, May 12, 1995]



Sec. 1.765  Duty of disclosure in patent term extension proceedings.

    (a) A duty of candor and good faith toward the Patent and Trademark 
Office and the Secretary of Health and Human Services or the Secretary 
of Agriculture rests on the patent owner or its agent, on each attorney 
or agent who represents the patent owner and on every other individual 
who is substantively involved on behalf of the patent owner in a patent 
term extension proceeding. All such individuals who are aware, or become 
aware, of material information adverse to a determination of entitlement 
to the extension sought, which has not been previously made of record in 
the patent term extension proceeding must bring such information to the 
attention of the Office or the Secretary, as appropriate, in accordance 
with paragraph (b) of this section, as soon as it is practical to do so 
after the individual becomes aware of the information. Information is 
material where there is a substantial likelihood that the Office or the 
Secretary would consider it important in determinations to be made in 
the patent term extension proceeding.
    (b) Disclosures pursuant to this section must be accompanied by a 
copy of each written document which is being disclosed. The disclosure 
must be made to the Office or the Secretary, as appropriate, unless the 
disclosure is material to determinations to be made by both the Office 
and the Secretary, in which case duplicate copies, certified as such, 
must be filed in the Office and with the Secretary. Disclosures pursuant 
to this section may be made to the Office or the Secretary, as 
appropriate, through an attorney or agent having responsibility on 
behalf of the patent owner or its agent for the patent term extension 
proceeding or through a patent owner acting on his or her own behalf. 
Disclosure to such an attorney, agent or patent owner shall satisfy the 
duty of any other individual. Such an attorney, agent or patent owner 
has no duty to transmit information which is not material to the 
determination of entitlement to the extension sought.
    (c) No patent will be determined eligible for extension and no 
extension will be issued if it is determined that fraud on the Office or 
the Secretary was practiced or attempted or the duty of disclosure was 
violated through bad faith or gross negligence in connection with the 
patent term extension proceeding. If it is established by clear and 
convincing evidence that any fraud was practiced or attempted on the 
Office or the Secretary in connection with the

[[Page 158]]

patent term extension proceeding or that there was any violation of the 
duty of disclosure through bad faith or gross negligence in connection 
with the patent term extension proceeding, a final determination will be 
made pursuant to Sec. 1.750 that the patent is not eligible for 
extension.
    (d) The duty of disclosure pursuant to this section rests on the 
individuals identified in paragraph (a) of this section and no 
submission on behalf of third parties, in the form of protests or 
otherwise, will be considered by the Office. Any such submissions by 
third parties to the Office will be returned to the party making the 
submission, or otherwise disposed of, without consideration by the 
Office.

[24 FR 10332, Dec. 22, 1959, as amended at 54 FR 30381, July 20, 1989; 
60 FR 25618, May 12, 1995]



Sec. 1.770  Express withdrawal of application for extension of patent term.

    An application for extension of patent term may be expressly 
withdrawn before a determination is made pursuant to Sec. 1.750 by 
filing in the Office, in duplicate, a written declaration of withdrawal 
signed by the owner of record of the patent or its agent. An application 
may not be expressly withdrawn after the date permitted for reply to the 
final determination on the application. An express withdrawal pursuant 
to this section is effective when acknowledged in writing by the Office. 
The filing of an express withdrawal pursuant to this section and its 
acceptance by the Office does not entitle applicant to a refund of the 
filing fee (Sec. 1.20(j)) or any portion thereof.

[62 FR 53201, Oct. 10, 1997]



Sec. 1.775  Calculation of patent term extension for a human drug, antibiotic drug or human biological product.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for a human drug, antibiotic drug or human biological product is 
eligible for extension, the term shall be extended by the time as 
calculated in days in the manner indicated by this section. The patent 
term extension will run from the original expiration date of the patent 
or any earlier date set by terminal disclaimer (Sec. 1.321).
    (b) The term of the patent for a human drug, antibiotic drug or 
human biological product will be extended by the length of the 
regulatory review period for the product as determined by the Secretary 
of Health and Human Services, reduced as appropriate pursuant to 
paragraphs (d)(1) through (d)(6) of this section.
    (c) The length of the regulatory review period for a human drug, 
antibiotic drug or human biological product will be determined by the 
Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(1)(B), it 
is the sum of--
    (1) The number of days in the period beginning on the date an 
exemption under subsection (i) of section 505 or subsection (d) of 
section 507 of the Federal Food, Drug, and Cosmetic Act became effective 
for the approved product and ending on the date the application was 
initially submitted for such product under those sections or under 
section 351 of the Public Health Service Act; and
    (2) The number of days in the period beginning on the date the 
application was initially submitted for the approved product under 
section 351 of the Public Health Service Act, subsection (b) of section 
505 or section 507 of the Federal Food, Drug, and Cosmetic Act and 
ending on the date such application was approved under such section.
    (d) The term of the patent as extended for a human drug, antibiotic 
drug or human biological product will be determined by--
    (1) Subtracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section which were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;

[[Page 159]]

    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date of approval of the application 
under section 351 of the Public Health Service Act, or subsection (b) of 
section 505 or section 507 of the Federal Food, Drug, and Cosmetic Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after September 24, 1984,
    (i) By adding 5 years to the original expiration date of the patent 
or any earlier date set by terminal disclaimer; and
    (ii) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before September 24, 1984, and
    (i) If no request was submitted for an exemption under subsection 
(i) of section 505 or subsection (d) of section 507 of the Federal Food, 
Drug, and Cosmetic Act before September 24, 1984, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(i)(A) of this section with each other and selecting the 
earlier date; or
    (ii) If a request was submitted for an exemption under subsection 
(i) of section 505 or subsection (d) of section 507 of the Federal Food, 
Drug, or Cosmetic Act before September 24, 1984 and the commercial 
marketing or use of the product was not approved before September 24, 
1984, by--
    (A) Adding 2 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(ii)(A) of this section with each other and selecting the 
earlier date.

[52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30381, July 20, 1989]



Sec. 1.776  Calculation of patent term extension for a food additive or color additive.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for a food additive or color additive is eligible for extension, the 
term shall be extended by the time as calculated in days in the manner 
indicated by this section. The patent term extension will run from the 
original expiration date of the patent or earlier date set by terminal 
disclaimer (Sec. 1.321).
    (b) The term of the patent for a food additive or color additive 
will be extended by the length of the regulatory review period for the 
product as determined by the Secretary of Health and Human Services, 
reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of 
this section.
    (c) The length of the regulatory review period for a food additive 
or color additive will be determined by the Secretary of Health and 
Human Services. Under 35 U.S.C. 156(g)(2)(B), it is the sum of--
    (1) The number of days in the period beginning on the date a major 
health or environmental effects test on the additive was initiated and 
ending on the date a petition was initially submitted with respect to 
the approved product under the Federal Food, Drug, and Cosmetic Act 
requesting the issuance of a regulation for use of the product; and
    (2) The number of days in the period beginning on the date a 
petition was initially submitted with respect to the approved product 
under the Federal Food, Drug, and Cosmetic Act requesting the issuance 
of a regulation for use of the product, and ending on the date such 
regulation became effective or, if objections were filed to such 
regulation, ending on the date such objections were resolved and 
commercial marketing was permitted or, if commercial marketing was 
permitted and later revoked pending further proceedings as a result of 
such objections,

[[Page 160]]

ending on the date such proceedings were finally resolved and commercial 
marketing was permitted.
    (d) The term of the patent as extended for a food additive or color 
additive will be determined by
    (1) Subtracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section which were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;
    (iii) The number of days equal to one-half the number of days 
remaining in the period defined by paragraph (c)(1) of this section 
after that period is reduced in accordance with paragraphs (d)(1) (i) 
and (ii) of this section; half days will be ignored for purposes of 
subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date a regulation for use of the 
product became effective or, if objections were filed to such 
regulation, to the date such objections were resolved and commercial 
marketing was permitted or, if commercial marketing was permitted and 
later revoked pending further proceedings as a result of such 
objections, to the date such proceedings were finally resolved and 
commercial marketing was permitted;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after September 24, 1984,
    (i) By adding 5 years to the original expiration date of the patent 
or earlier date set by terminal disclaimer; and
    (ii) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before September 24, 1984, and
    (i) If no major health or environmental effects test was initiated 
and no petition for a regulation or application for registration was 
submitted before September 24, 1984, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(i)(A) of this section with each other and selecting the 
earlier date; or
    (ii) If a major health or environmental effects test was initiated 
or a petition for a regulation or application for registration was 
submitted by September 24, 1984, and the commercial marketing or use of 
the product was not approved before September 24, 1984, by--
    (A) Adding 2 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(ii)(A) of this section with each other and selecting the 
earlier date.



Sec. 1.777  Calculation of patent term extension for a medical device.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for a medical device is eligible for extension, the term shall be 
extended by the time as calculated in days in the manner indicated by 
this section. The patent term extension will run from the original 
expiration date of the patent or earlier date as set by terminal 
disclaimer (Sec. 1.321).
    (b) The term of the patent for a medical device will be extended by 
the length of the regulatory review period for the product as determined 
by the Secretary of Health and Human Services, reduced as appropriate 
pursuant to paragraphs (d)(1) through (d)(6) of this section.
    (c) The length of the regulatory review period for a medical device 
will be determined by the Secretary of Health and Human Services. Under 
35 U.S.C. 156(g)(3)(B), it is the sum of

[[Page 161]]

    (1) The number of days in the period beginning on the date a 
clinical investigation on humans involving the device was begun and 
ending on the date an application was initially submitted with respect 
to the device under section 515 of the Federal Food, Drug, and Cosmetic 
Act; and
    (2) The number of days in the period beginning on the date the 
application was initially submitted with respect to the device under 
section 515 of the Federal Food, Drug, and Cosmetic Act, and ending on 
the date such application was approved under such Act or the period 
beginning on the date a notice of completion of a product development 
protocol was initially submitted under section 515(f)(5) of the Act and 
ending on the date the protocol was declared completed under section 
515(f)(6) of the Act.
    (d) The term of the patent as extended for a medical device will be 
determined by--
    (1) Substracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period 
pursuant to paragraph (c) of this section:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section which were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;
    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date of approval of the application 
under section 515 of the Federal Food, Drug, and Cosmetic Act or the 
date a product development protocol was declared completed under section 
515(f)(6) of the Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after September 24, 1984,
    (i) By adding 5 years to the original expiration date of the patent 
or earlier date set by terminal disclaimer; and
    (ii) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before September 24, 1984, and
    (i) If no clinical investigation on humans involving the device was 
begun or no product development protocol was submitted under section 
515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 
24, 1984, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(i)(A) of this section with each other and selecting the 
earlier date; or
    (ii) If a clinical investigation on humans involving the device was 
begun or a product development protocol was submitted under section 
515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 
24, 1984 and the commercial marketing or use of the product was not 
approved before September 24, 1984, by
    (A) Adding 2 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(ii)(A) of this section with each other and selecting the 
earlier date.



Sec. 1.778  Calculation of patent term extension for an animal drug product.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for an animal drug is eligible for extension, the term shall be extended 
by the time as calculated in days in the manner indicated by this 
section. The patent term extension will run from the original expiration 
date of the patent or any earlier date set by terminal disclaimer 
(Sec. 1.321).

[[Page 162]]

    (b) The term of the patent for an animal drug will be extended by 
the length of the regulatory review period for the drug as determined by 
the Secretary of Health and Human Services, reduced as appropriate 
pursuant to paragraphs (d)(1) through (d)(6) of this section.
    (c) The length of the regulatory review period for an animal drug 
will be determined by the Secretary of Health and Human Services. Under 
35 U.S.C. 156(g)(4)(B), it is the sum of--
    (1) The number of days in the period beginning on the earlier of the 
date a major health or environmental effects test on the drug was 
initiated or the date an exemption under subsection (j) of section 512 
of the Federal Food, Drug, and Cosmetic Act became effective for the 
approved animal drug and ending on the date an application was initially 
submitted for such animal drug under section 512 of the Federal Food, 
Drug, and Cosmetic Act; and
    (2) The number of days in the period beginning on the date the 
application was initially submitted for the approved animal drug under 
subsection (b) of section 512 of the Federal Food, Drug, and Cosmetic 
Act and ending on the date such application was approved under such 
section.
    (d) The term of the patent as extended for an animal drug will be 
determined by--
    (1) Subtracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section that were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;
    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date of approval of the application 
under section 512 of the Federal Food, Drug, and Cosmetic Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after November 16, 1988, by--
    (i) Adding 5 years to the original expiration date of the patent or 
any earlier date set by terminal disclaimer; and
    (ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before November 16, 1988, and
    (i) If no major health or environmental effects test on the drug was 
initiated and no request was submitted for an exemption under subsection 
(j) of section 512 of the Federal Food, Drug, and Cosmetic Act before 
November 16, 1988, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(i)(A) of this section with each other and selecting the earlier 
date; or
    (ii) If a major health or environmental effects test was initiated 
or a request for an exemption under subsection (j) of section 512 of the 
Federal Food, Drug, and Cosmetic Act was submitted before November 16, 
1988, and the application for commercial marketing or use of the animal 
drug was not approved before November 16, 1988, by--
    (A) Adding 3 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(ii)(A) of this section with each other and selecting the earlier 
date.

[54 FR 30381, July 20, 1989]

[[Page 163]]



Sec. 1.779  Calculation of patent term extension for a veterinary biological product.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for a veterinary biological product is eligible for extension, the term 
shall be extended by the time as calculated in days in the manner 
indicated by this section. The patent term extension will run from the 
original expiration date of the patent or any earlier date set by 
terminal disclaimer (Sec. 1.321).
    (b) The term of the patent for a veterinary biological product will 
be extended by the length of the regulatory review period for the 
product as determined by the Secretary of Agriculture, reduced as 
appropriate pursuant to paragraphs (d)(1) through (d)(6) of this 
section.
    (c) The length of the regulatory review period for a veterinary 
biological product will be determined by the Secretary of Agriculture. 
Under 35 U.S.C. 156(g)(5)(B), it is the sum of--
    (1) The number of days in the period beginning on the date the 
authority to prepare an experimental biological product under the Virus-
Serum-Toxin Act became effective and ending on the date an application 
for a license was submitted under the Virus-Serum-Toxin Act; and
    (2) The number of days in the period beginning on the date an 
application for a license was initially submitted for approval under the 
Virus-Serum-Toxin Act and ending on the date such license was issued.
    (d) The term of the patent as extended for a veterinary biological 
product will be determined by--
    (1) Subtracting from the number of days determined by the Secretary 
of Agriculture to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section that were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Agriculture that applicant did not act 
with due diligence;
    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date of the issuance of a license 
under the Virus-Serum-Toxin Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after November 16, 1988, by--
    (i) Adding 5 years to the original expiration date of the patent or 
any earlier date set by terminal disclaimer; and
    (ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before November 16, 1988, and
    (i) If no request for the authority to prepare an experimental 
biological product under the Virus-Serum-Toxin Act was submitted before 
November 16, 1988, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(i)(A) of this section with each other and selecting the earlier 
date; or
    (ii) If a request for the authority to prepare an experimental 
biological product under the Virus-Serum-Toxin Act was submitted before 
November 16, 1988, and the commercial marketing or use of the product 
was not approved before November 16, 1988, by--
    (A) Adding 3 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(ii)(A) of this section with each other and selecting the earlier 
date.

[52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30382, July 20, 1989]

[[Page 164]]



Sec. 1.780  Certificate of extension of patent term.

    If a determination is made pursuant to Sec. 1.750 that a patent is 
eligible for extension and that the term of the patent is to be 
extended, a certificate of extension, under seal, or certificate of 
interim extension under 35 U.S.C. 156(d)(5) will be issued to the 
applicant for the extension of the patent term. Such certificate will be 
recorded in the official file of the patent and will be considered as 
part of the original patent. Notification of the issuance of the 
certificate of extension will be published in the Official Gazette of 
the Patent and Trademark Office. Notification of the issuance of the 
certificate of interim extension under 35 U.S.C. 156(d)(5), including 
the identity of the product currently under regulatory review, will be 
published in the Official Gazette of the Patent and Trademark Office and 
in the Federal Register. No certificate of extension will be issued if 
the term of the patent cannot be extended, even though the patent is 
otherwise determined to be eligible for extension. In such situations 
the final determination made pursuant to Sec. 1.750 will indicate that 
no certificate will issue.

[60 FR 25618, May 12, 1995]



Sec. 1.785  Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product.

    (a) Only one patent may be extended for a regulatory review period 
for any product (Sec. 1.720(h)). If more than one application for 
extension of the same patent is filed, the certificate of extension of 
patent term, if appropriate, will be issued based upon the first filed 
application for extension.
    (b) If more than one application for extension is filed by a single 
applicant which seeks the extension of the term of two or more patents 
based upon the same regulatory review period, and the patents are 
otherwise eligible for extension pursuant to the requirements of this 
subpart, in the absence of an election by the applicant, the certificate 
of extension of patent term, if appropriate, will be issued upon the 
application for extension of the patent term having the earliest date of 
issuance of those patents for which extension is sought.
    (c) If an application for extension is filed which seeks the 
extension of the term of a patent based upon the same regulatory review 
period as that relied upon in one or more applications for extension 
pursuant to the requirements of this subpart, the certificate of 
extension of patent term will be issued on the application only if the 
patent owner or its agent is the holder of the regulatory approval 
granted with respect to the regulatory review period.
    (d) An application for extension shall be considered complete and 
formal regardless of whether it contains the identification of the 
holder of the regulatory approval granted with respect to the regulatory 
review period. When an application contains such information, or is 
amended to contain such information, it will be considered in 
determining whether an application is eligible for an extension under 
this section. A request may be made of any applicant to supply such 
information within a non-extendable period of not less than one month 
whenever multiple applications for extension of more than one patent are 
received and rely upon the same regulatory review period. Failure to 
provide such information within the period for reply set shall be 
regarded as conclusively establishing that the applicant is not the 
holder of the regulatory approval.
    (e) Determinations made under this section shall be included in the 
notice of final determination of eligibility for extension of the patent 
term pursuant to Sec. 1.750 and shall be regarded as part of that 
determination.

[60 FR 25618, May 12, 1995, as amended at 62 FR 53201, Oct. 10, 1997]



Sec. 1.790  Interim extension of patent term under 35 U.S.C. 156(d)(5).

    (a) An owner of record of a patent or its agent who reasonably 
expects that the applicable regulatory review period described in 
paragraph (1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) 
of subsection (g) that began for a product that is the subject of such 
patent may extend beyond the expiration of the patent term in effect may

[[Page 165]]

submit one or more applications for interim extensions for periods of up 
to one year each. The initial application for interim extension must be 
filed during the period beginning 6 months and ending 15 days before the 
patent term is due to expire. Each subsequent application for interim 
extension must be filed during the period beginning 60 days before and 
ending 30 days before the expiration of the preceding interim extension. 
In no event will the interim extensions granted under this section be 
longer than the maximum period of extension to which the applicant would 
be entitled under 35 U.S.C. 156(c).
    (b) A complete application for interim extension under this section 
shall include all of the information required for a formal application 
under Sec. 1.740 and a complete application under Sec. 1.741. Sections 
(a)(1), (a)(2), (a)(4), and (a)(6)-(a)(17) of Sec. 1.740 and Sec. 1.741 
shall be read in the context of a product currently undergoing 
regulatory review. Sections (a)(3) and (a)(5) of Sec. 1.740 are not 
applicable to an application for interim extension under this section.
    (c) The content of each subsequent interim extension application may 
be limited to a request for a subsequent interim extension along with a 
statement that the regulatory review period has not been completed along 
with any materials or information required under Secs. 1.740 and 1.741 
that are not present in the preceding interim extension application.

[60 FR 25619, May 12, 1995]



Sec. 1.791  Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use.

    Any interim extension granted under 35 U.S.C. 156(d)(5) terminates 
at the end of the 60-day period beginning on the date on which the 
product involved receives permission for commercial marketing or use. If 
within that 60-day period the patent owner or its agent files an 
application for extension under Secs. 1.740 and 1.741 including any 
additional information required under 35 U.S.C. 156(d)(1) not contained 
in the application for interim extension, the patent shall be further 
extended in accordance with the provisions of 35 U.S.C. 156.

[60 FR 25619, May 12, 1995]



             Subpart G--Biotechnology Invention Disclosures

                     Deposit of Biological Material

    Source: 54 FR 34880, Aug. 22, 1989, unless otherwise noted.



Sec. 1.801  Biological material.

    For the purposes of these regulations pertaining to the deposit of 
biological material for purposes of patents for inventions under 35 
U.S.C. 101, the term biological material shall include material that is 
capable of self-replication either directly or indirectly. 
Representative examples include bacteria, fungi including yeast, algae, 
protozoa, eukaryotic cells, cell lines, hybridomas, plasmids, viruses, 
plant tissue cells, lichens and seeds. Viruses, vectors, cell organelles 
and other non-living material existing in and reproducible from a living 
cell may be deposited by deposit of the host cell capable of reproducing 
the non-living material.



Sec. 1.802  Need or opportunity to make a deposit.

    (a) Where an invention is, or relies on, a biological material, the 
disclosure may include reference to a deposit of such biological 
material.
    (b) Biological material need not be deposited unless access to such 
material is necessary for the satisfaction of the statutory requirements 
for patentability under 35 U.S.C. 112. If a deposit is necessary, it 
shall be acceptable if made in accordance with these regulations. 
Biological material need not be deposited, inter alia, if it is known 
and readily avaliable to the public or can be made or isolated without 
undue experimentation. Once deposited in a depository complying with 
these regulations, a biological material will be considered to be 
readily available even though some requirement of law or regulation of 
the United States or of the country in which the depository institution 
is located permits access to the

[[Page 166]]

material only under conditions imposed for safety, public health or 
similar reasons.
    (c) The reference to a biological material in a specification 
disclosure or the actual deposit of such material by an applicant or 
patent owner does not create any presumption that such material is 
necessary to satisfy 35 U.S.C. 112 or that deposit in accordance with 
these regulations is or was required.



Sec. 1.803  Acceptable depository.

    (a) A deposit shall be recognized for the purposes of these 
regulations if made in
    (1) Any International Depositary Authority (IDA) as established 
under the Budapest Treaty on the International Recognition of the 
Deposit of Microorganisms for the Purposes of Patent Procedure, or
    (2) Any other depository recognized to be suitable by the Office. 
Suitability will be determined by the Commissioner on the basis of the 
administrative and technical competence, and agreement of the depository 
to comply with the terms and conditions applicable to deposits for 
patent purposes. The Commissioner may seek the advice of impartial 
consultants on the suitability of a depository. The depository must:
    (i) Have a continuous existence;
    (ii) Exist independent of the control of the depositor;
    (iii) Possess the staff and facilities sufficient to examine the 
viability of a deposit and store the deposit in a manner which ensures 
that it is kept viable and uncontaminated;
    (iv) Provide for sufficient safety measures to minimize the risk of 
losing biological material deposited with it;
    (v) Be impartial and objective;
    (vi) Furnish samples of the deposited material in an expeditious and 
proper manner; and
    (vii) Promptly notify depositors of its inability to furnish 
samples, and the reasons why.
    (b) A depository seeking status under paragraph (a)(2) of this 
section must direct a communication to the Commissioner which shall:
    (1) Indicate the name and address of the depository to which the 
communication relates;
    (2) Contain detailed information as to the capacity of the 
depository to comply with the requirements of paragraph (a)(2) of this 
section, including information on its legal status, scientific standing, 
staff and facilities;
    (3) Indicate that the depository intends to be available, for the 
purposes of deposit, to any depositor under these same conditions;
    (4) Where the depository intends to accept for deposit only certain 
kinds of biological material, specify such kinds;
    (5) Indicate the amount of any fees that the depository will, upon 
acquiring the status of suitable depository under paragraph (a)(2) of 
this section, charge for storage, viability statements and furnishings 
of samples of the deposit.
    (c) A depository having status under paragraph (a)(2) of this 
section limited to certain kinds of biological material may extend such 
status to additional kinds of biological material by directing a 
communication to the Commissioner in accordance with paragraph (b) of 
this section. If a previous communication under paragraph (b) of this 
section is of record, items in common with the previous communication 
may be incorporated by reference.
    (d) Once a depository is recognized to be suitable by the 
Commissioner or has defaulted or discontinued its performance under this 
section, notice thereof will be published in the Office Gazette of the 
Patent and Trademark Office.



Sec. 1.804  Time of making an original deposit.

    (a) Whenever a biological material is specifically identified in an 
application for patent as filed, an original deposit thereof may be made 
at any time before filing the application for patent or, subject to 
Sec. 1.809, during pendency of the application for patent.
    (b) When the original deposit is made after the effective filing 
date of an application for patent, the applicant must promptly submit a 
statement

[[Page 167]]

from a person in a position to corroborate the fact, stating that the 
biological material which is deposited is a biological material 
specifically identified in the application as filed.

[54 FR 34880, Aug. 22, 1989, as amended at 62 FR 53202, Oct. 10, 1997]



Sec. 1.805  Replacement or supplement of deposit.

    (a) A depositor, after receiving notice during the pendency of an 
application for patent, application for reissue patent or reexamination 
proceeding, that the depository possessing a deposit either cannot 
furnish samples thereof or can furnish samples thereof but the deposit 
has become contaminated or has lost its capability to function as 
described in the specification, shall notify the Office in writing, in 
each application for patent or patent affected. In such a case, or where 
the Office otherwise learns, during the pendency of an application for 
patent, application for reissue patent or reexamination proceeding, that 
the depository possessing a deposit either cannot furnish samples 
thereof or can furnish samples thereof but the deposit has become 
contaminated or has lost its capability to function as described in the 
specification, the need for making a replacement or supplemental deposit 
will be governed by the same considerations governing the need for 
making an original deposit under the provisions set forth in 
Sec. 1.802(b). A replacement or supplemental deposit made during the 
pendency of an application for patent shall not be accepted unless it 
meets the requirements for making an original deposit under these 
regulations, including the requirement set forth under Sec. 1.804(b). A 
replacement or supplemental deposit made in connection with a patent, 
whether or not made during the pendency of an application for reissue 
patent or a reexamination proceeding or both, shall not be accepted 
unless a certificate of correction under Sec. 1.323 is requested by the 
patent owner which meets the terms of paragraphs (b) and (c) of this 
section.
    (b) A request for certificate of correction under this section shall 
not be granted unless the certificate identifies:
    (1) The accession number for the replacement or supplemental 
deposit;
    (2) The date of the deposit; and
    (3) The name and address of the depository.
    (c) A request for a certificate of correction under this section 
shall not be granted unless the request is made promptly after the 
replacement or supplemental deposit has been made and the request:
    (1) Includes a statement of the reason for making the replacement or 
supplemental deposit;
    (2) Includes a statement from a person in a position to corroborate 
the fact, and stating that the replacement or supplemental deposit is of 
a biological material which is identical to that originally deposited;
    (3) Includes a showing that the patent owner acted diligently--
    (i) In the case of a replacement deposit, in making the deposit 
after receiving notice that samples could no longer be furnished from an 
earlier deposit; or
    (ii) In the case of a supplemental deposit, in making the deposit 
after receiving notice that the earlier deposit had become contaminated 
or had lost its capability to function as described in the 
specification;
    (4) Includes a statement that the term of the replacement or 
supplemental deposit expires no earlier than the term of the deposit 
being replaced or supplemented; and
    (5) Otherwise establishes compliance with these regulations.
    (d) A depositor's failure to replace a deposit, or in the case of a 
patent, to diligently replace a deposit and promptly thereafter request 
a certificate of correction which meets the terms of paragraphs (b) and 
(c) of this section, after being notified that the depository possessing 
the deposit cannot furnish samples thereof, shall cause the application 
or patent involved to be treated in any Office proceeding as if no 
deposit were made.
    (e) In the event a deposit is replaced according to these 
regulations, the Office will apply a rebuttable presumption of identity 
between the original and the replacement deposit where a patent making 
reference to the deposit

[[Page 168]]

is relied upon during any Office proceeeding.
    (f) A replacement or supplement deposit made during the pendency of 
an application for patent may be made for any reason.
    (g) In no case is a replacement or supplemental deposit of a 
biological material necessary where the biological material, in 
accordance with Sec. 1.802(b), need not be deposited.
    (h) No replacement deposit of a biological material is necessary 
where a depository can furnish samples thereof but the depository for 
national security, health or environmental safety reasons is unable to 
provide samples to requesters outside of the jurisdiction where the 
depository is located.
    (i) The Office will not recognize in any Office proceeding a 
replacement deposit of a biological material made by a patent owner 
where the depository could furnish samples of the deposit being 
replaced.

[54 FR 34880, Aug. 22, 1989, as amended at 62 FR 53202, Oct. 10, 1997]



Sec. 1.806  Term of deposit.

    A deposit made before or during pendency of an application for 
patent shall be made for a term of at least thirty (30) years and at 
least five (5) years after the most recent request for the furnishing of 
a sample of the deposit was received by the depository. In any case, 
samples must be stored under agreements that would make them available 
beyond the enforceable life of the patent for which the deposit was 
made.



Sec. 1.807  Viability of deposit.

    (a) A deposit of biological material that is capable of self-
replication either directly or indirectly must be viable at the time of 
deposit and during the term of deposit. Viability may be tested by the 
depository. The test must conclude only that the deposited material is 
capable of reproduction. No evidence is necessarily required regarding 
the ability of the deposited material to perform any function described 
in the patent application.
    (b) A viability statement for each deposit of a biological material 
defined in paragraph (a) of this section not made under the Budapest 
Treaty on the International Recognition of the Deposit of Microorganisms 
for the Purposes of Patent Procedure must be filed in the application 
and must contain:
    (1) The name and address of the depository;
    (2) The name and address of the depositor;
    (3) The date of deposit;
    (4) The identity of the deposit and the accession number given by 
the depository;
    (5) The date of the viability test;
    (6) The procedures used to obtain a sample if the test is not done 
by the depository; and
    (7) A statement that the deposit is capable of reproduction.
    (c) If a viability test indicates that the deposit is not viable 
upon receipt, or the examiner cannot, for scientific or other valid 
reasons, accept the statement of viability received from the applicant, 
the examiner shall proceed as if no deposit has been made. The examiner 
will accept the conclusion set forth in a viability statement issued by 
a depository recognized under Sec. 1.803(a).



Sec. 1.808  Furnishing of samples.

    (a) A deposit must be made under conditions that assure that:
    (1) Access to the deposit will be available during pendency of the 
patent application making reference to the deposit to one determined by 
the Commissioner to be entitled thereto under Sec. 1.14 and 35 U.S.C. 
122, and
    (2) Subject to paragraph (b) of this section, all restrictions 
imposed by the depositor on the availability to the public of the 
deposited material will be irrevocably removed upon the granting of the 
patent.
    (b) The depositor may contract with the depository to require that 
samples of a deposited biological material shall be furnished only if a 
request for a sample, during the term of the patent:
    (1) Is in writing or other tangible form and dated;
    (2) Contains the name and address of the requesting party and the 
accession number of the deposit; and
    (3) Is communicated in writing by the depository to the depositor 
along with the date on which the sample was furnished and the name and 
address of the

[[Page 169]]

party to whom the sample was furnished.
    (c) Upon request made to the Office, the Office will certify whether 
a deposit has been stated to have been made under conditions which make 
it available to the public as of the issue date of the patent grant 
provided the request contains:
    (1) The name and address of the depository;
    (2) The accession number given to the deposit;
    (3) The patent number and issue date of the patent referring to the 
deposit; and
    (4) The name and address of the requesting party.



Sec. 1.809  Examination procedures.

    (a) The examiner shall determine pursuant to Sec. 1.104 in each 
application for patent, application for reissue patent or reexamination 
proceeding if a deposit is needed, and if needed, if a deposit actually 
made is acceptable for patent purposes. If a deposit is needed and has 
not been made or replaced or supplemented in accordance with these 
regulations, the examiner, where appropriate, shall reject the affected 
claims under the appropriate provision of 35 U.S.C. 112, explaining why 
a deposit is needed and/or why a deposit actually made cannot be 
accepted.
    (b) The applicant for patent or patent owner shall respond to a 
rejection under paragraph (a) of this section by--
    (1) In the case of an applicant for patent, making an acceptable 
original or replacement or supplemental deposit or assuring the Office 
in writing that an acceptable deposit will be made on or before the date 
of payment of the issue fee, or, in the case of a patent owner, 
requesting a certificate of correction of the patent which meets the 
terms of paragraphs (b) and (c) of Sec. 1.805, or
    (2) Arguing why a deposit is not needed under the circumstances of 
the application or patent considered and/or why a deposit actually made 
should be accepted. Other replies to the examiner's action shall be 
considered non-responsive. The rejection will be repeated until either 
paragraph (b)(1) of this section is satisfied or the examiner is 
convinced that a deposit is not needed.
    (c) If an application for patent is otherwise in condition for 
allowance except for a needed deposit and the Office has received a 
written assurance that an acceptable deposit will be made on or before 
payment of the issue fee, the Office will mail to the applicant a Notice 
of Allowance and Issue Fee Due together with a requirement that the 
needed deposit be made within three months. The period for satisfying 
this requirement is extendable under Sec. 1.136. Failure to make the 
needed deposit in accordance with this requirement will result in 
abandonment of the application for failure to prosecute.
    (d) For each deposit made pursuant to these regulations, the 
specification shall contain:
    (1) The accession number for the deposit;
    (2) The date of the deposit;
    (3) A description of the deposited biological material sufficient to 
specifically identify it and to permit examination; and
    (4) The name and address of the depository.

    Application Disclosures Containing Nucleotide and/or Amino Acid 
                                Sequences

    Source: Sections 1.821 through 1.825 appear at 55 FR 18245, May 1, 
1990, unless otherwise noted.



Sec. 1.821  Nucleotide and/or amino acid sequence disclosures in patent applications.

    (a) Nucleotide and/or amino acid sequences as used in Secs. 1.821 
through 1.825 are interpreted to mean an unbranched sequence of four or 
more amino acids or an unbranched sequence of ten or more nucleotides. 
Branched sequences are specifically excluded from this definition. 
Sequences with fewer than four specifically defined nucleotides or amino 
acids are specifically excluded from this section. ``Specifically 
defined'' means those amino acids other than ``Xaa'' and those 
nucleotide bases other than ``n'' defined in accordance with the World 
Intellectual Property Organization (WIPO) Handbook on Industrial 
Property Information and Documentation, Standard ST.25: Standard

[[Page 170]]

for the Presentation of Nucleotide and Amino Acid Sequence Listings in 
Patent Applications (1998), including Tables 1 through 6 in Appendix 2, 
herein incorporated by reference. (Hereinafter ``WIPO Standard ST.25 
(1998)''). This incorporation by reference was approved by the Director 
of the Federal Register in accordance with 5 U.S.C. 552(a) and 1 CFR 
part 51. Copies of WIPO Standard ST.25 (1998) may be obtained from the 
World Intellectual Property Organization; 34 chemin des Colombettes; 
1211 Geneva 20 Switzerland. Copies of ST.25 may be inspected at the 
Patent Search Room; Crystal Plaza 3, Lobby Level; 2021 South Clark 
Place; Arlington, VA 22202. Copies may also be inspected at the Office 
of the Federal Register, 800 North Capitol Street, NW, Suite 700, 
Washington, DC. Nucleotides and amino acids are further defined as 
follows:
    (1) Nucleotides: Nucleotides are intended to embrace only those 
nucleotides that can be represented using the symbols set forth in WIPO 
Standard ST.25 (1998), Appendix 2, Table 1. Modifications, e.g., 
methylated bases, may be described as set forth in WIPO Standard ST.25 
(1998), Appendix 2, Table 2, but shall not be shown explicitly in the 
nucleotide sequence.
    (2) Amino acids: Amino acids are those L-amino acids commonly found 
in naturally occurring proteins and are listed in WIPO Standard ST.25 
(1998), Appendix 2, Table 3. Those amino acid sequences containing D-
amino acids are not intended to be embraced by this definition. Any 
amino acid sequence that contains post-translationally modified amino 
acids may be described as the amino acid sequence that is initially 
translated using the symbols shown in WIPO Standard ST.25 (1998), 
Appendix 2, Table 3 with the modified positions; e.g., hydroxylations or 
glycosylations, being described as set forth in WIPO Standard ST.25 
(1998), Appendix 2, Table 4, but these modifications shall not be shown 
explicitly in the amino acid sequence. Any peptide or protein that can 
be expressed as a sequence using the symbols in WIPO Standard ST.25 
(1998), Appendix 2, Table 3 in conjunction with a description in the 
Feature section to describe, for example, modified linkages, cross links 
and end caps, non-peptidyl bonds, etc., is embraced by this definition.
    (b) Patent applications which contain disclosures of nucleotide and/
or amino acid sequences, in accordance with the definition in paragraph 
(a) of this section, shall, with regard to the manner in which the 
nucleotide and/or amino acid sequences are presented and described, 
conform exclusively to the requirements of Secs. 1.821 through 1.825.
    (c) Patent applications which contain disclosures of nucleotide and/
or amino acid sequences must contain, as a separate part of the 
disclosure, a paper copy disclosing the nucleotide and/or amino acid 
sequences and associated information using the symbols and format in 
accordance with the requirements of Secs. 1.822 and 1.823. This paper 
copy is hereinafter referred to as the ``Sequence Listing.'' Each 
sequence disclosed must appear separately in the ``Sequence Listing.'' 
Each sequence set forth in the ``Sequence Listing'' shall be assigned a 
separate sequence identifier. The sequence identifiers shall begin with 
1 and increase sequentially by integers. If no sequence is present for a 
sequence identifier, the code ``000'' shall be used in place of the 
sequence. The response for the numeric identifier 160> shall include the 
total number of SEQ ID NOs, whether followed by a sequence or by the 
code ``000.''
    (d) Where the description or claims of a patent application discuss 
a sequence that is set forth in the ``Sequence Listing'' in accordance 
with paragraph (c) of this section, reference must be made to the 
sequence by use of the sequence identifier, preceded by ``SEQ ID NO:'' 
in the text of the description or claims, even if the sequence is also 
embedded in the text of the description or claims of the patent 
application.
    (e) A copy of the ``Sequence Listing'' referred to in paragraph (c) 
of this section must also be submitted in computer readable form in 
accordance with the requirements of Sec. 1.824. The computer readable 
form is a copy of the ``Sequence Listing'' and will not necessarily be 
retained as a part of the patent application file. If the computer 
readable form of a new application is to

[[Page 171]]

be identical with the computer readable form of another application of 
the applicant on file in the Patent and Trademark Office, reference may 
be made to the other application and computer readable form in lieu of 
filing a duplicate computer readable form in the new application if the 
computer readable form in the other application was compliant with all 
of the requirements of these rules. The new application shall be 
accompanied by a letter making such reference to the other application 
and computer readable form, both of which shall be completely 
identified. In the new application, applicant must also request the use 
of the compliant computer readable ``Sequence Listing'' that is already 
on file for the other application and must state that the paper copy of 
the ``Sequence Listing'' in the new application is identical to the 
computer readable copy filed for the other application.
    (f) In addition to the paper copy required by paragraph (c) of this 
section and the computer readable form required by paragraph (e) of this 
section, a statement that the content of the paper and computer readable 
copies are the same must be submitted with the computer readable form, 
e.g., a statement that ``the information recorded in computer readable 
form is identical to the written sequence listing.''
    (g) If any of the requirements of paragraphs (b) through (f) of this 
section are not satisfied at the time of filing under 35 U.S.C. 111(a) 
or at the time of entering the national stage under 35 U.S.C. 371, 
applicant will be notified and given a period of time within which to 
comply with such requirements in order to prevent abandonment of the 
application. Any submission in reply to a requirement under this 
paragraph must be accompanied by a statement that the submission 
includes no new matter.
    (h) If any of the requirements of paragraphs (b) through (f) of this 
section are not satisfied at the time of filing an international 
application under the Patent Cooperation Treaty (PCT), which application 
is to be searched by the United States International Searching Authority 
or examined by the United States International Preliminary Examining 
Authority, applicant will be sent a notice necessitating compliance with 
the requirements within a prescribed time period. Any submission in 
reply to a requirement under this paragraph must be accompanied by a 
statement that the submission does not include matter which goes beyond 
the disclosure in the international application as filed. If applicant 
fails to timely provide the required computer readable form, the United 
States International Searching Authority shall search only to the extent 
that a meaningful search can be performed without the computer readable 
form and the United States International Preliminary Examining Authority 
shall examine only to the extent that a meaningful examination can be 
performed without the computer readable form.

[63 FR 29634, June 1, 1998]



Sec. 1.822  Symbols and format to be used for nucleotide and/or amino acid sequence data.

    (a) The symbols and format to be used for nucleotide and/or amino 
acid sequence data shall conform to the requirements of paragraphs (b) 
through (e) of this section.
    (b) The code for representing the nucleotide and/or amino acid 
sequence characters shall conform to the code set forth in the tables in 
WIPO Standard ST.25 (1998), Appendix 2, Tables 1 and 3. This 
incorporation by reference was approved by the Director of the Federal 
Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of 
ST.25 may be obtained from the World Intellectual Property Organization; 
34 chemin des Colombettes; 1211 Geneva 20 Switzerland. Copies of ST.25 
may be inspected at the Patent Search Room; Crystal Plaza 3, Lobby 
Level; 2021 South Clark Place; Arlington, VA 22202. Copies may also be 
inspected at the Office of the Federal Register, 800 North Capitol 
Street, NW, Suite 700, Washington, DC. No code other than that specified 
in these sections shall be used in nucleotide and amino acid sequences. 
A modified base or modified or unusual amino acid may be presented in a 
given sequence as the corresponding unmodified base or amino acid if the 
modified base or modified or

[[Page 172]]

unusual amino acid is one of those listed in WIPO Standard ST.25 (1998), 
Appendix 2, Tables 2 and 4, and the modification is also set forth in 
the Feature section. Otherwise, each occurrence of a base or amino acid 
not appearing in WIPO Standard ST.25 (1998), Appendix 2, Tables 1 and 3, 
shall be listed in a given sequence as ``n'' or ``Xaa,'' respectively, 
with further information, as appropriate, given in the Feature section, 
preferably by including one or more feature keys listed in WIPO Standard 
ST.25 (1998), Appendix 2, Tables 5 and 6.
    (c) Format representation of nucleotides. (1) A nucleotide sequence 
shall be listed using the lower-case letter for representing the one-
letter code for the nucleotide bases set forth in WIPO Standard ST.25 
(1998), Appendix 2, Table 1.
    (2) The bases in a nucleotide sequence (including introns) shall be 
listed in groups of 10 bases except in the coding parts of the sequence. 
Leftover bases, fewer than 10 in number, at the end of noncoding parts 
of a sequence shall be grouped together and separated from adjacent 
groups of 10 or 3 bases by a space.
    (3) The bases in the coding parts of a nucleotide sequence shall be 
listed as triplets (codons). The amino acids corresponding to the codons 
in the coding parts of a nucleotide sequence shall be typed immediately 
below the corresponding codons. Where a codon spans an intron, the amino 
acid symbol shall be typed below the portion of the codon containing two 
nucleotides.
    (4) A nucleotide sequence shall be listed with a maximum of 16 
codons or 60 bases per line, with a space provided between each codon or 
group of 10 bases.
    (5) A nucleotide sequence shall be presented, only by a single 
strand, in the 5 to 3 direction, from left to right.
    (6) The enumeration of nucleotide bases shall start at the first 
base of the sequence with number 1. The enumeration shall be continuous 
through the whole sequence in the direction 5 to 3. The enumeration 
shall be marked in the right margin, next to the line containing the 
one-letter codes for the bases, and giving the number of the last base 
of that line.
    (7) For those nucleotide sequences that are circular in 
configuration, the enumeration method set forth in paragraph (c)(6) of 
this section remains applicable with the exception that the designation 
of the first base of the nucleotide sequence may be made at the option 
of the applicant.
    (d) Representation of amino acids. (1) The amino acids in a protein 
or peptide sequence shall be listed using the three-letter abbreviation 
with the first letter as an upper case character, as in WIPO Standard 
ST.25 (1998), Appendix 2, Table 3.
    (2) A protein or peptide sequence shall be listed with a maximum of 
16 amino acids per line, with a space provided between each amino acid.
    (3) An amino acid sequence shall be presented in the amino to 
carboxy direction, from left to right, and the amino and carboxy groups 
shall not be presented in the sequence.
    (4) The enumeration of amino acids may start at the first amino acid 
of the first mature protein, with the number 1. When presented, the 
amino acids preceding the mature protein, e.g., pre-sequences, pro-
sequences, pre-pro-sequences and signal sequences, shall have negative 
numbers, counting backwards starting with the amino acid next to number 
1. Otherwise, the enumeration of amino acids shall start at the first 
amino acid at the amino terminal as number 1. It shall be marked below 
the sequence every 5 amino acids. The enumeration method for amino acid 
sequences that is set forth in this section remains applicable for amino 
acid sequences that are circular in configuration, with the exception 
that the designation of the first amino acid of the sequence may be made 
at the option of the applicant.
    (5) An amino acid sequence that contains internal terminator symbols 
(e.g., ``Ter'', ``*'', or ``.'', etc.) may not be represented as a 
single amino acid sequence, but shall be presented as separate amino 
acid sequences.
    (e) A sequence with a gap or gaps shall be presented as a plurality 
of separate sequences, with separate sequence identifiers, with the 
number of separate sequences being equal in number to the number of 
continuous strings of sequence data. A sequence

[[Page 173]]

that is made up of one or more noncontiguous segments of a larger 
sequence or segments from different sequences shall be presented as a 
separate sequence.

[63 FR 29635, June 1, 1998]



Sec. 1.823  Requirements for nucleotide and/or amino acid sequences as part of the application papers.

    (a) The ``Sequence Listing'' required by Sec. 1.821(c), setting 
forth the nucleotide and/or amino acid sequences and associated 
information in accordance with paragraph (b) of this section, must begin 
on a new page and must be titled ``Sequence Listing''. The ``Sequence 
Listing'' preferably should be numbered independently of the numbering 
of the remainder of the application. Each page of the ``Sequence 
Listing'' should contain no more than 66 lines and each line should 
contain no more than 72 characters. A fixed-width font should be used 
exclusively throughout the ``Sequence Listing.''
    (b) The ``Sequence Listing'' shall, except as otherwise indicated, 
include the actual nucleotide and/or amino acid sequence, the numeric 
identifiers and their accompanying information as shown in the following 
table. The numeric identifier shall be used only in the ``Sequence 
Listing.'' The order and presentation of the items of information in the 
``Sequence Listing'' shall conform to the arrangement given below. Each 
item of information shall begin on a new line and shall begin with the 
numeric identifier enclosed in angle brackets as shown. The submission 
of those items of information designated with an ``M'' is mandatory. The 
submission of those items of information designated with an ``O'' is 
optional. Numeric identifiers 110> through 170> shall only be set forth 
at the beginning of the ``Sequence Listing.'' The following table 
illustrates the numeric identifiers.

----------------------------------------------------------------------------------------------------------------
                                                                                      Mandatory (M) or optional
    Numeric identifier            Definition              Comments and format                   (O).
----------------------------------------------------------------------------------------------------------------
110>.....................  Applicant...............  Preferably max. of 10 names;   M.
                                                      one name per line;
                                                      preferable format: Surname,
                                                      Other Names and/or Initials.
120>.....................  Title of Invention......  .............................  M.
130>.....................  File Reference..........  Personal file reference......  M when filed prior to
                                                                                     assignment of appl. number.
140>.....................  Current Application       Specify as: US 07/999,999 or   M, if available.
                            Number.                   PCT/US96/99999.
141>.....................  Current Filing Date.....  Specify as: yyyy-mm-dd.......  M, if available.
150>.....................  Prior Application Number  Specify as: US 07/999,999 or   M, if applicable include
                                                      PCT/US96/99999.                priority documents under 35
                                                                                     USC 119 and 120.
151>.....................  Prior Application Filing  Specify as: yyyy-mm-dd.......  M, if applicable.
                            Date.
160>.....................  Number of SEQ ID NOs....  Count includes total number    M.
                                                      of SEQ ID NOs.
170>.....................  Software................  Name of software used to       O.
                                                      create the Sequence Listing.
210>.....................  SEQ ID NO:#:............  Response shall be an integer   M.
                                                      representing the SEQ ID NO
                                                      shown.
211>.....................  Length..................  Respond with an integer        M.
                                                      expressing the number of
                                                      bases or amino acid residues.
212>.....................  Type....................  Whether presented sequence     M.
                                                      molecule is DNA, RNA, or PRT
                                                      (protein). If a nucleotide
                                                      sequence contains both DNA
                                                      and RNA fragments, the type
                                                      shall be ``DNA.'' In
                                                      addition, the combined DNA/
                                                      RNA molecule shall be
                                                      further described in the
                                                      220> to 223> feature section.
213>.....................  Organism................  Scientific name, i.e. Genus/   M
                                                      species, Unknown or
                                                      Artificial Sequence. In
                                                      addition, the ``Unknown'' or
                                                      ``Artificial Sequence''
                                                      organisms shall be further
                                                      described in the 220> to
                                                      223> feature section.

[[Page 174]]

 
220>.....................  Feature.................  Leave blank after 220>. 221-   M, under the following
                                                      223> provide for a             conditions: if ``n,''
                                                      description of points of       ``Xaa,'' or a modified or
                                                      biological significance in     unusual L-amino acid or
                                                      the sequence..                 modified base was used in a
                                                                                     sequence; if ORGANISM is
                                                                                     ``Artificial Sequence'' or
                                                                                     ``Unknown'; if molecule is
                                                                                     combined DNA/RNA''
221>.....................  Name/Key................  Provide appropriate            M, under the following
                                                      identifier for feature,        conditions: if ``n,''
                                                      preferably from WIPO           ``Xaa,'' or a modified or
                                                      Standard ST.25 (1998),         unusual L-amino acid or
                                                      Appendix 2, Tables 5 and 6.    modified base was used in a
                                                                                     sequence.
222>.....................  Location................  Specify location within        M, under the following
                                                      sequence; where appropriate    conditions: if ``n,''
                                                      state number of first and      ``Xaa,'' or a modified or
                                                      last bases/amino acids in      unusual L-amino acid or
                                                      feature.                       modified base was used in a
                                                                                     sequence.
223>.....................  Other Information.......  Other relevant information;    M, under the following
                                                      four lines maximum.            conditions: if ``n,''
                                                                                     ``Xaa,'' or a modified or
                                                                                     unusual L-amino acid or
                                                                                     modified base was used in a
                                                                                     sequence; if ORGANISM is
                                                                                     ``Artificial Sequence'' or
                                                                                     ``Unknown''; if molecule is
                                                                                     combined DNA/RNA.
300>.....................  Publication Information.  Leave blank after 300>.......  O.
301>.....................  Authors.................  Preferably max of ten named    O.
                                                      authors of publication;
                                                      specify one name per line;
                                                      preferable format: Surname,
                                                      Other Names and/or Initials.
302>.....................  Title...................  .............................  O.
303>.....................  Journal.................  .............................  O.
304>.....................  Volume..................  .............................  O.
305>.....................  Issue...................  .............................  O.
306>.....................  Pages...................  .............................  O.
307>.....................  Date....................  Journal date on which data     O.
                                                      published; specify as yyyy-
                                                      mm-dd, MMM-yyyy or Season-
                                                      yyyy.
308>.....................  Database Accession        Accession number assigned by   O.
                            Number.                   database including database
                                                      name.
309>.....................  Database Entry Date.....  Date of entry in database;     O.
                                                      specify as yyyy-mm-dd or MMM-
                                                      yyyy.
310>.....................  Patent Document Number..  Document number; for patent-   O.
                                                      type citations only. Specify
                                                      as, for example, US 07/
                                                      999,999.
311>.....................  Patent Filing Date......  Document filing date, for      O.
                                                      patent-type citations only;
                                                      specify as yyyy-mm-dd.
312>.....................  Publication Date........  Document publication date,     O.
                                                      for patent-type citations
                                                      only; specify as yyyy-mm-dd.
313>.....................  Relevant Residues.......  FROM (position) TO (position)  O.
400>.....................  Sequence................  SEQ ID NO should follow the    M.
                                                      numeric identifier and
                                                      should appear on the line
                                                      preceding the actual
                                                      sequence.
----------------------------------------------------------------------------------------------------------------


[63 FR 29636, June 1, 1998]



Sec. 1.824  Form and format for nucleotide and/or amino acid sequence submissions in computer readable form.

    (a) The computer readable form required by Sec. 1.821(e) shall meet 
the following specifications:
    (1) The computer readable form shall contain a single ``Sequence 
Listing'' as either a diskette, series of diskettes, or other 
permissible media outlined in paragraph (c) of this section.
    (2) The ``Sequence Listing'' in paragraph (a) (l) of this section 
shall be submitted in American Standard Code for Information Interchange 
(ASCII) text. No other formats shall be allowed.
    (3) The computer readable form may be created by any means, such as 
word processors, nucleotide/amino acid sequence editors or other custom 
computer programs; however, it shall conform to all specifications 
detailed in this section.
    (4) File compression is acceptable when using diskette media, so 
long as the compressed file is in a self-extracting format that will 
decompress on one of the systems described in paragraph (b) of this 
section.

[[Page 175]]

    (5) Page numbering shall not appear within the computer readable 
form version of the ``Sequence Listing'' file.
    (6) All computer readable forms shall have a label permanently 
affixed thereto on which has been hand-printed or typed: the name of the 
applicant, the title of the invention, the date on which the data were 
recorded on the computer readable form, the operating system used, a 
reference number, and an application serial number and filing date, if 
known.
    (b) Computer readable form submissions must meet these format 
requirements:
    (1) Computer: IBM PC/XT/AT, or compatibles, or Apple Macintosh;
    (2) Operating System: MS-DOS, Unix or Macintosh;
    (3) Line Terminator: ASCII Carriage Return plus ASCII Line Feed;
    (4) Pagination: Continuous file (no ``hard page break'' codes 
permitted);
    (c) Computer readable form files submitted may be in any of the 
following media:
    (1) Diskette : 3.50 inch, 1.44 Mb storage; 3.50 inch, 720 Kb 
storage; 5.25 inch, 1.2 Mb storage; 5.25 inch, 360 Kb storage.
    (2) Magnetic tape: 0.5 inch, up to 24000 feet; Density: 1600 or 6250 
bits per inch, 9 track; Format: Unix tar command; specify blocking 
factor (not ``block size''); Line Terminator: ASCII Carriage Return plus 
ASCII Line Feed.
    (3) 8mm Data Cartridge: Format: Unix tar command; specify blocking 
factor (not ``block size''); Line Terminator: ASCII Carriage Return plus 
ASCII Line Feed.
    (4) CD-ROM: Format: ISO 9660 or High Sierra Format
    (5) Magneto Optical Disk: Size/Storage Specifications: 5.25 inch, 
640 Mb.
    (d) Computer readable forms that are submitted to the Office will 
not be returned to the applicant.

[63 FR 29637, June 1, 1998]



Sec. 1.825  Amendments to or replacement of sequence listing and computer readable copy thereof.

    (a) Any amendment to the paper copy of the ``Sequence Listing'' 
(Sec. 1.821(c)) must be made by the submission of substitute sheets. 
Amendments must be accompanied by a statement that indicates support for 
the amendment in the application, as filed, and a statement that the 
substitute sheets include no new matter.
    (b) Any amendment to the paper copy of the ``Sequence Listing,'' in 
accordance with paragraph (a) of this section, must be accompanied by a 
substitute copy of the computer readable form (Sec. 1.821(e)) including 
all previously submitted data with the amendment incorporated therein, 
accompanied by a statement that the copy in computer readable form is 
the same as the substitute copy of the ``Sequence Listing.''
    (c) Any appropriate amendments to the ``Sequence Listing'' in a 
patent; e.g., by reason of reissue or certificate of correction, must 
comply with the requirements of paragraphs (a) and (b) of this section.
    (d) If, upon receipt, the computer readable form is found to be 
damaged or unreadable, applicant must provide, within such time as set 
by the Commissioner, a substitute copy of the data in computer readable 
form accompanied by a statement that the substitute data is identical to 
that originally filed.

[63 FR 29638, June 1, 1998]

[[Page 176]]


       Appendix A to Subpart G to Part 1--Sample Sequence Listing
      [GRAPHIC] [TIFF OMITTED] TR01JN98.006
      

[[Page 177]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.007


[[Page 178]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.008


[[Page 179]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.009

[GRAPHIC] [TIFF OMITTED] TR01JN98.010


[63 FR 29639, June 1, 1998]



PART 2--RULES OF PRACTICE IN TRADEMARK CASES--Table of Contents




    Editorial Note: Part 2 is placed in a separate grouping of parts 
pertaining to trademarks. It appears on page 217 of this volume.

[[Page 180]]



PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE--Table of Contents




Sec.
3.1  Definitions.

                    Documents Eligible for Recording

3.11  Documents which will be recorded.
3.16  Assignability of trademarks prior to filing of use statements.

                       Requirements for Recording

3.21  Identification of patents and patent applications.
3.24  Formal requirements for documents and cover sheets.
3.26  English language requirement.
3.27  Mailing address for submitting documents to be recorded.
3.28  Requests for recording.

                        Cover Sheet Requirements

3.31  Cover sheet content.
3.34  Correction of cover sheet errors.

                                  Fees

3.41  Recording fees.

                      Date and Effect of Recording

3.51  Recording date.
3.54  Effect of recording.
3.56  Conditional assignments.
3.58  Governmental registers.

                         Domestic Representative

3.61  Domestic representative.

                        Action Taken by Assignee

3.71  Prosecution by assignee.
3.73  Establishing right of assignee to take action.

                          Issuance to Assignee

3.81  Issue of patent to assignee.
3.85  Issue of registration to assignee.

    Authority: 15 U.S.C. 1123; 35 U.S.C. 6.

    Source: 57 FR 29642, July 6, 1992, unless otherwise noted.



Sec. 3.1  Definitions.

    For purposes of this part, the following definitions shall apply:
    Application means a national application for patent, an 
international application that designates the United States of America, 
or an application to register a trademark unless otherwise indicated.
    Assignment means a transfer by a party of all or part of its right, 
title and interest in a patent or patent application, or a transfer of 
its entire right, title and interest in a registered mark or a mark for 
which an application to register has been filed.
    Document means a document which a party requests to be recorded in 
the Office pursuant to Sec. 3.11 and which affects some interest in an 
application, patent, or registration.
    Office means the Patent and Trademark Office.
    Recorded document means a document which has been recorded in the 
Office pursuant to Sec. 3.11.
    Registration means a trademark registration issued by the Office.

                    Documents Eligible for Recording



Sec. 3.11  Documents which will be recorded.

    (a) Assignments of applications, patents, and registrations, 
accompanied by completed cover sheets as specified in Secs. 3.28 and 
3.31, will be recorded in the Office. Other documents, accompanied by 
completed cover sheets as specified in Secs. 3.28 and 3.31, affecting 
title to applications, patents, or registrations, will be recorded as 
provided in this part or at the discretion of the Commissioner.
    (b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 
1943-1948 Comp., p. 303) requires the several departments and other 
executive agencies of the Government, including Government-owned or 
Government-controlled corporations, to forward promptly to the 
Commissioner of Patents and Trademarks for recording all licenses, 
assignments, or other interests of the Government in or under patents or 
patent applications. Assignments and other documents affecting title to 
patents or patent applications and documents not affecting title to 
patents or patent applications required by Executive Order 9424 to be 
filed will be recorded as provided in this part.

[62 FR 53202, Oct. 10, 1997]



Sec. 3.16  Assignability of trademarks prior to filing of use statements.

    No application to register a mark under 15 U.S.C. 1051(b) is 
assignable prior to the filing of the verified statement of use under 15 
U.S.C. 1051(d) except to a successor to the business of

[[Page 181]]

the applicant, or portion thereof, to which the mark pertains, if that 
business is ongoing and existing.

                       Requirements for Recording



Sec. 3.21  Identification of patents and patent applications.

    An assignment relating to a patent must identify the patent by the 
patent number. An assignment relating to a national patent application 
must identify the national patent application by the application number 
(consisting of the series code and the serial number, e.g., 07/123,456). 
An assignment relating to an international patent application which 
designates the United States of America must identify the international 
application by the international application number (e.g., PCT/US90/
01234). If an assignment of a patent application filed under 
Sec. 1.53(b) is executed concurrently with, or subsequent to, the 
execution of the patent application, but before the patent application 
is filed, it must identify the patent application by its date of 
execution, name of each inventor, and title of the invention so that 
there can be no mistake as to the patent application intended. If an 
assignment of a provisional application under Sec. 1.53(c) is executed 
before the provisional application is filed, it must identify the 
provisional application by name of each inventor and title of the 
invention so that there can be no mistake as to the provisional 
application intended.

[62 FR 53202, Oct. 10, 1997]



Sec. 3.24  Formal requirements for documents and cover sheets.

    The document and cover sheet must be legible. Either the original 
document or a true copy of the original document, may be submitted for 
recording. Only one side of each page shall be used. The paper used 
should be flexible, strong, white, non-shiny, durable, and preferably no 
larger than 21.6 x 33.1 cm. (8\1/2\ x 14 inches) with a 2.5 cm. (one-
inch) margin on all sides.



Sec. 3.26  English language requirement.

    The Office will accept and record non-English language documents 
only if accompanied by an English translation signed by the individual 
making the translation.

[62 FR 53202, Oct. 10, 1997]



Sec. 3.27  Mailing address for submitting documents to be recorded.

    (a) Except as provided in paragraph (b) of this section, documents 
and cover sheets to be recorded should be addressed to the Commissioner 
of Patents and Trademarks, Box Assignment, Washington, DC 20231, unless 
they are filed together with new applications or with a petition under 
Sec. 3.81(b).
    (b) A document required by Executive Order 9424 to be filed which 
does not affect title and is so identified in the cover sheet (see 
Sec. 3.31(c)(2)) must be addressed and mailed to the Commissioner of 
Patents and Trademarks, Box Government Interest, Washington, DC 20231.

[62 FR 53202, Oct. 10, 1997]



Sec. 3.28  Requests for recording.

    Each document submitted to the Office for recording must be 
accompanied by at least one cover sheet as specified in Sec. 3.31 
referring either to those patent applications and patents, or to those 
trademark applications and registrations, against which the document is 
to be recorded. If a document to be recorded includes interests in, or 
transactions involving, both patents and trademarks, separate patent and 
trademark cover sheets must be submitted. Only one set of documents and 
cover sheets to be recorded should be filed. If a document to be 
recorded is not accompanied by a completed cover sheet, the document and 
any incomplete cover sheet will be returned pursuant to Sec. 3.51 for 
proper completion of a cover sheet and resubmission of the document and 
a completed cover sheet.

                        Cover Sheet Requirements



Sec. 3.31  Cover sheet content.

    (a) Each patent or trademark cover sheet required by Sec. 3.28 must 
contain:
    (1) The name of the party conveying the interest;
    (2) The name and address of the party receiving the interest;
    (3) A description of the interest conveyed or transaction to be 
recorded;

[[Page 182]]

    (4) Each application number, patent number or registration number 
against which the document is to be recorded, or an indication that the 
document is filed together with a patent application;
    (5) The name and address of the party to whom correspondence 
concerning the request to record the document should be mailed;
    (6) The number of applications, patents or registrations identified 
in the cover sheet and the total fee;
    (7) The date the document was executed;
    (8) An indication that the assignee of a trademark application or 
registration who is not domiciled in the United States has designated a 
domestic representative (see Sec. 3.61); and
    (9) A statement by the party submitting the document that to the 
best of the person's knowledge and belief, the information contained on 
the cover sheet is true and correct and any copy submitted is a true 
copy of the original document; and
    (10) The signature of the party submitting the document.
    (b) A cover sheet may not refer to both patents and trademarks.
    (c) Each patent cover sheet required by Sec. 3.28 seeking to record 
a governmental interest as provided by Sec. 3.11(b) must:
    (1) Indicate that the document is to be recorded on the Governmental 
Register, and, if applicable, that the document is to be recorded on the 
Secret Register (see Sec. 3.58); and
    (2) Indicate, if applicable, that the document to be recorded is not 
a document affecting title (see Sec. 3.41(b)).

[57 FR 29642, July 6, 1992, as amended at 62 FR 53202, Oct. 10, 1997]



Sec. 3.34  Correction of cover sheet errors.

    (a) An error in a cover sheet recorded pursuant to Sec. 3.11 will be 
corrected only if:
    (1) The error is apparent when the cover sheet is compared with the 
recorded document to which it pertains, and
    (2) A corrected cover sheet is filed for recordation.
    (b) The corrected cover sheet must be accompanied by the originally 
recorded document or a copy of the originally recorded document and by 
the recording fee as set forth in Sec. 3.41.

                                  Fees



Sec. 3.41  Recording fees.

    (a) All requests to record documents must be accompanied by the 
appropriate fee. Except as provided in paragraph (b) of this section, a 
fee is required for each application, patent and registration against 
which the document is recorded as identified in the cover sheet. The 
recording fee is set in Sec. 1.21(h) of this chapter for patents and in 
Sec. 2.6(b)(6) of this chapter for trademarks.
    (b) No fee is required for each patent application and patent 
against which a document required by Executive Order 9424 is to be filed 
if:
    (1) The document does not affect title and is so identified in the 
cover sheet (see Sec. 3.31(c)(2)); and
    (2) The document and cover sheet are mailed to the Office in 
compliance with Sec. 3.27(b).

[63 FR 52159, Sept. 30, 1998]

                      Date and Effect of Recording



Sec. 3.51  Recording date.

    The date of recording of a document is the date the document meeting 
the requirements for recording set forth in this part is filed in the 
Office. A document which does not comply with the identification 
requirements of Sec. 3.21 will not be recorded. Documents not meeting 
the other requirements for recording, for example, a document submitted 
without a completed cover sheet or without the required fee, will be 
returned for correction to the sender where a correspondence address is 
available. The returned papers, stamped with the original date of 
receipt by the Office, will be accompanied by a letter which will 
indicate that if the returned papers are corrected and resubmitted to 
the Office within the time specified in the letter, the Office will 
consider the original date of filing of the papers as the date of 
recording of the document. The procedure set forth in Sec. 1.8 or 
Sec. 1.10 of this chapter may be used for resubmissions of returned 
papers to have the benefit of the date of deposit in the United

[[Page 183]]

States Postal Service. If the returned papers are not corrected and 
resubmitted within the specified period, the date of filing of the 
corrected papers will be considered to be the date of recording of the 
document. The specified period to resubmit the returned papers will not 
be extended.

[62 FR 53203, Oct. 10, 1997]



Sec. 3.54  Effect of recording.

    The recording of a document pursuant to Sec. 3.11 is not a 
determination by the Office of the validity of the document or the 
effect that document has on the title to an application, a patent, or a 
registration. When necessary, the Office will determine what effect a 
document has, including whether a party has the authority to take an 
action in a matter pending before the Office.



Sec. 3.56  Conditional assignments.

    Assignments which are made conditional on the performance of certain 
acts or events, such as the payment of money or other condition 
subsequent, if recorded in the Office, are regarded as absolute 
assignments for Office purposes until cancelled with the written consent 
of all parties or by the decree of a court of competent jurisdiction. 
The Office does not determine whether such conditions have been 
fulfilled.



Sec. 3.58  Governmental registers.

    (a) The Office will maintain a Departmental Register to record 
governmental interests required to be recorded by Executive Order 9424. 
This Departmental Register will not be open to public inspection but 
will be available for examination and inspection by duly authorized 
representatives of the Government. Governmental interests recorded on 
the Departmental Register will be available for public inspection as 
provided in Sec. 1.12.
    (b) The Office will maintain a Secret Register to record 
governmental interests required to be recorded by Executive Order 9424. 
Any instrument to be recorded will be placed on this Secret Register at 
the request of the department or agency submitting the same. No 
information will be given concerning any instrument in such record or 
register, and no examination or inspection thereof or of the index 
thereto will be permitted, except on the written authority of the head 
of the department or agency which submitted the instrument and requested 
secrecy, and the approval of such authority by the Commissioner of 
Patents and Trademarks. No instrument or record other than the one 
specified may be examined, and the examination must take place in the 
presence of a designated official of the Patent and Trademark Office. 
When the department or agency which submitted an instrument no longer 
requires secrecy with respect to that instrument, it must be recorded 
anew in the Departmental Register.

[62 FR 53203, Oct. 10, 1997]

                         Domestic Representative



Sec. 3.61  Domestic representative.

    If the assignee of a trademark application or registration is not 
domiciled in the United States, the assignee must designate, in writing 
to the Office, a domestic representative. An assignee of a patent 
application or patent may designate a domestic representative if the 
assignee is not residing in the United States. The designation shall 
state the name and address of a person residing within the United States 
on whom may be served process or notice of proceedings affecting the 
application, patent or registration or rights thereunder.

                        Action Taken by Assignee



Sec. 3.71  Prosecution by assignee.

    The assignee of record of the entire right, title and interest in an 
application for patent is entitled to conduct the prosecution of the 
patent application to the exclusion of the named inventor or previous 
assignee. The assignee of a registered trademark or a trademark for 
which an application to register has been filed is entitled to conduct 
the prosecution of the trademark application or registration to the 
exclusion of the original applicant or previous assignee.



Sec. 3.73  Establishing right of assignee to take action.

    (a) The inventor is presumed to be the owner of a patent 
application, and

[[Page 184]]

any patent that may issue therefrom, unless there is an assignment. The 
original applicant is presumed to be the owner of a trademark 
application unless there is an assignment.
    (b) When an assignee seeks to take action in a matter before the 
Office with respect to a patent application, trademark application, 
patent, registration, or reexamination proceeding, the assignee must 
establish its ownership of the property to the satisfaction of the 
Commissioner. Ownership is established by submitting to the Office, in 
the Office file related to the matter in which action is sought to be 
taken, documentary evidence of a chain of title from the original owner 
to the assignee (e.g., copy of an executed assignment submitted for 
recording) or by specifying (e.g., reel and frame number) where such 
evidence is recorded in the Office. The submission establishing 
ownership must be signed by a party authorized to act on behalf of the 
assignee. Documents submitted to establish ownership may be required to 
be recorded as a condition to permitting the assignee to take action in 
a matter pending before the Office.

[57 FR 29642, July 6, 1992, as amended at 62 FR 53203, Oct. 10, 1997]

                          Issuance to Assignee



Sec. 3.81  Issue of patent to assignee.

    (a) For a patent application, if an assignment of the entire right, 
title, and interest is recorded before the issue fee is paid, the patent 
may issue in the name of the assignee. If the assignee holds an 
undivided part interest, the patent may issue jointly to the inventor 
and the assignee. At the time the issue fee is paid, the name of the 
assignee must be provided if the patent is to issue solely or jointly to 
that assignee.
    (b) If the assignment is submitted for recording after the date of 
payment of the issue fee, but prior to issuance of the patent, the 
assignee may petition that the patent issue to the assignee. Any such 
petition must be accompanied by the fee set forth in Sec. 1.17(i) of 
this chapter.

[57 FR 29642, July 6, 1992, as amended at 60 FR 20229, Apr. 25, 1995]



Sec. 3.85  Issue of registration to assignee.

    The certificate of registration may be issued to the assignee of the 
applicant, or in a new name of the applicant, provided that the party 
files a written request in the trademark application by the time the 
application is being prepared for issuance of the certificate of 
registration, and the appropriate document is recorded in the Office. If 
the assignment or name change document has not been recorded in the 
Office, then the written request must state that the document has been 
filed for recordation. The address of the assignee must be made of 
record in the application file.



PART 4 [RESERVED]






PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES--Table of Contents




                             Secrecy Orders

Sec.
5.1  Correspondence.
5.2  Secrecy order.
5.3  Prosecution of application under secrecy orders; withholding 
          patent.
5.4  Petition for rescission of secrecy order.
5.5  Permit to disclose or modification of secrecy order.
5.6--5.8  [Reserved]

                Licenses for Foreign Exporting and Filing

5.11  License for filing in a foreign country an application on an 
          invention made in the United States or for transmitting 
          international application.
5.12  Petition for license.
5.13  Petition for license; no corresponding application.
5.14  Petition for license; corresponding U.S. application.
5.15  Scope of license.
5.16--5.17  [Reserved]
5.18  Arms, ammunition, and implements of war.
5.19  Export of technical data.
5.20  Export of technical data relating to sensitive nuclear technology.
5.25  Petition for retroactive license.

                                 General

5.31--5.33  [Reserved]

    Authority: 35 U.S.C. 6, 41, 181-188, as amended by the Patent Law 
Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102 Stat. 1567; 
the Arms Export Control Act, as

[[Page 185]]

amended, 22 U.S.C. 2751 et seq., the Atomic Energy Act of 1954, as 
amended, 42 U.S.C. 2011 et seq., and the Nuclear Non-Proliferation Act 
of 1978, 22 U.S.C. 3201 et seq., and the delegations in the regulations 
under these acts to the Commissioner (15 CFR 370.10(j), 22 CFR 125.04, 
and 10 CFR 810.7).

    Source: 24 FR 10381, Dec. 22, 1959, unless otherwise noted.

                             Secrecy Orders



Sec. 5.1  Correspondence.

    All correspondence in connection with this part, including 
petitions, must be addressed to ``Assistant Commissioner for Patents 
(Attention Licensing and Review), Washington, DC 20231.''

[62 FR 53203, Oct. 10, 1997]



Sec. 5.2  Secrecy order.

    (a) When notified by the chief officer of a defense agency that 
publication or disclosure of the invention by the granting of a patent 
would be detrimental to the national security, an order that the 
invention be kept secret will be issued by the Commissioner of Patents 
and Trademarks.
    (b) Any request for compensation as provided in 35 U.S.C. 183 must 
not be made to the Patent and Trademark Office, but directly to the 
department or agency which caused the secrecy order to be issued.

[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53203, Oct. 10, 1997]



Sec. 5.3  Prosecution of application under secrecy orders; withholding patent.

    Unless specifically ordered otherwise, action on the application by 
the Office and prosecution by the applicant will proceed during the time 
an application is under secrecy order to the point indicated in this 
section:
    (a) National applications under secrecy order which come to a final 
rejection must be appealed or otherwise prosecuted to avoid abandonment. 
Appeals in such cases must be completed by the applicant but unless 
otherwise specifically ordered by the Commissioner will not be set for 
hearing until the secrecy order is removed.
    (b) An interference will not be declared involving national 
applications under secrecy order. However, if an applicant whose 
application is under secrecy order seeks to provoke an interference with 
an issued patent, a notice of that fact will be placed in the file 
wrapper of the patent. (See Sec. 1.607(d))
    (c) When the national application is found to be in condition for 
allowance except for the secrecy order the applicant and the agency 
which caused the secrecy order to be issued will be notified. This 
notice (which is not a notice of allowance under Sec. 1.311 of this 
chapter) does not require reply by the applicant and places the national 
application in a condition of suspension until the secrecy order is 
removed. When the secrecy order is removed the Patent and Trademark 
Office will issue a notice of allowance under Sec. 1.311 of this 
chapter, or take such other action as may then be warranted.
    (d) International applications under secrecy order will not be 
mailed, delivered or otherwise transmitted to the international 
authorities or the applicant. International applications under secrecy 
order will be processed up to the point where, if it were not for the 
secrecy order, record and search copies would be transmitted to the 
international authorities or the applicant.

(Pub. L. 94-131, 89 Stat. 685)

[43 FR 20470, May 11, 1978, as amended at 53 FR 23736, June 23, 1988; 62 
FR 53203, Oct. 10, 1997]



Sec. 5.4  Petition for rescission of secrecy order.

    (a) A petition for rescission or removal of a secrecy order may be 
filed by, or on behalf of, any principal affected thereby. Such petition 
may be in letter form, and it must be in duplicate.
    (b) The petition must recite any and all facts that purport to 
render the order ineffectual or futile if this is the basis of the 
petition. When prior publications or patents are alleged the petition 
must give complete data as to such publications or patents and should be 
accompanied by copies thereof.
    (c) The petition must identify any contract between the Government 
and any of the principals, under which the subject matter of the 
application or any significant part thereof was developed, or to which 
the subject matter is

[[Page 186]]

otherwise related. If there is no such contract, the petition must so 
state.
    (d) Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 
181, from a secrecy order cannot be taken until after a petition for 
rescission of the secrecy order has been made and denied. Appeal must be 
taken within sixty days from the date of the denial, and the party 
appealing, as well as the department or agency which caused the order to 
be issued, will be notified of the time and place of hearing.

[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53204, Oct. 10, 1997]



Sec. 5.5  Permit to disclose or modification of secrecy order.

    (a) Consent to disclosure, or to the filing of an application 
abroad, as provided in 35 U.S.C. 182, shall be made by a ``permit'' or 
``modification'' of the secrecy order.
    (b) Petitions for a permit or modification must fully recite the 
reason or purpose for the proposed disclosure. Where any proposed 
disclosee is known to be cleared by a defense agency to receive 
classified information, adequate explanation of such clearance should be 
made in the petition including the name of the agency or department 
granting the clearance and the date and degree thereof. The petition 
must be filed in duplicate.
    (c) In a petition for modification of a secrecy order to permit 
filing abroad, all countries in which it is proposed to file must be 
made known, as well as all attorneys, agents and others to whom the 
material will be consigned prior to being lodged in the foreign patent 
office. The petition should include a statement vouching for the loyalty 
and integrity of the proposed disclosees and where their clearance 
status in this or the foreign country is known all details should be 
given.
    (d) Consent to the disclosure of subject matter from one application 
under secrecy order may be deemed to be consent to the disclosure of 
common subject matter in other applications under secrecy order so long 
as not taken out of context in a manner disclosing material beyond the 
modification granted in the first application.
    (e) Organizations requiring consent for disclosure of applications 
under secrecy order to persons or organizations in connection with 
repeated routine operation may petition for such consent in the form of 
a general permit. To be successful such petitions must ordinarily recite 
the security clearance status of the disclosees as sufficient for the 
highest classification of material that may be involved.

[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53204 Oct. 10, 1997]



Secs. 5.6--5.8  [Reserved]

                Licenses for Foreign Exporting and Filing



Sec. 5.11  License for filing in a foreign country an application on an invention made in the United States or for transmitting an international application.

    (a) A license from the Commissioner of Patents and Trademarks under 
35 U.S.C. 184 is required before filing any application for patent 
including any modifications, amendments, or supplements thereto or 
divisions thereof or for the registration of a utility model, industrial 
design, or model, in a foreign patent office or any foreign patent 
agency or any international agency other than the United States 
Receiving Office, if the invention was made in the United States and:
    (1) An application on the invention has been on file in the United 
States less than six months prior to the date on which the application 
is to be filed, or
    (2) No application on the invention has been filed in the United 
States.
    (b) The license from the Commissioner of Patents and Trademarks 
referred to in paragraph (a) would also authorize the export of 
technical data abroad for purposes relating to the preparation, filing 
or possible filing and prosecution of a foreign patent application 
without separately complying with the regulations contained in 22 CFR 
parts 121 through 130 (International Traffic in Arms Regulations of the 
Department of State), 15 CFR part 779 (Regulations of the Office of 
Export Administration, International Trade Administration, Department of 
Commerce) and 10 CFR part 810 (Foreign Atomic Energy Programs of the 
Department of Energy).

[[Page 187]]

    (c) Where technical data in the form of a patent application, or in 
any form, is being exported for purposes related to the preparation, 
filing or possible filing and prosecution of a foreign patent 
application, without the license from the Commissioner of Patents and 
Trademarks referred to in paragraphs (a) or (b) of this section, or on 
an invention not made in the United States, the export regulations 
contained in 22 CFR parts 120 through 130 (International Traffic in Arms 
Regulations of the Department of State), 15 CFR parts 768-799 (Export 
Administration Regulations of the Department of Commerce) and 10 CFR 
part 810 (Assistance to Foreign Atomic Energy Activities Regulations of 
the Department of Energy) must be complied with unless a license is not 
required because a United States application was on file at the time of 
export for at least six months without a secrecy order under Sec. 5.2 
being placed thereon. The term ``exported'' means export as it is 
defined in 22 CFR part 120, 15 CFR part 779 and activities covered by 10 
CFR part 810.
    (d) If a secrecy order has been issued under Sec. 5.2, an 
application cannot be exported to, or filed in, a foreign country 
(including an international agency in a foreign country), except in 
accordance with Sec. 5.5.
    (e) No license pursuant to paragraph (a) of this section is 
required:
    (1) If the invention was not made in the United States, or
    (2) If the corresponding United States application is not subject to 
a secrecy order under Sec. 5.2, and was filed at least six months prior 
to the date on which the application is filed in a foreign country, or
    (3) For subsequent modifications, amendments and supplements 
containing additional subject matter to, or divisions of, a foreign 
patent application if:
    (i) A license is not, or was not, required under paragraph (e)(2) of 
this section for the foreign patent application;
    (ii) The corresponding United States application was not required to 
be made available for inspection under 35 U.S.C. 181; and
    (iii) Such modifications, amendments, and supplements do not, or did 
not, change the general nature of the invention in a manner which would 
require any corresponding United States application to be or have been 
available for inspection under 35 U.S.C. 181.
    (f) A license pursuant to paragraph (a) of this section can be 
revoked at any time upon written notification by the Patent and 
Trademark Office. An authorization to file a foreign patent application 
resulting from the passage of six months from the date of filing of a 
United States patent application may be revoked by the imposition of a 
secrecy order.

[49 FR 13461, Apr. 4, 1984, as amended at 56 FR 1928, Jan. 18, 1991; 62 
FR 53204, Oct. 10, 1997]



Sec. 5.12  Petition for license.

    (a) Filing of an application for patent for inventions made in the 
United States will be considered to include a petition for license under 
35 U.S.C. 184 for the subject matter of the application. The filing 
receipt will indicate if a license is granted. If the initial automatic 
petition is not granted, a subsequent petition may be filed under 
paragraph (b) of this section.
    (b) Petitions for license should be presented in letter form, and 
must include the petitioner's address and full instructions for delivery 
of the requested license when it is to be delivered to other than the 
petitioner. If expedited handling of the petition under this paragraph 
is sought, the petition must also include the fee set forth in 
Sec. 1.17(h).

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2714, Jan. 20, 1983, as amended at 49 FR 13462, Apr. 4, 1984; 62 
FR 53204, Oct. 10, 1997]



Sec. 5.13  Petition for license; no corresponding application.

    If no corresponding national or international application has been 
filed in the United States, the petition for license under Sec. 5.12(b) 
must also be accompanied by a legible copy of the material upon which a 
license is desired. This copy will be retained as a measure of the 
license granted.

[62 FR 53204, Oct. 10, 1997]

[[Page 188]]



Sec. 5.14  Petition for license; corresponding U.S. application.

    (a) When there is a corresponding United States application on file, 
a petition for license under Sec. 5.12(b) must also identify this 
application by application number, filing date, inventor, and title, but 
a copy of the material upon which the license is desired is not 
required. The subject matter licensed will be measured by the disclosure 
of the United States application.
    (b) Two or more United States applications should not be referred to 
in the same petition for license unless they are to be combined in the 
foreign or international application, in which event the petition should 
so state and the identification of each United States application should 
be in separate paragraphs.
    (c) When the application to be filed or exported abroad contains 
matter not disclosed in the United States application or applications, 
including the case where the combining of two or more United States 
applications introduces subject matter not disclosed in any of them, a 
copy of the application as it is to be filed in the foreign country or 
international application which is to be transmitted to a foreign 
international or national agency for filing in the Receiving Office, 
must be furnished with the petition. If however, all new matter in the 
foreign or international application to be filed is readily 
identifiable, the new matter may be submitted in detail and the 
remainder by reference to the pertinent United States application or 
applications.

(Pub. L. 94-131, 89 Stat. 685)

[43 FR 20471, May 11, 1978, as amended at 49 FR 13462, Apr. 4, 1984; 62 
FR 53204, Oct. 10, 1997]



Sec. 5.15  Scope of license.

    (a) Applications or other materials reviewed pursuant to Secs. 5.12 
through 5.14, which were not required to be made available for 
inspection by defense agencies under 35 U.S.C. 181, will be eligible for 
a license of the scope provided in this paragraph. This license permits 
subsequent modifications, amendments, and supplements containing 
additional subject matter to, or divisions of, a foreign patent 
application, if such changes to the application do not alter the general 
nature of the invention in a manner which would require the United 
States application to have been made available for inspection under 35 
U.S.C. 181. Grant of this license authorizing the export and filing of 
an application in a foreign country or the transmitting of an 
international application to any foreign patent agency or international 
patent agency when the subject matter of the foreign or international 
application corresponds to that of the domestic application. This 
license includes authority:
    (1) To export and file all duplicate and formal application papers 
in foreign countries or with international agencies;
    (2) To make amendments, modifications, and supplements, including 
divisions, changes or supporting matter consisting of the illustration, 
exemplification, comparison, or explanation of subject matter disclosed 
in the application; and
    (3) To take any action in the prosecution of the foreign or 
international application provided that the adding of subject matter or 
taking of any action under paragraphs (a)(1) or (2) of this section does 
not change the general nature of the invention disclosed in the 
application in a manner which would require such application to have 
been made available for inspection under 35 U.S.C. 181 by including 
technical data pertaining to:
    (i) Defense services or articles designated in the United States 
Munitions List applicable at the time of foreign filing, the unlicensed 
exportation of which is prohibited pursuant to the Arms Export Control 
Act, as amended, and 22 CFR parts 121 through 130; or
    (ii) Restricted Data, sensitive nuclear technology or technology 
useful in the production or utilization of special nuclear material or 
atomic energy, dissemination of which is subject to restrictions of the 
Atomic Energy Act of 1954, as amended, and the Nuclear Non-Proliferation 
Act of 1978, as implemented by the regulations for Unclassified 
Activities in Foreign Atomic Energy Programs, 10 CFR part 810, in effect 
at the time of foreign filing.

[[Page 189]]

    (b) Applications or other materials which were required to be made 
available for inspection under 35 U.S.C. 181 will be eligible for a 
license of the scope provided in this paragraph. Grant of this license 
authorizes the export and filing of an application in a foreign country 
or the transmitting of an international application to any foreign 
patent agency or international patent agency. Further, this license 
includes authority to export and file all duplicate and formal papers in 
foreign countries or with foreign and international patent agencies and 
to make amendments, modifications, and supplements to, file divisions 
of, and take any action in the prosecution of the foreign or 
international application, provided subject matter additional to that 
covered by the license is not involved.
    (c) A license granted under Sec. 5.12(b) pursuant to Sec. 5.13 or 
Sec. 5.14 shall have the scope indicated in paragraph (a) of this 
section, if it is so specified in the license. A petition, accompanied 
by the required fee (Sec. 1.17(h)), may also be filed to change a 
license having the scope indicated in paragraph (b) of this section to a 
license having the scope indicated in paragraph (a) of this section. No 
such petition will be granted if the copy of the material filed pursuant 
to Sec. 5.13 or any corresponding United States application was required 
to be made available for inspection under 35 U.S.C. 181. The change in 
the scope of a license will be effective as of the date of the grant of 
the petition.
    (d) In those cases in which no license is required to file the 
foreign application or transmit the international application, no 
license is required to file papers in connection with the prosecution of 
the foreign or international application not involving the disclosure of 
additional subject matter.
    (e) Any paper filed abroad or transmitted to an international patent 
agency following the filing of a foreign or international application 
which changes the general nature of the subject matter disclosed at the 
time of filing in a manner which would require such application to have 
been made available for inspection under 35 U.S.C. 181 or which involves 
the disclosure of subject matter listed in paragraphs (a)(3)(i) or (ii) 
of this section must be separately licensed in the same manner as a 
foreign or international application. Further, if no license has been 
granted under Sec. 5.12(a) on filing the corresponding United States 
application, any paper filed abroad or with an international patent 
agency which involves the disclosure of additional subject matter must 
be licensed in the same manner as a foreign or international 
application.
    (f) Licenses separately granted in connection with two or more 
United States applications may be exercised by combining or dividing the 
disclosures, as desired, provided:
    (1) Subject matter which changes the general nature of the subject 
matter disclosed at the time of filing or which involves subject matter 
listed in paragraph (a)(3) (i) or (ii) of this section is not 
introduced, and
    (2) In the case where at least one of the licenses was obtained 
under Sec. 5.12(b), additional subject matter is not introduced.
    (g) A license does not apply to acts done before the license was 
granted. See Sec. 5.25 for petitions for retroactive licenses.

[49 FR 13462, Apr. 4, 1984, as amended at 56 FR 1928, Jan. 18, 1991; 62 
FR 53204, Oct. 10, 1997]



Secs. 5.16--5.17  [Reserved]



Sec. 5.18  Arms, ammunition, and implements of war.

    (a) The exportation of technical data relating to arms, ammunition, 
and implements of war generally is subject to the International Traffic 
in Arms Regulations of the Department of State (22 CFR parts 120 through 
130); the articles designated as arms, ammunitions, and implements of 
war are enumerated in the U.S. Munitions List (22 CFR part 121). 
However, if a patent applicant complies with regulations issued by the 
Commissioner of Patents and Trademarks under 35 U.S.C. 184, no separate 
approval from the Department of State is required unless the applicant 
seeks to export technical data exceeding that used to support a patent 
application in a foreign country. This exemption from Department of 
State regulations is applicable regardless of whether a license

[[Page 190]]

from the Commissioner is required by the provisions of Secs. 5.11 and 
5.12 (22 CFR part 125).
    (b) When a patent application containing subject matter on the 
Munitions List (22 CFR part 121) is subject to a secrecy order under 
Sec. 5.2 and a petition is made under Sec. 5.5 for a modification of the 
secrecy order to permit filing abroad, a separate request to the 
Department of State for authority to export classified information is 
not required (22 CFR part 125).

[62 FR 53205, Oct. 10, 1997]



Sec. 5.19  Export of technical data.

    (a) Under regulations (15 CFR 770.10(j)) established by the 
Department of Commerce, a license is not required in any case to file a 
patent application or part thereof in a foreign country if the foreign 
filing is in accordance with the regulations (Secs. 5.11 through 5.25) 
of the Patent and Trademark Office.
    (b) An export license is not required for data contained in a patent 
application prepared wholly from foreign-origin technical data where 
such application is being sent to the foreign inventor to be executed 
and returned to the United States for subsequent filing in the U.S. 
Patent and Trademark Office (15 CFR 779A.3(e)).

[62 FR 53205, Oct. 10, 1997]



Sec. 5.20  Export of technical data relating to sensitive nuclear technology.

    Under regulations (10 CFR 810.7) established by the United States 
Department of Energy, an application filed in accordance with the 
regulations (Secs. 5.11 through 5.25) of the Patent and Trademark Office 
and eligible for foreign filing under 35 U.S.C. 184, is considered to be 
information available to the public in published form and a generally 
authorized activity for the purposes of the Department of Energy 
regulations.

[62 FR 53205, Oct. 10, 1997]



Sec. 5.25  Petition for retroactive license.

    (a) A petition for a retroactive license under 35 U.S.C. 184 shall 
be presented in accordance with Sec. 5.13 or Sec. 5.14(a), and shall 
include:
    (1) A listing of each of the foreign countries in which the 
unlicensed patent application material was filed,
    (2) The dates on which the material was filed in each country,
    (3) A verified statement (oath or declaration) containing:
    (i) An averment that the subject matter in question was not under a 
secrecy order at the time it was filed aboard, and that it is not 
currently under a secrecy order,
    (ii) A showing that the license has been diligently sought after 
discovery of the proscribed foreign filing, and
    (iii) An explanation of why the material was filed abroad through 
error and without deceptive intent without the required license under 
Sec. 5.11 first having been obtained, and
    (4) The required fee (Sec. 1.17(h)).

The above explanation must include a showing of facts rather than a mere 
allegation of action through error and without deceptive intent. The 
showing of facts as to the nature of the error should include statements 
by those persons having personal knowledge of the acts regarding filing 
in a foreign country and should be accompanied by copies of any 
necessary supporting documents such as letters of transmittal or 
instructions for filing. The acts which are alleged to constitute error 
without deceptive intent should cover the period leading up to and 
including each of the proscribed foreign filings.
    (b) If a petition for a retroactive license is denied, a time period 
of not less than thirty days shall be set, during which the petition may 
be renewed. Failure to renew the petition within the set time period 
will result in a final denial of the petition. A final denial of a 
petition stands unless a petition is filed under Sec. 1.181 within two 
months of the date of the denial. If the petition for a retroactive 
license is denied with respect to the invention of a pending

[[Page 191]]

application and no petition under Sec. 1.181 has been filed, a final 
rejection of the application under 35 U.S.C. 185 will be made.

[49 FR 13463, Apr. 4, 1984, as amended at 56 FR 1929, Jan. 18, 1991; 62 
FR 53206, Oct. 10, 1997]

                                 General



Secs. 5.31--5.33  [Reserved]



PART 6--CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT--Table of Contents




    Editorial Note: Part 6 is placed in a separate grouping of parts 
pertaining to trademarks. It appears on page 273 of this volume.



PART 7  [RESERVED]




[[Page 193]]

                   INDEX I--RULES RELATING TO PATENTS

  Editorial Note: This listing is provided for information purposes 
only. It is compiled and kept up-to-date by the Department of Commerce.

                                                                 Section

                                 A

Abandoned applications:
Abandonment by failure to prosecute................................1.135
Abandonment during interference.................................1.662(a)
Abandonment for failure to pay issue fee...........................1.137
Destruction after 20 yrs. unless marked for preservation.........1.14(b)
Express abandonment................................................1.138
Processing and retention fee.....................................1.21(l)
Referred to in issued patents.......................................1.14
Revival of.........................................................1.137
When to public inspection...........................................1.14
Abandonment of application. (See Abandoned applications.)
Abstract of the disclosure.(content, physical requirements)
                                                                    1.72
Separate sheet required for commencement of......................1.72(b)
Arrangement in overall application...........................1.77, 1.163
Access to pending applications (limited)
                                                                    1.14
Action by applicant
                                                             1.111-1.138
Address, Correspondence, only one recognized by Office
                                                                 1.33(c)
Address for notice to Commissioner of appeal to Fed. Cir
                                                                1.302(c)
Address of Solicitor's Office
                                                               1.1(a)(3)
Address of the Patent and Trademark Office
                                                                     1.1
Box CPA.......................................................1.53(d)(9)
Box Interference..................................................1.1(e)
Box M. Fee........................................................1.1(d)
Box Patent Ext....................................................1.1(f)
Box PCT...........................................................1.1(b)
Box Provisional Patent Application................................1.1(i)
Box Reexam........................................................1.1(c)
Administrator or executor, may make application and receive patent
                                                                    1.42
Proof of authority..................................................1.44
Admission to practice. (See Attorneys and agents.)
Affidavit (see also Oath in patent application):
After appeal.......................................................1.195
In support of application for reissue..............................1.175
To disqualify commonly owned patent as prior art...................1.130
To overcome cited patent or publication............................1.131
Traversing grounds of rejection....................................1.132
Agents. (See Attorneys and agents.)
Allowance and issue of patent:
Amendment after allowance..........................................1.312
Deferral of issuance...............................................1.314
Delayed payment of issue fee.......................................1.137
Delivery of patent.................................................1.315
Issuance of patent..........................................1.155, 1.314
Notice of allowance.........................................1.155, 1.311

[[Page 194]]

Patent to issue upon payment of issue fee..........................1.314
Patent to lapse if issue fee is not paid in full...................1.317
Patent withheld for nonpayment of issue fee.................1.155, 1.316
Reasons for.....................................................1.104(e)
Withdrawal from issue..............................................1.313
Allowed claims statement of grounds for rejecting, by Board of 
Patent Appeals and Interferences
                                                                   1.196
Amendment:
Adding or substituting claims...............................1.111, 1.121
After appeal.......................................................1.116
After decision on appeal, based on new rejection of Board of 
Patent Appeals and Interferences...................................1.196
After final action.................................................1.116
After final action (transitional procedures).......................1.129
After notice of allowance..........................................1.312
By patent owner....................................................1.530
Copying claim of another application for interference..............1.603
Copying claim of issued patent..............................1.606, 1.607
Drawings...........................................................1.121
Erasures and insertions............................................1.121
Involving a departure from original invention......................1.121
Manner of making...................................................1.121
May be required....................................................1.121
Not covered by original oath........................................1.67
Numbering of claims................................................1.126
Of amendments......................................................1.121
Of claims...................................................1.111, 1.121
Of disclosure......................................................1.121
Of drawing.........................................................1.121
Of specification...................................................1.121
Paper and writing...................................................1.52
Petition from refusal to admit.....................................1.127
Proposed during interference.......................................1.615
Provisional application..........................................1.53(c)
Reissue...........................................1.121(b), 1.173, 1.174
Requisites of...........................1.33, 1.111, 1.116, 1.121, 1.125
Right to amend................................1.111, 1.116, 1.121, 1.127
Signature to........................................................1.33
Substitute specification...........................................1.125
Time for...........................................................1.134
To accompany motion to amend interference..........................1.633
To applications in interference....................................1.633
To correct inaccuracies or prolixity...............................1.121
To correspond to original drawing or specification.................1.121
To preliminary statement in interference...........................1.628
To reissues.................................................1.173, 1.174
To save from abandonment...........................................1.135
Amino Acid Sequences. (See Nucleotide and/or Amino A Acid Sequences.)
Appeal to Board of Patent Appeals and Interferences:
Action following decision..........................................1.197
Affidavits after appeal............................................1.195
Brief..............................................................1.192
Decision by Board..................................................1.196
Examiner's answer..................................................1.193
Fees................................................................1.17
Hearing of.........................................................1.194
New grounds for refusing a patent..................................1.196
Notice of appeal...................................................1.191

[[Page 195]]

Rehearing..........................................................1.197
Reopening after decision...........................................1.198
Reply brief........................................................1.193
Statement of grounds for rejecting, by Board of Patent Appeals and 
Interferences......................................................1.196
Appeal to Court of Appeals for the Federal Circuit:
Fee provided by rules of court.....................................1.301
From Board of Patent Appeals and Interferences.....................1.301
Notice and reasons of appeal.......................................1.302
Time for....................................................1.302, 1.304
Applicant for patent
                                                               1.41-1.48
Change..............................................................1.48
Deceased or insane inventor...................................1.42, 1.43
Executor or administrator...........................................1.42
Informed of application number......................................1.54
Joint changed to sole...............................................1.48
Letters for, sent to attorney or agent..............................1.33
May be represented by an attorney or agent..........................1.31
Personal attendance unnecessary......................................1.2
Required to conduct business with decorum and courtesy...............1.3
Required to report assistance received..............................1.33
Sole changed to joint...............................................1.48
Sole changed to another sole........................................1.48
Application for patent (see also Abandoned applications, Claims, 
Drawing, Examination of application Reissues, Provisional applications, 
Specification):
Accepted and filed for examination only when complete...............1.53
Access to...........................................................1.14
Acknowledgement of filing...........................................1.54
Alteration after execution..........................................1.67
Alteration before execution.........................................1.52
Arrangement...........................................1.77, 1.154, 1.163
Continuation or division, reexecution not required...............1.53(b)
Continued Prosecution Application (CPA)..........................1.53(d)
Copies of, furnished to applicants..................................1.59
Cross-references of related applications............................1.78
Deceased or insane inventor...................................1.42, 1.43
Declaration.........................................................1.68
Duty of disclosure..................................................1.56
Elements of, order and arrangement of.................1.77, 1.154, 1.163
Execution in blank..................................................1.67
Filed by other than inventor............................1.42, 1.43, 1.47
Filed apparently without all pages of specification, petition 
asserting all pages were filed...................................1.53(e)
Filed apparently without any drawing, petition asserting drawing 
was filed, or was not necessary, or adding drawing along with new 
oath or declaration and seeking new filing date..................1.53(e)
Filed apparently without all figures of drawing:
Petition asserting all figures of drawing were filed.............1.53(e)
Petition and filing of missing figures with new oath or 
declaration seeking new filing date................................1.182
Filing date.........................................................1.53
Foreign language oath or declaration................................1.69
Formulas and tables.................................................1.58
General requisites..................................................1.51
Identification required in letters concerning........................1.5
Incomplete papers not accepted and filed for examination............1.53
Interlineations, etc., to be indicated..............................1.52
Language, paper, writing, margin....................................1.52

[[Page 196]]

Later filing of oath and filing fee..............................1.53(f)
Must be made by actual inventor, with exceptions..............1.41, 1.46
Names of all inventors required...............................1.41, 1.53
Non-English language................................................1.52
Nonprovisional filed without at least one claim, filing of 
petition to convert to a provisional application..............1.53(c)(2)
Owned by Government................................................1.103
Papers having filing date not to be returned........................1.59
Parts filed separately..............................................1.54
Parts of application desirably filed together.......................1.54
Parts of complete application.......................................1.51
Processing fees.....................................................1.17
Provisional application............................1.9, 1.51(c), 1.53(c)
Relating to atomic energy........................................1.14(c)
Reservation for future application not permitted....................1.79
Retention fee....................................................1.53(f)
Secrecy order....................................................5.1-5.6
Secret while pending................................................1.14
Serial number and filing date.......................................1.54
Tables and formulas.................................................1.58
To contain but one invention unless connected......................1.141
To whom made........................................................1.51
Two or more by same party with conflicting claims................1.78(b)
Application number
                                                         1.5(a), 1.53(a)
Arbitration award filing
                                                                   1.335
Arbitration in interference
                                                                   1.690
Assignee:
Correspondence held with assignee of entire interest..........3.71, 3.73
If of entire interest, patent may issue to him................1.46, 3.81
If of undivided part interest, correspondence will be held with 
inventor............................................................1.33
If of undivided part interest, must assent to application for 
reissue of patent...........................................1.171, 1.172
If of undivided part interest, patent may issue jointly.......1.46, 3.81
May conduct prosecution of application........................3.71, 3.73
May take action in interference....................................1.643
Taking of action in a patent matter before the Office by the 
Assignee, Assignee must establish its ownership of the patent 
application or patent involved to the satisfaction of the 
Commissioner.....................................................3.73(b)
Assignments and recording:
Abstracts of title, fee for......................................1.19(b)
Conditional assignments.............................................3.56
Date of receipt is date of record...................................3.51
Fees.......................................................1.21(h), 3.41
Cover Sheet required..........................................3.28, 3.31
Correction of Cover Sheet errors....................................3.34
Effect of recording.................................................3.54
Requirements for recording.....................................3.21-3.41
If recorded before payment of issue fee, patent may issue to 
assignee............................................................3.81
Must be recorded in Patent and Trademark Office to issue patent to 
assignee............................................................3.81
Orders for copies of................................................1.12
Patent may issue to assignee........................................3.81
Recording of assignments............................................3.11
Records open to public inspection...................................1.12
Must identify patent or application.................................3.21
What will be accepted for recording.................................3.11

[[Page 197]]

Atomic energy applications reported to Department of Energy
                                                                    1.14
Attorneys and agents:
Acting in a representative capacity...........................1.33, 1.34
Assignment will not operate as a revocation of power................1.36
Associate...........................................................1.34
Certificate of good standing.....................................1.21(a)
Fee on admission.................................................1.21(a)
General powers not recognized.......................................1.34
Office cannot aid in selection of...................................1.31
Personal interviews with examiners.................................1.133
Power of attorney or authorization of agent.........................1.34
Representative capacity.......................................1.33, 1.34
Representing conflicting parties...................................1.613
Required to conduct business with decorum and courtesy...............1.3
Revocation of power.................................................1.36
Withdrawal of.......................................................1.36
Authorization of agents. (See Attorneys and agents.)
Award in arbitration
                                                                   1.335

                                 B

Balance in deposit account
                                                                    1.25
Basic filing fee
                                                                    1.16
Benefit of earlier application
                                                                    1.78
Bill in equity. (See Civil action.)
Biological material. (See Deposit of Biological material)
Board of Patent Appeals and Interferences. (See Appeal to Board of 
Patent Appeals and Interferences, Interferences.)
Box CPA
                                                              1.53(d)(9)
Box PCT
                                                                  1.1(b)
Box Reexam
                                                                  1.1(c)
Briefs:
At final hearing in interference...................................1.656
In petitions to Commissioner.......................................1.181
On appeal to Board of Patent Appeals and Interferences.............1.192
Business to be conducted with decorum and courtesy
                                                                     1.3
Business to be transacted in writing
                                                                     1.2

                                 C

Certificate of correction
                                                            1.322, 1.323
Fees................................................................1.20
Mistakes not corrected.............................................1.325
Certificate of mailing (as first class mail) or transmission
                                                                     1.8
Certificate of mailing by Express Mail no 
longer required, effective December 2, 1996
                                                                    1.10
Certificate, Reexamination
                                                                   1.570
Certified copies of records, papers, etc
                                                                    1.13
Fee for certification............................................1.19(b)
Chemical and mathematical formulas and tables
                                                                    1.58
Citation of prior art in patent
                                                                   1.501
Citation of references
                                                                1.104(d)
Civil action
                                                            1.303, 1.304
Claims (see also Examination of applications):
Amendment of.......................................................1.121
Conflicting, same applicant or owner................................1.78
Date of invention of...............................................1.110
Dependent...........................................................1.75

[[Page 198]]

Design patent......................................................1.153
May be in dependent form............................................1.75
More than one permitted.............................................1.75
Multiple dependent..................................................1.75
Must conform to invention and specification.........................1.75
Notice of rejection of.............................................1.104
Numbering of.......................................................1.126
Part of complete application........................................1.51
Plant patent.......................................................1.164
Rejection of....................................................1.104(c)
Required............................................................1.75
Separate Sheet required for commencement of claim(s).............1.52(b)
Twice or finally rejected before appeal............................1.191
Color drawing
                                                              1.84(a)(2)
Commissioner of Patents and Trademarks (see also Petition to 
Commissioner):
Address of...........................................................1.1
All communications to Patent and Trademark Office to be addressed 
to...................................................................1.1
Cases decided by Board reopened only by............................1.198
Initiates reexamination............................................1.520
Reissue in divisions referred to...................................1.177
Return of papers in violation of rule on decorum and courtesy........1.3
Common Ownership, statement by assignee may be required
                                                                 1.78(c)
Complaints against examiners, how presented
                                                                     1.3
Composition of matter, specimens of ingredients may be required
                                                                    1.93
Computer program listings
                                                                    1.96
Concurrent office proceedings
                                                                   1.565
Conduct of reexamination proceedings
                                                                   1.550
Conflicting claims, same applicant or owner in two or more 
applications
                                                                    1.78
Continuing application for invention disclosed and claimed in 
prior application
                                                                 1.53(b)
Continued Prosecution Application (CPA)
                                                                 1.53(d)
Copies of patents, records, etc
                                                        1.11, 1.12, 1.13
Copies of records, fees
                                                           1.19(b), 1.59
Copyright notice in specification
                                                                 1.71(d)
Copyright notice in drawings
                                                                 1.84(s)
Correction, certificate of
                                                            1.322, 1.323
Correction of inventorship
                                                                    1.48
Correspondence:
Address, only one recognized.....................................1.33(c)
All letters and communications to the Office to be addressed to 
(a) Assistant Commissioner for Patents; or (b) Assistant 
Commissioner for Trademarks; or (c) Commissioner of Patents and 
Trademarks...........................................................1.1
Business with the Office to be transacted by.........................1.2
Discourteous communications returned.................................1.3
Double, with different parties in interest not allowed..............1.33
Facsimile transmissions...........................................1.6(d)
Held with attorney or agent.........................................1.33
Identification of application or patent in letter relating to........1.5
May be held exclusively with assignee of entire interest............3.81
Nature of............................................................1.4
Patent owners in reexamination...................................1.33(c)
Receipt of letters and papers........................................1.6
Resumed with principal, if power or authorization is revoked........1.36
Rules for conducting in general..................................1.1-1.8
Secrecy, License to Export or File in Foreign Countries..............5.1

[[Page 199]]

Separate letter for each subject of inquiry..........................1.4
Signature requirements............................................1.4(d)
When no attorney or agent...........................................1.33
With attorney or agent after power or authorization is filed........1.33
Coupons sold by the Office
                                                                    1.24
Court of Appeals for the Federal Circuit, appeal to. (See Appeal to 
Court of Appeals for the Federal Circuit.)
CPA (Continued Prosecution Application)
                                                                 1.53(d)

                                 D

Date of invention of subject matter of individual claims
                                                                   1.110
Day for taking any action or paying any fee falling on Saturday, 
Sunday, or Federal holiday
                                                                     1.7
Death or insanity of inventor
                                                              1.42, 1.43
Decision on appeal by the Board of Patent Appeals and 
Interferences
                                                                   1.196
Action following decision..........................................1.197
Declaration (See also Oath in patent application).
Foreign language....................................................1.69
In lieu of oath.....................................................1.68
In patent application...............................................1.68
Definitions:
Independent inventor.................................................1.9
National and international applications..............................1.9
Nonprofit organization...............................................1.9
Nonprovisional application...........................................1.9
Provisional application..............................................1.9
Service of process.....................................15 C.F.R. Part 15
Small business concern...............................................1.9
Small entity.........................................................1.9
Terms under Patent Cooperation Treaty..............................1.401
Testimony by employees................................15 C.F.R. Part 15a
Delivery of patent
                                                                   1.315
Deposit accounts
                                                                    1.25
Fees.............................................................1.21(b)
Deposit of computer program listings
                                                                    1.96
Deposit of Biological Material:
Acceptable depository..............................................1.803
Biological material................................................1.801
Examination procedures.............................................1.809
Furnishing of samples..............................................1.808
Need or Opportunity to make a deposit..............................1.802
Replacement or supplemental deposit................................1.805
Term of deposit....................................................1.806
Time of making original deposit....................................1.804
Viability of deposit...............................................1.807
Depositions (See also Testimony in interferences):
Certificate of officer to accompany................................1.676
Formalities to be observed in preparing............................1.677
Person before whom taken...........................................1.674
To be sealed up, addressed, and forwarded to the Commissioner......1.676
When transcript must be filed......................................1.678
Description of invention. (See Specification.)
Design Patent Applications:
Arrangement of specification.......................................1.154
Claim..............................................................1.153
Drawing............................................................1.152

[[Page 200]]

Filing fee.......................................................1.16(f)
Issue and term.....................................................1.155
Issue fee........................................................1.18(b)
Oath...............................................................1.153
Rules applicable...................................................1.151
Title, description and claim.......................................1.153
Determination of request for reexamination
                                                                   1.515
Disclaimer, statutory:
During interference.............................................1.662(a)
Fee..............................................................1.20(d)
Requirements of....................................................1.321
Terminal...........................................................1.321
Disclosure, amendments to not permitted
                                                                   1.121
Disclosure document fee
                                                                 1.21(c)
Discovery in interferences
                                                             1.672-1.688
Division. (See Restriction of application.)
Division of patent on reissue
                                                                   1.177
Document supply fees
                                                                    1.19
Drawing:
Amendment of.......................................................1.121
Arrangement of views.............................................1.84(h)
Arrows...........................................................1.84(r)
Character of lines...............................................1.84(l)
Color.........................................................1.84(a)(2)
Content of drawing..................................................1.83
Copyright notice.................................................1.84(s)
Correction.......................................1.84(w), 1.85(c), 1.121
Cost of copies of...................................................1.19
Design application.................................................1.152
Extraneous matter................................................1.83(a)
Figure for Official Gazette......................................1.84(j)
Filed with application..............................................1.81
Hatching and shading.............................................1.84(m)
Holes............................................................1.84(x)
Identification...................................................1.84(c)
If of an improvement, must show connection with old structure....1.83(b)
Inferior or defective drawings will be rejected.....................1.85
Informal drawings...................................................1.85
Ink...........................................................1.84(a)(1)
Lead lines.......................................................1.84(q)
Legends..........................................................1.84(o)
Letters..........................................................1.84(p)
Location of names................................................1.84(c)
Margin...........................................................1.84(g)
Mask work notice.................................................1.84(s)
Must be described in and referred to specification..................1.74
Must show every feature of the invention............................1.83
No return or release.............................................1.85(b)
Numbering of sheets..............................................1.84(t)
Numbering of views...............................................1.84(u)
Numbers..........................................................1.84(p)
Original may be used with application for reissue..................1.174
Original should be retained by applicant.........................1.81(a)
Paper............................................................1.84(e)
Part of application papers.......................................1.52(b)
Photographs......................................................1.84(b)
Plant patent application.....................................1.81, 1.165

[[Page 201]]

Printed and published by the Office when patented...................1.84
Reference characters.......................................1.74, 1.84(p)
Reissue............................................................1.174
Release not permitted............................................1.85(b)
Required by law when necessary for understanding....................1.81
Scale............................................................1.84(k)
Security markings................................................1.84(v)
Shading..........................................................1.84(m)
Size of sheet....................................................1.84(f)
Specific rules relating to preparation of drawings will be 
enforced............................................................1.85
Standards for drawings..............................................1.84
Symbols..........................................................1.84(n)
Views............................................................1.84(h)
When necessary, part of complete application........................1.51
Duty of disclosure
                                                             1.56, 1.555
Patent term extension..............................................1.765

                                 E

Election of species
                                                                   1.146
Employee testimony (see Testimony by Office employees)
Establishing small entity status
                                                              1.27, 1.28
Evidence. (See Testimony in interferences.)
Examination of applications:
Advancement of examination.........................................1.102
As to form.........................................................1.104
Citation of references..........................................1.104(d)
Completeness of examiner's action...............................1.104(b)
Examiner's action...............................................1.104(a)
International-type search.......................................1.104(a)
Nature of examination...........................................1.104(a)
Reasons for allowance...........................................1.104(e)
Reexamination after rejection if requested.........................1.111
Reexamination of original claims upon reissue......................1.176
Reissue............................................................1.176
Rejection of claims.............................................1.104(c)
Suspension of......................................................1.103
Examination of papers by attorney or agent not permitted without 
authorization
                                                                    1.34
Examiners:
Answers on appeal..................................................1.193
Complaints against...................................................1.3
Interviews with....................................................1.133
Executors
                                                              1.42, 1.44
Exhibits. (See Models and exhibits.)
Export of technical data
                                                              5.19, 5.20
Express abandonment
                                                                   1.138
Express Mail, Addressee Only, USPS
                                                                    1.10
Certificate of mailing by, not required eff. 12/2/96................1.10
Date of Receipt of...................................................1.6
Petition in regard to...............................................1.10
Extension of patent term
Due to regulatory review period (35 U.S.C. 156):
Applicant for......................................................1.730
Application for....................................................1.740
Calculation of term:
Animal Drug Product................................................1.778
Food or color additive.............................................1.776

[[Page 202]]

Human drug product.................................................1.775
Medical device.....................................................1.777
Veterinary biological product......................................1.779
Certificate........................................................1.780
Conditions for..............................................1.701, 1.720
Determination of eligibility.......................................1.750
Duty of disclosure.................................................1.765
Filing date of application.........................................1.741
Complete application, what constitutes..........................1.741(a)
Review of determination via 1.181...............................1.741(b)
Interim extension..................................................1.760
Multiple applications..............................................1.785
Patents subject to..........................................1.701, 1.710
Withdrawal of application..........................................1.770
Due to prosecution delay (35 U.S.C. 154):
Conditions for..................................................1.701(a)
Appellate review.............................................1.701(a)(3)
Interference proceeding......................................1.701(a)(1)
Secrecy order................................................1.701(a)(2)
Calculation of term:
Appellate Review.............................................1.701(c)(3)
Interference proceeding......................................1.701(c)(1)
Maximum extension...............................................1.701(b)
Reduction of extension..........................................1.701(d)
Secrecy order................................................1.701(c)(2)
Extension of time
                                                                   1.136
Fees.........................................................1.17(a)-(d)
Interference proceedings...........................................1.645
Reexamination proceedings.......................................1.550(c)

                                 F

Facsimile transmissions
                                                             1.6(d), 1.8
Federal Holiday, defined for 35 USC 21 purposes
                                                                  1.9(h)
FEDERAL REGISTER, publication of rules in
                                                                   1.351
Fees and payment of money:
Coupons.............................................................1.24
Deposit account.....................................................1.25
Extension of time................................................1.17(a)
Fee on appeal to the Court of Appeals for the Federal Circuit 
provided by rules of court.........................................1.301
Fees in case of petitions.......................................1.181(d)
Fees payable in advance.............................................1.22
Foreign filing license petition..................................1.17(h)
For international-type search report.............................1.21(e)
Method of payment...................................................1.23
Money by mail at risk of sender.....................................1.23
Money paid by mistake...............................................1.26
Petitions...........................................................1.17
Reexamination request............................................1.20(c)
Refunds.............................................................1.26
Relating to international applications.............................1.445
Schedule of fees and charges...................................1.16-1.21
Files and papers of abandoned applications, disposition
                                                                    1.14
Files open to the public
                                                                    1.11
Filing date of application
                                                                    1.53
Filing fee part of complete application
                                                                    1.51
Filing fees
                                                                    1.16

[[Page 203]]

Filing in Post Office
                                                         1.8(a)(2), 1.10
Filing of interference settlement agreements
                                                                   1.666
Final rejection:
Appeal from........................................................1.191
Response to..........................................1.113, 1.116, 1.129
When and how given.................................................1.113
First Class Mail (Priority Mail and Express Mail)
                                                               1.8, 1.10
Foreign application
                                                                    1.55
License to file................................................5.11-5.25
Foreign country:
Taking oath in......................................................1.66
Taking testimony in................................................1.671
Foreign mask work protection
                                                                Part 150
Evaluation of request..............................................150.4
Definition.........................................................150.1
Duration of proclamation...........................................150.5
Initiation of evaluation...........................................150.2
Mailing address....................................................150.6
Submission of requests.............................................150.3
Foreign patent rights acquired by government
                                                            101.1-101.11
Licensing....................................................102.1-102.6
Formulas and tables in patent applications
                                                                    1.58
Fraud practiced or attempted on Office
                                                           1.28(d), 1.56

                                 G

Gazette. (See Official Gazette.)
General authorization to charge deposit account
                                                                    1.25
General information and correspondence
                                                           1.1-1.8, 1.10
Government acquisition of foreign patent rights
                                                                Part 501
Government employee invention
                                                                Part 501
Guardian of insane person may apply for patent
                                                                    1.43

                                 H

Hearings:
Before the Board of Patents Appeals and Interferences..............1.194
Fee for appeal hearing..............................................1.17
In disciplinary proceedings.......................................10.144
Of motions in interferences........................................1.640
Holiday, time for action expiring on
                                                                1.6, 1.7

                                 I

Identification of application, patent or registration
                                                                     1.5
Independent inventor:
Definition...........................................................1.9
Status statement....................................................1.27
Information disclosure statement:
At time of filing application.......................................1.51
Content of..........................................................1.98
Not permitted in provisional applications...........................1.51
Reexamination......................................................1.555
To comply with duty of disclosure...................................1.97
Information, Public
                                                                    1.15
Insane inventor, application by guardian of
                                                                    1.43
Interferences (See also Depositions, Notice, Preliminary Statement in 
interferences, Testimony in interferences):
Abandonment of the contest.........................................1.662

[[Page 204]]

Access to applications.............................................1.612
Access to preliminary statement....................................1.631
Action by examiner after interference..............................1.664
Action if statutory bar appears.............................1.641, 1.659
Addition of new party by judge.....................................1.642
Amendment during.....................................1.615, 1.634, 1.637
Appeal to the Court of Appeals for the Federal Circuit......1.301, 1.302
Applicant requests.................................................1.604
Arbitration........................................................1.690
Briefs at final hearing............................................1.656
Burden of proof....................................................1.657
Civil action.......................................................1.303
Claims copied from patent...................................1.606, 1.607
Claims of defeated parties stand finally disposed of...............1.663
Concession of priority.............................................1.662
Conflicting parties having same attorney...........................1.613
Copying claims from patent..................................1.606, 1.607
Correspondence....................................................1.5(e)
Declaration of interference........................................1.611
Definition.........................................................1.601
Disclaimer to avoid interference................................1.662(a)
Discovery...................................................1.671, 1.688
Dissolution of.....................................................1.633
Dissolution on motion of judge.....................................1.641
Extensions of time.................................................1.645
Failure of junior party to take testimony..........................1.652
Failure to prepare for.......................................1.603-1.606
Final decision.....................................................1.658
Final hearing......................................................1.654
Final hearing briefs...............................................1.656
Identifying claim from patent...............1.607(a)(3), 1.637(e)(1)(vi)
In what cases declared.............................................1.602
Inspection of cases of opposing parties............................1.612
Interference with a patent...................................1.606-1.608
Junior party fails to overcome filing date of senior party.........1.640
Jurisdiction of interference.......................................1.614
Manner of service of papers........................................1.646
Matters considered in at final hearing.............................1.655
Motions......................................................1.633-1.638
NAFTA country...................................................1.601(r)
Nonpatentability argued at final hearing...........................1.655
Notice and access to applications of opposing parties..............1.612
Notice of intent to argue abandonment..............................1.632
Notice of reexamination, reissue, protest or litigation............1.660
Notice to file civil action........................................1.303
Notices and statements.............................................1.611
Order to show cause, judgment on the record........................1.640
Ownership of applications or patents involved......................1.602
Petitions..........................................................1.644
Preliminary statement........................................1.621-1.631
Preparation for..............................................1.603-1.609
Presumption as to order of invention...............................1.657
Prosecution by assignee............................................1.643
Recommendation by Board of Patent Appeals and Interferences........1.659
Record and exhibits................................................1.653
Records of, when open to public.....................................1.11
Reissue filed by patentee during...................................1.662

[[Page 205]]

Request by applicant...............................................1.604
Requests for findings of fact and conclusions of law...............1.656
Return of unauthorized papers......................................1.618
Review of decision by civil action.................................1.303
Same party.........................................................1.602
Sanctions for failure to comply with rules or order................1.616
Sanctions for taking and maintaining a frivolous position..........1.616
Second interference between same parties...........................1.665
Secrecy order cases...............................................5.3(b)
Service of papers..................................................1.646
Statement of, from examiner to Board...............................1.609
Status of claims of defeated applicant after interference..........1.663
Statutory disclaimer by patentee during............................1.662
Suggestion of claims for interference..............................1.605
Summary judgement..................................................1.617
Suspension of ex parte prosecution.................................1.615
Termination of interference........................................1.661
Testimony copies...................................................1.653
Time period for completion.........................................1.610
Times for discovery and taking testimony...........................1.651
Translation of document in foreign language........................1.647
WTO member country..............................................1.601(s)
International application. (See Patent Cooperation Treaty.)
International Preliminary Examining Authority
                                                                   1.416
Interview summary
                                                                   1.133
Interviews with examiner
                                                            1.133, 1.560
Inventor (see also Applicant for patent, Oath in patent application):
Death or insanity of..........................................1.42, 1.43
Refuses to sign application.........................................1.47
To make application.................................................1.41
Unavailable.........................................................1.47
Inventor's certificate priority benefit
                                                                    1.55
Inventorship and date of invention of the subject matter of 
individual claims
                                                                   1.110
Issue fee
                                                                    1.18
Issue of patent. (See Allowance and issue of patent.)
                                 J

Joinder of inventions in one application
                                                                   1.141
Joint inventors
                                                       1.45, 1.47, 1.324
Joint patent to inventor and assignee
                                                              1.46, 3.81
Jurisdiction:
After decision by Board of Patent Appeals and Interferences.......1.197, 
                                                                   1.198
After notice of allowance..........................................1.312
Of contested case..................................................1.614

                                 L

Lapsed patents
                                                            1.137, 1.317
Legal representative of deceased or incapacitated inventor
                                                              1.42, 1.43
Legibility of papers which are to become part of the permanent 
Office records
                                                                 1.52(a)
Letters to the Office. (See Correspondence.)
Library service fee
                                                                 1.19(c)
License for foreign filing
                                                               5.11-5.15
Licensing of government owned foreign patents
                                                             102.1-102.6
List of U.S. Patents classified in a subclass, cost of
                                                                 1.19(d)
Local delivery box rental
                                                                 1.21(d)

[[Page 206]]

                                 M

Maintenance fees
                                                             1.20(e)-(i)
Acceptance of delayed payment of...................................1.378
Fee address for....................................................1.363
Review of decision refusing to accept..............................1.377
Submission of......................................................1.366
Time for payment of................................................1.362
Mask work notice in specification
                                                                 1.71(d)
Mask work notice on drawing
                                                                 1.84(s)
Mask work protection, foreign
                                                                Part 150
Microfiche deposit
                                                                    1.96
Microorganisms. (see) Deposit of Biological Material.)
Minimum balance in deposit accounts
                                                                    1.25
Misjoinder of inventor
                                                             1.48, 1.324
Missing pages when application filed
Petition alleging there were no missing pages....................1.53(e)
Petition with new oath or declaration and later submission of 
missing pages seeking new filing date..............................1.182
Mistake in patent, certificate thereof issued
                                                            1.322, 1.323
Models and exhibits:
Copies of...........................................................1.95
If not claimed within reasonable time, may be disposed of by 
Commissioner........................................................1.94
If on examination model be found necessary request therefor will 
be made.............................................................1.91
In contested cases.................................................1.676
May be required..................................................1.91(b)
Model not generally required as part of application or patent.......1.91
Not to be taken from the Office except in custody of sworn 
employee............................................................1.95
Return of...........................................................1.94
Working model may be required....................................1.91(b)
Money. (See Fees and payment of money.)
Motions in interference
                                                             1.633-1.637
To take testimony in foreign country...............................1.671

                                 N

Name of applicant
                                                                    1.41
New matter inadmissible in application
                                                                   1.121
New matter inadmissible in reexamination
                                                      1.530(d), 1.552(b)
New matter inadmissible in reissue
                                                                   1.173
Non-English language specification fee
                                                                 1.17(k)
Nonprofit organization:
Definition...........................................................1.9
Status statement....................................................1.27
Notice:
Of allowance of application........................................1.311
Of appeal to the Court of Appeals for the Federal Circuit...1.301, 1.302
Of arbitration award...............................................1.335
Of defective reexamination request..............................1.510(c)
Of interference....................................................1.611
Of oral hearings on appeals before Board of Patent Appeals and 
Interference.......................................................1.194
Of rejection of an application..................................1.104(a)
Of use of official records as evidence.............................1.682
To conflicting parties with same attorney or agent.................1.613
Nucleotide and/or Amino Acid Sequences:

[[Page 207]]

Amendments to......................................................1.825
Disclosure in patent application...................................1.821
Format for sequence data...........................................1.822
Form and format for computer readable form.........................1.824
Replacement of.....................................................1.825
Requirements.......................................................1.823

                                 O

Oath or declaration in patent application:
Apostilles..........................................................1.66
Before whom taken in foreign countries..............................1.66
Before whom taken in the United States..............................1.66
By administrator or executor..................................1.42, 1.63
By guardian of insane.........................................1.43, 1.63
Certificate of Officer administering................................1.66
Continuation-in-part.............................................1.63(e)
Declaration.........................................................1.68
Foreign language....................................................1.69
Identification of specification to which it is directed.............1.63
International application, National Stage..........................1.497
Inventor's Certificate..............................................1.63
Made by inventor..............................................1.41, 1.63
Officers authorized to administer oaths.............................1.66
Part of complete application........................................1.51
Person making.......................................................1.64
Plant patent application...........................................1.162
Requirements of.....................................................1.63
Ribboned to other papers............................................1.66
Sealed..............................................................1.66
Signature to........................................................1.63
Supplemental oath for matter disclosed but not originally claimed, 
or for other noncompliance with 1.63................................1.67
To acknowledge duty of disclosure...................................1.63
When taken abroad to seal all papers................................1.66
Oath or declaration in reissue application
                                                                   1.175
Object of the invention
                                                                    1.73
Office action time for response
                                                                   1.134
Office fees. (See Fees and payment of money.)
Official action, based exclusively upon the written record
                                                                     1.2
Official business, should be transacted in writing
                                                                     1.2
Official Gazette:
Amendments to rules published in...................................1.351
One view of drawing published in.................................1.84(j)
Reexamination order published in is returned undelivered........1.525(b)
Service of notices in..............................................1.646
Oral statements
                                                                     1.2
Order to reexamine
                                                                   1.525

                                 P

Papers (requirements to become part of Office permanent records, 
e.g. legibility, capable of reproduction, etc.)
                                                                    1.52
Handwritten, no longer permitted.................................1.52(a)
Papers not received on Saturday, Sunday or holidays
                                                                     1.6
Patent application (See Application for patent and Provisional patent 
applications.)
Patent attorneys and agents. (See Attorneys and agents.)
Patent Cooperation Treaty:

[[Page 208]]

Amendments and corrections during international processing.........1.471
Amendments during international preliminary examination............1.485
Applicant for international application............................1.421
Changes in person, name and address, where filed.........1.421(f), 1.472
Conduct of international preliminary examination...................1.484
Definition of terms................................................1.401
Delays in meeting time limits......................................1.468
Demand for international preliminary examination...................1.480
Designation of States..............................................1.432
Entry into national stage..........................................1.491
As a designated office.............................................1.494
As an elected office...............................................1.495
Examination at national stage......................................1.496
Fees:
Designation fees...................................................1.432
Due on filing of international application......................1.431(c)
Failure to pay results in withdrawal of application......1.431(d), 1.432
Filing and processing fees.........................................1.445
International preliminary examining................................1.482
National stage.....................................................1.492
Refunds............................................................1.446
Filing by other than inventor......................................1.425
International application requirements.............................1.431
Abstract...........................................................1.438
Claims.............................................................1.436
Description........................................................1.435
Drawings...........................................................1.437
Physical requirements..............................................1.433
Request............................................................1.434
International Bureau...............................................1.415
International Preliminary Examining Authority......................1.416
Inventor deceased..................................................1.422
Inventor insane or legally incapacitated...........................1.423
Inventors, joint...................................................1.424
National stage examination.........................................1.496
Oath or declaration at national stage..............................1.497
Priority, claim for................................................1.451
Record copy to International Bureau, Transmittal procedures........1.461
Representation by attorney or agent................................1.455
Rule 13............................................................1.475
Time limits for processing applications.....................1.465, 1.468
United States as:
Designated Office...........................................1.414, 1.497
International Searching Authority..................................1.413
Receiving Office...................................................1.412
Unity of invention:
Before International Searching Authority....................1.475, 1.476
Before International Preliminary Examining Authority...............1.488
National stage.....................................................1.499
Protest to lack of..........................................1.477, 1.489
Patent policy, government
                                                            100.1-100.11
Patentee notified of interference
                                                                   1.602
Patents (see also Allowance and issue of Patent):
Available for license or sale, publication of notice.............1.21(i)
Certified copies of.................................................1.13
Copying claims of...........................................1.606, 1.607
Correction of errors in.......................1.171, 1.322, 1.323, 1.324

[[Page 209]]

Date, duration and form............................................1.137
Delivery of........................................................1.315
Disclaimer.........................................................1.321
Identification required in letters concerning........................1.5
Lapsed, for nonpayment of issue fee................................1.137
Obtainable by civil action.........................................1.303
Price of copies.....................................................1.19
Records of, open to public..........................................1.11
Reissuing of, when defective.................................1.171-1.179
Payment of fees
                                                                    1.23
Personal attendance unnecessary
                                                                     1.2
Petition for reissue
                                                            1.171, 1.172
Petition to Commissioner:
Fees................................................................1.17
For delayed payment of issue fee...................................1.137
For license for foreign filing......................................5.12
For the revival of an abandoned application........................1.137
From formal objections or requirements......................1.113, 1.181
From requirement for restriction............................1.129, 1.144
General requirements...............................................1.181
In interferences...................................................1.644
In reexamination................................................1.515(c)
On refusal of examiner to admit amendment..........................1.127
Questions not specifically provided for............................1.182
Suspension of rules................................................1.183
To exercise supervisory authority..................................1.181
To make special....................................................1.102
Upon objection that appeal is informal.............................1.193
Plant patent applications:
Applicant..........................................................1.162
Claim..............................................................1.164
Declaration........................................................1.162
Description........................................................1.162
Drawings...........................................................1.165
Examination........................................................1.167
Fee for copies......................................................1.19
Filing fee.......................................................1.16(g)
Issue fee........................................................1.18(c)
Oath...............................................................1.162
Rules applicable...................................................1.161
Specification......................................................1.163
Specimens..........................................................1.166
Post issuance fees
                                                                    1.20
Post Office receipt as filing date
                                                                    1.10
Postal emergency or interruption
                                                                  1.6(e)
Power of attorney. (See Attorneys and agents.)
Preliminary statement in interferences:
Access to..........................................................1.631
Contents to..................................................1.622-1.627
Contents of, invention made in other than the United States, a 
NAFTA country, or a WTO member country.............................1.624
Correction of statement on motion..................................1.628
Effect of statement................................................1.629
Failure to file.............................................1.639, 1.640
In case of motion to amend interference............................1.633
May be amended if defective........................................1.628
Not evidence.......................................................1.630
Reliance on prior application......................................1.626

[[Page 210]]

Requirement for....................................................1.621
Sealed before filing...............................................1.627
Service on opposing parties........................................1.621
Subsequent testimony alleging prior dates excluded.................1.629
When opened to inspection..........................................1.631
Preserved in confidence, applications
                                                           1.12 and 1.14
Exceptions (status, access or copies available).....................1.14
Printing testimony
                                                                   1.653
Prior art citation in patent
                                                                   1.501
Prior Art, disqualification of commonly owned patent as
                                                                   1.130
Prior art may be made of record in patent file
                                                                   1.501
Prior art statement:
Content of..........................................................1.98
In reexamination...................................................1.555
To comply with duty of disclosure...................................1.97
Prior Invention, affidavit or declaration of, to overcome cited 
patent or publication
                                                                   1.131
Priority, right of, under treaty or law
                                                                    1.55
Processing and retention fee
                                                        1.21(l), 1.53(f)
Proclamation as to protection of foreign mask works
                                                                Part 150
Production of documents in legal proceedings
                                                      15 C.F.R. Part 15a
Protests to grant of patent
                                                                   1.291
Provisional patent applications:
Claiming the benefit of.......................................1.78(a)(3)
Converting a nonprovisional to a provisional..................1.53(c)(2)
Filing date.........................................................1.53
Filing fee.......................................................1.16(k)
General requisites............................................1.51(b)(2)
Later filing of filing fee and cover sheet.......................1.53(g)
Names of all inventors required............................1.41, 1.53(c)
No right of priority..........................................1.53(c)(2)
No examination...................................................1.53(i)
Papers concerning, must identify provisional applications as such, 
and by application number.........................................1.5(f)
Parts of complete provisional application........................1.51(c)
Processing fees.....................................................1.17
Revival of.........................................................1.137
When abandoned................................................1.53(e)(2)
Public information
                                                                    1.15
Public use proceedings
                                                                   1.292
Fee..............................................................1.17(j)
Publication:
Of reexamination certificate....................................1.570(f)

                                 R

Reasons for allowance
                                                                1.104(e)
Reconsideration of Office action
                                                                   1.112
Recording of assignments. (See Assignments and recording.)
Records of the Patent and Trademark Office
                                                               1.11-1.15
Records used as evidence in interference
                                                                   1.682
Reexamination:
Amendments, manner of making....................................1.121(c)
Announcement in Official Gazette.................................1.11(c)
Appeal to Board....................................................1.191
Appeal to Court of Appeals for the Federal Circuit.................1.301
Certificate........................................................1.570
Civil action.......................................................1.303

[[Page 211]]

Common ownership, statement by assignee may be required..........1.78(c)
Concurrent office proceedings......................................1.565
Conduct of proceedings.............................................1.550
Correspondence address...........................................1.33(c)
Decision of request................................................1.515
Duty of disclosure.................................................1.555
Examiner's action..................................................1.104
Fee..............................................................1.20(c)
Fee charged to deposit account......................................1.25
Fee refund..........................................................1.26
Identification in letter..........................................1.5(d)
Initiated by Commissioner..........................................1.520
Interference.......................................................1.565
Interviews.........................................................1.560
Open to public...................................................1.11(d)
Order..............................................................1.525
Reconsideration....................................................1.112
Refund of fee.......................................................1.26
Reply by requester.................................................1.535
Reply to action....................................................1.111
Request............................................................1.510
Response consideration.............................................1.540
Scope..............................................................1.552
Service............................................................1.248
Statement of patent owner..........................................1.530
Reference characters in drawings
                                                           1.74, 1.84(p)
References cited on examination
                                                                1.104(d)
Refund of money paid by mistake
                                                                    1.26
Register of Government interest in patents
                                                                 7.1-7.7
Rehearing:
Of appeal decisions by Board of Patent Appeals and Interferences 
                                                                1.197(b)
Request for, time for appeal after action on.......................1.304
Reissues:
Applicants, assignees..............................................1.172
Application for reissue............................................1.171
Application made and sworn to by inventor, if living...............1.172
Amendment to specification.........................................1.173
Declaration........................................................1.175
Drawings...........................................................1.174
Examination of reissue.............................................1.176
Filed during interference.......................................1.662(b)
Filing during reexamination........................................1.565
Filing fee..........................................................1.16
Filing of announced in Official Gazette..........................1.11(b)
Grounds for and requirements.................................1.171-1.179
Issue fee........................................................1.18(a)
Loss of original patent............................................1.178
Notice of reissue application......................................1.179
Oath...............................................................1.175
Open to public......................................................1.11
Original claims subject to reexamination...........................1.176
Original patent surrendered........................................1.178
Reissue in divisions...............................................1.177
Specification......................................................1.173
Take precedence in order of examination............................1.176
To contain no new matter...........................................1.173
What must accompany application.............................1.171, 1.172

[[Page 212]]

When in interference...............................................1.660
Rejection:
After two rejections appeal may be taken from examiner to Board of 
Appeals............................................................1.191
Applicant will be notified of rejection with reasons and 
references.........................................................1.104
Examiner may rely on admissions by applicant or patent owner, or 
facts within examiner's knowledge...............................1.104(c)
Final..............................................................1.113
Formal objections..................................................1.104
On account of invention shown by others but not claimed, how 
overcome...........................................................1.131
References will be cited........................................1.104(c)
Requisites of notice of............................................1.104
Reply brief
                                                                   1.193
Reply by applicant or patent owner
                                                                   1.111
Reply by requester
                                                                   1.535
Representative capacity
                                                                 1.34(a)
Request for reconsideration
                                                                   1.112
Request for reexamination
                                                                   1.510
Reservation clauses not permitted
                                                                    1.79
Response time to Office action
                                                                   1.134
Restriction of application
                                                             1.141-1.146
Claims to nonelected invention withdrawn...........................1.142
Constructive election..............................................1.145
Petition from requirements for..............................1.129, 1.144
Provisional election...............................................1.143
Reconsideration of requirement.....................................1.143
Requirement for....................................................1.142
Subsequent presentation of claims for different invention..........1.145
Transitional procedures............................................1.129
Retention fees
                                                        1.21(l), 1.53(f)
Return of correspondence
                                                                  1.5(a)
Return of papers having a filing date
                                                                    1.59
Revival of abandoned application
                                                                   1.137
Unavoidable abandonment fee......................................1.17(l)
Unintentional abandonment fee....................................1.17(m)
Revocation of power of attorney or authorization of agent
                                                                    1.36
Rules of Practice:
Amendments to rules will be published..............................1.351

                                 S

Saturday, when last day falls on
                                                                     1.7
Scope of reexamination proceedings
                                                                   1.552
Secrecy order
                                                                 5.1-5.6
Serial number of application (Obsolete terminology) (see 
Application Number)
                                             1.5, 1.53, 1.54(b), 1.62(e)
Service of notices:
For taking testimony...............................................1.673
In interference cases..............................................1.611
Of appeal to the Court of Appeals for the Federal Circuit..........1.301
Service of papers
                                                                   1.248
Service of process
                                                       15 C.F.R. Part 15
Acceptance of service of process....................................15.3
Definition..........................................................15.2
Scope and purpose...................................................15.1
Shortened period for response
                                                                   1.134
Signature:

[[Page 213]]

Original required for certain correspondence......................1.4(d)
Copy Acceptable for some correspondence...........................1.4(d)
To amendments, etc..................................................1.33
To express abandonment.............................................1.138
To oath.............................................................1.63
To reissue oath or declaration.....................................1.172
Small business concern:
Definition...........................................................1.9
Status statement
                                                                    1.27
Small entity:
Definition...........................................................1.9
License to Federal Agency...........................................1.27
Statement...........................................................1.27
Statement in parent application.....................................1.28
Status establishment..........................................1.27, 1.28
Status update.......................................................1.28
Solicitor's address
                                                               1.1(a)(3)
Species of invention claimed
                                                            1.141, 1.146
Specification (see also Application for patent, Claims):
Abstract............................................................1.72
Amendments to...............................................1.121, 1.125
Arrangement of........................................1.77, 1.154, 1.163
Best mode...........................................................1.71
Claim...............................................................1.75
Contents of....................................................1.71-1.75
Copyright notice.................................................1.71(d)
Cross-references to other applications..............................1.78
Description of the invention........................................1.71
Erasures and insertions must not be made by applicant..............1.121
If defective, reissue to correct.............................1.171-1.179
Mask work notice.................................................1.71(d)
Must conclude with specific and distinct claim......................1.75
Must point out new improvements specifically........................1.71
Must refer by figures to drawings...................................1.74
Must set forth the precise invention................................1.71
Not returned after completion.......................................1.59
Object of the invention.............................................1.73
Order of arrangement in framing.....................................1.77
Paper, writing, margins.............................................1.52
Part of complete application........................................1.51
Reference to drawings...............................................1.74
Requirements of................................................1.71-1.75
Reservation clauses not permitted...................................1.79
Substitute.........................................................1.125
Summary of the invention............................................1.73
Title of the invention..............................................1.72
To be rewritten, if necessary......................................1.125
Specimens. (See Models and exhibits.)
Specimens of composition of matter to be furnished when required 
                                                                    1.93
Specimens of plants
                                                                   1.166
Statement of status as small entity
                                                                    1.27
Statutory disclaimer fee
                                                                 1.20(d)
Statutory invention registrations
                                                                   1.293
Examination of.....................................................1.294
Publication of.....................................................1.297
Review of decision finally refusing to publish.....................1.295
Withdrawal of request for publication of...........................1.296

[[Page 214]]

Sufficient funds in deposit account
                                                                    1.25
Suit in equity. (See Civil action.)
Summary of invention
                                                                    1.73
Sunday, when last day falls on
                                                                     1.7
Supervisory authority, petition to Commissioner to exercise
                                                                   1.181
Supplemental oath for amendment presenting claims for matter 
disclosed but not originally claimed
                                                                    1.67
Surcharge for oath or basic filing fee filed after filing date 
                                                        1.16(e), 1.53(f)
Suspension of action
                                                                   1.103
Suspension of ex parte prosecution during interference
                                                                   1.615
Suspension of rules
                                                                   1.183
Symbols for drawings
                                                                 1.84(n)
Symbols for nucleotide and/or amino acid sequence data
                                                                   1.822

                                 T

Tables in patent applications
                                                                    1.58
Terminal disclaimer
                                                                   1.321
Testimony by Office employees
                                                      15 C.F.R. Part 15a
Definition..........................................15 C.F.R. Part 15a.2
Policy re demand for testimony or document production.....15 C.F.R. Part 
                                                                   15a.3
Procedures re demand for testimony or document production......15 C.F.R. 
                                                              Part 15a.4
Private litigation..................................15 C.F.R. Part 15a.6
Proceedings involving the United States.............15 C.F.R. Part 15a.7
Requests for confidential documents.................15 C.F.R. Part 15a.7
Scope...............................................15 C.F.R. Part 15a.1
Subpoena of Office employee.........................15 C.F.R. Part 15a.5
Testimony of employees in proceedings involving U.S.......15 C.F.R. Part 
                                                                   15a.8
Testimony in interferences:
Additional time for taking.........................................1.645
Assignment of times for taking.....................................1.651
Certification and filing by officer................................1.676
Copies of..........................................................1.653
Depositions must be filed..........................................1.678
Discovery..........................................................1.687
Effect of errors and irregularities in deposition..................1.685
Evidence must comply with rules....................................1.671
Examination of witnesses...........................................1.675
Failure to take....................................................1.652
Form of deposition.................................................1.677
Formal objections to...............................................1.685
Formalities in preparing depositions.........................1.674-1.677
In foreign countries...............................................1.671
Inspection of testimony............................................1.679
Manner of taking testimony of witnesses............................1.672
Motion to extend time for taking...................................1.645
Not considered if not taken and filed in compliance with rules.....1.671
Notice of examination of witnesses.................................1.673
Notice of intent to rely on affidavit...........................1.671(e)
Objections noted in depositions....................................1.675
Weight of deposition testimony taken in foreign country.........1.671(j)
Objections to formal matters.......................................1.685
Official records and printed publications..........................1.682
Officer's certificate..............................................1.676
Persons before whom depositions may be taken.......................1.674
Printing of........................................................1.653
Service of notice..................................................1.673

[[Page 215]]

Stipulations or agreements concerning..............................1.672
Taken by depositions...............................................1.672
Testimony taken in another interference or action, use of..........1.683
Time for taking....................................................1.651
To be inspected by parties to the case only........................1.679
Time expiring on Saturday, Sunday, or holiday
                                                                     1.7
Time for payment of issue fee
                                                                   1.311
Time for response by applicant
                                                            1.134, 1.136
Time for response by patent owner
                                                                   1.530
Time for response by requester
                                                                   1.535
Time for response to Office action
                                                            1.134, 1.136
Time, periods of
                                                                     1.7
Timely filing of correspondence
                                                               1.8, 1.10
Title of invention
                                                                    1.72
Title reports, fee for
                                                              1.19(b)(4)
Transitional procedures
                                                                   1.129

                                 U

Unavoidable abandonment
                                                                   1.137
Unintentional abandonment
                                                                   1.137
United States as:
Designated Office...........................................1.414, 1.497
Elected Office.....................................................1.414
International Preliminary Examining Authority......................1.416
International Searching Authority..................................1.413
Receiving Office...................................................1.412
Unsigned continuation or divisional application
                                                                    1.53
Use of file of parent application
                                                                 1.53(d)

                                 V

Verified statement of small entity status
                                                                    1.27

                                 W

Waiver of secrecy
                                                              1.53(d)(6)
Withdrawal from issue
                                                                   1.313
Withdrawal of attorney or agent
                                                                    1.36
Withdrawal of request for statutory invention registration
                                                                   1.296
Written Description allegedly missing
Petition contesting this allegation..............................1.53(e)
Petition with new oath or declaration and later submission of 
missing specification seeking new filing date....................1.53(e)

[[Page 217]]



PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents




    Editorial Note: Part 1 is placed in a separate grouping of parts 
pertaining to patents. It appears on page 5 of this volume.

                               TRADEMARKS



PART 2--RULES OF PRACTICE IN TRADEMARK CASES--Table of Contents




Sec.
2.1  Sections of part 1 applicable.
2.2  Definitions.
2.6  Trademark fees.
2.7  Fastener recordal fees.

         Representation by Attorneys or Other Authorized Persons

2.11  Applicants may be represented by an attorney.
2.12--2.16  [Reserved]
2.17  Recognition for representation.
2.18  Correspondence, with whom held.
2.19  Revocation of power of attorney or of other authorization to 
          represent; withdrawal.

                              Declarations

2.20  Declarations in lieu of oaths.

                      Application for Registration

2.21  Requirements for receiving a filing date.
2.23  Serial number.
2.24  Designation of representative by foreign applicant.
2.25  Papers not returnable.
2.26  Use of old drawing in new application.
2.27  Pending trademark application index; access to applications.

                         The Written Application

2.31  Application must be in English.
2.32  Application to be signed and sworn to or include a declaration by 
          applicant.
2.33  Requirements for written application.
2.35  Description of mark.
2.36  Identification of prior registrations.
2.37  Authorization for representation; U.S. representative.
2.38  Use by predecessor or by related companies.
2.39  Priority claim based on foreign application.
2.41  Proof of distinctiveness under section 2(f).
2.42  Concurrent use.
2.43  Service mark.
2.44  Collective mark.
2.45  Certification mark.
2.46  Principal Register.
2.47  Supplemental Register.

                                 Drawing

2.51  Drawing required.
2.52  Requirements for drawings.

                                Specimens

2.56  Specimens.
2.57  Facsimiles.
2.58  Specimens or facsimiles in the case of a service mark.
2.59  Filing substitute specimens.

           Examination of Application and Action by Applicants

2.61  Action by examiner.
2.62  Period for response.
2.63  Reexamination.
2.64  Final action.
2.65  Abandonment.
2.66  Revival of abandoned applications.
2.67  Suspension of action by the Patent and Trademark Office.
2.68  Express abandonment (withdrawal) of application.
2.69  Compliance with other laws.

                        Amendment of Application

2.71  Amendments to correct informalities.
2.72  Amendments to description or drawing of the mark.
2.73  Amendment to recite concurrent use.
2.74  Form of amendment.
2.75  Amendment to change application to different register.
2.76  Amendment to allege use.
2.77  Amendments between notice of allowance and statement of use.

                    Publication and Post Publication

2.80  Publication for opposition.
2.81  Post publication.
2.82  Marks on Supplemental Register published only upon registration.
2.83  Conflicting marks.
2.84  Jurisdiction over published applications.

                             Classification

2.85  Classification schedules.
2.86  Application may include multiple goods or services comprised in 
          single class or multiple classes.
2.87  Dividing an application.

                        Post Notice of Allowance

2.88  Filing statement of use after notice of allowance.
2.89  Extensions of time for filing a statement of use.

              Interferences and Concurrent Use Proceedings

2.91  Declaration of interference.
2.92  Preliminary to interference.

[[Page 218]]

2.93  Institution of interference.
2.94--2.95  [Reserved]
2.96  Issue; burden of proof.
2.97  [Reserved]
2.98  Adding party to interference.
2.99  Application to register as concurrent user.

                               Opposition

2.101  Filing an opposition.
2.102  Extension of time for filing an opposition.
2.104  Contents of opposition.
2.105  Notification of opposition proceeding(s).
2.106  Answer.
2.107  Amendment of pleadings in an opposition proceeding.

                              Cancellation

2.111  Filing petition for cancellation.
2.112  Contents of petition for cancellation.
2.113  Notification of cancellation proceeding.
2.114  Answer.
2.115  Amendment of pleadings in a cancellation proceeding.

                  Procedure in Inter Partes Proceedings

2.116  Federal Rules of Civil Procedure.
2.117  Suspension of proceedings.
2.118  Undelivered Office notices.
2.119  Service and signing of papers.
2.120  Discovery.
2.121  Assignment of times for taking testimony.
2.122  Matters in evidence.
2.123  Trial testimony in inter partes cases.
2.124  Depositions upon written questions.
2.125  Filing and service of testimony.
2.126  [Reserved]
2.127  Motions.
2.128  Briefs at final hearing.
2.129  Oral argument; reconsideration.
2.130  New matter suggested by Examiner of Trademarks.
2.131  Remand after decision in inter partes proceeding.
2.132  Involuntary dismissal for failure to take testimony.
2.133  Amendment of application or registration during proceedings.
2.134  Surrender or voluntary cancellation of registration.
2.135  Abandonment of application or mark.
2.136  Status of application on termination of proceeding.

                                 Appeals

2.141  Ex parte appeals from the Examiner of Trademarks.
2.142  Time and manner of ex parte appeals.
2.144  Reconsideration of decision on ex parte appeal.
2.145  Appeal to court and civil action.

                Petitions and Action by the Commissioner

2.146  Petitions to the Commissioner.
2.147  [Reserved]
2.148  Commissioner may suspend certain rules.

                               Certificate

2.151  Certificate.

             Publication of Marks Registered Under 1905 Act

2.153  Publication requirements.
2.154  Publication in Official Gazette.
2.155  Notice of publication.
2.156  Not subject to opposition; subject to cancellation.

           Reregistration of Marks Registered Under Prior Acts

2.158  Reregistration of marks registered under Acts of 1881, 1905, and 
          1920.

 Cancellation for Failure to File Affidavit or Declaration During Sixth 
                                  Year

2.161  Cancellation for failure to file affidavit or declaration during 
          sixth year.
2.162  Requirements for affidavit or declaration during sixth year.
2.163  Notice to registrant.
2.164  Acknowledgment of receipt of affidavit or declaration.
2.165  Reconsideration of affidavit or declaration.
2.166  Time of cancellation.

                Affidavit or Declaration Under Section 15

2.167  Affidavit or declaration under section 15.
2.168  Combined with other affidavits or declarations.

                 Correction, Disclaimer, Surrender, Etc.

2.171  New certificate on change of ownership.
2.172  Surrender for cancellation.
2.173  Amendment and disclaimer in part.
2.174  Correction of Office mistake.
2.175  Correction of mistake by registrant.
2.176  Consideration of above matters.

                            Term and Renewal

2.181  Term of original registrations and renewals.
2.182  Period within which application for renewal must be filed.
2.183  Requirements of application for renewal.
2.184  Refusal of renewal.
2.185--2.187  [Reserved]

    Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.

    Source: 30 FR 13193, Oct. 16, 1965, unless otherwise noted.

[[Page 219]]



Sec. 2.1  Sections of part 1 applicable.

    Sections 1.1 to 1.26 of this chapter are applicable to trademark 
cases except such parts thereof which specifically refer to patents and 
except Sec. 1.22 to the extent that it is inconsistent with 
Sec. 2.85(e), 2.101(d), 2.111(c) or Sec. 2.162(d). Other sections of 
part 1 incorporated by reference or referred to in particular sections 
of this part are also applicable to trademark cases.

[51 FR 28709, Aug. 11, 1986]



Sec. 2.2  Definitions.

    (a) The Act as used in this part means the Trademark Act of 1946, 60 
Stat. 427, as amended, codified in 15 U.S.C. 1051 et seq.
    (b) Entity as used in this part includes both natural and juristic 
persons.

[54 FR 37588, Sept. 11, 1989]



Sec. 2.6  Trademark fees.

    The following fees and charges are established by the Patent and 
Trademark Office for trademark cases:

    (a) Trademark process fees.

(1) For filing an application, per class.........................$245.00
(2) For filing an amendment to allege use under section 1(c) of the Act, 
per class........................................................$100.00
(3) For filing a statement of use under section 1(d)(1) of the Act, per 
class............................................................$100.00
(4) For filing a request under section 1(d)(2) of the Act for a six-
month extension of time for filing a statement of use under section 
1(d)(1) of the Act, per class....................................$100.00
(5) For filing an application for renewal of a registration, per class 
                                                                 $300.00
(6) Additional fee for filing a renewal application made within three 
months after the expiration of the registration, per class.......$100.00
(7) For filing to publish a mark under section 12(c), per class 
                                                                 $100.00
(8) For issuing a new certificate of registration upon request of 
assignee.........................................................$100.00
(9) For a certificate of correction of registrant's error........$100.00
(10) For filing a disclaimer to a registration...................$100.00
(11) For filing an amendment to a registration...................$100.00
(12) For filing an affidavit under section 8 of the Act, per class 
                                                                 $100.00
(13) For filing an affidavit under section 15 of the Act, per class 
                                                                 $100.00
(14) For filing a combined affidavit under sections 8 and 15 of the Act, 
per class........................................................$200.00
(15) For petitions to the Commissioner...........................$100.00
(16) For filing a petition to cancel, per class..................$200.00
(17) For filing a notice of opposition, per class................$200.00
(18) For ex parte appeal to the Trademark Trial and Appeal Board, per 
class............................................................$100.00
(19) Dividing an application, per new application (file wrapper) created
                                                                 $100.00

    (b) Trademark service fees.

(1) For printed copy of registered mark, copy only

(i) Regular service................................................$3.00
(ii) Overnight delivery to PTO Box or overnight fax................$6.00
(iii) Expedited service for copy ordered by expedited mail or fax 
delivery service and delivered to the customer within two work days 
                                                                  $25.00

(2) Certified or uncertified copy of trademark application as filed:

(i) Regular service...............................................$15.00
(ii) Expedited local service......................................$30.00
(3) Certified or uncertified copy of a trademark-related file wrapper 
and contents......................................................$50.00

(4) Certified copy of a registered mark, showing title and/or status:

(i) Regular service...............................................$15.00
(ii) Expedited local service......................................$30.00
(5) Certified or uncertified copy of trademark records, per document 
except as otherwise provided in this section......................$25.00
(6) For recording each trademark assignment, agreement or other paper 
relating to the property in a registration or application
(i) First property in a document..................................$40.00
(ii) For each additional property in the same document............$25.00
(7) For assignment records, abstract of title and certification, per 
registration......................................................$25.00
(8) Marginal cost, paid in advance, for each hour of terminal session 
time, including print time, using T-Search capabilities, prorated for 
the actual time used. The Commissioner may waive the payment by an 
individual for access to T-Search upon a showing of need or hardship, 
and if such waiver is in the public interest......................$40.00
(9) Self-service copy charge, per page

[[Page 220]]

...................................................................$0.25
(10) Labor charges for services, per hour or fraction thereof.....$40.00
(11) For items and services that the Commissioner finds may be supplied, 
for which fees are not specified by statute or by this part, such 
charges as may be determined by the Commissioner with respect to each 
such item or service.........................................Actual Cost

[56 FR 65155, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991, as amended at 
57 FR 38196, Aug. 21, 1992; 59 FR 257, Jan. 4, 1994; 60 FR 41023, Aug. 
11, 1995; 62 FR 40453, July 29, 1997]



Sec. 2.7  Fastener recordal fees.

(a) Application fee for recordal of insignia......................$20.00
(b) Renewal of insignia recordal..................................$20.00
(c) Surcharge for late renewal of insignia recordal...............$20.00

[61 FR 55223, Oct. 25, 1996]

         Representation by Attorneys or Other Authorized Persons

    Authority: Secs. 2.11 to 2.19 also issued under 35 U.S.C. 31, 32.



Sec. 2.11  Applicants may be represented by an attorney.

    The owner of a trademark may file and prosecute his or her own 
application for registration of such trademark, or he or she may be 
represented by an attorney or other individual authorized to practice in 
trademark cases under Sec. 10.14 of this subchapter. The Patent and 
Trademark Office cannot aid in the selection of an attorney or other 
representative.

[50 FR 5171, Feb. 6, 1985]



Sec. 2.12--2.16   [Reserved]



Sec. 2.17  Recognition for representation.

    (a) When an attorney as defined in Sec. 10.1(c) of this subchapter 
acting in a representative capacity appears in person or signs a paper 
in practice before the Patent and Trademark Office in a trademark case, 
his or her personal appearance or signature shall constitute a 
representation to the Patent and Trademark Office that, under the 
provisions of Sec. 10.14 and the law he or she is authorized to 
represent the particular party in whose behalf he or she acts. Further 
proof of authority to act in a representative capacity may be required.
    (b) Before any non-lawyer will be allowed to take action of any kind 
in any application or proceeding, a written authorization from the 
applicant, party to the proceeding, or other person entitled to 
prosecute such application or proceeding must be filed therein.

[30 FR 13193, Oct. 16, 1965, as amended at 50 FR 5171, Feb. 6, 1985]



Sec. 2.18  Correspondence, with whom held.

    Correspondence will be sent to the applicant or a party to a 
proceeding at its address unless papers are transmitted by an attorney 
at law, or a written power of attorney is filed, or written 
authorization of other person entitled to be recognized is filed, or the 
applicant or party designates in writing another address to which 
correspondence is to be sent, in which event correspondence will be sent 
to the attorney at law transmitting the papers, or to the attorney at 
law designated in the power of attorney, or to the other person 
designated in the written authorization, or to the address designated by 
the applicant or party for correspondence. Correspondence will continue 
to be sent to such address until the applicant or party, or the attorney 
at law or other authorized representative of the applicant or party, 
indicates in writing that correspondence is to be sent to another 
address. Correspondence will be sent to the domestic representative of a 
foreign applicant unless the application is being prosecuted by an 
attorney at law or other qualified person duly authorized, in which 
event correspondence will be sent to the attorney at law or other 
qualified person duly authorized. Double correspondence will not be 
undertaken by the Patent and Trademark Office, and if more than one 
attorney at law or other authorized representative appears or signs a 
paper, the Office reply will be sent to the address already established 
in the file until another correspondence address is specified by the 
applicant or party or by the

[[Page 221]]

attorney or other authorized representative of the applicant or party.

[54 FR 37588, Sept. 11, 1989]



Sec. 2.19  Revocation of power of attorney or of other authorization to represent; withdrawal.

    (a) Authority to represent an applicant or a party to a proceeding 
may be revoked at any stage in the proceedings of a case upon 
notification to the Commissioner; and when it is so revoked, the Office 
will communicate directly with the applicant or party to the proceeding 
or with such other qualified person as may be authorized. The Patent and 
Trademark Office will notify the person affected of the revocation of 
his or her authorization.
    (b) An individual authorized to represent an applicant or party in a 
trademark case may withdraw upon application to and approval by the 
Commissioner.

[50 FR 5171, Feb. 6, 1985]

                              Declarations



Sec. 2.20  Declarations in lieu of oaths.

    The applicant or member of the firm or an officer of the corporation 
or association making application for registration or filing a document 
in the Patent and Trademark Office relating to a mark may, in lieu of 
the oath, affidavit, verification, or sworn statement required from him, 
in those instances prescribed in the individual rules, file a 
declaration that all statements made of his own knowledge are true and 
that all statements made on information and belief are believed to be 
true, if, and only if, the declarant is, on the same paper, warned that 
willful false statements and the like are punishable by fine or 
imprisonment, or both (18 U.S.C. 1001), and may jeopardize the validity 
of the application or document or any registration resulting therefrom.

[31 FR 5261, Apr. 1, 1966]

                      Application for Registration

    Authority: Secs. 2.21 to 2.47 also issued under sec. 1, 60 Stat. 
427; 15 U.S.C. 1051.



Sec. 2.21  Requirements for receiving a filing date.

    (a) Materials submitted as an application for registration of a mark 
will not be accorded a filing date as an application until all of the 
following elements are received:
    (1) Name of the applicant;
    (2) A name and address to which communications can be directed;
    (3) A drawing of the mark sought to be registered substantially 
meeting all the requirements of Sec. 2.52;
    (4) An identification of goods or services;
    (5) A basis for filing:
    (i) A date of first use of the mark in commerce, and at least one 
specimen or facsimile of the mark as used, in an application under 
section 1(a) of the Act, or
    (ii) A claim of a bona fide intention to use the mark in commerce 
and a certification or certified copy of the foreign registration on 
which the application is based in an application under section 44(e) of 
the Act, or
    (iii) A claim of a bona fide intention to use the mark in commerce 
and a claim of the benefit of a prior foreign application in an 
application filed in accordance with section 44(d) of the Act, or
    (iv) A claim of a bona fide intention to use the mark in commerce in 
an application under section 1(b) of the Act;
    (6) A verification or declaration in accordance with Sec. 2.33(b) 
signed by the applicant;
    (7) The required filing fee for at least one class of goods or 
services. Compliance with one or more of the rules relating to the 
elements specified above may be required before the application is 
further processed.
    (b) The filing date of the application is the date on which all of 
the elements set forth in paragraph (a) of this section are received in 
the Patent and Trademark Office.
    (c) If the papers and fee submitted as an application do not satisfy 
all of the requirements specified in paragraph (a) of this section, the 
papers will not be considered to constitute an application and will not 
be given a filing date. The Patent and Trademark Office will return the 
papers and any fee submitted therewith to the person who submitted

[[Page 222]]

the papers. The Office will notify the person to whom the papers are 
returned of the defect or defects which prevented their being considered 
to be an application.

[47 FR 38695, Sept. 2, 1982, as amended at 51 FR 29921, Aug. 21, 1986; 
54 FR 37588, Sept. 11, 1989]



Sec. 2.23  Serial number.

    Applications will be given a serial number as received, and the 
applicant will be informed of the serial number and the filing date of 
the application.

[37 FR 931, Jan. 21, 1972]



Sec. 2.24  Designation of representative by foreign applicant.

    If an applicant is not domiciled in the United States, the applicant 
must designate by a written document filed in the Patent and Trademark 
Office the name and address of some person resident in the United States 
on whom may be served notices or process in proceedings affecting the 
mark. If this document does not accompany or form part of the 
application, it will be required and registration refused unless it is 
supplied. Official communications of the Patent and Trademark Office 
will be addressed to the domestic representative unless the application 
is being prosecuted by an attorney at law or other qualified person duly 
authorized, in which event Official communications will be sent to the 
attorney at law or other qualified person duly authorized. The mere 
designation of a domestic representative does not authorize the person 
designated to prosecute the application unless qualified under paragraph 
(a), (b) or (c) of Sec. 10.14 of this subchapter and authorized under 
Sec. 2.17(b).

[54 FR 37588, Sept. 11, 1989]



Sec. 2.25  Papers not returnable.

    After an application is filed the papers will not be returned for 
any purpose whatever; but the Office will furnish copies to the 
applicant upon request and payment of the fee.



Sec. 2.26  Use of old drawing in new application.

    In an application filed in place of an abandoned or rejected 
application, or in an application for reregistration (Sec. 2.158), a new 
complete application is required, but the old drawing, if suitable, may 
be used. The application must be accompanied by a request for the 
transfer of the drawing, and by a permanent photographic copy, or an 
order for such copy, of the drawing to be placed in the original file. A 
drawing so transferred, or to be transferred, cannot be amended.



Sec. 2.27  Pending trademark application index; access to applications.

    (a) An index of pending applications including the name and address 
of the applicant, a reproduction or description of the mark, the goods 
or services with which the mark is used, the class number, the dates of 
use, and the serial number and filing date of the application will be 
available for public inspection as soon as practicable after filing.
    (b) Except as provided in paragraph (e) of this section, access to 
the file of a particular pending application will be permitted prior to 
publication under Sec. 2.80 upon written request.
    (c) Decisions of the Commissioner and the Trademark Trial and Appeal 
Board in applications and proceedings relating thereto are published or 
available for inspection or publication.
    (d) Except as provided in paragraph (e) of this section, after a 
mark has been registered, or published for opposition, the file of the 
application and all proceedings relating thereto are available for 
public inspection and copies of the papers may be furnished upon paying 
the fee therefor.
    (e) Anything ordered to be filed under seal pursuant to a protective 
order issued or made by any court or by the Trademark Trial and Appeal 
Board in any proceeding involving an application or a registration shall 
be kept confidential and shall not be made available for public 
inspection or copying unless otherwise ordered by the court or the 
Board, or unless the party protected by the order voluntarily discloses 
the matter subject thereto. When possible, only confidential portions of 
filings with the Board shall be filed under seal.

[36 FR 25406, Dec. 31, 1971, as amended at 48 FR 23134, May 23, 1983; 48 
FR 27225, June 14, 1983]

[[Page 223]]

                         The Written Application



Sec. 2.31  Application must be in English.

    The application must be in the English language and plainly written 
on but one side of the paper. It is preferable that the application be 
on lettersize (i.e., 8\1/2\ inches, 21.6 cm., by 11 inches, 27.9 cm.) 
paper, typewritten double spaced, with at least a one and one-half inch 
(3.8 cm.) margin on the left-hand side and top of the page.

[54 FR 37589, Sept. 11, 1989]



Sec. 2.32  Application to be signed and sworn to or include a declaration by applicant.

    (a) The application must be made to the Commissioner of Patents and 
Trademarks and must be signed and verified (sworn to) or include a 
declaration in accordance with Sec. 2.20 by the applicant or by a member 
of the firm or an officer of the corporation or association applying.
    (b) Re-executed papers or a statement which is verified or which 
includes a declaration in accordance with Sec. 2.20 of continued use of 
the mark may be required when the application has not been filed in the 
Patent and Trademark Office within a reasonable time after the date of 
execution.
    (c) The signature to the application must be the correct name of the 
applicant, since the name will appear in the certificate of registration 
precisely as it is signed to the application. The name of the applicant, 
wherever it appears in the papers of the application, will be made to 
agree with the name as signed.



Sec. 2.33  Requirements for written application.

    (a)(1) The application shall include a request for registration and 
shall specify:
    (i) The name of the applicant;
    (ii) The citizenship of the applicant; if the applicant is a 
partnership, the state or nation under the laws of which the partnership 
is organized and the names and citizenship of the general partners or, 
if the applicant is a corporation or association, the state or nation 
under the laws of which the corporation or association is organized;
    (iii) The domicile and post office address of the applicant;
    (iv) In an application under section 1(a) of the Act, that the 
applicant has adopted and is using the mark shown in the accompanying 
drawing, or, in an application under section 1(b) or 44 of the Act, that 
the applicant has a bona fide intention to use the mark shown in the 
accompanying drawing in commerce;
    (v) In an application under section 1(a) of the Act, the particular 
goods or services on or in connection with which the mark is used or, in 
an application under section 1(b) or 44 of the Act, the particular goods 
or services on or in connection with which the applicant has a bona fide 
intention to use the mark, which in an application under section 44 may 
not exceed the scope of the goods or services covered by the foreign 
application or registration;
    (vi) The class of goods or services according to the official 
classification, if known to the applicant;
    (vii) In an application under section 1(a) of the Act, the date of 
applicant's first use of the mark as a trademark or service mark on or 
in connection with goods or services specified in the application and 
the date of applicant's first use in commerce of the mark as a trademark 
or service mark on or in connection with goods or services specified in 
the application, specifying the nature of such commerce (see Sec. 2.38);
    (viii) In an application under section 44(e) of the Act for 
registration of a mark duly registered in the applicant's country of 
origin, as that term is defined in section 44(c), accompanying the 
application, a certificate of the trademark office of the applicant's 
country of origin showing that the mark has been registered in such 
country and also showing the mark, the goods or services for which the 
mark is registered, the date of filing of the application on the basis 
of which registration was granted and that said registration is in full 
force and effect and, if the certificate is not in the English language, 
a translation thereof;
    (ix) In an application claiming the benefit of a foreign application 
in accordance with section 44(d) of the Act,

[[Page 224]]

compliance with the requirements of Sec. 2.39;
    (x) In an application under section 1(a) of the Act, the mode, 
manner or method of applying, affixing or otherwise using the mark on or 
in connection with the goods or services specified or, in an application 
under section 1(b) of the Act, the intended mode, manner or method of 
applying, affixing or otherwise using the mark on or in connection with 
the goods or services specified.
    (2) If more than one item of goods or services is specified in the 
application, the dates of use required in paragraph (a)(1)(vii) of this 
section need be for only one of the items specified, provided the 
particular item to which the dates apply is designated.
    (3) The word commerce as used throughout this part means commerce 
which may lawfully be regulated by Congress, as specified in section 45 
of the Act.
    (b)(1) In an application under section 1(a) of the Act, the 
application must include averments to the effect that the applicant is 
believed to be the owner of the mark sought to be registered; that the 
mark is in use in commerce, specifying the nature of such commerce; that 
no other entity, to the best of the declarant's knowledge and belief, 
has the right to use such mark in commerce, either in the identical form 
or in such near resemblance as to be likely, when applied to the goods 
or services of such other entity, to cause confusion, or to cause 
mistake, or to deceive; that the specimens or facsimiles show the mark 
as used on or in connection with the goods or services; and that the 
facts set forth in the application are true; or
    (2) In an application under section 1(b) or 44 of the Act, the 
application must include averments to the effect that the applicant is 
believed to be the owner of the mark sought to be registered; that the 
applicant has a bona fide intention to use the mark in commerce on or in 
connection with the specified goods or services; that no other entity, 
to the best of the declarant's knowledge and belief, has the right to 
use such mark in commerce, either in the identical form or in such near 
resemblance as to be likely, when applied to the goods or services of 
such other entity, to cause confusion, or to cause mistake, or to 
deceive; and that the facts set forth in the application are true.
    (c) For an application for the registration of a mark for goods or 
services falling within multiple classes, see Sec. 2.86.
    (d) An applicant may not file under both sections 1(a) and 1(b) of 
the Act in a single application, nor may an applicant in an application 
under section 1(a) of the Act amend that application to seek 
registration under section 1(b) of the Act.

[51 FR 28709, Aug. 11, 1986, as amended at 54 FR 37589, Sept. 11, 1989; 
54 FR 46231, Nov. 2, 1989]



Sec. 2.35  Description of mark.

    A description of the mark, which must be acceptable to the Examiner 
of Trademarks, may be included in the application, and must be included 
if required by the examiner. If the mark is displayed in color or a 
color combination, the colors should be described in the application.



Sec. 2.36  Identification of prior registrations.

    Prior registrations of the same or similar marks owned by the 
applicant should be identified in the application.



Sec. 2.37  Authorization for representation; U.S. representative.

    The authorization of a qualified person to represent applicant 
(Sec. 2.17(b)) and the designation of a domestic representative 
(Sec. 2.24) may be included as a paragraph or paragraphs in the 
application.

[41 FR 758, Jan. 5, 1976]



Sec. 2.38  Use by predecessor or by related companies.

    (a) If the first use, the date of which is required by paragraph 
(a)(1)(vii) of Sec. 2.33, was by a predecessor in title, or by a related 
company (sections 5 and 45 of the Act), and such use inures to the 
benefit of the applicant, the date of such first use may be asserted 
with a statement that such first use was by the predecessor in title or 
by the related company as the case may be.

[[Page 225]]

    (b) If the mark is not in fact being used by the applicant but is 
being used by one or more related companies whose use inures to the 
benefit of the applicant under section 5 of the Act, such facts must be 
indicated in the application.
    (c) The Office may require such details concerning the nature of the 
relationship and such proofs as may be necessary and appropriate for the 
purpose of showing that the use by related companies inures to the 
benefit of the applicant and does not affect the validity of the mark.


(Sec. 5, 60 Stat. 429; 15 U.S.C. 1055)

[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37589, Sept. 11, 1989]



Sec. 2.39  Priority claim based on foreign application.

    (a) An application claiming the benefit of a foreign application in 
accordance with section 44(d) of the Act shall specify the filing date 
and country of the first regularly filed foreign application or, if the 
application is based upon a subsequent regularly filed application in 
the same foreign country, the application shall so state and shall show 
that any prior filed application has been withdrawn, abandoned or 
otherwise disposed of, without having been laid open to public 
inspection and without having any rights outstanding, and has not served 
as a basis for claiming a right of priority.
    (b) Before the application can be approved for publication, a basis 
for registration under section 1(a), 1(b) or 44(e) of the Act must be 
established.

[54 FR 37589, Sept. 11, 1989]



Sec. 2.41  Proof of distinctiveness under section 2(f).

    (a) When registration is sought of a mark which would be 
unregistrable by reason of section 2(e) of the Act but which is said by 
applicant to have become distinctive in commerce of the goods or 
services set forth in the application, applicant may, in support of 
registrability, submit with the application, or in response to a request 
for evidence or to a refusal to register, affidavits, or declarations in 
accordance with Sec. 2.20, depositions, or other appropriate evidence 
showing duration, extent and nature of use in commerce and advertising 
expenditures in connection therewith (identifying types of media and 
attaching typical advertisements), and affidavits, or declarations in 
accordance with Sec. 2.20, letters or statements from the trade or 
public, or both, or other appropriate evidence tending to show that the 
mark distinguishes such goods.
    (b) In appropriate cases, ownership of one or more prior 
registrations on the Principal Register or under the Act of 1905 of the 
same mark may be accepted as prima facie evidence of distinctiveness. 
Also, if the mark is said to have become distinctive of applicant's 
goods by reason of substantially exclusive and continuous use in 
commerce thereof by applicant for the five years before the date on 
which the claim of distinctiveness is made, a showing by way of 
statements which are verified or which include declarations in 
accordance with Sec. 2.20, in the application may, in appropriate cases, 
be accepted as prima facie evidence of distinctiveness. In each of these 
situations, however, further evidence may be required.

[54 FR 37590, Sept. 11, 1989]



Sec. 2.42  Concurrent use.

    An application for registration as a lawful concurrent user shall 
specify and contain all the elements required by the preceding sections. 
The applicant in addition shall state in the application the area, the 
goods, and the mode of use for which applicant seeks registration; and 
also shall state, to the extent of the applicant's knowledge, the 
concurrent lawful use of the mark by others, setting forth their names 
and addresses; registrations issued to or applications filed by such 
others, if any; the areas of such use; the goods on or in connection 
with which such use is made; the mode of such use; and the periods of 
such use.

[54 FR 34897, Aug. 22, 1989]



Sec. 2.43  Service mark.

    In an application to register a service mark, the application shall 
specify and contain all the elements required by the preceding sections 
for trademarks,

[[Page 226]]

but shall be modified to relate to services instead of to goods wherever 
necessary.

(Sec. 3, 60 Stat. 429; 15 U.S.C. 1052)



Sec. 2.44  Collective mark.

    (a) In an application to register a collective mark under section 
1(a) of the Act, the application shall specify and contain all 
applicable elements required by the preceding sections for trademarks, 
but shall, in addition, specify the class of persons entitled to use the 
mark, indicating their relationship to the applicant, and the nature of 
the applicant's control over the use of the mark.
    (b) In an application to register a collective mark under section 
1(b) or 44 of the Act, the application shall specify and contain all 
applicable elements required by the preceding sections for trademarks, 
but shall, in addition, specify the class of persons intended to be 
entitled to use the mark, indicating what their relationship to the 
applicant will be, and the nature of the control applicant intends to 
exercise over the use of the mark.

[54 FR 37590, Sept. 11, 1989]



Sec. 2.45  Certification mark.

    (a) In an application to register a certification mark under section 
1(a) of the Act, the application shall specify and contain all 
applicable elements required by the preceding sections for trademarks. 
It shall, in addition, specify the manner in which and the conditions 
under which the certification mark is used; it shall allege that the 
applicant exercises legitimate control over the use of the mark and that 
the applicant is not engaged in the production or marketing of the goods 
or services to which the mark is applied.
    (b) In an application to register a certification mark under section 
1(b) or 44 of the Act, the application shall specify and contain all 
applicable elements required by the preceding sections for trademarks. 
It shall, in addition, specify the manner in which and the conditions 
under which the certification mark is intended to be used; it shall 
allege that the applicant intends to exercise legitimate control over 
the use of the mark and that the applicant will not engage in the 
production or marketing of the goods or services to which the mark is 
applied.

[54 FR 37590, Sept. 11, 1989]



Sec. 2.46  Principal Register.

    All applications will be treated as seeking registration on the 
Principal Register unless otherwise stated in the application. Service 
marks, collective marks, and certification marks, registrable in 
accordance with the applicable provisions of section 2 of the Act, are 
registered on the Principal Register.



Sec. 2.47  Supplemental Register.

    (a) In an application to register on the Supplemental Register under 
section 23 of the Act, the application shall so indicate and shall 
specify that the mark has been in lawful use in commerce, specifying the 
nature of such commerce, by the applicant.
    (b) In an application to register on the Supplemental Register under 
section 44 of the Act, the application shall so indicate. The statement 
of lawful use in commerce may be omitted.
    (c) A mark in an application to register on the Principal Register 
under section 1(b) of the Act is eligible for registration on the 
Supplemental Register only after an acceptable amendment to allege use 
under Sec. 2.76 or statement of use under Sec. 2.88 has been timely 
filed.
    (d) An application for registration on the Supplemental Register 
must conform to the requirements for registration on the Principal 
Register under section 1(a) of the Act, so far as applicable.

[54 FR 37590, Sept. 11, 1989]

                                 Drawing

    Authority: Secs. 2.51 to 2.55 also issued under sec. 1, 60 Stat. 
427; 15 U.S.C. 1051.



Sec. 2.51  Drawing required.

    (a)(1) In an application under section 1(a) of the Act, the drawing 
of the trademark shall be a substantially exact representation of the 
mark as used on or in connection with the goods; or

[[Page 227]]

    (2) In an application under section 1(b) of the Act, the drawing of 
the trademark shall be a substantially exact representation of the mark 
as intended to be used on or in connection with the goods specified in 
the application, and once an amendment to allege use under Sec. 2.76 or 
a statement of use under Sec. 2.88 has been filed, the drawing of the 
trademark shall be a substantially exact representation of the mark as 
used on or in connection with the goods; or
    (3) In an application under section 44 of the Act, the drawing of 
the trademark shall be a substantially exact representation of the mark 
as it appears in the drawing in the registration certificate of a mark 
duly registered in the country of origin of the applicant.
    (b)(1) In an application under section 1(a) of the Act, the drawing 
of a service mark shall be a substantially exact representation of the 
mark as used in the sale or advertising of the services; or
    (2) In an application under section 1(b) of the Act, the drawing of 
a service mark shall be a substantially exact representation of the mark 
as intended to be used in the sale or advertising of the services 
specified in the application and, once an amendment to allege use under 
Sec. 2.76 or a statement of use under Sec. 2.88 has been filed, the 
drawing of the service mark shall be a substantially exact 
representation of the mark as used in the sale or advertising of the 
services; or
    (3) In an application under section 44 of the Act, the drawing of a 
service mark shall be a substantially exact representation of the mark 
as it appears in the drawing in the registration certificate of a mark 
duly registered in the country of origin of applicant.
    (c) The drawing of a mark may be dispensed with in the case of a 
mark not capable of representation by a drawing, but in any such case 
the application must contain an adequate description of the mark.
    (d) Broken lines should be used in the drawing of a mark to show 
placement of the mark on the goods, or on the packaging, or to show 
matter not claimed as part of the mark, or both, as appropriate. In an 
application to register a mark with three-dimensional features, the 
drawing shall depict the mark in perspective in a single rendition.
    (e) If the application is for the registration of only a word, 
letter or numeral, or any combination thereof, not depicted in special 
form, the drawing may be the mark typed in capital letters on paper, 
otherwise complying with the requirements of Sec. 2.52.

[54 FR 37590, Sept. 11, 1989]



Sec. 2.52  Requirements for drawings.

    (a) Character of drawing. All drawings, except as otherwise 
provided, must be made with the pen or by a process which will provide 
high definition upon reproduction. A photolithographic reproduction or 
printer's proof copy may be used if otherwise suitable. Every line and 
letter, including color lining and lines used for shading, must be 
black. All lines must be clean, sharp, and solid, and must not be fine 
or crowded. Gray tones or tints may not be used for surface shading or 
any other purpose. The requirements of this paragraph are not necessary 
in the case of drawings permitted and filed in accordance with paragraph 
(e) of Sec. 2.51.
    (b) Paper and ink. The drawing must be made upon paper which is 
flexible, strong, smooth, nonshiny, white and durable. A good grade of 
bond paper is suitable; however, water marks should not be prominent. 
India ink or its equivalent in quality must be used for pen drawings to 
secure perfectly black solid lines. The use of white pigment to cover 
lines is not acceptable.
    (c) Size of paper and margins. The size of the sheet on which a 
drawing is made must be 8 to 8\1/2\ inches (20.3 to 21.6 cm.) wide and 
11 inches (27.9 cm.) long. One of the shorter sides of the sheet should 
be regarded as its top. It is preferable that the drawing be 2.5 inches 
(6.1 cm.) high and/or wide, but in no case may it be larger than 4 
inches (10.3 cm.) high and 4 inches (10.3 cm) wide. If the amount of 
detail in the mark precludes a reduction to this size, such detail may 
be verbally described in the body of the application. There must be a 
margin of at least 1 inch (2.5 cm.) on the sides and bottom of the paper 
and at least 1 inch (2.5 cm.) between the drawing and the heading.

[[Page 228]]

    (d) Heading. Across the top of the drawing, beginning one inch (2.5 
cm.) from the top edge and not exceeding one third of the sheet, there 
must be placed a heading, listing in separate lines, applicant's 
complete name; applicant's post office address; the dates of first use 
of the mark and first use of the mark in commerce in an application 
under section 1(a) of the Act; the priority filing date of the relevant 
foreign application in an application claiming the benefit of a prior 
foreign application in accordance with section 44(d) of the Act; and the 
goods or services recited in the application or a typical item of the 
goods or services if a number of items are recited in the application. 
This heading should be typewritten. If the drawing is in special form, 
the heading should include a description of the essential elements of 
the mark.
    (e) Linings for color. Where color is a feature of a mark, the color 
or colors employed may be designated by means of conventional linings as 
shown in the following color chart:
[GRAPHIC] [TIFF OMITTED] TC21OC91.014


[51 FR 29921, Aug. 21, 1986, as amended at 54 FR 37591, Sept. 11, 1989; 
54 FR 46231, Nov. 2, 1989]



Sec. 2.56  Specimens.

    An application under section 1(a) of the Act, an amendment to allege 
use under Sec. 2.76, and a statement of use under Sec. 2.88 must each 
include three specimens of the trademark as used on or in connection 
with the goods in commerce. The specimens shall be duplicates of the 
labels, tags, or containers bearing the trademark, or the displays 
associated with the goods and bearing the trademark (or if the nature of 
the goods makes use of such specimens impracticable then on documents 
associated with the goods or their sale), when made of suitable flat 
material and of a size not to exceed 8\1/2\ inches (21.6 cm.) wide and 
11 inches (27.9 cm.) long.

[54 FR 37591, Sept. 11, 1989]



Sec. 2.57  Facsimiles.

    (a) When, due to the mode of applying or affixing the trademark to 
the goods, or to the manner of using the mark on the goods, or to the 
nature of the mark, specimens as above stated cannot be furnished, three 
copies of a suitable photograph or other acceptable reproduction, not to 
exceed 8\1/2\ inches (21.6 cm.) wide and 11 inches (27.9 cm.) long, and 
clearly and legibly showing the mark and all matter used in connection 
therewith, shall be furnished.
    (b) A purported facsimile which is merely a reproduction of the 
drawing submitted to comply with Sec. 2.51 will not

[[Page 229]]

be considered to be a facsimile depicting the mark as used on or in 
connection with the goods or in connection with the services.

[54 FR 37591, Sept. 11, 1989]



Sec. 2.58  Specimens or facsimiles in the case of a service mark.

    (a) In the case of service marks, specimens or facsimiles as 
specified in Secs. 2.56 and 2.57, of the mark as used in the sale or 
advertising of the services shall be furnished unless impossible because 
of the nature of the mark or the manner in which it is used, in which 
event some other representation acceptable to the Commissioner must be 
submitted.
    (b) In the case of service marks not used in printed or written 
form, three audio cassette tape recordings will be accepted.

[30 FR 13193, Oct. 16, 1965, as amended at 51 FR 29922, Aug. 21, 1986]



Sec. 2.59  Filing substitute specimens.

    (a) In an application under section 1(a) of the Act, the applicant 
may submit substitute specimens of the mark as used on or in connection 
with the goods, or in the sale or advertising of the services, provided 
that any substitute specimens submitted are supported by applicant's 
affidavit or declaration in accordance with Sec. 2.20 verifying that the 
substitute specimens were in use in commerce at least as early as the 
filing date of the application. The verification requirement shall not 
apply if the specimens are duplicates or facsimiles, such as 
photographs, of specimens already of record in the application.
    (b) In an application under section 1(b) of the Act, after filing 
either an amendment to allege use under Sec. 2.76 or a statement of use 
under Sec. 2.88, the applicant may submit substitute specimens of the 
mark as used on or in connection with the goods, or in the sale or 
advertising of the services, provided that the use in commerce of any 
substitute specimens submitted is supported by applicant's affidavit or 
declaration in accordance with Sec. 2.20. In the case of a statement of 
use under Sec. 2.88, the applicant must verify that the substitute 
specimens were in use in commerce prior to the filing of the statement 
of use or prior to the expiration of the time allowed to applicant for 
filing a statement of use.

[54 FR 37591, Sept. 11, 1989]

           Examination of Application and Action by Applicants

    Authority: Secs. 2.61 to 2.69 also issued under sec. 12, 60 Stat. 
432; 15 U.S.C. 1062.



Sec. 2.61  Action by examiner.

    (a) Applications for registration, including amendments to allege 
use under section 1(c) of the Act, and statements of use under section 
1(d) of the Act, will be examined and, if the applicant is found not 
entitled to registration for any reason, applicant will be notified and 
advised of the reasons therefor and of any formal requirements or 
objections.
    (b) The examiner may require the applicant to furnish such 
information and exhibits as may be reasonably necessary to the proper 
examination of the application.
    (c) Whenever it shall be found that two or more parties whose 
interests are in conflict are represented by the same attorney, each 
party and also the attorney shall be notified of this fact.

[30 FR 13193, Oct. 16, 1965, as amended at 37 FR 2880, Feb. 9, 1972; 54 
FR 37592, Sept. 11, 1989]



Sec. 2.62  Period for response.

    The applicant has six months from the date of mailing of any action 
by the examiner to respond thereto. Such response may be made with or 
without amendment and must include such proper action by the applicant 
as the nature of the action and the condition of the case may require.



Sec. 2.63  Reexamination.

    (a) After response by the applicant, the application will be 
reexamined or reconsidered. If registration is again refused or any 
formal requirement[s] is repeated, but the examiner's action is not 
stated to be final, the applicant may respond again.
    (b) After reexamination the applicant may respond by filing a timely 
petition to the Commissioner for relief from a

[[Page 230]]

formal requirement if: (1) The requirement is repeated, but the 
examiner's action is not made final, and the subject matter of the 
requirement is appropriate for petition to the Commissioner (see 
Sec. 2.146(b)); or (2) the examiner's action is made final and such 
action is limited to subject matter appropriate for petition to the 
Commissioner. If the petition is denied, the applicant shall have until 
six months from the date of the Office action which repeated the 
requirement or made it final or thirty days from the date of the 
decision on the petition, whichever date is later, to comply with the 
requirement. A formal requirement which is the subject of a petition 
decided by the Commissioner may not subsequently be the subject of an 
appeal to the Trademark Trial and Appeal Board.

[48 FR 23134, May 23, 1983]



Sec. 2.64  Final action.

    (a) On the first or any subsequent reexamination or reconsideration 
the refusal of the registration or the insistence upon a requirement may 
be stated to be final, whereupon applicant's response is limited to an 
appeal, or to a compliance with any requirement, or to a petition to the 
Commissioner if permitted by Sec. 2.63(b).
    (b) During the period between a final action and expiration of the 
time for filing an appeal, the applicant may request the examiner to 
reconsider the final action. The filing of a request for reconsideration 
will not extend the time for filing an appeal or petitioning the 
Commissioner, but normally the examiner will reply to a request for 
reconsideration before the end of the six-month period if the request is 
filed within three months after the date of the final action. Amendments 
accompanying requests for reconsideration after final action will be 
entered if they comply with the rules of practice in trademark cases and 
the Act of 1946.
    (c)(1) If an applicant in an application under section 1(b) of the 
Act files an amendment to allege use under Sec. 2.76 during the six-
month response period after issuance of a final action, the examiner 
shall examine the amendment. The filing of such an amendment will not 
extend the time for filing an appeal or petitioning the Commissioner.
    (2) If the amendment to allege use under Sec. 2.76 is acceptable in 
all respects, the applicant will be notified of its acceptance.
    (3) If, as a result of the examination of the amendment to allege 
use under Sec. 2.76, the applicant is found not entitled to registration 
for any reason not previously stated, applicant will be notified and 
advised of the reasons and of any formal requirements or refusals. The 
Trademark Examining Attorney shall withdraw the final action previously 
issued and shall incorporate all unresolved refusals or requirements 
previously stated in the new non-final action.

[48 FR 23134, May 23, 1983, as amended at 54 FR 37592, Sept. 11, 1989]



Sec. 2.65  Abandonment.

    (a) If an applicant fails to respond, or to respond completely, 
within six months after the date an action is mailed, the application 
shall be deemed to have been abandoned. A timely petition to the 
Commissioner pursuant to Secs. 2.63(b) and 2.146 is a response which 
avoids abandonment of an application.
    (b) When action by the applicant filed within the six-month response 
period is a bona fide attempt to advance the examination of the 
application and is substantially a complete response to the examiner's 
action, but consideration of some matter or compliance with some 
requirement has been inadvertently omitted, opportunity to explain and 
supply the omission may be given before the question of abandonment is 
considered.
    (c) If an applicant in an application under section 1(b) of the Act 
fails to timely file a statement of use under Sec. 2.88, the application 
shall be deemed to be abandoned.

[48 FR 23134, May 23, 1983, as amended at 54 FR 37592, Sept. 11, 1989]



Sec. 2.66  Revival of abandoned applications.

    (a) An application abandoned for failure to timely respond, or for 
failure to timely file a statement of use under Sec. 2.88 in an 
application under section 1(b) of the Act, may be revived as a

[[Page 231]]

pending application if it is shown to the satisfaction of the 
Commissioner that the delay was unavoidable.
    (b) A petition to revive an application abandoned for failure to 
timely respond must be accompanied by:
    (1) The required fee,
    (2) A showing which is verified or which includes a declaration in 
accordance with Sec. 2.20 of the causes of the delay, and
    (3) The proposed response, unless a response has been previously 
filed.
    (c) A petition to revive an application abandoned for failure to 
timely file a statement of use under Sec. 2.88 in an application under 
section 1(b) of the Act must be accompanied by:
    (1) The required petition fee,
    (2) A showing which is verified or which includes a declaration in 
accordance with Sec. 2.20 of the causes of the delay,
    (3) The required fees for the number of requests (in accordance with 
Sec. 2.89 for extensions of time to file a statement of use) which 
should have been filed if the application had not been abandoned, and
    (4) Either a statement of use in accordance with Sec. 2.88 (unless 
the same has been previously filed) or a request in accordance with 
Sec. 2.89 for an extension of time to file a statement of use.
    (d) The petition must be filed promptly. No petition to revive will 
be granted in an application under section 1(b) of the Act if granting 
the petition would permit the filing of a statement of use more than 36 
months after the issuance of a notice of allowance under section 
13(b)(2) of the Act.

[54 FR 37592, Sept. 11, 1989]



Sec. 2.67  Suspension of action by the Patent and Trademark Office.

    Action by the Patent and Trademark Office may be suspended for a 
reasonable time for good and sufficient cause. The fact that a 
proceeding is pending before the Patent and Trademark Office or a court 
which is relevant to the issue of registrability of the applicant's 
mark, or the fact that the basis for registration is, under the 
provisions of section 44(e) of the Act, registration of the mark in a 
foreign country and the foreign application is still pending, will be 
considered prima facie good and sufficient cause. An applicant's request 
for a suspension of action under this section filed within the 6-month 
response period (see Sec. 2.62) may be considered responsive to the 
previous Office action. The first suspension is within the discretion of 
the Examiner of Trademarks and any subsequent suspension must be 
approved by the Commissioner.

[37 FR 3898, Feb. 24, 1972]



Sec. 2.68  Express abandonment (withdrawal) of application.

    An application may be expressly abandoned by filing in the Patent 
and Trademark Office a written statement of abandonment or withdrawal of 
the application signed by the applicant, or the attorney or other person 
representing the applicant. Except as provided in Sec. 2.135, the fact 
that an application has been expressly abandoned shall not, in any 
proceeding in the Patent and Trademark Office, affect any rights that 
the applicant may have in the mark which is the subject of the abandoned 
application.

[54 FR 34897, Aug. 22, 1989]



Sec. 2.69  Compliance with other laws.

    When the sale or transportation of any product for which 
registration of a trademark is sought is regulated under an Act of 
Congress, the Patent and Trademark Office may make appropriate inquiry 
as to compliance with such Act for the sole purpose of determining 
lawfulness of the commerce recited in the application.

[54 FR 37592, Sept. 11, 1989]

                        Amendment of Application



Sec. 2.71  Amendments to correct informalities.

    (a) The application may be amended to correct informalities, or to 
avoid objections made by the Patent and Trademark Office, or for other 
reasons arising in the course of examination.
    (b) The identification of goods or services may be amended to 
clarify or limit the identification, but additions will not be 
permitted.
    (c) If the verification or declaration filed with the application is 
defective, the defect may be corrected only by

[[Page 232]]

the submission of a substitute or supplemental verification or 
declaration in accordance with Sec. 2.20. A verification or declaration 
required under Secs. 2.21(a)(6), 2.76(e)(3) or 2.88(e)(3), to be 
properly signed, must be signed by the applicant, a member of the 
applicant firm, or an officer of the applicant corporation or 
association. A verification or declaration which is signed by a person 
having color of authority to sign, is acceptable for the purpose of 
determining the timely filing of the paper. Persons having color of 
authority to sign are those who have first-hand knowledge of the truth 
of the statements in the verification or declaration and who also have 
actual or implied authority to act on behalf of the applicant. However, 
a properly signed substitute verification or declaration must be 
submitted before the application will be approved for publication or 
registration, as the case may be.
    (d)(1) No amendment to the dates of use will be permitted unless the 
amendment is supported by applicant's affidavit or declaration in 
accordance with Sec. 2.20 and by such showing as may be required.
    (2) In an application under section 1(a) of the Act, no amendment to 
specify a date of use which is subsequent to the filing date of the 
application will be permitted.
    (3) In an application under section 1(b) of the Act, after the 
filing of a statement of use under Sec. 2.88, no amendment will be 
permitted to the statement of use to recite dates of use which are 
subsequent to the expiration of the time allowed to applicant for filing 
a statement of use.

[54 FR 37592, Sept. 11, 1989]



Sec. 2.72  Amendments to description or drawing of the mark.

    (a) Amendments may not be made to the description or drawing of the 
mark if the character of the mark is materially altered. The 
determination of whether a proposed amendment materially alters the 
character of the mark will be made by comparing the proposed amendment 
with the description or drawing of the mark as originally filed.
    (b) In applications under section 1(a) of the Act, amendments to the 
description or drawing of the mark may be permitted only if warranted by 
the specimens (or facsimiles) as originally filed, or supported by 
additional specimens (or facsimiles) and a supplemental affidavit or 
declaration in accordance with Sec. 2.20 alleging that the mark shown in 
the amended drawing was in use prior to the filing date of the 
application.
    (c) In applications under section 1(b) of the Act, amendments to the 
description or drawing of the mark, which are filed after submission of 
an amendment to allege use under Sec. 2.76 or a statement of use under 
Sec. 2.88, may be permitted only if warranted by the specimens (or 
facsimiles) filed, or supported by additional specimens (or facsimiles) 
and a supplemental affidavit or declaration in accordance with Sec. 2.20 
alleging that the mark shown in the amended drawing is in use in 
commerce. In the case of a statement of use under Sec. 2.88, applicant 
must verify that the mark shown in the amended drawing was in use in 
commerce prior to the filing of the statement of use or prior to the 
expiration of the time allowed to applicant for filing a statement of 
use.
    (d) In applications under section 44 of the Act, amendments to the 
description or drawing of the mark may be permitted only if warranted by 
the description or drawing of the mark in the foreign registration 
certificate.

[54 FR 37593, Sept. 11, 1989]



Sec. 2.73  Amendment to recite concurrent use.

    (a) An application under section 1(a) of the Act may be amended so 
as to be treated as an application for a concurrent registration, 
provided the application as amended satisfies the requirements of 
Sec. 2.42. The examiner will determine whether the application, as 
amended, is acceptable.
    (b) An application under section 1(b) of the Act may not be amended 
so as to be treated as an application for a concurrent registration 
until an acceptable amendment to allege use under Sec. 2.76 or statement 
of use under Sec. 2.88 has been filed in the application, after which 
time such an amendment may be made, provided the application as amended 
satisfies the requirements of Sec. 2.42. The examiner will determine

[[Page 233]]

whether the application, as amended, is acceptable.

[54 FR 37593, Sept. 11, 1989]



Sec. 2.74  Form of amendment.

    (a) In every amendment the exact word or words to be stricken out or 
inserted in the application must be specified and the precise point 
indicated where the deletion or insertion is to be made. Erasures, 
additions, insertions, or mutilations of the papers and records must not 
be made by the applicant or his attorney or agent.
    (b) When an amendatory clause is amended, it must be wholly 
rewritten so that no interlineation or erasure will appear in the 
clause, as finally amended, when the application is passed to 
registration. If the number or nature of the amendments shall render it 
otherwise difficult to consider the case or to arrange the papers for 
printing or copying, or when otherwise desired to clarify the record, 
the examiner may require the entire statement to be rewritten.



Sec. 2.75  Amendment to change application to different register.

    (a) An application for registration on the Principal Register under 
section 1(a) or 44 of the Act may be changed to an application for 
registration on the Supplemental Register and vice versa by amending the 
application to comply with the rules relating to the appropriate 
register, as the case may be.
    (b) An application under section 1(b) of the Act may be amended to 
change the application to a different register only after submission of 
an acceptable amendment to allege use under Sec. 2.76 or statement of 
use under Sec. 2.88. When such an application is changed from the 
Principal Register to the Supplemental Register, the effective filing 
date of the application is the date of the filing of the allegation of 
use under section 1(c) or 1(d) of the Act.

[54 FR 37593, Sept. 11, 1989]



Sec. 2.76  Amendment to allege use.

    (a) An application under section 1(b) of the Act may be amended to 
allege use of the mark in commerce under section 1(c) of the Act at any 
time between the filing of the application and the date the examiner 
approves the mark for publication. Thereafter, an allegation of use may 
be submitted only as a statement of use under Sec. 2.88 after the 
issuance of a notice of allowance under section 13(b)(2) of the Act. If 
an amendment to allege use is filed outside the time period specified in 
this paragraph, it will be returned to the applicant.
    (b) A complete amendment to allege use must include:
    (1) A verified statement that the applicant is believed to be the 
owner of the mark sought to be registered and that the mark is in use in 
commerce, specifying the date of the applicant's first use of the mark 
and first use of the mark in commerce, the type of commerce, those goods 
or services specified in the application on or in connection with which 
the mark is in use in commerce and the mode or manner in which the mark 
is used on or in connection with such goods or services;
    (2) Three specimens or facsimiles, conforming to the requirements of 
Secs. 2.56, 2.57 and 2.58, of the mark as used in commerce; and
    (3) The fee prescribed in Sec. 2.6.
    (c) An amendment to allege use may be filed only when the applicant 
has made use of the mark in commerce on or in connection with all of the 
goods or services, as specified in the application, for which applicant 
will seek registration in that application unless the amendment to 
allege use is accompanied by a request in accordance with Sec. 2.87 to 
divide out from the application the goods or services to which the 
amendment pertains. If more than one item of goods or services is 
specified in the amendment to allege use, the dates of use required in 
paragraph (b)(1) of this section need be for only one of the items 
specified in each class, provided the particular item to which the dates 
apply is designated.
    (d) The title ``Amendment to allege use under Sec. 2.76'' should 
appear at the top of the first page of the paper.
    (e) The Office will review a timely filed amendment to allege use to 
determine whether it meets the following minimum requirements:
    (1) The fee prescribed in Sec. 2.6;
    (2) At least one specimen or facsimile of the mark as used in 
commerce; and

[[Page 234]]

    (3) A verification or declaration signed by the applicant stating 
that the mark is in use in commerce.
    (f) A timely filed amendment to allege use which meets the minimum 
requirements specified in paragraph (e) of this section will be examined 
in accordance with Secs. 2.61 through 2.69. If, as a result of the 
examination of the amendment to allege use, applicant is found not 
entitled to registration for any reason not previously stated, applicant 
will be so notified and advised of the reasons and of any formal 
requirements or refusals. The notification shall restate or incorporate 
by reference all unresolved refusals or requirements previously stated. 
The amendment to allege use may be amended in accordance with Secs. 2.59 
and 2.71 through 2.75. If the amendment to allege use is acceptable in 
all respects, the applicant will be notified of its acceptance. The 
filing of such an amendment shall not constitute a response to any 
outstanding action by the Trademark Examining Attorney.
    (g) If the amendment to allege use is filed within the permitted 
time period but does not meet the minimum requirements specified in 
paragraph (e) of this section, applicant will be notified of the 
deficiency. The deficiency may be corrected provided the mark has not 
been approved for publication. If an acceptable amendment to correct the 
deficiency is not filed prior to approval of the mark for publication, 
the amendment will not be examined.
    (h) An amendment to allege use may be withdrawn for any reason prior 
to approval of a mark for publication.

[54 FR 37593, Sept. 11, 1989, as amended at 63 FR 48097, Sept. 9, 1998]



Sec. 2.77  Amendments between notice of allowance and statement of use.

    An application under section 1(b) of the Act may not be amended 
during the period between the issuance of the notice of allowance under 
section 13(b)(2) of the Act and the filing of a statement of use under 
Sec. 2.88, except to delete specified goods or services. Other 
amendments filed during this period will be placed in the application 
file and considered when the statement of use is examined.

[54 FR 37594, Sept. 11, 1989]

                    Publication and Post Publication



Sec. 2.80  Publication for opposition.

    If, on examination or reexamination of an application for 
registration on the Principal Register, it appears that the applicant is 
entitled to have his mark registered, the mark will be published in the 
Official Gazette for opposition. The mark will also be published in the 
case of an application to be placed in interference or concurrent use 
proceedings, if otherwise registrable.

[41 FR 758, Jan. 5, 1976]



Sec. 2.81  Post publication.

    (a) Except in an application under section 1(b) of the Act for which 
no amendment to allege use under Sec. 2.76 has been submitted and 
accepted, if no opposition is filed within the time permitted or all 
oppositions filed are dismissed, and if no interference is declared and 
no concurrent use proceeding is instituted, the application will be 
prepared for issuance of the certificate of registration as provided in 
Sec. 2.151.
    (b) In an application under section 1(b) of the Act for which no 
amendment to allege use under Sec. 2.76 has been submitted and accepted, 
if no opposition is filed within the time permitted or all oppositions 
filed are dismissed, and if no interference is declared, a notice of 
allowance will issue. The notice of allowance will state the serial 
number of the application, the name of the applicant, the correspondence 
address, the mark, the identification of goods or services, and the 
issue date of the notice of allowance. The mailing date that appears on 
the notice of allowance will be the issue date of the notice of 
allowance. Thereafter, the applicant shall submit a statement of use as 
provided in Sec. 2.88.

[54 FR 37594, Sept. 11, 1989]



Sec. 2.82  Marks on Supplemental Register published only upon registration.

    In the case of an application for registration on the Supplemental 
Register

[[Page 235]]

the mark will not be published for opposition but if it appears, after 
examination or reexamination, that the applicant is entitled to have the 
mark registered, a certificate of registration will issue as provided in 
Sec. 2.151. The mark will be published in the ``Official Gazette'' when 
registered.

[54 FR 37594, Sept. 11, 1989]



Sec. 2.83  Conflicting marks.

    (a) Whenever an application is made for registration of a mark which 
so resembles another mark or marks pending registration as to be likely 
to cause confusion or mistake or to deceive, the mark with the earliest 
effective filing date will be published in the ``Official Gazette'' for 
opposition if eligible for the Principal Register, or issued a 
certificate of registration if eligible for the Supplemental Register.
    (b) In situations in which conflicting applications have the same 
effective filing date, the application with the earliest date of 
execution will be published in the ``Official Gazette'' for opposition 
or issued on the Supplemental Register.
    (c) Action on the conflicting application which is not published in 
the Official Gazette for opposition or not issued on the Supplemental 
Register will be suspended by the Examiner of Trademarks until the 
published or issued application is registered or abandoned.

[37 FR 2880, Feb. 9, 1972, as amended at 54 FR 37594, Sept. 11, 1989]



Sec. 2.84  Jurisdiction over published applications.

    (a) The examiner may exercise jurisdiction over an application up to 
the date the mark is published in the ``Official Gazette.'' After 
publication of an application under section 1(a) or 44 of the Act the 
examiner may, with the permission of the Commissioner, exercise 
jurisdiction over the application. After publication of an application 
under section 1(b) of the Act, the examiner may exercise jurisdiction 
over the application after the issuance of the notice of allowance under 
section 13(b)(2) of the Act. After publication, and prior to issuance of 
a notice of allowance in an application under section 1(b), the examiner 
may, with the permission of the Commissioner, exercise jurisdiction over 
the application.
    (b) After publication, but before the printing of the certificate of 
registration in an application under section 1(a) or 44 of the Act, or 
before the printing of the notice of allowance in an application under 
section 1(b) of the Act, an application which is not the subject of an 
inter partes proceeding before the Trademark Trial and Appeal Board may 
be amended if the amendment does not necessitate republication of the 
mark or issuance of an Office action. Otherwise, an amendment to such an 
application may be submitted only upon petition to the Commissioner to 
restore jurisdiction of the application to the examiner for 
consideration of the amendment and further examination. The amendment of 
an application which is the subject of an inter partes proceeding before 
the Trademark Trial and Appeal Board is governed by Sec. 2.133.

[54 FR 37594, Sept. 11, 1989]

                             Classification



Sec. 2.85  Classification schedules.

    (a) Section 6.1 of part 6 of this chapter specifies the system of 
classification for goods and services which applies for all statutory 
purposes to trademark applications filed in the Patent and Trademark 
Office on or after September 1, 1973, and to registrations issued on the 
basis of such applications. It shall not apply to applications filed on 
or before August 31, 1973, nor to registrations issued on the basis of 
such applications.
    (b) With respect to applications filed on or before August 31, 1973, 
and registrations issued thereon, including older registrations issued 
prior to that date, the classification system under which the 
application was filed will govern for all statutory purposes, including, 
inter alia, the filing of petitions to revive, appeals, oppositions, 
petitions for cancellation, affidavits under section 8 and renewals, 
even though such petitions to revive, appeals, etc., are filed on or 
after September 1, 1973.

[[Page 236]]

    (c) Section 6.2 of part 6 of this chapter specifies the system of 
classification for goods and services which applies for all statutory 
purposes to all trademark applications filed in the Patent and Trademark 
Office on or before August 31, 1973, and to registrations issued on the 
basis of such applications, except when the registration may have been 
issued under a classification system prior to that set forth in 
Sec. 6.2. Moreover, this classification will also be utilized for 
facilitating trademark searches until all pending and registered marks 
in the search file are organized on the basis of the international 
system of classification.
    (d) Renewals filed on registrations issued under a prior 
classification system will be processed on the basis of that system.
    (e) Where the amount of the fee received on filing an appeal in 
connection with an application or on an application for renewal is 
sufficient for at least one class of goods or services but is less than 
the required amount because multiple classes in an application or 
registration are involved, the appeal or renewal application will not be 
refused on the ground that the amount of the fee was insufficient if the 
required additional amount of the fee is received in the Patent and 
Trademark Office within the time limit set forth in the notification of 
this defect by the Office, or if action is sought only for the number of 
classes equal to the number of fees submitted.
    (f) Sections 6.3 and 6.4 specify the system of classification which 
applies to certification marks and collective membership marks.
    (g) Classification schedules shall not limit or extend the 
applicant's rights.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[38 FR 14681, June 4, 1973, as amended at 39 FR 16885, May 10, 1974; 47 
FR 41282, Sept. 17, 1982; 63 FR 48097, Sept. 9, 1998]



Sec. 2.86  Application may include multiple goods or services comprised in single class or multiple classes.

    (a) An application may recite more than one item of goods, or more 
than one service, comprised in a single class, provided the goods or 
services are specifically identified and the applicant either has used 
the mark on or in connection with all of the specified goods or 
services, or has a bona fide intention to use the mark on or in 
connection with all of the specified goods or services.
    (b) An application also may be filed to register the same mark for 
goods and/or services comprised in multiple classes, provided the goods 
or services are specifically identified; a fee equaling the sum of the 
fees for filing an application in each class is submitted; and the 
application includes either dates of use and three specimens for each 
class, or a statement of a bona fide intention to use the mark on or in 
connection with all of the goods or services specified in each class. An 
amendment to allege use under Sec. 2.76 or a statement of use under 
Sec. 2.88, filed in a multiple class application under section 1(b) of 
the Act, must include, for each class, the required fee, dates of use 
and three specimens. A single certificate of registration for the mark 
shall be issued, unless the application is divided pursuant to 
Sec. 2.87.
    (c) The applicant may not allege use as to certain goods or services 
and a bona fide intention to use as to other goods or services in the 
same application, regardless of the number of classes contained therein.

[54 FR 37594, Sept. 11, 1989]



Sec. 2.87  Dividing an application.

    (a) An application may be physically divided into two or more 
separate applications upon the payment of a fee for each new application 
created and submission by the applicant of a request in accordance with 
paragraph (d) of this section.
    (b) In the case of a request to divide out one or more entire 
classes from an application, only the fee under paragraph (a) of this 
section will be required. However, in the case of a request to divide 
out some, but not all, of the goods or services in a class, an 
application filing fee for each new separate application to be created 
by the division must be submitted, together with the fee under paragraph 
(a) of this section. Any outstanding time period

[[Page 237]]

for action by the applicant in the original application at the time of 
the division will be applicable to each new separate application created 
by the division.
    (c) A request to divide an application may be filed at any time 
between the filing of the application and the date the Trademark 
Examining Attorney approves the mark for publication; or during an 
opposition, concurrent use, or interference proceeding, upon motion 
granted by the Trademark Trial and Appeal Board. Additionally, a request 
to divide an application under section 1(b) of the Act may be filed with 
a statement of use under Sec. 2.88 or at any time between the filing of 
a statement of use and the date the Trademark Examining Attorney 
approves the mark for registration.
    (d) A request to divide an application should be made in a separate 
paper from any other amendment or response in the application. The title 
``Request to divide application.'' should appear at the top of the first 
page of the paper.

[57 FR 38196, Aug. 21, 1992; 57 FR 40493, Sept. 3, 1992, as amended at 
63 FR 48097, Sept. 9, 1998]

                        Post Notice of Allowance



Sec. 2.88  Filing statement of use after notice of allowance.

    (a) In an application under section 1(b) of the Act, a statement of 
use, required under section 1(d) of the Act, must be filed within six 
months after issuance of a notice of allowance under section 13(b)(2) of 
the Act, or within an extension of time granted under Sec. 2.89. A 
statement of use that is filed prior to issuance of a notice of 
allowance is premature, will not be considered, and will be returned to 
the applicant.
    (b) A complete statement of use must include:
    (1) A verified statement that the applicant is believed to be the 
owner of the mark sought to be registered and that the mark is in use in 
commerce, specifying the date of the applicant's first use of the mark 
and first use of the mark in commerce, the type of commerce, those goods 
or services specified in the notice of allowance on or in connection 
with which the mark is in use in commerce and the mode or manner in 
which the mark is used on or in connection with such goods or services;
    (2) Three specimens or facsimiles, conforming to the requirements of 
Secs. 2.56, 2.57 and 2.58, of the mark as used in commerce; and
    (3) The fee prescribed in Sec. 2.6.
    (c) The statement of use may be filed only when the applicant has 
made use of the mark in commerce on or in connection with all of the 
goods or services, as specified in the notice of allowance, for which 
applicant will seek registration in that application, unless the 
statement of use is accompanied by a request in accordance with 
Sec. 2.87 to divide out from the application the goods or services to 
which the statement of use pertains. If more than one item of goods or 
services is specified in the statement of use, the dates of use required 
in paragraph (b)(1) of this section need be for only one of the items 
specified in each class, provided the particular item to which the dates 
apply is designated.
    (d) The title ``Statement of use under Sec. 2.88.'' should appear at 
the top of the first page of the paper.
    (e) The Office will review a timely filed statement of use to 
determine whether it meets the following minimum requirements:
    (1) The fee prescribed in Sec. 2.6;
    (2) At least one specimen or facsimile of the mark as used in 
commerce;
    (3) A verification or declaration signed by the applicant stating 
that the mark is in use in commerce.
    (f) A timely filed statement of use which meets the minimum 
requirements specified in paragraph (e) of this section will be examined 
in accordance with Secs. 2.61 through 2.69. If, as a result of the 
examination of the statement of use, applicant is found not entitled to 
registration, applicant will be notified and advised of the reasons and 
of any formal requirements or refusals. The statement of use may be 
amended in accordance with Secs. 2.59 and 2.71 through 2.75. If the 
statement of use is acceptable in all respects, the applicant will be 
notified of its acceptance.

[[Page 238]]

    (g) If the statement of use does not meet the minimum requirements 
specified in paragraph (e) of this section, applicant will be notified 
of the deficiency. If the time permitted for applicant to file a 
statement of use has not expired, applicant may correct the deficiency. 
After the filing of a statement of use during a permitted time period 
for such filing, the applicant may not withdraw the statement to return 
to the previous status of awaiting submission of a statement of use, 
regardless of whether it is in compliance with paragraph (e) of this 
section.
    (h) The failure to timely file a statement of use which meets the 
minimum requirements specified in paragraph (e) of this section shall 
result in the abandonment of the application.
    (i)(1) The goods or services specified in a statement of use must 
conform to those goods or services identified in the notice of 
allowance. An applicant may specify the goods or services by stating 
``those goods or services identified in the notice of allowance'' or, if 
appropriate, ``those goods or services identified in the notice of 
allowance except * * *'' followed by an identification of the goods or 
services to be deleted.
    (2) If any goods or services specified in the notice of allowance 
are omitted from the identification of goods or services in the 
statement of use, the Trademark Examining Attorney shall inquire about 
the discrepancy and permit the applicant to amend the statement of use 
to include any omitted goods or services, provided that the amendment is 
supported by a verification that the mark was in use in commerce, on or 
in connection with each of the goods or services sought to be included, 
prior to the expiration of the time allowed to applicant for filing a 
statement of use.
    (3) The statement of use may be accompanied by a separate request to 
amend the identification of goods or services in the application, as 
stated in the notice of allowance, in accordance with Sec. 2.71(b).
    (j) The statement of use may be accompanied by a separate request to 
amend the drawing in the application, in accordance with Secs. 2.51 and 
2.72.

[54 FR 37595, Sept. 11, 1989]



Sec. 2.89  Extensions of time for filing a statement of use.

    (a) The applicant may request a six-month extension of time to file 
the statement of use required under Sec. 2.88 by submitting:
    (1) A written request, before the expiration of the six-month period 
following the issuance of a notice of allowance under section 13(b)(2) 
of the Act;
    (2) The fee prescribed in Sec. 2.6; and
    (3) A verified statement by the applicant that the applicant has a 
continued bona fide intention to use the mark in commerce, specifying 
those goods or services identified in the notice of allowance on or in 
connection with which the applicant has a continued bona fide intention 
to use the mark in commerce.
    (b) The applicant may request further six-month extensions of time 
for filing the statement of use by submitting:
    (1) A written request, prior to the expiration of a previously 
granted extension of time;
    (2) The fee prescribed in Sec. 2.6;
    (3) A verified statement by the applicant that the applicant has a 
continued bona fide intention to use the mark in commerce, specifying 
those goods or services identified in the notice of allowance on or in 
connection with which the applicant has a continued bona fide intention 
to use the mark in commerce; and
    (4) A showing of good cause, as specified in paragraph (d) of this 
section.
    (c) Extensions of time under paragraph (b) of this section will be 
granted only in six-month increments and may not aggregate more than 24 
months.
    (d) The showing required by paragraph (b)(4) of this section must 
include:
    (1) An allegation that the applicant has not yet made use of the 
mark in commerce on all the goods or services specified in the notice of 
allowance on or in connection with which the applicant has a continued 
bona fide intention to use the mark in commerce, and
    (2) A statement of applicant's ongoing efforts to make use of the 
mark in commerce on or in connection with each of the goods or services 
specified in the verified statement of continued

[[Page 239]]

bona fide intention to use required under paragraph (b) of this section. 
Those efforts may include, without limitation, product or service 
research or development, market research, manufacturing activities, 
promotional activities, steps to acquire distributors, steps to obtain 
required governmental approval, or other similar activities. In the 
alternative, a satisfactory explanation for the failure to make such 
efforts must be submitted.
    (e)(1) At the time of the filing of a statement of use, or during 
any time remaining in the existing six-month period in which a statement 
of use is filed, applicant may file one request, in accordance with 
paragraph (a) or (b) of this section, for a six-month extension of time 
for filing a statement of use, provided that the time requested would 
not extend beyond 36 months from the issuance of the notice of 
allowance. Thereafter, applicant may not request any further extensions 
of time.
    (2) A request for an extension of time that is filed at the time of 
the filing of a statement of use, or during any time remaining in the 
existing six-month period in which a statement of use is filed, must 
comply with all the requirements of paragraph (a) of this section, if it 
is applicant's first extension request, or paragraph (b) of this 
section, if it is a second or subsequent extension request. However, in 
a request under paragraph (b) of this section, applicant may satisfy the 
requirement for a showing of good cause by asserting that applicant 
believes that it has made valid use of the mark in commerce, as 
evidenced by the submitted statement of use, but that if the statement 
of use is found by the Patent and Trademark Office to be fatally 
defective, applicant will need additional time in which to file a new 
statement of use.
    (f) The goods or services specified in a request for an extension of 
time for filing a statement of use must conform to those goods or 
services identified in the notice of allowance. Any goods or services 
specified in the notice of allowance which are omitted from the 
identification of goods or services in the request for extension of time 
will be presumed to be deleted and the applicant may not thereafter 
request that the deleted goods or services be reinserted in the 
application. If appropriate, an applicant may specify the goods or 
services by stating ``those goods or services identified in the notice 
of allowance'' or ``those goods or services identified in the notice of 
allowance except * * *'' followed by an identification of the goods or 
services to be deleted.
    (g) The applicant will be notified of the grant or denial of a 
request for an extension of time, and of the reasons for a denial. 
Failure to notify the applicant of the grant or denial of the request 
prior to the expiration of the existing period or requested extension 
does not relieve the applicant of the responsibility of timely filing a 
statement of use under Sec. 2.88. If, after denial of an extension 
request, there is time remaining in the existing six-month period for 
filing a statement of use, applicant may submit a substitute request for 
extension of time. Otherwise, the only recourse available after denial 
of a request for an extension of time is a petition to the Commissioner 
in accordance with Secs. 2.66 or 2.146. A petition from the denial of a 
request for an extension of time to file a statement of use shall be 
filed within one month from the date of mailing of the denial of the 
request. If the petition is granted, the term of the requested six-month 
extension which was the subject of the petition will run from the date 
of the expiration of the previously existing six-month period for filing 
a statement of use.

[54 FR 37595, Sept. 11, 1989]

              Interferences and Concurrent Use Proceedings

    Authority: Secs. 2.91 to 2.99 also issued under secs. 16, 17, 60 
Stat. 434; 15 U.S.C. 1066, 1067.



Sec. 2.91  Declaration of interference.

    (a) An interference will not be declared between two applications or 
between an application and a registration except upon petition to the 
Commissioner. Interferences will be declared by the Commissioner only 
upon a showing of extraordinary circumstances which would result in a 
party being unduly prejudiced without

[[Page 240]]

an interference. In ordinary circumstances, the availability of an 
opposition or cancellation proceeding to the party will be deemed to 
remove any undue prejudice.
    (b) Registrations and applications to register on the Supplemental 
Register, registrations under the Act of 1920, and registrations of 
marks the right to use of which has become incontestable are not subject 
to interference.

[37 FR 2881, Feb. 9, 1972, as amended at 54 FR 34897, Aug. 22, 1989]



Sec. 2.92  Preliminary to interference.

    An interference which has been declared by the Commissioner will not 
be instituted by the Trademark Trial and Appeal Board until the Examiner 
of Trademarks has determined that the marks which are to form the 
subject matter of the controversy are registrable, and all of the marks 
have been published in the Official Gazette for opposition.

[54 FR 34897, Aug. 22, 1989]



Sec. 2.93  Institution of interference.

    An interference is instituted by the mailing of a notice of 
interference to the parties. The notice shall be sent to each applicant, 
in care of the applicant's attorney or other representative of record, 
if any, and if one of the parties is a registrant, the notice shall be 
sent to the registrant or the registrant's assignee of record. The 
notice shall give the name and address of every adverse party and of the 
adverse party's attorney or other authorized representative, if any, 
together with the serial number and date of filing and publication of 
each of the applications, or the registration number and date of 
issuance of each of the registrations, involved.

[54 FR 34897, Aug. 22, 1989]



Secs. 2.94--2.95  [Reserved]



Sec. 2.96  Issue; burden of proof.

    The issue in an interference between applications is normally 
priority of use, but the rights of the parties to registration may also 
be determined. The party whose application involved in the interference 
has the latest filing date is the junior party and has the burden of 
proof. When there are more than two parties to an interference, a party 
shall be a junior party to and shall have the burden of proof as against 
every other party whose application involved in the interference has an 
earlier filing date. If the involved applications of any parties have 
the same filing date, the application with the latest date of execution 
will be deemed to have the latest filing date and that applicant will be 
the junior party. The issue in an interference between an application 
and a registration shall be the same, but in the event the final 
decision is adverse to the registrant, a registration to the applicant 
will not be authorized so long as the interfering registration remains 
on the register.

[48 FR 23135, May 23, 1983; 48 FR 27225, June 14, 1983]



Sec. 2.97  [Reserved]



Sec. 2.98  Adding party to interference.

    A party may be added to an interference only upon petition to the 
Commissioner by that party. If an application which is or might be the 
subject of a petition for addition to an interference is not added, the 
examiner may suspend action on the application pending termination of 
the interference proceeding.

[48 FR 23135, May 23, 1983]



Sec. 2.99  Application to register as concurrent user.

    (a) An application for registration as a lawful concurrent user will 
be examined in the same manner as other applications for registration.
    (b) When it is determined that the mark is ready for publication, 
the applicant may be required to furnish as many copies of his 
application, specimens and drawing as may be necessary for the 
preparation of notices for each applicant, registrant or user specified 
as a concurrent user in the application for registration.
    (c) Upon receipt of the copies required by paragraph (b) of this 
section, the examiner shall forward the application for concurrent use 
registration for publication in the Official Gazette as provided by 
Sec. 2.80. If no opposition is filed, or if all oppositions that are 
filed

[[Page 241]]

are dismissed or withdrawn, the Trademark Trial and Appeal Board shall 
prepare a notice for the applicant for concurrent use registration and 
for each applicant, registrant or user specified as a concurrent user in 
the application. The notices for the specified parties shall state the 
name and address of the applicant and of the applicant's attorney or 
other authorized representative, if any, together with the serial number 
and filing date of the application.
    (d)(1) The notices shall be sent to each applicant, in care of his 
attorney or other authorized representative, if any, to each user, and 
to each registrant. A copy of the application shall be forwarded with 
the notice to each party specified in the application.
    (2) An answer to the notice is not required in the case of an 
applicant or registrant whose application or registration is specified 
as a concurrent user in the application, but a statement, if desired, 
may be filed within forty days after the mailing of the notice; in the 
case of any other party specified as a concurrent user in the 
application, an answer must be filed within forty days after the mailing 
of the notice.
    (3) If an answer, when required, is not filed, judgment will be 
entered precluding the specified user from claiming any right more 
extensive than that acknowledged in the application(s) for concurrent 
use registration, but the applicant(s) will remain with the burden of 
proving entitlement to registration(s).
    (e) The applicant for a concurrent use registration has the burden 
of proving entitlement thereto. If there are two or more applications 
for concurrent use registration involved in a proceeding, the party 
whose application has the latest filing date is the junior party. A 
party whose application has a filing date between the filing dates of 
the earliest involved application and the latest involved application is 
a junior party to every party whose involved application has an earlier 
filing date. If any applications have the same filing date, the 
application with the latest date of execution will be deemed to have the 
latest filing date and that applicant will be the junior party. A person 
specified as an excepted user in a concurrent use application but who 
has not filed an application shall be considered a party senior to every 
party that has an application involved in the proceeding.
    (f) When a concurrent use registration is sought on the basis that a 
court of competent jurisdiction has finally determined that the parties 
are entitled to use the same or similar marks in commerce, a concurrent 
use registration proceeding will not be instituted if all of the 
following conditions are fulfilled:
    (1) The applicant is entitled to registration subject only to the 
concurrent lawful use of a party to the court proceeding; and
    (2) The court decree specifies the rights of the parties; and
    (3) A true copy of the court decree is submitted to the examiner; 
and
    (4) The concurrent use application complies fully and exactly with 
the court decree; and
    (5) The excepted use specified in the concurrent use application 
does not involve a registration, or any involved registration has been 
restricted by the Commissioner in accordance with the court decree.

If any of the conditions specified in this paragraph is not satisfied, a 
concurrent use registration proceeding shall be prepared and instituted 
as provided in paragraphs (a) through (e) of this section.
    (g) Registrations and applications to register on the Supplemental 
Register and registrations under the Act of 1920 are not subject to 
concurrent use registration proceedings. Applications to register under 
section 1(b) of the Act of 1946 are subject to concurrent use 
registration proceedings only after an acceptable amendment to allege 
use under Sec. 2.76 or statement of use under Sec. 2.88 has been filed.
    (h) The Trademark Trial and Appeal Board will consider and determine 
concurrent use rights only in the context of a concurrent use 
registration proceeding.

[48 FR 23135, May 23, 1983; 48 FR 27225, 27226, June 14, 1983, as 
amended at 54 FR 37596, Sept. 11, 1989]

[[Page 242]]

                               Opposition

    Authority: Secs. 2.101 to 2.106 also issued under secs. 13, 17, 60 
Stat. 433, 434; 15 U.S.C. 1063, 1067.



Sec. 2.101  Filing an opposition.

    (a) An opposition proceeding is commenced by the filing of an 
opposition in the Patent and Trademark Office.
    (b) Any entity which believes that it would be damaged by the 
registration of a mark on the Principal Register may oppose the same by 
filing an opposition, which should be addressed to the Trademark Trial 
and Appeal Board. The opposition need not be verified, and may be signed 
by the opposer or the opposer's attorney or other authorized 
representative.
    (c) The opposition must be filed within thirty days after 
publication (Sec. 2.80) of the application being opposed or within an 
extension of time (Sec. 2.102) for filing an opposition.
    (d)(1) The opposition must be accompanied by the required fee for 
each party joined as opposer for each class in the application for which 
registration is opposed (see Sec. 2.6(a)(17). If no fee, or a fee 
insufficient to pay for one person to oppose the registration of a mark 
in at least one class, is submitted within thirty days after publication 
of the mark to be opposed or within an extension of time for filing an 
opposition, the opposition will not be refused if the required fee(s) is 
submitted to the Patent and Trademark Office within the time limit set 
in the notification of this defect by the Office.
    (2) If the fees submitted are sufficient to pay for one person to 
oppose registration in at least one class but are insufficient for an 
opposition against all of the classes in the application, and the 
particular class or classes against which the opposition is filed are 
not specified, the Office will issue a written notice allowing opposer 
until a set time in which to submit the required fee(s) or to specify 
the class or classes opposed. If the required fee(s) is not submitted, 
or the specification made, within the time set in the notice, the 
opposition will be presumed to be against the class or classes in 
ascending order, beginning with the lowest numbered class and including 
the number of classes in the application for which the fees submitted 
are sufficient to pay the fee due for each class.
    (3) If persons are joined as party opposers, and the fees submitted 
are sufficient to pay for one person to oppose registration in at least 
one class but are insufficient for each named party opposer, the Office 
will issue a written notice allowing the named party opposers until a 
set time in which to submit the required fee(s) or to specify the 
opposer(s) to which the submitted fees apply. If the required fee(s) is 
not submitted, or the specification made, within the time set in the 
notice, the first named party will be presumed to be the party opposer 
and additional parties will be deemed to be party opposers to the extent 
that the fees submitted are sufficient to pay the fee due for each party 
opposer. If persons are joined as party opposers against the 
registration of a mark in more than one class, the fees submitted are 
insufficient, and no specification of opposers and classes is made 
within the time set in the written notice issued by the Office, the fees 
submitted will be applied first on behalf of the first-named opposer 
against as many of the classes in the application as the submitted fees 
are sufficient to pay, and any excess will be applied on behalf of the 
second-named party to the opposition against the classes in the 
application in ascending order.

[48 FR 3976, Jan. 28, 1983, as amended at 51 FR 28709, Aug. 11, 1986; 54 
FR 37596, Sept. 11, 1989; 63 FR 48097, Sept. 9, 1998]



Sec. 2.102  Extension of time for filing an opposition.

    (a) Any person who believes that he would be damaged by the 
registration of a mark on the Principal Register may file a written 
request to extend the time for filing an opposition. The written request 
may be signed by the potential opposer or by an attorney at law or other 
person authorized, in accordance with Sec. 2.12 (b) and (c) and 
Sec. 2.17(b), to represent the potential opposer.
    (b) The written request to extend the time for filing an opposition 
must identify the potential opposer with reasonable certainty. Any 
opposition filed during an extension of time should be

[[Page 243]]

in the name of the person to whom the extension was granted, but an 
opposition may be accepted if the person in whose name the extension was 
requested was misidentified through mistake or if the opposition is 
filed in the name of a person in privity with the person who requested 
and was granted the extension of time.
    (c) The written request to extend the time for filing an opposition 
must be filed in the Patent and Trademark Office before the expiration 
of thirty days from the date of publication or within any extension of 
time previously granted, should specify the period of extension desired, 
and should be addressed to the Trademark Trial and Appeal Board. A first 
extension of time for not more than thirty days will be granted upon 
request. Further extensions of time may be granted by the Board for good 
cause. In addition, extensions of time to file an opposition aggregating 
more than 120 days from the date of publication of the application will 
not be granted except upon (1) a written consent or stipulation signed 
by the applicant or its authorized representative, or (2) a written 
request by the potential opposer or its authorized representative 
stating that the applicant or its authorized representative has 
consented to the request, or (3) a showing of extraordinary 
circumstances, it being considered that a potential opposer has an 
adequate alternative remedy by a petition for cancellation.
    (d) Every request to extend the time for filing a notice of 
opposition should be submitted in triplicate.

[48 FR 3976 Jan. 28, 1983, as amended at 61 FR 36825, July 15, 1996; 63 
FR 48097, Sept. 9, 1998]



Sec. 2.104  Contents of opposition.

    (a) The opposition must set forth a short and plain statement 
showing why the opposer believes it would be damaged by the registration 
of the opposed mark and state the grounds for opposition. A duplicate 
copy of the opposition, including exhibits, shall be filed with the 
opposition.
    (b) Oppositions to different applications owned by the same party 
may be joined in a consolidated opposition when appropriate, but the 
required fee must be included for each party joined as opposer for each 
class in which registration is opposed in each application against which 
the opposition is filed.

[54 FR 34897, Aug. 22, 1989]



Sec. 2.105  Notification of opposition proceeding(s).

    When an opposition in proper form has been filed and the correct 
fee(s) have been submitted, a notification shall be prepared by the 
Trademark Trial and Appeal Board, which shall identify the title and 
number of the proceeding and the application involved and shall 
designate a time, not less than thirty days from the mailing date of the 
notification, within which an answer must be filed. A copy of the 
notification shall be forwarded to the attorney or other authorized 
representative of the opposer, if any, or to the opposer. The duplicate 
copy of the opposition and exhibits shall be forwarded with a copy of 
the notification to the attorney or other authorized representative of 
the applicant, if any, or to the applicant.

[48 FR 23136, May 23, 1983]



Sec. 2.106  Answer.

    (a) If no answer is filed within the time set, the opposition may be 
decided as in case of default.
    (b)(1) An answer shall state in short and plain terms the 
applicant's defenses to each claim asserted and shall admit or deny the 
averments upon which the opposer relies. If the applicant is without 
knowledge or information sufficient to form a belief as to the truth of 
an averment, applicant shall so state and this will have the effect of a 
denial. Denials may take any of the forms specified in Rule 8(b) of the 
Federal Rules of Civil Procedure. An answer may contain any defense, 
including the affirmative defenses of unclean hands, laches, estoppel, 
acquiescence, fraud, mistake, prior judgment, or any other matter 
constituting an avoidance or affirmative defense. When pleading special 
matters, the Federal Rules of Civil Procedure shall be followed. A reply 
to an affirmative defense need not be filed. When a defense attacks the 
validity of a registration pleaded in the opposition, paragraph (b)(2) 
of this section shall govern. A pleaded registration is a registration 
identified by

[[Page 244]]

number and date of issuance in an original notice of opposition or in 
any amendment thereto made under Rule 15, Federal Rules of Civil 
Procedure.
    (2)(i) A defense attacking the validity of any one or more of the 
registrations pleaded in the opposition shall be a compulsory 
counterclaim if grounds for such counterclaim exist at the time when the 
answer is filed. If grounds for a counterclaim are known to the 
applicant when the answer to the opposition is filed, the counterclaim 
shall be pleaded with or as part of the answer. If grounds for a 
counterclaim are learned during the course of the opposition proceeding, 
the counterclaim shall be pleaded promptly after the grounds therefor 
are learned. A counterclaim need not be filed if it is the subject of 
another proceeding between the same parties or anyone in privity 
therewith.
    (ii) An attack on the validity of a registration pleaded by an 
opposer will not be heard unless a counterclaim or separate petition is 
filed to seek the cancellation of such registration.
    (iii) The provisions of Secs. 2.111 through 2.115, inclusive, shall 
be applicable to counterclaims. A time, not less than thirty days, will 
be designated within which an answer to the counterclaim must be filed.
    (iv) The times for pleading, discovery, testimony, briefs or oral 
argument will be reset or extended when necessary, upon motion by a 
party, to enable a party fully to present or meet a counterclaim or 
separate petition for cancellation of a registration.
    (c) The opposition may be withdrawn without prejudice before the 
answer is filed. After the answer is filed, the opposition may not be 
withdrawn without prejudice except with the written consent of the 
applicant or the applicant's attorney or other authorized 
representative.

[30 FR 13193, Oct. 16, 1965, as amended at 46 FR 6940, Jan. 22, 1981; 48 
FR 23136, May 23, 1983; 54 FR 34897, Aug. 22, 1989]



Sec. 2.107  Amendment of pleadings in an opposition proceeding.

    Pleadings in an opposition proceeding may be amended in the same 
manner and to the same extent as in a civil action in a United States 
district court.

[48 FR 23136, May 23, 1983]

                              Cancellation

    Authority: Secs. 2.111 to 2.114 also issued under secs. 14, 17, 24, 
60 Stat. 433, 434, 436; 15 U.S.C. 1064, 1067, 1092.



Sec. 2.111  Filing petition for cancellation.

    (a) A cancellation proceeding is commenced by the timely filing of a 
petition for cancellation, together with the required fee, in the Patent 
and Trademark Office.
    (b) Any entity which believes that it is or will be damaged by a 
registration may file a petition, which should be addressed to the 
Trademark Trial and Appeal Board, to cancel the registration in whole or 
in part. The petition need not be verified, and may be signed by the 
petitioner or the petitioner's attorney or other authorized 
representative. The petition may be filed at any time in the case of 
registrations on the Supplemental Register or under the Act of 1920, or 
registrations under the Act of 1881 or the Act of 1905 which have not 
been published under section 12(c) of the Act, or on any ground 
specified in section 14(3) or (5) of the Act. In all other cases the 
petition and the required fee must be filed within five years from the 
date of registration of the mark under the Act or from the date of 
publication under section 12(c) of the Act.
    (c)(1) The petition must be accompanied by the required fee for each 
class in the registration for which cancellation is sought (see 
2.6(a)(16)). If the fees submitted are insufficient for a cancellation 
against all of the classes in the registration, and the particular class 
or classes against which the cancellation is filed are not specified, 
the Office will issue a written notice allowing petitioner until a set 
time in which to submit the required fees(s) (provided that the five-
year period, if applicable, has not expired) or to specify the class or 
classes sought to be cancelled. If the required fee(s) is not submitted, 
or the specification made, within the time set in the notice, the 
cancellation will be presumed to be against the class or classes in 
ascending order, beginning

[[Page 245]]

with the lowest numbered class, and including the number of classes in 
the registration for which the fees submitted are sufficient to pay the 
fee due for each class.
    (2) If persons are joined as party petitioners, each must submit a 
fee for each class for which cancellation is sought. If the fees 
submitted are insufficient for each named party petitioner, the Office 
will issue a written notice allowing the named party petitioners until a 
set time in which to submit the required fee(s) (provided that the five-
year period, if applicable, has not expired) or to specify the 
petitioner(s) to which the submitted fees apply. If the required fee(s) 
is not submitted, or the specification made, within the time set in the 
notice, the first named party will be presumed to be the party 
petitioner and additional parties will be deemed to be party petitioners 
to the extent that the fees submitted are sufficient to pay the fee due 
for each party petitioner. If persons are joined as party petitioners 
against a registration sought to be cancelled in more than one class, 
the fees submitted are insufficient, and no specification of parties and 
classes is made within the time set in the written notice issued by the 
Office, the fees submitted will be applied first on behalf of the first-
named petitioner against as many of the classes in the registration as 
the submitted fees are sufficient to pay, and any excess will be applied 
on behalf of the second-named party to the petition against the classes 
in the registration in ascending order.
    (3) The filing date of the petition is the date of receipt in the 
Patent and Trademark Office of the petition together with the required 
fee. If the amount of the fee filed with the petition is sufficient to 
pay for at least one person to petition to cancel one class of goods or 
services but is less than the required amount because multiple party 
petitioners and/or multiple classes in the registration for which 
cancellation is sought are involved, and the required additional amount 
of the fee is filed within the time limit set in the notification of the 
defect by the Office, the filing date of the petition with respect to 
the additional party petitioners and/or classes is the date of receipt 
in the Patent and Trademark Office of the additional fees.

[48 FR 3976 Jan. 28, 1983, as amended at 54 FR 37596, Sept. 11, 1989; 63 
FR 48097, Sept. 9, 1998]



Sec. 2.112  Contents of petition for cancellation.

    (a) The petition to cancel must set forth a short and plain 
statement showing why the petitioner believes it is or will be damaged 
by the registration, state the grounds for cancellation, and indicate, 
to the best of petitioner's knowledge, the name and address of the 
current owner of the registration. A duplicate copy of the petition, 
including exhibits, shall be filed with the petition.
    (b) Petitions to cancel different registrations owned by the same 
party may be joined in a consolidated petition when appropriate, but the 
required fee must be included for each party joined as petitioner for 
each class sought to be cancelled in each registration against which the 
petition to cancel is filed.

[48 FR 3977 Jan. 28, 1983, as amended at 51 FR 28710, Aug. 11, 1986; 54 
FR 34897, Aug. 22, 1989]



Sec. 2.113  Notification of cancellation proceeding.

    When a petition for cancellation has been filed in proper form (see 
Secs. 2.111 and 2.112), a notification shall be prepared by the 
Trademark Trial and Appeal Board, which shall identify the title and 
number of the proceeding and the registration or registrations involved 
and shall designate a time, not less than thirty days from the mailing 
date of the notification, within which an answer must be filed. A copy 
of the notification shall be forwarded to the attorney or other 
authorized representative of the petitioner, if any, or to the 
petitioner. The duplicate copy of the petition for cancellation and 
exhibits shall be forwarded with a copy of the notification to the 
respondent (see Sec. 2.118), who shall be the party shown by the records 
of the Patent and Trademark Office to be the current owner of the 
registration or registrations sought to be cancelled, except that the 
Board, in its discretion, may join or substitute as respondent a party 
who makes a

[[Page 246]]

showing of a current ownership interest in such registration or 
registrations. When the party identified by the petitioner, pursuant to 
Sec. 2.112(a), as the current owner of the registration or registrations 
is not the record owner thereof, a courtesy copy of the petition for 
cancellation shall be forwarded with a copy of the notification to the 
alleged current owner, which may file a motion to be joined or 
substituted as respondent. If the petition is found to be defective as 
to form, the party filing the petition shall be so advised and allowed a 
reasonable time for correcting the informality.

[54 FR 34897, Aug. 22, 1989; 54 FR 38041, Sept. 14, 1989]



Sec. 2.114  Answer.

    (a) If no answer is filed within the time set, the petition may be 
decided as in case of default.
    (b)(1) An answer shall state in short and plain terms the 
respondent's defenses to each claim asserted and shall admit or deny the 
averments upon which the petitioner relies. If the respondent is without 
knowledge or information sufficient to form a belief as to the truth of 
an averment, respondent shall so state and this will have the effect of 
a denial. Denials may take any of the forms specified in Rule 8(b) of 
the Federal Rules of Civil Procedure. An answer may contain any defense, 
including the affirmative defenses of unclean hands, laches, estoppel, 
acquiescence, fraud, mistake, prior judgment, or any other matter 
constituting an avoidance or affirmative defense. When pleading special 
matters, the Federal Rules of Civil Procedure shall be followed. A reply 
to an affirmative defense need not be filed. When a defense attacks the 
validity of a registration pleaded in the petition, paragraph (b)(2) of 
this section shall govern. A pleaded registration is a registration 
identified by number and date of issuance in an original petition for 
cancellation or in any amendment thereto made under Rule 15, Federal 
Rules of Civil Procedure.
    (2)(i) A defense attacking the validity of any one or more of the 
registrations pleaded in the petition shall be a compulsory counterclaim 
if grounds for such counterclaim exist at the time when the answer if 
filed. If grounds for a counterclaim are known to respondent when the 
answer to the petition is filed, the counterclaim shall be pleaded with 
or as part of the answer. If grounds for a counterclaim are learned 
during the course of the cancellation proceeding, the counterclaim shall 
be pleaded promptly after the grounds therefor are learned. A 
counterclaim need not be filed if it is the subject of another 
proceeding between the same parties or anyone in privity therewith.
    (ii) An attack on the validity of a registration pleaded by a 
petitioner for cancellation will not be heard unless a counterclaim or 
separate petition is filed to seek the cancellation of such 
registration.
    (iii) The provisions of Secs. 2.111 through 2.115, inclusive, shall 
be applicable to counterclaims. A time, not less than thirty days, will 
be designated within which an answer to the counterclaim must be filed.
    (iv) The times for pleading, discovery, testimony, briefs, or oral 
argument will be reset or extended when necessary, upon motion by a 
party, to enable a party fully to present or meet a counterclaim or 
separate petition for cancellation of a registration.
    (c) The petition for cancellation may be withdrawn without prejudice 
before the answer is filed. After the answer is filed, the petition may 
not be withdrawn without prejudice except with the written consent of 
the registrant or the registrant's attorney or other authorized 
representative.

[30 FR 13193, Oct. 16, 1965, as amended at 46 FR 6940, Jan. 22, 1981; 46 
FR 11548, Feb. 9, 1981; 51 FR 28710, Aug. 11, 1986; 54 FR 34898, Aug. 
22, 1989]



Sec. 2.115  Amendment of pleadings in a cancellation proceeding.

    Pleadings in a cancellation proceeding may be amended in the same 
manner and to the same extent as in a civil action in a United States 
district court.

[48 FR 23136, May 23, 1983]

                  Procedure in Inter Partes Proceedings

    Authority: Secs. 2.116 to 2.136 also issued under sec. 17, 60 Stat. 
434; 15 U.S.C. 1067.

[[Page 247]]



Sec. 2.116  Federal Rules of Civil Procedure.

    (a) Except as otherwise provided, and wherever applicable and 
appropriate, procedure and practice in inter partes proceedings shall be 
governed by the Federal Rules of Civil Procedure.
    (b) The opposer in an opposition proceeding or the petitioner in a 
cancellation proceeding shall be in the position of plaintiff, and the 
applicant in an opposition proceeding or the respondent in a 
cancellation proceeding shall be in the position of defendant. A party 
that is a junior party in an interference proceeding or in a concurrent 
use registration proceeding shall be in the position of plaintiff 
against every party that is senior, and the party that is a senior party 
in an interference proceeding or in a concurrent use registration 
proceeding shall be a defendant against every party that is junior.
    (c) The opposition or the petition for cancellation and the answer 
correspond to the complaint and answer in a court proceeding.
    (d) The assignment of testimony periods corresponds to setting a 
case for trial in court proceedings.
    (e) The taking of depositions during the assigned testimony periods 
corresponds to the trial in court proceedings.
    (f) Oral hearing corresponds to oral summation in court proceedings.

[30 FR 13193, Oct. 16, 1965. Redesignated and amended at 37 FR 7606, 
Apr. 18, 1972; 48 FR 23136, May 23, 1983]



Sec. 2.117  Suspension of proceedings.

    (a) Whenever it shall come to the attention of the Trademark Trial 
and Appeal Board that a party or parties to a pending case are engaged 
in a civil action or another Board proceeding which may have a bearing 
on the case, proceedings before the Board may be suspended until 
termination of the civil action or the other Board proceeding.
    (b) Whenever there is pending before the Board both a motion to 
suspend and a motion which is potentially dispositive of the case, the 
potentially dispositive motion may be decided before the question of 
suspension is considered regardless of the order in which the motions 
were filed.
    (c) Proceedings may also be suspended, for good cause, upon motion 
or a stipulation of the parties approved by the Board.

[48 FR 23136, May 23, 1983, as amended at 63 FR 48097, Sept. 9, 1998]



Sec. 2.118  Undelivered Office notices.

    When the notices sent by the Patent and Trademark Office to any 
registrant are returned to the Office undelivered, or when one of the 
parties resides abroad and his representative in the United States is 
unknown, additional notice may be given by publication in the Official 
Gazette for such period of time as the Commissioner may direct.



Sec. 2.119  Service and signing of papers.

    (a) Every paper filed in the Patent and Trademark Office in inter 
partes cases, including notice of appeal, must be served upon the other 
parties except the notice of interference (Sec. 2.93), the notification 
of opposition (Sec. 2.105), the petition for cancellation (Sec. 2.113), 
and the notice of a concurrent use proceeding (Sec. 2.99), which are 
mailed by the Patent and Trademark Office. Proof of such service must be 
made before the paper will be considered by the Office. A statement 
signed by the attorney or other authorized representative, attached to 
or appearing on the original paper when filed, clearly stating the date 
and manner in which service was made will be accepted as prima facie 
proof of service.
    (b) Service of papers must be on the attorney or other authorized 
representative of the party if there be such or on the party if there is 
no attorney or other authorized representative, and may be made in any 
of the following ways:
    (1) By delivering a copy of the paper to the person served;
    (2) By leaving a copy at the usual place of business of the person 
served, with someone in the person's employment;
    (3) When the person served has no usual place of business, by 
leaving a copy at the person's residence, with a member of the person's 
family over 14 years of age and of discretion;
    (4) Transmission by the ``Express Mail Post Office to Addressee'' 
service of the United States Postal Service or

[[Page 248]]

by first-class mail, which may also be certified or registered;
    (5) Transmission by overnight courier.

Whenever it shall be satisfactorily shown to the Commissioner that none 
of the above modes of obtaining service or serving the paper is 
practicable, service may be by notice published in the Official Gazette.
    (c) When service is made by first-class mail, ``Express Mail,'' or 
overnight courier, the date of mailing or of delivery to the overnight 
courier will be considered the date of service. Whenever a party is 
required to take some action within a prescribed period after the 
service of a paper upon the party by another party and the paper is 
served by first-class mail, ``Express Mail,'' or overnight courier, 5 
days shall be added to the prescribed period.
    (d) If a party to an inter partes proceeding is not domiciled in the 
United States and is not represented by an attorney or other authorized 
representative located in the United States, the party must designate by 
written document filed in the Patent and Trademark Office the name and 
address of a person resident in the United States on whom may be served 
notices or process in the proceeding. In such cases, official 
communications of the Patent and Trademark Office will be addressed to 
the domestic representative unless the proceeding is being prosecuted by 
an attorney at law or other qualified person duly authorized under 
Sec. 10.14(c) of this subchapter. The mere designation of a domestic 
representative does not authorize the person designated to prosecute the 
proceeding unless qualified under Sec. 10.14(a), or qualified under 
Sec. 10.14(b) and authorized under Sec. 2.17(b).
    (e) Every paper filed in an inter partes proceeding, and every 
request for an extension of time to file an opposition, must be signed 
by the party filing it, or by the party's attorney or other authorized 
representative, but an unsigned paper will not be refused consideration 
if a signed copy is submitted to the Patent and Trademark Office within 
the time limit set in the notification of this defect by the Office.

[37 FR 7606, Apr. 18, 1972, as amended at 41 FR 760, Jan. 5, 1976; 54 FR 
34898, Aug. 22, 1989; 54 FR 38041, Sept. 14, 1989; 63 FR 48097, Sept. 9, 
1998]



Sec. 2.120  Discovery.

    (a) In general. Wherever appropriate, the provisions of the Federal 
Rules of Civil Procedure relating to discovery shall apply in 
opposition, cancellation, interference and concurrent use registration 
proceedings except as otherwise provided in this section. The provisions 
of the Federal Rules of Civil Procedure relating to automatic 
disclosure, scheduling conferences, conferences to discuss settlement 
and to develop a discovery plan, and transmission to the court of a 
written report outlining the discovery plan, are not applicable to Board 
proceedings. The Trademark Trial and Appeal Board will specify the 
opening and closing dates for the taking of discovery. The trial order 
setting these dates will be mailed with the notice of institution of the 
proceeding. The discovery period will be set for a period of 180 days. 
The parties may stipulate to a shortening of the discovery period. The 
discovery period may be extended upon stipulation of the parties 
approved by the Board, or upon motion granted by the Board, or by order 
of the Board. If a motion for an extension is denied, the discovery 
period may remain as originally set or as reset. Discovery depositions 
must be taken, and interrogatories, requests for production of documents 
and things, and requests for admission must be served, on or before the 
closing date of the discovery period as originally set or as reset. 
Responses to interrogatories, requests for production of documents and 
things, and requests for admission must be served within 30 days from 
the date of service of such discovery requests. The time to respond may 
be extended upon stipulation of the parties, or upon motion granted by 
the Board, or by order of the Board. The resetting of a party's time to 
respond to an outstanding request for discovery will not result in

[[Page 249]]

the automatic rescheduling of the discovery and/or testimony periods; 
such dates will be rescheduled only upon stipulation of the parties 
approved by the Board, or upon motion granted by the Board, or by order 
of the Board.
    (b) Discovery deposition within the United States. The deposition of 
a natural person shall be taken in the Federal judicial district where 
the person resides or is regularly employed or at any place on which the 
parties agree by stipulation. The responsibility rests wholly with the 
party taking discovery to secure the attendance of a proposed deponent 
other than a party or anyone who, at the time set for the taking of the 
deposition, is an officer, director, or managing agent of a party, or a 
person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules 
of Civil Procedure. See 35 U.S.C. 24.
    (c) Discovery deposition in foreign countries. (1) The discovery 
deposition of a natural person residing in a foreign country who is a 
party or who, at the time set for the taking of the deposition, is an 
officer, director, or managing agent of a party, or a person designated 
under Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil 
Procedure, shall, if taken in a foreign country, be taken in the manner 
prescribed by Sec. 2.124 unless the Trademark Trial and Appeal Board, 
upon motion for good cause, orders or the parties stipulate, that the 
deposition be taken by oral examination.
    (2) Whenever a foreign party is or will be, during a time set for 
discovery, present within the United States or any territory which is 
under the control and jurisdiction of the United States, such party may 
be deposed by oral examination upon notice by the party seeking 
discovery. Whenever a foreign party has or will have, during a time set 
for discovery, an officer, director, managing agent, or other person who 
consents to testify on its behalf, present within the United States or 
any territory which is under the control and jurisdiction of the United 
States, such officer, director, managing agent, or other person who 
consents to testify in its behalf may be deposed by oral examination 
upon notice by the party seeking discovery. The party seeking discovery 
may have one or more officers, directors, managing agents, or other 
persons who consent to testify on behalf of the adverse party, 
designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure. 
The deposition of a person under this paragraph shall be taken in the 
Federal judicial district where the witness resides or is regularly 
employed, or, if the witness neither resides nor is regularly employed 
in a Federal judicial district, where the witness is at the time of the 
deposition. This paragraph does not preclude the taking of a discovery 
deposition of a foreign party by any other procedure provided by 
paragraph (c)(1) of this section.
    (d) Interrogatories; request for production. (1) The total number of 
written interrogatories which a party may serve upon another party 
pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a 
proceeding, shall not exceed seventy-five, counting subparts, except 
that the Trademark Trial and Appeal Board, in its discretion, may allow 
additional interrogatories upon motion therefor showing good cause, or 
upon stipulation of the parties. A motion for leave to serve additional 
interrogatories must be filed and granted prior to the service of the 
proposed additional interrogatories; and must be accompanied by a copy 
of the interrogatories, if any, which have already been served by the 
moving party, and by a copy of the interrogatories proposed to be 
served. If a party upon which interrogatories have been served believes 
that the number of interrogatories served exceeds the limitation 
specified in this paragraph, and is not willing to waive this basis for 
objection, the party shall, within the time for (and instead of) serving 
answers and specific objections to the interrogatories, serve a general 
objection on the ground of their excessive number. If the inquiring 
party, in turn, files a motion to compel discovery, the motion must be 
accompanied by a copy of the set(s) of interrogatories which together 
are said to exceed the limitation, and must otherwise comply with the 
requirements of paragraph (e) of this section.
    (2) The production of documents and things under the provisions of 
Rule 34 of the Federal Rules of Civil Procedure

[[Page 250]]

will be made at the place where the documents and things are usually 
kept, or where the parties agree, or where and in the manner which the 
Trademark Trial and Appeal Board, upon motion, orders.
    (e) Motion for an order to compel discovery. (1) If a party fails to 
designate a person pursuant to Rule 30(b)(6) or Rule 31(a) of the 
Federal Rules of Civil Procedure, or if a party, or such designated 
person, or an officer, director or managing agent of a party fails to 
attend a deposition or fails to answer any question propounded in a 
discovery deposition, or any interrogatory, or fails to produce and 
permit the inspection and copying of any document or thing, the party 
seeking discovery may file a motion before the Trademark Trial and 
Appeal Board for an order to compel a designation, or attendance at a 
deposition, or an answer, or production and an opportunity to inspect 
and copy. The motion must be filed prior to the commencement of the 
first testimony period as originally set or as reset. The motion shall 
include a copy of the request for designation or of the relevant portion 
of the discovery deposition; or a copy of the interrogatory with any 
answer or objection that was made; or a copy of the request for 
production, any proffer of production or objection to production in 
response to the request, and a list and brief description of the 
documents or things that were not produced for inspection and copying. 
The motion must be supported by a written statement from the moving 
party that such party or the attorney therefor has made a good faith 
effort, by conference or correspondence, to resolve with the other party 
or the attorney therefor the issues presented in the motion and has been 
unable to reach agreement. If issues raised in the motion are 
subsequently resolved by agreement of the parties, the moving party 
should inform the Board in writing of the issues in the motion which no 
longer require adjudication.
    (2) When a party files a motion for an order to compel discovery, 
the case will be suspended by the Trademark Trial and Appeal Board with 
respect to all matters not germane to the motion, and no party should 
file any paper which is not germane to the motion, except as otherwise 
specified in the Board's suspension order. The filing of a motion to 
compel shall not toll the time for a party to respond to any outstanding 
discovery requests or to appear for any noticed discovery deposition.
    (f) Motion for a protective order. Upon motion by a party from whom 
discovery is sought, and for good cause, the Trademark Trial and Appeal 
Board may make any order which justice requires to protect a party from 
annoyance, embarrassment, oppression, or undue burden or expense, 
including one or more of the types of orders provided by clauses (1) 
through (8), inclusive, of Rule 26(c) of the Federal Rules of Civil 
Procedure. If the motion for a protective order is denied in whole or in 
part, the Board may, on such conditions (other than an award of expenses 
to the party prevailing on the motion) as are just, order that any party 
provide or permit discovery.
    (g) Sanctions. (1) If a party fails to comply with an order of the 
Trademark Trial and Appeal Board relating to discovery, including a 
protective order, the Board may make any appropriate order, including 
any of the orders provided in Rule 37(b)(2) of the Federal Rules of 
Civil Procedure, except that the Board will not hold any person in 
contempt or award any expenses to any party. The Board may impose 
against a party any of the sanctions provided by this subsection in the 
event that said party or any attorney, agent, or designated witness of 
that party fails to comply with a protective order made pursuant to Rule 
26(c) of the Federal Rules of Civil Procedure.
    (2) If a party, or an officer, director, or managing agent of a 
party, or a person designated under Rule 30(b)(6) or 31(a) of the 
Federal Rules of Civil Procedure to testify on behalf of a party, fails 
to attend the party's or person's discovery deposition, after being 
served with proper notice, or fails to provide any response to a set of 
interrogatories or to a set of requests for production of documents and 
things, and such party or the party's attorney or other authorized 
representative informs the party seeking discovery that no response will 
be made thereto, the Board

[[Page 251]]

may make any appropriate order, as specified in paragraph (g)(1) of this 
section.
    (h)(1) Any motion by a party to determine the sufficiency of an 
answer or objection to a request made by that party for an admission 
must be filed prior to the commencement of the first testimony period, 
as originally set or as reset. The motion shall include a copy of the 
request for admission and any exhibits thereto and of the answer or 
objection. The motion must be supported by a written statement from the 
moving party that such party or the attorney therefor has made a good 
faith effort, by conference or correspondence, to resolve with the other 
party or the attorney therefor the issues presented in the motion and 
has been unable to reach agreement. If issues raised in the motion are 
subsequently resolved by agreement of the parties, the moving party 
should inform the Board in writing of the issues in the motion which no 
longer require adjudication.
    (2) When a party files a motion to determine the sufficiency of an 
answer or objection to a request made by that party for an admission, 
the case will be suspended by the Trademark Trial and Appeal Board with 
respect to all matters not germane to the motion, and no party should 
file any paper which is not germane to the motion, except as otherwise 
specified in the Board's suspension order. The filing of a motion to 
determine the sufficiency of an answer or objection to a request for 
admission shall not toll the time for a party to respond to any 
outstanding discovery requests or to appear for any noticed discovery 
deposition.
    (i) Telephone and pre-trial conferences. (1) Whenever it appears to 
the Trademark Trial and Appeal Board that a motion filed in an inter 
partes proceeding is of such nature that its resolution by 
correspondence is not practical, the Board may, upon its own initiative 
or upon request made by one or both of the parties, resolve the motion 
by telephone conference.
    (2) Whenever it appears to the Trademark Trial and Appeal Board that 
questions or issues arising during the interlocutory phase of an inter 
partes proceeding have become so complex that their resolution by 
correspondence or telephone conference is not practical and that 
resolution would be likely to be facilitated by a conference in person 
of the parties or their attorneys with a Member or Attorney-Examiner of 
the Board, the Board may, upon its own initiative or upon motion made by 
one or both of the parties, request that the parties or their attorneys, 
under circumstances which will not result in undue hardship for any 
party, meet with the Board at its offices for a pre-trial conference.
    (j) Use of discovery deposition, answer to interrogatory, or 
admission. (1) The discovery deposition of a party or of anyone who at 
the time of taking the deposition was on officer, director or managing 
agent of a party, or a person designated by a party pursuant to Rule 
30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, may be 
offered in evidence by an adverse party.
    (2) Except as provided in paragraph (j)(1) of this section, the 
discovery deposition of a witness, whether or not a party, shall not be 
offered in evidence unless the person whose deposition was taken is, 
during the testimony period of the party offering the deposition, dead; 
or out of the United States (unless it appears that the absence of the 
witness was procured by the party offering the deposition); or unable to 
testify because of age, illness, infirmity, or imprisonment; or cannot 
be served with a subpoena to compel attendance at a testimonial 
deposition; or there is a stipulation by the parties; or upon a showing 
that such exceptional circumstances exist as to make it desirable, in 
the interest of justice, to allow the deposition to be used. The use of 
a discovery deposition by any party under this paragraph will be allowed 
only by stipulation of the parties approved by the Trademark Trial and 
Appeal Board, or by order of the Board on motion, which shall be filed 
at the time of the purported offer of the deposition in evidence, unless 
the motion is based upon a claim that such exceptional circumstances 
exist as to make it desirable, in the interest of justice, to allow the 
deposition to be used, in which case the motion shall be filed promptly

[[Page 252]]

after the circumstances claimed to justify use of the deposition became 
known.
    (3)(i) A discovery deposition, an answer to an interrogatory, or an 
admission to a request for admission, which may be offered in evidence 
under the provisions of paragraph (j) of this section may be made of 
record in the case by filing the deposition or any part thereof with any 
exhibit to the part that is filed, or a copy of the interrogatory and 
answer thereto with any exhibit made part of the answer, or a copy of 
the request for admission and any exhibit thereto and the admission (or 
a statement that the party from which an admission was requested failed 
to respond thereto), together with a notice of reliance. The notice of 
reliance and the material submitted thereunder should be filed during 
the testimony period of the party which files the notice of reliance. An 
objection made at a discovery deposition by a party answering a question 
subject to the objection will be considered at final hearing.
    (ii) A party which has obtained documents from another party under 
Rule 34 of the Federal Rules of Civil Procedure may not make the 
documents of record by notice of reliance alone, except to the extent 
that they are admissible by notice of reliance under the provisions of 
Sec. 2.122(e).
    (4) If only part of a discovery deposition is submitted and made 
part of the record by a party, an adverse party may introduce under a 
notice of reliance any other part of the deposition which should in 
fairness be considered so as to make not misleading what was offered by 
the submitting party. A notice of reliance filed by an adverse party 
must be supported by a written statement explaining why the adverse 
party needs to rely upon each additional part listed in the adverse 
party's notice, failing which the Board, in its discretion, may refuse 
to consider the additional parts.
    (5) An answer to an interrogatory, or an admission to a request for 
admission, may be submitted and made part of the record by only the 
inquiring party except that, if fewer than all of the answers to 
interrogatories, or fewer than all of the admissions, are offered in 
evidence by the inquiring party, the responding party may introduce 
under a notice of reliance any other answers to interrogatories, or any 
other admissions, which should in fairness be considered so as to make 
not misleading what was offered by the inquiring party. The notice of 
reliance filed by the responding party must be supported by a written 
statement explaining why the responding party needs to rely upon each of 
the additional discovery responses listed in the responding party's 
notice, failing which the Board, in its discretion, may refuse to 
consider the additional responses.
    (6) Paragraph (j) of this section will not be interpreted to 
preclude the reading or the use of a discovery deposition, or answer to 
an interrogatory, or admission as part of the examination or cross-
examination of any witness during the testimony period of any party.
    (7) When a discovery deposition, or a part thereof, or an answer to 
an interrogatory, or an admission, has been made of record by one party 
in accordance with the provisions of paragraph (j)(3) of this section, 
it may be referred to by any party for any purpose permitted by the 
Federal Rules of Evidence.
    (8) Requests for discovery, responses thereto, and materials or 
depositions obtained through the discovery process should not be filed 
with the Board except when submitted with a motion relating to 
discovery, or in support of or response to a motion for summary 
judgment, or under a notice of reliance during a party's testimony 
period. Papers or materials filed in violation of this paragraph may be 
returned by the Board.

[48 FR 23136, May 23, 1983, as amended at 54 FR 34898, Aug. 22, 1989; 54 
FR 38041, Sept. 14, 1989; 56 FR 46379, Sept. 12, 1991; 56 FR 54917, Oct. 
23, 1991; 63 FR 48098, Sept. 9, 1998; 63 FR 52159, Sept. 30, 1998]



Sec. 2.121  Assignment of times for taking testimony.

    (a)(1) The Trademark Trial and Appeal Board will issue a trial order 
assigning to each party the time for taking testimony. No testimony 
shall be

[[Page 253]]

taken except during the times assigned, unless by stipulation of the 
parties approved by the Board, or, upon motion, by order of the Board. 
Testimony periods may be rescheduled by stipulation of the parties 
approved by the Board, or upon motion granted by the Board, or by order 
of the Board. If a motion to reschedule testimony periods is denied, the 
testimony periods may remain as set. The resetting of the closing date 
for discovery will result in the rescheduling of the testimony periods 
without action by any party.
    (2) The initial trial order will be mailed by the Board after issue 
is joined.
    (b)(1) The Trademark Trial and Appeal Board will schedule a 
testimony period for the plaintiff to present its case in chief, a 
testimony period for the defendant to present its case and to meet the 
case of the plaintiff, and a testimony period for the plaintiff to 
present evidence in rebuttal.
    (2) When there is a counterclaim, or when proceedings have been 
consolidated and one party is in the position of plaintiff in one of the 
involved proceedings and in the position of defendant in another of the 
involved proceedings, or when there is an interference or a concurrent 
use registration proceeding involving more than two parties, the Board 
will schedule testimony periods so that each party in the position of 
plaintiff will have a period for presenting its case in chief against 
each party in the position of defendant, each party in the position of 
defendant will have a period for presenting its case and meeting the 
case of each plaintiff, and each party in the position of plaintiff will 
have a period for presenting evidence in rebuttal.
    (c) A testimony period which is solely for rebuttal will be set for 
fifteen days. All other testimony periods will be set for thirty days. 
The periods may be extended by stipulation of the parties approved by 
the Trademark Trial and Appeal Board, or upon motion granted by the 
Board, or by order of the Board. If a motion for an extension is denied, 
the testimony periods may remain as set.
    (d) When parties stipulate to the rescheduling of testimony periods 
or to the rescheduling of the closing date for discovery and the 
rescheduling of testimony periods, a stipulation presented in the form 
used in a trial order, signed by the parties, or a motion in said form 
signed by one party and including a statement that every other party has 
agreed thereto, and submitted in a number of copies equal to the number 
of parties to the proceeding plus one copy for the Board, will, if 
approved, be so stamped, signed, and dated, and a copy will be promptly 
returned to each of the parties.

[48 FR 23138, May 23, 1983; 48 FR 27226, June 14, 1983, as amended at 54 
FR 34899, Aug. 22, 1989; 63 FR 48099, Sept. 9, 1998]



Sec. 2.122  Matters in evidence.

    (a) Rules of evidence. The rules of evidence for proceedings before 
the Trademark Trial and Appeal Board are the Federal Rules of Evidence, 
the relevant provisions of the Federal Rules of Civil Procedure, the 
relevant provisions of Title 28 of the United States Code, and the 
provisions of this part of title 37 of the Code of Federal Regulations.
    (b) Application files. (1) The file of each application or 
registration specified in a notice of interference, of each application 
or registration specified in the notice of a concurrent use registration 
proceeding, of the application against which a notice of opposition is 
filed, or of each registration against which a petition or counterclaim 
for cancellation is filed forms part of the record of the proceeding 
without any action by the parties and reference may be made to the file 
for any relevant and competent purpose.
    (2) The allegation in an application for registration, or in a 
registration, of a date of use is not evidence on behalf of the 
applicant or registrant; a date of use of a mark must be established by 
competent evidence. Specimens in the file of an application for 
registration, or in the file of a registration, are not evidence on 
behalf of the applicant or registrant unless identified and introduced 
in evidence as exhibits during the period for the taking of testimony.
    (c) Exhibits to pleadings. Except as provided in paragraph (d)(1) of 
this section, an exhibit attached to a pleading is not evidence on 
behalf of the party to whose pleading the exhibit is attached unless 
identified and introduced

[[Page 254]]

in evidence as an exhibit during the period for the taking of testimony.
    (d) Registrations. (1) A registration of the opposer or petitioner 
pleaded in an opposition or petition to cancel will be received in 
evidence and made part of the record if the opposition or petition is 
accompanied by two copies (originals or photocopies) of the registration 
prepared and issued by the Patent and Trademark Office showing both the 
current status of and current title to the registration. For the cost of 
a copy of a registration showing status and title, see Sec. 2.6(b)(4).
    (2) A registration owned by any party to a proceeding may be made of 
record in the proceeding by that party by appropriate identification and 
introduction during the taking of testimony or by filing a notice of 
reliance, which shall be accompanied by a copy (original or photocopy) 
of the registration prepared and issued by the Patent and Trademark 
Office showing both the current status of and current title to the 
registration. The notice of reliance shall be filed during the testimony 
period of the party that files the notice.
    (e) Printed publications and official records. Printed publications, 
such as books and periodicals, available to the general public in 
libraries or of general circulation among members of the public or that 
segment of the public which is relevant under an issue in a proceeding, 
and official records, if the publication of official record is competent 
evidence and relevant to an issue, may be introduced in evidence by 
filing a notice of reliance on the material being offered. The notice 
shall specify the printed publication (including information sufficient 
to identify the source and the date of the publication) or the official 
record and the pages to be read; indicate generally the relevance of the 
material being offered; and be accompanied by the official record or a 
copy thereof whose authenticity is established under the Federal Rules 
of Evidence, or by the printed publication or a copy of the relevant 
portion thereof. A copy of an official record of the Patent and 
Trademark Office need not be certified to be offered in evidence. The 
notice of reliance shall be filed during the testimony period of the 
party that files the notice.
    (f) Testimony from other proceedings. By order of the Trademark 
Trial and Appeal Board, on motion, testimony taken in another 
proceeding, or testimony taken in a suit or action in a court, between 
the same parties or those in privity may be used in a proceeding, so far 
as relevant and material, subject, however, to the right of any adverse 
party to recall or demand the recall for examination or cross-
examination of any witness whose prior testimony has been offered and to 
rebut the testimony.

[48 FR 23138, May 23, 1983, as amended at 54 FR 34899, Aug. 22, 1989; 54 
FR 38041, Sept. 14, 1989; 63 FR 48099, Sept. 9, 1998]



Sec. 2.123  Trial testimony in inter partes cases.

    (a)(1) The testimony of witnesses in inter partes cases may be taken 
by depositions upon oral examination as provided by this section or by 
depositions upon written questions as provided by Sec. 2.124. If a party 
serves notice of the taking of a testimonial deposition upon written 
questions of a witness who is, or will be at the time of the deposition, 
present within the United States or any territory which is under the 
control and jurisdiction of the United States, any adverse party may, 
within fifteen days from the date of service of the notice, file a 
motion with the Trademark Trial and Appeal Board, for good cause, for an 
order that the deposition be taken by oral examination.
    (2) A testimonial deposition taken in a foreign country shall be 
taken by deposition upon written questions as provided by Sec. 2.124, 
unless the Board, upon motion for good cause, orders that the deposition 
be taken by oral examination, or the parties so stipulate.
    (b) Stipulations. If the parties so stipulate in writing, 
depositions may be taken before any person authorized to administer 
oaths, at any place, upon any notice, and in any manner, and when so 
taken may be used like other depositions. By written agreement of the 
parties, the testimony of any witness or witnesses of any party, may be 
submitted in the form of an affidavit

[[Page 255]]

by such witness or witnesses. The parties may stipulate in writing what 
a particular witness would testify to if called, or the facts in the 
case of any party may be stipulated in writing.
    (c) Notice of examination of witnesses. Before the depositions of 
witnesses shall be taken by a party, due notice in writing shall be 
given to the opposing party or parties, as provided in Sec. 2.119(b), of 
the time when and place where the depositions will be taken, of the 
cause or matter in which they are to be used, and the name and address 
of each witness to be examined; if the name of a witness is not known, a 
general description sufficient to identify the witness or the particular 
class or group to which the witness belongs, together with a 
satisfactory explanation, may be given instead. Depositions may be 
noticed for any reasonable time and place in the United States. A 
deposition may not be noticed for a place in a foreign country except as 
provided in paragraph (a)(2) of this section. No party shall take 
depositions in more than one place at the same time, nor so nearly at 
the same time that reasonable opportunity for travel from one place of 
examination to the other is not available.
    (d) Persons before whom depositions may be taken. Depositions may be 
taken before persons designated by Rule 28 of the Federal Rules of Civil 
Procedure.
    (e) Examination of witnesses. (1) Each witness before testifying 
shall be duly sworn according to law by the officer before whom his 
deposition is to be taken.
    (2) The deposition shall be taken in answer to questions, with the 
questions and answers recorded in their regular order by the officer, or 
by some other person (who shall be subject to the provisions of Rule 28 
of the Federal Rules of Civil Procedure) in the presence of the officer 
except when the officer's presence is waived on the record by agreement 
of the parties. The testimony shall be taken stenographically and 
transcribed, unless the parties present agree otherwise. In the absence 
of all opposing parties and their attorneys or other authorized 
representatives, depositions may be taken in longhand, typewriting, or 
stenographically. Exhibits which are marked and identified at the 
deposition will be deemed to have been offered into evidence, without 
any formal offer thereof, unless the intention of the party marking the 
exhibits is clearly expressed to the contrary.
    (3) Every adverse party shall have full opportunity to cross-examine 
each witness. If the notice of examination of witnesses which is served 
pursuant to paragraph (c) of this section is improper or inadequate with 
respect to any witness, an adverse party may cross-examine that witness 
under protest while reserving the right to object to the receipt of the 
testimony in evidence. Promptly after the testimony is completed, the 
adverse party, if he wishes to preserve the objection, shall move to 
strike the testimony from the record, which motion will be decided on 
the basis of all of the relevant circumstances. A motion to strike the 
testimony of a witness for lack of proper or adequate notice of 
examination must request the exclusion of the entire testimony of that 
witness and not only a part of that testimony.
    (4) All objections made at the time of the examination to the 
qualifications of the officer taking the deposition, or to the manner of 
taking it, or to the evidence presented, or to the conduct of any party, 
and any other objection to the proceedings, shall be noted by the 
officer upon the deposition. Evidence objected to shall be taken subject 
to the objections.
    (5) When the deposition has been transcribed, the deposition shall 
be carefully read over by the witness or by the officer to him, and 
shall then be signed by the witness in the presence of any officer 
authorized to administer oaths unless the reading and the signature be 
waived on the record by agreement of all parties.
    (f) Certification and filing of deposition. (1) The officer shall 
annex to the deposition his certificate showing:
    (i) Due administration of the oath by the officer to the witness 
before the commencement of his deposition;
    (ii) The name of the person by whom the deposition was taken down, 
and whether, if not taken down by the officer, it was taken down in his 
presence;
    (iii) The presence or absence of the adverse party;

[[Page 256]]

    (iv) The place, day, and hour of commencing and taking the 
deposition;
    (v) The fact that the officer was not disqualified as specified in 
Rule 28 of the Federal Rules of Civil Procedure.
    (2) If any of the foregoing requirements in paragraph (f)(1) of this 
section are waived, the certificate shall so state. The officer shall 
sign the certificate and affix thereto his seal of office, if he has 
such a seal. Unless waived on the record by an agreement, he shall then 
securely seal in an envelope all the evidence, notices, and paper 
exhibits, inscribe upon the envelope a certificate giving the number and 
title of the case, the name of each witness, and the date of sealing. 
The officer or the party taking the deposition, or its attorney or other 
authorized representative, shall then address the package, and forward 
the same to the Commissioner of Patents and Trademarks. If the weight or 
bulk of an exhibit shall exclude it from the envelope, it shall, unless 
waived on the record by agreement of all parties, be authenticated by 
the officer and transmitted by the officer or the party taking the 
deposition, or its attorney or other authorized representative, in a 
separate package marked and addressed as provided in this section.
    (g) Form of deposition. (1) The pages of each deposition must be 
numbered consecutively, and the name of the witness plainly and 
conspicuously written at the top of each page. The deposition may be 
written on legal-size or letter-size paper, with a wide margin on the 
left-hand side of the page, and with the writing on one side only of the 
sheet. The questions propounded to each witness must be consecutively 
numbered unless paper with numbered lines is used, and each question 
must be followed by its answer.
    (2) Exhibits must be numbered or lettered consecutively and each 
must be marked with the number and title of the case and the name of the 
party offering the exhibit. Entry and consideration may be refused to 
improperly marked exhibits.
    (3) Each deposition must contain an index of the names of the 
witnesses, giving the pages where their examination and cross-
examination begin, and an index of the exhibits, briefly describing 
their nature and giving the pages at which they are introduced and 
offered in evidence.
    (h) Depositions must be filed. All depositions which are taken must 
be duly filed in the Patent and Trademark Office. On refusal to file, 
the Office at its discretion will not further hear or consider the 
contestant with whom the refusal lies; and the Office may, at its 
discretion, receive and consider a copy of the withheld deposition, 
attested by such evidence as is procurable.
    (i) Inspection of depositions. After the depositions are filed in 
the Office, they may be inspected by any party to the case, but they 
cannot be withdrawn for the purpose of printing. They may be printed by 
someone specially designated by the Office for that purpose, under 
proper restrictions.
    (j) Effect of errors and irregularities in depositions. Rule 32(d) 
(1), (2), and (3) (A) and (B) of the Federal Rules of Civil Procedure 
shall apply to errors and irregularities in depositions. Notice will not 
be taken of merely formal or technical objections which shall not appear 
to have wrought a substantial injury to the party raising them; and in 
case of such injury it must be made to appear that the objection was 
raised at the time specified in said rule.
    (k) Objections to admissibility: Subject to the provisions of 
paragraph (j) of this section, objection may be made to receiving in 
evidence any deposition, or part thereof, or any other evidence, for any 
reason which would require the exclusion of the evidence from 
consideration. Objections to the competency of a witness or to the 
competency, relevancy, or materiality of testimony must be raised at the 
time specified in Rule 32(d)(3)(A) of the Federal Rules of Civil 
Procedure. Such objections will not be considered until final hearing.
    (l) Evidence not considered. Evidence not obtained and filed in 
compliance with these sections will not be considered.

[37 FR 7607, Apr. 18, 1972, as amended at 41 FR 760, Jan. 5, 1976; 48 FR 
23139, May 23, 1983; 54 FR 34899, Aug. 22, 1989; 54 FR 38041, Sept. 14, 
1989; 63 FR 48099, Sept. 9, 1998]

[[Page 257]]



Sec. 2.124  Depositions upon written questions.

    (a) A deposition upon written questions may be taken before any 
person before whom depositions may be taken as provided by Rule 28 of 
the Federal Rules of Civil Procedure.
    (b)(1) A party desiring to take a testimonial deposition upon 
written questions shall serve notice thereof upon each adverse party 
within ten days from the opening date of the testimony period of the 
party who serves the notice. The notice shall state the name and address 
of the witness. A copy of the notice, but not copies of the questions, 
shall be filed with the Trademark Trial and Appeal Board.
    (2) A party desiring to take a discovery deposition upon written 
questions shall serve notice thereof upon each adverse party and shall 
file a copy of the notice, but not copies of the questions, with the 
Board. The notice shall state the name and address, if known, of the 
person whose deposition is to be taken. If the name of the person is not 
known, a general description sufficient to identify him or the 
particular class or group to which he belongs shall be stated in the 
notice, and the party from whom the discovery deposition is to be taken 
shall designate one or more persons to be deposed in the same manner as 
is provided by Rule 30(b)(6) of the Federal Rules of Civil Procedure.
    (c) Every notice given under the provisions of paragraph (b) of this 
section shall be accompanied by the name or descriptive title of the 
officer before whom the deposition is to be taken.
    (d)(1) Every notice served on any adverse party under the provisions 
of paragraph (b) of this section shall be accompanied by the written 
questions to be propounded on behalf of the party who proposes to take 
the deposition. Within twenty days from the date of service of the 
notice, any adverse party may serve cross questions upon the party who 
proposes to take the deposition; any party who serves cross questions 
shall also serve every other adverse party. Within ten days from the 
date of service of the cross questions, the party who proposes to take 
the deposition may serve redirect questions on every adverse party. 
Within ten days from the date of service of the redirect questions, any 
party who served cross questions may serve recross questions upon the 
party who proposes to take the deposition; any party who serves recross 
questions shall also serve every other adverse party. Written objections 
to questions may be served on a party propounding questions; any party 
who objects shall serve a copy of the objections on every other adverse 
party. In response to objections, substitute questions may be served on 
the objecting party within ten days of the date of service of the 
objections; substitute questions shall be served on every other adverse 
party.
    (2) Upon motion for good cause by any party, or upon its own 
initiative, the Trademark Trial and Appeal Board may extend any of the 
time periods provided by paragraph (d)(1) of this section. Upon receipt 
of written notice that one or more testimonial depositions are to be 
taken upon written questions, the Trademark Trial and Appeal Board shall 
suspend or reschedule other proceedings in the matter to allow for the 
orderly completion of the depositions upon written questions.
    (e) Within ten days after the last date when questions, objections, 
or substitute questions may be served, the party who proposes to take 
the deposition shall mail a copy of the notice and copies of all the 
questions to the officer designated in the notice; a copy of the notice 
and of all the questions mailed to the officer shall be served on every 
adverse party. The officer designated in the notice shall take the 
testimony of the witness in response to the questions and shall record 
each answer immediately after the corresponding question. The officer 
shall then certify the transcript and mail the transcript and exhibits 
to the party who took the deposition.
    (f) The party who took the deposition shall promptly serve a copy of 
the transcript, copies of documentary exhibits, and duplicates or 
photographs of physical exhibits on every adverse party. It is the 
responsibility of the party who takes the deposition to assure that the 
transcript is correct (see Sec. 2.125(b)). If the deposition is a 
discovery deposition, it may be made of record as provided by 
Sec. 2.120(j). If the

[[Page 258]]

deposition is a testimonial deposition, the original, together with 
copies of documentary exhibits and duplicates or photographs of physical 
exhibits, shall be filed promptly with the Trademark Trial and Appeal 
Board.
    (g) Objections to questions and answers in depositions upon written 
questions may be considered at final hearing.

[48 FR 23139, May 23, 1983]



Sec. 2.125  Filing and service of testimony.

    (a) One copy of the transcript of testimony taken in accordance with 
Sec. 2.123, together with copies of documentary exhibits and duplicates 
or photographs of physical exhibits, shall be served on each adverse 
party within thirty days after completion of the taking of that 
testimony. If the transcript with exhibits is not served on each adverse 
party within thirty days or within an extension of time for the purpose, 
any adverse party which was not served may have remedy by way of a 
motion to the Trademark Trial and Appeal Board to reset such adverse 
party's testimony and/or briefing periods, as may be appropriate. If the 
deposing party fails to serve a copy of the transcript with exhibits on 
an adverse party after having been ordered to do so by the Board, the 
Board, in its discretion, may strike the deposition, or enter judgment 
as by default against the deposing party, or take any such other action 
as may be deemed appropriate.
    (b) The party who takes testimony is responsible for having all 
typographical errors in the transcript and all errors of arrangement, 
indexing and form of the transcript corrected, on notice to each adverse 
party, prior to the filing of one certified transcript with the 
Trademark Trial and Appeal Board. The party who takes testimony is 
responsible for serving on each adverse party one copy of the corrected 
transcript or, if reasonably feasible, corrected pages to be inserted 
into the transcript previously served.
    (c) One certified transcript and exhibits shall be filed with the 
Trademark Trial and Appeal Board. Notice of such filing shall be served 
on each adverse party and a copy of each notice shall be filed with the 
Board.
    (d) Each transcript shall comply with Sec. 2.123(g) with respect to 
arrangement, indexing and form.
    (e) Upon motion by any party, for good cause, the Trademark Trial 
and Appeal Board may order that any part of a deposition transcript or 
any exhibits that directly disclose any trade secret or other 
confidential research, development, or commercial information may be 
filed under seal and kept confidential under the provisions of 
Sec. 2.27(e). If any party or any attorney or agent of a party fails to 
comply with an order made under this paragraph, the Board may impose any 
of the sanctions authorized by Sec. 2.120(g).

[48 FR 23140, May 23, 1983, as amended at 54 FR 34900, Aug. 22, 1989; 63 
FR 48099, Sept. 9, 1998]



Sec. 2.126  [Reserved]



Sec. 2.127  Motions.

    (a) Every motion shall be made in writing, shall contain a full 
statement of the grounds, and shall embody or be accompanied by a brief. 
Except as provided in paragraph (e)(1) of this section, a brief in 
response to a motion shall be filed within fifteen days from the date of 
service of the motion unless another time is specified by the Trademark 
Trial and Appeal Board or the time is extended by stipulation of the 
parties approved by the Board, or upon motion granted by the Board, or 
upon order of the Board. If a motion for an extension is denied, the 
time for responding to the motion may remain as specified under this 
section. The Board may, in its discretion, consider a reply brief. 
Except as provided in paragraph (e)(1) of this section, a reply brief, 
if filed, shall be filed within 15 days from the date of service of the 
brief in response to the motion. The time for filing a reply brief will 
not be extended. No further papers in support of or in opposition to a 
motion will be considered by the Board. Briefs shall be submitted in 
typewritten or printed form, double spaced, in at least pica or eleven-
point type, on letter-size paper. The brief in support of the motion and 
the brief in response to the motion shall not exceed 25 pages in length; 
and a reply brief shall not exceed 10 pages in length. Exhibits 
submitted in support

[[Page 259]]

of or in opposition to the motion shall not be deemed to be part of the 
brief for purposes of determining the length of the brief. When a party 
fails to file a brief in response to a motion, the Board may treat the 
motion as conceded. An oral hearing will not be held on a motion except 
on order by the Board.
    (b) Any request for reconsideration or modification of an order or 
decision issued on a motion must be filed within one month from the date 
thereof. A brief in response must be filed within 15 days from the date 
of service of the request.
    (c) Interlocutory motions, requests, and other matters not actually 
or potentially dispositive of a proceeding may be acted upon by a single 
Member of the Trademark Trial and Appeal Board or by an Attorney-
Examiner of the Board to whom authority so to act has been delegated.
    (d) When any party files a motion to dismiss, or a motion for 
judgment on the pleadings, or a motion for summary judgment, or any 
other motion which is potentially dispositive of a proceeding, the case 
will be suspended by the Trademark Trial and Appeal Board with respect 
to all matters not germane to the motion and no party should file any 
paper which is not germane to the motion except as otherwise specified 
in the Board's suspension order. If the case is not disposed of as a 
result of the motion, proceedings will be resumed pursuant to an order 
of the Board when the motion is decided.
    (e)(1) A motion for summary judgment may not be filed until 
notification of the proceeding has been sent to the parties by the 
Trademark Trial and Appeal Board. A motion for summary judgment, if 
filed, should be filed prior to the commencement of the first testimony 
period, as originally set or as reset, and the Board, in its discretion, 
may deny as untimely any motion for summary judgment filed thereafter. A 
motion under Rule 56(f) of the Federal Rules of Civil Procedure, if 
filed in response to a motion for summary judgment, shall be filed 
within 30 days from the date of service of the summary judgment motion. 
The time for filing a motion under Rule 56(f) will not be extended. If 
no motion under Rule 56(f) is filed, a brief in response to the motion 
for summary judgment shall be filed within 30 days from the date of 
service of the motion unless the time is extended by stipulation of the 
parties approved by the Board, or upon motion granted by the Board, or 
upon order of the Board. If a motion for an extension is denied, the 
time for responding to the motion for summary judgment may remain as 
specified under this section. The Board may, in its discretion, consider 
a reply brief. A reply brief, if filed, shall be filed within 15 days 
from the date of service of the brief in response to the motion. The 
time for filing a reply brief will not be extended. No further papers in 
support of or in opposition to a motion for summary judgment will be 
considered by the Board.
    (2) For purposes of summary judgment only, a discovery deposition, 
or an answer to an interrogatory, or a document or thing produced in 
response to a request for production, or an admission to a request for 
admission, will be considered by the Trademark Trial and Appeal Board if 
any party files, with the party's brief on the summary judgment motion, 
the deposition or any part thereof with any exhibit to the part that is 
filed, or a copy of the interrogatory and answer thereto with any 
exhibit made part of the answer, or a copy of the request for production 
and the documents or things produced in response thereto, or a copy of 
the request for admission and any exhibit thereto and the admission (or 
a statement that the party from which an admission was requested failed 
to respond thereto).
    (f) The Board will not hold any person in contempt, or award 
attorneys' fees or other expenses to any party.

[48 FR 23140, May 23, 1983, as amended at 54 FR 34900, Aug. 22, 1989; 63 
FR 48099, Sept. 9, 1998; 63 FR 52159, Sept. 30, 1998]



Sec. 2.128  Briefs at final hearing.

    (a)(1) The brief of the party in the position of plaintiff shall be 
due not later than sixty days after the date set for the close of 
rebuttal testimony. The brief of the party in the position of defendant, 
if filed, shall be due not later than thirty days after the due date of 
the first brief. A reply brief by the

[[Page 260]]

party in the position of plaintiff, if filed, shall be due not later 
than fifteen days after the due date of the defendant's brief.
    (2) When there is a counterclaim, or when proceedings have been 
consolidated and one party is in the position of plaintiff in one of the 
involved proceedings and in the position of defendant in another of the 
involved proceedings, or when there is an interference or a concurrent 
use registration proceeding involving more than two parties, the 
Trademark Trial and Appeal Board will set the due dates for the filing 
of the main brief, and the answering brief, and the rebuttal brief by 
the parties.
    (3) When a party in the position of plaintiff fails to file a main 
brief, an order may be issued allowing plaintiff until a set time, not 
less than fifteen days, in which to show cause why the Board should not 
treat such failure as a concession of the case. If plaintiff fails to 
file a response to the order, or files a response indicating that he has 
lost interest in the case, judgment may be entered against plaintiff.
    (b) Briefs shall be submitted in typewritten or printed form, double 
spaced, in at least pica or eleven-point type, on letter-size paper. 
Each brief shall contain an alphabetical index of cases cited therein. 
Without prior leave of the Trademark Trial and Appeal Board, a main 
brief on the case shall not exceed fifty-five pages in length in its 
entirety, including the table of contents, index of cases, description 
of the record, statement of the issues, recitation of facts, argument, 
and summary; and a reply brief shall not exceed twenty-five pages in its 
entirety. Three legible copies, on good quality paper, of each brief 
shall be filed.

[48 FR 23140, May 23, 1983; 48 FR 27226, June 14, 1983, as amended at 54 
FR 34900, Aug. 22, 1989]



Sec. 2.129  Oral argument; reconsideration.

    (a) If a party desires to have an oral argument at final hearing, 
the party shall request such argument by a separate notice filed not 
later than ten days after the due date for the filing of the last reply 
brief in the proceeding. Oral arguments will be heard by at least three 
Members of the Trademark Trial and Appeal Board at the time specified in 
the notice of hearing. If any party appears at the specified time, that 
party will be heard. If the Board is prevented from hearing the case at 
the specified time, a new hearing date will be set. Unless otherwise 
permitted, oral arguments in an inter partes case will be limited to 
thirty minutes for each party. A party in the position of plaintiff may 
reserve part of the time allowed for oral argument to present a rebuttal 
argument.
    (b) The date or time of a hearing may be reset, so far as is 
convenient and proper, to meet the wishes of the parties and their 
attorneys or other authorized representatives.
    (c) Any request for rehearing or reconsideration or modification of 
a decision issued after final hearing must be filed within one month 
from the date of the decision. A brief in response must be filed within 
fifteen days from the date of service of the request. The times 
specified may be extended by order of the Trademark Trial and Appeal 
Board on motion for good cause.
    (d) When a party to an inter partes proceeding before the Trademark 
Trial and Appeal Board cannot prevail without establishing constructive 
use pursuant to section 7(c) of the Act in an application under section 
1(b) of the Act, the Trademark Trial and Appeal Board will enter a 
judgment in favor of that party, subject to the party's establishment of 
constructive use. The time for filing an appeal or for commencing a 
civil action under section 21 of the Act shall run from the date of the 
entry of the judgment.

[48 FR 23141, May 23, 1983, as amended at 54 FR 29554, July 13, 1989; 54 
FR 34900, Aug. 22, 1989; 54 FR 37597, Sept. 11, 1989]



Sec. 2.130  New matter suggested by Examiner of Trademarks.

    If, during the pendency of an inter partes case, facts appear which, 
in the opinion of the Examiner of Trademarks, render the mark of any 
applicant involved unregistrable, the attention of the Trademark Trial 
and Appeal Board shall be called thereto. The Board may suspend the 
proceeding and refer the application to the Examiner of Trademarks for 
his determination of

[[Page 261]]

the question of registrability, following the final determination of 
which the application shall be returned to the Board for such further 
inter partes action as may be appropriate. The consideration of such 
facts by the Examiner of Trademarks shall be ex parte, but a copy of the 
action of the examiner will be furnished to the parties to the inter 
partes proceeding.



Sec. 2.131  Remand after decision in inter partes proceeding.

    If, during an inter partes proceeding, facts are disclosed which 
appear to render the mark of an applicant unregistrable, but such matter 
has not been tried under the pleadings as filed by the parties or as 
they might be deemed to be amended under Rule 15(b) of the Federal Rules 
of Civil Procedure to conform to the evidence, the Trademark Trial and 
Appeal Board, in lieu of determining the matter in the decision on the 
proceeding, may refer the application to the examiner for reexamination 
in the event the applicant ultimately prevails in the inter partes 
proceeding. Upon receiving the application, the examiner shall withhold 
registration pending reexamination of the application in the light of 
the reference by the Board. If, upon reexamination, the examiner finally 
refuses registration to the applicant, an appeal may be taken as 
provided by Secs. 2.141 and 2.142.

[48 FR 23141, May 23, 1983]



Sec. 2.132  Involuntary dismissal for failure to take testimony.

    (a) If the time for taking testimony by any party in the position of 
plaintiff has expired and that party has not taken testimony or offered 
any other evidence, any party in the position of defendant may, without 
waiving the right to offer evidence in the event the motion is denied, 
move for dismissal on the ground of the failure of the plaintiff to 
prosecute. The party in the position of plaintiff shall have fifteen 
days from the date of service of the motion to show cause why judgment 
should not be rendered against him. In the absence of a showing of good 
and sufficient cause, judgment may be rendered against the party in the 
position of plaintiff. If the motion is denied, testimony periods will 
be reset for the party in the position of defendant and for rebuttal.
    (b) If no evidence other than a copy or copies of Patent and 
Trademark Office records is offered by any party in the position of 
plaintiff, any party in the position of defendant may, without waiving 
the right to offer evidence in the event the motion is denied, move for 
dismissal on the ground that upon the law and the facts the party in the 
position of plaintiff has shown no right to relief. The party in the 
position of plaintiff shall have fifteen days from the date of service 
of the motion to file a brief in response to the motion. The Trademark 
Trial and Appeal Board may render judgment against the party in the 
position of plaintiff, or the Board may decline to render judgment until 
all of the evidence is in the record. If judgment is not rendered, 
testimony periods will be reset for the party in the position of 
defendant and for rebuttal.
    (c) A motion filed under paragraph (a) or (b) of this section must 
be filed before the opening of the testimony period of the moving party, 
except that the Trademark Trial and Appeal Board may in its discretion 
grant a motion under paragraph (a) even if the motion was filed after 
the opening of the testimony period of the moving party.

[48 FR 23141, May 23, 1983, as amended at 51 FR 28710, Aug. 11, 1986]



Sec. 2.133  Amendment of application or registration during proceedings.

    (a) An application involved in a proceeding may not be amended in 
substance nor may a registration be amended or disclaimed in part, 
except with the consent of the other party or parties and the approval 
of the Trademark Trial and Appeal Board, or except upon motion.
    (b) If, in an inter partes proceeding, the Trademark Trial and 
Appeal Board finds that a party whose application or registration is the 
subject of the proceeding is not entitled to registration in the absence 
of a specified restriction to the involved application or registration, 
the Trademark Trial and Appeal Board will allow the party time in which 
to file a request that the application or registration be amended to

[[Page 262]]

conform to the findings of the Trademark Trial and Appeal Board, failing 
which judgment will be entered against the party.
    (c) Geographic limitations will be considered and determined by the 
Trademark Trial and Appeal Board only in the context of a concurrent use 
registration proceeding.
    (d) A plaintiff's pleaded registration will not be restricted in the 
absence of a counterclaim to cancel the registration in whole or in 
part, except that a counterclaim need not be filed if the registration 
is the subject of another proceeding between the same parties or anyone 
in privity therewith.

[54 FR 37597, Sept. 11, 1989]



Sec. 2.134  Surrender or voluntary cancellation of registration.

    (a) After the commencement of a cancellation proceeding, if the 
respondent applies for cancellation of the involved registration under 
section 7(e) of the Act of 1946 without the written consent of every 
adverse party to the proceeding, judgment shall be entered against the 
respondent. The written consent of an adverse party may be signed by the 
adverse party or by the adverse party's attorney or other authorized 
representative.
    (b) After the commencement of a cancellation proceeding, if it comes 
to the attention of the Trademark Trial and Appeal Board that the 
respondent has permitted his involved registration to be cancelled under 
section 8 of the Act of 1946 or has failed to renew his involved 
registration under section 9 of the Act of 1946, an order may be issued 
allowing respondent until a set time, not less than fifteen days, in 
which to show cause why such cancellation or failure to renew should not 
be deemed to be the equivalent of a cancellation by request of 
respondent without the consent of the adverse party and should not 
result in entry of judgment against respondent as provided by paragraph 
(a) of this section. In the absence of a showing of good and sufficient 
cause, judgment may be entered against respondent as provided by 
paragraph (a) of this section.

[48 FR 23141, May 23, 1983, as amended at 54 FR 34900, Aug. 22, 1989; 63 
FR 48100, Sept. 9, 1998]



Sec. 2.135  Abandonment of application or mark.

    After the commencement of an opposition, concurrent use, or 
interference proceeding, if the applicant files a written abandonment of 
the application or of the mark without the written consent of every 
adverse party to the proceeding, judgment shall be entered against the 
applicant. The written consent of an adverse party may be signed by the 
adverse party or by the adverse party's attorney or other authorized 
representative.

[54 FR 34900, Aug. 22, 1989]



Sec. 2.136  Status of application on termination of proceeding.

    On termination of a proceeding involving an application, the 
application, if the judgment is not adverse, returns to the status it 
had before the institution of the proceedings. If the judgment is 
adverse to the applicant, the application stands refused without further 
action and all proceedings thereon are considered terminated.

                                 Appeals



Sec. 2.141  Ex parte appeals from the Examiner of Trademarks.

    Every applicant for the registration of a mark may, upon final 
refusal by the Examiner of Trademarks, appeal to the Trademark Trial and 
Appeal Board upon payment of the prescribed fee for each class in the 
application for which an appeal is taken. An appeal which includes 
insufficient fees to cover all classes in the application should specify 
the particular class or classes in which an appeal is taken. A second 
refusal on the same grounds may be considered as final by the applicant 
for purpose of appeal.

[41 FR 760, Jan. 5, 1976]



Sec. 2.142  Time and manner of ex parte appeals.

    (a) Any appeal filed under the provisions of Sec. 2.141 must be 
filed within six months from the date of final refusal or the date of 
the action from which the appeal is taken. An appeal is taken by filing 
a notice of appeal and paying the appeal fee.

[[Page 263]]

    (b)(1) The brief of appellant shall be filed within sixty days from 
the date of appeal. If the brief is not filed within the time allowed, 
the appeal may be dismissed. The examiner shall, within sixty days after 
the brief of appellant is sent to the examiner, file with the Trademark 
Trial and Appeal Board a written brief answering the brief of appellant 
and shall mail a copy of the brief to the appellant. The appellant may 
file a reply brief within twenty days from the date of mailing of the 
brief of the examiner.
    (2) Briefs shall be submitted in typewritten or printed form, double 
spaced, in at least pica or eleven-point type, on letter-size paper. 
Without prior leave of the Trademark Trial and Appeal Board, a brief 
shall not exceed twenty-five pages in length in its entirety.
    (c) All requirements made by the examiner and not the subject of 
appeal shall be complied with prior to the filing of an appeal.
    (d) The record in the application should be complete prior to the 
filing of an appeal. The Trademark Trial and Appeal Board will 
ordinarily not consider additional evidence filed with the Board by the 
appellant or by the examiner after the appeal is filed. After an appeal 
is filed, if the appellant or the examiner desires to introduce 
additional evidence, the appellant or the examiner may request the Board 
to suspend the appeal and to remand the application for further 
examination.
    (e)(1) If the appellant desires an oral hearing, a request therefor 
should be made by a separate notice filed not later than ten days after 
the due date for a reply brief. Oral argument will be heard by at least 
three Members of the Trademark Trial and Appeal Board at the time 
specified in the notice of hearing, which may be reset if the Board is 
prevented from hearing the argument at the specified time or, so far as 
is convenient and proper, to meet the wish of the appellant or his 
attorney or other authorized representative.
    (2) If the appellant requests an oral argument, the examiner who 
issued the refusal of registration or the requirement from which the 
appeal is taken, or in lieu thereof another examiner from the same 
examining division as designated by the supervisory attorney thereof, 
shall present an oral argument. If no request for an oral hearing is 
made by the appellant, the appeal will be decided on the record and 
briefs.
    (3) Oral argument will be limited to twenty minutes by the appellant 
and ten minutes by the examiner. The appellant may reserve part of the 
time allowed for oral argument to present a rebuttal argument.
    (f)(1) If, during an appeal from a refusal of registration, it 
appears to the Trademark Trial and Appeal Board that an issue not 
previously raised may render the mark of the appellant unregistrable, 
the Board may suspend the appeal and remand the application to the 
examiner for further examination to be completed within thirty days.
    (2) If the further examination does not result in an additional 
ground for refusal of registration, the examiner shall promptly return 
the application to the Board, for resumption of the appeal, with a 
written statement that further examination did not result in an 
additional ground for refusal of registration.
    (3) If the further examination does result in an additional ground 
for refusal of registration, the examiner and appellant shall proceed as 
provided by Secs. 2.61, 2.62, 2.63 and 2.64. If the ground for refusal 
is made final, the examiner shall return the application to the Board, 
which shall thereupon issue an order allowing the appellant sixty days 
from the date of the order to file a supplemental brief limited to the 
additional ground for the refusal of registration. If the supplemental 
brief is not filed by the appellant within the time allowed, the appeal 
may be dismissed.
    (4) If the supplemental brief of the appellant is filed, the 
examiner shall, within sixty days after the supplemental brief of the 
appellant is sent to the examiner, file with the Board a written brief 
answering the supplemental brief of appellant and shall mail a copy of 
the brief to the appellant. The appellant may file a reply brief within 
twenty days from the date of mailing of the brief of the examiner.
    (5) If an oral hearing on the appeal had been requested prior to the 
remand of the application but not yet held, an

[[Page 264]]

oral hearing will be set and heard as provided in paragraph (e) of this 
section. If an oral hearing had been held prior to the remand or had not 
been previously requested by the appellant, an oral hearing may be 
requested by the appellant by a separate notice filed not later than ten 
days after the due date for a reply brief on the additional ground for 
refusal of registration. If the appellant files a request for an oral 
hearing, one will be set and heard as provided in paragraph (e) of this 
section.
    (6) If, during an appeal from a refusal of registration, it appears 
to the examiner that an issue not involved in the appeal may render the 
mark of the appellant unregistrable, the examiner may, by written 
request, ask the Board to suspend the appeal and to remand the 
application to the examiner for further examination. If the request is 
granted, the examiner and appellant shall proceed as provided by 
Secs. 2.61, 2.62, 2.63 and 2.64. After the additional ground for refusal 
of registration has been withdrawn or made final, the examiner shall 
return the application to the Board, which shall resume proceedings in 
the appeal and take further appropriate action with respect thereto.
    (g) An application which has been considered and decided on appeal 
will not be reopened except for the entry of a disclaimer under section 
6 of the Act of 1946 or upon order of the Commissioner, but a petition 
to the Commissioner to reopen an application will be considered only 
upon a showing of sufficient cause for consideration of any matter not 
already adjudicated.

[48 FR 23141, May 23, 1983, as amended at 54 FR 34901, Aug. 22, 1989]



Sec. 2.144  Reconsideration of decision on ex parte appeal.

    Any request for rehearing or reconsideration, or modification of the 
decision, must be filed within one month from the date of the decision. 
Such time may be extended by the Trademark Trial and Appeal Board upon a 
showing of sufficient cause.

[54 FR 29554, July 13, 1989]



Sec. 2.145  Appeal to court and civil action.

    (a) Appeal to U.S. Court of Appeals for the Federal Circuit. An 
applicant for registration, or any party to an interference, opposition, 
or cancellation proceeding or any party to an application to register as 
a concurrent user, hereinafter referred to as inter partes proceedings, 
who is dissatisfied with the decision of the Trademark Trial and Appeal 
Board and any registrant who has filed an affidavit or declaration under 
section 8 of the Act or who has filed an application for renewal and is 
dissatisfied with the decision of the Commissioner (Secs. 2.165, 2.184), 
may appeal to the U.S. Court of Appeals for the Federal Circuit. The 
appellant must take the following steps in such an appeal:
    (1) In the Patent and Trademark Office give written notice of appeal 
to the Commissioner (see paragraphs (b) and (d) of this section);
    (2) In the court, file a copy of the notice of appeal and pay the 
fee for appeal, as provided by the rules of the Court.
    (b) Notice of appeal. (1) When an appeal is taken to the U.S. Court 
of Appeals for the Federal Circuit, the appellant shall give notice 
thereof in writing to the Commissioner, which notice shall be filed in 
the Patent and Trademark Office, within the time specified in paragraph 
(d) of this section. The notice shall specify the party or parties 
taking the appeal and shall designate the decision or part thereof 
appealed from.
    (2) In inter partes proceedings, the notice must be served as 
provided in Sec. 2.119.
    (3) The notice, if mailed to the Office, shall be addressed as 
follows: Box 8, Commissioner of Patents and Trademarks, Washington, DC 
20231.
    (c) Civil action. (1) Any person who may appeal to the U.S. Court of 
Appeals for the Federal Circuit (paragraph (a) of this section), may 
have remedy by civil action under section 21(b) of the Act. Such civil 
action must be commenced within the time specified in paragraph (d) of 
this section.
    (2) Any applicant or registrant in an ex parte case who takes an 
appeal to

[[Page 265]]

the U.S. Court of Appeals for the Federal Circuit waives any right to 
proceed under section 21(b) of the Act.
    (3) Any adverse party to an appeal taken to the U.S. Court of 
Appeals for the Federal Circuit by a defeated party in an inter partes 
proceeding may file a notice with the Commissioner within twenty days 
after the filing of the defeated party's notice of appeal to the court 
(paragraph (b) of this section), electing to have all further 
proceedings conducted as provided in section 21(b) of the Act. The 
notice of election must be served as provided in Sec. 2.119.
    (4) A party to a proceeding before the Trademark Trial and Appeal 
Board which commences a civil action, pursuant to section 21(b) of the 
Act, seeking review of a decision of the Board should file written 
notice thereof in the Patent and Trademark Office, addressed to the 
Board, within one month after the expiration of the time for appeal or 
civil action, in order to avoid premature termination of the Board 
proceeding.
    (d) Time for appeal or civil action. (1) The time for filing the 
notice of appeal to the U.S. Court of Appeals for the Federal Circuit 
(paragraph (b) of this section), or for commencing a civil action 
(paragraph (c) of this section), is two months from the date of the 
decision of the Trademark Trial and Appeal Board or the Commissioner, as 
the case may be. If a request for rehearing or reconsideration or 
modification of the decision is filed within the time specified in 
Sec. 2.127(b), 2.129(c) or 2.144, or within any extension of time 
granted thereunder, the time for filing an appeal or commencing a civil 
action shall expire two months after action on the request. In inter 
partes cases, the time for filing a cross-action or a notice of a cross-
appeal expires
    (i) 14 days after service of the notice of appeal or the summons and 
complaint; or
    (ii) Two months from the date of the decision of the Trademark Trial 
and Appeal Board or the Commissioner, whichever is later.
    (2) The times specified in this section in days are calendar days. 
The times specified herein in months are calendar months except that one 
day shall be added to any two-month period which includes February 28. 
If the last day of time specified for an appeal, or commencing a civil 
action falls on a Saturday, Sunday or Federal holiday in the District of 
Columbia, the time is extended to the next day which is neither a 
Saturday, Sunday nor a Federal holiday.
    (3) If a party to an inter partes proceeding has taken an appeal to 
the U.S. Court of Appeals for the Federal Circuit and an adverse party 
has filed notice under section 21(a)(1) of the Act electing to have all 
further proceedings conducted under section 21(b) of the Act, the time 
for filing a civil action thereafter is specified in section 21(a)(1) of 
the Act. The time for filing a cross-action expires 14 days after 
service of the summons and complaint.
    (e) Extensions of time to commence judicial review. The Commissioner 
may extend the time for filing an appeal or commencing a civil action 
(1) for good cause shown if requested in writing before the expiration 
of the period for filing an appeal or commencing a civil action, or (2) 
upon written request after the expiration of the period for filing an 
appeal or commencing a civil action upon a showing that the failure to 
act was the result of excusable neglect.

[47 FR 47382, Oct. 26, 1982, as amended at 53 FR 16414, May 9, 1988; 54 
FR 29554, July 13, 1989; 54 FR 34901, Aug. 22, 1989; 58 FR 54503, Oct. 
22, 1993]

                Petitions and Actions by the Commissioner



Sec. 2.146  Petitions to the Commissioner.

    (a) Petition may be taken to the Commissioner:
    (1) From any repeated or final formal requirement of the examiner in 
the ex parte prosecution of an application if permitted by Sec. 2.63(b);
    (2) In any case for which the Act of 1946, or title 35 of the United 
States Code, or this part of title 37 of the Code of Federal Regulations 
specifies that the matter is to be determined directly or reviewed by 
the Commissioner;
    (3) To invoke the supervisory authority of the Commissioner in 
appropriate circumstances;
    (4) In any case not specifically defined and provided for by this 
part of

[[Page 266]]

title 37 of the Code of Federal Regulations;
    (5) In an extraordinary situation, when justice requires and no 
other party is injured thereby, to request a suspension or waiver of any 
requirement of the rules not being a requirement of the Act of 1946.
    (b) Questions of substance arising during the ex parte prosecution 
of applications, including, but not limited to, questions arising under 
sections 2, 3, 4, 5, 6 and 23 of the Act of 1946, are not considered to 
be appropriate subject matter for petitions to the Commissioner.
    (c) Every petition to the Commissioner shall include a statement of 
the facts relevant to the petition, the points to be reviewed, the 
action or relief that is requested, and the requisite fee (see 
Sec. 2.6). Any brief in support of the petition shall be embodied in or 
accompany the petition. When facts are to be proved in ex parte cases 
(as in a petition to revive an abandoned application), the proof in the 
form of affidavits or declarations in accordance with Sec. 2.20, and any 
exhibits, shall accompany the petition.
    (d) A petition on any matter not otherwise specifically provided for 
shall be filed within sixty days from the date of mailing of the action 
from which relief is requested.
    (e)(1) A petition from the grant or denial of a request for an 
extension of time to file a notice of opposition shall be filed within 
fifteen days from the date of mailing of the grant or denial of the 
request. A petition from the grant of a request shall be served on the 
attorney or other authorized representative of the potential opposer, if 
any, or on the potential opposer. A petition from the denial of a 
request shall be served on the attorney or other authorized 
representative of the applicant, if any, or on the applicant. Proof of 
service of the petition shall be made as provided by Sec. 2.119(a). The 
potential opposer or the applicant, as the case may be, may file a 
response within fifteen days from the date of service of the petition 
and shall serve a copy of the response on the petitioner, with proof of 
service as provided by Sec. 2.119(a). No further paper relating to the 
petition shall be filed.
    (2) A petition from an interlocutory order of the Trademark Trial 
and Appeal Board shall be filed within thirty days after the date of 
mailing of the order from which relief is requested. Any brief in 
response to the petition shall be filed, with any supporting exhibits, 
within fifteen days from the date of service of the petition. Petitions 
and responses to petitions, and any papers accompanying a petition or 
response, under this subsection shall be served on every adverse party 
pursuant to Sec. 2.119(a).
    (f) An oral hearing will not be held on a petition except when 
considered necessary by the Commissioner.
    (g) The mere filing of a petition to the Commissioner will not act 
as a stay in any appeal or inter partes proceeding that is pending 
before the Trademark Trial and Appeal Board nor stay the period for 
replying to an Office action in an application except when a stay is 
specifically requested and is granted or when Secs. 2.63(b) and 2.65 are 
applicable to an ex parte application.
    (h) Authority to act on petitions, or on any petition, may be 
delegated by the Commissioner.

[48 FR 23142, May 23, 1983; 48 FR 27226, June 14, 1983, as amended at 63 
FR 48100, Sept. 9, 1998]



Sec. 2.147  [Reserved]



Sec. 2.148  Commissioner may suspend certain rules.

    In an extraordinary situation, when justice requires and no other 
party is injured thereby, any requirement of the rules in this part not 
being a requirement of the statute may be suspended or waived by the 
Commissioner.

                               Certificate



Sec. 2.151  Certificate.

    When the requirements of the law and of the rules have been complied 
with, and the Patent and Trademark Office has adjudged a mark 
registrable, a certificate will be issued to the effect that the 
applicant has complied with the law and that he is entitled to 
registration of his mark on the Principal

[[Page 267]]

Register or on the Supplemental Register, as the case may be. The 
certificate will state the date on which the application for 
registration was filed in the Patent and Trademark Office, the act under 
which the mark is registered, the date of issue and the number of the 
certificate. Attached to the certificate and forming a part thereof will 
be a reproduction of the mark and pertinent data from the application. A 
notice of the affidavit or declaration requirements of section 8(a) of 
the Act (Sec. 2.161) will be printed on the certificate.

             Publication of Marks Registered Under 1905 Act

    Authority: Secs. 2.153 to 2.156 also issued under sec. 12, 60 Stat. 
432; 15 U.S.C. 1062.



Sec. 2.153  Publication requirements.

    A registrant of a mark registered under the provisions of the Acts 
of 1881 or 1905 may at any time prior to the expiration of the period 
for which the registration was issued or renewed, upon the payment of 
the prescribed fee, file an affidavit or declaration in accordance with 
Sec. 2.20 setting forth those goods stated in the registration on which 
said mark is in use in commerce, specifying the nature of such commerce, 
and stating that the registrant claims the benefits of the Trademark Act 
of 1946.

[31 FR 5262, Apr. 1, 1966]



Sec. 2.154  Publication in Official Gazette.

    A notice of the claim of benefits under the Act of 1946 and a 
reproduction of the mark will then be published in the Official Gazette 
as soon as practicable. The published mark will retain its original 
registration number.



Sec. 2.155  Notice of publication.

    A notice of such publication of the mark and of the requirement for 
the affidavit or declaration specified in section 8(b) of the Act 
(Sec. 2.161) will be sent to the registrant.



Sec. 2.156  Not subject to opposition; subject to cancellation.

    The published mark is not subject to opposition on such publication 
in the Official Gazette, but is subject to petitions to cancel as 
specified in Sec. 2.111 and to cancellation for failure to file the 
affidavit or declaration specified in Sec. 2.161.

           Reregistration of Marks Registered Under Prior Acts



Sec. 2.158  Reregistration of marks registered under Acts of 1881, 1905, and 1920.

    Trademarks registered under the Act of 1881, the Act of 1905 or the 
Act of 1920 may be reregistered under the Act of 1946, either on the 
Principal Register, if eligible, or on the Supplemental Register, but a 
new complete application for registration must be filed complying with 
the rules relating thereto, and such application will be subject to 
examination and other proceedings in the same manner as other 
applications filed under the Act of 1946. See Sec. 2.26 for use of old 
drawing.

 Cancellation for Failure to File Affidavit or Declaration During Sixth 
                                  Year

    Authority: Secs. 2.161 to 2.165 also issued under sec. 8, 60 Stat. 
431; 15 U.S.C. 1058.



Sec. 2.161  Cancellation for failure to file affidavit or declaration during sixth year.

    Any registration under the provisions of the Act and any 
registration published under the provisions of section 12(c) of the Act 
(Sec. 2.153) shall be cancelled as to any goods or services recited in 
the registration at the end of six years following the date of 
registration or the date of such publication, unless within one year 
next preceding the expiration of such six years the registrant shall 
file in the Patent and Trademark Office an affidavit or declaration in 
accordance with Sec. 2.20 setting forth those goods or services recited 
in the registration on or in connection with which the mark is in use in 
commerce and attaching a specimen or facsimile showing current use of 
the mark, or an affidavit or declaration under Sec. 2.20 showing that 
its nonuse as to any goods or services recited in the registration is 
due to special circumstances which excuse such nonuse and is not due to 
any intention to

[[Page 268]]

abandon the mark as to those goods or services.

[54 FR 37597, Sept. 11, 1989]



Sec. 2.162  Requirements for affidavit or declaration during sixth year.

    The affidavit or declaration required by Sec. 2.161 must:
    (a) Be executed by the registrant after expiration of the five-year 
period following the date of registration or of publication under 
section 12(c) of the Act;
    (b) Be filed in the Patent and Trademark Office before the 
expiration of the sixth year following the date of registration or of 
publication under section 12(c) of the Act;
    (c) Identify the certificate of registration by the registration 
number and date of registration;
    (d) Include the required fee for each class to which the affidavit 
or declaration pertains in the registration. If no fee, or a fee 
insufficient to cover at least one class, is filed before the expiration 
of the sixth year following the date of registration or of publication 
under Section 12(c) of the Act, the affidavit or declaration will not be 
refused if the required fee(s) (See Sec. 2.6) are filed in the Patent 
and Trademark Office within the time limit set forth in the notification 
of this defect by the Office. If insufficient fees are included to cover 
all classes in the registration, the particular class or classes to 
which the affidavit or declaration pertains should be specified.
    (e) State that the registered mark is in use in commerce, list the 
goods or services recited in the registration on or in connection with 
which the mark is in use in commerce, and specify the nature of such 
commerce (except under paragraph (f) of this section). The statement 
must be accompanied by a specimen or facsimile, for each class of goods 
or services, showing current use of the mark. If the specimen or 
facsimile is found to be deficient, a substitute specimen or facsimile 
may be submitted and considered even though filed after the sixth year 
has expired, provided it is supported by an affidavit or declaration 
pursuant to Sec. 2.20 verifying that the specimen or facsimile was in 
use in commerce prior to the expiration of the sixth year;
    (f) If the registered mark is not in use in commerce on or in 
connection with the goods or services recited in the registration, 
recite facts to show that nonuse as to those goods or services is due to 
special circumstances which excuse such nonuse and is not due to any 
intention to abandon the mark as to those goods or services. If the 
facts recited are found insufficient, further evidence or explanation 
may be submitted and considered even though filed after the sixth year 
has expired; and
    (g) Contain the statement of use in commerce or statement as to 
nonuse and appropriate specimen or facsimile, as required in paragraphs 
(e) and (f) of this section, for each class to which the affidavit or 
declaration pertains in this registration.



(Secs. 8 and 9, Pub. L. 97-247 (96 Stat. 320); 35 U.S.C. 6; 15 U.S.C. 
1113, 1123)

[41 FR 761, Jan. 5, 1976, as amended at 47 FR 41282, Sept. 17, 1982; 48 
FR 3977, Jan. 28, 1983; 54 FR 37597, Sept. 11, 1989]



Sec. 2.163  Notice to registrant.

    If no affidavit or declaration is filed within a reasonable time 
prior to expiration of the sixth year, the registrant may be notified 
that the registration will be cancelled by the Commissioner at the end 
of such sixth year unless the owner files in the Patent and Trademark 
Office the affidavit or declaration of use or excusable nonuse required 
by section 8. Failure to notify the registrant does not, however, 
relieve the registrant of the responsibility of filing the affidavit or 
declaration within the period required by statute.



Sec. 2.164  Acknowledgment of receipt of affidavit or declaration.

    The registrant will be notified by the Examiner of Trademarks of the 
receipt of the affidavit or declaration and, if satisfactory, of its 
acceptance.



Sec. 2.165  Reconsideration of affidavit or declaration.

    (a)(1) If the affidavit or declaration filed pursuant to Sec. 2.162 
is insufficient or defective, the affidavit or declaration will be 
refused and the registrant

[[Page 269]]

will be notified of the reason. Reconsideration of the refusal may be 
requested within six months from the date of the mailing of the action. 
The request for reconsideration must state the grounds for the request. 
A supplemental or substitute affidavit or declaration required by 
section 8 of the Act of 1946 cannot be considered unless it is filed 
before the expiration of six years from the date of the registration or 
from the date of publication under section 12(c) of the Act.
    (2) A request for reconsideration shall be a condition precedent to 
a petition to the Commissioner to review the refusal of the affidavit or 
declaration unless the first action refusing the affidavit or 
declaration directs the registrant to petition the Commissioner for 
relief, in which event the petition must be filed within six months from 
the date of mailing of the action.
    (b) If the refusal of the affidavit or declaration is adhered to, 
the registrant may petition the Commissioner to review the action under 
Sec. 2.146(a)(2). The petition to the Commissioner requesting review of 
the action adhering to the refusal of the affidavit or declaration must 
be filed within six months from the date of mailing of the action which 
denied reconsideration.
    (c) The decision of the Commissioner on the petition will constitute 
the final action of the Patent and Trademark Office. If there is no 
petition to the Commissoner, the Commissioner will notify the registrant 
of the refusal of the affidavit or declaration after the expiration of 
six years from the date of registration or from the date of publication 
under section 12(c) of the Act of 1946, and such notice will constitute 
the final action of the Office.
    (d) A petition to the Commissioner for review of the action shall be 
a condition precedent to an appeal to or action for review by any court.

[48 FR 23143, May 23, 1983, as amended at 58 FR 54503, Oct. 22, 1993; 61 
FR 56448, Nov. 1, 1996]



Sec. 2.166  Time of cancellation.

    If no affidavit or declaration is filed within the sixth year 
following registration or publication under section 12(c) of the Act, 
the registration will be cancelled forthwith by the Commissioner. If the 
affidavit or declaration is filed but is refused, cancellation of the 
registration will be withheld pending further proceedings.

                Affidavit or Declaration Under Section 15



Sec. 2.167  Affidavit or declaration under section 15.

    The affidavit or declaration in accordance with Sec. 2.20 provided 
by section 15 of the Act for acquiring incontestability for a mark 
registered on the Principal Register or a mark registered under the Act 
of 1881 or 1905 and published under section 12(c) of the Act 
(Sec. 2.153) must:
    (a) Be signed by the registrant;
    (b) Identify the certificate of registration by the certificate 
number and date of registration;
    (c) Recite the goods or services stated in the registration on or in 
connection with which the mark has been in continuous use in commerce 
for a period of five years subsequent to the date of registration or 
date of publication under section 12(c) of the Act, and is still in use 
in commerce, specifying the nature of such commerce;
    (d) Specify that there has been no final decision adverse to 
registrant's claim of ownership of such mark for such goods or services, 
or to registrant's right to register the same or to keep the same on the 
register;
    (e) Specify that there is no proceeding involving said rights 
pending in the Patent and Trademark Office or in a court and not finally 
disposed of;
    (f) Be filed within one year after the expiration of any five-year 
period of continuous use following registration or publication under 
section 12(c).

The registrant will be notified of the receipt of the affidavit or 
declaration.
    (g) Include the required fee for each class to which the affidavit 
or declaration pertains in the registration. If no fee, or a fee 
insufficient to cover at least one class, is filed at an appropriate 
time, the affidavit or declaration will not be refused if the required 
fee(s) (see Sec. 2.6) are filed in the Patent and Trademark Office 
within the time limit set forth in the notification of this defect by 
the Office. If insufficient fees are included to cover all classes in

[[Page 270]]

the registration, the particular class or classes to which the affidavit 
or declaration pertains should be specified.


(Sec. 15, 60 Stat. 433; 15 U.S.C. 1065; 35 U.S.C. 6; 15 U.S.C. 1113, 
1123)

[30 FR 13193, Oct. 16, 1965, as amended at 47 FR 41282, Sept. 17, 1982]



Sec. 2.168  Combined with other affidavits or declarations.

    (a) The affidavit or declaration filed under section 15 of the Act 
may also be used as the affidavit or declaration required by section 8, 
provided it also complies with the requirements and is filed within the 
time limit specified in Secs. 2.161 and 2.162.
    (b) In appropriate circumstances the affidavit or declaration filed 
under section 15 of the Act may be combined with the affidavit or 
declaration required for renewal of a registration (see Sec. 2.183).

                 Correction, Disclaimer, Surrender, Etc.



Sec. 2.171  New certificate on change of ownership.

    In case of change of ownership of a registered mark, upon request of 
the assignee, a new certificate of registration may be issued in the 
name of the assignee for the unexpired part of the original period. The 
assignment must be recorded in the Patent and Trademark Office, and the 
request for the new certificate must be signed by the assignee and 
accompanied by the required fee. The original certificate of 
registration, if available, must also be submitted.


(Sec. 7, 60 Stat. 430 as amended; 15 U.S.C. 1057)

[31 FR 5262, Apr. 1, 1966]



Sec. 2.172  Surrender for cancellation.

    Upon application by the registrant, the Commissioner may permit any 
registration to be surrendered for cancellation. Application for such 
action must be signed by the registrant and must be accompanied by the 
original certificate of registration, if not lost or destroyed. When 
there is more than one class in a registration, one or more entire class 
but less than the total number of classes may be surrendered as to the 
specified class or classes. Deletion of less than all of the goods or 
services in a single class constitutes amendment of registration as to 
that class (see Sec. 2.173).


(Sec. 7, 60 Stat. 430 as amended; 15 U.S.C. 1057)

[41 FR 761, Jan. 5, 1976]



Sec. 2.173  Amendment and disclaimer in part.

    (a) Upon application by the registrant, the Commissioner may permit 
any registration to be amended or any registered mark to be disclaimed 
in part. Application for such action must specify the amendment or 
disclaimer and be signed by the registrant and verified or include a 
declaration in accordance with Sec. 2.20, and must be accompanied by the 
required fee. If the amendment involves a change in the mark, new 
specimens showing the mark as used in connection with the goods or 
services, and a new drawing of the amended mark must be submitted. The 
certificate of registration or, if said certificate is lost or 
destroyed, a certified copy thereof, must also be submitted in order 
that the Commissioner may make appropriate entry thereon and in the 
records of the Office. The registration when so amended must still 
contain registrable matter and the mark as amended must be registrable 
as a whole, and such amendment or disclaimer must not involve such 
changes in the registration as to alter materially the character of the 
mark.
    (b) No amendment in the identification of goods or services in a 
registration will be permitted except to restrict the identification or 
otherwise to change it in ways that would not require republication of 
the mark. No amendment seeking the elimination of a disclaimer will be 
permitted.
    (c) A printed copy of the amendment or disclaimer shall be attached 
to each printed copy of the registration.


(Sec. 7, 60 Stat. 430, as amended; 15 U.S.C. 1057)

[30 FR 13193, Oct. 16, 1965, as amended at 31 FR 5262, Apr. 1, 1966; 48 
FR 23143, May 23, 1983]

[[Page 271]]



Sec. 2.174  Correction of Office mistake.

    Whenever a material mistake in a registration, incurred through the 
fault of the Patent and Trademark Office, is clearly disclosed by the 
records of the Office, a certificate stating the fact and nature of such 
mistake, signed by the Commissioner or by an employee designated by the 
Commissioner and sealed with the seal of the Patent and Trademark 
Office, shall be issued without charge and recorded, and a printed copy 
thereof shall be attached to each printed copy of the registration 
certificate. Such corrected certificate shall thereafter have the same 
effect as if the same had been originally issued in such corrected form, 
or in the discretion of the Commissioner a new certificate of 
registration may be issued without charge. The certificate of 
registration or, if said certificate is lost or destroyed, a certified 
copy thereof, must be submitted in order that the Commissioner may make 
appropriate entry thereon.


(Sec. 7, 60 Stat. 430, as amended; 15 U.S.C. 1057)



Sec. 2.175  Correction of mistake by registrant.

    (a) Whenever a mistake has been made in a registration and a showing 
has been made that such mistake occurred in good faith through the fault 
of the applicant, the Commissioner may issue a certificate of 
correction, or in his discretion, a new certificate upon the payment of 
the required fee, provided that the correction does not involve such 
changes in the registration as to require republication of the mark.
    (b) Application for such action must specify the mistake for which 
correction is sought and the manner in which it arose, show that it 
occurred in good faith, be signed by the applicant and verified or 
include a declaration in accordance with Sec. 2.20, and be accompanied 
by the required fee. The certificate of registration or, if said 
certificate is lost or destroyed, a certified copy thereof, must also be 
submitted in order that the Commissioner may make appropriate entry 
thereon.
    (c) A printed copy of the certificate of correction shall be 
attached to each printed copy of the registration.


(Sec. 7, 60 Stat. 430, as amended; 15 U.S.C. 1057)

[30 FR 13193, Oct. 16, 1965, as amended at 31 FR 5262, Apr. 1, 1966]



Sec. 2.176  Consideration of above matters.

    The matters in Secs. 2.171 to 2.175 will be considered in the first 
instance by the Examiner of Trademarks. If the action of the Examiner of 
Trademarks is adverse, registrant may request the Commissioner to review 
the action under Sec. 2.146. If response to an adverse action of the 
Examiner is not made by the registrant within six months, the matter 
will be considered abandoned.

                            Term and Renewal

    Authority: Secs. 2.181 to 2.184 also issued under sec. 9, 60 Stat. 
431; 15 U.S.C. 1059.



Sec. 2.181  Term of original registrations and renewals.

    (a)(1) Registrations issued or renewed under the Act, prior to 
November 16, 1989, whether on the Principal Register or on the 
Supplemental Register, remain in force for twenty years from their date 
of issue or expiration, and may be renewed for periods of ten years from 
the expiring period unless previously cancelled or surrendered.
    (2) Registrations issued or renewed under the Act on or after 
November 16, 1989, whether on the Principal Register or on the 
Supplemental Register, remain in force for ten years from their date of 
issue or expiration, and may be renewed for periods of ten years from 
the expiring period unless previously cancelled or surrendered.
    (b) Registrations issued under the Acts of 1905 and 1881 remain in 
force for their unexpired terms and may be renewed in the same manner as 
registrations under the Act of 1946.
    (c) Registrations issued under the Act of 1920 cannot be renewed 
unless renewal is required to support foreign registrations and in such 
case may be renewed on the Supplemental Register

[[Page 272]]

in the same manner as registrations under the Act of 1946.

[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37597, Sept. 11, 1989]



Sec. 2.182  Period within which application for renewal must be filed.

    An application for renewal may be filed by the registrant at any 
time within six months before the expiration of the period for which the 
certificate of registration was issued or renewed, or it may be filed 
within three months after such expiration on payment of the additional 
fee required.



Sec. 2.183  Requirements of application for renewal.

    (a) The application for renewal must include a statement which is 
verified or which includes a declaration in accordance with Sec. 2.20 by 
the registrant setting forth the goods or services recited in each class 
for which renewal is sought in the registration on or in connection with 
which the mark is still in use in commerce, specifying the nature of 
such commerce (except under paragraph (c) of this section). This 
statement must be executed not more than six months before the 
expiration of the registration and must:
    (1) Be accompanied by a specimen or facsimile specimen for each 
class for which renewal is sought in the registration showing current 
use of the mark.
    (2) Include the required fee for each class for which renewal is 
sought in the registration, and an additional fee for each class in the 
case of a delayed application for renewal. If the application for 
renewal includes insufficient fees to cover all classes in the 
registration, the particular class or classes for which renewal is 
sought should be specified.
    (b) The declaration or verified statement, specimen or facsimile 
specimen and the fee for each class for which renewal is sought in the 
registration must be filed within the period prescribed for applying for 
renewal. If defective or insufficient, they cannot be completed after 
the period for applying for renewal has passed; if completed after the 
initial six month period has expired but before the expiration of the 
three month delay period, the application can be considered only as a 
delayed application for renewal.
    (c) If the mark is not in use in commerce at the time of filing of 
the declaration or verified statement as to any class for which renewal 
is sought, facts must be recited to show that nonuse is due to special 
circumstances which excuse such nonuse and is not due to any intention 
to abandon the mark. There must be a recitation of facts as to nonuse 
for each class for which renewal is sought or it must be clear that the 
facts recited apply to each class sought to be renewed. If the facts 
recited require amplification, or explanation, in order to show 
excusable nonuse, further evidence may be submitted and considered even 
though filed after the period for applying for renewal has passed.
    (d) If the applicant is not domiciled in the United States, the 
application for renewal must include the designation of some person 
resident in the United States on whom may be served notices or process 
in proceedings affecting the mark.
    (e) If the mark is registered under the Act of 1920, the application 
for renewal must include a showing which is verified or which includes a 
declaration in accordance with Sec. 2.20 that renewal is required to 
support foreign registrations.

[30 FR 13193, Oct. 16, 1965, as amended at 31 FR 5262, Apr. 1, 1966; 41 
FR 761, Jan. 5, 1976]



Sec. 2.184  Refusal of renewal.

    (a) If the application for renewal is incomplete or defective, the 
renewal will be refused. The application may be completed or amended in 
response to a refusal, subject to the provisions of Sec. 2.183. If a 
response to a refusal of renewal is not filed within six months from the 
date of mailing of the action, the application for renewal will be 
considered abandoned. A request to reconsider a refusal of renewal shall 
be a condition precedent to a petition to the Commissioner to review the 
refusal of renewal.
    (b) If the refusal of renewal is adhered to, the registrant may 
petition the Commissioner to review the action under Sec. 2.146(a)(2). 
The petition to the Commissioner requesting review of the

[[Page 273]]

action adhering to the refusal of the renewal must be filed within six 
months from the date of mailing of the action which adhered to the 
refusal. If a timely petition to the Commissioner is not filed, the 
application for renewal will be considered abandoned.
    (c) The decision of the Commissioner on the petition will constitute 
the final action of the Patent and Trademark Office.
    (d) A petition to the Commissioner for review of the action shall be 
a condition precedent to an appeal to or action for review by any court.

[48 FR 23143, May 23, 1983]



Sec. 2.185--2.187  [Reserved]



PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE--Table of Contents




    Editorial Note: Part 3 pertaining to both patents and trademarks is 
placed following part 1. It appears on page 180 of this volume.



PART 4 [RESERVED]






PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES--Table of Contents




    Editorial Note: Part 5 is placed in a separate grouping of parts 
pertaining to patents. It appears on page 184 of this volume.



PART 6--CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT--Table of Contents




Sec.
6.1  International schedule of classes of goods and services.
6.2  Prior U.S. schedule of classes of goods and services.
6.3  Schedule for certification marks.
6.4  Schedule for collective membership marks.

    Authority: Secs. 30, 41, 60 Stat. 436, 440; 15 U.S.C. 1112, 1123.



Sec. 6.1  International schedule of classes of goods and services.

                                  Goods

    1. Chemical products used in industry, science, photography, 
agriculture, horticulture, forestry; artificial and synthetic resins; 
plastics in the form of powders, liquids or pastes, for industrial use; 
manures (natural and artificial); fire extinguishing compositions; 
tempering substances and chemical preparations for soldering; chemical 
substances for preserving foodstuffs; tanning substances; adhesive 
substances used in industry.
    2. Paints, varnishes, lacquers; preservatives against rust and 
against deterioration of wood; colouring matters, dyestuffs; mordants; 
natural resins; metals in foil and powder form for painters and 
decorators.
    3. Bleaching preparations and other substances for laundry use; 
cleaning, polishing, scouring and abrasive preparations; soaps; 
perfumery, essential oils, cosmetics, hair lotions; dentifrices.
    4. Industrial oils and greases (other than oils and fats and 
essential oils); lubricants; dust laying and absorbing compositions; 
fuels (including motor spirit) and illuminants; candles, tapers, night 
lights and wicks.
    5. Pharmaceutical, veterinary, and sanitary substances; infants' and 
invalids' foods; plasters, material for bandaging; material for stopping 
teeth, dental wax, disinfectants; preparations for killing weeds and 
destroying vermin.
    6. Unwrought and partly wrought common metals and their alloys; 
anchors, anvils, bells, rolled and cast building materials; rails and 
other metallic materials for railway tracks; chains (except driving 
chains for vehicles); cables and wires (nonelectric); locksmiths' work; 
metallic pipes and tubes; safes and cash boxes; steel balls; horseshoes; 
nails and screws; other goods in nonprecious metal not included in other 
classes; ores.
    7. Machines and machine tools; motors (except for land vehicles); 
machine couplings and belting (except for land vehicles); large size 
agricultural implements; incubators.
    8. Hand tools and instruments; cutlery, forks, and spoons; side 
arms.
    9. Scientific, nautical, surveying and electrical apparatus and 
instruments (including wireless), photographic, cinematographic, 
optical, weighing, measuring, signalling, checking (supervision), life-
saving and teaching apparatus and instruments; coin or counterfreed 
apparatus; talking machines; cash registers; calculating machines; fire 
extinguishing apparatus.
    10. Surgical, medical, dental, and veterinary instruments and 
apparatus (including artificial limbs, eyes, and teeth).
    11. Installations for lighting, heating, steam generating, cooking, 
refrigerating, drying, ventilating, water supply, and sanitary purposes.
    12. Vehicles; apparatus for locomotion by land, air, or water.
    13. Firearms; ammunition and projectiles; explosive substances; 
fireworks.

[[Page 274]]

    14. Precious metals and their alloys and goods in precious metals or 
coated therewith (except cutlery, forks and spoons); jewelry, precious 
stones, horological and other chronometric instruments.
    15. Musical instruments (other than talking machines and wireless 
apparatus).
    16. Paper and paper articles, cardboard and cardboard articles; 
printed matter, newspaper and periodicals, books; bookbinding material; 
photographs; stationery, adhesive materials (stationery); artists' 
materials; paint brushes; typewriters and office requisites (other than 
furniture); instructional and teaching material (other than apparatus); 
playing cards; printers' type and cliches (stereotype).
    17. Gutta percha, india rubber, balata and substitutes, articles 
made from these substances and not included in other classes; plastics 
in the form of sheets, blocks and rods, being for use in manufacture; 
materials for packing, stopping or insulating; asbestos, mica and their 
products; hose pipes (nonmetallic).
    18. Leather and imitations of leather, and articles made from these 
materials and not included in other classes; skins, hides; trunks and 
travelling bags; umbrellas, parasols and walking sticks; whips, harness 
and saddlery.
    19. Building materials, natural and artificial stone, cement, lime, 
mortar, plaster and gravel; pipes of earthenware or cement; roadmaking 
materials; asphalt, pitch and bitumen; portable buildings; stone 
monuments; chimney pots.
    20. Furniture, mirrors, picture frames; articles (not included in 
other classes) of wood, cork, reeds, cane, wicker, horn, bone, ivory, 
whalebone, shell, amber, mother-of-pearl, meerschaum, celluloid, 
substitutes for all these materials, or of plastics.
    21. Small domestic utensils and containers (not of precious metals, 
or coated therewith); combs and sponges; brushes (other than paint 
brushes); brushmaking materials; instruments and material for cleaning 
purposes, steel wool; unworked or semi-worked glass (excluding glass 
used in building); glassware, procelain and earthenware, not included in 
other classes.
    22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks; 
padding and stuffing materials (hair, kapok, feathers, seaweed, etc.); 
raw fibrous textile materials.
    23. Yarns, threads.
    24. Tissues (piece goods); bed and table covers; textile articles 
not included in other classes.
    25. Clothing, including boots, shoes and slippers.
    26. Lace and embroidery, ribands and braid; buttons, press buttons, 
hooks and eyes, pins and needles; artificial flowers.
    27. Carpets, rugs, mats and matting; linoleums and other materials 
for covering existing floors; wall hangings (nontextile).
    28. Games and playthings; gymnastic and sporting articles (except 
clothing); ornaments and decorations for Christmas trees.
    29. Meats, fish, poultry and game; meat extracts; preserved, dried 
and cooked fruits and vegetables; jellies, jams; eggs, milk and other 
dairy products; edible oils and fats; preserves, pickles.
    30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee 
substitutes; flour, and preparations made from cereals; bread, biscuits, 
cakes, pastry and confectionary, ices; honey, treacle; yeast, baking 
powder; salt, mustard, pepper, vinegar, sauces, spices; ice.
    31. Agricultural, horticultural and forestry products and grains not 
included in other classes; living animals; fresh fruits and vegetables; 
seeds; live plants and flowers; foodstuffs for animals, malt.
    32. Beer, ale and porter; mineral and aerated waters and other 
nonalcoholic drinks; syrups and other preparations for making beverages.
    33. Wines, spirits and liqueurs.
    34. Tobacco, raw or manufactured; smokers' articles; matches.

                                Services

    35.  Advertising and business.
    36.  Insurance and financial.
    37.  Construction and repair.
    38.  Communication.
    39.  Transportation and storage.
    40.  Material treatment.
    41.  Education and entertainment.
    42.  Miscellaneous.

[38 FR 14681, June 4, 1973]



Sec. 6.2  Prior U.S. schedule of classes of goods and services.

------------------------------------------------------------------------
Class                                Title
------------------------------------------------------------------------
                                  Goods
 
1....  Raw or partly prepared materials.
2....  Receptacles.
3....  Baggage, animal equipments, portfolios, and pocket books.
4....  Abrasives and polishing materials.
5....  Adhesives.
6....  Chemicals and chemical compositions.
7....  Cordage.
8....  Smokers' articles, not including tobacco products.
9....  Explosives, firearms, equipments, and projectiles.
10...  Fertilizers.
11...  Inks and inking materials.
12...  Construction materials.
13...  Hardware and plumbing and steamfitting supplies.
14...  Metals and metal castings and forgings.
15...  Oils and greases.
16...  Protective and decorative coatings.
17...  Tobacco products.
18...  Medicines and pharmaceutical preparations.
19...  Vehicles.
20...  Linoleum and oiled cloth.
21...  Electrical apparatus, machines, and supplies.

[[Page 275]]

 
22...  Games, toys, and sporting goods.
23...  Cutlery, machinery, and tools, and parts thereof.
24...  Laundry appliances and machines.
25...  Locks and safes.
26...  Measuring and scientific appliances.
27...  Horological instruments.
28...  Jewelry and precious-metal ware.
29...  Brooms, brushes, and dusters.
30...  Crockery, earthenware, and porcelain.
31...  Filters and refrigerators.
32...  Furniture and upholstery.
33...  Glassware.
34...  Heating, lighting, and ventilating apparatus.
35...  Belting, hose, machinery packing, and nonmetallic tires.
36...  Musical instruments and supplies.
37...  Paper and stationery.
38...  Prints and publications.
39...  Clothing.
40...  Fancy goods, furnishings, and notions.
41...  Canes, parasols, and umbrellas.
42...  Knitted, netted, and textile fabrics, and substitutes therefor.
43...  Thread and yarn.
44...  Dental, medical, and surgical appliances.
45...  Soft drinks and carbonated waters.
46...  Foods and ingredients of foods.
47...  Wines.
48...  Malt beverages and liquors.
49...  Distilled alcoholic liquors.
50...  Merchandise not otherwise classified.
51...  Cosmetics and toilet preparations.
52...  Detergents and soaps.
 
                                Services
 
100..  Miscellaneous.
101..  Advertising and business.
102..  Insurance and financial.
103..  Construction and repair.
104..  Communication.
105..  Transportation and storage.
106..  Material treatment.
107..  Education and entertainment.
------------------------------------------------------------------------


[24 FR 10383, Dec. 22, 1959. Redesignated at 38 FR 14681, June 4, 1973]



Sec. 6.3  Schedule for certification marks.

    In the case of certification marks, all goods and services are 
classified in two classes as follows:

    A. Goods.
    B. Services.

[24 FR 10383, Dec. 22, 1959. Redesignated at 38 FR 14681, June 4, 1973]



Sec. 6.4  Schedule for collective membership marks.

    All collective membership marks are classified as follows:

------------------------------------------------------------------------
Class                                Title
------------------------------------------------------------------------
200..  Collective Membership.
  ...
------------------------------------------------------------------------


[24 FR 10383, Dec. 22, 1959. Redesignated at 38 FR 14681, June 4, 1973]



PART 7  [RESERVED]




[[Page 277]]

                 INDEX II--RULES RELATING TO TRADEMARKS

  Editorial Note: This listing is provided for information purposes 
only. It is compiled and kept up-to-date by the Department of Commerce.

                                                                 Section

                                 A

Abandonment of application or mark:
Drawing of abandoned application used in new application............2.26
During inter partes proceeding.....................................2.135
Express abandonment.................................................2.68
For failure to respond or to respond completely to official action
                                                                 2.65(a)
For failure to timely file a statement of use....................2.65(c)
Opportunity to explain incomplete response.......................2.65(b)
Petition to Commissioner may avoid abandonment..........2.63(b), 2.65(a)
Revival of abandoned application....................................2.66
Acceptance of affidavit under sec. 8
                                                                   2.164
Access:
To applications, and all proceedings relating thereto, after 
publication or registration......................................2.27(d)
To applications prior to publication.............................2.27(b)
To assignment records...............................................1.12
To decisions of Commissioner and the Trademark Trial and Appeal 
Board............................................................2.27(c)
To materials filed under seal pursuant to a protective order.....2.27(e)
To pending trademark application index...........................2.27(a)
Acknowledgment of receipt of affidavit or declaration:
Filed under sec. 8.................................................2.164
Filed under sec. 15................................................2.167
Act, The, defined
                                                                  2.2(a)
Action by assignee of record or owner
                                                              3.71, 3.73
Action by Examiner on application
                                                                    2.61
Adding party to an interference
                                                                    2.98
Address for correspondence with Patent and Trademark Office
                                                                     1.1
Admissions, request for (discovery):
Motion to determine sufficiency of response.....................2.120(h)
Timing of.......................................................2.120(a)
Use of admission................................................2.120(j)
When to file copy of request with Trademark Trial and Appeal Board
                                                             2.120(j)(8)
Advertising by attorneys and others, restricted
                                                                   10.32
Affidavit or declaration:
Claiming benefits of Act of 1946 under sec. 12(c)..................2.153
Combined secs. 8 and 15.........................................2.168(a)
Combined secs. 9 and 15.........................................2.168(b)
For incontestability under sec. 15.................................2.167
For renewal application under sec. 9...............................2.183
Of use in commerce or excusable nonuse under sec. 8................2.162
Reconsideration of, under sec. 8...................................2.165
To avoid cancellation of registration under sec. 8.................2.162
Agent. See Attorneys and other representatives.

[[Page 278]]

Allegations in application or registration not evidence on behalf 
of applicant or registrant in inter partes proceeding
                                                             2.122(b)(2)
Allowance, notice of
                                                           2.81(b), 2.88
Amendment of application:
After final action...............................................2.64(b)
After publication................................................2.84(b)
Between notice of allowance and statement of use....................2.77
Description or drawing of mark......................................2.72
Form of amendment...................................................2.74
In general.....................................................2.71-2.77
Involved in inter partes proceedings...............................2.133
To allege use.......................................................2.76
To change to different register.....................................2.75
To correct informalities............................................2.71
To seek concurrent use registration.................................2.73
Use application under sec. 1(a) may not be amended to intent-to-
use application under sec. 1(b)..................................2.33(d)
Amendment of pleadings in Inter partes proceedings:
Cancellation.......................................................2.115
Opposition.........................................................2.107
Amendment of registration:
During inter partes proceedings....................................2.133
Requirements for, in general.......................................2.173
Amendment to allege use
                                                                    2.76
Amendments to description or drawing of mark after filing........2.72(c)
Correction of deficiency in......................................2.76(g)
Fee for filing.................................................2.6(a)(2)
Filed during final action response period........................2.64(c)
Minimum requirements for filing..................................2.76(e)
Requirements for.................................................2.76(b)
Time for filing..................................................2.76(a)
Withdrawal of....................................................2.76(h)
Answer to pleadings in opposition and cancellation proceedings
                                                            2.106, 2.114
Contents of answer..............................2.106(b)(1), 2.114(b)(1)
Corresponds to answer in court proceeding.......................2.116(c)
Counterclaim....................................2.106(b)(2), 2.114(b)(2)
Failure to timely answer..............................2.106(a), 2.114(a)
Answer to notice instituting concurrent use proceeding
                                                                 2.99(d)
Failure to answer.............................................2.99(d)(3)
Who needs to answer and when..................................2.99(d)(2)
Appeal to Court and civil action
                                                                   2.145
Appeal to Court from decision of Commissioner......................2.145
Appeal to Court from decision of Trademark Trial and Appeal Board 
                                                                   2.145
Appeal to U.S. Court of Appeals for the Federal Circuit.........2.145(a)
Civil action....................................................2.145(c)
Extensions of time to appeal....................................2.145(e)
Notice of appeal to Court....................................2.145(c)(4)
Notice of appeal to U.S. Court of Appeals for the Federal Circuit 
                                                                2.145(b)
Notice of election by appellee to proceed by civil action after 
appeal to U.S. Court of Appeals for the Federal circuit......2.145(c)(3)
Time for appeal or civil action.................................2.145(d)
Appeal to Trademark Trial and Appeal Board:
Appropriate response to final refusal or second refusal on the 
same grounds...............................................2.64(a) 2.141
Briefs on appeal................................................2.142(b)
Compliance with requirements not on appeal......................2.142(c)
Failure of appellant to file brief...........................2.142(b)(1)

[[Page 279]]

In multiple class applications.....................................2.141
Introduction of new evidence after filing of appeal.............2.142(d)
Oral hearing on appeal..........................................2.142(e)
Reconsideration of decision on appeal..............................2.144
Remand to Examiner re new issue prior to decision...............2.142(f)
Reopening of examination of application after decision on appeal 
                                                                2.142(g)
Time and manner of filing appeal................................2.142(a)
Applicant:
Foreign.......................................................2.24, 2.39
May be represented by an attorney...................................2.11
Name of....................................................2.21, 2.32(c)
Signature and oath or declaration.......................2.21(a)(6), 2.32
Application for registration
                                                               2.21-2.47
Access to pending applications......................................2.27
Amendment of. See Amendment of application.
Authorization for representation; U.S. representative...............2.37
Basis for filing..............................................2.21(a)(5)
Certification mark..................................................2.45
Collective mark.....................................................2.44
Concurrent use..........................................2.42, 2.73, 2.99
Conflicting marks, co-pending applications for......................2.83
Description of mark.................................................2.35
Different classes may be combined...................................2.86
Different goods or services may be combined.........................2.86
Dividing of applications............................................2.87
Drawing required....................................................2.51
Filing-date requirements............................................2.21
Form of application............................................2.31-2.47
Must be in English..................................................2.31
Must be signed................................................2.21(a)(6)
Principal Register..................................................2.46
Priority claim based on foreign application.........................2.39
Prior registrations should be identified............................2.36
Requirements for drawings...........................................2.52
Requirements for written application................................2.33
Service mark........................................................2.43
Specimens filed with...........................................2.56-2.59
Supplemental Register...............................................2.47
Assignee:
Certificate of registration may be issued to........................3.85
New certificate of registration may be issued to...................2.171
Not domiciled in U.S................................................3.61
Right to take action when assignment is recorded or proof of 
assignment has been submitted.................................3.71, 3.73
Assignment of registered marks or marks subject to pending 
applications
                                                                3.1-3.85
Effect of recording.................................................3.54
Recording in Patent and Trademark Office of assignments or other 
instruments relating to such marks..................................3.11
Records open to public inspection...................................1.12
Requirements for recording...............................3.24-3.31, 3.41
Assignment of trial dates in inter partes proceedings
                                                         2.120(a), 2.121
Consolidated proceedings.....................................2.121(b)(2)
Counterclaim.................................................2.121(b)(2)
Discovery period................................................2.120(a)
Extending, Rescheduling..................2.120(a), 2.121(a)(1), (c), (d)
Testimony periods..................................................2.121
Trial order mailed with notice of institution...................2.120(a)

[[Page 280]]

Attorney conflict of interest
                                                    2.61(c), 10.61-10.68
Attorneys and other representatives
                                  2.11, 2.17-2.19, 2.119(d), 10.1-10.170
Authentication of copies of registrations and records
                                                                 1.13(b)

                                 B

Basis for filing an application
                                                              2.21(a)(5)
Bona fide intention to use
             2.21(a)(5)(ii)-(iv), 2.33(b)(2), 2.89(a)(3), (b)(3), (d)(1)
Briefs:
At final hearing in inter partes case..............................2.128
Failure of appellant to file brief on appeal.................2.142(b)(1)
Failure of inter partes plaintiff to file brief at final hearing 
                                                             2.128(a)(3)
Failure to file brief on inter partes motion....................2.127(a)
On appeal to Trademark Trial and Appeal Board...................2.142(b)
On motions in inter partes cases........................2.127(a), (e)(1)
On petitions to Commissioner...............................2.146(c), (e)
Burden of proof in an interference
                                                                    2.96
Business with Patent and Trademark Office to be conducted with 
decorum and courtesy
                                                                     1.3
Business with Patent and Trademark Office transacted in writing
                                                                     1.2

                                 C

Cancellation of registrations:
By cancellation proceeding--pleadings and procedure.....2.111 et seq....
(See also Petition for Cancellation)
                                                                        
By registrant...............................................2.134, 2.172
For failure to file affidavit or declaration of use under sec. 8 
                                                             2.161-2.166
During cancellation proceeding..................................2.134(b)
Cases not specifically defined in rules, petition to the 
Commissioner
                                                             2.146(a)(4)
Certificate of correction of registration
                                                            2.174, 2.175
Certificate of mailing by first class mail
                                                                     1.8
Certificate of registration:
As evidence in inter partes proceeding...............2.122 (b), (d), (e)
Contents...........................................................2.151
Issuance of new certificate to assignee............................2.171
When and how issued....................................2.81, 2.82, 2.151
Certificate of transmission
                                                                     1.8
Certification mark
                                                                    2.45
Certified copies of registrations and records
                                                                    1.13
Citizenship of applicant
                                                                    2.33
Civil action:
From decision of Commissioner...................................2.145(c)
From decision of Trademark Trial and Appeal Board...............2.145(c)
Notice of election by appellee to proceed by civil action after 
appeal to U.S. Court of Appeals for the Federal Circuit......2.145(c)(3)
Notice to Trademark Trial and Appeal Board of election to commence 
civil action for review of Board decision....................2.145(c)(4)
Suspension of action in application pending outcome.................2.67
Suspension of inter partes proceedings pending outcome.............2.117
Time for commencing civil action from decision of Commissioner or 
Trademark Trial and Appeal Board................................2.145(d)
Waiver of right to proceed by civil action in ex parte case 
                                                             2.145(c)(2)
Civil Procedure, Federal Rules of, applied to inter partes 
proceedings
                                                                2.116(a)
Claim of benefits of Act of 1946 for marks registered under prior 
Acts
                                                             2.153-2.156
Classification of goods and serves
                                                                    2.85

[[Page 281]]

Application limited to single class..............................2.86(a)
Combined applications............................................2.86(b)
Schedules of classes.............................................6.1-6.4
Code of Professional Responsibility
                                                            10.20-10.112
Collective mark
                                                                    2.44
Color of authority to sign verification or declaration
                                                                 2.71(c)
Combined applications
                                                              2.86, 2.87
Intent-to-use applications under sec. 1(b) and use applications 
under sec. 1(a) may not be combined.....................2.33(d), 2.86(c)
Combined inter partes proceedings:
Cancellation....................................................2.112(b)
Opposition......................................................2.104(b)
Commencement of cancellation
                                                                2.111(a)
Commencement of opposition
                                                                2.101(a)
Commissioner of Patents and Trademarks:
May suspend certain rules.............................2.146(a)(5), 2.148
Petition to........................................................2.146
Communication with attorney or other representative
                                                                    2.18
Complaints against Patent and Trademark Office employees
                                                                     1.3
Compliance of applicant with other laws
                                                                    2.69
Compliance with discovery order of Trademark Trial and Appeal 
Board
                                                                2.120(g)
Compulsory counterclaim
                                          2.106(b)(2)(i), 2.114(b)(2)(i)
Concurrent use registration
                                                              2.42, 2.99
Amendment to seek...................................................2.73
Answer to notice of concurrent use proceeding, by whom and when 
                                                                 2.99(d)
Application requirements............................................2.42
Based upon court determination...................................2.99(f)
Burden of proving entitlement to.................................2.99(e)
Consideration and determination by Trademark Trial and Appeal 
Board..................................................2.99(h), 2.133(c)
Examination by Examiner.....................................2.99(a), (b)
Intent-to-use applications, when subject to.............2.73(b). 2.99(g)
Mark must first be published for opposition purposes.............2.99(c)
Notice of concurrent use proceeding.........................2.99(c), (d)
Registrations and applications to register on Supplemental 
Register and registrations under Act of 1920 not subject to......2.99(g)
Conduct of practitioners
                                                            10.20-10.170
Conference, pre-trial, in inter partes cases
                                                             2.120(i)(2)
Conference, telephone, in inter partes cases
                                                             2.120(i)(1)
Conflict of interest, attorney
                                                    2.61(c), 10.61-10.68
Conflicting marks, co-pending applications for
                                                              2.83, 2.91
Consent of applicant or authorized representative to withdrawal of 
opposition after answer
                                                                2.106(c)
Consent of opposer to abandonment of application or mark
                                                                   2.135
Consent of petitioner to surrender or voluntary cancellation of 
registration
                                                                   2.134
Consent of registrant or authorized representative to withdrawal 
of cancellation after answer
                                                                2.114(c)
Consolidated inter partes proceedings:
Filing consolidated petition to cancel..........................2.112(b)
Filing consolidated opposition..................................2.104(b)
Times for filing briefs......................................2.128(a)(2)
Times for taking testimony...................................2.121(b)(2)
Constructive use, entry of judgment subject to establishment of in 
inter partes proceedings
                                                                2.129(d)
Contested or inter partes cases
                                                           2.116 et seq.

[[Page 282]]

Copies of registrations and records
                                                               1.13, 2.6
Correction of informalities by amendment
                                                                    2.71
Correction of mistake in certificate of registration:
Mistake by Patent and Trademark Office.............................2.174
Mistake by registrant..............................................2.175
Correspondence, with whom held
                                                    2.18, 2.24, 2.119(d)
Counterclaim in opposition and cancellation
                                                2.106(b)(2), 2.114(b)(2)
Coupons, for certain payments
                                                                    1.24
Court determination as basis for concurrent use registration
                                                                 2.99(f)
Courtesy and decorum in dealing with Patent and Trademark Office 
                                                                     1.3
Court of Appeals for the Federal Circuit, U.S., appeal to
                                                                   2.145

                                 D

Date of first use and first use in commerce:
Amendment of.....................................................2.71(b)
Required in amendment to allege use......................2.76(b)(1), (c)
Required in statement of use.............................2.88(b)(1), (c)
Required in use applications under sec. l(a).....2.33(a)(1)(vii), (a)(2)
Date of use allegation in application or registration not evidence 
on behalf of applicant or registrant in inter partes case
                                                             2.122(b)(2)
Declaration in lieu of oath or verification
                                                                    2.20
Declaration of interference
                                                                    2.91
Default judgment for failure to offer evidence in inter partes 
proceeding
                                                                2.132(a)
Definitions, ``The Act'' and ``Entity''
                                                                     2.2
Delay in responding to official action
                                                              2.65, 2.66
Deposit accounts for paying fees
                                                                    1.25
Depositions, discovery, in inter partes cases:
Domestic party..................................................2.120(b)
Foreign party or representative.................................2.120(c)
Motion to compel attendance.....................................2.120(e)
Nonparty........................................................2.120(b)
Time for taking.................................................2.120(a)
Use of..........................................................2.120(j)
When to file with Trademark Trial and Appeal Board...........2.120(j)(8)
Depositions, discovery or trial testimony, upon written questions 
                                                                   2.124
Depositions, trial testimony
                                                                   2.123
Before whom taken...............................................2.123(d)
Certification and filing........................................2.123(f)
Corresponds to the trial in court proceedings...................2.116(e)
Effect of errors and irregularities.............................2.123(j)
Examination of witnesses........................................2.123(e)
Filing and service of testimony transcript.........................2.125
Form of depositions.............................................2.123(g)
Inspection of depositions..............................2.27(d), 2.123(i)
Manner of taking................................................2.123(a)
Must be filed...................................................2.123(h)
Notice of taking................................................2.123(c)
Protective order relating to transcript or exhibits.............2.125(e)
Raising of objections.................................2.123(e), (j), (k)
Stipulations concerning.........................................2.123(b)
Taken in foreign country.....................................2.123(a)(2)
Timing.............................................................2.121
Description of mark in application
                                                                    2.35
Amendment to........................................................2.72
Designation of representative by foreign applicant, registrant, or 
party:
Application...................................................2.24, 2.37

[[Page 283]]

Assignment..........................................................3.61
In inter partes proceeding......................................2.119(d)
Renewal.........................................................2.183(d)
Disciplinary Proceedings
                                                           10.130-10.170
Disclaimer:
During inter partes cases..........................................2.133
In part, of registered mark........................................2.173
Discovery depositions. See Depositions, discovery, in inter partes 
cases.
Discovery procedure................................................2.120
Automatic disclosure provisions of Federal Rules of Civil 
Procedure not applicable........................................2.120(a)
Discovery deposition of domestic party..........................2.120(b)
Discovery deposition of foreign party...........................2.120(c)
Discovery provisions of Federal Rules of Civil Procedure apply 
except as otherwise provided....................................2.120(a)
Failure to comply with discovery order of Trademark Trial and 
Appeal Board....................................................2.120(g)
Interrogatories..............................................2.120(d)(1)
Motion for order to compel discovery...............2.120(d)(1), 2.120(e)
Motion for a protective order...................................2.120(f)
Place of production of documents and things..................2.120(d)(2)
Pre-trial conference.........................................2.120(i)(2)
Request for admissions..........................................2.120(h)
Sanctions for failure to comply with discovery order of Trademark 
Trial and Appeal Board..........................................2.120(g)
Telephone conference.........................................2.120(i)(1)
Time for discovery..............................................2.120(a)
Use of discovery deposition, answer to interrogatory, or admission
                                                                2.120(j)
When to file discovery materials with Trademark Trial and Appeal 
Board........................................................2.120(j)(8)
Dismissal:
For failure to file brief on appeal to Trademark Trial and Appeal 
Board........................................................2.142(b)(1)
For failure to take testimony or offer other evidence in inter 
partes case........................................................2.132
Distinctiveness under sec. 2(f), proof of
                                                                    2.41
Dividing an application
                                                                    2.87
Domestic representative of foreign applicant, registrant, or party:
Application...................................................2.24, 2.37
Assignment..........................................................3.61
In inter partes proceeding......................................2.119(d)
Renewal.........................................................2.183(d)
Domicile of applicant
                                                         2.33(a)(1)(iii)
Drawing
                                                               2.51-2.53
Amendment to mark in................................................2.72
Drawings required...................................................2.51
Linings for color in.............................................2.52(e)
Requirements for drawing............................................2.52
Transfer from abandoned to new application..........................2.26
Transmission of drawing.............................................2.53
Typed drawing....................................................2.51(e)
Duration of registration:
Cancellation for failure to file affidavit or declaration of use 
under sec. 8 during sixth year.....................................2.161
Renewal......................................................2.181-2.184
Term of original registrations and renewals........................2.181

[[Page 284]]

                                 E

Emergencies or interruptions in United States Postal Service
                                                                  1.6(e)
``Entity'', defined
                                                                  2.2(b)
Entry of judgment, in inter partes proceeding, subject to 
establishment of constructive use
                                                                2.129(d)
Evidence in ex parte appeal after notice of appeal
                                                                2.142(d)
Evidence in inter partes proceeding
                                                             2.122-2.125
Affidavits, stipulated testimony, and stipulated facts..........2.123(b)
Allegations of use and specimens in applications and registrations
                                                             2.122(b)(2)
Discovery responses.............................................2.120(j)
Exhibits attached to pleadings..................................2.122(c)
Files of applications or registrations which are subject matter of 
proceeding...................................................2.122(b)(1)
Official records................................................2.122(e)
Printed publications............................................2.122(e)
Registration owned by any party to proceeding................2.122(d)(2)
Registration pleaded by opposer or petitioner................2.122(d)(1)
Rules of evidence...............................................2.122(a)
Testimony from other proceedings between parties................2.122(f)
Testimony upon oral examination....................................2.123
Testimony upon written questions...................................2.124
Evidence of distinctiveness
                                                                    2.41
Examination of applications
                                                                    2.61
Examination of witnesses in inter partes proceeding
                                                                2.123(e)
Examiner's appearance at ex parte appeal oral hearing
                                                             2.142(e)(2)
Examiner's brief on appeal
                                                                2.142(b)
Examiner's jurisdiction over an application
                                                                    2.84
Exhibits attached to pleadings:
As evidence.....................................................2.122(c)
Duplicate copies shall be filed.......................2.104(a), 2.112(a)
Forwarded to defendant by Trademark Trial and Appeal Board........2.105, 
                                                                   2.113
Exhibits, testimony, filing and service of
                                                                   2.125
Ex parte appeal. See Appeal to Trademark Trial and Appeal Board.
Ex parte matter disclosed but not tried in inter partes case
                                                                   2.131
Express abandonment of application or mark:
During examination procedure........................................2.68
During inter partes proceeding.....................................2.135
``Express Mail'' procedure for filing of papers and fees
                                                                    1.10
Express surrender or cancellation of registration:
During inter partes proceeding
                                                                   2.134
Requirements for...................................................2.172
Extension of time for discovery and testimony
                                         2.120(a), 2.121(a)(1), (c), (d)
Extension of time for filing opposition
                                                                   2.102
Extension of time for filing statement of use
                                                                    2.89
Fee for filing request for.....................................2.6(a)(4)
Good cause showing, when necessary.......................2.89(b)(4), (d)
Mark ``Box ITU'' on request for...................................1.1(h)
Request filed with statement of use..............................2.89(e)

                                 F

Facsimile transmission, certificate of
                                                                     1.8
Facsimile transmission of certain correspondence to Patent and 
Trademark Office
                                                          1.6(a)(3), (d)
Facsimiles as specimens
                                                              2.57, 2.58
Failure by appellant to file brief on ex parte appeal
                                                             2.142(b)(1)
Failure by Plaintiff to file brief at final hearing in inter 
partes proceeding
                                                             2.128(a)(3)

[[Page 285]]

Failure to answer opposition
                                                                2.106(a)
Failure to answer petition for cancellation
                                                                2.114(a)
Failure to comply with discovery order
                                                                2.120(g)
Failure to comply with order relating to confidential testimony or 
exhibits
                                                                2.125(e)
Failure to file affidavit of use under sec. 8 or renewal 
application for registration in inter partes proceeding
                                                                2.134(b)
Failure to file brief on motion
                                                                2.127(a)
Failure to offer evidence other than Patent and Trademark Office 
records
                                                                2.132(b)
Failure to respond to official action
                                                                    2.65
Failure to take testimony or offer other evidence
                                                                2.132(a)
Failure to timely file a statement of use
                                                                 2.88(h)
Fax transmission, certificate of
                                                                     1.8
Fax transmission of certain correspondence to Patent and Trademark 
Office
                                                          1.6(a)(3), (d)
Federal Rules of Civil Procedure
                                                      2.116(a), 2.122(a)
Federal Rules of Evidence
                                                                2.122(a)
Fees and charges
                                                      1.22, 2.6, 2.85(e)
Fees, insufficient amount submitted:
For application...............................................2.21(a)(7)
For petition for cancellation..........................2.85(e), 2.111(c)
For ex parte appeal..............................................2.85(e)
For opposition..................................................2.101(d)
For renewal application.........................................2.183(b)
Fees, payment of
                                                              1.22, 1.23
Filing an amendment to allege use
                                                                    2.76
Filing an opposition
                                                                   2.101
Filing and service of trial testimony
                                                                   2.125
Filing date, effective, after amendment of sec. l(b) application 
to Supplemental Register
                                                                 2.75(b)
Filing date of application
                                                                    2.21
Filing of papers and fees by ``Express Mail''
                                                                    1.10
Filing petition for cancellation
                                                                   2.111
Filing requests for extensions of time for filing statement of use
                                                                    2.89
Mark ``Box ITU''..................................................1.1(h)
Filing statement of use after notice of allowance
                                                                    2.88
Mark ``Box ITU''..................................................1.1(h)
Filing substitute specimens
                                                                    2.59
Final refusal of application
                                                                 2.64(a)
Filing amendment to allege use during final action response period
                                                                 2.64(c)
Reconsideration of...............................................2.64(a)
Final hearing, briefs at (inter partes proceeding)
                                                                   2.128
Foreign applicant, registrant, or party, designation of domestic 
representative
                                    2.24, 2.37, 2.119(d), 2.183(d), 3.61
Foreign application, priority claim based on
                                                                    2.39
Foreign registration:
Application based on, under sec. 44..................2.21, 2.33, 2.47(b)
Certified copy of.........................................2.21(a)(5)(ii)
Necessary before publication.....................................2.39(b)
Form of amendment to application
                                                                    2.74

                                 G

General information and correspondence
                                                                1.1-1.10
Goods and/or services identification of:
Additions not permitted..........................................2.71(b)

[[Page 286]]

Amendment of.....................................................2.71(b)
Amendment of, filed with statement of use.....................2.88(i)(3)
In affidavit or declaration filed during sixth year.........2.161, 2.162
In written application.....................................2.33(a)(1)(v)
Multiple goods or services comprised in single class or multiple 
classes.......................................................2.33, 2.86
Required in amendment to allege use......................2.76(b)(1), (c)
Required in request for extension of time to file statement of use
                                                                 2.89(f)
Required in statement of use........................2.88(b)(1), (c), (i)
Good cause, showing necessary for extension of time to file 
statement of use
                                                         2.89(b)(4), (d)

                                 H

Hearing, oral:
At final hearing in inter partes proceeding........................2.129
On appeal to Trademark Trial and Appeal Board...................2.142(e)
On motion in inter partes proceedings...........................2.127(a)
On petition to Commissioner.....................................2.146(f)

                                 I

Identification of goods and/or services: See Goods and/or services 
identification of.
Identification of pending application or registered mark in 
correspondence
                                                                     1.5
Identification of prior registrations
                                                                    2.36
Incontestability of right to use mark:
Affidavit under sec. 15............................................2.167
Freedom from interference proceeding.............................2.91(b)
Informalities, amendment to correct
                                                                    2.71
Inquiries directed to Patent and Trademark Office
                                                                     1.4
Intent-to-use applications under sec. 1(b):
Abandonment for failure to timely file a statement of use........2.65(c)
Amendment to allege use.............................................2.76
Amendments between notice of allowance and statement of use.........2.77
Basis for filing application..................................2.21(a)(5)
Bona fide intention to use mark in commerce necessary.........2.21(a)(5)
Certification mark..................................................2.45
Collective mark.....................................................2.44
Dividing............................................................2.87
Drawing required......................................2.51(a)(2), (b)(2)
Extensions of time for filing statement of use......................2.89
Filing-date requirements............................................2.21
Notice of allowance..............................................2.81(b)
Requirements for written application................................2.33
Revival of application abandoned for failure to timely file a 
statement of use....................................................2.66
Specimens filed with amendment to allege use or statement of use 
                                                        2.56, 2.76, 2.88
Statement of use....................................................2.88
When eligible for concurrent use........................2.73(b), 2.99(g)
When eligible for amendment to Supplemental Register.............2.47(c)
Interlocutory motions, inter partes proceeding
                                                                   2.127
Interference
                                                   2.91-2.93, 2.96, 2.98
Adding Party to interference........................................2.98
Burden of proof.....................................................2.96
Conflicting marks, co-pending applications for......................2.83
Declaration of interference.........................................2.91

[[Page 287]]

Declared only on petition to Commissioner........................2.91(a)
Institution of interference.........................................2.93
Issue...............................................................2.96
Marks must otherwise be deemed registrable..........................2.92
Notice of interference..............................................2.93
Preliminary to interference.........................................2.92
Registrations and applications on the Supplemental Register, 
registrations under the Act of 1920, and registrations of 
incontestable marks not subject to interference..................2.91(b)
Inter partes procedure
                                                             2.116-2.136
Inter partes proceedings
                                                              2.91-2.136
Cancellation.................................................2.111-2.115
Concurrent use......................................................2.99
Failure of plaintiff to file brief at final hearing..........2.128(a)(3)
Failure of plaintiff to take testimony.............................2.132
Interference.......................................2.91-2.93, 2.96, 2.98
Opposition...................................................2.101-2.107
Procedure in.................................................2.116-2.136
Interrogatories (discovery)
                                                                   2.120
Motion for an order to compel answer...............2.120(d)(1), 2.120(e)
Numerical limit on...........................................2.120(d)(1)
Timing of.......................................................2.120(a)
Use of answers..................................................2.120(j)
When to file copy of interrogatories and answers thereto with 
Trademark Trial and Appeal Board.............................2.120(j)(8)
Interruptions or emergencies in United States Postal Service
                                                                  1.6(e)
Issue date of the notice of allowance
                                                                 2.81(b)

                                 J

Judgment by default:
Failure by plaintiff to file brief at final hearing..........2.128(a)(3)
Failure to answer cancellation..................................2.114(a)
Failure to answer notice of concurrent use proceeding.........2.99(d)(3)
Failure to answer opposition....................................2.106(a)
Failure to take testimony or offer other evidence..................2.132
Judgment, entry of in inter partes proceeding subject to 
establishment of constructive use
                                                                2.129(d)
Jurisdiction over published applications
                                                                    2.84
Amendment after publication of mark..............................2.84(b)
Amendment during inter partes proceeding...........................2.133
Remand to Examiner by Trademark Trial and Appeal Board......2.130, 2.131

                                 L

Label approval, compliance with other laws
                                                                    2.69
Lawyers. See Attorneys.
Letter, separate for each distinct subject of inquiry
                                                                  1.4(c)
Letters, address for mailing to Patent and Trademark Office
                                                                     1.1

                                 M

Mailing, certificate of
                                                                     1.8
Mailing address for correspondence with Patent and Trademark 
Office
                                                                     1.1
Marks on Supplemental Register published only upon registration
                                                                    2.82
Marks registered under 1905 Act. claiming benefits of 1946 Act 
                                                             2.153-2.156
Marks under sec. 12(c) not subject to opposition; subject to 
cancellation
                                                                   2.156

[[Page 288]]

Matters in evidence in inter partes cases
                                                                   2.122
Mistake in registration incurred through fault of applicant
                                                                   2.175
Mistake in registration incurred through fault of Patent and 
Trademark Office
                                                                   2.174
Money, payment of
                                                               1.22-1.26
Motions in inter partes proceedings:
Briefs on..........................................2.127(a), 2.127(e)(1)
Contents........................................................2.127(a)
Failure to respond to motion....................................2.127(a)
For a protective order..........................................2.120(f)
For judgment for failure to take testimony.........................2.132
For summary judgment............................................2.127(e)
Interlocutory motions and requests, who may act on..............2.127(c)
Request for reconsideration of decision on motion...............2.127(b)
Suspension pending determination of motion potentially dispositive 
of proceeding...................................................2.127(d)
To add application to interference..................................2.98
To compel discovery................................2.120(d)(1), 2.120(e)
To determine sufficiency of answer or objection to request for 
admission.......................................................2.120(h)
To extend discovery period......................................2.120(a)
To extend times for taking testimony upon written questions 
                                                             2.124(d)(2)
To extend trial periods.................................2.121(a)(1), (c)
To suspend.........................................................2.117
To take oral deposition abroad..................2.120(c)(1), 2.123(a)(2)
To use testimony from another proceeding between parties........2.122(f)
Multiple class applications
                                                                 2.86(b)
Dividing of.........................................................2.87
Multiple goods or services comprised in single class or multiple 
classes
                                                                    2.86
Dividing of.........................................................2.87

                                 N

New certificate on change of ownership
                                                                   2.171
Notice by publication, undelivered Office notices
                                                                   2.118
Notice of allowance
                                                                 2.81(b)
Filing statement of use after.......................................2.88
Issue date of....................................................2.81(b)
Notice of appeal to court and civil action
                                                                   2.145
Notice of appeal to Trademark Trial and Appeal Board
                                                                2.142(a)
Notice of concurrent use proceeding
                                                            2.99(c), (d)
Notice of claim of benefits of 1946 Act
                                                             2.153-2.156
Notice of election by appellee to proceed by civil action after 
appeal to U.S. Court of Appeals for the Federal Circuit
                                                             2.145(c)(3)
Notice of interference
                                                                    2.93
Notice of publication under sec. 12(c)
                                                                   2.155
Notice of reliance on discovery
                                                                2.120(j)
Notice of reliance on printed publications and official records 
                                                                2.122(e)
Notice to Trademark Trial and Appeal Board of civil action
                                                             2.145(c)(4)
Notice, where address of registrant in cancellation proceeding is 
unknown
                                                                   2.118
Notification of acceptance of or deficiency in amendment to allege 
use
                                                            2.76(f), (g)
Notification of acceptance of or deficiency in statement of use 
                                                            2.88(f), (g)
Notification of filing of petition for cancellation
                                                                   2.113
Notification of grant or denial of request for an extension of 
time to file a statement of use
                                                                 2.89(g)

[[Page 289]]

Notification of opposition
                                                                   2.105

                                 O

Oath, declaration in lieu of
                                                                    2.20
Oaths, before whom and when made in testimonial deposition
                                                             2.123(e)(5)
Official Gazette contents:
Claim of benefits under sec. 12(c) for marks registered under 1905 
Act................................................................2.154
First filed of applications for conflicting marks...................2.83
Marks on Principal Register published for opposition................2.80
Marks on Supplemental Register published when registered............2.82
Official records, reliance on in inter partes proceeding
                                                                2.122(e)
Omission of matter from response to Examiner's action
                                                                 2.65(b)
Opposition to registration of mark on Principal Register:....2.101-2.107
Amendment of opposition............................................2.107
Answer.............................................................2.106
Commencement of opposition......................................2.101(a)
Consolidated oppositions........................................2.104(b)
Contents of opposition.............................................2.104
Corresponds to compliant in a court proceeding..................2.116(c)
Extension of time for filing an opposition.........................2.102
Failure to timely answer........................................2.106(a)
Filing an opposition...............................................2.101
Insufficient fees...............................................2.101(d)
Notification of opposition.........................................2.105
Procedure, inter partes......................................2.116-2.136
Time for filing opposition......................................2.101(c)
Who may file opposition.........................................2.101(b)
Withdrawal of opposition........................................2.106(c)
Oral argument at final hearing in inter partes proceeding
                                                                   2.129
Oral hearing:
Ex parte appeal.................................................2.142(e)
Inter partes proceedings.......................2.116(f), 2.127(a), 2.129
On petition to Commissioner.....................................2.146(f)
Oral promise, stipulation, or understanding
                                                                     1.2
Ownership, prior registrations, identification in application
                                                                    2.36

                                 P

Papers, size and margins of application
                                                                    2.31
Papers of application not returnable
                                                                    2.25
Patent Rules, applicable
                                                                     2.1
Payment of money
                                                               1.22-1.26
Pending application index
                                                                    2.27
Period for response to Office actions
                                                                    2.62
Personal appearance unnecessary
                                                                     1.2
Persons who may practice before the Patent and Trademark Office in 
trademark cases
                                                                   10.14
Petition for cancellation
                                                             2.111-2.115
Amendment of petition..............................................2.115
Answer.............................................................2.114
Commencement of cancellation proceeding.........................2.111(a)
Contents of petition...............................................2.112
Corresponds to complaint in a court proceeding..................2.116(c)
Failure to timely answer........................................2.114(a)
Filing petition for cancellation...................................2.111
Insufficient fees...............................................2.111(c)
Notification of cancellation proceeding............................2.113

[[Page 290]]

Procedure, inter partes......................................2.116-2.136
Time for filing petition........................................2.111(b)
Who may file petition...........................................2.111(b)
Withdrawal of petition..........................................2.114(c)
Petition for rehearing, reconsideration or modification of
decision:
Decision in inter partes proceeding.............................2.129(c)
Decision on ex parte appeal........................................2.144
Decision on interlocutory motion in inter partes proceeding.....2.127(b)
Petition to revive abandoned application
                                                                    2.66
Petition to the Commissioner
                                                                   2.146
Any case not specifically defined and provided for by rules 
                                                             2.146(a)(4)
Contents of petition............................................2.146(c)
Delegation of authority to act on petitions.....................2.146(h)
Extraordinary situation requiring suspension or waiver of 
requirement of rules.........................................2.146(a)(5)
Fee..................................................................2.6
From denial of request for extension of time to file statement of 
use..............................................................2.89(g)
From grant or denial of request for extension of time to oppose 
                                                             2.146(e)(1)
From interlocutory order of Trademark Trial and Appeal Board 
                                                             2.146(e)(2)
Invoke supervisory authority.................................2.146(a)(3)
Oral hearing on petition........................................2.146(f)
Reconsideration of refusal to accept sec. 8 affidavit or 
declaration.....................................................2.165(b)
Refusal of renewal of registration..............................2.184(b)
Relief from repeated formal requirement of Examiner..............2.63(b)
Repeated action or requirement of Examiner regarding subject 
matter appropriate for petition..............................2.146(a)(1)
Review of adverse action on correction, disclaimer, surrender, 
etc. of registration...............................................2.176
Stays time in appeal, inter partes proceeding, or reply to Office 
action only when stay is specifically requested and granted.....2.146(g)
Subject matter for petitions...............................2.146(a), (b)
Time to file petition......................................2.146(d), (e)
To accord filing date as of date of deposit as Express Mail 
                                                             1.10(c)-(e)
Pleading, amendment of
                                                            2.107, 2.115
Position of parties in inter partes proceedings
                                                 2.96, 2.99(e), 2.116(b)
Postal Service, United States, interruptions or emergencies in
                                                                  1.6(e)
Post notice of allowance
                                                              2.88, 2.89
Post publication
                                                                    2.81
Power of attorney or authorization of other representative
                                                              2.17, 2.19
Practice before the Patent and Trademark Office, individuals 
entitled to
                                                                   10.14
Predecessor in title or related company, use by
                                                                    2.38
Pre-trial conference, inter partes proceeding
                                                             2.120(i)(2)
Principal Register
                                                                    2.46
Amendment to or from Supplemental Register..........................2.75
Printed publications, as evidence in inter partes proceedings
                                                                2.122(e)
Prior acts, status of prior registrations
                                                                   2.158
Priority claim based on foreign application
                                                                    2.39
Prior registrations, ownership, identification in application
                                                                    2.36
Procedure in inter partes cases
                                                             2.116-2.136
Production of documents and things, request for (discovery)
                                                                   2.120
Place of production..........................................2.120(d)(2)
Motion for an order to compel production........................2.120(e)
Timing of.......................................................2.120(a)
Professional conduct of attorneys
                                                            10.20-10.129
Proof of distinctiveness under sec. 2(f)
                                                                    2.41

[[Page 291]]

Proof of service
                                                                2.119(a)
Protective order:
Access to materials filed under..................................2.27(e)
Relating to discovery...........................................2.120(f)
Relating to testimony...........................................2.125(e)
Sanctions for violation...............................2.120(g), 2.125(e)
Publication and post publication
                                                               2.80-2.84
Publication in Official Gazette:
Jurisdiction over published applications............................2.84
Of claim of benefits under sec. 12(c) for marks registered under 
1905 Act...........................................................2.154
Of first filed of applications for conflicting marks................2.83
Of mark on Principal Register for opposition after approval.........2.80
Of marks on Supplemental Register when registered...................2.82
Publication of amendments to rules
                                                                   2.189
Publication, notice by, undelivered Office notices to registrant 
in inter partes proceeding
                                                                   2.118

                                 R

Rebuttal testimony
                                                           2.121(b), (c)
Receipt of papers and fees
                                                          1.6, 1.8, 1.10
Recognition of attorneys or other authorized person
                                                             2.17, 10.14
Reconsideration:
Of affidavit or declaration of use under sec. 8....................2.165
Of decision after final hearing in inter partes proceeding......2.129(c)
Of decision on ex parte appeal.....................................2.144
Of final action..................................................2.64(b)
Of order or decision on interlocutory motion....................2.127(b)
Records of documents in Assignment Division of Patent and 
Trademark Office
                                                               3.11-3.56
Records and files of the Patent and Trademark Office
                                                        1.12, 1.15, 2.27
Reexamination of application
                                                                 2.63(a)
Reexamination of application after remand by the Trademark Trial 
and Appeal Board
                                                     2.130, 2.131, 2.142
Refund of money paid to Patent and Trademark Office
                                                                    1.26
Refusal of affidavit or declaration of use under sec. 8
                                                                2.165(a)
Refusal of registration
                                                                    2.61
Refusal of renewal
                                                                   2.184
Refusal of request for extension of time to file a statement of 
use
                                                                 2.89(g)
Registrability of marks in plurality of classes (combined 
applications)
                                                                    2.86
Registrant claiming benefits of 1946 Act
                                                             2.153-2.156
Registration as evidence in inter partes proceeding:
File of registration which is the subject of the proceeding 
                                                             2.122(b)(1)
Registration owned by any party to proceeding................2.122(d)(2)
Registration pleaded by opposer or petitioner................2.122(d)(1)
Registration files open to public inspection
                                                                 2.27(d)
Registrations, printed copies available
                                                                    1.13
Related company or predecessor, use by
                                                                    2.38
Remand to Examiner
After decision in inter partes case................................2.131
During appeal from refusal of registration......................2.142(f)
During inter partes case...........................................2.130
Renewal of registration
                                                             2.181-2.184
Application for renewal, requirements..............................2.183
Failure to renew registration involved in inter partes proceeding 
                                                                2.134(b)
Period in which to file............................................2.182

[[Page 292]]

Refusal of renewal..............................................2.184(a)
Review of Examiner's refusal by commissioner....................2.184(b)
Term of original registrations and renewals........................2.181
Representation by attorney
                                                                    2.11
Representation of others before the Patent and Trademark Office
                                                             2.11, 10.14
Representative, domestic or U.S. See Domestic representative.
Representation, recognition for
                                                             2.17, 10.14
Republication of marks registered under prior acts
                                                             2.153-2.156
Request for admissions (discovery). See Admissions, request for.
Request for extension of time for discovery and testimony. See Extension 
of time for discovery and testimony.
Request for extension of time to file opposition. See Extension of time 
for filing opposition.
Request for extension of time to file statement of use. See Extension of 
time to file statement of use.
Request for information and exhibits by Examiner
                                                                 2.61(b)
Request for production (discovery). See Production of documents and 
things, request for.
Request for reconsideration. See Reconsideration.
Request for records
                                                                    1.15
Request for registration
                                                                    2.33
Request to divide an application
                                                                    2.87
Requirements for receiving a filing date
                                                                    2.21
Requirements for written application
                                                                    2.33
Registration of marks registered under prior acts
                                                                   2.158
Response to official action
                                                                    2.62
Review by Commissioner:
For relief from repeated formal requirement by Examiner..........2.63(b)
Of adverse action on correction, disclaimer, surrender, etc. of 
registration.......................................................2.176
Of refusal of affidavit or declaration of use under sec. 8......2.165(b)
Of refusal of renewal application..................................2.184
Petitions to the Commissioner......................................2.146
Revival of abandoned applications
                                                                    2.66
Revocation of power of attorney
                                                                    2.19
Rules of evidence in inter partes cases
                                                                2.122(a)
Rules of practice in trademark cases:
Amendment..........................................................2.189
Suspension, petition to Commissioner..................2.146(a)(5), 2.148
Waiver, petition to Commissioner......................2.146(a)(5), 2.148

                                 S

Sanction for failure to comply with discovery order
                                                                2.120(g)
Sanction for failure to comply with protective order relating to 
testimony
                                                                2.125(e)
Saturday, Sunday, or Federal holiday, time for taking action 
expiring on
                                               1.6(a)(1), (2)1.6(b), 1.7
Schedule of classes of goods and services
                                                           2.85, 6.1-6.4
Schedule of time for discovery and trial periods
                                                                   2.121
Sec. 2(f), proof of distinctiveness
                                                                    2.41
Sec. 8 affidavit or declaration of use
                                                             2.161-2.166
Sec. 44, application based on:
Amendment to change application to different register............2.75(a)
Amendment to description or drawing in mark......................2.72(d)
Basis for filing....................................2.21(a)(5)(ii)-(iii)
Certification mark...............................................2.45(b)
Collective mark..................................................2.44(b)

[[Page 293]]

Drawing required......................................2.51(a)(3), (b)(3)
Filing-date requirements............................................2.21
Goods or services identified may not exceed scope of those in 
foreign application or registration........................2.33(a)(1)(v)
Priority claim......................................................2.39
Requirements for drawings...........................................2.52
Requirements for written application................................2.33
Supplemental Register............................................2.47(b)
Separate letters
                                                                     1.4
Serial number
                                                                    2.23
Service charge for handling later filed fees in connection with a 
renewal
                                           2.6(a)(6), 2.182, 2.183(a)(2)
Services marks
                                                                    2.43
Drawings.........................................................2.51(b)
Specimens or facsimiles.............................................2.58
Service of copies of testimony
                                                                   2.125
Service and signing of papers
                                                                   2.119
Signature and certificate of attorney
                                                                   10.18
Signature of applicant
                                                        2.21(a)(6), 2.32
Single certificate for one mark registered in a plurality of 
classes
                                                                    2.87
Specimens
                                                               2.56-2.59
Facsimiles in lieu of specimens.....................................2.57
Not evidence in behalf of applicant or registrant in inter partes 
proceeding...................................................2.122(b)(2)
Of service mark.....................................................2.58
Requirement of filing with affidavit or declaration of use under 
sec. 8...................................................2.161, 2.162(e)
Requirement of filing with amendment to allege use....2.76(b)(2), (e)(2)
Requirement of filing with statement of use...........2.88(b)(2), (e)(2)
Support of amendment to application...........................2.71, 2.72
Support of amendment to registration...............................2.173
Statement of use
                                                                    2.88
Amendments to description or drawing of mark after filing........2.72(c)
Amendments to dates of use after filing.......................2.71(d)(3)
Extensions of time to file..........................................2.89
Fee for filing.................................................2.6(a)(3)
Mark ``Box ITU''..................................................1.1(h)
May not be withdrawn.............................................2.88(g)
Minimum requirements for filing..................................2.88(e)
Requirements for.................................................2.88(b)
Time for filing..................................................2.88(a)
Status of application after ex parte appeal
                                                                2.142(g)
Status of application on termination of inter partes proceedings 
                                                                   2.136
Stipulated evidence, inter partes cases
                                                                2.123(b)
Stipulation to extend discovery and/or trial periods
                                                         2.120(a), 2.121
Substitute specimens, filing of
                                                                    2.59
Sunday, Saturday, or Federal holiday, time for taking action 
expiring on
                                               1.6(a)(1), (2)1.6(b), 1.7
Supplemental Register:
Amendment from Principal Register..........................2.47(c), 2.75
Application requirements............................................2.47
Approval............................................................2.82
Cancellation.......................................................2.111
Certificate of registration.........................................2.82
Intent-to-use applications, when eligible........................2.47(c)
Marks published when registered.....................................2.82
Surrender of certificate of registration
                                                                   2.172
During inter partes proceeding.....................................2.134

[[Page 294]]

Suspension of action in application by Patent and Trademark Office
                                                                    2.67
Suspension from practice before Patent and Trademark Office 
                                                           10.130-10.170
Suspension of later filed conflicting application
                                                                    2.83
Suspension of inter partes proceedings by Trademark Trial and Appeal
Board:
For good cause upon motion or stipulation.......................2.117(c)
Pending disposition of motion potentially dispositive of case...2.127(d)
 Pending disposition of motion to compel.....................2.120(e)(2)
Pending disposition of motion to test sufficiency of response to 
request for admission........................................2.120(h)(2)
Pending termination of civil action or other Board proceeding 
                                                             2.117(a)(b)
Suspension of rules, Commissioner
                                                      2.146(a)(5), 2.148

                                 T

Term of original registrations and renewals
                                                                   2.181
Testimony in inter partes cases:
Assignment and resetting of times..................................2.121
By oral examination................................................2.123
By written questions...............................................2.124
Failure to take....................................................2.132
Filing and service of testimony................2.123(f), 2.124(f), 2.125
Arrangement, indexing, and form of transcript...2.123(g); 2.125 (b), (d)
Corrections to........................................2.124(f), 2.125(b)
Deposition must be filed........................................2.123(h)
Filing in Patent and Trademark Office.......2.123(f), 2.124(f), 2.125(c)
Service on adverse party..............................2.124(f), 2.125(a)
From another proceeding.........................................2.122(f)
In foreign countries.........................................2.123(a)(2)
Objections to.........................2.123 (e), (j), (k); 2.124(d), (g)
Stipulated testimony............................................2.123(b)
Time:
For amendment.......................................................2.62
For ex parte appeal.............................................2.142(a)
For filing affidavit or declaration to avoid cancellation..........2.161
For filing amendment to allege use...............................2.76(a)
For filing appeal to court or civil action......................2.145(d)
For filing extension of time to oppose.............................2.102
For filing opposition...........................................2.101(c)
For filing petition for cancellation....................2.111(b), (c)(3)
For filing request for extension of time to file statement of use 
                                                                    2.89
For filing request to divide application.........................2.87(c)
For filing statement of use......................................2.88(a)
For response to Patent and Trademark Office action..................2.62
For taking discovery............................................2.120(a)
For taking testimony...............................................2.121
Translation of assignment
                                                                    3.26
Transmission, certificate of
                                                                     1.8
Transmission of drawings
                                                                    2.53

                                 U

Undelivered Office notices, to registrant
                                                                   2.118
Unprofessional conduct, attorneys
                                                            10.20-10.129
Unprovided for and extraordinary circumstances, petition to 
Commissioner
                                                        2.146(a)(4), (5)
U.S. Court of Appeals for the Federal Circuit, appeal to
                                                                   2.145
Use:
Allegation of use in commerce.....................2.21, 2.33, 2.76, 2.88

[[Page 295]]

Amendment to allege use in commerce.................................2.76
Bona fide intention to use in commerce..................2.21, 2.33, 2.89
By predecessor or by related companies..............................2.38
Dates of first use and first use in commerce..................2.21, 2.33
Statement of use....................................................2.88
Use of discovery
                                                                2.120(j)

                                 V

Verification:
Color of Authority to sign.......................................2.71(c)
Declaration in lieu of oath or verification.........................2.20
Of application.................................2.21(a)(6), 2.32, 2.33(b)
Required with amendment to allege use.................2.76(b)(1), (e)(3)
Required with statement of use........................2.88(b)(1), (e)(3)
Required with substitute specimens..................................2.59
Substitute or supplemental verification..........................2.71(c)
In support of amendments to descriptions or drawings of the mark 
                                                                    2.72
In support of amendments to dates of use.........................2.71(d)
In support of petition to revive abandoned application......2.66(b), (c)
In support of request for extension of time to file statement of 
use.................................................................2.89

                                 W

Waiver of rule, petition to Commissioner
                                                      2.146(a)(5), 2.148
Willful false statements. declaration
                                                                    2.20
Withdrawal from employment, practitioners
                                                      2.19, 10.40, 10.63
Withdrawal of amendment to allege use
                                                                 2.76(h)
Withdrawal of application
                                                                    2.68
Involved in inter partes proceeding................................2.135
Withdrawal of opposition with or without consent
                                                                2.106(c)
Withdrawal of cancellation with or without consent
                                                                2.114(c)
Withdrawal of registration by voluntary surrender by registrant:
Involved in cancellation proceeding................................2.134
Requirements for...................................................2.172
Withdrawal of statement of use prohibited
                                                                 2.88(g)
Witnesses:
Discovery deposition.......................................2.120(b), (c)
Examination by oral deposition (Testimony).........................2.123
Examination by written questions...................................2.124
Foreign............................................2.120(c), 2.123(a)(2)
Written application
                                                               2.31-2.47

[[Page 296]]

             PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE



PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE--Table of Contents




Sec.
10.1  Definitions.
10.2  Director of Enrollment and Discipline.
10.3  Committee on Enrollment.
10.4  Committee on Discipline.

 Individuals Entitled to Practice Before the Patent and Trademark Office

10.5  Register of attorneys and agents in patent cases.
10.6  Registration of attorneys and agents.
10.7  Requirements for registration.
10.8  Oath and registration fee.
10.9  Limited recognition in patent cases.
10.10  Restrictions on practice in patent cases.
10.11  Removing names from the register.
10.12--10.13  [Reserved]
10.14  Individuals who may practice before the Office in trademark and 
          other non-patent cases.
10.15  Refusal to recognize a practitioner.
10.16--10.17  [Reserved]
10.18  Signature and certificate for correspondence filed in the Patent 
          and Trademark Office.
10.19  [Reserved]

     Patent and Trademark Office Code of Professional Responsibility

10.20  Canons and Disciplinary Rules.
10.21  Canon 1.
10.22  Maintaining integrity and competence of the legal profession.
10.23  Misconduct.
10.24  Disclosure of information to authorities.
10.25--10.29  [Reserved]
10.30  Canon 2.
10.31  Communications concerning a practitioner's services.
10.32  Advertising.
10.33  Direct contact with prospective clients.
10.34  Communication of fields of practice.
10.35  Firm names and letterheads.
10.36  Fees for legal services.
10.37  Division of fees among practitioners.
10.38  Agreements restricting the practice of a practitioner.
10.39  Acceptance of employment.
10.40  Withdrawal from employment.
10.41--10.45  [Reserved]
10.46  Canon 3.
10.47  Aiding unauthorized practice of law.
10.48  Sharing legal fees.
10.49  Forming a partnership with a non-practitioner.
10.50--10.55  [Reserved]
10.56  Canon 4.
10.57  Preservation of confidences and secrets of a client.
10.58--10.60  [Reserved]
10.61  Canon 5.
10.62  Refusing employment when the interest of the practitioner may 
          impair the practitioner's independent professional judgment.
10.63  Withdrawal when the practitioner becomes a witness.
10.64  Avoiding acquisition of interest in litigation or proceeding 
          before the Office.
10.65  Limiting business relations with a client.
10.66  Refusing to accept or continue employment if the interests of 
          another client may impair the independent professional 
          judgment of the practitioner.
10.67  Settling similar claims of clients.
10.68  Avoiding influence by others than the client.
10.69--10.75  [Reserved]
10.76  Canon 6.
10.77  Failing to act competently.
10.78  Limiting liability to client.
10.79--10.82  [Reserved]
10.83  Canon 7.
10.84  Representing a client zealously.
10.85  Representing a client within the bounds of the law.
10.86  [Reserved]
10.87  Communicating with one of adverse interest.
10.88  Threatening criminal prosecution.
10.89  Conduct in proceedings.
10.90--10.91  [Reserved]
10.92  Contact with witnesses.
10.93  Contact with officials.
10.94--10.99  [Reserved]
10.100  Canon 8.
10.101  Action as a public official.
10.102  Statements concerning officials.
10.103  Practitioner candidate for judicial office.
10.104--10.109  [Reserved]
10.110  Canon 9.
10.111  Avoiding even the appearance of impropriety.
10.112  Preserving identity of funds and property of client.
10.113--10.129  [Reserved]

               Investigations and Disciplinary Proceedings

10.130  Reprimand, suspension or exclusion.
10.131  Investigations.
10.132  Initiating a disciplinary proceeding; reference to an 
          administrative law judge.
10.133  Conference between Director and practitioner; resignation.
10.134  Complaint.
10.135  Service of complaint.
10.136  Answer to complaint.

[[Page 297]]

10.137  Supplemental complaint.
10.138  Contested case.
10.139  Administrative law judge; appointment; responsibilities; review 
          of interlocutory orders; stays.
10.140  Representative for Director or respondent.
10.141  Filing of papers.
10.142  Service of papers.
10.143  Motions.
10.144  Hearings.
10.145  Proof; variance; amendment of pleadings.
10.146--10.148  [Reserved]
10.149  Burden of proof.
10.150  Evidence.
10.151  Depositions.
10.152  Discovery.
10.153  Proposed findings and conclusions; post-hearing memorandum.
10.154  Initial decision of administrative law judge.
10.155  Appeal to the Commissioner.
10.156  Decision of the Commissioner.
10.157  Review of Commissioner's final decision.
10.158  Suspended or excluded practitioner.
10.159  Notice of suspension or exclusion.
10.160  Petition for reinstatement.
10.161  Savings clause.
10.162--10.169  [Reserved]
10.170  Suspension of rules.

    Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32, 41.

    Source: 50 FR 5172, Feb. 6, 1985, unless otherwise noted.



Sec. 10.1  Definitions.

    This part governs solely the practice of patent, trademark, and 
other law before the Patent and Trademark Office. Nothing in this part 
shall be construed to preempt the authority of each State to regulate 
the practice of law, except to the extent necessary for the Patent and 
Trademark Office to accomplish its Federal objectives. Unless otherwise 
clear from the context, the following definitions apply to this part:
    (a) Affidavit means affidavit, declaration under 35 U.S.C. 25 (see 
Secs. 1.68 and 2.20 of this subchapter), or statutory declaration under 
28 U.S.C. 1746.
    (b) Application includes an application for a design, plant, or 
utility patent, an application to reissue any patent, and an application 
to register a trademark.
    (c) Attorney or lawyer means an individual who is a member in good 
standing of the bar of any United States court or the highest court of 
any State. A ``non-lawyer'' is a person who is not an attorney or 
lawyer.
    (d) Canon is defined in Sec. 10.20(a).
    (e) Confidence is defined in Sec. 10.57(a).
    (f) Differing interests include every interest that may adversely 
affect either the judgment or the loyalty of a practitioner to a client, 
whether it be a conflicting, inconsistent, diverse, or other interest.
    (g) Director means the Director of Enrollment and Discipline.
    (h) Disciplinary Rule is defined in Sec. 10.20(b).
    (i) Employee of a tribunal includes all employees of courts, the 
Office, and other adjudicatory bodies.
    (j) Giving information within the meaning of Sec. 10.23(c)(2) 
includes making (1) a written statement or representation or (2) an oral 
statement or representation.
    (k) Law firm includes a professional legal corporation or a 
partnership.
    (l) Legal counsel means practitioner.
    (m) Legal profession includes the individuals who are lawfully 
engaged in practice of patent, trademark, and other law before the 
Office.
    (n) Legal service means any legal service which may lawfully be 
performed by a practitioner before the Office.
    (o) Legal System includes the Office and courts and adjudicatory 
bodies which review matters on which the Office has acted.
    (p) Office means Patent and Trademark Office.
    (q) Person includes a corporation, an association, a trust, a 
partnership, and any other organization or legal entity.
    (r) Practitioner means (1) an attorney or agent registered to 
practice before the Office in patent cases or (2) an individual 
authorized under 5 U.S.C. 500(b) or otherwise as provided by this 
subchapter, to practice before the Office in trademark cases or other 
non-patent cases. A ``suspended or excluded practitioner'' is a 
practitioner who is suspended or excluded under Sec. 10.156. A ``non-
practitioner'' is an individual who is not a practitioner.
    (s) A proceeding before the Office includes an application, a 
reexamination, a protest, a public use proceeding, a patent 
interference, an inter partes trademark proceeding, or any other

[[Page 298]]

proceeding which is pending before the Office.
    (t) Professional legal corporation means a corporation authorized by 
law to practice law for profit.
    (u) Registration means registration to practice before the Office in 
patent cases.
    (v) Respondent is defined in Sec. 10.134(a)(1).
    (w) Secret is defined in Sec. 10.57(a).
    (x) Solicit is defined in Sec. 10.33.
    (y) State includes the District of Columbia, Puerto Rico, and other 
Federal territories and possessions.
    (z) Tribunal includes courts, the Office, and other adjudicatory 
bodies.
    (aa) United States means the United States of America, its 
territories and possessions.



Sec. 10.2  Director of Enrollment and Discipline.

    (a) Appointment. The Commissioner shall appoint a Director of 
Enrollment and Discipline. In the event of the absence of the Director 
or a vacancy in the Office of the Director, the Commissioner may 
designate an employee of the Office to serve as acting Director of 
Enrollment and Discipline. The Director and any acting Director shall be 
an active member in good standing of the bar of a State.
    (b) Duties. The Director shall:
    (1) Receive and act upon applications for registration, prepare and 
grade the examination provided for in Sec. 10.7(b), maintain the 
register provided for in Sec. 10.5, and perform such other duties in 
connection with enrollment and recognition of attorneys and agents as 
may be necessary.
    (2) Conduct investigations into possible violations by practitioners 
of Disciplinary Rules, with the consent of the Committee on Discipline 
initiate disciplinary proceedings under Sec. 10.132(b), and perform such 
other duties in connection with investigations and disciplinary 
proceedings as may be necessary.
    (c) Review of Director's decision. Any final decision of the 
Director refusing to register an individual under Sec. 10.6, recognize 
an individual under Sec. 10.9 or Sec. 10.14(c), or reinstate a suspended 
or excluded petitioner under Sec. 10.160, may be reviewed by petition to 
the Commissioner upon payment of the fee set forth in Sec. 1.21(a)(5). A 
petition filed more than 30 days after the date of the decision of the 
Director may be dismissed as untimely. Any petition shall contain (1) a 
statement of the facts involved and the points to be reviewed and (2) 
the action requested. Briefs or memoranda, if any, in support of the 
petition shall accompany or be embodied therein. The petition will be 
decided on the basis of the record made before the Director and no new 
evidence will be considered by the Commissioner in deciding the 
petition. Copies of documents already of record before the Director 
shall not be submitted with the petition. An oral hearing on the 
petition will not be granted except when considered necessary by the 
Commissioner.

(Approved by the Office of Management and Budget under control number 
0651-0012)



Sec. 10.3  Committee on Enrollment.

    (a) The Commissioner may establish a Committee on Enrollment 
composed of one or more employees of the Office.
    (b) The Committee on Enrollment shall, as necessary, advise the 
Director in connection with the Director's duties under Sec. 10.2(b)(1).



Sec. 10.4  Committee on Discipline.

    (a) The Commissioner shall appoint a Committee on Discipline. The 
Committee on Discipline shall consist of at least three employees of the 
Office, none of whom reports directly or indirectly to the Director or 
the Solicitor. Each member of the Committee on Discipline shall be a 
member in good standing of the bar of a State.
    (b) The Committee on Discipline shall meet at the request of the 
Director and after reviewing evidence presented by the Director shall, 
by majority vote, determine whether there is probable cause to bring 
charges under Sec. 10.132 against a practitioner. When charges are 
brought against a practitioner, no member of the Committee on 
Discipline, employee under the direction of the Director, or associate 
solicitor or assistant solicitor in the Office of the Solicitor shall 
participate in rendering a decision on the charges.
    (c) No discovery shall be authorized of, and no member of the 
Committee on

[[Page 299]]

Discipline shall be required to testify about, deliberations of the 
Committee on Discipline.

 Individuals Entitled to Practice Before the Patent and Trademark Office



Sec. 10.5  Register of attorneys and agents in patent cases.

    A register of attorneys and agents is kept in the Office on which 
are entered the names of all individuals recognized as entitled to 
represent applicants before the Office in the preparation and 
prosecution of applications for patent. Registration in the Office under 
the provisions of this part shall only entitle the individuals 
registered to practice before the Office in patent cases.



Sec. 10.6  Registration of attorneys and agents.

    (a) Attorneys. Any citizen of the United States who is an attorney 
and who fulfills the requirements of this part may be registered as a 
patent attorney to practice before the Office. When appropriate, any 
alien who is an attorney, who lawfully resides in the United States, and 
who fulfills the requirements of this part may be registered as a patent 
attorney to practice before the Office, provided: Registration is not 
inconsistent with the terms upon which the alien was admitted to, and 
resides in, the United States and further provided: The alien may remain 
registered only (1) if the alien continues to lawfully reside in the 
United States and registration does not become inconsistent with the 
terms upon which the alien continues to lawfully reside in the United 
States or (2) if the alien ceases to reside in the United States, the 
alien is qualified to be registered under paragraph (c) of this section. 
See also Sec. 10.9(b).
    (b) Agents. Any citizen of the United States who is not an attorney 
and who fulfills the requirements of this part may be registered as a 
patent agent to practice before the Office. When appropriate, any alien 
who is not an attorney, who lawfully resides in the United States, and 
who fulfills the requirements of this part may be registered as a patent 
agent to practice before the Office, provided: Registration is not 
inconsistent with the terms upon which the alien was admitted to, and 
resides in, the United States, and further provided: The alien may 
remain registered only (1) if the alien continues to lawfully reside in 
the United States and registration does not become inconsistent with the 
terms upon which the alien continues to lawfully reside in the United 
States or (2) if the alien ceases to reside in the United States, the 
alien is qualified to be registered under paragraph (c) of this section. 
See also Sec. 10.9(b).

    Note: All individuals registered prior to November 15, 1938, were 
registered as attorneys, whether they were attorneys or not, and such 
registrations have not been changed.
    (c) Foreigners. Any foreigner not a resident of the United States 
who shall file proof to the satisfaction of the Director that he or she 
is registered and in good standing before the patent office of the 
country in which he or she resides and practices and who is possessed of 
the qualifications stated in Sec. 10.7, may be registered as a patent 
agent to practice before the Office for the limited purpose of 
presenting and prosecuting patent applications of applicants located in 
such country, provided: The patent office of such country allows 
substantially reciprocal privileges to those admitted to practice before 
the United States Patent and Trademark Office. Registration as a patent 
agent under this paragraph shall continue only during the period that 
the conditions specified in this paragraph obtain.

(Approved by the Office of Management and Budget under control number 
0651-0012)

[50 FR 5172, Feb. 6, 1985, as amended at 53 FR 38950, Oct. 4, 1988]



Sec. 10.7  Requirements for registration.

    (a) No individual will be registered to practice before the Office 
unless he or she shall:
    (1) Apply to the Commissioner in writing on a form supplied by the 
Director and furnish all requested information and material and
    (2) Establish to the satisfaction of the Director that he or she is:
    (i) Of good moral character and repute;

[[Page 300]]

    (ii) Possessed of the legal, scientific, and technical 
qualifications necessary to enable him or her to render applicants for 
patents valuable service; and
    (iii) Is otherwise competent to advise and assist applicants for 
patents in the presentation and prosecution of their applications before 
the Office.
    (b) In order that the Director may determine whether an individual 
seeking to have his or her name placed upon the register has the 
qualifications specified in paragraph (a) of this secion, satisfactory 
proof of good moral character and repute and of sufficient basic 
training in scientific and technical matters must be submitted to the 
Director. Except as provided in this paragraph, each applicant for 
registration must take and pass an examination which is held from time 
to time. Each application for admission to take the examination for 
registration must be accompanied by the fee set forth in Sec. 1.21(a)(1) 
of this subchapter. The taking of an examination may be waived in the 
case of any individual who has actively served for at least four years 
in the patent examining corps of the Office. The examination will not be 
administered as a mere academic exercise.
    (c) Within two months from the date an applicant is notified that he 
or she failed an examination, the applicant may request regrading of the 
examination upon payment of the fee set forth in Sec. 1.21(a)(6). Any 
applicant requesting regrading shall particularly point out the errors 
which the applicant believed occurred in the grading of his or her 
examination.

(Approved by the Office of Management and Budget under control number 
0651-0012)



Sec. 10.8  Oath and registration fee.

    Before an individual may have his or her name entered on the 
register of attorneys and agents, the individual must, after his or her 
application is approved, subscribe and swear to an oath or make a 
declaration prescribed by the Commissioner and pay the registration fee 
set forth in Sec. 1.21(a)(2) of this subchapter.

(Approved by the Office of Management and Budget under control number 
0651-0012)



Sec. 10.9  Limited recognition in patent cases.

    (a) Any individual not registered under Sec. 10.6 may, upon a 
showing of circumstances which render it necessary or justifiable, be 
given limited recognition by the Director to prosecute as attorney or 
agent a specified application or specified applications, but limited 
recognition under this paragraph shall not extend further than the 
application or applications specified.
    (b) When registration of a resident alien under paragraph (a) or (b) 
of Sec. 10.6 is not appropriate, the resident alien may be given limited 
recognition as may be appropriate under paragraph (a) of this section.
    (c) An individual not registered under Sec. 10.6 may, if appointed 
by applicant to do so, prosecute an international application only 
before the U.S. International Searching Authority and the U.S. 
International Preliminary Examining Authority, provided: The individual 
has the right to practice before the national office with which the 
international application is filed (PCT Art. 49, Rule 90 and Sec. 1.455) 
or before the International Bureau when acting as Receiving Office 
pursuant to PCT Rules 83.1bis and 90.1.

[50 FR 5172, Feb. 6, 1985, as amended at 58 FR 4348, Jan. 14, 1993; 60 
FR 21440, May 2, 1995]



Sec. 10.10  Restrictions on practice in patent cases.

    (a) Only practitioners who are registered under Sec. 10.6 or 
individuals given limited recognition under Sec. 10.9 will be permitted 
to prosecute patent applications of others before the Office.
    (b) No individual who has served in the patent examining corps of 
the Office may practice before the Office after termination of his or 
her service, unless he or she signs a written undertaking,
    (1) Not to prosecute or aid in any manner in the prosecution of any 
patent application pending in any patent examining group during his or 
her period of service therein and
    (2) Not to prepare or prosecute or to assist in any manner in the 
preparation or prosecution of any patent application of another (i) 
assigned to such group for examination and (ii) filed within two years 
after the date he or

[[Page 301]]

she left such group, without written authorization of the Director. 
Associated and related classes in other patent examining groups may be 
required to be included in the undertaking or designated classes may be 
excluded from the undertaking. When an application for registration is 
made after resignation from the Office, the applicant will not be 
registered if he or she has prepared or prosecuted or assisted in the 
preparation or prosecution of any patent application as indicated in the 
paragraph. Knowingly preparing or prosecuting or providing assistance in 
the preparation or prosecution of any patent application contrary to the 
provisions of this paragraph shall constitute misconduct under 
Sec. 10.23(c)(13) of this part.
    (c) A practitioner who is an employee of the Office cannot prosecute 
or aid in any manner in the prosecution of any patent application before 
the Office.
    (d) Practice before the Office by Government employees is subject to 
any applicable conflict of interest laws, regulations or codes of 
professional responsibility.

(Approved by the Office of Management and Budget under control number 
0651-0012)

[53 FR 38950, Oct. 4, 1988; 53 FR 41278, Oct. 20, 1988]



Sec. 10.11  Removing names from the register.

    (a) Registered attorneys and agents shall notify the Director of any 
change of address. Any notification to the Director of any change of 
address shall be separate from any notice of change of address filed in 
individual applications.
    (b) A letter may be addressed to any individual on the register, at 
the address of which separate notice was last received by the Director, 
for the purpose of ascertaining whether such individual desires to 
remain on the register. The name of any individual failing to reply and 
give any information requested by the Director within a time limit 
specified will be removed from the register and the names of individuals 
so removed will be published in the Official Gazette. The name of any 
individual so removed may be reinstated on the register as may be 
appropriate and upon payment of the fee set forth in Sec. 1.21(a)(3) of 
this subchapter.

(Approved by the Office of Management and Budget under control number 
0651-0012)



Secs. 10.12--10.13  [Reserved]



Sec. 10.14  Individuals who may practice before the Office in trademark and other non-patent cases.

    (a) Attorneys. Any individual who is an attorney may represent 
others before the Office in trademark and other non-patent cases. An 
attorney is not required to apply for registration or recognition to 
practice before the Office in trademark and other non-patent cases.
    (b) Non-lawyers. Individuals who are not attorneys are not 
recognized to practice before the Office in trademark and other non-
patent cases, except that individuals not attorneys who were recognized 
to practice before the Office in trademark cases under this chapter 
prior to January 1, 1957, will be recognized as agents to continue 
practice before the Office in trademark cases.
    (c) Foreigners. Any foreign attorney or agent not a resident of the 
United States who shall prove to the satisfaction of the Director that 
he or she is registered or in good standing before the patent or 
trademark office of the country in which he or she resides and 
practices, may be recognized for the limited purpose of representing 
parties located in such country before the Office in the presentation 
and prosecution of trademark cases, provided: The patent or trademark 
office of such country allows substantially reciprocal privileges to 
those permitted to practice in trademark cases before the United States 
Patent and Trademark Office. Recognition under this paragraph shall 
continue only during the period that the conditions specified in this 
paragraph obtain.
    (d) Recognition of any individual under this section shall not be 
construed as sanctioning or authorizing the performance of any act 
regarded in the jurisdiction where performed as the unauthorized 
practice of law.
    (e) No individual other than those specified in paragraphs (a), (b), 
and (c) of this section will be permitted to practice before the Office 
in trademark

[[Page 302]]

cases. Any individual may appear in a trademark or other non-patent case 
in his or her own behalf. Any individual may appear in a trademark case 
for (1) a firm of which he or she is a member or (2) a corporation or 
association of which he or she is an officer and which he or she is 
authorized to represent, if such firm, corporation, or association is a 
party to a trademark proceeding pending before the Office.



Sec. 10.15  Refusal to recognize a practitioner.

    Any practitioner authorized to appear before the Office may be 
suspended or excluded in accordance with the provisions of this part. 
Any practitioner who is suspended or excluded under this subpart or 
removed under Sec. 10.11(b) shall not be entitled to practice before the 
Office.



Secs. 10.16--10.17  [Reserved]



Sec. 10.18  Signature and certificate for correspondence filed in the Patent and Trademark Office.

    (a) For all documents filed in the Office in patent, trademark, and 
other non-patent matters, except for correspondence that is required to 
be signed by the applicant or party, each piece of correspondence filed 
by a practitioner in the Patent and Trademark Office must bear a 
signature, personally signed by such practitioner, in compliance with 
Sec. 1.4(d)(1) of this chapter.
    (b) By presenting to the Office (whether by signing, filing, 
submitting, or later advocating) any paper, the party presenting such 
paper, whether a practitioner or non-practitioner, is certifying that--
    (1) All statements made therein of the party's own knowledge are 
true, all statements made therein on information and belief are believed 
to be true, and all statements made therein are made with the knowledge 
that whoever, in any matter within the jurisdiction of the Patent and 
Trademark Office, knowingly and willfully falsifies, conceals, or covers 
up by any trick, scheme, or device a material fact, or makes any false, 
fictitious or fraudulent statements or representations, or makes or uses 
any false writing or document knowing the same to contain any false, 
fictitious or fraudulent statement or entry, shall be subject to the 
penalties set forth under 18 U.S.C. 1001, and that violations of this 
paragraph may jeopardize the validity of the application or document, or 
the validity or enforceability of any patent, trademark registration, or 
certificate resulting therefrom; and
    (2) To the best of the party's knowledge, information and belief, 
formed after an inquiry reasonable under the circumstances, that--
    (i) The paper is not being presented for any improper purpose, such 
as to harass someone or to cause unnecessary delay or needless increase 
in the cost of prosecution before the Office;
    (ii) The claims and other legal contentions therein are warranted by 
existing law or by a nonfrivolous argument for the extension, 
modification, or reversal of existing law or the establishment of new 
law;
    (iii) The allegations and other factual contentions have evidentiary 
support or, if specifically so identified, are likely to have 
evidentiary support after a reasonable opportunity for further 
investigation or discovery; and
    (iv) The denials of factual contentions are warranted on the 
evidence, or if specifically so identified, are reasonably based on a 
lack of information or belief.
    (c) Violations of paragraph (b)(1) of this section by a practitioner 
or non-practitioner may jeopardize the validity of the application or 
document, or the validity or enforceability of any patent, trademark 
registration, or certificate resulting therefrom. Violations of any of 
paragraphs (b)(2) (i) through (iv) of this section are, after notice and 
reasonable opportunity to respond, subject to such sanctions as deemed 
appropriate by the Commissioner, or the Commissioner's designee, which 
may include, but are not limited to, any combination of--
    (1) Holding certain facts to have been established;
    (2) Returning papers;
    (3) Precluding a party from filing a paper, or presenting or 
contesting an issue;
    (4) Imposing a monetary sanction;
    (5) Requiring a terminal disclaimer for the period of the delay; or

[[Page 303]]

    (6) Terminating the proceedings in the Patent and Trademark Office.
    (d) Any practitioner violating the provisions of this section may 
also be subject to disciplinary action. See Sec. 10.23(c)(15).

[62 FR 53206, Oct. 10, 1997]



Sec. 10.19  [Reserved]

     Patent and Trademark Office Code of Professional Responsibility



Sec. 10.20  Canons and Disciplinary Rules.

    (a) Canons are set out in Secs. 10.21, 10.30, 10.46, 10.56, 10.61, 
10.76, 10.83, 10.100, and 10.110. Canons are statements of axiomatic 
norms, expressing in general terms the standards of professional conduct 
expected of practitioners in their relationships with the public, with 
the legal system, and with the legal profession.
    (b) Disciplinary Rules are set out in Secs. 10.22--10.24, 10.31--
10.40, 10.47--10.57, 10.62--10.68, 10.77, 10.78, 10.84, 10.85, 10.87--
10.89, 10.92, 10.93, 10.101--10.103, 10.111, and 10.112. Disciplinary 
Rules are mandatory in character and state the minimum level of conduct 
below which no practitioner can fall without being subjected to 
disciplinary action.



Sec. 10.21  Canon 1.

    A practitioner should assist in maintaining the integrity and 
competence of the legal profession.



Sec. 10.22  Maintaining integrity and competence of the legal profession.

    (a) A practitioner is subject to discipline if the practitioner has 
made a materially false statement in, or if the practitioner has 
deliberately failed to disclose a material fact requested in connection 
with, the practitioner's application for registration or membership in 
the bar of any United States court or any State court or his or her 
authority to otherwise practice before the Office in trademark and other 
non-patent cases.
    (b) A practitioner shall not further the application for 
registration or membership in the bar of any United States court, State 
court, or administrative agency of another person known by the 
practitioner to be unqualified in respect to character, education, or 
other relevant attribute.



Sec. 10.23  Misconduct.

    (a) A practitioner shall not engage in disreputable or gross 
misconduct.
    (b) A practitioner shall not:
    (1) Violate a Disciplinary Rule.
    (2) Circumvent a Disciplinary Rule through actions of another.
    (3) Engage in illegal conduct involving moral turpitude.
    (4) Engage in conduct involving dishonesty, fraud, deceit, or 
misrepresentation.
    (5) Engage in conduct that is prejudicial to the administration of 
justice.
    (6) Engage in any other conduct that adversely reflects on the 
practitioner's fitness to practice before the Office.
    (c) Conduct which constitutes a violation of paragraphs (a) and (b) 
of this section includes, but is not limited to:
    (1) Conviction of a criminal offense involving moral turpitude, 
dishonesty, or breach of trust.
    (2) Knowingly giving false or misleading information or knowingly 
participating in a material way in giving false or misleading 
information, to:
    (i) A client in connection with any immediate, prospective, or 
pending business before the Office.
    (ii) The Office or any employee of the Office.
    (3) Misappropriation of, or failure to properly or timely remit, 
funds received by a practitioner or the practitioner's firm from a 
client to pay a fee which the client is required by law to pay to the 
Office.
    (4) Directly or indirectly improperly influencing, attempting to 
improperly influence, offering or agreeing to improperly influence, or 
attempting to offer or agree to improperly influence an official action 
of any employee of the Office by:
    (i) Use of threats, false accusations, duress, or coercion,
    (ii) An offer of any special inducement or promise of advantage, or
    (iii) Improperly bestowing of any gift, favor, or thing of value.
    (5) Suspension or disbarment from practice as an attorney or agent 
on ethical grounds by any duly constituted authority of a State or the

[[Page 304]]

United States or, in the case of a practitioner who resides in a foreign 
country or is registered under Sec. 10.6(c), by any duly constituted 
authority of:
    (i) A State,
    (ii) The United States, or
    (iii) The country in which the practitioner resides.
    (6) Knowingly aiding or abetting a practitioner suspended or 
excluded from practice before the Office in engaging in unauthorized 
practice before the Office under Sec. 10.158.
    (7) Knowingly withholding from the Office information identifying a 
patent or patent application of another from which one or more claims 
have been copied. See Secs. 1.604(b) and 1.607(c) of this subchapter.
    (8) Failing to inform a client or former client or failing to timely 
notify the Office of an inability to notify a client or former client of 
correspondence received from the Office or the client's or former 
client's opponent in an inter partes proceeding before the Office when 
the correspondence (i) could have a significant effect on a matter 
pending before the Office, (ii) is received by the practitioner on 
behalf of a client or former client and (iii) is correspondence of which 
a reasonable practitioner would believe under the circumstances the 
client or former client should be notified.
    (9) Knowingly misusing a ``Certificate of Mailing or Transmission'' 
under Sec. 1.8 of this chapter.
    (10) Knowingly violating or causing to be violated the requirements 
of Sec. 1.56 or Sec. 1.555 of this subchapter.
    (11) Knowingly filing or causing to be filed an application 
containing any material alteration made in the application papers after 
the signing of the accompanying oath or declaration without identifying 
the alteration at the time of filing the application papers.
    (12) Knowingly filing, or causing to be filed, a frivolous complaint 
alleging a violation by a practitioner of the Patent and Trademark 
Office Code of Professional Responsibility.
    (13) Knowingly preparing or prosecuting or providing assistance in 
the preparation or prosecution of a patent application in violation of 
an undertaking signed under Sec. 10.10(b).
    (14) Knowingly failing to advise the Director in writing of any 
change which would preclude continued registration under Sec. 10.6.
    (15) Signing a paper filed in the Office in violation of the 
provisions of Sec. 10.18 or making a scandalous or indecent statement in 
a paper filed in the Office.
    (16) Willfully refusing to reveal or report knowledge or evidence to 
the Director contrary to Sec. 10.24 or paragraph (b) of Sec. 10.131.
    (17) Representing before the Office in a patent case either a joint 
venture comprising an inventor and an invention developer or an inventor 
referred to the registered practitioner by an invention developer when 
(i) the registered practitioner knows, or has been advised by the 
Office, that a formal complaint filed by a Federal or State agency, 
based on any violation of any law relating to securities, unfair methods 
of competition, unfair or deceptive acts or practices, mail fraud, or 
other civil or criminal conduct, is pending before a Federal or State 
court or Federal or State agency, or has been resolved unfavorably by 
such court or agency, against the invention developer in connection with 
invention development services and (ii) the registered practitioner 
fails to fully advise the inventor of the existence of the pending 
complaint or unfavorable resolution thereof prior to undertaking or 
continuing representation of the joint venture or inventor. ``Invention 
developer'' means any person, and any agent, employee, officer, partner, 
or independent contractor thereof, who is not a registered practitioner 
and who advertises invention development services in media of general 
circulation or who enters into contracts for invention development 
services with customers as a result of such advertisement. ``Invention 
development services'' means acts of invention development required or 
promised to be performed, or actually performed, or both, by an 
invention developer for a customer. ``Invention development'' means the 
evaluation, perfection, marketing, brokering, or promotion of an 
invention on behalf of a customer by an invention developer, including a 
patent search, preparation of a patent application, or any

[[Page 305]]

other act done by an invention developer for consideration toward the 
end of procuring or attempting to procure a license, buyer, or patent 
for an invention. ``Customer'' means any individual who has made an 
invention and who enters into a contract for invention development 
services with an invention developer with respect to the invention by 
which the inventor becomes obligated to pay the invention developer less 
than $5,000 (not to include any additional sums which the invention 
developer is to receive as a result of successful development of the 
invention). ``Contract for invention development services'' means a 
contract for invention development services with an invention developer 
with respect to an invention made by a customer by which the inventor 
becomes obligated to pay the invention developer less than $5,000 (not 
to include any additional sums which the invention developer is to 
receive as a result of successful development of the invention).
    (18) In the absence of information sufficient to establish a 
reasonable belief that fraud or inequitable conduct has occurred, 
alleging before a tribunal that anyone has committed a fraud on the 
Office or engaged in inequitable conduct in a proceeding before the 
Office.
    (19) Action by an employee of the Office contrary to the provisions 
set forth in Sec. 10.10(c).
    (20) Knowing practice by a Government employee contrary to 
applicable Federal conflict of interest laws, or regulations of the 
Department, agency or commission employing said individual.
    (d) A practitioner who acts with reckless indifference to whether a 
representation is true or false is chargeable with knowledge of its 
falsity. Deceitful statements of half-truths or concealment of material 
facts shall be deemed actual fraud within the meaning of this part.

[50 FR 5172, Feb. 6, 1985; 50 FR 25073, June 17, 1985; 50 FR 25980, June 
24, 1985, as amended at 53 FR 38950, Oct. 4, 1988; 53 FR 41278, Oct. 20, 
1988; 57 FR 2036, Jan. 17, 1992; 58 FR 54504, Oct. 22, 1993; 61 FR 
56448, Nov. 1, 1996; 62 FR 53206, Oct. 10, 1997]



Sec. 10.24  Disclosure of information to authorities.

    (a) A practitioner possessing unprivileged knowledge of a violation 
of a Disciplinary Rule shall report such knowledge to the Director.
    (b) A practitioner possessing unprivileged knowledge or evidence 
concerning another practitioner, employee of the Office, or a judge 
shall reveal fully such knowledge or evidence upon proper request of a 
tribunal or other authority empowered to investigate or act upon the 
conduct of practitioners, employees of the Office, or judges.

(Approved by the Office of Management and Budget under control number 
0651-0017)



Secs. 10.25--10.29  [Reserved]



Sec. 10.30  Canon 2.

    A practitioner should assist the legal profession in fulfilling its 
duty to make legal counsel available.



Sec. 10.31  Communications concerning a practitioner's services.

    (a) No practitioner shall with respect to any prospective business 
before the Office, by word, circular, letter, or advertising, with 
intent to defraud in any manner, deceive, mislead, or threaten any 
prospective applicant or other person having immediate or prospective 
business before the Office.
    (b) A practitioner may not use the name of a Member of either House 
of Congress or of an individual in the service of the United States in 
advertising the practitioner's practice before the Office.
    (c) Unless authorized under Sec. 10.14(b), a non-lawyer practitioner 
shall not hold himself or herself out as authorized to practice before 
the Office in trademark cases.
    (d) Unless a practitioner is an attorney, the practitioner shall not 
hold himself or herself out:
    (1) To be an attorney or lawyer or
    (2) As authorized to practice before the Office in non-patent and 
trademark cases.



Sec. 10.32  Advertising.

    (a) Subject to Sec. 10.31, a practitioner may advertise services 
through public media, including a telephone directory,

[[Page 306]]

legal directory, newspaper, or other periodical, radio, or television, 
or through written communications not involving solicitation as defined 
by Sec. 10.33.
    (b) A practitioner shall not give anything of value to a person for 
recommending the practitioner's services, except that a practitioner may 
pay the reasonable cost of advertising or written communication 
permitted by this section and may pay the usual charges of a not-for-
profit lawyer referral service or other legal service organization.
    (c) Any communication made pursuant to this section shall include 
the name of at least one practitioner responsible for its content.



Sec. 10.33  Direct contact with prospective clients.

    A practitioner may not solicit professional employment from a 
prospective client with whom the practitioner has no family or prior 
professional relationship, by mail, in-person or otherwise, when a 
significant motive for the practitioner's doing so is the practitioner's 
pecuniary gain under circumstances evidencing undue influence, 
intimidation, or overreaching. The term ``solicit'' includes contact in 
person, by telephone or telegraph, by letter or other writing, or by 
other communication directed to a specific recipient, but does not 
include letters addressed or advertising circulars distributed generally 
to persons not specifically known to need legal services of the kind 
provided by the practitioner in a particular matter, but who are so 
situated that they might in general find such services useful.



Sec. 10.34  Communication of fields of practice.

    A registered practitioner may state or imply that the practitioner 
is a specialist as follows:
    (a) A registered practitioner who is an attorney may use the 
designation ``Patents,'' ``Patent Attorney,'' ``Patent Lawyer,'' 
``Registered Patent Attorney,'' or a substantially similar designation.
    (b) A registered practitioner who is not an attorney may use the 
designation ``Patents,'' ``Patent Agent,'' ``Registered Patent Agent,'' 
or a substantially similar designation, except that any practitioner who 
was registered prior to November 15, 1938, may refer to himself or 
herself as a ``patent attorney.''



Sec. 10.35  Firm names and letterheads.

    (a) A practitioner shall not use a firm name, letterhead, or other 
professional designation that violates Sec. 10.31. A trade name may be 
used by a practitioner in private practice if it does not imply a 
current connection with a government agency or with a public or 
charitable legal services organization and is not otherwise in violation 
of Sec. 10.31.
    (b) Practitioners may state or imply that they practice in a 
partnership or other organization only when that is the fact.



Sec. 10.36  Fees for legal services.

    (a) A practitioner shall not enter into an agreement for, charge, or 
collect an illegal or clearly excessive fee.
    (b) A fee is clearly excessive when, after a review of the facts, a 
practitioner of ordinary prudence would be left with a definite and firm 
conviction that the fee is in excess of a reasonable fee. Factors to be 
considered as guides in determining the reasonableness of a fee include 
the following:
    (1) The time and labor required, the novelty and difficulty of the 
questions involved, and the skill requisite to perform the legal service 
properly.
    (2) The likelihood, if apparent to the client, that the acceptance 
of the particular employment will preclude other employment by the 
practitioner.
    (3) The fee customarily charged for similar legal services.
    (4) The amount involved and the results obtained.
    (5) The time limitations imposed by the client or by the 
circumstances.
    (6) The nature and length of the professional relationship with the 
client.
    (7) The experience, reputation, and ability of the practitioner or 
practitioners performing the services.
    (8) Whether the fee is fixed or contingent.

[[Page 307]]



Sec. 10.37  Division of fees among practitioners.

    (a) A practitioner shall not divide a fee for legal services with 
another practitioner who is not a partner in or associate of the 
practitioner's law firm or law office, unless:
    (1) The client consents to employment of the other practitioner 
after a full disclosure that a division of fees will be made.
    (2) The division is made in proportion to the services performed and 
responsibility assumed by each.
    (3) The total fee of the practitioners does not clearly exceed 
reasonable compensation for all legal services rendered to the client.
    (b) This section does not prohibit payment to a former partner or 
associate pursuant to a separation or retirement agreement.



Sec. 10.38  Agreements restricting the practice of a practitioner.

    (a) A practitioner shall not be a party to or participate in a 
partnership or employment agreement with another practitioner that 
restricts the right of a practitioner to practice before the Office 
after the termination of a relationship created by the agreement, except 
as a condition to payment of retirement benefits.
    (b) In connection with the settlement of a controversy or suit, a 
practitioner shall not enter into an agreement that restricts the 
practitioner's right to practice before the Office.



Sec. 10.39  Acceptance of employment.

    A practitioner shall not accept employment on behalf of a person if 
the practitioner knows or it is obvious that such person wishes to:
    (a) Bring a legal action, commence a proceeding before the Office, 
conduct a defense, assert a position in any proceeding pending before 
the Office, or otherwise have steps taken for the person, merely for the 
purpose of harassing or maliciously injuring any other person.
    (b) Present a claim or defense in litigation or any proceeding 
before the Office that is not warranted under existing law, unless it 
can be supported by good faith argument for an extension, modification, 
or reversal of existing law.



Sec. 10.40  Withdrawal from employment,

    (a) A practitioner shall not withdraw from employment in a 
proceeding before the Office without permission from the Office (see 
Secs. 1.36 and 2.19 of this subchapter). In any event, a practitioner 
shall not withdraw from employment until the practitioner has taken 
reasonable steps to avoid foreseeable prejudice to the rights of the 
client, including giving due notice to his or her client, allowing time 
for employment of another practitioner, delivering to the client all 
papers and property to which the client is entitled, and complying with 
applicable laws and rules. A practitioner who withdraws from employment 
shall refund promptly any part of a fee paid in advance that has not 
been earned.
    (b) Mandatory withdrawal. A practitioner representing a client 
before the Office shall withdraw from employment if:
    (1) The practitioner knows or it is obvious that the client is 
bringing a legal action, commencing a proceeding before the Office, 
conducting a defense, or asserting a position in litigation or any 
proceeding pending before the Office, or is otherwise having steps taken 
for the client, merely for the purpose of harassing or maliciously 
injuring any person;
    (2) The practitoner knows or it is obvious that the practitoner's 
continued employment will result in violation of a Disciplinary Rule;
    (3) The practitioner's mental or physical condition renders it 
unreasonably difficult for the practitioner to carry out the employment 
effectively; or
    (4) The practitioner is discharged by the client.
    (c) Permissive withdrawal. If paragraph (b) of this section is not 
applicable, a practitioner may not request permission to withdraw in 
matters pending before the Office unless such request or such withdrawal 
is because:
    (1) The petitioner's client:
    (i) Insists upon presenting a claim or defense that is not warranted 
under existing law and cannot be supported by good faith argument for an 
extension,

[[Page 308]]

modification, or reversal of existing law;
    (ii) Personally seeks to pursue an illegal course of conduct;
    (iii) Insists that the practitioner pursue a course of conduct that 
is illegal or that is prohibited under a Disciplinary Rule;
    (iv) By other conduct renders it unreasonably difficult for the 
practitioner to carry out the employment effectively;
    (v) Insists, in a matter not pending before a tribunal, that the 
practitioner engage in conduct that is contrary to the judgment and 
advice of the practitioner but not prohibited under the Disciplinary 
Rule; or
    (vi) Has failed to pay one or more bills rendered by the 
practitioner for an unreasonable period of time or has failed to honor 
an agreement to pay a retainer in advance of the performance of legal 
services.
    (2) The practitioner's continued employment is likely to result in a 
violation of a Disciplinary Rule;
    (3) The practitioner's inability to work with co-counsel indicates 
that the best interests of the client likely will be served by 
withdrawal;
    (4) The practitioner's mental or physical condition renders it 
difficult for the practitioner to carry out the employment effectively;
    (5) The practitioner's client knowingly and freely assents to 
termination of the employment; or
    (6) The practitioner believes in good faith, in a proceeding pending 
before the Office, that the Office will find the existence of other good 
cause for withdrawal.



Secs. 10.41--10.45  [Reserved]



Sec. 10.46  Canon 3.

    A practitioner should assist in preventing the unauthorized practice 
of law.



Sec. 10.47  Aiding unauthorized practice of law.

    (a) A practitioner shall not aid a non-practitioner in the 
unauthorized practice of law before the Office.
    (b) A practitioner shall not aid a suspended or excluded 
practitioner in the practice of law before the Office.
    (c) A practitioner shall not aid a non-lawyer in the unauthorized 
practice of law.



Sec. 10.48  Sharing legal fees.

    A practitioner or a firm of practitioners shall not share legal fees 
with a non-practitioner except that:
    (a) An agreement by a practitioner with the practitioner's firm, 
partner, or associate may provide for the payment of money, over a 
reasonable period of time after the practitioner's death, to the 
practitioner's estate or to one or more specified persons.
    (b) A practitioner who undertakes to complete unfinished legal 
business of a deceased practitioner may pay to the estate of the 
deceased practitioner that proportion of the total compensation which 
fairly represents the services rendered by the deceased practitioner.
    (c) A practitioner or firm of practitioners may include non-
practitioner employees in a compensation or retirement plan, even though 
the plan is based in whole or in part on a profit-sharing arrangement, 
providing such plan does not circumvent another Disciplinary Rule.

[50 FR 5172, Feb. 6, 1985, as amended at 58 FR 54511, Oct. 22, 1993]



Sec. 10.49  Forming a partnership with a non-practitioner.

    A practitioner shall not form a partnership with a non-practitioner 
if any of the activities of the partnership consist of the practice of 
patent, trademark, or other law before the Office.



Secs. 10.50--10.55  [Reserved]



Sec. 10.56  Canon 4.

    A practitioner should preserve the confidences and secrets of a 
client.



Sec. 10.57  Preservation of confidences and secrets of a client.

    (a) ``Confidence'' refers to information protected by the attorney-
client or agent-client privilege under applicable law. ``Secret'' refers 
to other information gained in the professional relationship that the 
client has requested be held inviolate or the disclosure of which would 
be embarrassing or would be likely to be detrimental to the client.

[[Page 309]]

    (b) Except when permitted under paragraph (c) of this section, a 
practitioner shall not knowingly:
    (1) Reveal a confidence or secret of a client.
    (2) Use a confidence or secret of a client to the disadvantage of 
the client.
    (3) Use a confidence or secret of a client for the advantage of the 
practitioner or of a third person, unless the client consents after full 
disclosure.
    (c) A practitioner may reveal:
    (1) Confidences or secrets with the consent of the client affected 
but only after a full disclosure to the client.
    (2) Confidences or secrets when permitted under Disciplinary Rules 
or required by law or court order.
    (3) The intention of a client to commit a crime and the information 
necessary to prevent the crime.
    (4) Confidences or secrets necessary to establish or collect the 
practitioner's fee or to defend the practitioner or the practitioner's 
employees or associates against an accusation of wrongful conduct.
    (d) A practitioner shall exercise reasonable care to prevent the 
practitioner's employees, associates, and others whose services are 
utilized by the practitioner from disclosing or using confidences or 
secrets of a client, except that a practitioner may reveal the 
information allowed by paragraph (c) of this section through an 
employee.



Secs. 10.58--10.60  [Reserved]



Sec. 10.61  Canon 5.

    A practitioner should exercise independent professional judgment on 
behalf of a client.



Sec. 10.62  Refusing employment when the interest of the practitioner may impair the practitioner's independent professional judgment.

    (a) Except with the consent of a client after full disclosure, a 
practitioner shall not accept employment if the exercise of the 
practitioner's professional judgment on behalf of the client will be or 
reasonably may be affected by the practitioner's own financial, 
business, property, or personal interests.
    (b) A practitioner shall not accept employment in a proceeding 
before the Office if the practitioner knows or it is obvious that the 
practitioner or another practitioner in the practitioner's firm ought to 
sign an affidavit to be filed in the Office or be called as a witness, 
except that the practitioner may undertake the employment and the 
practitioner or another practitioner in the practitioner's firm may 
testify:
    (1) If the testimony will relate solely to an uncontested matter.
    (2) If the testimony will relate solely to a matter of formality and 
there is no reason to believe that substantial evidence will be offered 
in opposition to the testimony.
    (3) If the testimony will relate solely to the nature and value of 
legal services rendered in the case by the practitioner or the 
practitioner's firm to the client.
    (4) As to any matter, if refusal would work a substantial hardship 
on the client because of the distinctive value of the practitioner or 
the practitioner's firm as counsel in the particular case.



Sec. 10.63  Withdrawal when the practitioner becomes a witness.

    (a) If, after undertaking employment in a proceeding in the Office, 
a practitioner learns or it is obvious that the practitioner or another 
practitioner in the practitioner's firm ought to sign an affidavit to be 
filed in the Office or be called as a witness on behalf of a 
practitioner's client, the practitioner shall withdraw from the conduct 
of the proceeding and the practitioner's firm, if any, shall not 
continue representation in the proceeding, except that the practitioner 
may continue the representation and the practitioner or another 
practitioner in the practitioner's firm may testify in the circumstances 
enumerated in paragraphs (1) through (4) of Sec. 10.62(b).
    (b) If, after undertaking employment in a proceeding before the 
Office, a practitioner learns or it is obvious that the practitioner or 
another practitioner in the practitioner's firm may be asked to sign an 
affidavit to be filed in the Office or be called as a witness other than 
on behalf of the practitioner's client, the practitioner may continue 
the representation until it is apparent that the practitioner's 
affidavit or testimony is or may be prejudicial to the practitioner's 
client.

[[Page 310]]



Sec. 10.64  Avoiding acquisition of interest in litigation or proceeding before the Office.

    (a) A practitioner shall not acquire a proprietary interest in the 
subject matter of a proceeding before the Office which the practitioner 
is conducting for a client, except that the practitioner may:
    (1) Acquire a lien granted by law to secure the practitioner's fee 
or expenses; or
    (2) Contract with a client for a reasonable contingent fee; or
    (3) In a patent case, take an interest in the patent as part or all 
of his or her fee.
    (b) While representing a client in connection with a contemplated or 
pending proceeding before the Office, a practitioner shall not advance 
or guarantee financial assistance to a client, except that a 
practitioner may advance or guarantee the expenses of going forward in a 
proceeding before the Office including fees required by law to be paid 
to the Office, expenses of investigation, expenses of medical 
examination, and costs of obtaining and presenting evidence, provided 
the client remains ultimately liable for such expenses. A practitioner 
may, however, advance any fee required to prevent or remedy an 
abandonment of a client's application by reason of an act or omission 
attributable to the practitioner and not to the client, whether or not 
the client is ultimately liable for such fee.



Sec. 10.65  Limiting business relations with a client.

    A practitioner shall not enter into a business transaction with a 
client if they have differing interests therein and if the client 
expects the practitioner to exercise professional judgment therein for 
the protection of the client, unless the client has consented after full 
disclosure.



Sec. 10.66  Refusing to accept or continue employment if the interests of another client may impair the independent professional judgment of the practitioner.

    (a) A practitioner shall decline proffered employment if the 
exercise of the practitioner's independent professional judgment in 
behalf of a client will be or is likely to be adversely affected by the 
acceptance of the proffered employment, or if it would be likely to 
involve the practitioner in representing differing interests, except to 
the extent permitted under paragraph (c) of this section.
    (b) A practitioner shall not continue multiple employment if the 
exercise of the practitioner's independent professional judgment in 
behalf of a client will be or is likely to be adversely affected by the 
practitoner's representation of another client, or if it would be likely 
to involve the practitioner in representing differing interests, except 
to the extent permitted under paragraph (c) of this section.
    (c) In the situations covered by paragraphs (a) and (b) of this 
section a practitioner may represent multiple clients if it is obvious 
that the practitioner can adequately represent the interest of each and 
if each consents to the representation after full disclosure of the 
possible effect of such representation on the exercise of the 
practitioner's independent professional judgment on behalf of each.
    (d) If a practitioner is required to decline employment or to 
withdraw from employment under a Disciplinary Rule, no partner, or 
associate, or any other practitioner affiliated with the practitioner or 
the practitioner's firm, may accept or continue such employment unless 
otherwise ordered by the Director or Commissioner.



Sec. 10.67  Settling similar claims of clients.

    A practitioner who represents two or more clients shall not make or 
participate in the making of an aggregate settlement of the claims of or 
against the practitioner's clients, unless each client has consented to 
the settlement after being advised of the existence and nature of all 
the claims involved in the proposed settlement, of the total amount of 
the settlement, and of the participation of each person in the 
settlement.

[[Page 311]]



Sec. 10.68  Avoiding influence by others than the client.

    (a) Except with the consent of the practitioner's client after full 
disclosure, a practitioner shall not:
    (1) Accept compensation from one other than the practitioner's 
client for the practitioner's legal services to or for the client.
    (2) Accept from one other than the practitioner's client any thing 
of value related to the practitioner's representation of or the 
practitioner's employment by the client.
    (b) A practitioner shall not permit a person who recommends, 
employs, or pays the practitioner to render legal services for another, 
to direct or regulate the practitioner's professional judgment in 
rendering such legal services.
    (c) A practitioner shall not practice with or in the form of a 
professional corporation or association authorized to practice law for a 
profit, if a non-practitioner has the right to direct or control the 
professional judgment of a practitioner.



Secs. 10.69--10.75  [Reserved]



Sec. 10.76  Canon 6.

    A practitioner should represent a client competently.



Sec. 10.77  Failing to act competently.

    A practitioner shall not:
    (a) Handle a legal matter which the practitioner knows or should 
know that the practitioner is not competent to handle, without 
associating with the practitioner another practitioner who is competent 
to handle it.
    (b) Handle a legal matter without preparation adequate in the 
circumstances.
    (c) Neglect a legal matter entrusted to the practitioner.



Sec. 10.78  Limiting liability to client.

    A practitioner shall not attempt to exonerate himself or herself 
from, or limit his or her liability to, a client for his or her personal 
malpractice.



Secs. 10.79--10.82  [Reserved]



Sec. 10.83  Canon 7.

    A practitioner should represent a client zealously within the bounds 
of the law.



Sec. 10.84  Representing a client zealously.

    (a) A practitioner shall not intentionally:
    (1) Fail to seek the lawful objectives of a client through 
reasonably available means permitted by law and the Disciplinary Rules, 
except as provided by paragraph (b) of this section. A practitioner does 
not violate the provisions of this section, however, by acceding to 
reasonable requests of opposing counsel which do not prejudice the 
rights of the client, by being punctual in fulfilling all professional 
commitments, by avoiding offensive tactics, or by treating with courtesy 
and consideration all persons involved in the legal process.
    (2) Fail to carry out a contract of employment entered into with a 
client for professional services, but a practitioner may withdraw as 
permitted under Secs. 10.40, 10.63, and 10.66.
    (3) Prejudice or damage a client during the course of a professional 
relationship, except as required under this part.
    (b) In representation of a client, a practitioner may:
    (1) Where permissible, exercise professional judgment to waive or 
fail to assert a right or position of the client.
    (2) Refuse to aid or participate in conduct that the practitioner 
believes to be unlawful, even though there is some support for an 
argument that the conduct is legal.



Sec. 10.85  Representing a client within the bounds of the law.

    (a) In representation of a client, a practitioner shall not:
    (1) Initiate or defend any proceeding before the Office, assert a 
position, conduct a defense, delay a trial or proceeding before the 
Office, or take other action on behalf of the practitioner's client when 
the practitioner knows or when it is obvious that such action

[[Page 312]]

would serve merely to harass or maliciously injure another.
    (2) Knowingly advance a claim or defense that is unwarranted under 
existing law, except that a practitioner may advance such claim or 
defense if it can be supported by good faith argument for an extension, 
modification, or reversal of existing law.
    (3) Conceal or knowingly fail to disclose that which the 
practitioner is required by law to reveal.
    (4) Knowingly use perjured testimony or false evidence.
    (5) Knowingly make a false statement of law or fact.
    (6) Participate in the creation or preservation of evidence when the 
practitioner knows or it is obvious that the evidence is false.
    (7) Counsel or assist a client in conduct that the practitioner 
knows to be illegal or fraudulent.
    (8) Knowingly engage in other illegal conduct or conduct contrary to 
a Disciplinary Rule.
    (b) A practitioner who receives information clearly establishing 
that:
    (1) A client has, in the course of the representation, perpetrated a 
fraud upon a person or tribunal shall promptly call upon the client to 
rectify the same, and if the client refuses or is unable to do so the 
practitioner shall reveal the fraud to the affected person or tribunal.
    (2) A person other than a client has perpetrated a fraud upon a 
tribunal shall promptly reveal the fraud to the tribunal.



Sec. 10.86  [Reserved]



Sec. 10.87  Communicating with one of adverse interest.

    During the course of representation of a client, a practitioner 
shall not:
    (a) Communicate or cause another to communicate on the subject of 
the representation with a party the practitioner knows to be represented 
by another practitioner in that matter unless the practitioner has the 
prior consent of the other practitioner representing such other party or 
is authorized by law to do so. It is not improper, however, for a 
practitioner to encourage a client to meet with an opposing party for 
settlement discussions.
    (b) Give advice to a person who is not represented by a practitioner 
other than the advice to secure counsel, if the interests of such person 
are or have a reasonable possibility of being in conflict with the 
interests of the practitioner's client.



Sec. 10.88  Threatening criminal prosecution.

    A practitioner shall not present, participate in presenting, or 
threaten to present criminal charges solely to obtain an advantage in 
any prospective or pending proceeding before the Office.



Sec. 10.89  Conduct in proceedings.

    (a) A practitioner shall not disregard or advise a client to 
disregard any provision of this Subchapter or a decision of the Office 
made in the course of a proceeding before the Office, but the 
practitioner may take appropriate steps in good faith to test the 
validity of such provision or decision.
    (b) In presenting a matter to the Office, a practitioner shall 
disclose:
    (1) Controlling legal authority known to the practitioner to be 
directly adverse to the position of the client and which is not 
disclosed by opposing counsel or an employee of the Office.
    (2) Unless privileged or irrelevant, the identities of the client 
the practitioner represents and of the persons who employed the 
practitioner.
    (c) In appearing in a professional capacity before a tribunal, a 
practitioner shall not:
    (1) State or allude to any matter that the practitioner has no 
reasonable basis to believe is relevant to the case or that will not be 
supported by admissible evidence.
    (2) Ask any question that the practitioner has no reasonable basis 
to believe is relevant to the case and that is intended to degrade a 
witness or other person.
    (3) Assert the practitioner's personal knowledge of the facts in 
issue, except when testifying as a witness.
    (4) Assert the practitioner's personal opinion as to the justness of 
a cause, as to the credibility of a witness, as to the culpability of a 
civil litigant, or as to the guilt or innocence of an accused; but the 
practitioner may argue, on the

[[Page 313]]

practitioner's analysis of the evidence, for any position or conclusion 
with respect to the matters stated herein.
    (5) Engage in undignified or discourteous conduct before the Office 
(see Sec. 1.3 of the subchapter).
    (6) Intentionally or habitually violate any provision of this 
subchapter or established rule of evidence.



Secs. 10.90--10.91  [Reserved]



Sec. 10.92  Contact with witnesses.

    (a) A practitioner shall not suppress any evidence that the 
practitioner or the practitioner's client has a legal obligation to 
reveal or produce.
    (b) A practitioner shall not advise or cause a person to be secreted 
or to leave the jurisdiction of a tribunal for the purpose of making the 
person unavailable as a witness therein.
    (c) A practitioner shall not pay, offer to pay, or acquiesce in the 
payment of compensation to a witness contingent upon the content of the 
witness' affidavit, testimony or the outcome of the case. But a 
practitioner may advance, guarantee, or acquiesce in the payment of:
    (1) Expenses reasonably incurred by a witness in attending, 
testifying, or making an affidavit.
    (2) Reasonable compensation to a witness for the witness' loss of 
time in attending, testifying, or making an affidavit.
    (3) A reasonable fee for the professional services of an expert 
witness.



Sec. 10.93  Contact with officials.

    (a) A practitioner shall not give or lend anything of value to a 
judge, official, or employee of a tribunal under circumstances which 
might give the appearance that the gift or loan is made to influence 
official action.
    (b) In an adversary proceeding, including any inter partes 
proceeding before the Office, a practitioner shall not communicate, or 
cause another to communicate, as to the merits of the cause with a 
judge, official, or Office employee before whom the proceeding is 
pending, except:
    (1) In the course of official proceedings in the cause.
    (2) In writing if the practitioner promptly delivers a copy of the 
writing to opposing counsel or to the adverse party if the adverse party 
is not represented by a practitioner.
    (3) Orally upon adequate notice to opposing counsel or to the 
adverse party if the adverse party is not represented by a practitioner.
    (4) As otherwise authorized by law.



Secs. 10.94--10.99  [Reserved]



Sec. 10.100  Canon 8.

    A practitioner should assist in improving the legal system.



Sec. 10.101  Action as a public official.

    (a) A practitioner who holds public office shall not:
    (1) Use the practitioner's public position to obtain, or attempt to 
obtain, a special advantage in legislative matters for the practitioner 
or for a client under circumstances where the practitioner knows or it 
is obvious that such action is not in the public interest.
    (2) Use the practitioner's public position to influence, or attempt 
to influence, a tribunal to act in favor of the practitioner or of a 
client.
    (3) Accept any thing of value from any person when the practitioner 
knows or it is obvious that the offer is for the purpose of influencing 
the practitioner's action as a public official.
    (b) A practitioner who is an officer or employee of the United 
States shall not practice before the Office in patent cases except as 
provided in Sec. 10.10(c) and (d).

[50 FR 5172, Feb. 6, 1985, as amended at 54 FR 6520, Feb. 13, 1989]



Sec. 10.102  Statements concerning officials.

    (a) A practitioner shall not knowingly make false statements of fact 
concerning the qualifications of a candidate for election or appointment 
to a judicial office or to a position in the Office.
    (b) A practitioner shall not knowingly make false accusations 
against a judge, other adjudicatory officer, or employee of the Office.

[[Page 314]]



Sec. 10.103  Practitioner candidate for judicial office.

    A practitioner who is a candidate for judicial office shall comply 
with applicable provisions of law.



Secs. 10.104--10.109  [Reserved]



Sec. 10.110  Canon 9.

    A practitioner should avoid even the appearance of professional 
impropriety.



Sec. 10.111  Avoiding even the appearance of impropriety.

    (a) A practitioner shall not accept private employment in a matter 
upon the merits of which he or she has acted in a judicial capacity.
    (b) A practitioner shall not accept private employment in a matter 
in which he or she had personal responsibility while a public employee.
    (c) A practitioner shall not state or imply that the practitioner is 
able to influence improperly or upon irrelevant grounds any tribunal, 
legislative body, or public official.



Sec. 10.112  Preserving identity of funds and property of client.

    (a) All funds of clients paid to a practitioner or a practitioner's 
firm, other than advances for costs and expenses, shall be deposited in 
one or more identifiable bank accounts maintained in the United States 
or, in the case of a practitioner having an office in a foreign country 
or registered under Sec. 10.6(c), in the United States or the foreign 
country.
    (b) No funds belonging to the practitioner or the practitioner's 
firm shall be deposited in the bank accounts required by paragraph (a) 
of this section except as follows:
    (1) Funds reasonably sufficient to pay bank charges may be deposited 
therein.
    (2) Funds belonging in part to a client and in part presently or 
potentially to the practitioner or the practitioner's firm must be 
deposited therein, but the portion belonging to the practitioner or the 
practitioner's firm may be withdrawn when due unless the right of the 
practitioner or the practitioner's firm to receive it is disputed by the 
client, in which event the disputed portion shall not be withdrawn until 
the dispute is finally resolved.
    (c) A practitioner shall:
    (1) Promptly notify a client of the receipt of the client's funds, 
securities, or other properties.
    (2) Identify and label securities and properties of a client 
promptly upon receipt and place them in a safe deposit box or other 
place of safekeeping as soon as practicable.
    (3) Maintain complete records of all funds, securities, and other 
properties of a client coming into the possession of the practitioner 
and render appropriate accounts to the client regarding the funds, 
securities, or other properties.
    (4) Promptly pay or deliver to the client as requested by a client 
the funds, securities, or other properties in the possession of the 
practitioner which the client is entitled to receive.

(Approved by the Office of Management and Budget under control number 
0651-0017)



Secs. 10.113--10.129  [Reserved]

               Investigations and Disciplinary Proceedings



Sec. 10.130  Reprimand, suspension or exclusion.

    (a) The Commissioner may, after notice and opportunity for a 
hearing, (1) reprimand or (2) suspend or exclude, either generally or in 
any particular case, any individual, attorney, or agent shown to be 
incompetent or disreputable, who is guilty of gross misconduct, or who 
violates a Disciplinary Rule.
    (b) Petitions to disqualify a practitioner in ex parte or inter 
partes cases in the Office are not governed by Secs. 10.130 through 
10.170 and will be handled on a case-by-case basis under such conditions 
as the Commissioner deems appropriate.



Sec. 10.131  Investigations.

    (a) The Director is authorized to investigate possible violations of 
Disciplinary Rules by practitioners. See Sec. 10.2(b)(2).
    (b) Practitioners shall report and reveal to the Director any 
knowledge or

[[Page 315]]

evidence required by Sec. 10.24. A practitioner shall cooperate with the 
Director in connection with any investigation under paragraph (a) of 
this section and with officials of the Office in connection with any 
disciplinary proceeding instituted under Sec. 10.132(b).
    (c) Any non-practitioner possessing knowledge or information 
concerning a violation of a Disciplinary Rule by a practitioner may 
report the violation to the Director. The Director may require that the 
report be presented in the form of an affidavit.



Sec. 10.132  Initiating a disciplinary proceeding; reference to an administrative law judge.

    (a) If after conducting an investigation under Sec. 10.131(a) the 
Director is of the opinion that a practitioner has violated a 
Disciplinary Rule, the Director shall, after complying where necessary 
with the provisions of 5 U.S.C. 558(c), call a meeting of the Committee 
on Discipline. The Committee on Discipline shall then determine as 
specified in Sec. 10.4(b) whether a disciplinary proceeding shall be 
instituted under paragraph (b) of this section.
    (b) If the Committee on Discipline determines that probable cause 
exists to believe that a practitioner has violated a Disciplinary Rule, 
the Director shall institute a disciplinary proceeding by filing a 
complaint under Sec. 10.134. The complaint shall be filed in the Office 
of the Director. A disciplinary proceeding may result in:
    (1) A reprimand, or
    (2) Suspension or exclusion of a practitioner from practice before 
the Office.
    (c) Upon the filing of a complaint under Sec. 10.134, the 
Commissioner will refer the disciplinary proceeding to an administrative 
law judge.



Sec. 10.133  Conference between Director and practitioner; resignation.

    (a) General. The Director may confer with a practitioner concerning 
possible violations by the practitioner of a Disciplinary Rule whether 
or not a disciplinary proceeding has been instituted.
    (b) Resignation. Any practitioner who is the subject of an 
investigation under Sec. 10.131 or against whom a complaint has been 
filed under Sec. 10.134 may resign from practice before the Office only 
by submitting with the Director an affidavit stating his or her desire 
to resign.
    (c) If filed prior to the date set by the administrative law judge 
for a hearing, the affidavit shall state that:
    (1) The resignation is freely and voluntarily proffered;
    (2) The practitioner is not acting under duress or coercion from the 
Office;
    (3) The practitioner is fully aware of the implications of filing 
the resignation;
    (4) The practitioner is aware (i) of a pending investigation or (ii) 
of charges arising from the complaint alleging that he or she is guilty 
of a violation of the Patent and Trademark Office Code of Professional 
Responsibility, the nature of which shall be set forth by the 
practitioner to the satisfaction of the Director;
    (5) The practitioner acknowledges that, if and when he or she 
applies for reinstatement under Sec. 10.160, the Director will 
conclusively presume, for the limited purpose of determining the 
application for reinstatement, that:
    (i) The facts upon which the complaint is based are true and
    (ii) The practitioner could not have successfully defended himself 
or herself against (A) charges predicated on the violation under 
investigation or (B) charges set out in the complaint filed against the 
practitioner.
    (d) If filed on or after the date set by the administrative law 
judge for a hearing, the affidavit shall make the statements required by 
paragraphs (b) (1) through (4) of this section and shall state that:
    (1) The practitioner acknowledges the facts upon which the complaint 
is based are true; and
    (2) The resignation is being submitted because the practitioner 
could not successfully defend himself or herself against (i) charges 
predicated on the violation under investigation or (ii) charges set out 
in the complaint.
    (e) When an affidavit under paragraph (b) or (c) of this section is 
received while an investigation is pending, the Commissioner shall enter 
an order excluding the practitioner ``on

[[Page 316]]

consent.'' When an affidavit under paragraph (b) or (c) of this section 
is received after a complaint under Sec. 10.134 has been filed, the 
Director shall notify the administrative law judge. The administrative 
law judge shall enter an order transferring the disciplinary proceeding 
to the Commissioner and the Commissioner shall enter an order excluding 
the practitioner ``on consent.''
    (f) Any practitioner who resigns from practice before the Office 
under this section and who intends to reapply for admission to practice 
before the Office must comply with the provisions of Sec. 10.158.
    (g) Settlement. Before or after a complaint is filed under 
Sec. 10.134, a settlement conference may occur between the Director and 
a practitioner for the purpose of settling any disciplinary matter. If 
an offer of settlement is made by the Director or the practitioner and 
is not accepted by the other, no reference to the offer of settlement or 
its refusal shall be admissible in evidence in the disciplinary 
proceeding unless both the Director and the practitioner agree in 
writing.



Sec. 10.134  Complaint.

    (a) A complaint instituting a disciplinary proceeding shall:
    (1) Name the practitioner, who may then be referred to as the 
``respondent.''
    (2) Give a plain and concise description of the alleged violations 
of the Disciplinary Rules by the practitioner.
    (3) State the place and time for filing an answer by the respondent.
    (4) State that a decision by default may be entered against the 
respondent if an answer is not timely filed.
    (5) Be signed by the Director.
    (b) A complaint will be deemed sufficient if it fairly informs the 
respondent of any violation of the Disciplinary Rules which form the 
basis for the disciplinary proceeding so that the respondent is able to 
adequately prepare a defense.



Sec. 10.135  Service of complaint.

    (a) A complaint may be served on a respondent in any of the 
following methods:
    (1) By handing a copy of the complaint personally to the respondent, 
in which case the individual handing the complaint to the respondent 
shall file an affidavit with the Director indicating the time and place 
the complaint was handed to the respondent.
    (2) By mailing a copy of the complaint by ``Express Mail'' or first-
class mail to:
    (i) A registered practitioner at the address for which separate 
notice was last received by the Director or
    (ii) A non-registered practitioner at the last address for the 
respondent known to the Director.
    (3) By any method mutually agreeable to the Director and the 
respondent.
    (b) If a complaint served by mail under paragraph (a)(2) of this 
section is returned by the U.S. Postal Service, the Director shall mail 
a second copy of the complaint to the respondent. If the second copy of 
the complaint is also returned by the U.S. Postal Service, the Director 
shall serve the respondent by publishing an appropriate notice in the 
Official Gazette for four consecutive weeks, in which case the time for 
answer shall be at least thirty days from the fourth publication of the 
notice.
    (c) If a respondent is a registered practitioner, the Director may 
serve simultaneously with the complaint a letter under Sec. 10.11(b). 
The Director may require the respondent to answer the Sec. 10.11(b) 
letter within a period of not less than 15 days. An answer to the 
Sec. 10.11(b) letter shall constitute proof of service. If the 
respondent fails to answer the Sec. 10.11(b) letter, his or her name 
will be removed from the register as provided by Sec. 10.11(b).
    (d) If the respondent is represented by an attorney under 
Sec. 10.140(a), a copy of the complaint shall also be served on the 
attorney.



Sec. 10.136  Answer to complaint.

    (a) Time for answer. An answer to a complaint shall be filed within 
a time set in the complaint which shall be not less than thirty days.
    (b) With whom filed. The answer shall be filed in writing with the 
administrative law judge. The time for filing an

[[Page 317]]

answer may be extended once for a period of no more than thirty days by 
the administrative law judge upon a showing of good cause provided a 
motion requesting an extension of time is filed within thirty days after 
the date the complaint is filed by the Director. A copy of the answer 
shall be served on the Director.
    (c) Content. The respondent shall include in the answer a statement 
of the facts which constitute the grounds of defense and shall 
specifically admit or deny each allegation set forth in the complaint. 
The respondent shall not deny a material allegation in the complaint 
which the respondent knows to be true or state that respondent is 
without sufficient information to form a belief as to the truth of an 
allegation when in fact the respondent possesses that information. The 
respondent shall also state affirmatively special matters of defense.
    (d) Failure to deny allegations in complaint. Every allegation in 
the complaint which is not denied by a respondent in the answer is 
deemed to be admitted and may be considered proven. No further evidence 
in respect of that allegation need be received by the administrative law 
judge at any hearing. Failure to timely file an answer will constitute 
an admission of the allegations in the complaint.
    (e) Reply by Director. No reply to an answer is required by the 
Director and any affirmative defense in the answer shall be deemed to be 
denied. The Director may, however, file a reply if he or she chooses or 
if ordered by the administrative law judge.

[50 FR 5172, Feb. 6, 1985; 50 FR 25073, June 17, 1985]



Sec. 10.137  Supplemental complaint.

    False statements in an answer may be made the basis of a 
supplemental complaint.



Sec. 10.138  Contested case.

    Upon the filing of an answer by the respondent, a disciplinary 
proceeding shall be regarded as a contested case within the meaning of 
35 U.S.C. 24. Evidence obtained by a subpoena issued under 35 U.S.C. 24 
shall not be admitted into the record or considered unless leave to 
proceed under 35 U.S.C. 24 was previously authorized by the 
administrative law judge.



Sec. 10.139  Administrative law judge; appointment; responsibilities; review of interlocutory orders; stays.

    (a) Appointment. An administrative law judge, appointed under 5 
U.S.C. 3105, shall conduct disciplinary proceedings as provided by this 
part.
    (b) Responsibilities. The administrative law judge shall have 
authority to:
    (1) Administer oaths and affirmations;
    (2) Make rulings upon motions and other requests;
    (3) Rule upon offers of proof, receive relevant evidence, and 
examine witnesses;
    (4) Authorize the taking of a deposition of a witness in lieu of 
personal appearance of the witness before the administrative law judge;
    (5) Determine the time and place of any hearing and regulate its 
course and conduct;
    (6) Hold or provide for the holding of conferences to settle or 
simplify the issues;
    (7) Receive and consider oral or written arguments on facts or law;
    (8) Adopt procedures and modify procedures from time to time as 
occasion requires for the orderly disposition of proceedings;
    (9) Make initial decisions under Sec. 10.154; and
    (10) Perform acts and take measures as necessary to promote the 
efficient and timely conduct of any disciplinary proceeding.
    (c) Time for making initial decision. The administrative law judge 
shall set times and exercise control over a disciplinary proceeding such 
that an initial decision under Sec. 10.154 is normally issued within six 
months of the date a complaint is filed. The administrative law judge 
may, however, issue an initial decision more than six months after a 
complaint is filed if in his or her opinion there exist unusual 
circumstances which preclude issuance of an initial decision within six 
months of the filing of the complaint.
    (d) Review of interlocutory orders. An interlocutory order of an 
administrative law judge will not be reviewed by the Commissioner 
except:

[[Page 318]]

    (1) When the administrative law judge shall be of the opinion (i) 
that the interlocutory order involves a controlling question of 
procedure or law as to which there is a substantial ground for a 
difference of opinion and (ii) that an immediate decision by the 
Commissioner may materially advance the ultimate termination of the 
disciplinary proceeding or
    (2) In an extraordinary situation where justice requires review
    (e) Stays pending review of interlocutory order. If the Director or 
a respondent seeks review of an interlocutory order of an administrative 
law judge under paragraph (b)(2) of this section, any time period set 
for taking action by the administrative law judge shall not be stayed 
unless ordered by the Commissioner or the administrative law judge.

[50 FR 5172, Feb. 6, 1985; 50 FR 25073, June 17, 1985]



Sec. 10.140  Representative for Director or respondent.

    (a) A respondent may be represented before the Office in connection 
with an investigation or disciplinary proceeding by an attorney. The 
attorney shall file a written declaration that he or she is an attorney 
within the meaning of Sec. 10.1(c) and shall state:
    (1) The address to which the attorney wants correspondence related 
to the investigation or disciplinary proceeding sent and
    (2) A telephone number where the attorney may be reached during 
normal business hours.
    (b) The Commissioner shall designate at least two associate 
solicitors in the Office of the Solicitor to act as representatives for 
the Director in disciplinary proceedings. In prosecuting disciplinary 
proceedings, the designated associate solicitors shall not involve the 
Solicitor or the Deputy Solicitor. The Solicitor and the Deputy 
Solicitor shall remain insulated from the investigation and prosecution 
of all disciplinary proceedings in order that they shall be available as 
counsel to the Commissioner in deciding disciplinary proceedings.



Sec. 10.141  Filing of papers.

    (a) The provisions of Sec. 1.8 of this subchapter do not apply to 
disciplinary proceedings.
    (b) All papers filed after the complaint and prior to entry of an 
initial decision by the administrative law judge shall be filed with the 
administrative law judge at an address or place designated by the 
administrative law judge. All papers filed after entry of an initial 
decision by the administrative law judge shall be filed with the 
Director. The Director shall promptly forward to the Commissioner any 
paper which requires action under this part by the Commissioner.
    (c) The administrative law judge or the Director may provide for 
filing papers and other matters by hand or by ``Express Mail.''



Sec. 10.142  Service of papers.

    (a) All papers other than a complaint shall be served on a 
respondent represented by an attorney by:
    (1) Delivering a copy of the paper to the office of the attorney; or
    (2) Mailing a copy of the paper by first-class mail or ``Express 
Mail'' to the attorney at the address provided by the attorney under 
Sec. 10.140(a)(1); or
    (3) Any other method mutually agreeable to the attorney and a 
representative for the Director.
    (b) All papers other than a complaint shall be served on a 
respondent who is not represented by an attorney by:
    (1) Delivering a copy of the paper to the respondent; or
    (2) Mailing a copy of the paper by first-class mail or ``Express 
Mail'' to the respondent at the address to which a complaint may be 
served or such other address as may be designated in writing by the 
respondent; or
    (3) Any other method mutually agreeable to the respondent and a 
representative of the Director.
    (c) A respondent shall serve on the representative for the Director 
one copy of each paper filed with the administrative law judge or the 
Director. A paper may be served on the representative for the Director 
by:
    (1) Delivering a copy of the paper to the representative; or
    (2) Mailing a copy of the paper by first-class mail or ``Express 
Mail'' to an

[[Page 319]]

address designated in writing by the representative; or
    (3) Any other method mutually agreeable to the respondent and the 
representative.
    (d) Each paper filed in a disciplinary proceeding shall contain 
therein a certificate of service indicating:
    (1) The date on which service was made and
    (2) The method by which service was made.
    (e) The administrative law judge or the Commissioner may require 
that a paper be served by hand or by ``Express Mail.''
    (f) Service by mail is completed when the paper mailed in the United 
States is placed into the custody of the U.S. Postal Service.



Sec. 10.143  Motions.

    Motions may be filed with the administrative law judge. The 
administrative law judge will determine on a case-by-case basis the time 
period for response to a motion and whether replies to responses will be 
authorized. No motion shall be filed with the administrative law judge 
unless such motion is supported by a written statement by the moving 
party that the moving party or attorney for the moving party has 
conferred with the opposing party or attorney for the opposing party in 
an effort in good faith to resolve by agreement the issues raised by the 
motion and has been unable to reach agreement. If issues raised by a 
motion are resolved by the parties prior to a decision on the motion by 
the administrative law judge, the parties shall promptly notify the 
administrative law judge.



Sec. 10.144  Hearings.

    (a) The administrative law judge shall preside at hearings in 
disciplinary proceedings. Hearings will be stenographically recorded and 
transcribed and the testimony of witnesses will be received under oath 
or affirmation. The administrative law judge shall conduct hearings in 
accordance with 5 U.S.C. 556. A copy of the transcript of the hearing 
shall become part of the record. A copy of the transcript shall be 
provided to the Director and the respondent at the expense of the 
Office.
    (b) If the respondent to a disciplinary proceeding fails to appear 
at the hearing after a notice of hearing has been given by the 
administrative law judge, the administrative law judge may deem the 
respondent to have waived the right to a hearing and may proceed with 
the hearing in the absence of the respondent.
    (c) A hearing under this section will not be open to the public 
except that the Director may grant a request by a respondent to open his 
or her hearing to the public and make the record of the disciplinary 
proceeding available for public inspection, provided, Agreement is 
reached in advance to exclude from public disclosure information which 
is privileged or confidential under applicable laws or regulations. If a 
disciplinary proceeding results in disciplinary action against a 
practitioner, and subject to Sec. 10.159(c), the record of the entire 
disciplinary proceeding, including any settlement agreement, will be 
available for public inspection.



Sec. 10.145  Proof; variance; amendment of pleadings.

    In case of a variance between the evidence and the allegations in a 
complaint, answer, or reply, if any, the administrative law judge may 
order or authorize amendment of the complaint, answer, or reply to 
conform to the evidence. Any party who would otherwise be prejudiced by 
the amendment will be given reasonable opportunity to meet the 
allegations in the complaint, answer, or reply, as amended, and the 
administrative law judge shall make findings on any issue presented by 
the complaint, answer, or reply as amended.



Secs. 10.146--10.148  [Reserved]



Sec. 10.149  Burden of proof.

    In a disciplinary proceeding, the Director shall have the burden of 
proving his or her case by clear and convincing evidence and a 
respondent shall have the burden of proving any affirmative defense by 
clear and convincing evidence.



Sec. 10.150  Evidence.

    (a) Rules of evidence. The rules of evidence prevailing in courts of 
law and

[[Page 320]]

equity are not controlling in hearings in disciplinary proceedings. 
However, the administrative law judge shall exclude evidence which is 
irrelevant, immaterial, or unduly repetitious.
    (b) Depositions. Depositions of witnesses taken pursuant to 
Sec. 10.151 may be admitted as evidence.
    (c) Government documents. Official documents, records, and papers of 
the Office are admissible without extrinsic evidence of authenticity. 
These documents, records and papers may be evidenced by a copy certified 
as correct by an employee of the Office.
    (d) Exhibits. If any document, record, or other paper is introduced 
in evidence as an exhibit, the administrative law judge may authorize 
the withdrawal of the exhibit subject to any conditions the 
administrative law judge deems appropriate.
    (e) Objections. Objections to evidence will be in short form, 
stating the grounds of objection. Objections and rulings on objections 
will be a part of the record. No exception to the ruling is necessary to 
preserve the rights of the parties.



Sec. 10.151  Depositions.

    (a) Depositions for use at the hearing in lieu of personal 
appearance of a witness before the administrative law judge may be taken 
by respondent or the Director upon a showing of good cause and with the 
approval of, and under such conditions as may be deemed appropriate by, 
the administrative law judge. Depositions may be taken upon oral or 
written questions, upon not less than ten days written notice to the 
other party, before any officer authorized to administer an oath or 
affirmation in the place where the deposition is to be taken. The 
requirement of ten days notice may be waived by the parties and 
depositions may then be taken of a witness and at a time and place 
mutually agreed to by the parties. When a deposition is taken upon 
written questions, copies of the written questions will be served upon 
the other party with the notice and copies of any written cross-
questions will be served by hand or ``Express Mail'' not less than five 
days before the date of the taking of the deposition unless the parties 
mutually agree otherwise. A party on whose behalf a deposition is taken 
shall file a copy of a transcript of the deposition signed by a court 
reporter with the administrative law judge and shall serve one copy upon 
the opposing party. Expenses for a court reporter and preparing, 
serving, and filing depositions shall be borne by the party at whose 
instance the deposition is taken.
    (b) When the Director and the respondent agree in writing, a 
deposition of any witness who will appear voluntarily may be taken under 
such terms and condition as may be mutually agreeable to the Director 
and the respondent. The deposition shall not be filed with the 
administrative law judge and may not be admitted in evidence before the 
administrative law judge unless he or she orders the deposition admitted 
in evidence. The admissibility of the deposition shall lie within the 
discretion of the administrative law judge who may reject the deposition 
on any reasonable basis including the fact that demeanor is involved and 
that the witness should have been called to appear personally before the 
administrative law judge.



Sec. 10.152  Discovery.

    Discovery shall not be authorized except as follows:
    (a) After an answer is filed under Sec. 10.136 and when a party 
establishes in a clear and convincing manner that discovery is necessary 
and relevant, the administrative law judge, under such conditions as he 
or she deems appropriate, may order an opposing party to:
    (1) Answer a reasonable number of written requests for admission or 
interrogatories;
    (2) Produce for inspection and copying a reasonable number of 
documents; and
    (3) Produce for inspection a reasonable number of things other than 
documents.
    (b) Discovery shall not be authorized under paragraph (a) of this 
section of any matter which:
    (1) Will be used by another party solely for impeachment or cross-
examination;
    (2) Is not available to the party under 35 U.S.C. 122;

[[Page 321]]

    (3) Relates to any disciplinary proceeding commenced in the Patent 
and Trademark Office prior to March 8, 1985;
    (4) Relates to experts except as the administrative law judge may 
require under paragraph (e) of this section.
    (5) Is privileged; or
    (6) Relates to mental impressions, conclusions, opinions, or legal 
theories of any attorney or other representative of a party.
    (c) The administrative law judge may deny discovery requested under 
paragraph (a) of this section if the discovery sought:
    (1) Will unduly delay the disciplinary proceeding;
    (2) Will place an undue burden on the party required to produce the 
discovery sought; or
    (3) Is available (i) generally to the public, (ii) equally to the 
parties; or (iii) to the party seeking the discovery through another 
source.
    (d) Prior to authorizing discovery under paragraph (a) of this 
section, the administrative law judge shall require the party seeking 
discovery to file a motion (Sec. 10.143) and explain in detail for each 
request made how the discovery sought is necessary and relevant to an 
issue actually raised in the complaint or the answer.
    (e) The administrative law judge may require parties to file and 
serve, prior to any hearing, a pre-hearing statement which contains:
    (1) A list (together with a copy) of all proposed exhibits to be 
used in connection with a party's case-in-chief,
    (2) A list of proposed witnesses,
    (3) As to each proposed expert witness:
    (i) An identification of the field in which the individual will be 
qualified as an expert;
    (ii) A statement as to the subject matter on which the expert is 
expected to testify; and
    (iii) A statement of the substance of the facts and opinions to 
which the expert is expected to testify,
    (4) The identity of government employees who have investigated the 
case, and
    (5) Copies of memoranda reflecting respondent's own statements to 
administrative representatives.
    (f) After a witness testifies for a party, if the opposing party 
requests, the party may be required to produce, prior to cross-
examination, any written statement made by the witness.



Sec. 10.153  Proposed findings and conclusions; post-hearing memorandum.

    Except in cases when the respondent has failed to answer the 
complaint, the administrative law judge, prior to making an initial 
decision, shall afford the parties a reasonable opportunity to submit 
proposed findings and conclusions and a post-hearing memorandum in 
support of the proposed findings and conclusions.



Sec. 10.154  Initial decision of administrative law judge.

    (a) The administrative law judge shall make an initial decision in 
the case. The decision will include (1) a statement of findings and 
conclusions, as well as the reasons or basis therefore with appropriate 
references to the record, upon all the material issues of fact, law, or 
discretion presented on the record, and (2) an order of suspension or 
exclusion from practice, an order of reprimand, or an order dismissing 
the complaint. The administrative law judge shall file the decision with 
the Director and shall transmit a copy to the representative of the 
Director and to the respondent. In the absence of an appeal to the 
Commissioner, the decision of the administrative law judge will, without 
further proceedings, become the decision of the Commissioner of Patents 
and Trademarks thirty (30) days from the date of the decision of the 
administrative law judge.
    (b) The initial decision of the administrative law judge shall 
explain the reason for any penalty or reprimand, suspension or 
exclusion. In determining any penalty, the following should normally be 
considered:
    (1) The public interest;
    (2) The seriousness of the violation of the Disciplinary Rule;
    (3) The deterrent effects deemed necessary;
    (4) The integrity of the legal profession; and

[[Page 322]]

    (5) Any extenuating circumstances.

[50 FR 5172, Feb. 6, 1985; 50 FR 25073, June 17, 1985]



Sec. 10.155  Appeal to the Commissioner.

    (a) Within thirty (30) days from the date of the initial decision of 
the administrative law judge under Sec. 10.154, either party may appeal 
to the Commissioner. If an appeal is taken, the time for filing a cross-
appeal expires 14 days after the date of service of the appeal pursuant 
to Sec. 10.142 or 30 days after the date of initial decision of the 
administrative law judge, whichever is later. An appeal or cross-appeal 
by the respondent will be filed and served with the Director in 
duplicate and will include exceptions to the decisions of the 
administrative law judge and supporting reasons for those exceptions. If 
the Director files the appeal or cross-appeal, the Director shall serve 
on the other party a copy of the appeal or cross-appeal. The other party 
to an appeal or cross-appeal may file a reply brief. A respondent's 
reply brief shall be filed and served in duplicate with the Director. 
The time for filing any reply brief expires thirty (30) days after the 
date of service pursuant to Sec. 10.142 of an appeal, cross-appeal or 
copy thereof. If the Director files a reply brief, the Director shall 
serve on the other party a copy of the reply brief. Upon the filing of 
an appeal, cross-appeal, if any, and reply briefs, if any, the Director 
shall transmit the entire record to the Commissioner.
    (b) The appeal will be decided by the Commissioner on the record 
made before the administrative law judge.
    (c) The Commissioner may order reopening of a disciplinary 
proceeding in accordance with the principles which govern the granting 
of new trials. Any request to reopen a disciplinary proceeding on the 
basis of newly discovered evidence must demonstrate that the newly 
discovered evidence could not have been discovered by due diligence.
    (d) In the absence of an appeal by the Director, failure by the 
respondent to appeal under the provisions of this section shall be 
deemed to be both acceptance by the respondent of the initial decision 
and waiver by the respondent of the right to further administrative or 
judicial review.

[50 FR 5172, Feb. 6, 1985, as amended at 54 FR 26026, June 21, 1989; 60 
FR 64126, Dec. 14, 1995]



Sec. 10.156  Decision of the Commissioner.

    (a) An appeal from an initial decision of the administrative law 
judge shall be decided by the Commissioner. The Commissioner may affirm, 
reverse or modify the initial decision or remand the matter to the 
administrative law judge for such further proceedings as the 
Commissioner may deem appropriate. Subject to paragraph (c) of this 
section, a decision by the Commissioner does not become a final agency 
action in a disciplinary proceeding until 20 days after it is entered. 
In making a final decision, the Commissioner shall review the record or 
those portions of the record as may be cited by the parties in order to 
limit the issues. The Commissioner shall transmit a copy of the final 
decision to the Director and to the respondent.
    (b) A final decision of the Commissioner may dismiss a disciplinary 
proceeding, reprimand a practitioner, or may suspend or exclude the 
practitioner from practice before the Office.
    (c) A single request for reconsideration or modification of the 
Commissioner's decision may be made by the respondent or the Director if 
filed within 20 days from the date of entry of the decision. Such a 
request shall have the effect of staying the effective date of the 
decision. The decision by the Commissioner on the request is a final 
agency action in a disciplinary proceeding and is effective on its date 
of entry.

[50 FR 5172, Feb. 6, 1985, as amended at 54 FR 6660, Feb. 14, 1989]



Sec. 10.157  Review of Commissioner's final decision.

    (a) Review of the Commissioner's final decision in a disciplinary 
case may be had, subject to Sec. 10.155(d), by a petition filed in the 
United States District Court for the District of Columbia. See 35 U.S.C. 
32 and Local Rule 213 of the United States District Court for the 
District of Columbia.

[[Page 323]]

    (b) The Commissioner may stay a final decision pending review of the 
Commissioner's final decision.

[50 FR 5172, Feb. 6, 1985; 53 FR 13120, Apr. 21, 1988, as amended at 54 
FR 26027, June 21, 1989]



Sec. 10.158  Suspended or excluded practitioner.

    (a) A practitioner who is suspended or excluded from practice before 
the Office under Sec. 10.156(b) shall not engage in unauthorized 
practice of patent, trademark and other non-patent law before the 
Office.
    (b) Unless otherwise ordered by the Commissioner, any practitioner 
who is suspended or excluded from practice before the Office under 
Sec. 10.156(b) shall:
    (1) Within 30 days of entry of the order of suspension or exclusion, 
notify all bars of which he or she is a member and all clients of the 
practitioner for whom he or she is handling matters before the Office in 
separate written communications of the suspension or exclusion and shall 
file a copy of each written communication with the Director.
    (2) Within 30 days of entry of the order of suspension or exclusion, 
surrender a client's active Office case files to (i) the client or (ii) 
another practitioner designated by the client.
    (3) Not hold himself or herself out as authorized to practice law 
before the Office.
    (4) Promptly take any necessary and appropriate steps to remove from 
any telephone, legal, or other directory any advertisement, statement, 
or representation which would reasonably suggest that the practitioner 
is authorized to practice patent, trademark or other non-patent law 
before the Office, and within 30 days of taking those steps, file with 
the Director an affidavit describing the precise nature of the steps 
taken.
    (5) Not advertise the practitioner's availability or ability to 
perform or render legal services for any person having immediate, 
prospective, or pending business before the Office.
    (6) Not render legal advice or services to any person having 
immediate, prospective, or pending business before the Office as to that 
business.
    (7) Promptly take steps to change any sign identifying a 
practitioner's or the practitioner's firm's office and the 
practitioner's or the practitioner's firm's stationery to delete 
therefrom any advertisement, statement, or representation which would 
reasonably suggest that the practitioner is authorized to practice law 
before the Office.
    (8) Within 30 days, return to any client any unearned funds, 
including any unearned retainer fee, and any securities and property of 
the client.
    (c) A practitioner who is suspended or excluded from practice before 
the Office and who aids another practitioner in any way in the other 
practitioner's practice of law before the Office, may, under the direct 
supervision of the other practitioner, act as a para-legal for the other 
practitioner or perform other services for the other practitioner which 
are normally performed by lay-persons, Provided:
    (1) The practitioner who is suspended or excluded is:
    (i) A salaried employee of:
    (A) The other practitioner;
    (B) The other practitioner's law firm; or
    (C) A client-employer who employs the other practitioner as a 
salaried employee;
    (2) The other practitioner assumes full professional responsibility 
to any client and the Office for any work performed by the suspended or 
excluded practitioner for the other practitioner;
    (3) The suspended or excluded practitioner, in connection with any 
immediate, prospective, or pending business before the Office, does not:
    (i) Communicate directly in writing, orally, or otherwise with a 
client of the other practitioner;
    (ii) Render any legal advice or any legal services to a client of 
the other practitioner; or
    (iii) Meet in person or in the presence of the other practitioner 
with:
    (A) Any Office official in connection with the prosecution of any 
patent, trademark, or other case;
    (B) Any client of the other practitioner, the other practitioner's 
law firm, or the client-employer of the other practitioner;
    (C) Any witness or potential witness which the other practitioner, 
the other practitioner's law firm, or the other practitioner's client-
employer may or

[[Page 324]]

intends to call as a witness in any proceeding before the Office. The 
term ``witness'' includes individuals who will testify orally in a 
proceeding before, or sign an affidavit or any other document to be 
filed in, the Office.
    (d) When a suspended or excluded practitioner acts as a para-legal 
or performs services under paragraph (c) of this section, the suspended 
or excluded practitioner shall not thereafter be reinstated to practice 
before the Office unless:
    (1) The suspended or excluded practitioner shall have filed with the 
Director an affidavit which (i) explains in detail the precise nature of 
all para-legal or other services performed by the suspended or excluded 
practitioner and (ii) shows by clear and convincing evidence that the 
suspended or excluded practitioner has complied with the provisions of 
this section and all Disciplinary Rules, and
    (2) The other practitioner shall have filed with the Director a 
written statement which (i) shows that the other practitioner has read 
the affidavit required by subparagraph (d)(1) of this section and that 
the other practitioner believes every statement in the affidavit to be 
true and (ii) states why the other practitioner believes that the 
suspended or excluded practitioner has complied with paragraph (c) of 
this section.



Sec. 10.159  Notice of suspension or exclusion.

    (a) Upon issuance of a final decision reprimanding a practitioner or 
suspending or excluding a practitioner from practice before the Office, 
the Director shall give notice of the final decision to appropriate 
employees of the Office and to interested departments, agencies, and 
courts of the United States. The Director shall also give notice to 
appropriate authorities of any State in which a practitioner is known to 
be a member of the bar and any appropriate bar association.
    (b) The Director shall cause to be published in the Official Gazette 
the name of any practitioner suspended or excluded from practice. Unless 
otherwise ordered by the Commissioner, the Director shall publish in the 
Official Gazette the name of any practitioner reprimanded by the 
Commissioner.
    (c) The Director shall maintain records, which shall be available 
for public inspection, of every disciplinary proceeding where a 
practitioner is reprimanded, suspended, or excluded unless the 
Commissioner orders that the proceeding be kept confidential.



Sec. 10.160  Petition for reinstatement.

    (a) A petition for reinstatement of a practitioner suspended for a 
period of less than five years will not be considered until the period 
of suspension has passed.
    (b) A petition for reinstatement of a practitioner excluded from 
practice will not be considered until five years after the effective 
date of the exclusion.
    (c) An individual who has resigned under Sec. 10.133 or who has been 
suspended or excluded may file a petition for reinstatement. The 
Director may grant a petition for reinstatement when the individual 
makes a clear and convincing showing that the individual will conduct 
himself or herself in accordance with the regulations of this part and 
that granting a petition for reinstatement is not contrary to the public 
interest. As a condition to reinstatement, the Director may require the 
individual to:
    (1) Meet the requirements of Sec. 10.7, including taking and passing 
an examination under Sec. 10.7(b) and
    (2) Pay all or a portion of the costs and expenses, not to exceed 
$1,500, of the disciplinary proceeding which led to suspension or 
exclusion.
    (d) Any suspended or excluded practitioner who has violated the 
provisions of Sec. 10.158 during his or her period of suspension or 
exclusion shall not be entitled to reinstatement until such time as the 
Director is satisfied that a period of suspension equal in time to that 
ordered by the Commissioner or exclusion for five years has passed 
during which the suspended or excluded practitioner has complied with 
the provisions of Sec. 10.158.
    (e) Proceedings on any petition for reinstatement shall be open to 
the public. Before reinstating any suspended or excluded practitioner, 
the Director shall publish in the Official Gazette a

[[Page 325]]

notice of the suspended or excluded practitioner's petition for 
reinstatement and shall permit the public a reasonable opportunity to 
comment or submit evidence with respect to the petition for 
reinstatement.



Sec. 10.161  Savings clause.

    (a) A disciplinary proceeding based on conduct engaged in prior to 
the effective date of these regulations may be instituted subsequent to 
such effective date, if such conduct would continue to justify 
suspension or exclusion under the provisions of this part.
    (b) No practitioner shall be subject to a disciplinary proceeding 
under this part based on conduct engaged in before the effective date 
hereof if such conduct would not have been subject to disciplinary 
action before such effective date.



Secs. 10.162--10.169  [Reserved]



Sec. 10.170  Suspension of rules.

    (a) In an extraordinary situation, when justice requires, any 
requirement of the regulations of this part which is not a requirement 
of the statutes may be suspended or waived by the Commissioner or the 
Commissioner's designee, sua sponte, or on petition of any party, 
including the Director or the Director's representative, subject to such 
other requirements as may be imposed.
    (b) Any petition under this section will not stay a disciplinary 
proceeding unless ordered by the Commissioner or an administrative law 
judge.



PART 15-15a [RESERVED]




[[Page 327]]

 INDEX III--RULES RELATING TO PRACTICE BEFORE THE PATENT AND TRADEMARK 
                                 OFFICE

  Editorial Note: This listing is provided for information purposes 
only. It is compiled and kept up-to-date by the Department of Commerce.

                                                                 Section

                                 A

Address change
                                                                   10.11
Advertising
                                                            10.31, 10.32
Agreements restricting practice
                                                                   10.38
Aliens
                                                              10.6, 10.9
Applicant for patent, representation of
                                                             1.31, 10.10
Applicant for trademark, representation of
                                                                    2.11
Attorneys, recognition of to practice in trademark cases
                                                                   10.14
Attorneys, registration of to practice in patent cases
                                                              10.6, 10.7

                                 B

Breach of trust
                                                                   10.23
Business transactions or relations with client
                                                                   10.65

                                 C

Candidate for judicial office
                                                                  10.103
Canons and Disciplinary Rules
                                                            10.20-10.112
Certificate of mailing
                                                      1.8, 10.23. 10.141
Circumventing a disciplinary rule, amendment
                                                                   10.23
Code of Professional Responsibility
                                                            10.20-10.112
Coercion, use of
                                                                   10.23
Committee on Discipline
                                                                    10.4
Committee on Enrollment
                                                                    10.3
Communicating with person having adverse interest
                                                                   10.67
Communications concerning practitioner's service
                                                                   10.31
Compensation for legal services
                                                                   10.68
Competence
                                                            10.76, 10.77
Complaint instituting disciplinary proceedings
                                                                  10.134
Concealment of material information
                                                                   10.23
Conduct in proceeding before Office
                                                                   10.89
Conduct prejudicial to the administration of justice
                                                                   10.23
Conflict of interest
                                                                   10.66
Conviction of criminal offense
                                                                   10.23

                                 D

Deceit
                                                                   10.23
Decisions of the Commissioner
                                                          10.156, 10.157
Definitions:
Affidavit...........................................................10.1
Agent...............................................................10.6
Application.........................................................10.1
Canon..............................................................10.20

[[Page 328]]

Confidence.........................................................10.57
Differing interests.................................................10.1
Director of Enrollment and Discipline...............................10.1
Disciplinary rule..................................................10.20
Employee of a tribunal..............................................10.1
Excessive legal fees...............................................10.36
Excluded practitioner...............................................10.1
Giving information..................................................10.1
Invention development services.....................................10.23
Law firm............................................................10.1
Lawyer..............................................................10.1
Legal counsel.......................................................10.1
Legal profession....................................................10.1
Legal service.......................................................10.1
Legal system........................................................10.1
Non-practitioner....................................................10.1
Office..............................................................10.1
Person..............................................................10.1
Practitioner........................................................10.1
Proceeding before the Office........................................10.1
Professional legal corporation......................................10.1
Registration........................................................10.1
Respondent........................................................10.134
Secret......................................................10.33, 10.57
Service of Process..................................................15.2
State...............................................................10.1
Suspended practitioner..............................................10.1
Testimony by employees.............................................15a.2
Tribunal............................................................10.1
United States.......................................................10.1
Designation as registered attorney or agent
                                                                   10.34
Direct contact with prospective clients
                                                                   10.33
Director of Enrollment and Discipline:
Appointment.........................................................10.2
Duties..............................................................10.2
Review of decisions of the Director.................................10.2
Disbarment from practice on ethical grounds
                                                                  10.130
Discharge of attorney or agent by client
                                                                   10.40
Disciplinary Proceedings and Investigations:
Administrative Law Judge..........................................10.139
Administrative Procedures Act.............................10.132, 10.144
Review of interlocutory orders by Administrative Law Judge........10.139
Amendment of complaint............................................10.145
Amendment of pleadings............................................10.145
Answer to complaint...............................................10.136
Appeal of initial decision of Administrative Law Judge............10.155
Burden of proof...................................................10.149
Certificate of mailing.......................................1.8, 10.141
Complaint.........................................................10.134
Contested case....................................................10.138
Deliberations of Committee on Discipline............................10.4
Discovery (see also Discovery in Disciplinary Proceedings)........10.152
Exception to ruling...............................................10.150
Filing papers after complaint filed...............................10.141
Hearings before Administrative Law Judge..........................10.144
Initial decision of Administrative Law Judge..............10.139, 10.154
Initiating disciplinary proceeding................................10.132

[[Page 329]]

Investigations of violations of disciplinary rules................10.131
Notice of suspension or exclusion of practitioner.................10.159
Objections to evidence............................................10.150
Post hearing memorandum...........................................10.153
Pre-hearing statement.............................................10.153
Reinstatement of suspended or excluded practitioner...............10.160
Reprimand of registered attorney or agent.................10.130, 10.132
Resignation of practitioner.......................................10.133
Review of Commissioner's final decision...........................10.157
Review of decision denying reinstatement of practitioner............10.2
Savings clause....................................................10.161
Service of complaint..............................................10.135
Settlement of complaint...........................................10.133
Stay pending review of interlocutory order........................10.139
Supplemental complaint............................................10.137
Disciplinary rule violation, disclosure of
                                      10.23, 10.24, 10.84, 10.85, 10.131
Discourteous conduct
                                                                   10.89
Discovery in Disciplinary Proceedings:
Copying of documents..............................................10.152
Cross-examination.................................................10.152
Deliberations of Committee on Enrollment............................10.4
Depositions.......................................................10.151
Evidence..................................................10.150, 10.152
Impeachment.......................................................10.152
Inspection of documents...........................................10.152
Interrogatories...................................................10.152
Motions filed with Administrative Law Judge...............10.143, 10.152
Privileged information............................................10.152
Undue delay in proceedings........................................10.152
Division of legal fees
                                                                   10.37
Durees, use of
                                                                   10.23
Duty to make counsel available
                                                                   10.30

                                 E

Employee testimony (See Testimony by Office employee)
Employment:
Acceptance.........................................................10.39
Failure to carry out contract......................................10.84
Refusing employment.........................................10.62, 10.63
Withdrawal from employment..................................10.40, 10.63
Exception to ruling
                                                                  10.151
Excessive legal fees
                                                                   10.36
Exclusion of practitioner
                                                  10.130, 10.132, 10.158

                                 F

Failure to disclose material fact with regard to registration
                                                                   10.22
Failure to notify client
                                                                   10.23
False accusations
                                                                   10.23
False statements concerning officials
                                                                  10.102
Favors, improperly bestowing
                                                                   10.23
Fees:
In general..........................................................1.21
Petition to review decision of Director of Enrollment and 
Discipline..........................................................10.2
Registration........................................................10.8
Registration examination............................................10.7

[[Page 330]]

Reinstatement......................................................10.11
Request regard of examination.......................................10.6
Fees for legal services
                                                                   10.36
Firm name, use of
                                                                   10.35
Fitness to practice before the Office
                                                                   10.23
Foreigners
                                                       10.6, 10.9, 10.14
Former Patent and Trademark Office employees
                                                             10.6, 10.23
Fraud or inequitable conduct
                                                            10.23, 10.85
Frivolous complaint
                                                                   10.23
Funds of client, preserving identity of
                                                                  10.112

                                 G

Gift, improperly bestowing
                                                                   10.23
Government employees, registration of to practice in patent cases 
                                                                   10.10

                                 I

Illegal conduct involving moral turpitude
                                                                   10.23
Illegal fees for services
                                                                   10.36
Improper alteration of patent application
                                                                   10.23
Improper execution of oath or declaration
                                                                   10.23
Improper influence
                                                                   10.23
Improper signature
                                                            10.18, 10.23
Improperly bestowing thing of value
                                                                   10.23
Incompetence
                                                            10.77, 10.78
Indecent statement, making of
                                                                   10.23
Independent professional judgment, exercise of
                                              10.61, 10.62, 10.66, 10.68
Individual unqualified in respect to character, education, etc
                                                             10.7, 10.22
Influence by others than client
                                                                   10.68
Information precluding registration, failure to disclose
                                                                   10.23
Initial decision of Administrative Law Judge
                                                          10.139, 10.154
Integrity and competence of the legal profession, maintaining of 
                                                                   10.22
Interest in litigation or proceeding before Office, acquiring of 
                                                                   10.64
Investigations of violations of disciplinary rules
                                                                  10.131

                                 J

Joint venture
                                                                   10.23
Judicial office, candidate for
                                                                  10.103

                                 L

Legal Fees:
Division of........................................................10.37
Failure to pay.....................................................10.40
Sharing of.........................................................10.48
Legal system, assistance in improving the
                                                                  10.100
Letterheads, use of
                                                                   10.35
Limited recognition to practice in patent cases
                                                                    10.9

                                 M

Malpractice, limiting client's liability
                                                                   10.78
Materially false statements in application for registration
                                                                   10.22
Misappropriation of funds
                                                                   10.23
Misconduct
                                                                   10.23
Misrepresentations
                                                            10.22, 10.23
Multiple employment
                                                                   10.66

[[Page 331]]

                                 N

Neglecting legal matters
                                                                   10.77
Non-practitioner, formation of partnership with
                                                                   10.49
Notice of suspension or exclusion
                                                                  10.159

                                 O

Oath requirement
                                                                    10.8
Officials, contact with
                                                                   10.93

                                 P

Petitions:
Fees in general.....................................................1.21
Regrade of examination...........................................10.7(c)
Reinstatement.....................................................10.160
Review decision of Commissioner...................................10.157
Review decision of Director of Enrollment and Discipline............10.2
Suspension of rules...............................................10.170
Preserve secrets and confidence of client
                                                            10.56, 10.57
Pro-se applicant
                                                              1.31, 2.11
Professional impropriety, avoiding appearance of
                                                           1.110, 10.111
Promise of advantage, offer of
                                                                   10.23
Property of client
                                                                  10.112
Proprietary interest in subject matter
                                                                   10.64
Publication in Official Gazette
                                                   10.11, 10.159, 10.160

                                 R

Recogntion to Practice Before the Patent and Trademark Office:
Agents.................................................10.6, 10.7, 10.14
Aliens.................................................10.6, 10.9, 10.14
Attorneys..............................................10.6, 10.7, 10.14
Change of address, requirement to notify Director..................10.11
Person not suspended or excluded....................................10.2
Suspended or excluded practitioner................................10.160
Examination of registration in patent cases.........................10.7
Examination fee.....................................................10.7
Foreigners.............................................10.6, 10.9, 10.14
Former Patent and Trademark Office employees................10.10, 10.23
Government employees........................................10.10, 10.23
Limited recognition in patent cases.................................10.9
Non-lawyers, recognition in trademark cases........................10.10
Patent cases..................................................10.6-10.10
Recogntion for representation..........................1.34, 2.17, 10.14
Recognition to practice.......................................10.6-10.18
Refusal to recognize practitioner..................................10.15
Register of attorneys and agents in patent cases....................10.5
Registration fee....................................................10.8
Registration number.................................................1.34
Removal of attorneys and agents from the register..................10.11
Representation by registered attorney or agent in patent cases......1.31
Request for regrade of examination..................................10.6
Requirements for registration.......................................10.7
Review of Director's decision refusing registration.................10.2
Trademark cases....................................................10.14
Unauthorized representation by an agent.....................10.10, 10.31
Records, property and funds of client, maintaining of
                                                                  10.112

[[Page 332]]

Reinstatement after removal from the register
                                                             10.2, 10.11
Reinstatement of suspended or excluded non-practitioner
                                                                  10.160
Representing client within bounds of the law
                                                                   10.85
Reprimand of registered attorney or agent
                                                          10.130, 10.132
Resignation
                                                                  10.133
Revocation of power of attorney in trademark case
                                                                    2.19

                                 S

Scandalous statements, making of
                                                                   10.23
Secrets and confidence, preservation of clients
                                                            10.56, 10.57
Service of process
Acceptance of service of process....................................15.3
Definition
Scope and purpose...................................................15.2
Settlement of claims of clients
                                                                   10.67
Sharing legal fees
                                                                   10.48
Signature and certificate of practitioner
                                                                   10.18
Solicitation
                                                            10.32, 10.33
Statement concerning officials, making false
                                                                  10.102
Suspension of practitioner
                                           10.23, 10.130, 10.132, 10.158
Suspension of rules
                                                                  10.170

                                 T

Testimony of Office employees
Definition.........................................................15a.2
General rule.......................................................15a.4
Office policy......................................................15a.3
Private litigation.................................................15a.6
Proceedings involving the United States............................15a.5
Production of documents............................................15a.4
Scope..............................................................15a.1
Subpoena of Office employees.......................................15a.7
Threats of criminal prosecution
                                                                   10.88
Threats, use of
                                                                   10.23

                                 U

Unauthorized practice
                                       10.14, 10.23, 10.31, 10.46, 10.47
Undignified conduct
                                                                   10.89

                                 V

Violating duty of candor and good faith
                                                                   10.23
Violation of disciplinary rule, misconduct
                                                                   10.23

                                 W

Withdrawal from employment
                                                                   10.40
Withdrawal material information
                                                            10.22, 10.23
Witnesses
                                                            10.63, 10.92

                                 Z

Zealously representing the client
                                                            10.83, 10.84

[[Page 333]]



            SUBCHAPTER B--GOVERNMENT INVENTIONS JURISDICTION



                        PARTS 100-102 [RESERVED]

[[Page 334]]



             SUBCHAPTER C--PROTECTION OF FOREIGN MASK WORKS





PART 150--REQUESTS FOR PRESIDENTIAL PROCLAMATIONS PURSUANT TO 17 U.S.C. 902(a)(2)--Table of Contents




Sec.
150.1  Definitions.
150.2  Initiation of evaluation.
150.3  Submission of requests.
150.4  Evaluation.
150.5  Duration of proclamation.
150.6  Mailing address.

    Authority: 35 U.S.C. 6; E.O. 12504, 50 FR 4849, 3 CFR, 1985 Comp., 
p. 335.

    Source: 53 FR 24447, June 29, 1988, unless otherwise noted.



Sec. 150.1  Definitions.

    (a) Commissioner means Assistant Secretary and Commissioner of 
Patents and Trademarks.
    (b) Foreign government means the duly-constituted executive of a 
foreign nation, or an international or regional intergovernmental 
organization which has been empowered by its member states to request 
issuance of Presidential proclamations on their behalf under this part.
    (c) Interim order means an order issued by the Secretary of Commerce 
under 17 U.S.C. 914.
    (d) Mask work means a series of related images, however fixed or 
encoded--
    (1) Having or representing the predetermined, three-dimensional 
pattern of metallic, insulating, or semiconductor material present or 
removed from the layers of a semiconductor chip product; and
    (2) In which series the relation of the images to one another is 
that each image has the pattern of the surface of one form of the 
semiconductor chip product.
    (e) Presidential proclamation means an action by the President 
extending to foreign nationals, domiciliaries and sovereign authorities 
the privilege of applying for registrations for mask works pursuant to 
17 U.S.C. 902.
    (f) Request means a request by a foreign government for the issuance 
of a Presidential proclamation.
    (g) Proceeding means a proceeding to issue a interim order extending 
protection to foreign nationals, domiciliaries and sovereign authorities 
under 17 U.S.C. Chapter 9.
    (h) Secretary means the Secretary of Commerce.



Sec. 150.2  Initiation of evaluation.

    (a) The Commissioner independently or as directed by the Secretary, 
may initiate an evaluation of the propriety of recommending the 
issuance, revision, suspension or revocation of a section 902 
proclamation.
    (b) The Commissioner shall initiate an evaluation of the propriety 
of recommending the issuance of a section 902 proclamation upon receipt 
of a request from a foreign government.



Sec. 150.3  Submission of requests.

    (a) Requests for the issuance of a section 902 proclamation shall be 
submitted by foreign governments for review by the Commissioner.
    (b) Requests for issuance of a proclamation shall include:
    (1) A copy of the foreign law or legal rulings that provide 
protection for U.S. mask works which provide a basis for the request.
    (2) A copy of any regulations or administrative orders implementing 
the protection.
    (3) A copy of any laws, regulations or administrative orders 
establishing or regulating the registration (if any) of mask works.
    (4) Any other relevant laws, regulations or administrative orders.
    (5) All copies of laws, legal rulings, regulations or administrative 
orders submitted must be in unedited, full-text form, and if possible, 
must be reproduced from the original document.
    (6) All material submitted must be in the original language, and if 
not in English, must be accompanied by a certified English translation.



Sec. 150.4  Evaluation.

    (a) Upon submission of a request by a foreign government for the 
issuance of a section 902 proclamation, if an interim order under 
section 914 has not been issued, the Commissioner may

[[Page 335]]

initiate a section 914 proceeding if additional information is required.
    (b) If an interim order under section 914 has been issued, the 
information obtained during the section 914 proceeding will be used in 
evaluating the request for a section 902 proclamation.
    (c) After the Commissioner receives the request of a foreign 
government for a section 902 proclamation, or after a determination is 
made by the Commissioner to initiate independently an evaluation 
pursuant to Sec. 150.2(a) of this part, a notice will be published in 
the Federal Register to request relevant and material comments on the 
adequacy and effectiveness of the protection afforded U.S. mask works 
under the system of law described in the notice. Comments should include 
detailed explanations of any alleged deficiencies in the foreign law or 
any alleged deficiencies in its implementation. If the alleged 
deficiencies include problems in administration such as registration, 
the respondent should include as specifically as possible full detailed 
explanations, including dates for and the nature of any alleged 
problems. Comments shall be submitted to the Commissioner within sixty 
(60) days of publication of the Federal Register notice.
    (d) The Commissioner shall notify the Register of Copyrights and the 
Committees on the Judiciary of the Senate and the House of 
Representatives of the initiation of an evaluation under these 
regulations.
    (e) If the written comments submitted by any party present relevant 
and material reasons why a proclamation should not issue, the 
Commissioner will:
    (1) Contact the party raising the issue for verification and any 
needed additional information;
    (2) Contact the requesting foreign government to determine if the 
issues raised by the party can be resolved; and,
    (i) If the issues are resolved, continue with the evaluation; or,
    (ii) If the issues cannot be resolved on this basis, hold a public 
hearing to gather additional information.
    (f) The comments, the section 902 request, information obtained from 
a section 914 proceeding, if any, and information obtained in a hearing 
held pursuant to paragraph (e)(ii) of this section, if any, will be 
evaluated by the Commissioner.
    (g) The Commissioner will forward the information to the Secretary, 
together with an evaluation and a draft recommendation.
    (h) The Secretary will forward a recommendation regarding the 
issuance of a section 902 proclamation to the President.



Sec. 150.5  Duration of proclamation.

    (a) The recommendation for the issuance of a proclamation may 
include terms and conditions regarding the duration of the proclamation.
    (b) Requests for the revision, suspension or revocation of a 
proclamation may be submitted by any interested party. Requests for 
revision, suspension or revocation of a proclamation will be considered 
in substantially the same manner as requests for the issuance of a 
section 902 proclamation.



Sec. 150.6  Mailing address.

    Requests and all correspondence submitted pursuant to these 
guidelines shall be addressed to: Commissioner of Patents and 
Trademarks, Box 4, Washington, DC 20231.

[[Page 337]]



                CHAPTER II--COPYRIGHT OFFICE, LIBRARY OF






                                CONGRESS




  --------------------------------------------------------------------

              SUBCHAPTER A--COPYRIGHT OFFICE AND PROCEDURES
Part                                                                Page
201             General provisions..........................         339
202             Registration of claims to copyright.........         417
203             Freedom of Information Act: Policies and 
                    procedures..............................         452
204             Privacy Act: Policies and procedures........         458
211             Mask work protection........................         461
 SUBCHAPTER B--COPYRIGHT ARBITRATION ROYALTY PANEL RULES AND PROCEDURES
251             Copyright Arbitration Royalty Panel rules of 
                    procedure...............................         467
252             Filing of claims to cable royalty fees......         489
253             Use of certain copyrighted works in 
                    connection with noncommercial 
                    educational broadcasting................         490
254             Adjustment of royalty rate for coin-operated 
                    phonorecord players.....................         499
255             Adjustment of royalty payable under 
                    compulsory license for making and 
                    distributing phonorecords...............         500
256             Adjustment of royalty fee for cable 
                    compulsory license......................         502
257             Filing of claims to satellite carrier 
                    royalty fees............................         504
258             Adjustment of royalty fee for secondary 
                    transmissions by satellite carriers.....         505
259             Filing of claims to digital audio recording 
                    devices and media royalty payments......         506
260             Use of sound recordings in a digital 
                    performance.............................         508
                Index to Chapter II--Copyright Office, 
                    Library of Congress.....................         513

[[Page 339]]



              SUBCHAPTER A--COPYRIGHT OFFICE AND PROCEDURES





PART 201--GENERAL PROVISIONS--Table of Contents




Sec.
201.1  Communications with the Copyright Office.
201.2  Information given by the Copyright Office.
201.3  Fees for registration, recordation, and related services, special 
          services, and services performed by the Licensing Division.
201.4  Recordation of transfers and certain other documents.
201.5  Corrections and amplifications of copyright registrations; 
          applications for supplementary registration.
201.6  Payment and refund of Copyright Office fees.
201.7  Cancellation of completed registrations.
201.8  [Reserved]
201.9  Recordation of agreements between copyright owners and public 
          broadcasting entities.
201.10  Notices of termination of transfers and licenses covering 
          extended renewal term.
201.11  Satellite carrier statements of account covering statutory 
          licenses for secondary transmissions for private home viewing.
201.12  Recordation of certain contracts by cable systems located 
          outside of the forty-eight contiguous States.
201.13  Notices of objection to certain noncommercial performances of 
          non-dramatic literary or musical works.
201.14  Warnings of copyright for use by certain libraries and archives.
201.15  Voluntary license to permit reproduction of nondramatic literary 
          works solely for use of the blind and physically handicapped.
201.16  [Reserved]
201.17  Statements of Account covering compulsory licenses for secondary 
          transmissions by cable systems.
201.18  Notice of intention to obtain a compulsory license for making 
          and distributing phonorecords of non-dramatic musical works.
201.19  Royalties and statements of account under compulsory license for 
          making and distributing phonorecords of nondramatic musical 
          works.
201.20  Methods of affixation and positions of the copyright notice on 
          various types of works.
201.21  [Reserved]
201.22  Advance notices of potential infringement of works consisting of 
          sounds, images, or both.
201.23  Transfer of unpublished copyright deposits to the Library of 
          Congress.
201.24  Warning of copyright for software lending by nonprofit 
          libraries.
201.25  Visual Arts Registry.
201.26  Recordation of documents pertaining to computer shareware and 
          donation of public domain computer software.
201.27  Initial notice of distribution of digital recording devices or 
          media.
201.28  Statements of Account for digital audio recording devices or 
          media.
201.29  Access to, and confidentiality of, Statements of Account, 
          Verification Auditor's Reports, and other verification 
          information filed in the Copyright Office for digital audio 
          recording devices or media.
201.30  Verification of Statements of Account.
201.31  Procedures for copyright restoration in the United States for 
          certain motion pictures and their contents in accordance with 
          the North American Free Trade Agreement.
201.32  [Reserved]
201.33  Procedures for filing Notices of Intent to Enforce a restored 
          copyright under the Uruguay Round Agreements Act.
201.34  Procedures for filing Correction Notices of Intent to Enforce a 
          Copyright Restored under the Uruguay Round Agreements Act.
201.35  Initial Notice of Digital Transmission of Sound Recordings under 
          Statutory License.
201.36  Reports of Use of Sound Recordings under Statutory License.
201.37  Designated collection and distribution organizations for records 
          of use of sound recordings under statutory license.
201.38  Designation of agent to receive notification of claimed 
          infringement.
201.39  Notice to Libraries and Archives of Normal Commercial 
          Exploitation or Availability at Reasonable Price.

    Authority: 17 U.S.C. 702.



Sec. 201.1  Communications with the Copyright Office.

    (a) In general. Mail and other communications shall be addressed to 
the Register of Copyrights, Library of Congress, Copyright Office, 101 
Independence Avenue, SE., Washington, DC 20559-6000.
    (b) Inquiries to Licensing Division. Inquiries about filings related 
to the four compulsory licenses (17 U.S.C. 111, 115, 118, and 119) 
should be addressed to the

[[Page 340]]

Library of Congress, Copyright Office, Licensing Division, 101 
Independence Avenue, SE., Washington, DC 20557-6400.
    (c) Copies of records or deposits. Requests for copies of records or 
deposits should be addressed to the Certifications and Documents 
Section, LM-402, Library of Congress, Copyright Office, 101 Independence 
Avenue, SE., Washington, DC 20559-6000.
    (d) Search of records. Requests for searches of registrations and 
recordations in the completed catalogs, indexes, and other records of 
the Copyright Office should be addressed to the Reference and 
Bibliography Section, LM-450, Library of Congress, Copyright Office, 101 
Independence Avenue, SE., Washington, DC 20559-6000.

[50 FR 30170, July 24, 1985, as amended at 60 FR 34168, June 30, 1995; 
62 FR 35420, July 1, 1997; 62 FR 40457, July 29, 1997]



Sec. 201.2  Information given by the Copyright Office.

    (a) In general. (1) Information relative to the operations of the 
Copyright Office is supplied without charge. A search of the records, 
indexes, and deposits will be made for such information as they may 
contain relative to copyright claims upon application and payment of the 
statutory fee. The Copyright Office, however, does not undertake the 
making of comparisons of copyright deposits to determine similarity 
between works.
    (2) The Copyright Office does not furnish the names of copyright 
attorneys, publishers, agents, or other similar information.
    (3) In the administration of the Copyright Act in general, the 
Copyright Office interprets the Act. The Copyright Office, however, does 
not give specific legal advice on the rights of persons, whether in 
connection with particular uses of copyrighted works, cases of alleged 
foreign or domestic copyright infringement, contracts between authors 
and publishers, or other matters of a similar nature.
    (b) Inspection and copying of records. (1) Inspection and copying of 
completed records and indexes relating to a registration or a recorded 
document, and inspection of copies or identifying material deposited in 
connection with a completed copyright registration may be undertaken in 
the Certifications and Documents Section. Since some of these materials 
are not stored on the immediate premises of the Copyright Office, it is 
advisable to consult the Certifications and Documents Section to 
determine the length of time necessary to produce the requested 
materials.
    (2) It is the general policy of the Copyright Office to deny direct 
public access to in-process files and to any work (or other) areas where 
they are kept. However, direct public use of computers intended to 
access the automated equivalent of limited portions of these files is 
permitted on a specified terminal in the Records Maintenance Unit, LM B-
14, 8:30 a.m. to 5:00 p.m., Monday through Friday, upon payment of 
applicable fees.
    (3) Information contained in Copyright Office in-process files may 
be obtained by anyone upon payment of applicable fees and request to the 
Information and Reference Division, in accordance with the following 
procedures:
    (i) In general, all requests by the public for information in the 
in-process and open unfinished business files should be made to the 
Certifications and Documents Section, which upon receipt of applicable 
fees will give a report that provides the following for each request:
    (A) The date(s) of receipt of:
    (1) The application(s) for registration that may have been submitted 
and is (are) in process;
    (2) The document(s) that may have been submitted for recordation and 
is (are) in process;
    (3) The copy or copies (or phonorecords) that may have been 
submitted;
    (B) The title of the work(s); and
    (C) The name of the remitter.
    (ii) Such searches of the in-process files will be given priority to 
the extent permitted by the demands of normal work flow of the affected 
sections of the Copyright Office.
    (4) Access will be afforded as follows to pending applications for 
registration, the deposit material accompanying them, and pending 
documents for recordation that were submitted

[[Page 341]]

within the twelve month period immediately preceding the request for 
access:
    (i) In the case of applications for registration and deposits 
accompanying them, upon the request of the copyright claimant or his/her 
authorized representative, and
    (ii) In the case of documents, upon the request of at least one of 
the persons who executed the document or by an authorized representative 
of that person.

These requests should be made to the Public Information Office, and the 
review of the materials will be permitted there. No charge will be made 
for reviewing these materials; the appropriate search fee identified in 
Sec. 201.3(c) or Sec. 201.3(d) will be assessed, and the appropriate 
copying fee identified in Sec. 201.3(c) or Sec. 201.3(d) will be 
assessed if the claimant wants and is entitled to a copy of the 
material.
    (5) In exceptional circumstances, the Register of Copyrights may 
allow inspection of pending applications and open correspondence files 
by someone other than the copyright claimant, upon submission of a 
written request which is deemed by the Register to show good cause for 
such access and establishes that the person making the request is one 
properly and directly concerned. The written request should be addressed 
to Copyright GC/I&R, P.O. Box 70400, Southwest Station, Washington, DC 
20024.
    (6) In no case will direct public access be permitted to any 
financial or accounting records.
    (7) The Copyright Office maintains administrative staff manuals 
referred to as its ``Compendium of Office Practices I'' and ``Compendium 
of Office Practices II'' for the general guidance of its staff in making 
registrations and recording documents. The manuals, as amended and 
supplemented from time to time, are available for purchase from the 
National Technical Information Service (Compendium I) and the Government 
Printing Office (Compendium II). They are also available for public 
inspection and copying in the Certifications and Documents Section.
    (c) Correspondence. (1) Official correspondence, including 
preliminary applications, between copyright claimants or their agents 
and the Copyright Office, and directly relating to a completed 
registration, a recorded document, a rejected application for 
registration, or a document for which recordation was refused is 
available for public inspection. Included in the correspondence 
available for public inspection is that portion of the file directly 
relating to a completed registration, recorded document, a rejected 
application for registration, or a document for which recordation was 
refused which was once open to public inspection as a closed case, even 
if the case is subsequently reopened. Public inspection is available 
only for the correspondence contained in the file during the time it was 
closed because of one of the aforementioned actions. Correspondence 
relating to the reopening of the file and reconsideration of the case is 
considered part of an in-process file until final action is taken, and 
public inspection of that correspondence is governed by Sec. 201.2(b). 
Requests for reproductions of the correspondence shall be made pursuant 
to paragraph (d) of this section.
    (2) Correspondence, application forms, and any accompanying material 
forming a part of a pending application are considered in-process files 
and access to them is governed by paragraph (b) of this section.
    (3) Correspondence, memoranda, reports, opinions, and similar 
material relating to internal matters of personnel and procedures, 
office administration, security matters, and internal consideration of 
policy and decisional matters including the work product of an attorney, 
are not open to public inspection.
    (4) The Copyright Office will return unanswered any abusive or 
scurrilous correspondence.
    (d) Requests for copies. (1) Requests for copies of records should 
include the following:
    (i) A clear identification of the type of records desired (for 
example, additional certificates of registration, copies of 
correspondence, copies of deposits).
    (ii) A specification of whether the copies are to be certified or 
uncertified.
    (iii) A clear identification of the specific records to be copied. 
Requests

[[Page 342]]

should include the following specific information, if possible:
    (A) The type of work involved (for example, novel, lyrics, 
photograph);
    (B) The registration number;
    (C) The year date or approximate year date of registration;
    (D) The complete title of the work;
    (E) The author(s) including any pseudonym by which the author may be 
known; and
    (F) The claimant(s); and
    (G) If the requested copy is of an assignment, license, contract, or 
other recorded document, the volume and page number of the recorded 
document.
    (iv) If the copy requested is an additional certificate of 
registration, include the fee. The Certifications and Documents Section 
will review requests for copies of other records and quote fees for 
each.
    (v) The telephone number and address of the requestor.
    (2) Requests for certified or uncertified reproductions of the 
copies, phonorecords, or identifying material deposited in connection 
with a copyright registration of published or unpublished works in the 
custody of the Copyright Office will be granted only when one of the 
following three conditions has been met:
    (i) The Copyright Office receives written authorization from the 
copyright claimant of record or his or her designated agent, or from the 
owner of any of the exclusive rights in the copyright as long as this 
ownership can be demonstrated by written documentation of the transfer 
of ownership.
    (ii) The Copyright Office receives a written request from an 
attorney on behalf of either the plaintiff or defendant in connection 
with litigation, actual or prospective, involving the copyrighted work. 
The following information must be included in such a request:
    (A) The names of all the parties involved and the nature of the 
controversy;
    (B) The name of the court in which the actual case is pending or, in 
the case of a prospective proceeding, a full statement of the facts of 
the controversy in which the copyrighted work is involved; and
    (C) Satisfactory assurance that the requested reproduction will be 
used only in connection with the specified litigation.
    (iii) The Copyright Office receives a court order for reproduction 
of the deposited copies, phonorecords, or identifying material of a 
registered work which is the subject of litigation. The order must be 
issued by a court having jurisdiction of the case in which the 
reproduction is to be submitted as evidence.
    (3) When a request is made for a reproduction of a phonorecord, such 
as an audiotape or cassette, in which either a sound recording or the 
underlying musical, dramatic, or literary work is embodied, the 
Copyright Office will provide proximate reproduction. The Copyright 
Office reserves the right to substitute a monaural reproduction for a 
stereo, quadraphonic, or any other type of fixation of the work accepted 
for deposit.

[50 FR 30170, July 24, 1985, as amended at 51 FR 30062, Aug. 22, 1986; 
62 FR 35421, July 1, 1997; 64 FR 29520, June 1, 1999]



Sec. 201.3  Fees for registration, recordation, and related services, special services, and services performed by the Licensing Division.

    (a) General. This section prescribes the fees for registration, 
recordation, and related services, special services, and services 
performed by the Licensing Division.
    (b) Definitions. For purposes of this section, the following 
definitions apply:
    (1) Registration, recordation, and related service fee. This is the 
fee for a registration or recordation service that the Office is 
required to perform under 17 U.S.C., or a directly related service. It 
includes those services described in section 708(a)(1)-(9) and 
authorized by Pub. L. 105-80.
    (2) Special service fee. This is a fee for a special service not 
specified in title 17, which the Register of Copyrights may fix at any 
time on the basis of the cost of providing the service, as provided by 
17 U.S.C. 708(a)(10).
    (3) Licensing Division service fee. This is a fee for a service 
performed by the Licensing Division.

[[Page 343]]

    (c) Registration, recordation and related service fees. The 
Copyright Office has established the following fees for these services:

------------------------------------------------------------------------
       Registration, recordation and related services            Fees
------------------------------------------------------------------------
(1) Basic registrations: Form TX, Form VA, Form PA, Form             $30
 SE, (including Short Forms), and Form SR..................
(2) Registration of a claim in a group of contribution to             30
 periodicals (GR/CP).......................................
(3) Registration of a renewal claim (Form RE):
     Claim without Addendum................................           45
     Addendum..............................................           15
(4) Registration of a claim in a Mask Work.................           75
(5) Registration of a claim in a group of series (Form SE/            10
 Group) $30 minimum........................................
(6) Registration of a claim in a group of daily newspapers,           55
 and qualified newsletters (Form G/DN).....................
(7) Registration of a restored copyright (Form GATT).......           30
(8) Registration of a claim in a group of restored works              10
 (Form GATT Group) $30 minimum.............................
(9) Registration of a correction or amplification to a                65
 claim (Form CA)...........................................
(10) Providing an additional certificate of registration...           25
(11) Any other certification, per hour.....................           65
(12) Search--report prepared from official records, per               65
 hour......................................................
(13) Search--locating Copyright Office records, per hour...           65
(14) Recordation of documents (single title)...............           50
     Additional titles (per group of 10 titles)............           15
(15) Recordation of a notice of intention (NIE) to enforce            30
 a restored copyright containing no more than one title....
     Additional NIE titles (each)..........................            1
(16) Recordation of Notice of Intention to Make and                   12
 Distribute Phonorecords...................................
(17) Issuance of a receipt for a deposit...................            4
------------------------------------------------------------------------
\1\ Per issuse.
\2\ Per claim.

    (d) Special service fees. The Copyright Office has established the 
following fees for special services:

------------------------------------------------------------------------
                      Special services                           Fees
------------------------------------------------------------------------
(1) Service charge for deposit account overdraft...........          $70
(2) Service charge for dishonored deposit account                     35
 replenishment check.......................................
(3) Service charge for insufficient fee....................        (\1\)
(4) Appeals:
    (i) First appeal.......................................          200
        Additional claim in related group..................           20
    (ii) Second appeal.....................................          500
        Additional claim in related group..................           20
(5) Secure test processing charge, per hour................           60
(6) Copying charge, 15 pages or fewer......................           15
    Each additional page over 15...........................          .50
(7) Inspection charge......................................           65
(8) Special handling fee for a claim.......................          500
    Each additional claim using the same deposit...........           50
(9) Special handling fee for recordation of a document.....          330
(10) Full-term storage of deposits.........................          365
(11) Surcharge for expedited Certifications and Documents
 Section services:
    (i) Additional certificates, per hour..................           75
    (ii) In-process searches, per hour.....................           75
    (iii) Copy of assignment or other document, per hour...           75
    (iv) Certification, per hour...........................           75
    (v) Copy of registered deposit:........................
        First hour.........................................           95
        Each additional hour...............................           75
    (vi) Copy of correspondence file:
        First hour.........................................           95
        Each additional hour...............................           75
(12) Surcharge for expedited Reference & Bibliography
 Section searches:
    First hour.............................................          125
    Each additional hour...................................           95
------------------------------------------------------------------------
\1\ Reserved.

    (e) Licensing Division service fees. The Copyright Office has 
established the following fees for certain services performed by the 
Licensing Division:

[[Page 344]]



------------------------------------------------------------------------
                Licensing division services                      Fees
------------------------------------------------------------------------
(1) Recordation of a Notice of Intention to Make and                 $12
 Distribute Phonorecords (17 U.S.C. 115)...................
(2) Certificate of Filing a Notice of Intention (17 U.S.C.             8
 115)......................................................
(3) Filing Fee for Recordation of License Agreements under            50
 17 U.S.C. 118.............................................
(4) Recordation of Certain Contracts by Cable Television              50
 Systems Located Outside the Forty-Eight Contiguous States.
(5) Initial Notice of Digital Transmission of Sound                   20
 Recording (17 U.S.C. 114).................................
    Amendment of 17 U.S.C. 114 Notice......................           20
(6) Statement of Account Amendment (Cable Television                  15
 Systems and Satellite Carriers, 17 U.S.C. 111 and 119)....
(7) Statement of Account Amendment (Digital Audio Recording           20
 Devices or Media, 17 U.S.C. 1003).........................
(8) Using Public Photocopier, per page.....................          .25
    Photocopies Made by Licensing Staff, per page..........          .40
(9) Search, per hour.......................................           65
(10) Certification of Search Report........................           65
------------------------------------------------------------------------


[64 FR 29520, June 1, 1999]



Sec. 201.4  Recordation of transfers and certain other documents.

    (a) General. (1) This section prescribes conditions for the 
recordation of transfers of copyright ownership and other documents 
pertaining to a copyright under section 205 of Title 17 of the United 
States Code, as amended by Pub. L. 94-553. The filing or recordation of 
the following documents is not within the provisions of this section:
    (i) Certain contracts entered into by cable systems located outside 
of the 48 contiguous States (17 U.S.C. 111(e); see 37 CFR 201.12);
    (ii) Notices of identity and signal carriage complement, and 
statements of account, of cable systems (17 U.S.C. 111(d); see 37 CFR 
201.11; 201.17);
    (iii) Original, signed notices of intention to obtain compulsory 
license to make and distribute phonorecords of nondramatic musical works 
(17 U.S.C. 115(b); see 37 CFR 201.18);
    (iv) License agreements, and terms and rates of royalty payments, 
voluntarily negotiated between one or more public broadcasting entities 
and certain owners of copyright (17 U.S.C 118; see 37 CFR 201.9);
    (v) Notices of termination (17 U.S.C. 203, 304(c); see 37 CFR 
201.10); and
    (vi) Statements regarding the identity of authors of anonymous and 
pseudonymous works, and statements relating to the death of authors (17 
U.S.C. 302).
    (2) A transfer of copyright ownership has the meaning set forth in 
section 101 of Title 17 of the United States Code, as amended by Pub. L. 
94-553. A document shall be considered to ``pertain to a copyright'' if 
it has a direct or indirect relationship to the existence, scope, 
duration, or identification of a copyright, or to the ownership, 
division, allocation, licensing, transfer, or exercise of rights under a 
copyright. That relationship may be past, present, future, or potential.
    (3) For purposes of this section:
    (i) A sworn certification is an affidavit under the official seal of 
any officer authorized to administer oaths within the United States, or 
if the original is located outside of the United States, under the 
official seal of any diplomatic or consular officer of the United States 
or of a person authorized to administer oaths whose authority is proved 
by the certificate of such an officer, or a statement in accordance with 
section 1746 of Title 28 of the United States Code; and
    (ii) An official certification is a certification, by the 
appropriate Government official, that the original of the document is on 
file in a public office and that the reproduction is a true copy or the 
original.
    (b) Forms. The Copyright Office does not provide forms for the use 
of persons recording documents.
    (c) Recordable documents. Any transfer of copyright ownership 
(including any instrument of conveyance, or note or memorandum of the 
transfer), or any other document pertaining to a copyright, may be 
recorded in the Copyright Office if it is accompanied by the fee set 
forth in paragraph (d) of this section, and if the requirements of this 
paragraph with respect to signatures, completeness, and legibility are 
met.

[[Page 345]]

    (1) To be recordable, the document must bear the actual signature or 
signatures of the person or persons who executed it. Alternatively, the 
document may be recorded if it is a legible photocopy or other legible 
facsimile reproduction of the signed document, accompanied by a sworn 
certification or an official certification that the reproduction is a 
true copy of the signed document. Any sworn certification accompanying a 
reproduction shall be signed by at least one of the parties to the 
signed document, or by an authorized representative of that person.
    (2) To be recordable, the document must be complete by its own 
terms.
    (i) A document that contains a reference to any schedule, appendix, 
exhibit, addendum, or other material as being attached to the document 
or made a part of it shall be recordable only if the attachment is also 
submitted for recordation with the document or if the reference is 
deleted by the parties to the document. If a document has been submitted 
for recordation and has been returned by the Copyright Office at the 
request of the sender for deletion of the reference to an attachment, 
the document will be recorded only if the deletion is signed or 
initialed by the persons who executed the document or by their 
authorized representatives. In exceptional cases a document containing a 
reference to an attachment will be recorded without the attached 
material and without deletion of the reference if the person seeking 
recordation submits a written request specifically asserting that:
    (A) The attachment is completely unavailable for recordation; and
    (B) The attachment is not essential to the identification of the 
subject matter of the document; and
    (C) It would be impossible or wholly impracticable to have the 
parties to the document sign or initial a deletion of the reference.

In such exceptional cases, the Copyright Office records of the document 
will be annotated to show that recordation was made in response to a 
specific request under this paragraph.
    (ii) If a document otherwise record- able under this indicates on 
its face that it is a self-contained part of a larger instrument (for 
example: if it is designated ``Attachment A'' or ``Exhibit B''), the 
Copyright Office will raise the question of completeness, but will 
record the document if the person requesting recordation asserts that 
the document is sufficiently complete as it stands.
    (iii) When the document submitted for recordation merely identifies 
or incorporates by reference another document, or certain terms of 
another document, the Copyright Office will raise no question of 
completeness, and will not require recordation of the other document.
    (3) To be recordable, the document must be legible and capable of 
being reproduced in legible microform copies.
    (d) Fees. The fee for recordation of a document is prescribed in 
Sec. 201.3(c).
    (e) Recordation. The date of recordation is the date when a proper 
document under paragraph (c) of this section and a proper fee under 
paragraph (d) of this section are all received in the Copyright Office. 
After recordation the document is returned to the sender with a 
certificate of record.

(17 U.S.C. 205, 702, 708)

[43 FR 35044, Aug. 8, 1978, as amended at 53 FR 123, Jan. 5, 1988; 56 FR 
59885, Nov. 26, 1991; 64 FR 29521, June 1, 1999]



Sec. 201.5  Corrections and amplifications of copyright registrations; applications for supplementary registration.

    (a) General. (1) This section prescribes conditions relating to the 
filing of an application for supplementary registration, to correct an 
error in a copyright registration or to amplify the information given in 
a registration, under section 408(d) of Title 17 of the United States 
Code, as amended by Pub. L. 94-553. For the purposes of this section:
    (i) A basic registration means any of the following:
    (A) A copyright registration made under sections 408, 409, and 410 
of Title 17 of the United States Code, as amended by Pub. L. 94-553;
    (B) A renewal registration made under section 304 of Title 17 of the 
United States Code, as so amended;
    (C) A registration of claim to copyright made under Title 17 of the 
United

[[Page 346]]

States Code as it existed before January 1, 1978; or
    (D) A renewal registration made under Title 17 of the United States 
Code as it existed before January 1, 1978; and
    (ii) A supplementary registration means a registration made upon 
application under section 408(d) of Title 17 of the United States Code, 
as amended by Pub. L. 94-553, and the provisions of this section.
    (2) No correction or amplification of the information in a basic 
registration will be made except pursuant to the provisions of this 
Sec. 201.5. As an exception, where it is discovered that the record of a 
basic registration contains an error that the Copyright Office itself 
should have recognized at the time registration was made, the Office 
will take appropriate measures to rectify its error.
    (b) Persons entitled to file an application for supplementary 
registration; grounds of application. (1) Supplementary registration can 
be made only if a basic copyright registration for the same work has 
already been completed. After a basic registration has been completed, 
any author or other copyright claimant of the work, or the owner of any 
exclusive right in the work, or the duly authorized agent of any such 
author, other claimant, or owner, who wishes to correct or amplify the 
information given in the basic registration for the work may file an 
application for supplementary registration.1
---------------------------------------------------------------------------

    1  If the person who, or on whose behalf, an application for 
supplementary registration is submitted is the same as the person 
identified as the copyright claimant in the basic registration, the 
Copyright Office will place a note referring to the supplementary 
registration on its records of the basic registration.
---------------------------------------------------------------------------

    (2) Supplementary registration may be made either to correct or to 
amplify the information in a basic registration. For the purposes of 
this section:
    (i) A correction is appropriate if information in the basic 
registration was incorrect at the time that basic registration was made, 
and the error is not one that the Copyright Office itself should have 
recognized;
    (ii) An amplification is appropriate:
    (A) To supplement or clarify the information that was required by 
the application for the basic registration and should have been 
provided, such as the identity of a co-author or co-claimant, but was 
omitted at the time the basic registration was made, or
    (B) To reflect changes in facts, other than those relating to 
transfer, license, or ownership of rights in the work, that have 
occurred since the basic registration was made.
    (iii) Supplementary registration is not appropriate:
    (A) As an amplification, to reflect a change in ownership that 
occurred on or after the effective date of the basic registration or to 
reflect the division, allocation, licensing or transfer of rights in a 
work; or
    (B) To correct errors in statements or notices on the copies of 
phonorecords of a work, or to reflect changes in the content of a work; 
and
    (iv) Where a basic renewal registration has been made for a work 
during the last year of the relevant first-term copyright, supplementary 
registration to correct the renewal claimant or basis of claim or to add 
a renewal claimant is ordinarily possible only if the application for 
supplementary registration and fee are received in the Copyright Office 
within the last year of the relevant first-term copyright. If the error 
or omission in a basic renewal registration is extremely minor, and does 
not involve the identity of the renewal claimant or the legal basis of 
the claim, supplementary registration may be made at any time. In an 
exceptional case, however, supplementary registration may be made to 
correct the name of the renewal claimant and the legal basis of the 
claim at any time if clear, convincing, objective documentation is 
submitted to the Copyright Office which proves that an inadvertent error 
was made in failing to designate the correct living statutory renewal 
claimant in the basic renewal registration.
    (c) Form and content of application for supplementary registration. 
(1) An application for supplementary registration shall be made on a 
form prescribed by the Copyright Office, shall be accompanied by the 
appropriate fee identified

[[Page 347]]

in Sec. 201.3(c) and shall contain the following information:
    (i) The title of the work as it appears in the basic registration, 
including previous or alternative titles if they appear;
    (ii) The registration number of the basic registration;
    (iii) The year when the basic registration was completed;
    (iv) The name or names of the author or authors of the work, and the 
copyright claimant or claimants in the work, as they appear in the basic 
registration;
    (v) In the case of a correction:
    (A) The line number and heading or description of the part of the 
basic registration where the error occurred;
    (B) A transcription of the erroneous information as it appears in 
the basic registration;
    (C) A statement of the correct information as it should have 
appeared; and
    (D) If desired, an explanation of the error or its correction;
    (vi) In the case of an amplification:
    (A) The line number and heading or description of the part of the 
basic registration where the information to be amplified appears;
    (B) A clear and succinct statement of the information to be added; 
and
    (C) If desired, an explanation of the amplification;
    (vii) The name and address:
    (A) To which correspondence concerning the application should be 
sent; and
    (B) To which the certificate of supplementary registration should be 
mailed; and
    (viii) A certification. The certification shall consist of:
    (A) The handwritten signature of the author, other copyright 
claimant, or owner of exclusive right(s) in the work, or of the duly 
authorized agent of such author, other claimant or owner (who shall also 
be identified);
    (B) The typed or printed name of the person whose signature appears, 
and the date of signature; and
    (C) A statement that the person signing the application is the 
author, other copyright claimant or owner of exclusive right(s) in the 
work, or the authorized agent of such author, other claimant, or owner, 
and that the statements made in the application are correct to the best 
of that person's knowledge.
    (2) The form prescribed by the Copyright Office for the foregoing 
purposes is designated ``Application for Supplementary Copyright 
Registration (Form CA)''. Copies of the form are available free upon 
request to the Public Information Office, Library of Congress, Copyright 
Office, 101 Independence Avenue, SE., Washington, DC 20559-6000.
    (3) Copies, phonorecords or supporting documents cannot be made part 
of the record of a supplementary registration and should not be 
submitted with the application.
    (d) Effect of supplementary registration. (1) When a supplementary 
registration is completed, the Copyright Office will assign it a new 
registration number in the appropriate class, and issue a certificate of 
supplementary registration under that number.
    (2) As provided in section 408(d) of title 17, the information 
contained in a supplementary registration augments but does not 
supersede that contained in the basic registration. The basic 
registration will not be expunged or cancelled.

(Pub. L. 94-553; 17 U.S.C. 205, 408(d), 601(b), 702, 708)

[43 FR 773, Jan. 4, 1978, as amended at 56 FR 59885, Nov. 26, 1991; 57 
FR 60482, Dec. 21, 1992; 60 FR 34168, June 30, 1995; 62 FR 35421, July 
1, 1997; 63 FR 59236, Nov. 3, 1998; 63 FR 66042, Dec. 1, 1998; 64 FR 
29521, June 1, 1999]



Sec. 201.6  Payment and refund of Copyright Office fees.

    (a) In general. All fees sent to the Copyright Office should be in 
the form of a money order, check or bank draft payable to the Register 
of Copyrights. Coin or currency sent to the Office in letters or 
packages will be at the remitter's risk. Remittances from foreign 
countries should be in the form of an International Money Order or Bank 
Draft payable and immediately negotiable in the United States for the 
full amount of the fee required. Uncertified checks are accepted subject 
to collection. Where the statutory fee is submitted in the form of a 
check, the registration of the copyright claim or other record made by 
the Office is provisional until payment in money is received. In the 
event the fee is not paid,

[[Page 348]]

the registration or other record shall be expunged.
    (b) Deposit accounts. Persons or firms having a considerable amount 
of business with the Copyright Office may, for their own convenience, 
prepay copyright expenses by establishing a Deposit Account.
    (c) Refunds. Money remitted to the Copyright Office for original, 
basic, supplementary or renewal registration will not be refunded if the 
claim is rejected because the material deposited does not constitute 
copyrightable subject matter or because the claim is invalid for any 
other reason. Payments made by mistake or in excess of the statutory fee 
will be refunded, but amounts of $50 or less will not be refunded unless 
specifically requested, and refunds of less than $2 may be made in 
postage stamps. Before making any refund for fees remitted in relation 
to nonregistration copyright services, the Copyright Office shall deduct 
an administrative processing fee in an amount equivalent to one hour of 
the requested service, or the minimum fee set by statute for the 
service.
    (d) Return of deposit copies. Copies of works deposited in the 
Copyright Office pursuant to law are either retained in the Copyright 
Office, transferred for the permanent collections or other uses of the 
Library of Congress, or disposed of according to law. When an 
application is rejected, the Copyright Office reserves the right to 
retain the deposited copies.

(17 U.S.C. 702, 708(c))

[24 FR 4955, June 18, 1959, as amended at 46 FR 25442, May 7, 1981; 56 
FR 7813, Feb. 26, 1991; 59 FR 38371, July 28, 1994]



Sec. 201.7  Cancellation of completed registrations.

    (a) Definition. Cancellation is an action taken by the Copyright 
Office whereby either the registration is eliminated on the ground that 
the registration is invalid under the applicable law and regulations, or 
the registration number is eliminated and a new registration is made 
under a different class and number.
    (b) General policy. The Copyright Office will cancel a completed 
registration only in those cases where:
    (1) It is clear that no registration should have been made because 
the work does not constitute copyrightable subject matter or fails to 
satisfy the other legal and formal requirements for obtaining copyright;
    (2) Registration may be authorized but the application, deposit 
material, or fee does not meet the requirements of the law and Copyright 
Office regulations, and the Office is unable to get the defect 
corrected; or
    (3) An existing registration in the wrong class is to be replaced by 
a new registration in the correct class.
    (c) Circumstances under which a registration will be cancelled. (1) 
Where the Copyright Office becomes aware after registration that a work 
is not copyrightable, either because the authorship is de minimis or the 
work does not contain authorship subject to copyright, the registration 
will be cancelled. The copyright claimant will be notified by 
correspondence of the proposed cancellation and the reasons therefor, 
and be given 30 days, from the date the Copyright Office letter is 
mailed, to show cause in writing why the cancellation should not be 
made. If the claimant fails to respond within the 30 day period, or if 
the Office after considering the response, determines that the 
registration was made in error and not in accordance with title 17 
U.S.C., Chapters 1 through 8, the registration will be cancelled.
    (2) When a check received in payment of a registration fee is 
returned to the Copyright Office marked ``insufficient funds'' or is 
otherwise uncollectible the Copyright Office will immediately cancel any 
registration(s) for which the dishonored check was submitted and will 
notify the remitter the registration has been cancelled because the 
check was returned as uncollectible.
    (3) Where registration is made in the wrong class, the Copyright 
Office will cancel the first registration, replace it with a new 
registration in the correct class, and issue a corrected certificate.
    (4) Where registration has been made for a work which appears to be 
copyrightable but after registration the Copyright Office becomes aware 
that, on the administrative record before the Office, the statutory 
requirements have apparently not been satisfied, or

[[Page 349]]

that information essential to registration has been omitted entirely 
from the application or is questionable, or correct deposit material has 
not been deposited, the Office will correspond with the copyright 
claimant in an attempt to secure the required information or deposit 
material or to clarify the information previously given on the 
application. If the Copyright Office receives no reply to its 
correspondence within 30 days of the date the letter is mailed, or the 
response does not resolve the substantive defect, the registration will 
be cancelled. The correspondence will include the reason for the 
cancellation. The following are instances where a completed registration 
will be cancelled unless the substantive defect in the registration can 
be cured:
    (i) Eligibility for registration has not been established;
    (ii) A work published before March 1, 1989, was registered more than 
5 years after the date of first publication and the deposit copy or 
phonorecord does not contain a statutory copyright notice;
    (iii) The deposit copies or phonorecords of a work published before 
January 1, 1978 do not contain a copyright notice or the notice is 
defective;
    (iv) A renewal claim was registered after the statutory time limits 
for registration had apparently expired;
    (v) The application and copy(s) or phonorecord(s) do not match each 
other and the Office cannot locate a copy or phonorecord as described in 
the application elsewhere in the Copyright Office or the Library of 
Congress;
    (vi) The application for registration does not identify a copyright 
claimant or it appears from the transfer statement on the application or 
elsewhere that the ``claimant'' named in the application does not have 
the right to claim copyright;
    (vii) A claim to copyright is based on material added to a 
preexisting work and a reading of the application in its totality 
indicates that there is no copyrightable new material on which to base a 
claim;
    (viii) A work subject to the manufacturing provisions of the Act of 
1909 was apparently published in violation of those provisions;
    (ix) For a work published after January 1, 1978 the only claimant 
given on the application was deceased on the date the application was 
certified;
    (x) A work is not anonymous or pseudonymous and statements on the 
application and/or copy vary so much that the author cannot be 
identified; and
    (xi) Statements on the application conflict or are so unclear that 
the claimant cannot be adequately identified.
    (d) Minor substantive errors. Where a registration includes minor 
substantive errors or omissions which would generally have been 
rectified before registration, the Copyright Office will attempt to 
rectify the error through correspondence with the remitter. Except in 
those cases enumerated in paragraph (c) of this section, if the Office 
is unable for any reason to obtain the correct information or deposit 
copy the registration record will be annotated to state the nature of 
the informality and show that the Copyright Office attempted to correct 
the registration.

[50 FR 40835, Oct. 7, 1985, as amended at 60 FR 34168, June 30, 1995]



Sec. 201.8  [Reserved]



Sec. 201.9  Recordation of agreements between copyright owners and public broadcasting entities.

    (a) License agreements voluntarily negotiated between one or more 
owners of copyright in published nondramatic musical works and published 
pictorial, graphic, and sculptural works, and one or more public 
broadcasting entities, and terms and rates of royalty payments agreed to 
among owners of copyright in nondramatic literary works and public 
broadcasting entities will be filed in the Copyright Office, Licensing 
Division by recordation upon payment of the fee prescribed by 
Sec. 201.3. The document submitted for recordation shall meet the 
following requirements:
    (1) It shall be an original instrument of agreement; or it shall be 
a legible photocopy or other full-size facsimile reproduction of an 
original, accompanied by a certification signed by at least one of the 
parties to the agreement, or an authorized representative

[[Page 350]]

of that party, that the reproduction is a true copy;
    (2) It shall bear the signatures of all persons identified as 
parties to the agreement, or of their authorized agents or 
representatives;
    (3) It shall be complete on its face, and shall include any 
schedules, appendixes, or other attachments referred to in the 
instrument as being part of it; and
    (4) It shall be clearly identified, in its body or a covering 
transmittal letter, as being submitted for recordation under 17 U.S.C. 
118.
    (b) The fee for recordation of a voluntary license agreement under 
this section is the basic recordation fee as prescribed in 
Sec. 201.3(c).
    (c) The date of recordation is the date when all of the elements 
required for recordation, including the prescribed fee, have been 
received in the Copyright Office. A document is filed in the Copyright 
Office, and a filing in the Copyright Office takes place on the date of 
recordation. After recordation the document is returned to the sender 
with a certificate of record.

(17 U.S.C. 207 and 17 U.S.C. 118, 702, 708(11), as amended by Pub. L. 
94-553)

[42 FR 16777, Mar. 30, 1977, as amended at 46 FR 33249, June 29, 1981; 
56 FR 59885, Nov. 26, 1991; 64 FR 29521, June 1, 1999]



Sec. 201.10  Notices of termination of transfers and licenses covering extended renewal term.

    (a) Form. The Copyright Office does not provide printed forms for 
the use of persons serving notices of termination.
    (b) Contents. (1) A notice of termination must include a clear 
identification of each of the following:
    (i) The name of each grantee whose rights are being terminated, or 
the grantee's successor in title, and each address at which service of 
the notice is being made;
    (ii) The title and the name of at least one author of, and the date 
copyright was originally secured in, each work to which the notice of 
termination applies; and, if possible and practicable, the original 
copyright registration number;
    (iii) A brief statement reasonably identifying the grant to which 
the notice of termination applies;
    (iv) The effective date of termination; and
    (v) In the case of a termination of a grant executed by a person or 
persons other than the author, a listing of the surviving person or 
persons who executed the grant. In the case of a termination of a grant 
executed by one or more of the authors of the work where the termination 
is exercised by the successors of a deceased author, a listing of the 
names and relationships to that deceased author of all of the following, 
together with specific indication of the person or persons executing the 
notice who constitute more than one-half of that aurhor's termination 
interest: That author's surviving widow or widower; and all of that 
author's surviving children; and, where any of that author's children 
are dead, all of the surviving children of any such deceased child of 
that author; however, instead of the information required by this 
paragraph (v), the notice may contain both of the following:
    (A) A statement of as much of such information as is currently 
available to the person or persons signing the notice, with a brief 
explanation of the reasons why full information is or may be lacking; 
together with
    (B) A statement that, to the best knowledge and belief of the person 
or persons signing the notice, the notice has been signed by all persons 
whose signature is necessary to terminate the grant under section 304(c) 
of Title 17, U.S.C., or by their duly authorized agents.
    (2) Clear identification of the information specified by paragraph 
(b)(1) of this section requires a complete and unambiguous statement of 
facts in the notice itself, without incorporation by reference of 
information in other documents or records.
    (c) Signature. (1) In the case of a termination of a grant executed 
by a person or persons other than the author, the notice shall be signed 
by all of the surviving person or persons who executed the grant, or by 
their duly authorized agents.
    (2) In the case of a termination of a grant executed by one or more 
of the authors of the work, the notice as to any one author's share 
shall be signed

[[Page 351]]

by that author or by his or her duly authorized agent. If that author is 
dead, the notice shall be signed by the number and proportion of the 
owners of that author's termination interest required under clauses (1) 
and (2) of section 304(c) of title 17, U.S.C., or by their duly 
authorized agents, and shall contain a brief statement of their 
relationship or relationships to that author.
    (3) Where a signature is by a duly authorized agent, it shall 
clearly identify the person or persons on whose behalf the agent is 
acting.
    (4) The handwritten signature of each person effecting the 
termination shall either be accompanied by a statement of the full name 
and address of that person, typewritten or printed legibly by hand, or 
shall clearly correspond to such a statement elswhere in the notice.
    (d) Service. (1) The notice of termination shall be served upon each 
grantee whose rights are being terminated, or the grantee's successor in 
title, by personal service, or by first-class mail sent to an address 
which, after a reasonable investigation, is found to be the last known 
address of the grantee or successor in title.
    (2) The service provision of section 304(c)(4) of Title 17, U.S.C., 
will be satisfied if, before the notice of termination is served, a 
reasonable investigation is made by the person or persons executing the 
notice as to the current ownership of the rights being terminated, and 
based on such investigation:
    (i) If there is no reason to believe that such rights have been 
transferred by the grantee to a successor in title, the notice is served 
on the grantee; or
    (ii) If there is reason to believe that such rights have been 
transferred by the grantee to a particular successor in title, the 
notice is served on such successor in title.
    (3) For purposes of paragraph (d)(2) of this section, a reasonable 
investigation includes, but is not limited to, a search of the records 
in the Copyright Office; in the case of a musical composition with 
respect to which performing rights are licensed by a performing rights 
society, a ``reasonable investigation'' also includes a report from that 
performing rights society identifying the person or persons claiming 
current ownership of the rights being terminated.
    (4) Compliance with the provisions of clauses (2) and (3) of this 
paragraph (d) will satisfy the service requirements of section 304(c)(4) 
of Title 17, U.S.C. However, as long as the statutory requirements, have 
been met, the failure to comply with the regulatory provisions of 
paragraph (d) (2) or (3) of this section will not affect the validity of 
the service.
    (e) Harmless errors. (1) Harmless errors in a notice that do not 
materially affect the adequacy of the information required to serve the 
purposes of section 304(c) of Title 17, U.S.C., shall not render the 
notice invalid.
    (2) Without prejudice to the general rule provided by paragraph 
(e)(1) of this section (e), errors made in giving the date or 
registration number referred to in paragraph (b)(1)(ii) of this section, 
or in complying with the provisions of paragraph (b)(1)(v) of this 
section, or in describling the precise relationships under clause (2) of 
paragraph (c) of this section, shall not affect the validity of the 
notice if the errors were made in good faith and without any intention 
to deceive, mislead, or conceal relevant information.
    (f) Recordation. (1) A copy of the notice of termination will be 
recorded in the Copyright Office upon payment of the fee prescribed by 
paragraph (2) of this paragraph (f) and upon compliance with the 
following provisions:
    (i) The copy submitted for recordation shall be a complete and exact 
duplicate of the notice of termination as served and shall include the 
actual signature or signatures, or a reproduction of the actual 
signature or signatures, appearing on the notice; where separate copies 
of the same notice were served on more than one grantee or successor in 
title, only one copy need be submitted for recordation; and
    (ii) The copy submitted for recordation shall be accompanied by a 
statement setting forth the date on which the notice was served and the 
manner of service, unless such information is contained in the notice.
    (2) The fee for recordation of a document is prescribed in 
Sec. 201.3(c).

[[Page 352]]

    (3) The date of recordation is the date when all of the elements 
required for recordation, including the prescribed fee and, if required, 
the statement referred to in paragraph (f)(1)(ii) of this section, have 
been received in the Copyright Office. After recordation the document, 
including any accompanying statement, is returned to the sender with a 
certificate of record.
    (4) Recordation of a notice of termination by the Copyright Office 
is without prejudice to any party claiming that the legal and formal 
requirements for issuing a valid notice have not been met.

(Pub. L. 94-553; 17 U.S.C. 304(c), 702, 708(11))

[42 FR 45920, Sept. 13, 1977, as amended at 56 FR 59885, Nov. 26, 1991; 
60 FR 34168, June 30, 1995; 64 FR 29521, June 1, 1999]



Sec. 201.11  Satellite carrier statements of account covering statutory licenses for secondary transmissions for private home viewing.

    (a) General. This section prescribes rules pertaining to the deposit 
of Statements of Account and royalty fees in the Copyright Office as 
required by the satellite carrier license of section 119(b)(1) of title 
17 of the United States Code, as amended by Pub. L. 103-369, in order 
that certain secondary transmissions by satellite carriers for private 
home viewing be subject to statutory licensing.
    (b) Definitions. (1) The terms distributor, network station, private 
home viewing, satellite carrier, subscriber, superstation, and unserved 
household have the meanings set forth in section 119(d) of title 17 of 
the United States Code, as amended by Pub. L. 103-369.
    (2) The terms primary transmission and secondary transmission have 
the meanings set forth in section 111(f) of title 17 of the United 
States Code.
    (c) Accounting periods and deposit. (1) Statements of Account shall 
cover semiannual accounting periods of January 1 through June 30, and 
July 1 through December 31, and shall be deposited in the Copyright 
Office, together with the total statutory royalty fee or the confirmed 
arbitration royalty fee for such accounting periods as prescribed by 
section 119(b)(1)(B) and (c)(3) of title 17, by not later than July 30, 
if the Statement of Account covers the January 1 through June 30 
accounting period, and by not later than the immediately following 
January 30, if the Statement of Account covers the July 1 through 
December 31 accounting period.
    (2) Upon receiving a Statement of Account and royalty fee, the 
Copyright Office will make an official record of the actual date when 
such statement and fee were physically received in the Copyright Office. 
Thereafter, the Licensing Division of the Copyright Office will examine 
the statement and fee for obvious errors or omissions appearing on the 
face of the documents, and will require that any such obvious errors or 
omissions be corrected before final processing of the documents is 
completed. If, as the result of communications between the Copyright 
Office and the satellite carrier, an additional fee is deposited or 
changes or additions are made in the Statement of Account, the date that 
additional deposit or information was actually received in the Office 
will be added to the official record of the case. However, completion by 
the Copyright Office of the final processing of a Statement of Account 
and royalty fee deposit shall establish only the fact of such completion 
and the date or dates of receipt shown in the official record. It shall 
in no case be considered a determination that the Statement of Account 
was, in fact, properly prepared and accurate, that the correct amount of 
the royalty fee had been deposited, that the statutory time limits for 
filing had been met, or that any other requirements to qualify for a 
statutory license have been satisfied.
    (3) Statements of Account and royalty fees received before the end 
of the particular accounting period they purport to cover will not be 
processed by the Copyright Office. Statements of Account and royalty 
fees received after the filing deadlines of July 30 or January 30, 
respectively, will be accepted for whatever legal effect they may have, 
if any.
    (4) In the Register's discretion, four years after the close of any 
calendar year, the Register may close out the royalty payments account 
for that calendar year, and may treat any funds remaining in such 
account and any

[[Page 353]]

subsequent deposits that would otherwise be attributable to that 
calendar year as attributable to the succeeding calendar year.
    (d) Forms. (1) Each Statement of Account shall be furnished on an 
appropriate form prescribed by the Copyright Office, and shall contain 
the information required by that form and its accompanying instructions. 
Computation of the copyright royalty fee shall be in accordance with the 
procedures set forth in the forms. Copies of Statement of Account forms 
are available free upon request to the Licensing Division, United States 
Copyright Office, Library of Congress, Washington, DC 20557.
    (2) The form prescribed by the Copyright Office is designated 
``Statement of Account for Secondary Transmissions by Satellite Carriers 
to Home Viewers.''
    (e) Contents. Each Statement of Account shall contain the following 
information:
    (1) A clear designation of the accounting period covered by the 
Statement.
    (2) The designation ``Owner'' followed by:
    (i) The full legal name of the satellite carrier. If the owner is a 
partnership, the name of the partnership is to be followed by the name 
of at least one individual partner;
    (ii) Any other name or names under which the owner conducts the 
business of the satellite carrier; and
    (iii) The full mailing address of the owner. Ownership, other names 
under which the owner conducts the business of the satellite carrier, 
and the owner's mailing address shall reflect facts existing on the last 
day of the accounting period covered by the Statement of Account.
    (3) The designation ``Primary Transmitters,'' followed by the call 
signs, broadcast channel numbers, station locations (city and state of 
license), and a notation whether that primary transmitter is a 
``superstation'' or ``network station'' transmitted to any or all of the 
subscribers of the satellite carrier during any portion of the period 
covered by the Statement of Account.
    (4) The designation ``Superstations,'' followed by:
    (i) The call sign of each superstation signal carried for each month 
of the period covered by the Statement, and
    (ii) The total number of subscribers to each superstation for each 
month of the period covered by the Statement. This number is the number 
of subscribers to each superstation receiving the retransmission on the 
last day of each month.
    (5) The designation ``Network Stations,'' followed by:
    (i) The call sign of each network station carried for each month of 
the period covered by the Statement, and
    (ii) The total number of subscribers to each network station for 
each month of the period covered by the Statement. This number is the 
number of subscribers to each network station receiving the 
retransmission on the last day of each month.
    (6) The total number of subscribers to each superstation for the 
six-month period covered by the Statement multiplied by the statutory 
royalty rate of 17.5 cents per subscriber, or in the case of syndex-
proof superstations as defined in 37 CFR 258.2, 14 cents (or in lieu 
thereof, the arbitrated rate, if applicable).
    (7) The total number of subscribers to each network station for the 
six-month period covered by the Statement multiplied by the statutory 
royalty rate of six (6) cents per subscriber (or, in lieu thereof, the 
arbitrated rate, if applicable).
    (8) The name, address, business title, and telephone number of the 
individual or individuals to be contacted for information or questions 
concerning the content of the Statement of Account.
    (9) The handwritten signature of:
    (i) The owner of the satellite carrier or a duly authorized agent of 
the owner, if the owner is not a partnership or a corporation; or
    (ii) A partner, if the owner is a partnership; or
    (iii) An officer of the corporation, if the owner is a corporation. 
The signature shall be accompanied by:
    (A) The printed or typewritten name of the person signing the 
Statement of Account;
    (B) The date of signature;
    (C) If the owner of the satellite carrier is a partnership or a 
corporation,

[[Page 354]]

by the title or official position held in the partnership or corporation 
by the person signing the Statement of Account;
    (D) A certification of the capacity of the person signing; and
    (E) The following statement:

    I, the undersigned Owner or Agent of the Satellite Carrier, or 
Officer or Partner, if the Satellite Carrier is a Corporation or 
Partnership, have examined this Statement of Account and hereby declare 
under penalty of law that all statements of fact contained herein are 
true, complete, and correct to the best of my knowledge, information, 
and belief, and are made in good faith.

(18 U.S.C., section 1001 (1986))

    (f) Royalty fee payment. All royalty fees may be paid by electronic 
transfer of funds, provided the payment is received in the designated 
United States Federal Reserve Bank by the filing deadline for the 
relevant accounting period. Except in the case of an electronic payment, 
the royalty fee payable for the period covered by the Statement of 
Account shall accompany that Statement of Account and shall be deposited 
at the Copyright Office with it. Payment must be in the form of a 
certified check, cashier's check, or a money order, payable to: Register 
of Copyrights; or a United States Treasury electronic payment.
    (g) Corrections, supplemental payments, and refunds. (1) Upon 
compliance with the procedures and within the time limits set forth in 
paragraph (g)(3) of this section, corrections to Statements of Account 
will be placed on record, supplemental royalty fee payments will be 
received for deposit, or refunds will be issued, in the following cases:
    (i) Where, with respect to the accounting period covered by a 
Statement of Account, any of the information given in the Statement 
filed in the Copyright Office is incorrect or incomplete; or
    (ii) Where calculation of the royalty fee payable for a particular 
accounting period was incorrect, and the amount deposited in the 
Copyright Office for that period was either too high or too low.
    (2) Corrections to Statements of Account will not be placed on 
record, supplemental royalty fee payments will not be received for 
deposit, and refunds will not be issued, where the information in the 
Statements of Account, the royalty fee calculations, or the payments 
were correct as of the date on which the accounting period ended, but 
changes (for example, addition or deletion of a signal) took place 
later.
    (3) Requests that corrections to a Statement of Account be placed on 
record, that fee payments be accepted, or requests for the issuance of 
refunds, shall be made only in the cases mentioned in paragraph (g)(1) 
of this section. Such requests shall be addressed to the Licensing 
Division of the Copyright Office, and shall meet the following 
conditions:
    (i) The request must be in writing, must clearly identify its 
purpose, and, in the case of a request for a refund, must be received in 
the Copyright Office before the expiration of 30 days from the last day 
of the applicable Statement of Account filing period, or before the 
expiration of 30 days from the date of receipt at the Copyright Office 
of the royalty payment that is the subject of the request, whichever 
time period is longer. A telegraphic or similar unsigned communication 
will be considered to meet this requirement if it clearly identifies the 
basis of the request, if it is received in the Copyright Office within 
the required 30-day period, and if a written request meeting all the 
conditions of this paragraph (g)(3) is also received in the Copyright 
Office within 14 days after the end of such 30-day period:
    (ii) The Statement of Account to which the request pertains must be 
sufficiently identified in the request (by inclusion of the name of the 
owner of the satellite carrier and the accounting period in question) so 
that it can be readily located in the records of the Copyright Office;
    (iii) The request must contain a clear statement of the facts on 
which it is based and provide a clear basis on which a refund may be 
granted, in accordance with the following procedures:
    (A) In the case of a request filed under paragraph (g)(1)(i) of this 
section, where the information given in the Statement of Account is 
incorrect or incomplete, the request must clearly identify the erroneous 
or incomplete

[[Page 355]]

information and provide the correct or additional information:
    (B) In the case of a request filed under paragraph (g)(1)(ii) of 
this section, where the royalty fee was miscalculated and the amount 
deposited in the Copyright Office was either too high or too low, the 
request must be accompanied by an affidavit under the official seal of 
any officer authorized to administer oaths within the United States, or 
a statement in accordance with section 1746 of title 28 of the United 
States Code, made and signed in accordance with paragraph (e)(9) of this 
section. The affidavit or statement shall describe the reasons why the 
royalty fee was improperly calculated and include a detailed analysis of 
the proper royalty calculation.
    (iv)(A) All requests filed under this paragraph (g) must be 
accompanied by a filing fee in the amount of $15 for each Statement of 
Account involved. Payment of this fee may be in the form of a personal 
or company check, or of a certified check, cashier's check or money 
order, payable to: Register of Copyrights. No request will be processed 
until the appropriate filing fees are received.
    (B) All requests that a supplemental royalty fee payment be received 
for deposit under this paragraph (g) must be accompanied by a remittance 
in the full amount of such fee. Payment of the supplemental royalty fee 
must be in the form of certified check, cashier's check, or money order, 
payable to: Register of Copyrights; or electronic payment. No such 
request will be processed until an acceptable remittance in the full 
amount of the supplemental royalty fee has been received.
    (v) All requests submitted under this paragraph (g) must be signed 
by the satellite carrier owner named in the Statement of Account, or the 
duly authorized agent of the owner, in accordance with paragraph (e)(9) 
of this section.
    (vi) A request for a refund is not necessary where the Licensing 
Division, during its examination of a Statement of Account or related 
document, discovers an error that has resulted in a royalty overpayment. 
In this case, the Licensing Division will forward the royalty refund to 
the satellite carrier owner named in the Statement of Account without 
regard to the time limitations provided for in paragraph (g)(3)(i) of 
this section.
    (4) Following final processing, all requests submitted under this 
paragraph (g) will be filed with the original Statement of Account in 
the records of the Copyright Office. Nothing contained in this paragraph 
shall be considered to relieve satellite carriers from their full 
obligations under title 17 of the United States Code, and the filing of 
a correction or supplemental payment shall have only such effect as may 
be attributed to it by a court of competent jurisdiction.
    (h) Interest. (1) Royalty fee payments submitted as a result of late 
or amended filings will include interest. Interest will begin to accrue 
beginning on the first day after the close of the period for filing 
statements of account for all underpayments or late payments of 
royalties for the satellite carrier statutory license for secondary 
transmissions for private home viewing occurring within that accounting 
period. The accrual period will end on the date appearing on the 
certified check, cashier's check, money order, or electronic payment 
submitted by a satellite carrier, provided that such payment is received 
by the Copyright Office within five business days of that date. If the 
payment is not received by the Copyright Office within five business 
days of its date, the accrual period will end on the date of actual 
receipt by the Copyright Office.
    (2)(i) The interest rate applicable to a specific accounting period 
beginning with the 1992/2 period shall be the Current Value of Funds 
Rate, as established by section 8025.40 of the Treasury Financial Manual 
and published in the Federal Register, in effect on the first business 
day after the close of the filing deadline for that accounting period. 
Cable operators wishing to obtain the interest rate for a specific 
accounting period may do so by consulting the Federal Register for the 
applicable Current Value of Funds Rate, or by contacting the Licensing 
Division of the Copyright Office.
    (ii) The interest rate applicable to a specific accounting period 
earlier than the 1992/2 period shall be the rate fixed

[[Page 356]]

by the Licensing Division of the Copyright Office pursuant to 37 CFR 
201.11(h) in effect on June 30, 1992.
    (3) Interest is not required to be paid on any royalty underpayment 
or late payment from a particular accounting period if the interest 
charge is less than or equal to five dollars ($5.00).

[54 FR 27877, July 3, 1989, as amended at 55 FR 49998, Dec. 4, 1990; 56 
FR 29589, June 28, 1991; 57 FR 61834, Dec. 29, 1992; 59 FR 67635, Dec. 
30, 1994; 60 FR 34168, June 30, 1995; 60 FR 57937, Nov. 24, 1995; 63 FR 
30635, June 5, 1998]



Sec. 201.12  Recordation of certain contracts by cable systems located outside of the forty-eight contiguous States.

    (a) Written, nonprofit contracts providing for the equitable sharing 
of costs of videotapes and their transfer, as identified in section 
111(e)(2) of title 17 of the United States Code as amended by Pub. L. 
94-553, will be filed in the Copyright Office Licensing Division by 
recordation upon payment of the prescribed fee. The document submitted 
for recordation shall meet the following requirements:
    (1) It shall be an original instrument of contract; or it shall be a 
legible photocopy or other full-size facsimile reproduction of an 
original, accompanied by a certification signed by at least one of the 
parties to the contract, or an authorized representative of that party, 
that the reproduction is a true copy;
    (2) It shall bear the signatures of all persons identified as 
parties to the contract, or of their authorized agents or 
representatives;
    (3) It shall be complete on its face, and shall include any 
schedules, appendixes, or other attachments referred to in the 
instrument as being part of it; and
    (4) It shall be clearly identified, in its body or a covering 
transmittal letter, as being submitted for recordation under 17 U.S.C. 
111(e).
    (b) The fee for recordation of a document is prescribed in 
Sec. 201.3.
    (c) The date of recordation is the date when all of the elements 
required for recordation, including the prescribed fee, have been 
received in the Copyright Office. A document is filed in the Copyright 
Office and a filing in the Copyright Office takes place on the date of 
recordation. After recordation the document is returned to the sender 
with a certificate of record.

(Pub. L. 94-553; 17 U.S.C. 111, 702, 708(11))

[42 FR 53961, Oct. 4, 1977, as amended at 56 FR 59885, Nov. 26, 1991; 64 
FR 29521, June 1, 1999]



Sec. 201.13  Notices of objection to certain noncommercial performances of nondramatic literary or musical works.

    (a) Definitions. (1) A Notice of Objection is a notice, as required 
by section 110(4) of title 17 of the United States Code as amended by 
Pub. L. 94-553, to be served as a condition of preventing the 
noncommercial performance of a nondramatic literary or musical work 
under certain circumstances.
    (2) For purposes of this section, the copyright owner of a 
nondramatic literary or musical work is the author of the work 
(including, in the case of a work made for hire, the employer or other 
person for whom the work was prepared), or a person or organization that 
has obtained ownership of the exclusive right, initially owned by the 
author of performance of the type referred to in 17 U.S.C. 110(4). If 
the other requirements of this section are met, a Notice of Objection 
may cover the works of more than one copyright owner.
    (b) Form. The Copyright Office does not provide printed forms for 
the use of persons serving Notices of Objection.
    (c) Contents. (1) A Notice of Objection must clearly state that the 
copyright owner objects to the performance, and must include all of the 
following:
    (i) Reference to the statutory authority on which the Notice of 
Objection is based, either by citation of 17 U.S.C. 110(4) or by a more 
general characterization or description of that statutory provision;
    (ii) The date and place of the performance to which an objection is 
being made; however, if the exact date or place of a particular 
performance, or both, are not known to the copyright owner, it is 
sufficient if the Notice describes whatever information the copyright 
owner has about the date and place of a particular performance, and the 
source of that information unless

[[Page 357]]

the source was considered private or confidential;
    (iii) Clear identification, by title and at least one author, of the 
particular nondramatic literary or musical work or works, to the 
performance of which the copyright owner thereof is lodging objection; a 
Notice may cover any number of separately identified copyrighted works 
owned by the copyright owner or owners serving the objection. 
Alternatively, a blanket notice, with or without separate identification 
of certain copyrighted works, and purporting to cover one or more groups 
of copyrighted works not separately identified by title and author, 
shall have effect if the conditions specified in paragraph (c)(2) of 
this section are met; and
    (iv) A concise statement of the reasons for the objection.
    (2) A blanket notice purporting to cover one or more groups of 
copyrighted works not separately identified by title and author shall be 
valid only if all of the following conditions are met:
    (i) The Notice shall identify each group of works covered by the 
blanket notice by a description of any common characteristics 
distinguishing them from other copyrighted works, such as common author, 
common copyright owner, common publisher, or common licensing agent;
    (ii) The Notice shall identify a particular individual whom the 
person responsible for the performance can contact for more detailed 
information about the works covered by the blanket notice and to 
determine whether a particular work planned for performance is in fact 
covered by the Notice. Such identification shall include the full name 
and business and residence addresses of the individual, telephone 
numbers at which the individual can be reached throughout the period 
between service of the notice and the performance, and name, addresses, 
and telephone numbers of another individual to contact during that 
period in case the first cannot be reached.
    (iii) If the copyright owner or owners of all works covered by the 
blanket notice is not identified in the Notice, the Notice shall include 
an offer to identify, by name and last known address, the owner or 
owners of any and all such works, upon request made to the individual 
referred to in paragraph (c)(2)(ii) of this section.
    (3) A Notice of Objection must also include clear and prominent 
statements explaining that:
    (i) A failure to exclude the works identified in the Notice from the 
performance in question may subject the person responsible for the 
performance to liability for copyright infringement; and
    (ii) The objection is without legal effect if there is no direct or 
indirect admission charge for the performance, and if the other 
conditions of 17 U.S.C. 110(4) are met.
    (d) Signature and identification. (1) A Notice of Objection shall be 
in writing and signed by each copyright owner, or such owner's duly 
authorized agent, as required by 17 U.S.C. 110(4)(B)(i).
    (2) The signature of each owner or agent shall be an actual 
handwritten signature of an individual, accompanied by the date of 
signature and the full name, address, and telephone number of that 
person, typewritten or printed legibly by hand.
    (3) If a Notice of Objection is initially served in the form of a 
telegram or similar communication, as provided by paragraph (e) of this 
section, the requirement for an individual's handwritten signature shall 
be considered waived if the further conditions of said paragraph (e) are 
met.
    (e) Service. (1) A Notice of Objection shall be served on the person 
responsible for the performance at least seven days before the date of 
the performance, as provided by 17 U.S.C. 110 (4)(B)(ii).
    (2) Service of the Notice may be effected by any of the following 
methods:
    (i) Personal service;
    (ii) First-class mail;
    (iii) Telegram, cablegram, or similar form of communication, if:
    (A) The Notice meets all of the other conditions provided by this 
section; and
    (B) Before the performance takes place, the person responsible for 
the performance receives written confirmation of the Notice, bearing the 
actual handwritten signature of each copyright owner or duly authorized 
agent.

[[Page 358]]

    (3) The date of service is the date the Notice of Objection is 
received by the person responsible for the performance or any agent or 
employee of that person.


(Pub. L. 94-553; 17 U.S.C. 110(4), 702)

[42 FR 64684, Dec. 28, 1977]



Sec. 201.14  Warnings of copyright for use by certain libraries and archives.

    (a) Definitions. (1) A Display Warning of Copyright is a notice 
under paragraphs (d)(2) and (e)(2) of section 108 of title 17 of the 
United States Code as amended by Pub. L. 94-553. As required by those 
sections the ``Display Warning of Copyright'' is to be displayed at the 
place where orders for copies or phonorecords are accepted by certain 
libraries and archives.
    (2) An Order Warning of Copyright is a notice under paragraphs 
(d)(2) and (e)(2) of section 108 of title 17 of the United States Code 
as amended by Pub. L. 94-553. As required by those sections the ``Order 
Warning of Copyright'' is to be included on printed forms supplied by 
certain libraries and archives and used by their patrons for ordering 
copies or phonorecords.
    (b) Contents. A Display Warning of Copyright and an Order Warning of 
Copyright shall consist of a verbatim reproduction of the following 
notice, printed in such size and form and displayed in such manner as to 
comply with paragraph (c) of this section:

            notice warning concerning copyright restrictions

    The copyright law of the United States (title 17, United States 
Code) governs the making of photocopies or other reproductions of 
copyrighted material.
    Under certain conditions specified in the law, libraries and 
archives are authorized to furnish a photocopy or other reproduction. 
One of these specific conditions is that the photocopy or reproduction 
is not to be ``used for any purpose other than private study, 
scholarship, or research.'' If a user makes a request for, or later 
uses, a photocopy or reproduction for purposes in excess of ``fair 
use,'' that user may be liable for copyright infringement.
    This institution reserves the right to refuse to accept a copying 
order if, in its judgment, fulfillment of the order would involve 
violation of copyright law.

    (c) Form and manner of use. (1) A Display Warning of Copyright shall 
be printed on heavy paper or other durable material in type at least 18 
points in size, and shall be displayed prominently, in such manner and 
location as to be clearly visible, legible, and comprehensible to a 
casual observer within the immediate vicinity of the place where orders 
are accepted.
    (2) An Order Warning of Copyright shall be printed within a box 
located prominently on the order form itself, either on the front side 
of the form or immediately adjacent to the space calling for the name or 
signature of the person using the form. The notice shall be printed in 
type size no smaller than that used predominantly throughout the form, 
and in no case shall the type size be smaller than 8 points. The notice 
shall be printed in such manner as to be clearly legible, 
comprehensible, and readily apparent to a casual reader of the form.


(Pub. L. 94-553; 17 U.S.C. 108, 702)

[42 FR 59265, Nov. 16, 1977]



Sec. 201.15  Voluntary license to permit reproduction of nondramatic literary works solely for use of the blind and physically handicapped.

    (a) General. (1) The blind and physically handicapped are persons 
eligible for special loan services of the Library of Congress, as 
designated by section 135a of title 2 of the United States Code as 
amended by Pub. L. 89-552 and regulations of the Library of Congress 
issued under that section.
    (2) This section, and any license granted or exercised under this 
section, applies only to nondramatic literary works that have previously 
been published with the consent of the copyright owner.
    (b) Form. The Copyright Office provides the following form as part 
of the applications for registration of claims to copyright in 
nondramatic literary works (Form TX):

    Reproduction for Use of Blind or Physicallly Handicapped Persons

    Signature of this form at space 10, and a check in one of the boxes 
here in space 8, constitutes a nonexclusive grant of permission to the 
Library of Congress to reproduce

[[Page 359]]

and distribute solely for the blind and physically handicapped and under 
the conditions and limitations prescribed by the regulations of the 
Copyright Office: (1) copies of the work identified in space 1 of this 
application in Braille (or similar tactile symbols); or (2) phonorecords 
embodying a fixation of a reading of that work; or (3) both.
    a {time}  Copies and phonorecords; b {time}  Copies only; c {time}  
Phonorecords only.

    (c) Terms and conditions. A copyright owner who consents to the use 
of a copyrighted work by the Library of Congress for the use of the 
blind and physically handicapped may accomplish this purpose by checking 
the appropriate box on the application form, by signing the application 
form as a whole, and by submitting the application for copyright 
registration to the Copyright Office. The copyright owner thereby grants 
a nonexclusive license to the Library of Congress with respect to the 
work identified in the application, under the terms and conditions set 
forth in this section.
    (1) The work may be reproduced only by or on behalf of the Library 
of Congress.
    (2) The work may not be reproduced in any other form than Braille 
(or similar tactile symbols), or by a fixation of a reading of the work 
in phonorecords specifically designed for use of the blind and 
physically handicapped, or both, as designated by the copyright owner on 
the application form.
    (3) Such copies and phonorecords of the work may be distributed by 
the Library of Congress solely for the use of the blind and physically 
handicapped under conditions and guidelines provided by the National 
Library Service for the Blind and Physically Handicapped of the Library 
of Congress.
    (4) In the case of any conflict with any other right or license 
given by the copyright owner to the Library of Congress pertaining to 
the work, the terms and conditions most favorable to the Library of 
Congress for the benefit of the blind and physically handicapped shall 
govern.
    (5) Copies and phonorecords reproduced and distributed under this 
license will contain identification of the author and publisher of the 
work, and copyright notice, as they appear on the copies or phonorecords 
deposited with the application.
    (6) This license is nonexclusive, and the copyright owner is in no 
way precluded from granting other nonexclusive licenses with respect to 
reproduction for the use of the blind and physically handicapped, or 
exclusive licenses for the same purpose on condition they are subject to 
the nonexclusive license granted to the Library of Congress, or other 
exclusive or nonexclusive licenses or transfers with respect to 
reproduction or distribution for other purposes.
    (7) All responsibility for the clearing and exercise of the rights 
granted is that of the Library of Congress.
    (d) Duration of license. (1) The license is effective upon the 
effective date of registration for the work and, subject to the 
conditions and procedures stated in paragraph (d)(2) of this section, 
continues for the full term of copyright in the work provided in section 
302 of title 17 of the United States Code as amended by Pub. L. 94-553.
    (2) Termination of the license may be accomplished by the copyright 
owner at any time by submitting a written statement of intent to 
terminate, signed by the copyright owner or by the duly authorized agent 
of the copyright owner, to the National Library Service for the Blind 
and Physically Handicapped of the Library of Congress. Termination will 
become effective 90 days after receipt of the written statement, or at a 
later time set forth in the statement. Upon the effective date of 
termination the Library of Congress will be prohibited from reproducing 
additional copies or phonorecords of the work, or both, without the 
consent of the copyright owner, but copies or phonorecords, or both, 
reproduced under authority of the license before the effective date of 
termination may continue to be utilized and distributed under the terms 
of the license after its termination.


(17 U.S.C. 408, 702, 710)

[45 FR 13073, Feb. 28, 1980, as amended at 60 FR 34168, June 30, 1995]

[[Page 360]]



Sec. 201.16  [Reserved]



Sec. 201.17  Statements of Account covering compulsory licenses for secondary transmissions by cable systems.

    (a) General. This section prescribes rules pertaining to the deposit 
of Statements of Account and royalty fees in the Coypright Office as 
required by section 111(d)(2) of title 17 of the United States Code in 
order for secondary transmissions of cable systems to be subject to 
compulsory licensing.
    (b) Definitions. (1) Gross receipts for the ``basic service of 
providing secondary transmissions of primary broadcast transmitters'' 
include the full amount of monthly (or other periodic) service fees for 
any and all services or tiers of services which include one or more 
secondary transmissions of television or radio broadcast signals, for 
additional set fees, and for converter fees. In no case shall gross 
receipts be less than the cost of obtaining the signals of primary 
broadcast transmitters for subsequent retransmission. All such gross 
receipts shall be aggregated and the DSE calculations shall be made 
against the aggregated amount. Gross receipts for secondary transmission 
services do not include installation (including connection, relocation, 
disconnection, or reconnection) fees, separate charges for security, 
alarm or facsimile services, charges for late payments, or charges for 
pay cable or other program origination services: Provided That, the 
origination services are not offered in combination with secondary 
transmission service for a single fee.
    (2) A cable system is a facility, located in any State, Territory, 
Trust Territory, or Possession, that in whole or in part receives 
signals transmitted or programs broadcast by one or more television 
broadcast stations licensed by the Federal Communications Commission, 
and makes secondary transmissions of such signals or programs by wires, 
cables, microwave, or other communications channels to subscribing 
members of the public who pay for such service. A system that meets this 
definition is considered a ``cable system'' for copyright purposes, even 
if the FCC excludes it from being considered a ``cable system'' because 
of the number or nature of its subscribers or the nature of its 
secondary transmissions. The statements of account and royalty fees to 
be deposited under Sec. 201.17 of this section, shall be recorded and 
deposited by each individual cable system desiring its secondary 
transmissions to be subject to compulsory licensing. The owner of each 
individual cable system on the last day of the accounting period covered 
by a Statement of Account is responsible for depositing the Statement of 
Account and remitting the copyright royalty fees. For these purposes, 
and the purpose of Sec. 201.17 of this section, an ``individual'' cable 
system is each cable system recognized as a distinct entity under the 
rules, regulations, and practices of the Federal Communications 
Commission in effect on the last day of the accounting period covered by 
a Statement of Account, in the case of the preparation and deposit of a 
Statement of Account and copyright royalty fee. For these purposes, two 
or more cable facilities are considered as one individual cable system 
if the facilities are either:
    (i) In contiguous communities under common ownership or control or
    (ii) Operating from one headend.
    (3) FCC means the Federal Communications Commission.
    (4) In the case of cable systems which make secondary transmissions 
of all available FM radio signals, which signals are not electronically 
processed by the system as separate and discrete signals, an FM radio 
signal is ``generally receivable'' if:
    (i) It is usually carried by the system whenever it is received at 
the system's headend, and
    (ii) As a result of monitoring at reasonable times and intervals, it 
can be expected to be received at the system's headend, with the 
system's FM antenna, at least three consecutive hours each day at the 
same time each day, five or more days a week, for four or more weeks 
during any calendar quarter, with a strength of not less than fifty 
microvolts per meter measured at the foot of the tower or pole to which 
the antenna is attached.
    (5) The terms primary transmission, secondary transmission, local 
service area of a primary transmitter, distant signal

[[Page 361]]

equivalent, network station, independent station, and noncommercial 
educational station have the meanings set forth in section 111(f) of 
title 17 of the United States Code, as amended by Pub. L. 94-553 and 
Pub. L. 103-369.
    (6) A primary transmitter is a ``distant'' station, for purposes of 
this section, if the programming of such transmitter is carried by the 
cable system in whole or in part beyond the local service area of such 
primary transmitter.
    (7) A translator station is, with respect to programs both 
originally transmitted and retransmitted by it, a primary transmitter 
for the purposes of this section. A translator station which retransmits 
the programs of a network station will be considered a network station; 
a translator station which retransmits the programs of an independent 
station shall be considered an independent station; and a translator 
station which retransmits the programs of a noncommercial educational 
station shall be considered a noncommercial educational station. The 
determination of whether a translator station should be identified as a 
``distant'' station depends on the local service area of the translator 
station.
    (8) For purposes of this section, the ``rules and regulations of the 
FCC in effect on October 19, 1976,'' which permitted a cable system, at 
its election, to omit the retransmission of a particular program and 
substitute another program in its place, refers to that portion of 
former 47 CFR 76.61(b)(2), revised June 25, 1981, and Sec. 76.63 
(referring to Sec. 76.61(b)(2)), deleted June 25, 1981, concerning the 
substitution of a program that is primarily of local interest to the 
distant community (e.g., a local news or public affairs program).
    (9) For purposes of this section, the ``rules and regulations of the 
FCC'', which require a cable system to omit the retransmission of a 
particular program and substitute another program in its place, refers 
to 47 CFR 76.67.
    (10) For purposes of this section, a cable system ``lacks the 
activated channel capacity to retransmit on a full-time basis all 
signals which it is authorized to carry'' only if:
    (i) All of its activated television channels are used exclusively 
for the secondary transmission of television signals; and
    (ii) The number of primary television transmitters secondarily 
transmitted by the cable system exceeds the number of its activated 
television channels.
    (c) Accounting periods and deposit. (1) Statements of Account shall 
cover semiannual accounting periods of (i) January 1 through June 30, 
and (ii) July 1 through December 31, and shall be deposited in the 
Copyright Office, together with the total royalty fee for such 
accounting periods as prescribed by section 111(d)(1) (B), (C), or (D) 
of title 17, by not later than the immediately following August 29, if 
the Statement of Account covers the January 1 through June 30 accounting 
period, and by not later than the immediately following March 1, if the 
Statement of Account covers the July 1 through December 31 accounting 
period.
    (2) Upon receiving a Statement of Account and royalty fee, the 
Copyright Office will make an official record of the actual date when 
such Statement and fee were physically received in the Copyright Office. 
Thereafter, the Office will examine the Statement and fee for obvious 
errors or omissions appearing on the face of the documents, and will 
require that any such obvious errors or omissions be corrected before 
final processing of the documents is completed. If, as the result of 
communications between the Copyright Office and the cable system, an 
additional fee is deposited or changes or additions are made in the 
Statement of Account, the date that additional deposit or information 
was actually received in the Office will be added to the official record 
of the case. However, completion by the Copyright Office of the final 
processing of a Statement of Account and royalty fee deposit shall 
establish only the fact of such completion and the date or dates of 
receipt shown in the official record. It shall in no case be considered 
a determination that the Statement of Account was, in fact, properly 
prepared and accurate, that the correct amount of the royalty fee had 
been deposited, that the statutory time limits for filing had been met, 
or that any other requirements to qualify

[[Page 362]]

for a compulsory license have been satisfied.
    (3) Statements of Account and royalty fees received before the end 
of the particular accounting period they purport to cover will not be 
processed by the Copyright Office. Statements of Account and royalty 
fees received after the filing deadlines of August 29 or March 1, 
respectively, will be accepted for whatever legal effect they may have, 
if any.
    (4) In the Register's discretion, four years after the close of any 
calendar year, the Register may, close out the royalty payments account 
for that calendar year, and may treat any funds remaining in such 
account and any subsequent deposits that would otherwise be attributable 
to that calendar year as attributable to the succeeding calendar year.
    (d) Forms. (1) Each Statement of Account shall be furnished on an 
appropriate form prescribed by the Copyright Office, and shall contain 
the information required by that form and its accompanying instructions. 
Computation of distant signal equivalents and the copyright royalty fee 
shall be in accordance with the procedures set forth in the forms. 
Copies of Statement of Account forms are available free upon request to 
the Licensing Division, United States Copyright Office, Library of 
Congress, Washington, DC 20557.
    (2) The forms prescribed by the Copyright Office are designated 
``Statement of Account for Secondary Transmissions By Cable Systems'':
    (i) Form SA1-2--``Short Form'' for use by cable systems whose 
semiannual gross receipts for secondary transmission total less than 
$292,000; and
    (ii) Form SA3--``Long Form'' for use by cable systems whose 
semiannual gross receipts for secondary transmission total $292,000 or 
more.
    (e) Contents. Each Statement of Account shall contain the following 
information:
    (1) A clear designation of the accounting period covered by the 
Statement.
    (2) The designation ``Owner,'' followed by:
    (i) The full legal name of the owner of the cable system. The 
`owner' of the cable system is the individual or entity that provides 
the retransmission service and collects payment from the end user either 
directly or indirectly through a third party. If the owner is a 
partnership, the name of the partnership is to be followed by the name 
of at least one individual partner;
    (ii) Any other name or names under which the owner conducts the 
business of the cable system; and
    (iii) The full mailing address of the owner.

Ownership, other names under which the owner conducts the business of 
the cable system, and the owner's mailing address shall reflect facts 
existing on the last day of the accounting period covered by the 
Statement of Account.
    (3) The designation ``System,'' followed by:
    (i) Any business or trade names used to identify the business and 
operation of the system, unless these names have already been given 
under the designation ``Owner''; and
    (ii) The full mailing address of the system, unless such address is 
the same as the address given under the designation ``Owner''.

Business or trade names used to identify the business and operation of 
the system, and the system's mailing address, shall reflect the facts 
existing on the last day of the accounting period covered by the 
Statement of Account.
    (4) The designation ``Area Served'', followed by the name of the 
community or communities served by the system. For this purpose a 
``community'' is the same as a ``community unit'' as defined in FCC 
rules and regulations.
    (5) The designation ``Channels,'' followed by:
    (i) The number of channels on which the cable system made secondary 
transmissions to its subscribers, and
    (ii) The cable system's total activated channel capacity, in each 
case during the period covered by the Statement.
    (6) The designation ``Secondary Transmission Service: Subscribers 
and Rates'', followed by:
    (i) A brief description of each subscriber category for which a 
charge is made by the cable system for the basic

[[Page 363]]

service of providing secondary transmissions of primary broadcast 
transmitters;
    (ii) The number of subscribers to the cable system in each such 
subscriber category; and
    (iii) The charge or charges made per subscriber to each such 
subscriber category for the basic service of providing such secondary 
transmissions. Standard rate variations within a particular category 
should be summarized; discounts allowed for advance payment should not 
be included. For these purposes:
    (A) The description, the number of subscribers, and the charge or 
charges made shall reflect the facts existing on the last day of the 
period covered by the Statement; and
    (B) Each entity (for example, the owner of a private home, the 
resident of an apartment, the owner of a motel, or the owner of an 
apartment house) which is charged by the cable system for the basic 
service of providing secondary transmissions shall be considered one 
subscriber.
    (7) The designation ``Gross Receipts'', followed by the gross amount 
paid to the cable system by subscribers for the basic service of 
providing secondary transmissions of primary broadcast transmissions 
during the period covered by the Statement of Account. If the cable 
system maintains its revenue accounts on an accrual basis, gross 
receipts for any accounting period includes all such amounts accrued for 
secondary transmission service furnished during that period, regardless 
of when accrued:
    (i) Less the amount of any bad debts actually written-off during 
that accounting period, excluding bad debts for secondary transmission 
service furnished before January 1, 1978;
    (ii) Plus the amount of any previously written-off bad debts for 
secondary transmission service which were actually recovered during that 
accounting period, excluding bad debt recoveries for secondary 
transmission service furnished before January 1, 1978.


If the cable system maintains its revenue accounts on a cash basis, 
gross receipts for any accounting period includes all such amounts 
actually received by the cable system during that accounting period, 
excluding amounts paid for secondary transmission service furnished 
before January 1, 1978; however, amounts received before January 1, 
1978, for secondary transmission service furnished after that date, are 
to be considered as if they had been received during the accounting 
period in which the service covered by such payments was furnished.
    (8) The designation ``Services Other Than Secondary Transmissions: 
Rates,'' followed by a description of each package of service which 
consists solely of services other than secondary transmission services, 
for which a separate charge was made or established, and which the cable 
system furnished or made available to subscribers during the period 
covered by the Statement of Account, together with the amount of such 
charge. However, no information need be given concerning services 
furnished at cost. Specific amounts charged for pay cable programming 
need not be given if the rates are on a variable, per-program basis. 
(The fact of such variable charge shall be indicated.)
    (9) The designation ``Primary Transmitters: Television'', followed 
by an identification of all primary television transmitters whose 
signals were carried by the cable system during the period covered by 
the Statement of Account, other than primary transmitters of programs 
carried by the cable system exclusively pursuant to rules, regulations, 
or authorizations of the FCC in effect on October 19, 1976, permitting 
the substitution of signals under certain circumstances, and required to 
be specially identified by paragraph (e)(11) of this section, together 
with the information listed below:
    (i) The station call sign of the primary transmitter.
    (ii) The name of the community to which that primary transmitter is 
licensed by the FCC (in the case of domestic signals) or with which that 
primary transmitter is identified (in the case of foreign signals).
    (iii) The number of the channel upon which that primary transmitter 
broadcasts in the community to which that primary transmitter is 
licensed by the

[[Page 364]]

FCC (in the case of domestic signals) or with which that primary 
transmitter is identified (in the case of foreign signals).
    (iv) A designation as to whether that primary transmitter is a 
``network station'', an ``independent station'', or a ``noncommercial 
educational station''.
    (v) A designation as to whether that primary transmitter is a 
``distant'' station.
    (vi) If that primary transmitter is a ``distant'' station, a 
specification of whether the signals of that primary transmitter are 
carried:
    (A) On a part-time basis where full-time carriage is not possible 
because the cable system lacks the activated channel capacity to 
retransmit on a full-time basis all signals which it is authorized to 
carry; or
    (B) On any other basis.

If the signals of that primary transmitter are carried on a part-time 
basis because of lack of activated channel capacity, the Statement shall 
also include a log showing the dates on which such carriage occurred, 
and the hours during which such carriage occurred on those dates. Hours 
of carriage shall be accurate to the nearest quarter-hour, except that, 
in any case where such part-time carriage extends to the end of the 
broadcast day of the primary transmitter, an approximate ending hour may 
be given if it is indicated as an estimate.
    (vii) The information indicated by paragraph (e)(9), subclauses (v) 
and (vi) of this section, is not required to be given by any cable 
system that appropriately completed Form SA1-2 for the period covered by 
the Statement.
    (viii) Notwithstanding the requirements of this section, where a 
cable system carried a distant primary transmitter under FCC rules and 
regulations in effect on October 19, 1976 which permitted carriage of 
specific network programs on a part-time basis in certain circumstances 
(former 47 CFR 76.59 (d) (2) and (4), 76.61(e) (2) and (4), and 76.63, 
referring to Sec. 76.61(e) (2) and (4), all of which were deleted June 
25, 1981), carriage of that primary transmitter on that basis need not 
be reported, and that carriage is to be excluded in computing the 
distant signal equivalent of that primary transmitter.
    (10) The designation ``Primary Transmitters: Radio'', followed by an 
identification of primary radio transmitters whose signals were carried 
by the cable system during the period covered by the Statement of 
Account, together with the information listed below:
    (i) A designation as to whether each primary transmitter was 
electronically processed by the system as a separate and discrete 
signal.
    (ii) The station call sign of each:
    (A) AM primary transmitter;
    (B) FM primary transmitter, the signals of which were electronically 
processed by the system as separate and discrete signals; and
    (C) FM primary transmitter carried on an all-band retransmission 
basis, the signals of which were generally receivable by the system.
    (iii) A designation as to whether the primary transmitter is AM or 
FM.
    (iv) The name of the community to which that primary transmitter is 
licensed by the FCC (in the case of domestic signals) or with which that 
primary transmitter is identified (in the case of foreign signals).
    (11) A special statement and program log, which shall consist of the 
information indicated below for all nonnetwork television programming 
that, during the period covered by the Statement, was carried in whole 
or in part beyond the local service area of the primary transmitter of 
such programming under (i) rules or regulations of the FCC requiring a 
cable system to omit the further transmission of a particular program 
and permitting the substitution of another program in place of the 
omitted transmission; or (ii) rules, regulations, or authorizations of 
the FCC in effect on October 19, 1976, permitting a cable system, at its 
election, to omit the further transmission of a particular program and 
permitting the substitution of another program in place of the omitted 
transmission:
    (A) The name or title of the substitute program.
    (B) Whether the substitute program was transmitted live by its 
primary transmitter.

[[Page 365]]

    (C) The station call sign of the primary transmitter of the 
substitute program.
    (D) The name of the community to which the primary transmitter of 
the substitute program is licensed by the FCC (in the case of domestic 
signals) or with which that primary transmitter is identified (in the 
case of foreign signals).
    (E) The date when the secondary transmission of the substitute 
program occurred, and the hours during which such secondary transmission 
occurred on that date accurate to the nearest 5 minutes.
    (F) A designation as to whether deletion of the omitted program was 
permitted by the rules, regulations, or authorizations of the FCC in 
effect on October 19, 1976, or was required by the rules, regulations, 
or authorizations of the FCC.
    (12) A statement of the total royalty fee payable for the period 
covered by the Statement of Account, together with a royalty fee 
analysis which gives a clear, complete, and detailed presentation of the 
determination of such fee. This analysis shall present in appropriate 
sequence all facts, figures, and mathematical processes used in 
determining such fee, and shall do so in such manner as required in the 
appropriate form so as to permit the Copyright Office to verify readily, 
from the face of the Statement of Account, the accuracy of such 
determination and fee. The royalty fee analysis is not required to be 
given by any cable system whose gross receipts from subscribers for the 
period covered by the Statement of Account, for the basic service of 
providing secondary transmissions of primary broadcast transmissions, 
total $75,800 or less.
    (13) The name, address, and telephone number of an individual who 
may be contacted by the Copyright Office for further information about 
the Statement of Account.
    (14) The handwritten signature of:
    (i) The owner of the cable system or a duly authorized agent of the 
owner, if the owner is not a partnership or a corporation; or
    (ii) A partner, if the owner is a partnership; or
    (iii) An officer of the corporation, if the owner is a corporation. 
The signature shall be accompanied by:
    (A) The printed or typewritten name of the person signing the 
Statement of Account;
    (B) The date of signature;
    (C) If the owner of the cable system is a partnership or a 
corporation, by the title or official position held in the partnership 
or corporation by the person signing the Statement of Account;
    (D) A certification of the capacity of the person signing; and
    (E) A declaration of the veracity of the statements of fact 
contained in the Statement of Account and the good faith of the person 
signing in making such statement of fact.
    (f) Computation of distant signal equivalents. (1) A cable system 
that elects to delete a particular television program and substitute for 
that program another television program (``substitute program'') under 
rules, regulations, or authorizations of the FCC in effect on October 
19, 1976, which permit a cable system, at its election, to omit the 
retransmission of a particular program and substitute another program in 
its place shall compute the distant signal equivalent (``DSE'') of each 
primary transmitter that broadcasts one or more substitute programs by 
dividing:
    (i) The number of the primary transmitter's live, nonnetwork, 
substitute programs that were carried by the cable system, during the 
period covered by the Statement of Account, in substitution for programs 
deleted at the option of the system; by
    (ii) The number of days in the year in which the substitution 
occurred.
    (2)(i) Where a cable system carries a primary transmitter on a full-
time basis during any portion of an accounting period, the system shall 
compute a DSE for that primary transmitter as if it was carried full-
time during the entire accounting period.
    (ii) Where a cable system carries a primary transmitter solely on a 
substitute or part-time basis, in accordance with paragraph (f)(3) of 
this section, the system shall compute a DSE for that primary 
transmitter based on its cumulative carriage on a substitute or part-
time basis. If that primary

[[Page 366]]

transmitter is carried on a full-time basis as well as on a substitute 
or part-time basis, the full DSE for that primary transmitter shall be 
the full DSE type value for that primary transmitter, for the entire 
accounting period.
    (3)(i) In computing the DSE of a primary transmitter in a particular 
case of carriage before July 1, 1981, the cable system may make no 
prorated adjustments other than those specified as permissible 
``exceptions and limitations'' in the definition of ``distant signal 
equivalent'' in the fifth paragraph of section 111(f) of title 17 of the 
United States Code, as amended by Pub. L. 94-553. Four prorated 
adjustments, as prescribed in the fourth and fifth sentences of said 
definition, are permitted under certain conditions where:
    (A) A station is carried pursuant to the late-night programming 
rules of the Federal Communications Commission in effect on the date of 
carriage;
    (B) A station is carried pursuant to the specialty programming rules 
of the Federal Communications Commission in effect on the date of 
carriage;
    (C) A station is carried on a part-time basis where full-time 
carriage is not possible because the cable system lacks the activated 
channel capacity to retransmit on a full-time basis all signals which it 
is authorized to carry; and
    (D) A station is carried on a ``substitute'' basis under rules, 
regulations, or authorizations of the Federal Communications Commission 
in effect on October 19, 1976.
    (ii) In computing the DSE of a primary transmitter in a particular 
case of carriage on or after July 1, 1981, the cable system may make no 
prorated adjustments other than those specified as permissible 
``exceptions and limitations'' in the definition of ``distant signal 
equivalent'' in the fifth paragraph of section 111(f) of title 17 of the 
United States Code, as amended by Pub. L. 94-553, and which remain in 
force under that provision. Two prorated adjustments, as prescribed in 
the fourth and fifth sentences of said definition, are permitted under 
certain conditions where:
    (A) A station is carried on a part-time basis where full-time 
carriage is not possible because the cable system lacks the activated 
channel capacity to retransmit on a full-time basis all signals which it 
is authorized to carry; and
    (B) A station is carried on a ``substitute'' basis under rules, 
regulations, or authorizations of the Federal Communications Commission 
in effect on October 19, 1976, which permitted a cable system, at its 
election, to omit the retransmission of a particular program and 
substitute another program in its place.
    (4) In computing a DSE, a cable system may round off to the third 
decimal point. If a DSE is rounded off in any case in a Statement of 
Account, it must be rounded off throughout the Statement. Where a cable 
system has chosen to round off, and the fourth decimal point for a 
particular DSE value would, without rounding off, have been 1, 2, 3, or 
4, the third decimal point remains unchanged; if, in such a case, the 
fourth decimal point would, without rounding off, be 5, 6, 7, 8, or 9, 
the third decimal point must be rounded off to the next higher number.
    (5) For the purposes of computing DSE values, specialty primary 
television transmitters in the United States and all Canadian and 
Mexican primary television transmitters shall be assigned a value of 
one.
    (g) Computation of the copyright royalty fee: Partially distant 
stations. A cable system located partly within and partly without the 
local service area of a primary television transmitter (``partially 
distant station'') computes the royalty fee specified in section 
111(d)(1)(B) (ii), (iii), and (iv) of the Copyright Act (``DSE fee'') by 
excluding gross receipts from subscribers located within that station's 
local service area from total gross receipts. A cable system which 
carries two or more partially distant stations with local service areas 
that do not exactly coincide shall compute a separate DSE fee for each 
group of subscribers who are located outside of the local service areas 
of exactly the same complement of distant stations. Computation of the 
DSE fee for each subscriber group is to be based on:

[[Page 367]]

    (1) The total distant signal equivalents of that group's complement 
of distant stations, and
    (2) The total gross receipts from that group of subscribers. The 
copyright royalty fee for that cable system is:
    (i) The total of the subscriber group royalty fees thus computed, or
    (ii) 0.893 of 1 percent of the system's gross receipts from all 
subscribers, whichever is larger.
    (h) Computation of the copyright royalty fee pursuant to the 1982 
cable rate adjustment. (1) For the purposes of this paragraph, in 
addition to the definitions of paragraph (b) of this section, the 
following definitions shall also apply:
    (i) Current base rate means the applicable royalty rates in effect 
on December 31, 1982, as reflected in 37 CFR 256.2(a).
    (ii) If the 3.75% rate does not apply to certain DSE's in the case 
of a cable system located wholly or in part within a top 100 television 
market, the current base rate together with the surcharge shall apply. 
However, the surcharge shall not apply for carriage of a particular 
signal first carried prior to March 31, 1972. With respect to statements 
of account covering the filing period beginning January 1, 1990, and 
subsequent filing periods, the current base rate together with the 
surcharge shall apply only to those DSE's that represent commercial VHF 
signals which place a predicted Grade B contour, in whole or in part, 
over a cable system. The surcharge will not apply if the signal is 
exempt from the syndicated exclusivity rules in effect on June 24, 1981.
    (iii) The 3.75% rate means the rate established by 37 CFR 256.2(c), 
in effect on March 15, 1983.
    (iv) Top 100 television market means a television market defined or 
interpreted as being within either the ``top 50 television markets'' or 
``second 50 television markets'' in accordance with 47 CFR 76.51, in 
effect on June 24, 1981.
    (v) The 1982 cable rate adjustment means the rate adjustment adopted 
by the Copyright Royalty Tribunal on October 20, 1982 (CRT Docket No. 
81-2, 47 FR 52146, November 19, 1982).
    (vi) The terms DSE or DSE's mean ``distant signal equivalent(s)'' as 
defined in 17 U.S.C. 111(f) and any fraction thereof.
    (2) A cable system filing Form SA3 shall compute its royalty fee in 
the following manner:
    (i) The cable system shall first determine those DSE's to which the 
3.75% rate established by 37 CFR 256.2(c) applies.
    (ii) If the 3.75% rate does not apply to certain DSE's in the case 
of a cable system located wholly or in part within a top 100 television 
market, the current base rate together with the surcharge shall apply. 
However, the surcharge shall not apply for carriage of a particular 
signal first carried prior to March 31, 1972. With respect to statements 
of account covering the filing period beginning January 1, 1990, and 
subsequent filing periods, the current base rate together with the 
surcharge shall apply only to those DSE's that represent commercial VHF 
signals which place a predicted Grade B contour, in whole or in part, 
over a cable system. The surcharge will not apply if the signal is 
exempt from the syndicated exclusivity rules in effect on June 24, 1981.
    (iii) If the 3.75% rate does not apply to certain DSE's, in the case 
of a cable system located wholly outside a top 100 television market, 
the current base rate shall apply.
    (iv) Commencing with the semiannual accounting period of January 1, 
1998, through June 30, 1998, the 3.75% rate applies to certain DSE's 
with respect to the communities within the cable system where carriage 
would not have been permitted under the rules and regulations of the 
Federal Communications Commission in effect on June 24, 1981, but in all 
other communities within the cable system, the current base rate and the 
syndicated exclusivity surcharge, where applicable, shall apply. Such 
computation shall be made as provided for on Form SA3. The calculations 
shall be based upon the gross receipts from all subscribers, within the 
relevant communities, for the basic service of providing secondary 
transmissions of primary broadcast transmitters, without regard to 
whether those subscribers actually received the station in question. For

[[Page 368]]

partially-distant stations, gross receipts shall be the total gross 
receipts from subscribers outside the local service area.
    (3) A cable system whose semiannual gross receipts for secondary 
transmissions totalled $214,000 or more during the period January 1, 
1983, through June 30, 1983, shall compute its royalty fee for carriage 
during that period in the following manner:
    (i) Copyright royalty fees must be paid on the basis of carriage for 
the entire accounting period except where proration of the DSE is 
permitted as described in paragraph (f)(3) of this section.
    (ii) Where a distant signal was carried at any time only between 
January 1, 1983, and March 14, 1983;
    (A) In the case of a cable system located wholly or in part within a 
top 100 television market, the current base rate, together with the 
surcharge shall apply. However, the surcharge shall not apply for 
carriage of a particular signal first carried prior to March 31, 1972.
    (B) In case of a cable system located wholly outside a top 100 
television market, the current base rate shall apply.
    (iii) Where a distant signal was carried at any time after March 14, 
1983;
    (A) The cable system shall first determine those DSE's to which the 
3.75% rate established by 37 CFR 256.2(c) applies.
    (B) If the 3.75% rate is applicable to a particular DSE, it shall be 
applied against the per centum .5967 (representing the number of days 
from March 15, 1983, through June 30, 1983, inclusive, in relation to 
the entire accounting period); and either
    (1) In the case of a cable system located wholly or in part within a 
top 100 television market, the current base rate, together with the 
surcharge, applied against the per centum .4033 (representing the number 
of days from January 1, 1983, through March 14, 1983, inclusive, in 
relation to the entire accounting period); however, the surcharge shall 
not apply for carriage of a particular signal first carried prior to 
March 31, 1972; or
    (2) In the case of a cable system located wholly outside a top 100 
television market, the current base rate applied against the per centum 
.4033.
    (C) If the 3.75% rate does not apply to certain DSE's, in the case 
of a cable system located wholly or in part within a top 100 television 
market, the current base rate together with the surcharge shall apply. 
However, the surcharge shall not apply for carriage of a particular 
signal first carried prior to March 31, 1972.
    (D) If the 3.75% rate does not apply to certain DSE's, in the case 
of a cable system located wholly outside a top 100 television market, 
the current base rate shall apply.
    (4)(i) Separate Supplemental DSE Schedules as prescribed by the 
Copyright Office shall be completed and filed by a cable system affected 
by the 1982 cable rate adjustment for the accounting periods January 1, 
1983, through June 30, 1983 (83-1), and July 1, 1983, through December 
31, 1983 (83-2). Each Supplemental DSE schedule shall contain the 
information required by that form and its accompanying instructions.
    (ii) The Supplemental DSE Schedule will be mailed to all cable 
systems whose gross receipts for secondary transmissions total $214,000 
or more either for accounting period 83-1 or for 83-2, and shall be 
completed and returned to the Copyright Office with the supplemental 
royalty fee due, if any, within sixty-five (65) days from the date of 
mailing by the Copyright Office.
    (iii) Cable systems located wholly outside all major and smaller 
television markets as defined by the FCC are not affected by the 1982 
cable rate adjustment. Such systems shall complete a certifying 
statement provided in the Supplemental DSE Schedule and return it within 
sixty-five days from the date of mailing by the Copyright Office.
    (5)(i) It shall be presumed that the 3.75% rate of 37 CFR 308.2(c) 
applies to DSE's accruing from newly added distant signals, carried for 
the first time by a cable system after June 24, 1981.
    (ii) The presumption of paragraph (h)(5)(i) of this section can be 
rebutted in whole or in part:
    (A) By actual carriage of a particular distant signal prior to June 
25, 1981, as

[[Page 369]]

reported in Statements of Account duly filed with the Copyright Office 
(``actual carriage''), unless the prior carriage was not permitted by 
the FCC; or
    (B) By carriage of no more than the number of distant signals which 
was or would have been allotted to the cable system under the FCC's 
quota for importation of network and nonspecialty independent stations 
(47 CFR 76.59(b), 76.61 (b) and (c) and 76.63, referring to 76.61 (b) 
and (c), in effect on June 24, 1981).
    (6) To qualify as an FCC-permitted signal on the ground of 
individual waiver of the FCC rules (47 CFR 76.7 in effect on June 24, 
1981), the waiver must have actually been granted by the FCC, and the 
signal must have been first carried by the cable system after April 15, 
1976.
    (7) Expanded geographic carriage after June 24, 1981, of a signal 
previously carried within only certain parts of a cable system is 
governed by the current base rate and the surcharge, if applicable.
    (8) In cases of expanded temporal carriage of the same signal, 
previously carried pursuant to the FCC's former part-time or substitute 
carriage rules (47 CFR 76.61(b)(2), 76.61 (e)(1) and (e)(3), and 76.63, 
referring to 76.61 (e)(1) and (e)(3), in effect on June 24, 1981), the 
3.75% rate shall be applied to any additional fraction of a DSE accruing 
from the expanded temporal carriage of that signal. To identify such 
additional DSE's, a comparison shall be made of DSE's reported for that 
signal in any single accounting period prior to the July 1, 1981, to 
December 31, 1981, period (81-2), as designated by the cable system, 
with the DSE's for that same signal reported in the current relevant 
accounting period.
    (9) Substitution of like signals pursuant to 37 CFR 256.2(c) is 
possible at the relevant non-3.75% rate (the surcharge together with the 
current base rate, or the current base rate alone) only if the 
substitution does not exceed the number of distant signals which was or 
would have been allotted to the cable system under the FCC's television 
market quota for importation of network and nonspecialty independent 
stations (47 CFR 76.59(b), 76.61 (b) and (c), and 76.63, referring to 
76.61 (b) and (c), in effect on June 24, 1981.
    (i) Royalty fee payment. (1) All royalty fees may be paid by 
electronic transfer of funds, provided the payment is received in the 
designated United States Federal Reserve Bank by the filing deadline for 
the relevant accounting period. Except in the case of an electronic 
payment, the royalty fee payable for the period covered by the Statement 
of Account shall accompany that Statement of Account and shall be 
deposited at the Copyright Office with it. Payment must be in the form 
of a certified check, cashier's check, or a money order, payable to: 
Register of Copyrights; or a United States Treasury electronic payment.
    (2) Royalty fee payments submitted as a result of late or amended 
filings shall include interest. Interest shall begin to accrue beginning 
on the first day after the close of the period for filing statements of 
account for all underpayments of royalties for the cable compulsory 
license occurring within that accounting period. The accrual period 
shall end on the date appearing on the certified check, cashier's check, 
money order or electronic payment submitted by a cable system, provided 
that such payment is received by the Copyright Office within five 
business days of that date. If the payment is not received by the 
Copyright Office within five business days of its date, then the accrual 
period shall end on the date of actual receipt by the Copyright Office.
    (i) The interest rate applicable to a specific accounting period 
beginning with the 1992/2 period shall be the Current Value of Funds 
Rate, as established by section 8025.40 of the Treasury Financial Manual 
and published in the Federal Register, in effect on the first business 
day after the close of the filing deadline for that accounting period. 
Cable operators wishing to obtain the interest rate for a specific 
accounting period may do so by consulting the Federal Register for the 
applicable Current Value of Funds Rate, or by contacting the Licensing 
Division of the Copyright Office.
    (ii) The interest rate applicable to a specific accounting period 
earlier than the 1992/2 period shall be the rate fixed

[[Page 370]]

by the Licensing Division of the Copyright Office pursuant to 37 CFR 
201.17(i) in effect on June 30, 1992.
    (iii) Interest is not required to be paid on any royalty 
underpayment or late payment from a particular accounting period if the 
interest charge is less than or equal to five dollars ($5.00).
    (j) Corrections, supplemental payments, and refunds. (1) Upon 
compliance with the procedures and within the time limits set forth in 
paragraph (j)(3) of this section, corrections to Statements of Account 
will be placed on record, supplemental royalty fee payments will be 
received for deposit, or refunds will be issued, in the following cases:
    (i) Where, with respect to the accounting period covered by a 
Statement of Account, any of the information given in the Statement 
filed in the Copyright Office is incorrect or incomplete;
    (ii) Where, for any reason except that mentioned in paragraph 
(j)(1)(iii) of this section, calculation of the royalty fee payable for 
a particular accounting period was incorrect, and the amount deposited 
in the Copyright Office for that period was either too high or too low; 
or
    (iii) Where, for the semiannual accounting period of January 1, 
1978, through June 30, 1978, the total royalty fee deposited was 
incorrect because the cable operator failed to compute royalties 
attributable to carriage of late-night, specialty, or part-time 
programming between January 1, 1978, and February 9, 1978.
    (2) Corrections to Statements of Account will not be placed on 
record, supplemental royalty fee payments will not be received for 
deposit, and refunds will not be issued, where the information in the 
Statements of Account, the royalty fee calculations, or the payments 
were correct as of the date on which the accounting period ended, but 
changes (for example, addition or deletion of a distant signal) took 
place later.
    (3) Requests that corrections to a Statement of Account be placed on 
record, that fee payments be accepted, or requests for the issuance of 
refunds, shall be made only in the cases mentioned in paragraph (j)(1) 
of this section. Such requests shall be addressed to the Licensing 
Division of the Copyright Office, and shall meet the following 
conditions:
    (i) The request must be in writing, must clearly identify its 
purpose, and, in the case of a request for a refund, must be received in 
the Copyright Office before the expiration of 60 days from the last day 
of the applicable Statement of Account filing period, or before the 
expiration of 60 days from the date of receipt at the Copyright Office 
of the royalty payment that is the subject of the request, whichever 
time period is longer. A request made by telephone or by telegraphic or 
similar unsigned communication, will be considered to meet this 
requirement if it clearly identifies the basis of the request, if it is 
received in the Copyright Office within the required 60-day period, and 
if a written request meeting all the conditions of this paragraph (j)(3) 
is also received in the Copyright Office within 14 days after the end of 
such 60-day period;
    (ii) The Statement of Account to which the request pertains must be 
sufficiently identified in the request (by inclusion of the name of the 
owner of the cable system, the community or communities served, and the 
accounting period in question) so that it can be readily located in the 
records of the Copyright Office;
    (iii) The request must contain a clear statement of the facts on 
which it is based and provide a clear basis on which a refund may be 
granted, in accordance with the following procedures:
    (A) In the case of a request filed under paragraph (j)(1)(i) of this 
section, where the information given in the Statement of Account is 
incorrect or incomplete, the request must clearly identify the erroneous 
or incomplete information and provide the correct or additional 
information;
    (B) In the case of a request filed under paragraph (j)(1)(ii) of 
this section, where the royalty fee was miscalculated and the amount 
deposited in the Copyright Office was either too high or too low, the 
request must be accompanied by an affidavit under the official seal of 
any officer authorized to administer oaths within the United

[[Page 371]]

States, or a statement in accordance with section 1746 of title 28 of 
the United States Code, made and signed in accordance with paragraph 
(e)(14) of this section. The affidavit or statement shall describe the 
reasons why the royalty fee was improperly calculated and include a 
detailed analysis of the proper royalty calculations;
    (C) In the case of a request filed under paragraph (j)(1)(iii) of 
this section, the request shall be identified as ``Transitional and 
Supplemental Royalty Fee Payment'' and include a detailed analysis of 
the proper royalty calculations;
    (iv)(A) All requests filed under this paragraph (j) (except those 
filed under subparagraph (1)(iii) of this paragraph must be accompanied 
by a filing fee in the amount of $15 for each Statement of Account 
involved. Payment of this fee may be in the form of a personal or 
company check, or of a certified check, cashier's check or money order, 
payable to: Register of Copyrights. No request will be processed until 
the appropriate filing fees are received.
    (B) All requests that a supplemental royalty fee payment be received 
for deposit under this paragraph (j), must be accompanied by a 
remittance in the full amount of such fee. Payment of the supplemental 
royalty fee must be in the form of a certified check, cashier's check, 
or money order, payable to: Register of Copyrights; or an electronic 
payment. No such request will be processed until an acceptable 
remittance in the full amount of the supplemental royalty fee has been 
received.
    (v) All requests submitted under this paragraph (j) must be signed 
by the cable system owner named in the Statement of Account, or the duly 
authorized agent of the owner, in accordance with paragraph (e)(14) of 
this section.
    (vi) A request for a refund is not necessary where the Licensing 
Division, during its examination of a Statement of Account or related 
document, discovers an error that has resulted in a royalty overpayment. 
In this case, the Licensing Division will forward the royalty refund to 
the cable system owner named in the Statement of Account without regard 
to the time limitations provided for in paragraph (j)(3)(i) of this 
section.
    (4) Following final processing, all requests submitted under this 
paragraph (j) will be filed with the original Statement of Account in 
the records of the Copyright Office. Nothing contained in this paragraph 
shall be considered to relieve cable systems from their full obligations 
under title 17 of the United States Code, and the filing of a correction 
or supplemental payment shall have only such effect as may be attributed 
to it by a court of competent jurisdiction.
    (k) Satellite carriers not eligible. Satellite carriers and 
satellite resale carriers are not eligible for the cable compulsory 
license based upon an interpretation of the whole of section 111 of 
title 17 of the United States Code. Any such entity who paid copyright 
royalties into the Copyright Office in an attempt to comply with 17 
U.S.C. 111 may obtain a refund of such royalties by submitting a written 
request to the Chief, Licensing Division, Copyright Office, Library of 
Congress, Washington DC 20557 no later than March 1, 1995.

(17 U.S.C. 111, 702, 708)

[43 FR 27832, June 27, 1978]

    Editorial Note: For Federal Register citations affecting 
Sec. 201.17, see the List of CFR Sections Affected in the Finding Aids 
section of this volume.



Sec. 201.18  Notice of intention to obtain a compulsory license for making and distributing phonorecords of nondramatic musical works.

    (a) General. (1) A ``Notice of Intention'' is a notice identified in 
section 115(b) of title 17 of the United States Code, as amended by Pub. 
L. 94-553, and required by that section to be served on a copyright 
owner, or in certain cases to be filed in the Copyright Office, to 
obtain a compulsory license to make and distribute phonorecords of 
nondramatic musical works.
    (2) A separate Notice of Intention shall be served or filed for each 
nondramatic musical work embodied, or intended to be embodied, in 
phonorecords made under the compulsory license.
    (3) For the purposes of this section, the term copyright owner, in 
the case of

[[Page 372]]

any work having more than one copyright owner, means any one of the co-
owners. In such cases, the service of a Notice of Intention on any one 
of the coowners under paragraph (e)(2) of this section shall be 
sufficient with respect to all co-owners.
    (b) Form. The Copyright Office does not provide printed forms for 
the use of persons serving or filing Notices of Intention.
    (c) Content. (1) A Notice of Intention shall be clearly and 
prominently designated, at the head of the notice, as a ``Notice of 
Intention to Obtain a Compulsory License for Making and Distributing 
Phonorecords,'' and shall include a clear statement of the following 
information:
    (i) The full legal name of the person or entity intending to obtain 
the compulsory license, together with all fictitious or assumed names 
used by such person or entity for the purpose of conducting the business 
of making and distributing phonorecords;
    (ii) The full address, including a specific number and street name 
or rural route, of the place of business of the person or entity 
intending to obtain the compulsory license. A post office box or similar 
designation will not be sufficient for this purpose except where it is 
the only address that can be used in that geographic location;
    (iii) A statement of the nature of each and every business 
organization that the person or entity intending to obtain the 
compulsory license will use for the purpose of conducting the business 
of making and distributing phonorecords under the license (for example, 
a corporation, a partnership, or an individual proprietorship); 
additionally:
    (A) If the person or entity intending to obtain the compulsory 
license is a corporation registered with the Securities and Exchange 
Commission under section 12 of the Securities and Exchange Act of 1934, 
the Notice shall so state.
    (B) If the person or entity intending to obtain the compulsory 
license is a corporation that is not registered with the Securities and 
Exchange Commission under section 12 of the Securities and Exchange Act 
of 1934, the Notice shall include a list of the names of the 
corporation's directors and officers, and the names of each beneficial 
owner of twenty-five percent (25%) or more of the outstanding securities 
of the corporation.
    (C) In all other cases, the Notice shall include the names of each 
entity or individual owning a beneficial interest of twenty-five percent 
(25%) or more in the entity intending to exercise the compulsory 
license. If a corporate entity is named in response to this paragraph 
(C), then: If that corporation is registered with the Securities and 
Exchange Commission under section 12 of the Securities and Exchange Act 
of 1934, the Notice shall so state; if that corporation is not so 
registered, the Notice shall include a list of the names of the 
corporation's directors and officers, and the names of each beneficial 
owner of twenty-five percent (25%) or more of the outstanding securities 
of that corporation;
    (iv) The fiscal year of the person or entity intending to obtain the 
compulsory license. If that fiscal year is a calendar year, the Notice 
shall state that this is the case;
    (v) The title of the nondramatic musical work embodied or intended 
to be embodied in phonorecords made under the compulsory license, and 
the names of the author or authors of such work if known;
    (vi) The types of all phonorecord configurations already made (if 
any) and expected to be made under the compulsory license (for example: 
Single disk, long-playing disk, cassette, cartridge, reel-to-reel, or a 
combination of them);
    (vii) The expected date of initial distribution of phonorecords 
already made (if any) or expected to be made under the compulsory 
license;
    (viii) The name of the principal recording artist or group actually 
engaged or expected to be engaged in rendering the performances fixed on 
phonorecords already made (if any) or expected to be made under the 
compulsory license;
    (ix) The catalog number or numbers, and label name or names, used or 
expected to be used on phonorecords already made (if any) or expected to 
be made under the compulsory license; and

[[Page 373]]

    (x) In the case of phonorecords already made (if any) under the 
compulsory license, the date or dates of such manufacture.
    (2) A ``clear statement'' of the information listed in paragraph 
(c)(1) of this section requires a clearly intelligible, legible, and 
unambiguous statement in the Notice itself and (subject to paragraph 
(c)(1)(iii)(A) of this section) without incorporation by reference of 
facts or information contained in other documents or records.
    (3) Where information is required to be given by paragraph (c)(1) of 
this section ``if known'' or as ``expected'', such information shall be 
given in good faith and on the basis of the best knowledge, information, 
and belief of the person signing the Notice. If so given, later 
developments affecting the accuracy of such information shall not affect 
the validity of the Notice.
    (d) Signature. The Notice shall be signed by the person or entity 
intending to obtain the compulsory license. If that person or entity is 
a corporation, the signature shall be that of a duly authorized officer 
of the corporation; if that person or entity is a partnership, the 
signature shall be that of a partner. The signature shall be accompanied 
by the printed or typewritten name of the person signing the Notice, and 
by the date of signature.
    (e) Filing and service. (1) If, with respect to the nondramatic 
musical work named in the Notice of Intention, the registration or other 
public records of the Copyright Office do not identify the copyright 
owner of such work and include an address for such owner, the Notice 
shall be filed in the Copyright Office. Notices of Intention submitted 
for filing shall be accompanied by the fee specified in Sec. 201.3(e). 
Notices of Intention will be filed by being placed in the appropriate 
public records of the Licensing Division of the Copyright Office. The 
date of filing will be the date when a proper Notice and fee are both 
received in the Copyright Office. A written acknowledgement of receipt 
and filing will be provided to the sender. Upon request and payment of 
the fee specified in Sec. 201.3(e), a Certificate of Filing will be 
provided to the sender.
    (2) If the registration or other public records of the Copyright 
Office do identify the copyright owner of the nondramatic musical work 
named in the Notice of Intention and include an address for such owner, 
the Notice shall be served on such owner by certified mail or by 
registered mail sent to the last address for such owner shown by the 
records of the Office; it shall not be necessary to file a copy of the 
Notice in the Copyright Office in this case.
    (3) If the Notice is sent by certified or registered mail to the 
last address for the copyright owner shown by the records of the 
Copyright Office and is returned to the sender because the copyright 
owner is no longer located at the address or has refused to accept 
delivery, the original Notice as sent shall be filed in the Copyright 
Office. Notices of Intention submitted for filing under this paragraph 
(e)(3) shall be submitted to the Licensing Division of the Copyright 
Office, and shall be accompanied by a brief statement that the Notice 
was sent to the last address for the copyright owner shown by the 
records of the Copyright Office but was returned, and by appropriate 
evidence that it was sent by certified or registered mail to that 
address. In these cases, the Copyright Office will specially mark its 
records to consider the date the original Notice was mailed, as shown by 
the evidence mentioned above, as the date of filing. A written 
acknowledgement of receipt and filing will be provided to the sender. No 
filing fee will be required in the case of Notices filed under this 
paragraph (e)(3). Upon request and payment of the fee specified in 
Sec. 201.3(e), a Certificate of Filing will be provided to the sender.

(17 U.S.C. 115, 702, 708)

[45 FR 79045, Nov. 28, 1980, as amended at 56 FR 59885, Nov. 26, 1991; 
63 FR 30635, June 5, 1998; 64 FR 29521, June 1, 1999]



Sec. 201.19  Royalties and statements of account under compulsory license for making and distributing phonorecords of nondramatic musical works.

    (a) Definitions. (1) A Monthly Statement of Account is a statement 
accompanying monthly royalty payments identified in section 115(c)(3) of 
title 17 of the United States Code, as amended by Pub. L. 94-553, and 
required by that

[[Page 374]]

section to be made under the compulsory license to make and distribute 
phonorecords of nondramatic musical works.
    (2) An Annual Statement of Account is a statement identified in 
section 115(c)(3) of title 17 of the United States Code, as amended by 
Pub. L. 94-553, and required by that section to be filed for every 
compulsory license to make and distribute phonorecords of nondramatic 
musical works.
    (3) For the purposes of this section, the term copyright owner, in 
the case of any work having more than one copyright owner means any one 
of the co-owners. In such cases, the service of a Statement of Account, 
on one co-owner under paragraph (e)(7) or (f)(7) of this section shall 
be sufficient with respect to all co-owners.
    (4) For the purposes of this section, a compulsory licensee is a 
person or entity exercising the compulsory license to make and 
distribute phonorecords of nondramatic musical works as provided under 
section 115 of title 17 of the United States Code, as amended by Pub. L. 
94-553.
    (5) A phonorecord is considered voluntarily distributed if the 
compulsory licensee has voluntarily and permanently parted with 
possession of the phonorecord. For this purpose, and subject to the 
provisions of paragraph (d) of this section, a compulsory licensee shall 
be considered to have ``permanently parted with possession'' of a 
phonorecord made under the license:
    (i) In the case of phonorecords relinquished from possession for 
purposes other than sale, at the time at which the compulsory licensee 
actually first parts with possession;
    (ii) In the case of phonorecords relinquished from possession for 
purposes of sale without a privilege of returning unsold phonorecords 
for credit or exchange, at the time at which the compulsory licensee 
actually first parts with possession;
    (iii) In the case of phonorecords relinquished from possession for 
purposes of sale accompanied by a privilege of returning unsold 
phonorecords for credit or exchange:
    (A) At the time when revenue from a sale of the phonorecord is 
``recognized'' by the compulsory licensee; or
    (B) Nine months from the month in which the compulsory licensee 
actually first parted with possession, whichever occurs first.

For these purposes, a compulsory licensee shall be considered to 
``recognize'' revenue from the sale of a phonorecord when sales revenue 
would be recognized in accordance with generally accepted accounting 
principles as expressed by the American Institute of Certified Public 
Accountants or the Financial Accounting Standards Board, whichever would 
cause sales revenue to be recognized first.
    (6) A phonorecord reserve comprises the number of phonorecords, if 
any, that have been relinquished from possession for purposes of sale in 
a given month accompanied by a privilege of return, as described in 
paragraph (a)(5)(iii) of this section, and that have not been considered 
voluntarily distributed during the month in which the compulsory 
licensee actually first parted with their possession. The initial number 
of phonorecords comprising a phonorecord reserve shall be determined in 
accordance with generally accepted accounting principles as expressed by 
the American Institute of Certified Public Accountants or the Financial 
Accounting Standards Board.
    (7) A negative reserve balance comprises the aggregate number of 
phonorecords, if any, that have been relinquished from possession for 
purposes of sale accompanied by a privilege of return, as described in 
paragraph (a)(5)(iii) of this section, and that have been returned to 
the compulsory licensee, but because all available phonorecord reserves 
have been eliminated, have not been used to reduce a phonorecord 
reserve.
    (b) Accounting requirements where sales revenue is ``recognized''. 
Where under paragraph (a)(5)(iii)(A) of this section, revenue from the 
sale of phonorecords is ``recognized'' during any month after the month 
in which the compulsory licensee actually first parted with their 
possession, said compulsory licensee shall reduce particular phonorecord 
reserves by the number of phonorecords for which revenue is being 
``recognized,'' as follows:
    (1) If the number of phonorecords for which revenue is being 
``recognized'' is

[[Page 375]]

smaller than the number of phonorecords comprising the earliest eligible 
phonorecord reserve, this phonorecord reserve shall be reduced by the 
number of phonorecords for which revenue is being ``recognized.'' 
Subject to the time limitations of subparagraph (B) of this 
Sec. 201.19(a)(5)(iii), the number of phonorecords remaining in this 
reserve shall be available for use in subsequent months.
    (2) If the number of phonorecords for which revenue is being 
``recognized'' is greater than the number of phonorecords comprising the 
earliest eligible phonorecord reserve but less than the total number of 
phonorecords comprising all eligible phonorecord reserves, the 
compulsory licensee shall first eliminate those phonorecord reserves, 
beginning with the earliest eligible phonorecord reserve and continuing 
to the next succeeding phonorecord reserves, that are completely offset 
by phonorecords for which revenue is being ``recognized.'' Said licensee 
shall then reduce the next succeeding phonorecord reserve by the number 
of phonorecords for which revenue is being ``recognized'' that have not 
been used to eliminate a phonorecord reserve. Subject to the time 
limitations of subparagraph (B) of this Sec. 201.19(a)(5)(iii), the 
number of phonorecords remaining in this reserve shall be available for 
use in subsequent months.
    (3) If the number of phonorecords for which revenue is being 
``recognized'' equals the number of phonorecords comprising all eligible 
phonorecord reserves, the person or entity exercising the compulsory 
license shall eliminate all of the phonorecord reserves.
    (c) Accounting requirements for offsetting phonorecord reserves with 
returned phonorecords. (1) In the case of a phonorecord that has been 
relinquished from possession for purposes of sale accompanied by a 
privilege of return, as described in paragraph (a)(5)(iii) of this 
section, where the phonorecord is returned to the compulsory licensee 
for credit or exchange before said compulsory licensee is considered to 
have ``permanently parted with possession'' of the phonorecord under 
paragraph (a)(5) of this section, the compulsory licensee may use such 
phonorecord to reduce a ``phonorecord reserve,'' as defined in paragraph 
(a)(6) of this section.
    (2) In such cases, the compulsory licensee shall reduce particular 
phonorecord reserves by the number of phonorecords that are returned 
during the month covered by the Monthly Statement of Account in the 
following manner:
    (i) If the number of phonorecords that are returned during the month 
covered by the Monthly Statement is smaller than the number comprising 
the earliest eligible phonorecord reserve, the compulsory licensee shall 
reduce this phonorecord reserve by the total number of returned 
phonorecords. Subject to the time limitations of paragraph (B) of 
Sec. 201.19(a)(5)(iii), the number of phonorecords remaining in this 
reserve shall be available for use in subsequent months.
    (ii) If the number of phonorecords that are returned during the 
month covered by the Monthly Statement is greater than the number of 
phonorecords comprising the earliest eligible phonorecord reserve but 
less than the total number of phonorecords comprising all eligible 
phonorecord reserves, the compulsory licensee shall first eliminate 
those phonorecord reserves, beginning with the earliest eligible 
phonorecord reserve, and continuing to the next succeeding phonorecord 
reserves, that are completely offset by returned phonorecords. Said 
licensee shall then reduce the next succeeding phonorecord reserve by 
the number of returned phonorecords that have not been used to eliminate 
a phonorecord reserve. Subject to the time limitations of paragraph (B) 
of Sec. 201.19(a)(5)(iii), the number of phonorecords remaining in this 
reserve shall be available for use in subsequent months.
    (iii) If the number of phonorecords that are returned during the 
month covered by the Monthly Statement is equal to or is greater than 
the total number of phonorecords comprising all eligible phonorecord 
reserves, the compulsory licensee shall eliminate all eligible 
phonorecord reserves. Where said

[[Page 376]]

number is greater than the total number of phonorecords comprising all 
eligible phonorecord reserves, said compulsory licensee shall establish 
a ``negative reserve balance,'' as defined in paragraph (a)(7) of this 
section.
    (3) Except where a negative reserve balance exists, a separate and 
distinct phonorecord reserve shall be established for each month during 
which the compulsory licensee relinquishes phonorecords from possession 
for purposes of sale accompanied by a privilege of return, as described 
in paragraph (a)(5)(iii) of this section. In accordance with paragraph 
(B) of Sec. 201.19(a)(5)(iii), any phonorecord remaining in a particular 
phonorecord reserve nine months from the month in which the particular 
reserve was established shall be considered ``voluntarily distributed''; 
at that point, the particular monthly phonorecord reserve shall lapse 
and royalties for the phonorecords remaining in it shall be paid as 
provided in paragraph (e)(4)(ii) of this section.
    (4) Where a negative reserve balance exists, the aggregate total of 
phonorecords comprising it shall be accumulated into a single balance 
rather than being separated into distinct monthly balances. Following 
the establishment of a negative reserve balance, any phonorecords 
relinquished from possession by the compulsory licensee for purposes of 
sale or otherwise, shall be credited against such negative balance, and 
the negative reserve balance shall be reduced accordingly. The nine 
month limit provided by paragraph (B) of Sec. 201.19(a)(5)(iii) shall 
have no effect upon a negative reserve balance; where a negative reserve 
balance exists, relinquishment from possession of a phonorecord by the 
compulsory licensee at any time shall be used to reduce such balance, 
and shall not be considered a ``voluntary distribution'' within the 
meaning of paragraph (a)(5) of this section.
    (5) In no case shall a phonorecord reserve be established while a 
negative reserve balance is in existence; conversely, in no case shall a 
negative reserve balance be established before all available phonorecord 
reserves have been eliminated.
    (d) Situations in which a compulsory licensee is barred from 
maintaining reserves. Notwithstanding any other provisions of this 
section, in any case where, within three years before the phonorecord 
was relinquished from possession, the compulsory licensee has had final 
judgment entered against it for failure to pay royalties for the 
reproduction of copyrighted music on phonorecords, or within such period 
has been definitively found in any proceeding involving bankruptcy, 
insolvency, receivership, assignment for the benefit of creditors, or 
similar action, to have failed to pay such royalties, that compulsory 
licensee shall be considered to have ``Permanently parted with 
possession'' of a phonorecord made under the license at the time at 
which that licensee actually first parts with possession. For these 
purposes the ``compulsory licensee,'' as defined in Sec. 201.19(a)(4), 
shall include:
    (1) In the case of any corporation, the corporation or any director, 
officer, or beneficial owner of twenty-five percent (25%) or more of the 
outstanding securities of the corporation;
    (2) In all other cases, any entity or individual owning a beneficial 
interest of twenty-five percent (25%) or more in the entity exercising 
the compulsory license.
    (e) Monthly statements of account--(1) Forms. The Copyright Office 
does not provide printed forms for the use of persons serving Monthly 
Statements of Account.
    (2) General content. A Monthly Statement of Account shall be clearly 
and prominently identified as a ``Monthly Statement of Account Under 
Compulsory License for Making and Distributing Phonorecords,'' and shall 
include a clear statement of the following information:
    (i) The period (month and year) covered by the Monthly Statement;
    (ii) The full legal name of the compulsory licensee, together with 
all fictitious or assumed names used by such person or entity for the 
purpose of conducting the business of making and distributing 
phonorecords;
    (iii) The full address, including a specific number and street name 
or rural route, of the place of business of the compulsory licensee. A 
post office box

[[Page 377]]

or similar designation will not be sufficient for this purpose, except 
where it is the only address that can be used in that geographic 
location;
    (iv) The title or titles of the nondramatic musical work or works 
embodied in phonorecords made under the compulsory license and owned by 
the copyright owner being served with the Monthly Statement and the name 
of the author or authors of such work or works, if known;
    (v) For each nondramatic musical work that is owned by the same 
copyright owner being served with the Monthly Statement and that is 
embodied in phonorecords covered by the compulsory license, a detailed 
statement of all of the information called for in paragraph (e)(3) of 
this section;
    (vi) The total royalty payable for the month covered by the Monthly 
Statement, computed in accordance with the requirements of this section 
and the formula specified in paragraph (e)(4) of this section, together 
with a statement of account showing in detail how the royalty was 
computed; and
    (vii) In any case where the compulsory licensee falls within the 
provisions of paragraph (d) of this section, a clear description of the 
action or proceeding involved, including the date of the final judgment 
or definitive finding described in that paragraph.
    (3) Specific content of monthly statements: Identification and 
accounting of phonorecords. (i) The information called for by paragraph 
(e)(2)(v) of this section shall, with respect to each nondramatic 
musical work, include a separate listing of each of the following items 
of information:
    (A) The number of phonorecords made during the month covered by the 
Monthly Statement;
    (B) The number of phonorecords that, during the month covered by the 
Monthly Statement and regardless of when made, were either:

    Relinquished from possession for purposes other than sale;
    Relinquished from possession for purposes of sale without any 
privilege of returning unsold phonorecords for credit or exchange;
    Relinquished from possession for purposes of sale accompanied by a 
privilege of returning unsold phonorecords for credit or exchange;
    Returned to the compulsory licensee for credit or exchange; or
    Placed in a phonorecord reserve (except that if a negative reserve 
balance exists give either the number of phonorecords added to the 
negative reserve balance, or the number of phonorecords relinquished 
from possession that have been used to reduce the negative reserve 
balance);

    (C) The number of phonorecords, regardless of when made, that were 
relinquished from possession during a month earlier than the month 
covered by the Monthly Statement but that, during the month covered by 
the Monthly Statement either have had revenue from their sale 
``recognized'' under paragraph (a)(5)(iii) of this section, or were 
comprised in a phonorecord reserve that lapsed after nine months under 
paragraph (B) of Sec. 201.19(a)(5)(iii).
    (ii) Each of the items of information called for by paragraph 
(e)(3)(i) of this section shall also include, and if necessary shall be 
broken down to identify separately, the following:
    (A) The catalog number or numbers and label name or names, used on 
the phonorecords;
    (B) The names of the principal recording artist or group engaged in 
rendering the performances fixed on the phonorecords;
    (C) The playing time on the phonorecords of each nondramatic musical 
work covered by the statement; and
    (D) Each phonorecord configuration involved (for example: single 
disk, long-playing disk, cartridge, cassette, reel-to-reel).
    (4) Royalty payment and accounting. (i) The total royalty called for 
by paragraph (e)(2)(vi) of this section shall, as specified in section 
115(c)(2) of title 17 of the United States Code, as amended by Pub. L. 
94-553, be payable for every phonorecord ``voluntarily distributed'' 
during the month covered by the Monthly Statement.
    (ii) The amount of the royalty payment shall be calculated in 
accordance with the following formula:

    Step 1: Compute the number of phonorecords shipped for sale with a 
privilege of return. This is the total of phonorecords that, during the 
month covered by the Monthly Statement, were relinquished from 
possession by the compulsory licensee, accompanied by the

[[Page 378]]

privilege of returning unsold phonorecords to the compulsory licensee 
for credit or exchange. This total does not include: (1) Any 
phonorecords relinquished from possession by the compulsory licensee for 
purposes of sale without the privilege of return; and (2) any 
phonorecords relinquished from possession for purposes other than sale.
    Step 2: Subtract the number of phonorecords reserved. This involves 
deducting, from the subtotal arrived at in Step 1, the number of 
phonorecords that have been placed in the phonorecord reserve for the 
month covered by the Monthly Statement. The number of phonorecords 
reserved is determined by multiplying the subtotal from Step 1 by the 
percentage reserve level established under GAAP. This step should be 
skipped by a compulsory licensee barred from maintaining reserves under 
paragraph (d) of this section.
    Step 3: Add the total of all phonorecords that were shipped during 
the month and were not counted in Step 1. This total is the sum of two 
figures: (1) The number of phonorecords that, during the month covered 
by the Monthly Statement, were relinquished from possession by the 
compulsory licensee for purposes of sale, without the privilege of 
returning unsold phonorecords to the compulsory licensee for credit or 
exchange; and (2) the number of phonorecords relinquished from 
possession by the compulsory licensee, during the month covered by the 
Monthly Statement, for purposes other than sale.
    Step 4: Make any necessary adjustments for sales revenue 
``recognized,'' lapsed reserves, or reduction of negative reserve 
balance during the month. If necessary, this step involves adding to or 
subtracting from the subtotal arrived at in Step 3 on the basis of three 
possible types of adjustments:
    (a) Sales revenue ``recognized.'' If, in the month covered by the 
Monthly Statement, the compulsory licensee ``recognized'' revenue from 
the sale of phonorecords that had been relinquished from possession in 
an earlier month, the number of such phonorecords is added to the Step 3 
subtotal;
    (b) Lapsed reserves. If, in the month covered by the Monthly 
Statement, there are any phonorecords remaining in the phonorecord 
reserve for the ninth previous month (that is, any phonorecord reserves 
from the ninth previous month that have not been offset under FOFI, the 
first-out-first-in accounting convention, by actual returns during the 
intervening months), the reserve lapses and the number of phonorecords 
in it is added to the Step 3 subtotal.
    (c) Reduction of negative reserve balance. If, in the month covered 
by the Monthly Statement, the aggregate reserve balance for all previous 
months is a negative amount, the number of phonorecords relinquished 
from possession by the compulsory licensee during that month and used to 
reduce the negative reserve balance is subtracted from the Step 3 
subtotal.
    Step 5: Multiply by the statutory royalty rate. The total monthly 
royalty payment is obtained by multiplying the subtotal from Step 3, as 
adjusted if necessary by Step 4, by the statutory royalty rate of 5.7 
cents or 1.1 cents per minute or fraction of playing time, whichever is 
larger.

    (iii) Each step in computing the monthly payment, including the 
arithmetical calculations involved in each step, shall be set out in 
detail in the Monthly Statement.
    (5) Clear statements. The information required by paragraphs (e) (2) 
and (3) of this section involves intelligible, legible, and unambiguous 
statements in the Monthly Statements of Account itself and without 
incorporation of facts or information contained in other documents or 
records.
    (6) Oath and signature. Each Monthly Statement of Account shall 
include the handwritten signature of the compulsory licensee. If that 
compulsory licensee is a corporation, the signature shall be that of a 
duly authorized officer of the corporation; if that compulsory licensee 
is a partnership, the signature shall be that of a partner. The 
signature shall be accompanied by:
    (i) The printed or typewritten name of the person signing the 
Monthly Statement of Account;
    (ii) The date of signature;
    (iii) If the compulsory licensee is a partnership or a corporation, 
by the title or official position held in the partnership or corporation 
by the person signing the Monthly Statement of Account;
    (iv) A certification of the capacity of the person signing; and
    (v) The following statement:

    I certify that I have examined this Monthly Statement of Account and 
that all statements of fact contained herein are true, complete, and 
correct to the best of my knowledge, information, and belief, and are 
made in good faith.

    (7) Service. (i) Each Monthly Statement of Account shall be served 
on the copyright owner to whom or which it is directed, together with 
the total royalty for the month covered by the Monthly Statement, by 
certified mail, or by registered mail on or before the 20th day of the 
immediately succeeding month. It shall not be necessary to file

[[Page 379]]

a copy of the Monthly Statement in the Copyright Office.
    (ii)(A) In any case where a Monthly Statement of Account is sent by 
certified mail or registered mail and is returned to the sender because 
the copyright owner is not located at that address or has refused to 
accept delivery, or in any case where an address for the copyright owner 
is not known, the Monthly Statement of Account, together with any 
evidence of mailing, may be filed in the Licensing Division of the 
Copyright Office. Any Monthly Statement of Account submitted for filing 
in the Copyright Office shall be accompanied by a brief statement of the 
reason why it was not served on the copyright owner. A written 
acknowledgement of receipt and filing will be provided to the sender.
    (B) The Copyright Office will not accept any royalty fees submitted 
with Monthly Statements of Account under Sec. 202.19(e)(7)(ii).
    (C) Neither the filing of a Monthly Statement of Account in the 
Copyright Office, nor the failure to file such Monthly Statement, shall 
have effect other than that which may be attributed to it by a court of 
competent jurisdiction.
    (D) No filing fee will be required in the case of Monthly Statements 
of Account submitted to the Copyright Office under this 
Sec. 201.19(e)(7)(ii). Upon request and payment of the fee specified in 
Sec. 201.3(e), a Certificate of Filing will be provided to the sender.
    (iii) A separate Monthly Statement of Account shall be served for 
each month during which there is any activity relevant to the payment of 
royalties under section 115 of Title 17, United States Code, as amended 
by Pub. L. 94-553, and under this section. The Annual Statement of 
Account identified in paragraph (f) of this section does not replace any 
Monthly Statement of Account.
    (f) Annual statements of account--(1) Forms. The Copyright Office 
does not provide printed forms for the use of persons serving Annual 
Statements of Account.
    (2) Annual period. Any Annual Statement of Account shall cover the 
full fiscal year of the compulsory licensee.
    (3) General content. An Annual Statement of Account shall be clearly 
and prominently identified as an ``Annual Statement of Account Under 
Compulsory License for Making and Distributing Phonorecords,'' and shall 
include a clear statement of the following information:
    (i) The fiscal year covered by the Annual Statement;
    (ii) The full legal name of the compulsory licensee, together with 
all fictitious or assumed names used by such person or entity for the 
purpose of conducting the business of making and distributing 
phonorecords;
    (iii) A statement of the nature of the business organization used by 
the compulsory licensee in connection with the making and distribution 
of phonorecords (for example, a corporation, a partnership, or an 
individual proprietorship); additionally:
    (A) If the compulsory licensee is a corporation registered with the 
Securities and Exchange Commission under section 12 of the Securities 
and Exchange Act of 1934, the Annual Statement shall state that this is 
the case.
    (B) If the compulsory licensee is a corporation that is not 
registered with the Securities and Exchange Commission under section 12 
of the Securities and Exchange Act of 1934, the Annual Statement shall 
include a list of the names of the corporation's directors and officers, 
and the names of each beneficial owner of twenty-five percent (25%) or 
more of the outstanding securities of the corporation.
    (C) In all other cases, the Annual Statement shall include the names 
of each entity or individual owning a beneficial interest of twenty-five 
percent (25%) or more in the entity exercising the compulsory license. 
If a corporate entity is named in response to this paragraph (C), then: 
If that corporation is registered with the Securities and Exchange 
Commission under section 12 of the Securities and Exchange Act of 1934, 
the Annual Statement shall so state; if that corporation is not so 
registered, the Annual Statement shall include a list of the 
corporation's directors and officers, and the names of each beneficial 
owner of twenty-five percent (25%) or more of the outstanding securities 
of that corporation;

[[Page 380]]

    (iv) The full address, including a specific number and street name 
or rural route, or the place of business of the compulsory licensee. A 
post office box or similar designation will not be sufficient for this 
purpose except where it is the only address that can be used in that 
geographic location;
    (v) The title or titles of the nondramatic musical work or works 
embodied in phonorecords made under the compulsory license and owned by 
the copyright owner being served with the Annual Statement and the name 
of the author or authors of such work or works, if known;
    (vi) The playing time of each nondramatic musical work on such 
phonorecords;
    (vii) For each nondramatic musical work that is owned by the same 
copyright owner being served with the Annual Statement and that is 
embodied in phonorecords covered by the compulsory license, a detailed 
statement of all of the information called for in paragraph (f)(4) of 
this section;
    (viii) The total royalty payable for the fiscal year covered by the 
Annual Statement computed in accordance with the requirements of this 
section, together with a statement of account showing in detail how the 
royalty was computed. For these purposes, the applicable royalty as 
specified in section 115(c)(2) of title 17 of the United States Code, as 
amended by Pub. L. 94-553, shall be payable for every phonorecord 
``voluntarily distributed'' during the fiscal year covered by the Annual 
Statement;
    (ix) The total sum paid under Monthly Statements of Account by the 
compulsory licensee to the copyright owner being served with the Annual 
Statement during the fiscal year covered by the Annual Statement; and
    (x) In any case where the compulsory license falls within the 
provisions of paragraph (d) of this section, a clear description of the 
action or proceeding involved, including the date of the final judgment 
or definitive finding described in that paragraph.
    (4) Specific content of annual statements: Identification and 
accounting of phonorecords. (i) The information called for by paragraph 
(f)(3)(vii) of this section shall, with respect to each nondramatic 
musical work, include a separate listing of each of the following items 
of information separately stated and identified for each phonorecord 
configuration (for example, single disk, long playing disk, cartridge, 
cassette, or reel-to-reel) made:
    (A) The number of phonorecords made through the end of the fiscal 
year covered by the Annual Statement, including any made during earlier 
years;
    (B) The number of phonorecords which have never been relinquished 
from possession of the compulsory licensee through the end of the fiscal 
year covered by the Annual Statement;
    (C) The number of phonorecords involuntarily relinquished from 
possession (as through fire or theft) of the compulsory licensee during 
the fiscal year covered by the Annual Statement and any earlier years, 
together with a description of the facts of such involuntary 
relinquishment;
    (D) The number of phonorecords ``voluntarily distributed'' by the 
compulsory licensee during all years before the fiscal year covered by 
the Annual Statement;
    (E) The number of phonorecords relinquished from possession of the 
compulsory licensee for purposes of sale during the fiscal year covered 
by the Annual Statement accompanied by a privilege of returning unsold 
records for credit or exchange, but not ``voluntarily distributed'' by 
the end of that year;
    (F) The number of phonorecords ``voluntarily distributed'' by the 
compulsory licensee during the fiscal year covered by the Annual 
Statement, together with:
    (1) The catalog number or numbers, and label name or names, used on 
such phonorecords; and
    (2) The names of the principal recording artists or groups engaged 
in rendering the performances fixed on such phonorecords.
    (ii) If the information given under paragraphs (A) through (F) of 
this Sec. 201.19(f)(4)(i) does not reconcile, the Annual Statement shall 
also include a clear and detailed explanation of the difference. For 
these purposes, the information given under such paragraphs shall be 
considered not to reconcile if, after the number of phonorecords given

[[Page 381]]

under paragraphs (B), (C), (D), and (E) are added together and that sum 
is deducted from the number of phonorecords given under paragraph (A), 
the result is different from the amount given under paragraph (F).
    (5) Clear statement. The information required by paragraph (f)(3) of 
this section involves intelligible, legible, and unambiguous statements 
in the Annual Statement of Account itself and [subject to paragraph 
(f)(3)(iii)(A)] without incorporation by reference of facts or 
information contained in other documents or records.
    (6) Signature and certification. (i) Each Annual Statement of 
Account shall include the handwritten signature of the compulsory 
licensee. If that compulsory licensee is a corporation, the signature 
shall be that of a duly authorized officer of the corporation; if that 
compulsory licensee is a partnership, the signature shall be that of a 
partner. The signature shall be accompanied by: (A) The printed or 
typewritten name of the person signing the Annual Statement of Account; 
(B) the date of signature; (C) if the compulsory licensee is a 
partnership or a corporation, by the title or official position held in 
the partnership or corporation by the person signing the Annual 
Statement of Account; and (D) a certification of the capacity of the 
person signing.
    (ii)(A) Each Annual Statement of Account shall also be certified by 
a licensed Certified Public Accountant. Such certification shall consist 
of the following statement:

    We have examined the attached ``Annual Statement of Account Under 
Compulsory License For Making and Distributing Phonorecords'' for the 
fiscal year ended (date) of (name of the compulsory licensee) applicable 
to phonorecords embodying (title or titles of nondramatic musical works 
embodied in phonorecords made under the compulsory license) made under 
the provisions of section 115 of Title 17 of the United States Code, as 
amended by Pub. L. 94-553, and applicable regulations of the United 
States Copyright Office. Our examination was made in accordance with 
generally accepted auditing standards and accordingly, included tests of 
the accounting records and such other auditing procedures as we 
considered necessary in the circumstances.
    In our opinion the Annual Statement of Account referred to above 
presents fairly the number of phonorecords embodying each of the above-
identified nondramatic musical works made under compulsory license and 
voluntarily distributed by (name of the compulsory licensee) during the 
fiscal year ending (date), and the amount of royalties applicable 
thereto under such compulsory license, on a consistent basis and in 
accordance with the above cited law and applicable regulations published 
thereunder.

_______________________________________________________________________

                      (City and State of Execution)

_______________________________________________________________________

         (Signature of Certified Public Accountant or CPA Firm)

_______________________________________________________________________

                           Certificate Number

_______________________________________________________________________

                       Jurisdiction of Certificate

_______________________________________________________________________

                            (Date of Opinion)

    (B) The certificate shall be signed by an individual, or in the name 
of a partnership or a professional corporation with two or more 
shareholders. The certificate number and jurisdiction are not required 
if the certificate is signed in the name of a partnership or a 
professional corporation with two or more shareholders.
    (7) Service. (i) Each Annual Statement of Account shall be served on 
the copyright owner to whom or which it is directed by certified mail or 
by registered mail on or before the twentieth day of the third month 
following the end of the fiscal year covered by the Annual Statement. It 
shall not be necessary to file a copy of the Annual Statement in the 
Copyright Office. An Annual Statement of Account shall be served for 
each fiscal year during which at least one Monthly Statement of Account 
was required to have been served under paragraph (e)(7) of this section.
    (ii) In any case where the amount required to be stated in the 
Annual Statement of Account under paragraph (f)(3)(viii) of this section 
is greater than the amount stated in that Annual Statement under 
paragraph (f)(3)(ix) of this section, the difference between such 
amounts shall be delivered to the copyright owner together with the 
service of the Annual Statement. The

[[Page 382]]

delivery of such sum does not require the copyright owner to accept such 
sum, or to forego any right, relief, or remedy which may be available 
under law.
    (iii)(A) In any case where an Annual Statement of Account is sent by 
certified mail or registered mail and is returned to the sender because 
the copyright owner is not located at that address or has refused to 
accept delivery, or in any case where an address for the copyright owner 
is not known, the Annual Statement of Account, together with any 
evidence of mailing, may be filed in the Licensing Division of the 
Copyright Office. Any Annual Statement of Account submitted for filing 
shall be accompanied by a brief statement of the reason why it was not 
served on the copyright owner. A written acknowledgment of receipt and 
filing will be provided to the sender.
    (B) The Copyright Office will not accept any royalty fees submitted 
with Annual Statements of Account under Sec. 202.19(f)(7)(iii).
    (C) Neither the filing of an Annual Statement of Account in the 
Copyright Office, nor the failure to file such Annual Statement, shall 
have any effect other than that which may be attributed to it by a court 
of competent jurisdiction.
    (D) No filing fee will be required in the case of Annual Statements 
of Account submitted to the Copyright Office under this 
Sec. 201.19(f)(7)(iii). Upon request and payment of the fee specified in 
Sec. 201.3(e), a Certificate of Filing will be provided to the sender.
    (g) Documentation. All compulsory licensees shall, for a period of 
at least three years from the date of service of an Annual Statement of 
Account, keep and retain in their possession all records and documents 
necessary and appropriate to support fully the information set forth in 
such Annual Statement and in Monthly Statements served during the fiscal 
year covered by such Annual Statement.

(17 U.S.C. 115, 702, 708)

[45 FR 79046, Nov. 28, 1980, as amended at 56 FR 7813, Feb. 26, 1991; 56 
FR 59885, Nov. 26, 1991; 63 FR 30635, June 5, 1998; 64 FR 29521, June 1, 
1999]



Sec. 201.20  Methods of affixation and positions of the copyright notice on various types of works.

    (a) General. (1) This section specifies examples of methods of 
affixation and positions of the copyright notice on various types of 
works that will satisfy the notice requirement of section 401(c) of 
title 17 of the United States Code, as amended by Pub. L. 94-553. A 
notice considered ``acceptable'' under this regulation shall be 
considered to satisfy the requirement of that section that it be 
``affixed to the copies in such manner and location as to give 
reasonable notice of the claim of copyright.'' As provided by that 
section, the examples specified in this regulation shall not be 
considered exhaustive of methods of affixation and positions giving 
reasonable notice of the claim of copyright.
    (2) The provisions of this section are applicable to copies publicly 
distributed on or after December 1, 1981. This section does not 
establish any rules concerning the form of the notice or the legal 
sufficiency of particular notices, except with respect to methods of 
affixation and positions of notice. The adequacy or legal sufficiency of 
a copyright notice is determined by the law in effect at the time of 
first publication of the work.
    (b) Definitions. For the purposes of this section:
    (1) The terms audiovisual works, collective works, copies, device, 
fixed, machine, motion picture, pictorial, graphic, and sculptural 
works, and their variant forms, have the meanings given to them in 
section 101 of Title 17.
    (2) Title 17 means title 17 of the United States Code, as amended by 
Pub. L. 94-553.
    (3) In the case of a work consisting preponderantly of leaves on 
which the work is printed or otherwise reproduced on both sides, a 
``page'' is one side of a leaf; where the preponderance of the leaves 
are printed on one side only, the terms ``page'' and ``leaf'' mean the 
same.
    (4) A work is published in book form if the copies embodying it 
consist of multiple leaves bound, fastened, or assembled in a 
predetermined order, as, for example, a volume, booklet, pamphlet, or 
multipage folder. For the purpose of this section, a work need not 
consist of

[[Page 383]]

textual matter in order to be considered published in ``book form.''
    (5) A title page is a page, or two consecutive pages facing each 
other, appearing at or near the front of the copies of a work published 
in book form, on which the complete title of the work is prominently 
stated and on which the names of the author or authors, the name of the 
publisher, the place of publication, or some combination of them, are 
given.
    (6) The meaning of the terms front, back, first, last, and 
following, when used in connection with works published in book form, 
will vary in relation to the physical form of the copies, depending upon 
the particular language in which the work is written.
    (7) In the case of a work published in book form with a hard or soft 
cover, the front page and back page of the copies are the outsides of 
the front and back covers; where there is no cover, the ``front page,'' 
and ``back page'' are the pages visible at the front and back of the 
copies before they are opened.
    (8) A masthead is a body of information appearing in approximately 
the same location in most issues of a newspaper, magazine, journal, 
review, or other periodical or serial, typically containing the title of 
the periodical or serial, information about the staff, periodicity of 
issues, operation, and subscription and editorial policies, of the 
publication.
    (9) A single-leaf work is a work published in copies consisting of a 
single leaf, including copies on which the work is printed or otherwise 
reproduced on either one side or on both sides of the leaf, and also 
folders which, without cutting or tearing the copies, can be opened out 
to form a single leaf. For the purpose of this section, a work need not 
consist of textual matter in order to be considered a ``single-leaf 
work.''
    (c) Manner of affixation and position generally. (1) In all cases 
dealt with in this section, the acceptability of a notice depends upon 
its being permanently legible to an ordinary user of the work under 
normal conditions of use, and affixed to the copies in such manner and 
position that, when affixed, it is not concealed from view upon 
reasonable examination.
    (2) Where, in a particular case, a notice does not appear in one of 
the precise locations prescribed in this section but a person looking in 
one of those locations would be reasonably certain to find a notice in 
another somewhat different location, that notice will be acceptable 
under this section.
    (d) Works published in book form. In the case of works published in 
book form, a notice reproduced on the copies in any of the following 
positions is acceptable:
    (1) The title page, if any;
    (2) The page immediately following the title page, if any;
    (3) Either side of the front cover, if any; or, if there is no front 
cover, either side of the front leaf of the copies;
    (4) Either side of the back cover, if any; or, if there is no back 
cover, either side of the back leaf of the copies;
    (5) The first page of the main body of the work;
    (6) The last page of the main body of the work;
    (7) Any page between the front page and the first page of the main 
body of the work, if:
    (i) There are no more than ten pages between the front page and the 
first page of the main body of the work; and
    (ii) The notice is reproduced prominently and is set apart from 
other matter on the page where it appears;
    (8) Any page between the last page of the main body of the work and 
back page, if:
    (i) There are no more than ten pages between the last page of the 
main body of the work and the back page; and
    (ii) The notice is reproduced prominently and is set apart from the 
other matter on the page where it appears.
    (9) In the case of a work published as an issue of a periodical or 
serial, in addition to any of the locations listed in paragraphs (d) (1) 
through (8) of this section, a notice is acceptable if it is located:
    (i) As a part of, or adjacent to, the masthead;
    (ii) On the page containing the masthead if the notice is reproduced 
prominently and is set apart from the other matter appearing on the 
page; or
    (iii) Adjacent to a prominent heading, appearing at or near the 
front of the issue, containing the title of the

[[Page 384]]

periodical or serial and any combination of the volume and issue number 
and date of the issue.
    (10) In the case of a musical work, in addition to any of the 
locations listed in paragraphs (d) (1) through (9) of this section, a 
notice is acceptable if it is located on the first page of music.
    (e) Single-leaf works. In the case of single-leaf works, a notice 
reproduced on the copies anywhere on the front or back of the leaf is 
acceptable.
    (f) Contributions to collective works. For a separate contribution 
to a collective work to be considered to ``bear its own notice of 
copyright,'' as provided by 17 U.S.C. 404, a notice reproduced on the 
copies in any of the following positions is acceptable:
    (1) Where the separate contribution is reproduced on a single page, 
a notice is acceptable if it appears:
    (i) Under the title of the contribution on that page;
    (ii) Adjacent to the contribution; or
    (iii) On the same page if, through format, wording, or both, the 
application of the notice to the particular contribution is made clear;
    (2) Where the separate contribution is reproduced on more than one 
page of the collective work, a notice is acceptable if it appears:
    (i) Under a title appearing at or near the beginning of the 
contribution;
    (ii) On the first page of the main body of the contribution;
    (iii) Immediately following the end of the contribution; or
    (iv) On any of the pages where the contribution appears, if:
    (A) The contribution is reproduced on no more than twenty pages of 
the collective work;
    (B) The notice is reproduced prominently and is set apart from other 
matter on the page where it appears; and
    (C) Through format, wording, or both, the application of the notice 
to the particular contribution is made clear;
    (3) Where the separate contribution is a musical work, in addition 
to any of the locations listed in paragraphs (f) (1) and (2) of this 
section, a notice is acceptable if it is located on the first page of 
music of the contribution;
    (4) As an alternative to placing the notice on one of the pages 
where a separate contribution itself appears, the contribution is 
considered to ``bear its own notice'' if the notice appears clearly in 
juxtaposition with a separate listing of the contribution by title, or 
if the contribution is untitled, by a description reasonably identifying 
the contribution:
    (i) On the page bearing the copyright notice for the collective work 
as a whole, if any; or
    (ii) In a clearly identified and readily-accessible table of 
contents or listing of acknowledgements appearing near the front or back 
of the collective work as a whole.
    (g) Works reproduced in machine-readable copies. For works 
reproduced in machine-readable copies (such as magnetic tapes or disks, 
punched cards, or the like, from which the work cannot ordinarily be 
visually perceived except with the aid of a machine or device,\1\ each 
of the following constitute examples of acceptable methods of affixation 
and position of notice:
---------------------------------------------------------------------------

    \1\ Works published in a form requiring the use of a machine or 
device for purposes of optical enlargement (such as film, filmstrips, 
slide films, and works published in any variety of microform) and works 
published in visually perceptible form but used in connection with 
optical scanning devices, are not within this category.
---------------------------------------------------------------------------

    (1) A notice embodied in the copies in machine-readable form in such 
a manner that on visually perceptible printouts it appears either with 
or near the title, or at the end of the work;
    (2) A notice that is displayed at the user's terminal at sign on;
    (3) A notice that is continuously on terminal display; or
    (4) A legible notice reproduced durably, so as to withstand normal 
use, on a gummed or other label securely affixed to the copies or to a 
box, reel, cartridge, cassette, or other container used as a permanent 
receptacle for the copies.
    (h) Motion pictures and other audiovisual works. (1) The following 
constitute examples of acceptable methods of affixation and positions of 
the copyright notice on motion pictures and other audiovisual works: A 
notice that is embodied in the copies by a photomechanical or electronic 
process, in such a position that it ordinarily would

[[Page 385]]

appear whenever the work is performed in its entirety, and that is 
located:
    (i) With or near the title;
    (ii) With the cast, credits, and similar information;
    (iii) At or immediately following the beginning of the work; or
    (iv) At or immediately preceding the end of the work.
    (2) In the case of an untitled motion picture or other audiovisual 
work whose duration is sixty seconds or less, in addition to any of the 
locations listed in paragraph (h)(1) of this section, a notice that is 
embodied in the copies by a photomechanical or electronic process, in 
such a position that it ordinarily would appear to the projectionist or 
broadcaster when preparing the work for performance, is acceptable if it 
is located on the leader of the film or tape immediately preceding the 
beginning of the work.
    (3) In the case of a motion picture or other audiovisual work that 
is distributed to the public for private use, the notice may be affixed, 
in addition to the locations specified in paragraph (h)(1) of this 
section, on the housing or container, if it is a permanent receptacle 
for the work.
    (i) Pictorial, graphic, and sculptural works. The following 
constitute examples of acceptable methods of affixation and positions of 
the copyright notice on various forms of pictorial, graphic, and 
sculptural works:
    (1) Where a work is reproduced in two-dimensional copies, a notice 
affixed directly or by means of a label cemented, sewn, or otherwise 
attached durably, so as to withstand normal use, of the front or back of 
the copies, or to any backing, mounting, matting, framing, or other 
material to which the copies are durably attached, so as to withstand 
normal use, or in which they are permanently housed, is acceptable.
    (2) Where a work is reproduced in three-dimensional copies, a notice 
affixed directly or by means of a label cemented, sewn, or otherwise 
attached durably, so as to withstand normal use, to any visible portion 
of the work, or to any base, mounting, framing, or other material on 
which the copies are durably attached, so as to withstand normal use, or 
in which they are permanently housed, is acceptable.
    (3) Where, because of the size or physical characteristics of the 
material in which the work is reproduced in copies, it is impossible or 
extremely impracticable to affix a notice to the copies directly or by 
means of a durable label, a notice is acceptable if it appears on a tag 
that is of durable material, so as to withstand normal use, and that is 
attached to the copy with sufficient durability that it will remain with 
the copy while it is passing through its normal channels of commerce.
    (4) Where a work is reproduced in copies consisting of sheet-like or 
strip material bearing multiple or continuous reproductions of the work, 
the notice may be applied:
    (i) To the reproduction itself;
    (ii) To the margin, selvage, or reverse side of the material at 
frequent and regular intervals; or
    (iii) If the material contains neither a selvage nor a reverse side, 
to tags or labels, attached to the copies and to any spools, reels, or 
containers housing them in such a way that a notice is visible while the 
copies are passing through their normal channels of commerce.
    (5) If the work is permanently housed in a container, such as a game 
or puzzle box, a notice reproduced on the permanent container is 
acceptable.


(17 U.S.C. 401, 702)

[46 FR 58312, Dec. 1, 1981]



Sec. 201.21  [Reserved]



Sec. 201.22  Advance notices of potential infringement of works consisting of sounds, images, or both.

    (a) Definitions. (1) An Advance Notice of Potential Infringement is 
a notice which, if served in accordance with section 411(b) of title 17 
of the United States Code, and in accordance with the provisions of this 
section, enables a copyright owner to institute an action for copyright 
infringement either before or after the first fixation of a work 
consisting of sounds, images, or both that is first fixed simultaneously 
with its transmission, and to enjoy the full remedies of said title 17 
for copyright infringement, provided registration for the work is made 
within three months after its first transmission.

[[Page 386]]

    (2) For purposes of this section, the copyright owner of a work 
consisting of sounds, images, or both, the first fixation of which is 
made simultaneously with its transmission, is the person or entity that 
will be considered the author of the work upon its fixation (including, 
in the case of a work made for hire, the employer or other person or 
entity for whom the work was prepared), or a person or organization that 
has obtained ownership of an exclusive right, initially owned by the 
person or entity that will be considered the author of the work upon its 
fixation.
    (3) A transmission program is a body of material that, as an 
aggregate, has been produced for the sole purpose of transmission to the 
public in sequence and as a unit.
    (b) Form. The Copyright Office does not provide printed forms for 
the use of persons serving Advance Notices of Potential Infringement.
    (c) Contents. (1) An Advance Notice of Potential Infringement shall 
be clearly and prominently captioned ``ADVANCE NOTICE OF POTENTIAL 
INFRINGEMENT'' and must clearly state that the copyright owner objects 
to the relevant activities of the person responsible for the potential 
infringement, and must include all of the following:
    (i) Reference to Title 17 U.S.C. section 411(b) as the statutory 
authority on which the Advance Notice of Potential Infringement is 
based;
    (ii) The date, specific time, and expected duration of the intended 
first transmission of the work or works contained in the specific 
transmission program;
    (iii) The source of the intended first transmission of the work or 
works;
    (iv) Clear identification, by title, of the work or works. A single 
Advance Notice of Potential Infringement may cover all of the works of 
the copyright owner embodied in a specific transmission program. If any 
work is untitled, the Advance Notice of Potential Infringement shall 
include a detailed description of that work;
    (v) The name of at least one person or entity that will be 
considered the author of the work upon its fixation;
    (vi) The identity of the copyright owner, as defined in paragraph 
(a)(2) of this section. If the copyright owner is not the person or 
entity that will be considered the author of the work upon its fixation, 
the Advance Notice of Potential Infringement also shall include a brief, 
general statement summarizing the means by which the copyright owner 
obtained ownership of the copyright and the particular rights that are 
owned; and
    (vii) A description of the relevant activities of the person 
responsible for the potential infringement which would, if carried out, 
result in an infringement of the copyright.
    (2) An Advance Notice of Potential Infringement must also include 
clear and prominent statements:
    (i) Explaining that the relevant activities may, if carried out, 
subject the person responsible to liability for copyright infringement; 
and
    (ii) Declaring that the copyright owner intends to secure copyright 
in the work upon its fixation.
    (d) Signature and identification. (1) An Advance Notice of Potential 
Infringement shall be in writing and signed by the copyright owner, or 
such owner's duly authorized agent.
    (2) The signature of the owner or agent shall be an actual 
handwritten signature of an individual, accompanied by the date of 
signature and the full name, address, and telephone number of that 
person, typewritten or printed legibly by hand.
    (3) If an Advance Notice of Potential Infringement is initially 
served in the form of a telegram or similar communication, as provided 
by paragraph (e)(2)(iii) of this section, the requirement for an 
individual's handwritten signature shall be considered waived if the 
further conditions of said paragraph (e) are met.
    (e) Service. (1) An Advance Notice of Potential Infringement shall 
be served on the person responsible for the potential infringement not 
less than 48 hours before the first fixation and simultaneous 
transmission of the work as provided by 17 U.S.C. 411(b)(1).
    (2) Service of the Advance Notice may be effected by any of the 
following methods:
    (i) Personal service;
    (ii) First-class mail; or
    (iii) Telegram, cablegram, or similar form of communication, if:

[[Page 387]]

    (A) The Advance Notice meets all of the other conditions provided by 
this section; and
    (B) Before the first fixation and simultaneous transmission take 
place, the person responsible for the potential infringement receives 
written confirmation of the Advance Notice, bearing the actual 
handwritten signature of the copyright owner or duly authorized agent.
    (3) The date of service is the date the Advance Notice of Potential 
Infringement is received by the person responsible for the potential 
infringement or by any agent or employee of that person.

(17 U.S.C. 411, 702)

[46 FR 28849, May 29, 1981, as amended at 63 FR 66042, Dec. 1, 1998]



Sec. 201.23  Transfer of unpublished copyright deposits to the Library of Congress.

    (a) General. This section prescribes rules governing the transfer of 
unpublished copyright deposits in the custody of the Copyright Office to 
the Library of Congress. The copyright deposits may consist of copies, 
phonorecords, or identifying material deposited in connection with 
registration of claims to copyright under section 408 of title 17 of the 
United States Code, as amended by Pub. L. 94-553, 90 Stat. 2541, 
effective January 1, 1978. These rules establish the conditions under 
which the Library of Congress is entitled to select deposits of 
unpublished works for its collections or for permanent transfer to the 
National Archives of the United States or to a Federal records center in 
accordance with section 704(b) of title 17 of the United States Code, as 
amended by Pub. L. 94-553.
    (b) Selection by the Library of Congress. The Library of Congress 
may select any deposits of unpublished works for the purposes stated in 
paragraph (a) of this section at the time of registration or at any time 
thereafter; Provided, That:
    (1) A facsimile reproduction of the entire copyrightable content of 
the deposit shall be made a part of the Copyright Office records before 
transfer to the Library of Congress as provided by section 704(c) of 
title 17 of the United States Code, as amended by Pub. L. 94-553, 
unless, within the discretion of the Register of Copyrights, it is 
considered impractical or too expensive to make the reproduction;
    (2) All unpublished copyright deposits retained by the Library of 
Congress in its collections shall be maintained under the control of the 
Library of Congress with appropriate safeguards against unauthorized 
copying or other unauthorized use of the deposits which would be 
contrary to the rights of the copyright owner in the work under title 17 
of the United States Code, as amended by Pub. L. 94-553; and
    (3) At the time selection is made a request for full term retention 
of the deposit under the control of the Copyright Office has not been 
granted by the Register of Copyrights, in accordance with section 704(e) 
of title 17 of the United States Code, as amended by Pub. L. 94-553.


(17 U.S.C. 702, 704)

[45 FR 41414, June 19, 1980]



Sec. 201.24  Warning of copyright for software lending by nonprofit libraries.

    (a) Definition. A Warning of Copyright for Software Rental is a 
notice under paragraph (b)(2)(A) of section 109 of the Copyright Act, 
title 17 of the United States Code, as amended by the Computer Software 
Rental Amendments Act of 1990, Public Law 101-650. As required by that 
paragraph, the ``Warning of Copyright for Software Rental'' shall be 
affixed to the packaging that contains the computer program which is 
lent by a nonprofit library for nonprofit purposes.
    (b) Contents. A Warning of Copyright for Software Rental shall 
consist of a verbatim reproduction of the following notice, printed in 
such size and form and affixed in such manner as to comply with 
paragraph (c) of this section.

                Notice: Warning of Copyright Restrictions

    The copyright law of the United States (Title 17, United States 
Code) governs the reproduction, distribution, adaptation, public 
performance, and public display of copyrighted material.
    Under certain conditions specified in law, nonprofit libraries are 
authorized to lend,

[[Page 388]]

lease, or rent copies of computer programs to patrons on a nonprofit 
basis and for nonprofit purposes. Any person who makes an unauthorized 
copy or adaptation of the computer program, or redistributes the loan 
copy, or publicly performs or displays the computer program, except as 
permitted by title 17 of the United States Code, may be liable for 
copyright infringement.
    This institution reserves the right to refuse to fulfill a loan 
request if, in its judgement, fulfillment of the request would lead to 
violation of the copyright law.

    (c) Form and manner of use. A Warning of Copyright for Software 
Rental shall be affixed to the packaging that contains the copy of the 
computer program, which is the subject of a library loan to patrons, by 
means of a label cemented, gummed, or otherwise durably attached to the 
copies or to a box, reel, cartridge, cassette, or other container used 
as a permanent receptacle for the copy of the computer program. The 
notice shall be printed in such manner as to be clearly legible, 
comprehensible, and readily apparent to a casual user of the computer 
program.

[56 FR 7812, Feb. 26, 1991]



Sec. 201.25  Visual Arts Registry.

    (a) General. This section prescribes the procedures relating to the 
submission of Visual Arts Registry Statements by visual artists and 
owners of buildings, or their duly authorized representatives, for 
recordation in the Copyright Office under section 113(d)(3) of title 17 
of the United States Code, as amended by Public Law 101-650, effective 
June 1, 1991. Statements recorded in the Copyright Office under this 
regulation will establish a public record of information relevant to an 
artist's integrity right to prevent destruction or injury to works of 
visual art incorporated in or made part of a building.
    (b) Forms. The Copyright Office does not provide forms for the use 
of persons recording statements regarding works of visual art that have 
been incorporated in or made part of a building.
    (c) Recordable statements--(1) General. Any statement designated as 
a ``Visual Arts Regulatory Statement'' and which pertains to a work of 
visual art that has been incorporated in or made part of a building may 
be recorded in the Copyright Office provided the statement is 
accompanied by the fee for recordation of documents specified in section 
708(a)(4) of title 17 of the United States Code. Upon their submission, 
the statements and an accompanying documentation or photographs become 
the property of the United States Government and will not be returned. 
Photocopies are acceptable if they are clear and legible. Information 
contained in the Visual Arts Registry Statement should be as complete as 
possible since the information may affect the enforceability of valuable 
rights under the copyright law. Visual Arts Registry Statements which 
are illegible or fall outside of the scope of section 113(d)(3) of title 
17 may be refused recordation by the Copyright Office.
    (2) Statements by artists. Statements by artists regarding a work of 
visual art incorporated or made part of a building should be filed in a 
document containing the head: ``Registry of Visual Art Incorporated in a 
Building--Artist's Statement.'' The statement should contain the 
following information:
    (i) Identification of the artist, including name, current address, 
age, and telephone number, if publicly listed.
    (ii) Identification of the work or works, including the title, 
dimensions, and physical description of the work and the copyright 
registration number, if known. Additionally, it is recommended that one 
or more 8 x 10 photographs of the work on good quality photographic 
paper be included in the submission; the images should be clear and in 
focus.
    (iii) Identification of the building, including its name and 
address. This identification may additionally include 8 x 10 photographs 
of the building and the location of the artist's work in the building.
    (iv) Identification of the owner of the building, if known.
    (3) Statements by the owner of the building. Statements of owners of 
a building which incorporates a work of visual art should be filed in a 
document containing the heading: ``Registry of Visual Art Incorporated 
in a Building--Building Owner's Statement.'' The statement should 
contain the following information:

[[Page 389]]

    (i) Identification of the ownership of the building, the name of a 
person who represents the owner, and a telephone number, if publicly 
listed.
    (ii) Identification of the building, including the building's name 
and address. This identification may additionally include 8 x 10 
photographs of the building and of the works of visual art which are 
incorporated in the building.
    (iii) Identification of the work or works of visual art incorporated 
in the building, including the works' title(s), if known, and the 
dimensions and physical description of the work(s). This identification 
may include one or more 8 x 10 photographs of the work(s) on high 
quality photographic paper; the images should be clear and in focus.
    (iv) Identification of the artist(s) who have works incorporated in 
the building, including the current address of each artist, if known.
    (v) Photocopy of contracts, if any, between the artist and owners of 
the building regarding the rights of attribution and integrity.
    (vi) Statement as to the measures taken by the owner to notify the 
artist(s) of the removal or pending removal of the work of visual art, 
and photocopies of any accompanying documents.
    (4) Updating statements. Either the artist or owner of the building 
or both may record statements updating previously recorded information 
by submitting an updated statement and paying the recording fee 
specified in paragraph (d) of this section. Such statements should 
repeat the information disclosed in the previous filing as regarding the 
name of the artist(s), the name of the work(s) of visual art, the name 
and address of the building, and the name of the owner(s) of the 
building. The remaining portion of the statement should correct or 
supplement the information disclosed in the previously recorded 
statement.
    (d) Fee. The fee for recording a Visual Arts Registry statement, a 
Building Owner's Statement, or an updating statement is the recordation 
fee for a document, as prescribed in Sec. 201.3(c).
    (e) Date of recordation. The date of recordation is the date when 
all of the elements required for recordation, including the prescribed 
fee have been received in the Copyright Office. After recordation of the 
statement, the sender will receive a certificate of record from the 
Copyright Office. Any documentation or photographs accompanying any 
submission will be retained and filed by the Copyright Office. They may 
also be transferred to the Library of Congress, or destroyed after 
preparing suitable copies, in accordance with usual procedures.
    (f) The Copyright Office will record statements in the Visual Arts 
Registry without examination or verification of the accuracy or 
completeness of the statement, if the statement is designated as a 
``Visual Arts Registry Statement'' and pertains to a work of visual art 
incorporated in or made part of a building. Recordation of the statement 
and payment of the recording fee shall establish only the fact of 
recordation in the official record. Acceptance for recordation shall not 
be considered a determination that the statement is accurate, complete, 
and otherwise in compliance with section 113(d), title 17, U.S. Code. 
The accuracy and completeness of the statement is the responsibility of 
the artist or building owner who submits it for recordation. Artists and 
building owners are encouraged to submit accurate and complete 
statements. Omission of any information, however, shall not itself 
invalidate the recordation, unless a court of competent jurisdiction 
finds the statement is materially deficient and fails to meet the 
minimum requirements of section 113(d) of title 17, U.S. Code.

[56 FR 38341, Aug. 13, 1991, as amended at 64 FR 29522, June 1, 1999]



Sec. 201.26  Recordation of documents pertaining to computer shareware and donation of public domain computer software.

    (a) General. This section prescribes the procedures for submission 
of legal documents pertaining to computer shareware and the deposit of 
public domain computer software under section 805 of Public Law 101-650, 
104 Stat. 5089 (1990). Documents recorded in the Copyright Office under 
this regulation will be included in the Computer Shareware Registry. 
Recordation in this Registry will establish a public

[[Page 390]]

record of licenses or other legal documents governing the relationship 
between copyright owners of computer shareware and persons associated 
with the dissemination or other use of computer shareware. Documents 
transferring the ownership of some or all rights under the copyright law 
of computer shareware and security interests in such software should be 
recorded under 17 U.S.C. 205, as implemented by Sec. 201.4.
    (b) Definitions--(1) The term computer shareware is accorded its 
customary meaning within the software industry. In general, shareware is 
copyrighted software which is distributed for the purposes of testing 
and review, subject to the condition that payment to the copyright owner 
is required after a person who has secured a copy decides to use the 
software.
    (2) A document designated as pertaining to computer shareware means 
licenses or other legal documents governing the relationship between 
copyright owners of computer shareware and persons associated with the 
dissemination or other use of computer shareware.
    (3) Public domain computer software means software which has been 
publicly distributed with an explicit disclaimer of copyright protection 
by the copyright owner.
    (c) Forms. The Copyright Office does not provide forms for the use 
of persons recording documents designated as pertaining to computer 
shareware or for the deposit of public domain computer software.
    (d) Recordable Documents--(1) Any document clearly designated as a 
``Document Pertaining to Computer Shareware'' and which governs the 
legal relationship between owners of computer shareware and persons 
associated with the dissemination or other use of computer shareware may 
be recorded in the Computer Shareware Registry.
    (2) Submitted documents may be a duplicate original, a legible 
photocopy, or other legible facsimile reproduction of the document, and 
must be complete on its face.
    (3) Submitted documents will not be returned, and the Copyright 
Office requests that if the document is considered valuable, that only 
copies of that document be submitted for recordation.
    (4) The Copyright Office encourages the submission of a machine-
readable copy of the document in the form of an IBM-PC compatible disk, 
in addition to a copy of the document itself.
    (e) Fee. The fee for recording a document pertaining to computer 
shareware is the recordation fee for a document, as prescribed in 
Sec. 201.3(c).
    (f) Date of recordation. The date of recordation is the date when 
all of the elements required for recordation, including the prescribed 
fee have been received in the Copyright Office. After recordation of the 
statement, the sender will receive a certificate of record from the 
Copyright Office. The submission will be retained and filed by the 
Copyright Office, and may be destroyed at a later date after preparing 
suitable copies, in accordance with usual procedures.
    (g) Donation of public domain computer software. (1) Any person may 
donate a copy of public domain computer software for the benefit of the 
Machine-Readable Collections Reading Room of the Library of Congress. 
Decision as to whether any public domain computer software is suitable 
for accession to the collections rests solely with the Library of 
Congress. Materials not selected will be disposed of in accordance with 
usual procedures, including transfer to other libraries, sale, or 
destruction. Donation of public domain software may be made regardless 
of whether a document has been recorded pertaining to the software.
    (2) In order to donate public domain software, the following 
conditions must be met:
    (i) The copy of the public domain software must contain an explicit 
disclaimer of copyright protection from the copyright owner.
    (ii) The submission should contain documentation regarding the 
software. If the documentation is in machine-readable form, a print-out 
of the documentation should be included in the donation.
    (iii) If the public domain software is marketed in a box or other 
packaging, the entire work as distributed, including the packaging, 
should be deposited.

[[Page 391]]

    (iv) If the public domain software is copy protected, two copies of 
the software must be submitted.
    (3) Donations of public domain software with an accompanying letter 
of explanation must be sent to the following address: Gift Section, 
Exchange & Gift Division, Library of Congress, Washington, DC 20540.

[58 FR 29107, May 19, 1993, as amended at 60 FR 34168, June 30, 1995; 64 
FR 29522, June 1, 1999]



Sec. 201.27  Initial notice of distribution of digital audio recording devices or media.

    (a) General. This section prescribes rules pertaining to the filing 
of an Initial Notice of Distribution in the Copyright Office as required 
by section 1003(b) of the Audio Home Recording Act of 1992, Public Law 
102-563, title 17 of the United States Code, to obtain a statutory 
license to import and distribute, or manufacture and distribute, any 
digital audio recording device or digital audio recording medium in the 
United States.
    (b) Definitions--(1) An Initial Notice of Distribution of Digital 
Audio Recording Devices or Media or Initial Notice is a notice under 
section 1003(b) of the Audio Home Recording Act of 1992, Public Law 102-
563, title 17 of the United States Code, which is required by that 
section to be filed in the Copyright Office by an importer or 
manufacturer of a digital audio recording device or digital audio 
recording medium who has not previously filed notice of the importation 
or manufacture for distribution of such device or medium in the United 
States.
    (2) The product category of a device or medium is a general class of 
products made up of functionally equivalent digital audio recording 
devices or media with substantially the same use in substantially the 
same environment, including, for example, hand-held portable integrated 
combination units (``boomboxes''); portable personal recorders; stand-
alone home recorders (``tape decks''); home combination systems (``rack 
systems''); automobile recorders; configurations of tape media (standard 
cassettes or microcassettes); and configurations of disc media such as 
2\1/2\," 3" and 5" discs.
    (3) The technology of a device or medium is a product type 
distinguished by different technical processes for digitally recording 
musical sounds, such as digital audio tape recorders (DAT), digital 
compact cassette, (DCC), or recordable compact discs, including 
minidiscs (MD).
    (4) The terms digital audio recording device, digital audio 
recording medium, distribute, manufacture, and transfer price, have the 
meanings of the same terms as they are used in section 1001 of the 
Copyright Act, title 17 of the United States Code, as amended by Public 
Law 102-563.
    (c) Forms. An Initial Notice form may be obtained from the Copyright 
Office free of charge, by contacting the Licensing Division of the 
Copyright Office, Washington, DC 20557.
    (d) Filing Deadline. Initial Notices shall be filed in the Copyright 
Office no later than 45 days after the commencement of the first 
distribution of digital audio recording devices or digital audio 
recording media in the United States, on or after October 28, 1992. A 
manufacturer or importer shall file an Initial Notice within 45 days of 
the first distribution for each new product category and each new 
technology that the manufacturer or importer has not reported in a 
previous Initial Notice.
    (e) Content of Initial Notices. An Initial Notice of Distribution of 
Digital Audio Recording Devices or Media shall be identified as such by 
prominent caption or heading, and shall include the following:
    (1) The designation ``Importer'' or ``Manufacturer,'' or both, 
whichever is applicable, followed by the full legal name of the importer 
or manufacturer of the digital audio recording device or medium, of or 
the party named is a partnership, the name of the partnership followed 
by the name of at least one individual partner;
    (2) Any trade or business name or names, trademarks, or other 
indicia of origin that the importer or manufacturer uses or intends to 
use in connection with the importation, manufacture, or distribution of 
such digital audio recording device or medium in the United States;
    (3) The full United States mailing address of the importer or 
manufacturer,

[[Page 392]]

and the full business address, if different;
    (4) The product category and technology of the devices or media 
imported or manufactured;
    (5) The first date (day, month, and year) that distribution 
commenced, or is to commence;
    (6) The signature of an appropriate officer, partner, or agent of 
the importer or manufacturer, as specified by the Initial Notice form; 
and
    (7) Other information relevant to the importation or manufacture for 
distribution of digital audio recording devices or media as prescribed 
on the Initial Notice form provided by the Copyright Office.
    (f) Amendments. (1) The Copyright Office will record amendments to 
Initial Notices submitted to correct an error or omission in the 
information given in an earlier Initial Notice. An amendment is not 
appropriate to reflect developments or changes in facts occurring after 
the date of signature of an Initial Notice.
    (2) An amendment shall:
    (i) Be clearly and prominently identified as an ``Amendment to an 
Initial Notice of Distribution of Digital Audio Recording Devices or 
Media;''
    (ii) Identify the specific Initial Notice intended to be amended so 
that it may be readily located in the records of the Copyright Office;
    (iii) Clearly specify the nature of the amendment to be made; and
    (iv) Be signed and dated in accordance with this section.
    (3) The recordation of an amendment under this paragraph shall have 
only such effect as may be attributed to it by a court of competent 
jurisdiction.
    (g) Recordation. (1) The Copyright Office will record the Initial 
Notices and amendments submitted in accordance with this section by 
placing them in the appropriate public files of the Office. The 
Copyright Office will advise manufacturers and importers of errors or 
omissions appearing on the face of documents submitted to it, and will 
require that any such obvious errors or omissions be corrected before 
the documents will be recorded. However, recordation by the Copyright 
Office shall establish only the fact and date thereof; such recordation 
shall in no case be considered a determination that the document was, in 
fact, properly prepared or that all of the regulatory requirements to 
satisfy section 1003 of title 17 have been met.
    (2) No fee shall be required for the recording of Initial Notices. A 
fee of $20 payable by personal or company check to the Register of 
Copyrights shall accompany any Amendment permitted by paragraph (f) of 
this section.

[57 FR 55465, Nov. 25, 1992]



Sec. 201.28  Statements of Account for digital audio recording devices or media.

    (a) General. This section prescribes rules pertaining to the filing 
of Statements of Account and royalty fees in the Copyright Office as 
required by 17 U.S.C. 1003(c) and 1004, in order to import and 
distribute, or manufacture and distribute, in the United States any 
digital audio recording device or digital audio recording medium.
    (b) Definitions. For purposes of this section, the following 
definitions apply:
    (1) Annual statement of account is the statement required under 17 
U.S.C. 1003, to be filed no later than two months after the close of the 
accounting period covered by the annual statement.
    (2) Device and medium have the same meaning as digital audio 
recording device and digital audio recording medium, respectively, have 
in 17 U.S.C. 1001.
    (3) Digital audio recording product means digital audio recording 
devices and digital audio recording media.
    (4) Generally accepted auditing standards (GAAS), means the auditing 
standards promulgated by the American Institute of Certified Public 
Accountants.
    (5) Manufacturing or importing party refers to any person or entity 
that manufactures and distributes, and/or imports and distributes, any 
digital audio recording device or digital audio recording medium in the 
United States, and is required under 17 U.S.C. 1003 to file with the 
Copyright Office quarterly and annual Statements of Account.
    (6) Product category of a device or medium is a general class of 
products

[[Page 393]]

made up of functionally equivalent digital audio recording products with 
substantially the same use in substantially the same environment, 
including, for example, hand-held portable integrated combination units 
(``boomboxes''); portable personal recorders; stand-alone home recorders 
(``tape decks''); home combination systems (``rack systems''); 
automobile recorders; configurations of tape media (standard cassettes 
or microcassettes); and configurations of disc media, such as 2\1/2\ 
inch, 3 inch, or 5 inch discs.
    (7) Primary auditor is the certified public accountant retained by 
the manufacturing or importing party to audit the amounts reported in 
the annual Statement of Account submitted to the Copyright Office. The 
primary auditor may be the certified public accountant engaged by the 
manufacturing or importing party to perform the annual audit of the 
party's financial statement.
    (8) Quarterly statement of account is the statement accompanying 
royalty payments required under 17 U.S.C. 1003, to be filed for each of 
the first three quarters of the accounting year, and no later than 45 
days after the close of the quarterly period covered by the statement.
    (9) Technology of a device or medium is a digital audio recording 
product-type distinguished by different technical processes for 
digitally recording musical sounds, such as digital audio tape recorders 
(DAT), digital compact cassettes (DCC), or recordable compact discs, 
including minidiscs (MD).
    (10) Distribute, manufacture, transfer price, and serial copying 
have the meanings set forth in 17 U.S.C. 1001.
    (c) Accounting periods and filing deadlines--(1) Election of filing 
basis. Statements of Account may be filed on either a calendar or fiscal 
year basis at the election of the manufacturing party. The election of a 
calendar or fiscal year basis must be made when the manufacturing or 
importing party files its first quarterly Statement of Account by 
appropriate designation on the Form DART/Q submitted. Thereafter the 
specific calendar or fiscal-year accounting period must be designated on 
each quarterly Statement of Account. The filing basis may be changed at 
any time upon notification in writing to the Register of Copyrights, 
accompanied by a statement of reasons as to why the change is to be made 
and a statement that such change will not affect the aggregate royalties 
due under the earlier basis. The notification of change in filing basis 
must be made at least two months before the date the next quarterly 
Statement of Account is due to be filed.
    (2) Quarterly filings. Quarterly Statements of Account shall be 
filed on Form DART/Q and shall cover a three-month period corresponding 
to the calendar or fiscal year of the filing party. A quarterly 
statement shall be filed no later than 45 days after the close of the 
period it covers.
    (3) Annual filings. Annual Statements of Account shall be filed on 
Form DART/A and shall cover both the fourth quarter of an accounting 
year and the aggregate of the entire year corresponding to the calendar 
or fiscal accounting year elected. An annual statement shall be filed no 
later than two months after the close of the period it covers. As a 
transitional measure, however, the first annual Statement of Account 
filed after October 28, 1992, is not due until March 1, 1994, or two 
months after the end of the calendar or fiscal year in which the 
manufacturing or importing party first filed a quarterly Statement of 
Account, whichever is later. The first annual Statement of Account shall 
cover the entire period from October 28, 1992, to the end of the full 
accounting year. The appropriate royalty payment, calculated according 
to the instructions contained in Form DART/A, shall accompany the annual 
Statement of Account covering royalties due for the filing year: that 
is, royalties for the fourth quarter and any additional royalties that 
are due because of adjustments in the aggregate amounts of devices or 
media distributed.
    (4) Early or late filings. Statements of Account and royalty fees 
received before the end of the particular accounting period covered by 
the statement will not be processed by the Office. The statement must be 
filed after the close of the relevant accounting period. Statements of 
Account and royalty

[[Page 394]]

fees received after the 45-day deadline for quarterly statements or the 
two month deadline for annual statements will be accepted for whatever 
legal effect they may have and will be assessed the appropriate interest 
charge for the late filing.
    (d) Forms. (1) Each quarterly or annual Statement of Account shall 
be submitted on the appropriate form prescribed by the Copyright Office. 
Computation of the royalty fee shall be in accordance with the 
procedures set forth in the forms and this section. Statement of Account 
forms are available from the Licensing Division, Library of Congress. 
Forms and other information may be requested from the Licensing Division 
by facsimile transmission (FAX), but copies of Statement of Account 
forms transmitted to the Office by FAX will not be accepted.
    (2) Forms prescribed by the Copyright Office are designated 
Quarterly Statement of Account for Digital Audio Recording Products 
(Form DART/Q) and Annual Statement of Account for Digital Audio 
Recording Products (Form DART/A).
    (e) Contents of quarterly Statements of Account. (1) Quarterly 
period and filing. Any quarterly Statement of Account shall cover the 
full quarter of the calendar or fiscal accounting year for the 
particular quarter for which it is filed. A separate quarterly statement 
shall be filed for each quarter of the first three quarters of the 
accounting year during which there is any activity relevant to the 
payment of royalties under 17 U.S.C. 1004. The annual Statement of 
Account identified in paragraph (f) of this section incorporates the 
fourth quarter of the accounting year.
    (2) General content. Each quarterly Statement of Account shall be 
filed on Form DART/Q, the ``Quarterly Statement of Account for Digital 
Audio Recording Products,'' and shall include a clear statement of the 
following information:
    (i) A designation of the calendar or fiscal year of the annual 
reporting period;
    (ii) A designation of the period, including the beginning and ending 
day, month, and year of the period covered by the quarter;
    (iii) The full legal name of the manufacturing and/or importing 
party, together with any ``doing-business-as'' names used by such person 
or entity for the purpose of conducting the business of manufacturing, 
importing, or distributing digital audio recording products;
    (iv) The full mailing address of the manufacturing or importing 
party, including a specific number and street name, or rural route and 
box number, of the place of business of the person or entity. A post 
office box or similar designation will not be sufficient for this 
purpose except where it is the only address that can be used in that 
geographic location;
    (v) A designation of the manufacturing or importing party status, 
i.e., ``Manufacturer,'' ``Importer,'' or ``Manufacturer and Importer;''
    (vi) The designation ``Product Categories'' together with the 
product categories of the digital audio recording products manufactured 
or imported and distributed during the quarter covered by the statement;
    (vii) The designation ``Technologies'' together with the 
technologies of the digital audio recording products manufactured or 
imported and distributed under the AHRA during the quarter covered by 
the statement;
    (viii) The designation ``Series or Model Number'' followed by the 
model or series numbers of the digital audio recording products 
manufactured or imported and distributed under the AHRA during the 
quarter covered by the statement;
    (ix) The ``fee code'' associated with the product;
    (x) The ``source code'' for the product category;
    (xi) The ``transfer price'' of the product;
    (xii) The ``number of units distributed'' for each product;
    (xiii) The ``minimum fee per unit'' for each product;
    (xiv) The statutory royalty ``rate'' for digital audio recording 
devices or media;
    (xv) The ``rate fee'' for each product;
    (xvi) The appropriate ``maximum fee per unit'' for each product;
    (xvii) The ``maximum fee'' for each product; and

[[Page 395]]

    (xviii) A computation of the total royalty payable for the quarter 
covered by the statement. Filing parties may not round off the figures 
they list in Space C, the computation section of the form, except for 
the figure representing the total royalty fee due; in that case, numbers 
ending in 50 to 99 cents may be rounded up to the next dollar, and 
numbers ending in one to 49 cents may be rounded down to the next 
dollar;
    (3) Royalty payments and accounting. (i) The royalty specified in 17 
U.S.C. 1004 shall accompany the quarterly and annual Statements of 
Account. No royalty is payable for redistribution of the same product 
item unless a credit has been taken for such items. Where royalties are 
payable for the period covered by the statement, the Statement of 
Account shall contain the following information for each unique 
combination of product category, technology, series or model number, fee 
code, source code, and transfer price:
    (A) The total number of digital audio recording media distributed, 
multiplied by the statutory royalty rate of three percent (3%) of the 
transfer price;
    (B) The total number of digital audio recording devices distributed 
for which the statutory royalty rate of two percent (2%) of the transfer 
price is payable, multiplied by such percentage rate of the transfer 
price;
    (C) The total number of digital audio recording devices distributed 
for which the statutory maximum royalty is limited to eight dollars 
($8.00), multiplied by such eight dollar amount;
    (D) The total number of digital audio recording devices distributed 
for which the statutory maximum royalty is limited to twelve dollars 
($12.00), multiplied by such twelve dollar amount; and
    (E) The total number of digital audio recording devices distributed 
for which the statutory minimum royalty is limited to one dollar 
($1.00), multiplied by such one dollar amount.
    (ii) The amount of the royalty payment shall be calculated in 
accordance with the instructions specified in the quarterly Statement of 
Account form. Payment of the royalty fee must be in the form of a 
certified check, cashier's check, money order, or electronic payment 
payable to the Register of Copyrights.
    (4) Reduction of royalty fee. (i) Section 1004(a)(2)(A) of title 17 
U.S. Code, provides an instance in which royalty payments may be reduced 
if the digital audio recording device and such other devices are part of 
a physically integrated unit, the royalty payment shall be based on the 
transfer price of the unit, but shall be reduced by any royalty payment 
made on any digital audio recording device included within the unit that 
was not first distributed in combination with the unit.
    (ii) Notice of this provision together with directions for possible 
application to a product is contained in the DART/Q Form.
    (5) Contact party. Each Statement of Account shall include the name, 
address, and telephone and facsimile (FAX) numbers of an individual whom 
the Copyright Office can write or call about the Statement of Account.
    (6) Credits for returned or exported products. When digital audio 
recording products first distributed in the United States for ultimate 
transfer to United States consumers are returned to the manufacturer or 
importer as unsold or defective merchandise, or are exported, the 
manufacturing or importing party may take a credit to be deducted from 
the royalties payable for the period when the products were returned or 
exported. The credit may be taken only for returns or exports made 
within two years following the date royalties were paid for the 
products. This credit must be reflected in the manufacturing or 
importing party's quarterly or annual Statement of Account. If the 
manufacturer or importer later redistributes in the United States any 
products for which a credit has been taken, these products must be 
listed on the Statement of Account, and a new computation of the royalty 
fee must be made based on the transfer price of the products at the time 
of the new distribution.
    (7) Oath and signature. Each Statement of Account shall include the 
handwritten signature of an authorized officer, principal, or agent of 
the filing party. The signature shall be accompanied by:

[[Page 396]]

    (i) The printed or typewritten name of the person signing the 
quarterly Statement of Account;
    (ii) The date the document is signed;
    (iii) The following certification:

    I, the undersigned, hereby certify that I am an authorized officer, 
principal, or agent of the ``manufacturing or importing party'' 
identified in Space B.


Penalties for fraud and false statements are provided under 18 U.S.C. 
1001 et. seq.
    (f) Contents of annual Statements of Account--(1) General contents. 
Each annual Statement of Account shall be filed on form DART/A, ``Annual 
Statement of Account for Digital Audio Recording Products.'' It must be 
filed by any importer or manufacturer that distributed in the United 
States, during a given calendar or fiscal year, any digital audio 
recording device or digital audio recording medium. The annual statement 
shall cover the aggregate of the distribution of devices and media for 
the entire year corresponding to the calendar or fiscal year elected. 
The annual Statement of Account shall contain the information, oath, and 
certification prescribed in paragraphs (e)(2)(i) through (e)(7)(iii) of 
this section, and shall cover the entire accounting year, including the 
fourth quarter distribution, and shall also provide for the 
reconciliation of the aggregated accounting of digital audio recording 
devices and media for the reported accounting year.
    (2) Reconciliation. Any royalty payment due under sections 1003 and 
1004 of title 17 that was not previously paid with the filing party's 
first three quarterly Statements of Account, shall be reconciled in the 
annual statement. Reconciliation in the annual Statement of Account 
provides for adjustments for reductions, refunds, underpayments, 
overpayments, credits, and royalty payments paid in Quarters 1, 2, and 
3, and shall be computed in accordance with the instructions included in 
the annual Statement of Account. Errors that require reconciliation 
shall be corrected immediately upon discovery.
    (3) Accountant's opinion. Each annual Statement of Account or any 
amended annual Statement of Account shall be audited by the primary 
auditor as defined in paragraph (b)(7) of this section. An amendment may 
be submitted to the Office either as a result of responses to questions 
raised by a Licensing Division examiner or on the initiative of the 
manufacturing or importing party to correct an error in the original 
Statement of Account.
    (i) The audit shall be performed in accordance with generally 
accepted auditing standards (GAAS). The audit may be performed in 
conjunction with an annual audit of the manufacturing or importing 
party's financial statements.
    (ii) The CPA shall issue a report, the ``primary auditor's report,'' 
reflecting his or her opinion as to whether the annual statement 
presents fairly, in all material respects, the number of digital audio 
recording devices and media that were imported and distributed, or 
manufactured and distributed, by the manufacturing or importing party 
during the relevant year, and the amount of royalty payments applicable 
to them under 17 U.S.C. chapter 10, in accordance with that law and 
these regulations.
    (iii) The primary auditor's report shall be filed with the Copyright 
Office together with the annual Statement of Account, within two months 
after the end of the annual period for which the annual Statement of 
Account is prepared. The report may be qualified to the extent necessary 
and appropriate.
    (iv) The Copyright Office does not provide a specific form, or 
require a specific format, for the CPA's review; however, in addition to 
the above, certain items must be named as audited items. These include 
the variables necessary to complete Space C of the Statement of Account 
form. The CPA may place his or her opinion, which will serve as the 
``primary auditor's report,'' in the space provided on Form DART/A, or 
may attach a separate sheet or sheets containing the opinion.
    (v) The auditor's report shall be signed by an individual, or in the 
name of a partnership or a corporation, and shall include city and state 
of execution, certificate number, jurisdiction of certificate, and date 
of opinion. The certificate number and jurisdiction are not required if 
the report is signed in

[[Page 397]]

the name of a partnership or a corporation.
    (g) Documentation. All filing parties shall keep and retain in their 
possession, for at least three years from the date of filing, all 
records and documents necessary and appropriate to support fully the 
information set forth in quarterly and annual statements that they file.
    (h) Corrections, supplemental payments, and refunds--(1) General. 
Upon compliance with the procedures and within the time limits set forth 
in this paragraph (h), corrections to quarterly and annual Statements of 
Account will be placed on record, and supplemental royalty fee payments 
will be received for deposit, or refunds without interest will be 
issued, in the following cases:
    (i) Where, with respect to the accounting period covered by the 
quarterly or annual Statement of Account, any of the information given 
in the statement filed in the Copyright Office is incorrect or 
incomplete; or
    (ii) Where, for any reason except that mentioned in paragraph (h)(2) 
of this section, calculation of the royalty fee payable for a particular 
accounting period was incorrect, and the amount deposited in the 
Copyright Office for that period was either too high or too low.
    (2) Corrections to quarterly or annual Statements of Account will 
not be placed on file, supplemental royalty fee payments will not be 
received for deposit, and refunds will not be issued, where the 
information in the Statements of Account, the royalty fee calculations, 
or the payments were correct as of the date on which the accounting 
period ended, but changes (for example, cases where digital audio 
recording media were exported) took place later.
    (3) Requests that corrections to annual or quarterly Statements of 
Account be accepted, that fee payments be accepted, or that refunds be 
issued shall be addressed to the Licensing Division of the Copyright 
Office, and shall meet the following conditions:
    (i) The request shall be made in writing and must clearly identify 
the manufacturing or importing party making the request, the accounting 
period in question, and the purpose of the request. A request for a 
refund must be received in the Copyright Office before the expiration of 
two months from the last day of the applicable Statement of Account 
filing period. A request made by telephone or by telegraphic or similar 
unsigned communication will be considered to meet this requirement if it 
clearly identifies the basis of the request, is received in the 
Copyright Office within the two-month period, and a written request 
meeting all the conditions of this paragraph (h)(3) is also received in 
the Copyright Office within 14 days after the end of such two-month 
period.
    (ii) The request must clearly identify the incorrect or incomplete 
information formerly filed and must provide the correct or additional 
information.
    (iii) In the case where a royalty fee was miscalculated and the 
amount deposited with the Copyright Office was too large or too small, 
the request must be accompanied by an affidavit under the official seal 
of any officer authorized to administer oaths within the United States, 
or a statement in accordance with 28 U.S.C. 1746, made and signed in 
accordance with paragraph (e)(7) of this section. The affidavit or 
statement shall describe the reasons why the royalty fee was improperly 
calculated and include a detailed analysis of the proper royalty 
calculation.
    (iv) Following final processing, all requests will be filed with the 
original Statement of Account in the records of the Copyright Office. 
Nothing contained in this paragraph shall be considered to relieve 
manufacturing or importing parties of their full obligations under title 
17 of the United States Code, and the filing of a correction or 
supplemental payment shall have only such effect as may be attributed to 
it by a court of competent jurisdiction.
    (v)(A) The request must be accompanied by a filing fee in the amount 
of $20 for each Statement of Account involved. Payment of this fee may 
be in the form of a personal or company check, or a certified check, 
cashier's check, or money order, payable to the Register of Copyrights. 
No request will be processed until the appropriate filing fees are 
received.
    (B) Requests that a supplemental royalty fee payment be deposited 
must be accompanied by a remittance in the

[[Page 398]]

full amount of such fee. Payment of the supplemental royalty fee must be 
in the form of a certified check, cashier's check, money order, or 
electronic payment payable to the Register of Copyrights. No such 
request will be processed until an acceptable remittance in the full 
amount of the supplemental royalty fee has been received.
    (vi) All requests submitted under paragraph (h) of this section must 
be signed by the manufacturing or importing party named in the Statement 
of Account, or the duly authorized agent of that party in accordance 
with paragraph (e)(7) of this section.
    (vii) A request for a refund is not necessary where the Licensing 
Division, during its examination of a Statement of Account or related 
document, discovers an error that has resulted in a royalty overpayment. 
In this case, the Licensing Division will forward the royalty refund to 
the manufacturing or importing party named in the Statement of Account. 
The Copyright Office will not pay interest on any royalty refunds.
    (i) Examination of Statements of Account by the Copyright Office. 
(1) Upon receiving a Statement of Account and royalty fee, the Copyright 
Office will make an official record of the actual date when such 
statement and fee were physically received in the Copyright Office. 
Thereafter, the Licensing Division will examine the statement for 
obvious errors or omissions appearing on the face of the documents and 
will require that any such obvious errors or omissions be corrected 
before final processing of the document is completed. If, as the result 
of communications between the Copyright Office and the manufacturer or 
importer, an additional fee is deposited or changes or additions are 
made in the Statement of Account, the date that additional deposit or 
information was actually received in the Office will be added to the 
official record.
    (2) Completion by the Copyright Office of the final processing of a 
Statement of Account and royalty fee deposit shall establish only the 
fact of such completion and the date or dates of receipt shown in the 
official record. It shall not be considered a determination that the 
Statement of Account was, in fact, properly prepared and accurate, that 
the correct amount of the royalty was deposited, that the statutory time 
limits for filing had been met, or that any other requirements of 17 
U.S.C. 1001 et. seq. were fulfilled.
    (j) Interest on late payments or underpayments. (1) Royalty payments 
submitted as a result of late payments or underpayments shall include 
interest, which shall begin to accrue on the first day after the close 
of the period for filing Statements of Account for all late payments or 
underpayments of royalties occurring within that accounting period. The 
accrual period for interest shall end on the date appearing on the 
certified check, cashier's check, money order, or electronic payment 
submitted by the manufacturing or importing party, if the payment is 
received by the Copyright Office within five business days of that date. 
If the payment is not received by the Copyright Office within five 
business days of its date, the accrual period shall end on the date of 
actual receipt by the Copyright Office.
    (2) The interest rate applicable to a specific accounting period 
shall be the Current Value of Funds rate in accordance with the Treasury 
Financial Manual, at 1 TFM 6-8025.40, in effect on the first business 
day after the close of the filing deadline for the relevant accounting 
period. The interest rate for a particular accounting period may be 
obtained by consulting the Federal Register for the applicable Current 
Value of Funds Rate, or by contacting the Licensing Division of the 
Copyright Office.
    (3) Interest is not required to be paid on any royalty underpayment 
or late payment from a particular accounting period if the interest 
charge is five dollars ($5.00) or less.
    (k) Confidentiality of Statements of Account. Public access to the 
Copyright Office files of Statements of Account for digital audio 
recording products shall not be provided. Access will only be granted to 
interested copyright parties in accordance with regulations prescribed 
by the Register of Copyrights pursuant to 17 U.S.C. 1003(c).

[59 FR 4589, Feb. 1, 1994]

[[Page 399]]



Sec. 201.29  Access to, and confidentiality of, Statements of Account, Verification Auditor's Reports, and other verification information filed in the Copyright 
          Office for digital audio recording devices or media.

    (a) General. This section prescribes rules covering access to DART 
Statements of Account, including the Primary Auditor's Reports, filed 
under 17 U.S.C. 1003(c) and access to a Verifying Auditor's Report or 
other information that may be filed in the Office in a DART verification 
procedure as set out in Sec. 201.30. It also prescribes rules to ensure 
confidential disclosure of these materials to appropriate parties.
    (b) Definitions.
    (1) Access includes inspection of and supervised making of notes on 
information contained in Statements of Account including Primary 
Auditor's Reports, Verification Auditor's Reports, and any other 
verification information.
    (2) Audit and Verification Information means the reports of the 
Primary Auditor and Verifying Auditor filed with the Copyright Office 
under Secs. 201.28 and 201.30, and all information relating to a 
manufacturing or importing party.
    (3) DART Access Form means the form provided by the Copyright Office 
that must be completed and signed by any appropriate party seeking 
access to DART confidential material.
    (4) DART confidential material means the Quarterly and Annual 
Statements of Account, including the Primary Auditor's Report that is 
part of the Annual Statements of Account, and the Verifying Auditor's 
Report and any other verification information filed with the Copyright 
Office. It also includes photocopies of notes made by requestors who 
have had access to these materials that are retained by the Copyright 
Office.
    (5) Interested copyright party means a party as defined in 17 U.S.C. 
1001(7).
    (6) A Representative is someone, such as a lawyer or accountant, who 
is not an employee or officer of an interested copyright party or a 
manufacturing or importing party but is authorized to act on that 
party's behalf.
    (7) Statements of Account means Quarterly and Annual Statements of 
Account as required under 17 U.S.C. 1003(c) and defined in Sec. 201.28.
    (c) Confidentiality. The Copyright Office will keep all DART 
confidential materials in locked files and disclose them only in 
accordance with this section. Any person or entity provided with access 
to DART confidential material by the Copyright Office shall receive such 
information in confidence and shall use and disclose it only as 
authorized in 17 U.S.C. 1001 et. seq.
    (d) Persons allowed access to DART confidential material. Access to 
DART Statements of Account filed under 17 U.S.C. 1003(c) and to 
Verification Auditor's Reports or other verification information is 
limited to:
    (1) An interested copyright party as defined in Sec. 201.29(b)(5) or 
an authorized representative of an interested copyright party, who has 
been qualified for access pursuant to paragraph (f)(2) of this section;
    (2) The Verifying Auditor authorized to conduct verification 
procedures under Sec. 201.30;
    (3) The manufacturing or importing party who filed that Statement of 
Account or that party's authorized representative(s); and
    (4) Staff of the Copyright Office or the Library of Congress who 
require access in the performance of their duties under title 17 U.S.C. 
1001 et seq.;
    (e) Requests for access. An interested copyright party, 
manufacturing party, importing party, representative, or Verifying 
Auditor seeking access to any DART confidential material must complete 
and sign a ``DART Access Form.'' The requestor must submit a copy of the 
completed DART Access Form to the Licensing Specialist, Licensing 
Division. The form must be received in the Licensing Division at least 5 
working days before the date an appointment is requested. The form may 
be faxed to the Licensing Division to expedite scheduling, but a copy of 
the form with the original signature must be filed with the Office.
    (1) A representative of an interested copyright party, a 
manufacturing party or an importing party shall submit an affidavit of 
his or her authority (e.g., in the form of a letter of authorization 
from the interested copyright party or the manufacturing or importing 
party).

[[Page 400]]

    (2) An auditor selected to conduct a verification procedure under 
Sec. 201.30 shall submit an affidavit of his or her selection to conduct 
the verification procedure.
    (3) DART Access Forms may be requested from, and upon completion 
returned to: Licensing Division, Copyright Office, Library of Congress, 
Washington, DC 20557-6400. They may also be requested or submitted in 
person at the Licensing Division, Room LM-458, James Madison Memorial 
Building, First and Independence Avenue, SE., Washington, DC, between 
8:30 a.m. and 5 p.m.
    (f) Criteria for access to DART confidential material. (1) A 
Verifying Auditor will be allowed access to any particular Statement of 
Account and Primary Auditor's Report required to perform his or her 
verification function;
    (2) Interested copyright parties as defined in paragraph (b)(5) of 
this section will be allowed access to any DART confidential material as 
defined in paragraph (b)(4) of this section for verification purposes, 
except that no interested copyright party owned or controlled by a 
manufacturing or importing party subject to royalty payment obligations 
under the Audio Home Recording Act, or who owns or controls such a 
manufacturing or importing party, may have access to DART confidential 
material relating to any other manufacturing or importing party. In such 
cases, a representative of the interested copyright party as defined in 
paragraph (b)(6) of this section may have access for that party, 
provided that these representatives do not disclose the confidential 
information contained in the Statement of Account or Primary Auditor's 
Report to his or her client.
    (3) Access to a Verifying Auditor's Report and any other 
verification material filed in the Office shall be limited to the 
interested copyright party(s) requesting the verification procedure and 
to the manufacturing or importing party whose Statement of Account was 
the subject of the verification procedure.
    (g) Denial of access. Any party who does not meet the criteria 
described in Sec. 201.29(f) shall be denied access.
    (h) Content of DART Access Form. The DART Access Form shall include 
the following information:
    (1) Identification of the Statement of Account and Primary Auditor's 
Report, the Verification Auditor's Report and other verification 
materials, or notes prepared by requestors who earlier accessed the same 
items, to be accessed, by both the name (of the manufacturing party or 
importing party) and the quarter(s) and year(s) to be accessed.
    (2) The name of the interested copyright party, manufacturing party, 
importing party, or verification auditor on whose behalf the request is 
made, plus this party's complete address, including a street address 
(not a post office box number), a telephone number, and a telefax 
number, if any.
    (3) If the request for access is by or for an interested copyright 
party, a statement indicating whether the copyright party is owned or 
controlled by a manufacturing or importing party subject to a royalty 
payment obligation, or whether the interested copyright party owns or 
controls a manufacturing or importing party subject to royalty payments.
    (4) The name, address, and telephone number of the person making the 
request for access and his/her relationship to the party on whose behalf 
the request is made.
    (5) The specific purpose for the request for access, for example, 
access is requested in order to verify a Statement of Account; in order 
to review the results of a verification audit; for the resolution of a 
dispute arising from such an audit; or in order for a manufacturing or 
importing party to review its own Statement of Account, Primary 
Auditor's Report, Verification Auditor's Report, or related information.
    (6) A statement that the information obtained from access to 
Statements of Account, Primary Auditor's Report, Verification Auditor's 
Report, and any other verification audit filings will be used only for a 
purpose permitted under the Audio Home Recording Act (AHRA) and the DART 
regulations.

[[Page 401]]

    (7) The actual signature of the party or the representative of the 
party requesting access certifying that the information will be held in 
confidence and used only for the purpose specified by the Audio Home 
Recording Act and these regulations.

[60 FR 25998, May 16, 1995, as amended at 63 FR 30635, June 5, 1998]



Sec. 201.30  Verification of Statements of Account.

    (a) General. This section prescribes rules pertaining to the 
verification of information contained in the Statements of Account by 
interested copyright parties pursuant to section 1003(c) of title 17 of 
the United States Code.
    (b) Definitions--(1) Annual Statement of Account, generally accepted 
auditing standards (GAAS), and primary auditor have the same meaning as 
the definition in Sec. 201.28 of this part.
    (2) Filer is a manufacturer or importer of digital devices or media 
who is required by 17 U.S.C. 1003 to file with the Copyright Office 
Quarterly and Annual Statements of Account and a primary auditor's 
report on the Annual Statement of Account.
    (3) Interested copyright party has the same meaning as the 
definition in Sec. 201.29 of this part.
    (4) Verifying auditor is the person retained by interested copyright 
parties to perform a verification procedure. He or she is independent 
and qualified as defined in paragraphs (j)(2) and (j)(3) of this 
section.
    (5) Verification procedure is the process followed by the verifying 
auditor to verify the information reported on an Annual Statement of 
Account.
    (c) Purpose of verification. The purpose of verification is to 
determine whether there was any failure of the primary auditor to 
conduct the primary audit properly or to obtain a reliable result, or 
whether there was any error in the Annual Statement of Account.
    (d) Timing of verification procedure--(1) Requesting a verification 
procedure. No sooner than three months nor later than three years after 
the filing deadline of the Annual Statement of Account to be verified, 
any interested copyright party shall notify the Register of Copyrights 
of its interest in instituting a verification procedure. Such 
notification of interest shall also be served at the same time on the 
filer and the primary auditor identified in the Annual Statement of 
Account. Such notification shall include the year of the Annual 
Statement of Account to be verified, the name of the filer, information 
on how other interested copyright parties may contact the party 
interested in the verification including name, address, telephone 
number, facsimile number and electronic mail address, if any, and a 
statement establishing the party filing the notification as an 
interested copyright party. The notification of interest may apply to 
more than one Annual Statement of Account and more than one filer.
    (2) Coordination and selection of verifying auditor. The Copyright 
Office will publish in the Federal Register notice of having received a 
notification of interest to institute a verification procedure. 
Interested copyright parties have one month from the date of publication 
of the Federal Register notice to notify the party interested in 
instituting the verification procedure of their intent to join with it 
and to participate in the selection of the verifying auditor. Any 
dispute about the selection of the verifying auditor shall be resolved 
by the parties themselves.
    (3) Notification of the filer and primary auditor. As soon as the 
verifying auditor has been selected, and in no case later than two 
months after the publication in the Federal Register of the notice 
described in paragraph (d)(2) of this section, the joint interested 
copyright parties shall notify the Register of Copyrights, the filer, 
and the primary auditor identified in the Annual Statement of Account to 
be verified, that they intend or do not intend to initiate a 
verification procedure.
    (4) Commencement of the verification procedure. The verification 
procedure shall begin no sooner than one month after notice of intent to 
initiate a verification procedure was given to the filer and the primary 
auditor by the joint interested copyright parties. The joint interested 
copyright parties shall grant the filer or the primary auditor a 
postponement of the beginning of the

[[Page 402]]

verification procedure of up to one additional month if either one 
requests it. Verification procedures shall be conducted at reasonable 
times during normal business hours.
    (5) Anti-duplication rules. A filer shall be subject to no more than 
one verification procedure per calendar year. An Annual Statement of 
Account shall be subject to a verification procedure only once.
    (e) Scope of verification. The verifying auditor shall limit his or 
her examination to verifying the information required in the Annual 
Statement of Account. To the extent possible, the verifying auditor 
shall inspect the information contained in the primary auditor's report 
and the primary auditor's working papers. If the verifying auditor 
believes that access to the records, files, or other materials in the 
control of the filer is required according to GAAS, he or she may, after 
consultation with the primary auditor, require the production of these 
documents as well. The verifying auditor and the primary auditor shall 
act in good faith using reasonable professional judgment, with the 
intention of reaching a reasonable accommodation as to the necessity and 
scope of examination of any additional documents, but the decision to 
require the production of additional documents is solely that of the 
verifying auditor.
    (f) Verification report. Upon concluding the verification procedure, 
the verifying auditor shall render a report enumerating in reasonable 
detail the procedures performed by the verifying auditor and his or her 
findings. Such findings shall state whether there was any failure of the 
primary auditor to conduct properly the primary audit or obtain a 
reliable result, and whether there was any error in the Annual Statement 
of Account, itemized by amount and by the filer's elected fiscal year. 
If there was such failure or error, the report shall specify all 
evidence from which the verifying auditor reached such conclusions. Such 
evidence shall be listed and identified in an appendix to the report in 
sufficient detail to enable a third party to reasonably understand or 
interpret the evidence on which the verifying auditor based his or her 
conclusion. If there was no such failure or error, the report shall so 
state.
    (g) Distribution of report. Copies of the verifying auditor's report 
shall be subject to the confidentiality provisions of Sec. 201.29 and 
shall be distributed as follows:
    (1) One copy, excluding the appendix, if applicable, shall be filed 
with the Register of Copyrights.
    (2) One copy, with the appendix, if applicable, shall be submitted 
to each of the interested copyright parties who retained the services of 
the verifying auditor and who are authorized to receive such information 
according to Sec. 201.29.
    (3) One copy, with the appendix, if applicable, shall be submitted 
to the filer of the Annual Statement of Account.
    (4) One copy, with the appendix, if applicable, shall be submitted 
to the primary auditor.
    (h) Retention of report. The Register of Copyrights will retain his 
or her copy of the verifying auditor's report for three years following 
the date the copy of the verifying auditor's report is filed.
    (i) Costs of verification. The joint interested copyright parties 
who requested the verification procedure shall pay the fees of the 
verifying auditor and the primary auditor for their work performed in 
connection with the verification procedure, except, if the verification 
procedure results in a judicial determination or the filer's agreement 
that royalty payments were understated on the Annual Statement of 
Account, then,
    (1) if the amount is less than five percent (5%) of the amount 
stated on the Annual Statement of Account, that amount shall first be 
used to pay the fees of the verifying auditor and the primary auditor, 
and any remaining amount plus any applicable interest on the total 
amount shall be deposited, allocated by the filer's elected fiscal year, 
with the Register of Copyrights, or
    (2) if the amount is equal to or greater than five percent (5%) of 
the amount stated on the Annual Statement of Account, the filer shall 
pay the fees of the verifying auditor and the primary auditor, and, in 
addition, shall deposit the

[[Page 403]]

amount found to be due plus any applicable interest on the total amount, 
allocated by the filer's elected fiscal year, with the Register of 
Copyrights.
    (j) Independence and qualifications of verifying auditor. (1) The 
verifying auditor shall be qualified and independent as defined in this 
section. If the filer has reason to believe that the verifying auditor 
is not qualified or independent, it shall raise the matter with the 
joint interested copyright parties before the commencement of the 
verification procedure, and if the matter is not resolved, it may raise 
the issue with the American Institute of Certified Public Accountants' 
Professional Ethics Division and/or the verifying auditor's State Board 
of Accountancy while the verification procedure is being performed.
    (2) A verifying auditor shall be considered qualified if he or she 
is a certified public accountant or works under the supervision of a 
certified public accounting firm.
    (3) A verifying auditor shall be considered independent if:
    (i) He or she is independent as that term is used in the Code of 
Professional Conduct of the American Institute of Certified Public 
Accountants, including the Principles, Rules and Interpretations of such 
Code applicable generally to attest engagements (collectively, the 
``AICPA Code''); and
    (ii) He or she is independent as that term is used in the Statements 
on Auditing Standards promulgated by the Auditing Standards Board of the 
AICPA and Interpretations thereof issued by the Auditing Standards 
Division of the AICPA.

[61 FR 30813, June 18, 1996]



Sec. 201.31  Procedures for copyright restoration in the United States for certain motion pictures and their contents in accordance with the North American Free 
          Trade Agreement.

    (a) General. This section prescribes the procedures for submission 
of Statements of Intent pertaining to the restoration of copyright 
protection in the United States for certain motion pictures and works 
embodied therein as required by the North American Free Trade Agreement 
Implementation Act of December 8, 1993, Public Law No. 103-182. On or 
after January 3, 1995, the Copyright Office will publish in the Federal 
Register a list of works for which potential copyright owners have filed 
a complete and timely Statement of Intent with the Copyright Office.
    (b) Definitions. For purposes of this section, the following 
definitions apply:
    (1) Effective filing. To be effective a Statement of Intent must be 
complete and timely.
    (2) Eligible work means any motion picture that was first fixed or 
published in Mexico or Canada, and any work included in such motion 
picture that was first fixed or published with this motion picture, if 
the work entered the public domain in the United States because it was 
first published on or after January 1, 1978, and before March 1, 1989, 
without the notice required by 17 U.S.C. 401, 402, or 403, the absence 
of which has not been excused by the operation of 17 U.S.C. 405, as such 
sections were in effect during that period.
    (3) Fixed means a work `fixed' in a tangible medium of expression 
when its embodiment in a copy or phonorecord, by or under the authority 
of the author, is sufficiently permanent or stable to permit it to be 
perceived, reproduced, or otherwise communicated for a period of more 
than transitory duration. A work consisting of sounds, images, or both, 
that are being transmitted, is `fixed' for purposes of this title if a 
fixation of the work is being made simultaneously with its transmission. 
17 U.S.C. 101
    (4) Potential copyright owner means the person who would have owned 
any of the exclusive rights comprised in a copyright in the United 
States in a work eligible for copyright restoration under NAFTA, if the 
work had not fallen into the public domain for failure to comply with 
the statutory notice requirements in effect at the time of first 
publication, or any successor in interest to such a person.
    (5) Published means distribution of copies of a work to the public 
by sale or other transfer of ownership, or by rental, lease, or lending. 
The offering

[[Page 404]]

to distribute copies to a group of persons for purposes of further 
distribution, public performance, or public display, constitutes 
publication. A public performance or display of a work does not of 
itself constitute publication.
    (c) Forms. The Copyright Office does not provide Statement of Intent 
forms for the use of potential copyright owners who want to restore 
copyright protection in eligible works.
    (d) Requirements for effective Statements of Intent. (1) The 
document should be clearly designated as a ``Statement of Intent to 
restore copyright protection in the United States in accordance with the 
North American Free Trade Agreement''.
    (2) Statements of Intent must include:
    (i) The title(s) of the work(s) for which copyright restoration is 
sought, including any underlying work(s) that has a title(s) different 
from the title of the motion picture, provided all works are owned by 
the same potential copyright owner;
    (ii) The nation of first fixation;
    (iii) The nation of first publication;
    (iv) The date of first publication;
    (v) The name and mailing address (and telephone and telefax, if 
applicable) of the potential copyright owner of the work;
    (vi) The following certification (in its entirety); signed and dated 
by the potential copyright owner or authorized agent:

    Certification and Signature: I hereby certify that each of the above 
titled works was first fixed or first published in

_______________________________________________________________________

(insert Mexico or Canada) and understand that the work(s) have entered 
the public domain in the United States of America because of first 
publication on or after January 1, 1978, and before March 1, 1989, 
without the notice required by U.S. copyright law. I certify that the 
information given herein is true and correct to the best of my 
knowledge, and understand that any knowing or willful falsification of 
material facts may result in criminal liability under 18 U.S.C. 1001.

Signature:______________________________________________________________

Name (Printed or Typed):________________________________________________

Date:___________________________________________________________________

    (3) If copyright restoration is sought for an underlying work only, 
the Statement of Intent must specify the kind of underlying work covered 
and give the title if different from the title of the motion picture.
    (4) More than one motion picture may be included in a single 
Statement of Intent provided the potential copyright owner is the same 
for all the motion pictures. The information required in Sec. 201.31 
(d)(2)(i) through (d)(2)(iv) must be given for each work.
    (5) Sports programs that do not have a title can be identified in a 
Statement of Intent by giving the sporting event, the team names and the 
date (month, day and year).
    (6) Statements of Intent must be received in the Copyright Office on 
or before December 31, 1994.
    (7) Statements of Intent must be in English and either typed or 
legibly printed by hand, on 8 1/2 inch by 11 inch white paper.
    (e) Fee. The Copyright Office is not requiring a fee for the 
processing of Statements of Intent.
    (f) Effective date of restoration of copyright protection. (1) 
Potential copyright owners of eligible works who file a complete and 
timely Statement of Intent with the Copyright Office will have copyright 
protection restored in these works effective January 1, 1995.
    (2) The new section 17 U.S.C. 104A(c) created by the NAFTA 
Implementation Act gives a one year exemption to U.S. nationals or 
domiciliaries who made or acquired copies of a motion picture or its 
contents before December 8, 1993, the date of enactment of the 
implementing act. These individuals or entities may continue to sell, 
distribute, or perform publicly such works without liability for a 
period of one year following the Copyright Office's publication in the 
Federal Register of the list of the works determined to be properly 
qualified for protection and for which complete and timely Statements of 
Intent have been filed.
    (g) Registration of works whose copyright has been restored. After 
January 1, 1995, the Copyright Office encourages potential copyright 
owners to make voluntary copyright registration in accordance with 17 
U.S.C. 408 for works that have had copyright restored in accordance with 
NAFTA.

[59 FR 12164, Mar. 16, 1994, as amended at 59 FR 58789, Nov. 15, 1994; 
60 FR 50420, Sept. 29, 1995]



Sec. 201.32  [Reserved]



Sec. 201.33  Procedures for filing Notices of Intent to Enforce a restored copyright under the Uruguay Round Agreements Act.

    (a) General. This section prescribes the procedures for submission 
of Notices of Intent to Enforce a Restored Copyright under the Uruguay 
Round Agreements Act, as required in 17

[[Page 405]]

U.S.C. 104A(a). On or before May 1, 1996, and every four months 
thereafter, the Copyright Office will publish in the Federal Register a 
list of works for which Notices of Intent to Enforce have been filed. It 
will maintain a list of these works. The Office will also make a more 
complete version of the information contained in the Notice of Intent to 
Enforce available on its automated database, which can be accessed over 
the Internet.
    (b) Definitions--(1) NAFTA work means a work restored to copyright 
on January 1, 1995, as a result of compliance with procedures contained 
in the North American Free Trade Agreement Implementation Act of 
December 8, 1993, Public Law No. 103-182.
    (2) Reliance party means any person who--
    (i) With respect to a particular work, engages in acts, before the 
source country of that work becomes an eligible country under the URAA, 
which would have violated 17 U.S.C. 106 if the restored work had been 
subject to copyright protection and who, after the source country 
becomes an eligible country, continues to engage in such acts;
    (ii) Before the source country of a particular work becomes an 
eligible country, makes or acquires one or more copies or phonorecords 
of that work; or
    (iii) As the result of the sale or other disposition of a derivative 
work, covered under the new 17 U.S.C. 104A(d)(3), or of significant 
assets of a person, described in the new 17 U.S.C. 104 A(d)(3) (A) or 
(B), is a successor, assignee or licensee of that person.
    (3) Restored work means an original work of authorship that--
    (i) Is protected under 17 U.S.C. 104A(a);
    (ii) Is not in the public domain in its source country through 
expiration of term of protection;
    (iii) Is in the public domain in the United States due to--
    (A) Noncompliance with formalities imposed at any time by United 
States copyright law, including failure of renewal, lack of proper 
notice, or failure to comply with any manufacturing requirements;
    (B) Lack of subject matter protection in the case of sound 
recordings fixed before February 15, 1972; or
    (C) Lack of national eligibility; and
    (iv) Has at least one author or rightholder who was, at the time the 
work was created, a national or domiciliary of an eligible country, and 
if published, was first published in an eligible country and not 
published in the United States during the 30-day period following 
publication in such eligible country.
    (4) Source country of a restored work is--
    (i) A nation other than the United States; and
    (ii) In the case of an unpublished work--
    (A) The eligible country in which the author or rightholder is a 
national or domiciliary, or, if a restored work has more than one author 
or rightholder, the majority of foreign authors or rightholders are 
nationals or domiciliaries of eligible countries; or
    (B) If the majority of authors or rightholders are not foreign, the 
nation other than the United States which has the most significant 
contacts with the work; and
    (iii) In the case of a published work--
    (A) The eligible country in which the work is first published; or
    (B) If the restored work is published on the same day in two or more 
eligible countries, the eligible country which has the most significant 
contacts with the work.
    (c) Forms. The Copyright Office does not provide forms for Notices 
of Intent to Enforce filed with the Copyright Office. It requests that 
filers of such notices follow the format set out in Appendix A of this 
section and give all of the information listed in paragraph (d) of this 
section. Notices of Intent to Enforce must be in English, and should be 
typed or printed by hand legibly in dark, preferably black, ink, on 8\1/
2\ by 11 inch white paper of good quality, with at least a one inch (or 
three cm) margin.
    (d) Requirements for Notice of Intent to Enforce a Copyright 
Restored under the Uruguay Round Agreements Act. (1) Notices of Intent 
to Enforce should be sent to the following address: GC/I&R,

[[Page 406]]

P.O. Box 70400, Southwest Station, Washington, DC 20024, USA.
    (2) The document should be clearly designated as ``Notice of Intent 
to Enforce a Copyright Restored under the Uruguay Round Agreements 
Act''.
    (3) Notices of Intent to Enforce must include:
    (i) Required information:
    (A) The title of the work, or if untitled, a brief description of 
the work;
    (B) An English translation of the title if title is in a foreign 
language;
    (C) Alternative titles if any;
    (D) Name of the copyright owner of the restored work, or of an owner 
of an exclusive right therein;
    (E) The address and telephone number where the owner of copyright or 
the exclusive right therein can be reached; and
    (F) The following certification signed and dated by the owner of 
copyright, or the owner of an exclusive right therein, or the owner's 
authorized agent:
    I hereby certify that for each of the work(s) listed above, I am the 
copyright owner, or the owner of an exclusive right, or the owner's 
authorized agent, the agency relationship having been constituted in a 
writing signed by the owner before the filing of this notice, and that 
the information given herein is true and correct to the best of my 
knowledge.

Signature_______________________________________________________________

Name (printed or typed)_________________________________________________

As agent for (if applicable)____________________________________________

Date:___________________________________________________________________

    (ii) Optional but essential information:
    (A) Type of work (painting, sculpture, music, motion picture, sound 
recording, book, etc.);
    (B) Name of author(s);
    (C) Source country;
    (D) Approximate year of publication;
    (E) Additional identifying information (e.g. for movies: director, 
leading actors, screenwriter, animator; for photographs or books: 
subject matter; for books: editor, publisher, contributors);
    (F) Rights owned by the party on whose behalf the Notice of Intent 
to Enforce is filed (e.g., the right to reproduce/distribute/publicly 
display/publicly perform the work, or to prepare a derivative work based 
on the work, etc.); and
    (G) Telefax number at which owner, exclusive rights holder, or agent 
thereof can be reached.
    (4) Notices of Intent to Enforce may cover multiple works provided 
that each work is identified by title, all the works are by the same 
author, all the works are owned by the identified copyright owner or 
owner of an exclusive right, and the rights owned by the party on whose 
behalf the Notice of Intent is filed are the same. In the case of 
Notices of Intent to Enforce covering multiple works, the notice must 
separately designate for each work covered the title of the work, or if 
untitled, a brief description of the work; an English translation of the 
title if the title is in a foreign language; alternative titles, if any; 
the type of work; the source country; the approximate year of 
publication; and additional identifying information.
    (5) Notices of Intent to Enforce works restored on January 1, 1996, 
may be submitted to the Copyright Office on or after January 1, 1996, 
through December 31, 1997.
    (e) Fee--(1) Amount. The filing fee for recording Notices of Intent 
to Enforce is 30 U.S. dollars for notices covering one work. For notices 
covering multiple works as described in paragraph (d)(4) of this 
section, the fee is 30 U.S. dollars, plus one dollar for each additional 
work covered beyond the first designated work. For example, the fee for 
a Notice of Intent to Enforce covering three works would be 32 U.S. 
dollars. This fee includes the cost of an acknowledgement of 
recordation.
    (2) Method of Payment--(i) Checks, money orders, or bank drafts. The 
Copyright Office will accept checks, money orders, or bank drafts made 
payable to the Register of Copyrights. Remittances must be redeemable 
without service or exchange fees through a United States institution, 
must be payable in United States dollars, and must be imprinted with 
American Banking Association routing numbers. International money 
orders, and postal money orders that are negotiable only at a post 
office are not acceptable. CURRENCY WILL NOT BE ACCEPTED.

[[Page 407]]

    (ii) Copyright Office Deposit Account. The Copyright Office 
maintains a system of Deposit Accounts for the convenience of those who 
frequently use its services. The system allows an individual or firm to 
establish a Deposit Account in the Copyright Office and to make advance 
deposits into that account. Deposit Account holders can charge copyright 
fees against the balance in their accounts instead of sending separate 
remittances with each request for service. For information on Deposit 
Accounts please write: Copyright Office, Library of Congress, 
Washington, DC 20559-6000, and request a copy of Circular 5, ``How to 
Open and Maintain a Deposit Account in the Copyright Office.''
    (iii) Credit cards. For URAA filings the Copyright Office will 
accept VISA, MasterCard and American Express. Debit cards cannot be 
accepted for payment. With the NIE, a filer using a credit card must 
submit a separate cover letter stating the name of the credit card, the 
credit card number, the expiration date of the credit card, the total 
amount, and a signature authorizing the Office to charge the fees to the 
account. To protect the security of the credit card number, the filer 
must not write the credit card number on the Notice of Intent to 
Enforce.
    (f) Public online access. (1) Almost all of the information 
contained in the Notice of Intent to Enforce is available online in the 
Copyright Office History Documents (COHD) file through the Library of 
Congress electronic information system LC MARVEL through the Internet. 
Except on Federal holidays, this information may be obtained on 
terminals in the Copyright Office at the Library of Congress Monday 
through Friday 8:30 a.m. - 5:00 p.m. U.S. Eastern Time or over the 
Internet Monday - Friday 6:30 a.m. - 9:30 p.m. U.S. Eastern Time, 
Saturday 8:00 a.m. - 5 p.m., and Sunday 1:00 p.m. - 5:00 p.m.
    (2) Alternative ways to connect through Internet are: (i) use the 
Copyright Office Home Page on the World Wide Web at: http://
lcweb.loc.gov/copyright, (ii) telnet to locis.loc.gov or the numeric 
address 140.147.254.3, or (iii) telnet to marvel.loc.gov, or the numeric 
address 140.147.248.7 and log in as marvel, or (iv) use a Gopher Client 
to connect to marvel.loc.gov.
    (3) Information available online includes: the title or brief 
description if untitled; an English translation of the title; the 
alternative titles if any; the name of the copyright owner or owner of 
an exclusive right; the author; the type of work; the date of receipt of 
the NIE in the Copyright Office; the date of publication in the Federal 
Register; the rights covered by the notice; and the address, telephone 
and telefax number (if given) of the copyright owner.
    (4) Online records of Notices of Intent to Enforce are searchable by 
the title, the copyright owner or owner of an exclusive right, and the 
author.
    (g) NAFTA work. The copyright owner of a work restored under NAFTA 
by the filing of a NAFTA Statement of Intent to Restore with the 
Copyright Office prior to January 1, 1995, is not required to file a 
Notice of Intent to Enforce under this regulation.

   Appendix A to Sec. 201.33--Notice of Intent To Enforce a Copyright 
         Restored under the Uruguay Round Agreements Act (URAA)

1. Title:_______________________________________________________________

      (If this work does not have a title, state ``No title.'') OR
      Brief description of work (for untitled works only): ________

_______________________________________________________________________
2. English translation of title (if applicable):________________________
3. Alternative title(s) (if any):_______________________________________
4. Type of work:________________________________________________________

      (e.g. painting, sculpture, music, motion picture, sound recording, 
book)

5. Name of author(s):___________________________________________________
6. Source country:______________________________________________________
7. Approximate year of publication:_____________________________________
8. Additional identifying information:__________________________________

    (e.g. for movies; director, leading actors, screenwriter, animator, 
for photographs: subject matter; for books; editor, publisher, 
contributors, subject matter).

9. Name of copyright owner:_____________________________________________
    (Statements may be filed in the name of the owner of the restored 
copyright or the owner of an exclusive right therein.)
10. If you are not the owner of all rights, specify the rights you own:
_______________________________________________________________________
    (e.g. the right to reproduce/distribute publicly display/publicly 
perform the work, or to prepare a derivative work based on the work)

[[Page 408]]

11. Address at which copyright owner may be contacted:

_______________________________________________________________________
_______________________________________________________________________
    (Give the complete address, including the country and an 
``attention'' line, or ``in care of'' name, if necessary.)

12. Telephone number of owner:__________________________________________
13. Telefax number of owner:____________________________________________
14. Certification and Signature:

    I hereby certify that, for each of the work(s) listed above, I am 
the copyright owner, or the owner of an exclusive right, or the owner's 
authorized agent, the agency relationship having been constituted in a 
writing signed by the owner before the filing of this notice, and that 
the information given herein is true and correct to the best of my 
knowledge.

Signature:______________________________________________________________
Name (printed or typed):________________________________________________
As agent for (if applicable):___________________________________________
Date:___________________________________________________________________
    Note: Notices of Intent to Enforce must be in English, except for 
the original title, and either typed or printed by hand legibly in dark, 
preferably black, ink. They should be on 8\1/2\" by 11" white paper of 
good quality, with at least a 1-inch (or 3 cm) margin.

[60 FR 50420, Sept. 29, 1995, as amended at 63 FR 30635, June 5, 1998; 
64 FR 12902, Mar. 16, 1999]



Sec. 201.34  Procedures for filing Correction Notices of Intent to Enforce a Copyright Restored under the Uruguay Round Agreements Act.

    (a) General. This section prescribes the procedures for submission 
of corrections of Notices of Intent to Enforce a Copyright (NIEs) 
Restored under the Uruguay Round Agreements Act of December 8, 1994, as 
required by 17 U.S.C. 104A(e), as amended by Pub. L. 103-465, 108 Stat. 
4809, 4976 (1994).
    (b) Definitions. For purposes of this section, the following 
definitions apply.
    (1) Major error. A major error in filing a Notice of Intent to 
Enforce a Copyright Restored under the Uruguay Round Agreements Act is 
an error in the name of the copyright owner or rightholder, or in the 
title of the work (as opposed to its translation, if any) where such 
error fails to adequately identify the restored work or its owner 
through a reasonable search of the Copyright Office NIE records. 
Omission of, or incorrect information regarding, a written agency 
relationship also constitutes a major error.
    (2) Minor error. A minor error in filing a Notice of Intent to 
Enforce a Copyright Restored under the Uruguay Round Agreements Act is 
any error that is not a major error.
    (3) Restored work. For the definition of works restored under the 
URAA, see 37 CFR 201.33.
    (c) Forms. The Copyright Office does not provide forms for 
Correction Notices of Intent to Enforce filed with the Copyright Office. 
It requests that filers of such Correction NIEs follow the format set 
out in Appendix A of this section and give all information listed in 
paragraph (d) of this section. Correction NIEs must be in English, and 
should be typed or legibly printed by hand in dark, preferably black 
ink, on 8\1/2\" by 11" white paper of good quality with at least a 1" 
(or three cm) margin.
    (d) Requirements for Correction Notice of Intent to Enforce a 
Copyright Restored under the Uruguay Round Agreements Act. (1) A 
correction for a Notice of Intent to Enforce should be clearly 
designated as a ``Correction Notice of Intent to Enforce'' or 
``Correction NIE.''
    (2) Correction Notices of Intent to Enforce should be sent to the 
following address: URAA/GATT, NIEs and Registrations, PO Box 70400, 
Southwest Station, Washington, DC 20024, USA.
    (3) A Correction NIE shall contain the following information:
    (i) The volume and document number of the previous NIE which is to 
be corrected;
    (ii) The title of the work as it appears on the previous NIE, 
including alternative titles, if they appear;
    (iii) The English translation of the title, if any, as it appears on 
the previous NIE;
    (iv) A statement of the erroneous information as it appears on the 
previous NIE;
    (v) A statement of the correct information as it should have 
appeared and an optional explanation of its correction; or
    (vi) A statement of the information to be added. This includes 
optional information such as:
    (A) Type of work;
    (B) Rights owned by the party on whose behalf the Correction Notice 
is filed;
    (C) Name of author;

[[Page 409]]

    (D) Source country;
    (E) Year of publication;
    (F) Alternative titles;
    (G) An optional explanation of the added information.
    (vii) The name and address:
    (A) To which correspondence concerning the document should be sent; 
and
    (B) To which the acknowledgment of the recordation of the Correction 
NIE should be mailed; and
    (viii) A certification. The certification shall consist of:
    (A) A statement that, for each of the works named above, the person 
signing the Correction NIE is the copyright owner, or the owner of an 
exclusive right, or the owner's authorized agent, and that the 
information is correct to the best of that person's knowledge;
    (B) The typed or printed name of the person whose signature appears;
    (C) The signature and date of signature; and
    (D) The telephone and telefax number at which the owner, 
rightholder, or agent thereof can be reached.
    (4) A Correction NIE may cover multiple works in multiple NIE 
documents for one fee provided that: each work is identified by title; 
all the works are by the same author; all the works are owned by the 
same copyright owner or owner of an exclusive right. In the case of 
Correction NIEs, the notice must separately designate each title to be 
corrected, noting the incorrect information as it appeared on the 
previously filed NIE, as well as the corrected information. A single 
notice covering multiple titles need bear only a single certification.
    (5) Copies, phonorecords or supporting documents cannot be made part 
of the record of a Correction NIE and should not be submitted with the 
document.
    (6) Time for submitting Correction NIEs. (i) Major errors. The 
Copyright Office will accept a Correction NIE for a major error 
concerning a restored work during the 24-month period beginning on the 
date of restoration of the work, as provided for original NIEs in 
section 104A(d)(2)(A) of title 17.
    (ii) Minor errors. The Office will accept a Correction NIE for a 
minor error or omission concerning a restored work at any time after the 
original NIE has been filed, as provided in section 104A(e)(1)(A)(iii) 
of title 17.
    (e) Fee--(1) Amount. The filing fee for recording Correction NIEs is 
30 U.S. dollars for each Correction Notice covering one work. For single 
Correction NIEs covering multiple works, that is, for works by the same 
author and owned by the same copyright owner or owner of an exclusive 
right, the fee is 30 U.S. dollars, plus one dollar for each additional 
work covered beyond the first designated work.
    (2) Method of payment. See 37 CFR 201.33(e)(1),(2).
    (f) Public online access. Information contained in the Correction 
Notice of Intent to Enforce is available online in the Copyright Office 
History Documents (COHD) file through the Library of Congress electronic 
information system, available through the Internet. This file is 
available from computer terminals located in the Copyright Office itself 
or from terminals located in other parts of the Library of Congress 
through the Library of Congress Information System (LOCIS). Alternative 
ways to connect through Internet are the World Wide Web (WWW), using the 
Copyright Office Home Page at: http:/www.loc.gov/copyright; directly to 
LOCIS through the telnet address at locis.loc.gov; or the Library of 
Congress through gopher LC MARVEL and WWW which are available 24 hours a 
day. LOCIS is available 24 hours a day, Monday through Friday. For the 
purpose of researching the full Office record of Correction NIEs on the 
Internet, the Office has made online searching instructions accessible 
through the Copyright Office Home Page. Researchers can access them 
through the Library of Congress Home Page on the World Wide Web by 
selecting the copyright link. Select the menu item ``Copyright Office 
Records'' and/or ``URAA, GATT Amends U.S. law.'' Images of the complete 
Correction NIEs as filed will be stored on optical disk and will be 
available from the Copyright Office.

[[Page 410]]

    Appendix A to Sec. 201.34--Correction Notice of Intent To Enforce

                Correction of Notice of Intent To Enforce

1. Name of Copyright Owner (or owner of exclusive right) If this 
          correction notice is to cover multiple works, the author and 
          the rights owner must be the same for all works covered by the 
          notice.)

_______________________________________________________________________
2. Title(s) (or brief description)
    (a) Work No. 1--______
    Volume and Document Number: ______
    English Translation: ______
    (b) Work No. 2 (if applicable)--______
    Volume and Document Number: ______
    English Translation: ______
    (c) Work No. 3 (if applicable)--______
    Volume and Document Number: ______
    English Translation: ______
    (d) Work No. 4 (if applicable)--______
    Volume and Document Number: ______
    English Translation: ______
3. Statement of incorrect information on earlier NIE:

_______________________________________________________________________
4. Statement of correct (or previously omitted) information:

_______________________________________________________________________
Give the following only if incorrect or omitted on earlier NIE:

    (a) Type of work ______
    (b) Rights owned ______
    (c) Name of author (of entire work) ______
    (d) Source Country ______
    (e) Year of Publication (Approximate if precise year is unknown) 
______
    (f) Alternative titles ______
5. Explanation of error:

_______________________________________________________________________
6. Certification and Signature: I hereby certify that for each of the 
          work(s) listed above, I am the copyright owner, or the owner 
          of an exclusive right, or the owner's authorized agent, the 
          agency relationship having been constituted in a writing 
          signed by the owner before the filing of this notice, and that 
          the information given herein is true and correct to the best 
          of my knowledge.

_______________________________________________________________________
Name and Address (typed or printed):

_______________________________________________________________________
Telephone/Fax:

As agent for:

_______________________________________________________________________
Date and Signature:

_______________________________________________________________________


[62 FR 55739, Oct. 28, 1997]



Sec. 201.35  Initial Notice of Digital Transmission of Sound Recordings under Statutory License.

    (a) General. This section prescribes rules under which copyright 
owners shall receive initial notice of use of their sound recordings 
under statutory license under section 114(f) of title 17 of the United 
States Code, as amended by Public Law 104-39, 109, Stat. 336.
    (b) Definitions. (1) An Initial Notice of Digital Transmission of 
Sound Recordings under Statutory License is a notice to sound recording 
copyright owners of the use of their works under section 114(f), and 
required under this regulation to be filed by a Service in the Copyright 
Office.
    (2) A Service is an entity engaged in the digital transmission of 
sound recordings, pursuant to section 114(f) of title 17 of the United 
States Code.
    (c) Forms. The Copyright Office does not provide printed forms for 
the filing of Initial Notices.
    (d) Content. An ``Initial Notice of Digital Transmission of Sound 
Recordings under Statutory License'' shall be identified as such by 
prominent caption or heading, and shall include the following:
    (1) The full legal name of the Service commencing digital 
transmission of sound recordings under statutory license;
    (2) The full address, including a specific number and street name or 
rural route, of the place of business of the Service. A post office box 
or similar designation will not be sufficient except where it is the 
only address that can be used in that geographic location;
    (3) The telephone number and facsimile number of the Service; and
    (4) Information on how to gain access to the online website or home 
page of the Service, or where information may be posted under these 
regulations concerning the use of sound recordings under statutory 
license.
    (e) Signature. The Initial Notice shall include the signature of the 
appropriate officer or representative of the Service transmitting sound 
recordings under statutory license. The signature shall be accompanied 
by the printed or

[[Page 411]]

typewritten name and title of the person signing the Notice, and by the 
date of signature.
    (f) Filing. A Service shall file the Initial Notice with the 
Licensing Division of the Copyright Office prior to the first 
transmission of sound recordings under the license, or within 45 days of 
the effective date of this regulation. Each Notice shall be accompanied 
by a filing fee of $20. Initial Notices and amendments will be placed in 
the public records of the Licensing Division of the Copyright Office, 
and posted online where they will be accessible through the Copyright 
Office website. The address of the Licensing Division is: Library of 
Congress, Copyright Office, Licensing Division, 101 Independence Avenue, 
SE., Washington, DC 20557-6400.
    (g) Amendments. A Service shall file with the Licensing Division of 
the Copyright Office an amendment reporting a change in the information 
reported in the Initial Notice within 45 days of the change. An 
amendment shall be accompanied by a fee of $20, and shall:
    (1) Be clearly and prominently identified as ``An Amendment to an 
Initial Notice of Digital Transmission of Sound Recordings under 
Statutory License'';
    (2) Identify the specific Initial Notice intended to be amended, by 
Service name and filing date, so that it may be readily located in the 
records of the Copyright Office;
    (3) Clearly specify the nature of the amendment to be made; and
    (4) Be signed and dated in accordance with this section.

[63 FR 34296, June 24, 1998]



Sec. 201.36  Reports of Use of Sound Recordings under Statutory License.

    (a) General. This section prescribes rules under which Services 
shall serve copyright owners with notice of use of their sound 
recordings, what the content of that notice should be, and under which 
records of such use shall be kept and made available.
    (b) Definitions. (1) A Collective is a collection and distribution 
organization that is designated under the statutory license, either by 
settlement agreement reached under section 114(f)(1) or section 
114(f)(4)(A) and adopted pursuant to 37 CFR 251.63(b), or by decision of 
a Copyright Arbitration Royalty Panel (CARP) under section 114(f)(2) or 
section 114(f)(4)(B), or by an order of the Librarian pursuant to 17 
U.S.C. 802(f).
    (2) A Report of Use of Sound Recordings under Statutory License is a 
report required under this regulation to be provided by the Service 
transmitting sound recordings under statutory license.
    (3) A Service is an entity engaged in the digital transmission of 
sound recordings pursuant to section 114(f) of title 17 of the United 
States Code.
    (c) Service. Reports of Use shall be served upon Collectives that 
are identified in the records of the Licensing Division of the Copyright 
Office as having been designated under the statutory license, either by 
settlement agreement reached under section 114(f)(1) or section 
114(f)(4)(A) and adopted pursuant to 37 CFR 251.63(b), or by decision of 
a Copyright Arbitration Royalty Panel (CARP) under section 114(f)(2) or 
section 114(f)(4)(B), or by an order of the Librarian pursuant to 17 
U.S.C. 802(f). Reports of use shall be served, by certified or 
registered mail, or by other means if agreed upon by the respective 
Service and Collective, on or before the twentieth day after the close 
of each month, commencing with the month succeeding the month in which 
these regulations become effective.
    (d) Posting. In the event that no Collective is designated under the 
statutory license, or if all designated Collectives have terminated 
collection and distribution operations, a Service transmitting sound 
recordings under statutory license shall post and make available online 
its Reports of Use. Services shall post their Reports of Use online on 
or before the 20th day after the close of each month, and make them 
available to all sound recording copyright owners for a period of 90 
days. Services may require use of passwords for access to posted Reports 
of Use, but must make passwords available in a timely manner and free of 
charge or other restrictions. Services may predicate provision of a 
password upon:

[[Page 412]]

    (1) Information relating to identity, location and status as a sound 
recording copyright owner; and
    (2) A ``click-wrap'' agreement not to use information in the Report 
of Use for purposes other than royalty collection, royalty distribution, 
and determining compliance with statutory license requirements, without 
the express consent of the Service providing the Report of Use.
    (e) Content. A ``Report of Use of Sound Recordings under Statutory 
License'' shall be identified as such by prominent caption or heading, 
and shall include a Service's ``Intended Playlists'' for each channel 
and each day of the reported month.
    (1) The ``Intended Playlists'' shall include a consecutive listing 
of every recording scheduled to be transmitted, and shall contain the 
following information in the following order:
    (i) The name of the service or entity;
    (ii) The channel;
    (iii) The sound recording title;
    (iv) The featured recording artist, group, or orchestra;
    (v) The retail album title (or, in the case of compilation albums 
created for commercial purposes, the name of the retail album identified 
by the Service for purchase of the sound recording);
    (vi) The recording label;
    (vii) The catalog number;
    (viii) The International Standard Recording Code (ISRC) embedded in 
the sound recording, where available and feasible;
    (ix) The date of transmission; and
    (x) The time of transmission.
    (2) The Report of Use shall include a report of any system failure 
resulting in a deviation from the Intended Playlists of scheduled sound 
recordings. Such report shall include the date, time and duration of any 
such system failure.
    (f) Signature. Reports of use shall include a signed statement by 
the appropriate officer or representative of the Service attesting, 
under penalty of perjury, that the information contained in the Report 
is believed to be accurate and is maintained by the Service in its 
ordinary course of business. The signature shall be accompanied by the 
printed or typewritten name and title of the person signing the Report, 
and by the date of signature.
    (g) Format. Reports of use should be provided on a standard machine-
readable medium, such as diskette, optical disc, or magneto-optical 
disc, and should conform as closely as possible to the following 
specifications:
    (1) ASCII delimited format, using pipe characters as delimiter, with 
no headers or footers;
    (2) Carats should surround strings;
    (3) No carats should surround dates and numbers;
    (4) Dates should be indicated by: MM/DD/YYYY;
    (5) Times should be based on a 24-hour clock: HH:MM:SS;
    (6) A carriage return should be at the end of each line; and
    (7) All data for one record should be on a single line.
    (h) Confidentiality. Copyright owners, their agents and Collectives 
shall not disseminate information in the Reports of Use to any persons 
not entitled to it, nor utilize the information for purposes other than 
royalty collection and distribution, and determining compliance with 
statutory license requirements, without express consent of the Service 
providing the Report of Use.
    (i) Documentation. All compulsory licensees shall, for a period of 
at least three years from the date of service or posting of the Report 
of Use, keep and retain a copy of the Report of Use. For reporting 
periods from February 1, 1996, through August 31, 1998, the Service 
shall serve upon all designated Collectives and retain for a period of 
three years from the date of transmission records of use indicating 
which sound recordings were performed and the number of times each 
recording was performed, but is not required to produce full Reports of 
Use or Intended Playlists for those periods.

[63 FR 34296, June 24, 1998]



Sec. 201.37  Designated collection and distribution organizations for records of use of sound recordings under statutory license.

    (a) General. This section prescribes rules under which records of 
use shall be collected and distributed under section 114(f) of title 17 
of the United States Code, as amended by Public Law

[[Page 413]]

104-39, 109 Stat. 336, and under which records of such use shall be kept 
and made available.
    (b) Definition. (1) A Collective is a collection and distribution 
organization that is designated under the statutory license, either by 
settlement agreement reached under section 114(f)(1) or section 
114(f)(4)(A) and adopted pursuant to 37 CFR 251.63(b), or by decision of 
a Copyright Arbitration Royalty Panel (CARP) under section 114(f)(2) or 
section 114(f)(4)(B), or by an order of the Librarian pursuant to 17 
U.S.C. 802(f).
    (2) A Service is an entity engaged in the digital transmission of 
sound recordings pursuant to section 114(f) of title 17 of the United 
States Code.
    (c) Notice of Designation as Collective under Statutory License. A 
Collective shall file with the Licensing Division of the Copyright 
Office and post and make available online a ``Notice of Designation as 
Collective under Statutory License,'' which shall be identified as such 
by prominent caption or heading, and shall contain the following 
information:
    (1) The Collective name, address, telephone number and facsimile 
number;
    (2) A statement that the Collective has been designated for 
collection and distribution of performance royalties under statutory 
license for digital transmission of sound recordings; and
    (3) Information on how to gain access to the online website or home 
page of the Collective, where information may be posted under these 
regulations concerning the use of sound recordings under statutory 
license. The address of the Licensing Division is: Library of Congress, 
Copyright Office, Licensing Division, 101 Independence Avenue, SE., 
Washington, DC 20557-6400.
    (d) Annual Report. The Collective will post and make available 
online, for the duration of one year, an Annual Report on how the 
Collective operates, how royalties are collected and distributed, and 
what the Collective spent that fiscal year on administrative expenses.
    (e) Inspection of Reports of Use by Copyright Owners. The Collective 
shall make copies of the Reports of Use for the preceding three years 
available for inspection by any sound recording copyright owner, without 
charge, during normal office hours upon reasonable notice. The 
Collective shall predicate inspection of Reports of Use upon information 
relating to identity, location and status as a sound recording copyright 
owner, and the copyright owner's written agreement not to utilize the 
information for purposes other than royalty collection and distribution, 
and determining compliance with statutory license requirements, without 
express consent of the Service providing the Report of Use. The 
Collective shall render its best efforts to locate copyright owners in 
order to make available records of use, and such efforts shall include 
searches in Copyright Office public records and published directories of 
sound recording copyright owners.
    (f) Confidentiality. Copyright owners, their agents, and Collectives 
shall not disseminate information in the Reports of Use to any persons 
not entitled to it, nor utilize the information for purposes other than 
royalty collection and distribution, and determining compliance with 
statutory license requirements, without express consent of the Service 
providing the Report of Use.
    (g) Termination and dissolution. If a Collective terminates its 
collection and distribution operations prior to the close of its term of 
designation, the Collective shall notify the Copyright Office, and all 
Services transmitting sound recordings under statutory license, by 
certified or registered mail. The dissolving Collective shall provide 
each such Service with information identifying the copyright owners it 
has served.

[63 FR 34297, June 24, 1998]



Sec. 201.38  Designation of agent to receive notification of claimed infringement.

    (a) General. This section prescribes interim rules under which 
service providers may provide the Copyright Office with designations of 
agents to receive notification of claimed infringement under section 
512(c)(2) of title 17 of the United States Code, as amended. These 
interim rules shall remain in effect until more comprehensive rules

[[Page 414]]

have been promulgated following a notice of proposed rulemaking and 
receipt of public comments.
    (b) Forms. The Copyright Office does not provide printed forms for 
filing an Interim Designation of Agent to Receive Notification of 
Claimed Infringement.
    (c) Content. An ``Interim Designation of Agent to Receive 
Notification of Claimed Infringement'' shall be identified as such by 
prominent caption or heading, and shall include the following 
information with respect to a single service provider:
    (1) The full legal name and address of the service provider;
    (2) All names under which the service provider is doing business;
    (3) The name of the agent designated to receive notification of 
claimed infringement;
    (4) The full address, including a specific number and street name or 
rural route, of the agent designated to receive notification of claimed 
infringement. A post office box or similar designation will not be 
sufficient except where it is the only address that can be used in that 
geographic location;
    (5) The telephone number, facsimile number, and electronic mail 
address of the agent designated to receive notification of claimed 
infringement.
    (d) Signature. The Interim Designation of Agent to Receive 
Notification of Claimed Infringement shall include the signature of the 
appropriate officer or representative of the service provider 
designating the agent. The signature shall be accompanied by the printed 
or typewritten name and title of the person signing the Notice, and by 
the date of signature.
    (e) Filing. A service provider may file the Interim Designation of 
Agent to Receive Notification of Claimed Infringement with the Public 
Information Office of the Copyright Office, Room LM-401, James Madison 
Memorial Building, Library of Congress, 101 Independence Avenue, SE, 
Washington, DC, during normal business hours, 9 am to 5 pm. If mailed, 
the Interim Designation should be addressed to: Copyright GC/I&R, PO Box 
70400, Southwest Station, Washington, DC 20024. Each designation shall 
be accompanied by a filing fee of $20.00. Designations and amendments 
will be posted online on the Copyright Office's website (http://
www.loc.gov/copyright).
    (f) Amendments. In the event of a change in the information reported 
in an Interim Designation of Agent to Receive Notification of Claimed 
Infringement, a service provider shall file with the Public Information 
Office of the Copyright Office an amended Interim Designation of Agent 
to Receive Notification of Claimed Infringement, containing the current 
information required by section 201.38(c). The amended Interim 
Designation shall be signed in accordance with the requirements of 
section 201.38(d) and shall be accompanied by a fee of $20.00.
    (g) Termination and dissolution. If a service provider terminates 
its operations, the entity shall notify the Copyright Office by 
certified or registered mail.

[63 FR 59234, Nov. 3, 1998]



Sec. 201.39  Notice to Libraries and Archives of Normal Commercial Exploitation or Availability at Reasonable Price.

    (a) General. This section prescribes rules under which copyright 
owners or their agents may provide notice to qualified libraries and 
archives (including a nonprofit educational institution that functions 
as such) that a published work in its last 20 years of copyright 
protection is subject to normal commercial exploitation, or that a copy 
or phonorecord of the work can be obtained at a reasonable price, for 
purposes of section 108(h)(2) of title 17 of the United States Code.
    (b) Format. The Copyright Office provides a required format for a 
Notice to Libraries and Archives of Normal Commercial Exploitation or 
Availability at Reasonable Price, and for continuation sheets for group 
notices. The required format is set out in Appendix A to this section, 
and are available from the Copyright Office website (http://
lcweb.loc.gov/copyright). The Copyright Office does not provide printed 
forms. The Notice shall be in English (except for an original title, 
which may be in another language), typed or printed legibly in dark ink, 
and shall be provided on 8\1/2\ x 11 inch white paper with a one-inch 
margin.

[[Page 415]]

    (c) Required content. A ``Notice to Libraries and Archives of Normal 
Commercial Exploitation or Availability at Reasonable Price'' shall be 
identified as such by prominent caption or heading, and shall include 
the following:
    (1) The acronym NLA in capital, and preferably bold, letters in the 
top right-hand corner of the page;
    (2) A check-box just below the acronym NLA indicating whether 
continuation sheets for additional works are attached;
    (3) The title of the work, or if untitled, a brief description of 
the work;
    (4) The author(s) of the work;
    (5) The type of work (e.g., music, motion picture, book, photograph, 
illustration, map, article in a periodical, painting, sculpture, sound 
recording, etc.);
    (6) The edition, if any (e.g., first edition, second edition, 
teacher's edition) or version, if any (e.g., orchestral arrangement, 
translation, French version). If there is no information relating to the 
edition or version of the work, the notice should so state;
    (7) The year of first publication;
    (8) The year the work first secured federal copyright through 
publication with notice or registration as an unpublished work;
    (9) The copyright renewal registration number (except this 
information is not required for foreign works in which copyright is 
restored pursuant to 17 U.S.C. 104A);
    (10) The name of the copyright owner (or the owner of exclusive 
rights);
    (11) If the copyright owner is not the owner of all rights, a 
specification of the rights owned (e.g., the right to reproduce/
distribute/publicly display/publicly perform the work or to prepare a 
derivative work);
    (12) The name, address, telephone number, fax number (if any) and e-
mail address (if any) of the person or entity that the Copyright Office 
should contact concerning the Notice;
    (13) The full legal name, address, telephone number, fax number (if 
any) and e-mail address (if any) of the person or entity that Libraries 
and Archives may contact concerning the work's normal commercial 
exploitation or availability at reasonable price; and
    (14) A declaration made under penalty of perjury that the work 
identified is subject to normal commercial exploitation, or that a copy 
or phonorecord of the work is available at a reasonable price.
    (d) Additional content. A Notice to Libraries and Archives of Normal 
Commercial Exploitation or Availability at Reasonable Price may include 
the following:
    (1) The original copyright registration number of the work; and
    (2) Additional information concerning the work's normal commercial 
exploitation or availability at a reasonable price.
    (e) Signature. The Notice to Libraries and Archives of Normal 
Commercial Exploitation or Availability at Reasonable Price shall 
include the signature of the copyright owner or its agent. The signature 
shall be accompanied by the printed or typewritten name and title of the 
person signing the Notice, and by the date of signature.
    (f) Multiple works. A Notice to Libraries and Archives may be filed 
for more than one work. The first work shall be identified using the 
format required for all Notices to Libraries and Archives. Each 
additional work in the group must be identified on a separate 
continuation sheet. The required format for the continuation sheet is 
set out in Appendix B to this section, and is available from the 
Copyright Office website (http://lcweb.loc.gov/copyright). A group 
filing is permitted provided that:
    (1) All the works are by the same author;
    (2) All the works are owned by the same copyright owner or owner of 
the exclusive rights therein. If the claimant is not owner of all 
rights, the claimant must own the same rights with respect to all works 
in the group;
    (3) All the works first secured federal copyright in the same year, 
through either publication with notice or registration as an unpublished 
work;
    (4) All the works were first published in the same year;
    (5) The person or entity that the Copyright Office should contact 
concerning the Notice is the same for all the works; and

[[Page 416]]

    (6) The person or entity that Libraries and Archives may contact 
concerning the work's normal commercial exploitation or availability at 
reasonable price is the same for all the works.
    (g) Filing--(1) Method of filing. The Notice to Libraries and 
Archives of Normal Commercial Exploitation or Availability at Reasonable 
Price should be addressed to: NLA, Library of Congress, Copyright 
Office, 101 Independence Avenue, SE., Washington, DC 20559-6000. If 
delivered by hand, it should be delivered during normal business hours, 
8:30 a.m. to 5:00 p.m., to the Public Information Office, Room LM-401, 
James Madison Memorial Building, Library of Congress, 101 Independence 
Avenue, SE., Washington, DC.
    (2) Amount. Each Notice shall be accompanied by a filing fee of $50, 
and (if more than one work is identified in the Notice), $20 for each 
additional work.
    (3) Method of payment--(i) Checks, money orders, or bank drafts. The 
Copyright Office will accept checks, money orders, or bank drafts made 
payable to the Register of Copyrights. Remittances must be redeemable 
without service or exchange fees through a United States institution, 
must be payable in United States dollars, and must be imprinted with 
American Banking Association routing numbers. Postal money orders that 
are negotiable only at a post office and international money orders are 
not acceptable. CURRENCY IS NOT ACCEPTED.
    (ii) Copyright Office Deposit Account. The Copyright Office 
maintains a system of Deposit Accounts for the convenience of those who 
frequently use its services. The system allows an individual or firm to 
establish a Deposit Account in the Copyright Office and to make advance 
deposits into that account. Deposit Account holders can charge copyright 
fees against the balance in their accounts instead of sending separate 
remittances with each request for service. For information on Deposit 
Accounts, visit the Copyright Office website or write: Copyright Office, 
Library of Congress, Washington, DC 20559-6000, and request a copy of 
Circular 5, ``How to Open and Maintain a Deposit Account in the 
Copyright Office.''

 Appendix A to Sec. 201.39--Required Format of Notice to Libraries and 
Archives of Normal Commercial Exploitation or Availability at Reasonable 
                                  Price

NLA
{time}  Check box if continuation sheets for additional works are 
          attached.

 Notice to Libraries and Archives of Normal Commercial Exploitation or 
                    Availability at Reasonable Price

    1. Title of the work (or, if untitled, a brief description of the 
work): ____________________.
    2. Author(s) of the work: ____________________.
    3. Type of work (e.g. music, motion picture, book, photograph, 
illustration, map, article in a periodical, painting, sculpture, sound 
recording, etc.): ____________________.
    4. Edition, if any (e.g., first edition, second edition, teacher's 
edition) or version, if any (e.g., orchestral arrangement, English 
translation of French text). If there is no information available 
relating to the edition or version of the work, the Notice should state, 
``No information available'': ____________________.
    5. Year of first publication: __________.
    6. Year the work first secured federal copyright through publication 
with notice or registration as an unpublished work: __________.
    7. Copyright renewal registration number (not required for foreign 
works restored under 17 U.S.C. 104A): __________.
    8. Full legal name of the copyright owner (or the owner of exclusive 
rights): __________.
    9. The person or entity identified in space #8 owns:
{time}  all rights.
{time}  the following rights (e.g., the right to reproduce/distribute/
          publicly display/publicly perform the work or to prepare a 
          derivative work): __________.
    10. Person or entity that the Copyright Office should contact 
concerning the Notice:
{time}  Name:___________________________________________________________
{time}  Address:________________________________________________________
{time}  Telephone:______________________________________________________
{time}  Fax number (if any):____________________________________________
{time}  E-mail address (if any):________________________________________
    11. Person or entity that libraries and archives may contact 
concerning the work's normal commercial exploitation or availability at 
a reasonable price:
{time}  Name:___________________________________________________________
{time}  Address:________________________________________________________
{time}  Telephone:______________________________________________________
{time}  Fax number (if any):____________________________________________
{time}  E-mail address (if any):________________________________________

                     Additional Content (OPTIONAL):

    12. Original copyright registration number: ____________________

[[Page 417]]

    13. Additional information concerning the work's normal commercial 
exploitation or availability at a reasonable price: ____________________

                              Declaration:

    I declare under penalty of perjury under the laws of the United 
States:
{time}  that each work identified in this notice is subject to normal 
          commercial exploitation.
{time}  that a copy or phonorecord of each work identified in this 
          notice is available at a reasonable price.
Signature:______________________________________________________________
Date:___________________________________________________________________
{time}  Typed or printed name:__________________________________________
{time}  Title:__________________________________________________________

    Appendix B to Sec. 201.39--Required Format for Continuation Sheet

NLA CON
Page ____of ____Pages.

 Continuation Sheet for NLA Notice to Libraries and Archives of Normal 
       Commercial Exploitation or Availability at Reasonable Price

    1. Title of the work (or, if untitled, a brief description of the 
work): ____________________.
    2. Type of work (e.g. music, motion picture, book, photograph, 
illustration, map, article in a periodical, painting, sculpture, sound 
recording, etc.): ____________________.
    3. Edition, if any (e.g., first edition, second edition, teacher's 
edition) or version, if any (e.g., orchestral arrangement, English 
translation of French text). If there is no information available 
relating to the edition or version of the work, the Notice should state, 
``No information available'': ____________________.
    4. Copyright renewal registration number (not required for foreign 
works restored under 17 U.S.C. 104A): ____________________.

                     Additional Content (OPTIONAL):

    5. Original copyright registration number: ____________________.
    6. Additional information concerning the work's normal commercial 
exploitation or availability at a reasonable price: 
____________________.

[63 FR 71787, Dec. 30, 1998]



PART 202--REGISTRATION OF CLAIMS TO COPYRIGHT--Table of Contents




Sec.
202.1  Material not subject to copyright.
202.2  Copyright notice.
202.3  Registration of copyright.
202.4  Effective date of registration.
202.5--202.9  [Reserved]
202.10  Pictorial, graphic, and sculptural works.
202.11  Architectural works
202.12  Restored copyrights.
202.13--202.16  [Reserved]
202.17  Renewals.
202.18  [Reserved]
202.19  Deposit of published copies or phonorecords for the Library of 
          Congress.
202.20  Deposit of copies and phonorecords for copyright registration.
202.21  Deposit of identifying material instead of copies.
202.22  Acquisition and deposit of unpublished television transmission 
          programs.
202.23  Full-term retention of copyright deposits.

Appendix A to Part 202--Technical Guidelines Regarding Sound Physical 
          Condition
Appendix B to Part 202--``Best Edition'' of Published Copyrighted Works 
          for the Collections of the Library of Congress

    Authority: 17 U.S.C. 702.



Sec. 202.1  Material not subject to copyright.

    The following are examples of works not subject to copyright and 
applications for registration of such works cannot be entertained:
    (a) Words and short phrases such as names, titles, and slogans; 
familiar symbols or designs; mere variations of typographic 
ornamentation, lettering or coloring; mere listing of ingredients or 
contents;
    (b) Ideas, plans, methods, systems, or devices, as distinguished 
from the particular manner in which they are expressed or described in a 
writing;
    (c) Blank forms, such as time cards, graph paper, account books, 
diaries, bank checks, scorecards, address books, report forms, order 
forms and the like, which are designed for recording information and do 
not in themselves convey information;
    (d) Works consisting entirely of information that is common property 
containing no original authorship, such as, for example: Standard 
calendars, height and weight charts, tape measures and rulers, schedules 
of sporting events, and lists or tables taken from public documents or 
other common sources.

[[Page 418]]

    (e) Typeface as typeface.

[24 FR 4956, June 18, 1959, as amended at 38 FR 3045, Feb. 1, 1973; 57 
FR 6202, Feb. 21, 1992]



Sec. 202.2  Copyright notice.

    (a) General. (1) With respect to a work published before January 1, 
1978, copyright was secured, or the right to secure it was lost, except 
for works seeking ad interim copyright, at the date of publication, 
i.e., the date on which copies are first placed on sale, sold, or 
publicly distributed, depending upon the adequacy of the notice of 
copyright on the work at that time. The adequacy of the copyright notice 
for such a work is determined by the copyright statute as it existed on 
the date of first publication.
    (2) If before January 1, 1978, publication occurred by distribution 
of copies or in some other manner, without the statutory notice or with 
an inadequate notice, as determined by the copyright statute as it 
existed on the date of first publication, the right to secure copyright 
was lost. In such cases, copyright cannot be secured by adding the 
notice to copies distributed at a later date.
    (3) Works first published abroad before January 1, 1978, other than 
works for which ad interim copyright has been obtained, must have borne 
an adequate copyright notice. The adequacy of the copyright notice for 
such works is determined by the copyright statute as it existed on the 
date of first publication abroad.
    (b) Defects in notice. Where the copyright notice on a work 
published before January 1, 1978, does not meet the requirements of 
title 17 of the United States Code as it existed on December 31, 1977, 
the Copyright Office will reject an application for copyright 
registration. Common defects in the notice include, among others the 
following:
    (1) The notice lacks one or more of the necessary elements (i.e., 
the word ``Copyright,'' the abbreviation ``Copr.'', or the symbol 
, or, in the case of a sound recording, the symbol 
; the name of the copyright proprietor, or, in the case of a 
sound recording, the name, a recognizable abbreviation of the name, or a 
generally known alternative designation, of the copyright owner; and, 
when required, the year date of publication);
    (2) The elements of the notice are so dispersed that a necessary 
element is not identified as a part of the notice; in the case of a 
sound recording, however, if the producer is named on the label or 
container, and if no other name appears in conjunction with the notice, 
his name will be considered a part of the notice;
    (3) The notice is not in one of the positions prescribed by law;
    (4) The notice is in a foreign language;
    (5) The name in the notice is that of someone who had no authority 
to secure copyright in his name;
    (6) The year date in the copyright notice is later than the date of 
the year in which copyright was actually secured, including the 
following cases:
    (i) Where the year date in the notice is later than the date of 
actual publication;
    (ii) Where copyright was first secured by registration of a work in 
unpublished form, and copies of the same work as later published without 
change in substance bear a copyright notice containing a year date later 
than the year of unpublished registration;
    (iii) Where a book or periodical published abroad, for which ad 
interim copyright has been obtained, is later published in the United 
States without change in substance and contains a year date in the 
copyright notice later than the year of first publication abroad:

Provided, however, That in each of the three foregoing types of cases, 
if the copyright was actually secured not more than one year earlier 
than the year date in the notice, registration may be considered as a 
doubtful case.
    (7) A notice is permanently covered so that it cannot be seen 
without tearing the work apart;
    (8) A notice is illegible or so small that it cannot be read without 
the aid of a magnifying glass: Provided, however, That where the work 
itself requires magnification for its ordinary use (e.g., a microfilm, 
microcard or motion picture) a notice which will be readable when so 
magnified, will not constitute a reason for rejection of the claim;

[[Page 419]]

    (9) A notice is on a detachable tag and will eventually be detached 
and discarded when the work is put in use;
    (10) A notice is on the wrapper or container which is not a part of 
the work and which will eventually be removed and discarded when the 
work is put to use; the notice may be on a container which is designed 
and can be expected to remain with the work;
    (11) The notice is restricted or limited exclusively to an 
uncopyrightable element, either by virtue of its position on the work, 
by the use of asterisks, or by other means.

[24 FR 4956, June 18, 1959; 24 FR 6163, July 31, 1959, as amended at 37 
FR 3055, Feb. 11, 1972; 46 FR 33249, June 29, 1981; 46 FR 34329, July 1, 
1981; 60 FR 34168, June 30, 1995]



Sec. 202.3  Registration of copyright.

    (a) General. (1) This section prescribes conditions for the 
registration of copyright, and the application to be made for 
registration under sections 408 and 409 of title 17 of the United States 
Code, as amended by Pub. L. 94-553.
    (2) For the purposes of this section, the terms audiovisual work, 
compilation, copy, derivative work, device, fixation, literary work, 
motion picture, phonorecord, pictorial, graphic and sculptural works, 
process, sound recording, and their variant forms, have the meanings set 
forth in section 101 of title 17. The term author includes an employer 
or other person for whom a work is ``made for hire'' under section 101 
of title 17.
    (3) For the purposes of this section, a copyright claimant is 
either:
    (i) The author of a work;
    (ii) A person or organization that has obtained ownership of all 
rights under the copyright initially belonging to the author.1
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    1  This category includes a person or organization that has 
obtained, from the author or from an entity that has obtained ownership 
of all rights under the copyright initially belonging to the author, the 
contractual right to claim legal title to the copyright in an 
application for copyright registration.
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    (b) Administrative classification and application forms--(1) Classes 
of works. For the purpose of registration, the Register of Copyrights 
has prescribed the classes of works in which copyright may be claimed. 
These classes, and examples of works which they include, are as follows:
    (i) Class TX: Nondramatic literary works. This class includes all 
published and unpublished nondramatic literary works. Examples: Fiction; 
nonfiction; poetry; textbooks; reference works; directories; catalogs; 
advertising copy; and compilations of information.
    (ii) Class PA: Works of the performing arts. This class includes all 
published and unpublished works prepared for the purpose of being 
performed directly before an audience or indirectly by means of a device 
or process. Examples: Musical works, including any accompanying words; 
dramatic works, including any accompanying music; pantomimes and 
choreographic works; and motion pictures and other audiovisual works.
    (iii) Class VA: Works of the visual arts. This class includes all 
published and unpublished pictorial, graphic, and sculptural works. 
Examples: Two dimensional and three dimensional works of the fine, 
graphic, and applied arts; photographs; prints and art reproductions; 
maps, globes, and charts; technical drawings, diagrams, and models; and 
pictorial or graphic labels and advertisements.
    (iv) Class SR: Sound recordings. This class includes all published 
and unpublished sound recordings fixed on and after February 15, 1972. 
Claims to copyright in literary, dramatic, and musical works embodied in 
phonorecords may also be registered in this class under paragraph (b)(3) 
of this section if:
    (A) Registration is sought on the same application for both a 
recorded literary, dramatic, or musical work and a sound recording;
    (B) The recorded literary, dramatic, or musical work and the sound 
recording are embodied in the same phonorecord; and
    (C) The same claimant is seeking registration of both the recorded 
literary, dramatic, or musical work and the sound recording.
    (v) Class SE: Serials. A serial is a work issued or intended to be 
issued in successive parts bearing numerical or chronological 
designations and intended to be continued indefinitely.

[[Page 420]]

This class includes periodicals; newspapers; annuals; and the journals, 
proceedings, transactions, etc. of societies.
    (2) Application forms. For the purpose of registration, The Register 
of Copyrights has prescribed the basic forms to be used for all 
applications submitted on and after January 1, 1978. Each form 
corresponds to a class set forth in paragraph (b)(1) of this section and 
is so designated (``Form TX''; ``Form PA''; ``Form VA''; ``Form SR''; 
``Form SE''; and ``Form SE/Group''). Copies of the forms are available 
free upon request to the Public Information Office, Library of Congress, 
Copyright Office, 101 Independence Avenue, SE., Washington, DC 20559-
6000. Applications should be submitted in the class most appropriate to 
the nature of the authorship in which copyright is claimed. In the case 
of contributions to collective works, applications should be submitted 
in the class representing the copyrightable authorship in the 
contribution. In the case of derivative works, applications should be 
submitted in the class most appropriately representing the copyrightable 
authorship involved in recasting, transforming, adapting, or otherwise 
modifying the preexisting work. In cases where a work contains elements 
of authorship in which copyright is claimed which fall into two or more 
classes, the application should be submitted in the class most 
appropriate to the type of authorship that predominates in the work as a 
whole. However, in any case where registration is sought for a work 
consisting of or including a sound recording in which copyright is 
claimed 2 the application shall be submitted on Form SR.
---------------------------------------------------------------------------

    2 A sound recording does not include the sounds 
accompanying a motion picture or other audiovisual work (17 U.S.C. 101). 
For this purpose, ``accompanying'' does not require physical integration 
in the same copy. Accordingly, registration may be made for a motion 
picture or audiovisual kit in Class PA and that registration will cover 
the sounds embodied in the ``sound track'' of the motion picture or on 
disks, tapes, or the like included in the kit. Separate application in 
Class SR is not appropriate for these elements.
---------------------------------------------------------------------------

    (3) Registration as a single work. (i) For the purpose of 
registration on a single application and upon payment of a single 
registration fee, the following shall be considered a single work:
    (A) In the case of published works: All copyrightable elements that 
are otherwise recognizable as self-contained works, that are included in 
a single unit of publication, and in which the copyright claimant is the 
same; and
    (B) In the case of unpublished works: all copyrightable elements 
that are otherwise recognizable as self-contained works, and are 
combined in a single unpublished ``collection.'' For these purposes, a 
combination of such elements shall be considered a ``collection'' if:
    (1) The elements are assembled in an orderly form;
    (2) The combined elements bear a single title identifying the 
collection as a whole;
    (3) The copyright claimant in all of the elements, and in the 
collection as a whole, is the same; and
    (4) All of the elements are by the same author, or, if they are by 
different authors, at least one of the authors has contributed 
copyrightable authorship to each element.

Registration of an unpublished ``collection'' extends to each 
copyrightable element in the collection and to the authorship, if any, 
involved in selecting and assembling the collection.
    (ii) In the case of applications for registration made under 
paragraphs (b)(3) through (b)(8) of this section, the ``year in which 
creation of this work was completed'', as called for by the application, 
means the latest year in which the creation of any copyrightable element 
was completed.
    (4) Group registration of related works: Automated databases. (i) 
Pursuant to the authority granted by section 408(c)(1) of title 17 of 
the United States Code, the Register of Copyrights has determined that, 
on the basis of a single application, deposit, and filing fee, a single 
registration may be made for automated databases and their updates or 
other derivative versions that are original works of authorship, if, 
where a database (or updates or other revisions thereof), if 
unpublished, is (or are) fixed, or if published is (or are) published 
only in the form of machine-

[[Page 421]]

readable copies, all of the following conditions are met:
    (A) All of the updates or other revisions are owned by the same 
copyright claimant;
    (B) All of the updates or other revisions have the same general 
title;
    (C) All of the updates or other revisions are similar in their 
general content, including their subject;
    (D) All of the updates or other revisions are similar in their 
organization;
    (E) Each of the updates or other revisions as a whole, if published 
before March 1, 1989, bears a statutory copyright notice as first 
published and the name of the owner of copyright in each work (or an 
abbreviation by which the name can be recognized, or a generally known 
alternative designation of the owner) was the same in each notice;
    (F) Each of the updates or other revisions if published was first 
published, or if unpublished was first created, within a three-month 
period in a single calendar year; and
    (G) The deposit accompanying the application complies with 
Sec. 202.20(c)(2)(vii)(D).
    (ii) A single registration may be made on one application for both a 
database published on a single date, or if unpublished, created on a 
single date, and also for its copyrightable revisions, including updates 
covering a three-month period in a single calendar year. An application 
for group registration of automated databases under section 408(c)(1) of 
title 17 and this subsection shall consist of:
    (A) A Form TX, completed in accordance with the basic instructions 
on the form and the Special Instructions for Group Registration of an 
Automated Database and its Updates or Revisions;
    (B) The appropriate filing fee, as required in Sec. 201.3(c); and
    (C) The deposit required by Sec. 202.20(c)(2)(vii)(D).
    (5) Group registration of related serials. (i) Pursuant to the 
authority granted by section 408(c)(1) of title 17 of the United States 
Code, the Register of Copyrights has determined that, on the basis of a 
single application, deposit, and filing fee, a single registration may 
be made for a group of serials published at intervals of a week or 
longer if all the following conditions are met:
    (A) The Library of Congress receives two complimentary copies 
promptly after publication of each issue of the serial.
    (B) The single application covers no more than the issues published 
in a given three month period.
    (C) The claim to copyright for which registration is sought is in 
the collective work.
    (D) The collective work authorship is essentially new material that 
is being published for the first time.
    (E) The collective work is a work made for hire.
    (F) The author(s) and claimant(s) of the collective work are the 
same person(s) or organization(s).
    (G) Each issue must have been created no more than one year prior to 
publication and all issues included in the group registration must have 
been published in the same calendar year.
    (ii) To be eligible for group registration of serials, publishers 
must submit a letter affirming that two complimentary subscriptions to 
the particular serial have been entered for the Library of Congress. The 
letter should be sent to Library of Congress,`Group Periodicals 
Registration,' Washington, DC 20540-4161.
    (iii) The complimentary subscription copies must be addressed to: 
Group Periodicals Registration Library of Congress, Washington, DC 
20540-4161.
    (iv) The Register of Copyrights may revoke the privilege of group 
registration of serials for any publisher who fails to submit the 
required complimentary subscription copies promptly after publication of 
each issue. Notice of revocation of the group registration of serials 
privilege shall be given in writing and shall be sent to the individual 
person or organization applying for group registration of serials, at 
the last address shown in the records of the Copyright Office. A notice 
of revocation may be given at any time if the requirements of the 
regulation are not satisfied, but it shall state a specific date of 
revocation that is at least 30 days later than the date the notice is 
mailed.
    (v) To apply for group registration of serials under section 
408(c)(1) of title 17 and this subsection, the following

[[Page 422]]

items must be sent together in the same package:
    (A) A completed Form SE/Group giving the requested information.
    (B) The appropriate filing fee, as required in Sec. 201.3(c), for 
each issue covered by the group registration.
    (C) A deposit consisting of one complete copy of the best edition of 
each issue included in the group registration.
    (6) Group registration of daily newspapers. (i) Pursuant to the 
authority granted by 17 U.S.C. 408(c)(1), the Register of Copyrights has 
determined that, on the basis of a single application, microfilm 
deposit, and filing fee, a single registration may be made for a group 
of daily newspapers published in a microfilm format if the following 
conditions are met:
    (A) Registration covers a full month of issues of the same newspaper 
title published with issue dates in one calendar month.
    (B) A completed GDN application form is submitted.
    (C) A publication date is specified designating the first and last 
day that issues in the group were published.
    (D) A deposit is made of positive, 35mm silver halide microfilm 
meeting the Library's best edition criteria that includes all issues 
published as final editions in the designated calendar month. In 
addition to the final edition of the daily newspaper, the claim to 
copyright and the deposit may also include earlier editions published 
the same day in a given metropolitan area served by the newspaper, but 
may not include national or regional editions distributed beyond a given 
metropolitan area.
    (E) The appropriate filing fee, as required in Sec. 201.3(c), is 
included with the submission, or charged to an active deposit account.
    (F) Registration is sought within three months after the publication 
date of the last issue included in the group.
    (ii) As used in this regulation, newspapers means serials which are 
classified as newspapers under the policy document ``Newspapers Received 
Currently in the Library of Congress,''which is administered by the 
Newspaper Section of the Serials & Government Publications Division of 
the Library of Congress. In general, serials classified as newspapers 
are serials mainly designed to be a primary source of written 
information on current events, either local, national, or international 
in scope. A newspaper contains a broad range of news on all subjects and 
activities and is not limited to any specific subject matter. Newspapers 
are intended either for the general public or for a particular ethnic, 
cultural, or national group.
    (7) Group registration of contributions to periodicals. (i) As 
provided by section 408(c)(2) of title 17 of the United States Code, as 
amended by Pub. L. 94-553, a single registration, on the basis of a 
single application, deposit, and registration fee, may be made for a 
group of works if all of the following conditions are met:
    (A) All of the works are by the same author;
    (B) The author of each work is an individual, and not an employer or 
other person for whom the work was made for hire;
    (C) Each of the works first published as a contribution to a 
periodical (including newspapers) within a twelve-month period;3
---------------------------------------------------------------------------

    3 This does not require that each of the works must have been 
first published during the same calendar year; it does require that, to 
be grouped in a single application, the earliest and latest 
contributions must not have been first published more than twelve months 
apart.
---------------------------------------------------------------------------

    (D) Each of the works, if first published before March 1, 1989, bore 
a separate copyright notice, and the name of the owner of copyright in 
each work (or an abbreviation by which the name can be recognized, or a 
generally known alternative designation of the owner) was the same in 
each notice; and
    (E) The deposit accompanying the application consists of one copy of 
the entire issue of the periodical, or of the entire section in the case 
of a newspaper, in which each contribution was first published.
    (ii) An application for group registration under section 408(c)(2) 
of title 17 and this Sec. 202.3(b)(7) shall consist of:
    (A) A basic application for registration on Form TX, Form PA, or 
Form

[[Page 423]]

VA, \4\ which shall contain the information required by the form and its 
accompanying instructions;
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    \4\ The basic application should be filed in the class appropriate 
to the nature of authorship in the majority of the contributions. 
However, if any of the contributions consists preponderantly of 
nondramatic literary material that is in the English language, the basic 
application for the entire group should be submitted on Form TX.
---------------------------------------------------------------------------

    (B) An adjunct form prescribed by the Copyright Office and 
designated ``Adjunct Application for Copyright Registration for a Group 
of Contributions to Periodicals (Form GR/CP)'', which shall contain the 
information required by the form and its accompanying instructions; and
    (C) The appropriate filing fee, as required in Sec. 201.3(c), and 
the deposit required by paragraph (b)(7)(i)(E) of this section.
    (8) Group registration of daily newsletters. Pursuant to the 
authority granted by 17 U.S.C. 408(c)(1), the Register of Copyrights has 
determined that, on the basis of a single application, deposit, and 
filing fee, a single registration may be made for a group of two or more 
issues of a daily newsletter if the following conditions are met:
    (i) As used in this regulation, daily newsletter means a serial 
published and distributed by mail or electronic media (online or 
telefacsimile), or in any medium including but not limited to, paper, 
cassette tape, diskette or CD-ROM). Publication must occur on at least 
two days each week and the newsletter must contain news or information 
of interest chiefly to a special group (for example, trade and 
professional associations, corporate in-house groups, schools, colleges, 
or churches).
    (ii) The works must be essentially all new collective works or all 
new issues that have not been published before.
    (iii) Each issue must be a work made for hire.
    (iv) The author(s) and claimant(s) must be the same person(s) or 
organization(s) for all of the issues.
    (v) All the items in the group must bear issue dates within a single 
calendar month under the same continuing title.
    (vi) Deposit. (A). The deposit for newsletters registered under this 
section is one complete copy of each issue included in the group.
    (B). In addition, if requested in writing by the Copyright 
Acquisitions Division before an application for registration is 
submitted, the claimant must give the Library of Congress whichever of 
the following the Library prefers: either as many as two complimentary 
subscriptions of the newsletter in the edition most suitable to the 
Library's needs, or a single positive, 35 mm silver halide microfilm 
meeting the Library's best edition criteria that includes all issues 
published as final editions in the designated calendar month. 
Subscription copies must be delivered to the separate address specified 
by the Copyright Acquisitions Division in its request. Subscription 
copies or a microfilm are not required unless expressly requested by the 
Copyright Acquisitions Division.
    (C) The copyright owner of any newsletter that cannot meet the 
criteria set out in this section may continue to register on Form SE or 
Short Form SE.
    (vii) Registration is sought within three months after the 
publication date of the last issue included in the group.
    (viii) A Form G/DN shall be submitted for daily newsletters bearing 
issue dates within a single month, together with one copy of each issue, 
and a filing fee. The application shall designate the first and last day 
that issues in the group were published.
    (9) One registration per work. As a general rule only one copyright 
registration can be made for the same version of a particular work. 
However:
    (i) Where a work has been registered as unpublished, another 
registration may be made for the first published edition of the work, 
even if it does not represent a new version;
    (ii) Where someone other than the author is identified as copyright 
claimant in a registration, another registration for the same version 
may be made

[[Page 424]]

by the author in his or her own name as copyright claimant;5
---------------------------------------------------------------------------

    \5\ An author includes an employer or other person for whom a 
work is ``made for hire'' under 17 U.S.C. 101. This paragraph does not 
permit an employee or other person working ``for hire'' under that 
section to make a later registration in his or her own name. In the case 
of authors of a joint work, this paragraph does permit a later 
registration by one author in his or her own name as copyright claimant, 
where an earlier registration identifies only another author as 
claimant.
---------------------------------------------------------------------------

    (iii) Where an applicant for registration alleges that an earlier 
registration for the same version is unauthorized and legally invalid, a 
registration may be made by that applicant; and
    (iv) Supplementary registrations may be made, under the conditions 
of Sec. 201.5 of these regulations, to correct or amplify the 
information in a registration made under this section.
    (c) Application for registration. (1) An application for copyright 
registration may be submitted by any author or other copyright claimant 
of a work, or the owner of any exclusive right in a work, or the duly 
authorized agent of any such author, other claimant, or owner.
    (2) An application for copyright registration shall be submitted on 
the appropriate form prescribed by the Register of Copyrights under 
paragraph (b) of this section, and shall be accompanied by the 
appropriate filing fee, as required in Sec. 201.3(c), and the deposit 
required under 17 U.S.C. 408 and Sec. 202.20 of these regulations.6 
The application shall contain the information required by the form and 
its accompanying instructions, and shall include a certification. The 
certification shall consist of:
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    \6\ In the case of applications for group registration of 
newspapers, contributions to periodicals, and newsletters, under 
paragraphs (b)(6), (b)(7), and (b)(8) of this section, the deposits 
shall comply with the deposits specified in the respective paragraphs, 
and the fees with those specified in Sec. 201.3.
---------------------------------------------------------------------------

    (i) A designation of whether the applicant is the author of, or 
other copyright claimant or owner of exclusive rights in, the work, or 
the duly authorized agent of such author, other claimant, or owner 
(whose identity shall also be given);
    (ii) The handwritten signature of such author, other claimant, 
owner, or agent, accompanied by the typed or printed name of that 
person;
    (iii) A declaration that the statements made in the application are 
correct to the best of that person's knowledge; and
    (iv) The date of certification.

An application for registration of a published work will not be accepted 
if the date of certification is earlier than the date of publication 
given in the application.

(Pub. L. 94-553; secs. 408, 409, 410, 702)

[43 FR 966, Jan. 5, 1978; as amended at 54 FR 13181, Mar. 31, 1989; 54 
FR 21059, May 16, 1989; 55 FR 50557, Dec. 7, 1990; 56 FR 7813, 7815 Feb. 
26, 1991; 56 FR 27197, June 13, 1991; 56 FR 59885, Nov. 26, 1991; 56 FR 
65190, Dec. 16, 1991; 57 FR 39616, Sept. 1, 1992; 58 FR 17778, Apr. 6, 
1993; 60 FR 15875, Mar. 28, 1995; 60 FR 34168, June 30, 1995; 62 FR 
63657, Dec. 2, 1997; 62 FR 66822, Dec. 22, 1997; 64 FR 29522, 29523, 
June 1, 1999]



Sec. 202.4  Effective date of registration.

    The effective date of registration for claims received in the 
Copyright Office on or after January 3, 1991, and through December 31, 
1991, with a short fee of $10 is the date on which the application, 
deposit, and $10 fee have all been received in the Copyright Office, 
provided, the claim is later determined to be acceptable for 
registration by the Register of Copyrights and a supplementary fee of 
$10 is received in the Copyright Office. If the supplementary fee is not 
received promptly after notification of the short fee, the Copyright 
Office will initiate a proceeding to cancel the copyright registration. 
If the supplementary fee of $10 is not received in the Copyright Office 
before the cancellation proceeding is completed, the cancellation will 
become final and will result in the loss of the effective date of 
registration. After cancellation, registration could be obtained only by 
submitting a new application, deposit, and filing fee.

[55 FR 50001, Dec. 4, 1990]

[[Page 425]]



Secs. 202.5--202.9  [Reserved]



Sec. 202.10  Pictorial, graphic, and sculptural works.

    (a) In order to be acceptable as a pictorial, graphic, or sculptural 
work, the work must embody some creative authorship in its delineation 
or form. The registrability of such a work is not affected by the 
intention of the author as to the use of the work or the number of 
copies reproduced. The availability of protection or grant of protection 
under the law for a utility or design patent will not affect the 
registrability of a claim in an original work of pictorial, graphic, or 
sculptural authorship.
    (b) A claim to copyright cannot be registered in a print or label 
consisting solely of trademark subject matter and lacking copyrightable 
matter. While the Copyright Office will not investigate whether the 
matter has been or can be registered at the Patent and Trademark Office, 
it will register a properly filed copyright claim in a print or label 
that contains the requisite qualifications for copyright even though 
there is a trademark on it. However, registration of a claim to 
copyright does not give the claimant rights available by trademark 
registrations at the Patent and Trademark Office.

[46 FR 33249, June 29, 1981, as amended at 60 FR 15606, Mar. 24, 1995; 
61 FR 5445, Feb. 12, 1996]



Sec. 202.11  Architectural works.

    (a) General. This section prescribes rules pertaining to the 
registration of architectural works, as provided for in the amendment of 
title 17 of the United States Code by the Judicial Improvements Act of 
1990, Public Law 101-650.
    (b) Definitions. (1) For the purposes of this section, the term 
architectural work has the same meaning as set forth in section 101 of 
title 17, as amended.
    (2) The term building means humanly habitable structures that are 
intended to be both permanent and stationary, such as houses and office 
buildings, and other permanent and stationary structures designed for 
human occupancy, including but not limited to churches, museums, 
gazebos, and garden pavilions.
    (c) Registration--(1) Original design. In general, an original 
design of a building embodied in any tangible medium of expression, 
including a building, architectural plans, or drawings, may be 
registered as an architectural work.
    (2) Registration limited to single architectural work. For published 
and unpublished architectural works, a single application may cover only 
a single architectural work. A group of architectural works may not be 
registered on a single application form. For works such as tract 
housing, a single work is one house model, with all accompanying floor 
plan options, elevations, and styles that are applicable to that 
particular model.
    (3) Application form. Registration should be sought on Form VA. Line 
one of the form should give the title of the building. The date of 
construction of the building, if any, should also be designated. If the 
building has not yet been constructed, the notation ``not yet 
constructed'' should be given following the title.
    (4) Separate registration for plans. Where dual copyright claims 
exist in technical drawings and the architectural work depicted in the 
drawings, any claims with respect to the technical drawings and 
architectural work must be registered separately.
    (5) Publication. Publication of an architectural work occurs when 
underlying plans or drawings of the building or other copies of the 
building design are distributed or made available to the general public 
by sale or other transfer of ownership, or by rental, lease, or lending. 
Construction of a building does not itself constitute publication for 
purposes of registration, unless multiple copies are constructed.
    (d) Works excluded. The following structures, features, or works 
cannot be registered:
    (1) Structures other than buildings. Structures other than 
buildings, such as bridges, cloverleafs, dams, walkways, tents, 
recreational vehicles, mobile homes, and boats.
    (2) Standard features. Standard configurations of spaces, and 
individual standard features, such as windows, doors, and other staple 
building components.

[[Page 426]]

    (3) Pre-December 1, 1990 building designs. The designs of buildings 
where the plans or drawings of the building were published before 
December 1, 1990, or the buildings were constructed or otherwise 
published before December 1, 1990.

[57 FR 45310, Oct. 1, 1992]



Sec. 202.12  Restored copyrights.

    (a) General. This section prescribes rules pertaining to the 
registration of foreign copyright claims which have been restored to 
copyright protection under section 104A of 17 U.S.C., as amended by the 
Uruguay Round Agreements Act, Public Law 103-465.
    (b) Definitions. (1) For the purposes of this section, restored work 
and source country, have the definition given in the URAA and 
Sec. 201.33(b) of this chapter.
    (2) Descriptive statement for a work embodied solely in machine-
readable format is a separate written statement giving the title of the 
work, nature of the work (for example: computer program, database, 
videogame, etc.), plus a brief description of the contents or subject 
matter of the work.
    (c) Registration--(1) General. Application, deposit, and filing fee 
for registering a copyright claim in a restored work under section 104A, 
as amended, may be submitted to the Copyright Office on or after January 
1, 1996. The application, filing fee, and deposit should be sent in a 
single package to the following address: Library of Congress, Copyright 
Office, 101 Independence Avenue SE., Washington, DC 20559-6000.
    (2) GATT forms. Application for registration for single works 
restored to copyright protection under URAA should be made on Form GATT. 
Application for registration for a group of works published under a 
single series title and published within the same calendar year should 
also be made on Form GATT. Application for a group of at least two and 
up to ten individual and related works as described in paragraph 
(c)(5)(ii) of this section should be made on Form GATT/GRP. GATT/URAA 
forms may be obtained by writing or calling the Copyright Office Hotline 
at (202) 707-9100. In addition, legible photocopies of these forms are 
acceptable if reproduced on good quality, 8\1/2\ by 11 inch white paper, 
and printed head to head so that page two is printed on the back of page 
one.
    (3) Fee--(i) Amount. The filing fee for registering a copyright 
claim in a restored work is 30 U.S. dollars. The filing fee for 
registering a group of multiple episodes under a series title under 
paragraph (c)(5)(i) of this section is also $30. The filing fee for 
registering a group of related works under paragraph (c)(5)(ii) of this 
section is 10 U.S. dollars per individual work, with a minimum fee of US 
$30.
    (ii) Method of payment--(A) Checks, money orders, or bank drafts. 
The Copyright Office will accept checks, money orders, or bank drafts 
made payable to the Register of Copyrights. Remittances must be 
redeemable without service or exchange fees through a United States 
institution, must be payable in United States dollars, and must be 
imprinted with American Banking Association routing numbers. In 
addition, international money orders, and postal money orders that are 
negotiable only at a post office are not acceptable. CURRENCY WILL NOT 
BE ACCEPTED.
    (B) Copyright Office Deposit Account. The Copyright Office maintains 
a system of Deposit Accounts for the convenience of those who frequently 
use its services. The system allows an individual or firm to establish a 
Deposit Account in the Copyright Office and to make advance deposits 
into that account. Deposit Account holders can charge copyright fees 
against the balance in their accounts instead of sending separate 
remittances with each request for service. For information on Deposit 
Accounts please write: Register of Copyrights, Copyright Office, Library 
of Congress, Washington, DC 20559, and request a copy of Circular 5, 
``How to Open and Maintain a Deposit Account in the Copyright Office.''
    (C) Credit cards. For URAA registrations the Copyright Office will 
accept VISA, MasterCard, and American Express. Debit cards cannot be 
accepted for payment. With the registration application, an applicant 
using a credit card must submit a separate cover letter stating the name 
of the credit card, the credit card number, the expiration date of the 
credit card, the total

[[Page 427]]

amount authorized and a signature authorizing the Office to charge the 
fees to the account. To protect the security of the credit card number, 
the applicant must not write the credit card number on the registration 
application.
    (4) Deposit--(i) General. The deposit for a work registered as a 
restored work under the amended section 104A, except for those works 
listed in paragraphs (c)(4) (ii) through (iv) of this section, should 
consist of one copy or phonorecord which best represents the 
copyrightable content of the restored work. In descending order of 
preference, the deposit should be:
    (A) The work as first published;
    (B) A reprint or re-release of the work as first published;
    (C) A photocopy or identical reproduction of the work as first 
published; or
    (D) A revised version which includes a substantial amount of the 
copyrightable content of the restored work with an indication in writing 
of the percentage of the restored work appearing in the revision.
    (ii) Previously registered works. No deposit is needed for works 
previously registered in the Copyright Office.
    (iii) Works embodied solely in machine-readable format. For works 
embodied only in machine-readable formats, the deposit requirements are 
as follows:
    (A) One machine-readable copy and a descriptive statement of the 
work; or
    (B) Representative excerpts of the work, such as printouts; or, if 
the claim extends to audiovisual elements in the work, a videotape of 
what appears on the screen.
    (iv) Pictorial, graphic and sculptural works. With the exception of 
3-dimensional works of art, the general deposit preferences specified 
under paragraph (c)(4)(i) of this section shall govern. For 3-
dimensional works of art, the preferred deposit is one or more 
photographs of the work, preferably in color.
    (v) Special relief. An applicant who is unable to submit any of the 
preferred deposits may seek an alternative deposit under special relief 
(37 CFR 202.20(d)). In such a case, the applicant should indicate in 
writing why the deposit preferences cannot be met, and submit 
alternative identifying materials clearly showing some portion of the 
copyrightable contents of the restored work which is the subject of 
registration.
    (vi) Motion pictures. If the deposit is a film print (16 or 35 mm), 
the applicant should contact the Performing Arts Section of the 
Examining Division for delivery instructions. The telephone number is: 
(202) 707-6040; the telefax number is: (202) 707-1236.
    (5) Group registration. Copyright claims in more than one restored 
work may be registered as a group in the following circumstances:
    (i) Single series title. Works published under a single series title 
in multiple episodes, installments, or issues during the same calendar 
year may be registered as a group, provided the owner of U.S. rights is 
the same for all episodes, installments, or issues. The Form GATT should 
be used and the number of episodes or installments should be indicated 
in the title line. The filing fee for registering a group of such works 
is $30. In general, the deposit requirements applicable to restored 
works will be applied to the episodes or installments in a similar 
fashion. In the case of a weekly or daily television series, applicants 
should first contact the Performing Arts Section of the Examining 
Division. The telephone number is (202) 707-6040; the telefax number is 
(202) 707-1236.
    (ii) Group of related works. A group of related works may be 
registered on the Form GATT/GRP, provided the following conditions are 
met: the author(s) is the same for all works in the group; the owner of 
all United States rights is the same for all works in the group; all 
works must have been published in the same calendar year; all works fit 
within the same subject matter category, i.e., literary works, musical 
works, motion pictures, etc.; and there are at least two and not more 
than ten individual works in the group submitted. Applicants registering 
a group of related works must file for registration on the Form GATT/
GRP. The filing fee for registering a group of related works is ten 
dollars per individual work, with a minimum fee of $30.
    (d) Works excluded. Works which are not copyrightable subject matter 
under

[[Page 428]]

title 17 of the U.S. Code, other than sound recordings fixed before 
February 15, 1972, shall not be registered as restored copyrights.

[60 FR 50422, Sept. 29, 1995, as amended at 64 FR 12902, Mar. 16, 1999; 
64 FR 29522, June 1, 1999]



Secs. 202.13--202.16  [Reserved]



Sec. 202.17  Renewals.

    (a) General. This section prescribes rules pertaining to the 
application for renewal copyright under section 304(a) of title 17 of 
the United States Code, as amended by Public Law 102-307.
    (b) Definition. For purposes of this section, the term posthumous 
work means a work that was unpublished on the date of the death of the 
author and with respect to which no copyright assignment or other 
contract for exploitation of the work occurred during the author's 
lifetime.
    (c) Renewal registration optional. For works originally copyrighted 
between January 1, 1964 and December 31, 1977 renewal registration is 
optional and not a condition for securing copyright for the new and 
extended forty-seven year second term. As provided in Public Law 102-
307, 106 Stat. 264 (Act of June 26, 1992), however, renewal of copyright 
by registration during the last year of the original term and renewal 
registration during the forty-seven year extended term of a copyright 
renewed without registration by operation of Public Law 102-307 differ 
in legal effect. Among other effects, renewal of copyright by 
registration during the last year of the original term vests the renewal 
copyright in the statutory renewal claimant(s) living on the date of 
registration.
    (d) Original term registration. (1) Registration of a claim to 
copyright in the original twenty-eight year term is not a pre-condition 
for making a renewal registration, provided the renewal application is 
accompanied by an Addendum to Form RE and the deposit copy, phonorecord, 
or identifying material specified in paragraph (h) of this section.
    (2) Original term registration can only be made before the 
expiration of the original term of copyright in the work.
    (e) Renewal time limits. (1) For works originally copyrighted 
between January 1, 1964, and December 31, 1977, claims to renewal 
copyright may be registered within the last year of the original term, 
which begins on December 31 of the 27th year of the copyright, and runs 
through December 31 of the 28th year of the copyright, or at anytime 
during the extended forty-seven year second term, if the second term is 
renewed by operation of Public Law 102-307, 106 Stat. 264. The original 
copyright term for a published work is computed from the date of first 
publication; the term for a work originally registered in unpublished 
form is computed from the date of registration in the Copyright Office. 
To vest the renewal copyright by registration, the required renewal 
application, fee, and, if original term registration has not been made, 
the Addendum specified in paragraph (h) of this section must be received 
in the Copyright Office during the prescribed period before the first 
term of copyright expires. The Copyright Office has no discretion to 
extend the renewal time limits for vesting of the renewal copyright by 
registration.
    (2) The provisions of paragraph (e)(1) of this section are subject 
to the following qualification: In order to vest the renewal copyright 
by registration in any case where the year date in the notice on copies 
distributed by authority of the copyright owner is earlier than the year 
of first publication, claims to renewal copyright must be registered 
within the last year of the original copyright term, which begins on 
December 31 of the 27th year from the year contained in the notice, and 
runs through December 31 of the 28th year from the year contained in the 
notice.
    (3) Whenever a renewal applicant has cause to believe that a formal 
application for renewal, which is intended to vest the renewal copyright 
by registration, and any accompanying Addendum relating to subsistence 
of first-term copyright, if sent to the Copyright Office by mail, might 
not be received in the Copyright Office before expiration of the time 
limits provided by 17 U.S.C. 304(a) for vesting of the renewal copyright 
by registration, he or she may

[[Page 429]]

apply for renewal registration by telegraphic, telefacsimile, or similar 
written communication. An application made by this method will be 
accepted only if:
    (i) The message is received in the Copyright Office within the 
specified time limits for vesting by registration;
    (ii) The applicant adequately identifies the work involved, the date 
of first publication or original registration, the name and address of 
the renewal claimant, and the statutory basis of the renewal claim;
    (iii) The fee for renewal registration, if not already on deposit, 
is received in the Copyright Office before the time for renewal 
registration has expired; and
    (iv) A formal application for renewal (Form RE) (or a fax copy) and 
in the case of works under paragraph (h) of this section, an 
accompanying Addendum relating to the subsistence of first-term 
copyright are also received in the Copyright Office before April 1 of 
the following year.
    (f) Renewal claimants. (1) Except as otherwise provided by 
paragraphs (f) (2) and (3) of this section, renewal claims may be 
registered only in the name(s) of the eligible person(s) falling within 
one of the following classes of renewal claimants specified in section 
304(a) of the copyright law. If the work was a new version of a previous 
work, renewal may be claimed only in the new matter. If the renewal 
claim is submitted during the last year of the original term of 
copyright, the renewal must be made in the name(s) of the statutory 
claimant(s) entitled to claim the renewal on the date the renewal claim 
is submitted to the Copyright Office for registration. If the renewal 
claim is submitted during the forty-seven year renewal term, the renewal 
claim can only be registered in the name(s) of the statutory claimant(s) 
entitled to claim the renewal on the last day (December 31st) of the 
original term of copyright.
    (i) In the case of any posthumous work or of any periodical, 
encyclopedia, or other composite work upon which the copyright was 
originally secured by the proprietor thereof, the renewal claim may be 
registered in the name of the proprietor;
    (ii) In the case of any work copyrighted by a corporate body 
(otherwise than as assignees or licensees of the individual author) or 
by an employer for whom such work is made for hire, the renewal claim 
may be registered in the name of the proprietor; and
    (iii) In the case of any other copyrighted work, including a 
contribution by an individual author to a periodical or to a cyclopedic 
or other composite work, the renewal claim may be registered in the 
name(s) of the following person(s) in descending order of eligibility:
    (A) The author of the work, if still living;
    (B) The widow, widower, or children of the author, if the author is 
not living;
    (C) The author's executors, if there is a will and neither the 
author nor any widow, widower, or child of the author is living;
    (D) The author's next of kin, in the absence of a will and if 
neither the author nor any widow, widower, or child of the author is 
living.
    (2) The provisions of paragraph (f)(1) are subject to the following 
qualification: Notwithstanding the definition of ``posthumous work'' in 
paragraph (b) of this section, a renewal claim may be registered in the 
name of the proprietor of the work, as well as in the name of the 
appropriate claimant under paragraph (f)(1)(iii), in any case where a 
contract for exploitation of the work but no copyright assignment in the 
work has occurred during the author's lifetime. However, registration by 
the Copyright Office in this case should not be interpreted as 
evidencing the validity of the claim.
    (3) The provisions of paragraphs (f)(1)(iii) (C) and (D) of this 
section are subject to the following qualifications:
    (i) In any case where:
    (A)  The author has left a will which names no executor;
    (B)  The author has left a will which names an executor who cannot 
or will not serve in that capacity; or
    (C)  The author has left a will which names an executor who has been 
discharged upon settlement of the estate or removed before the estate 
has been completely administered, the renewal claim may be registered 
either in the

[[Page 430]]

name of an administrator cum testamento annexo (administrator c.t.a.) or 
an administrator de bonis non cum testamento annexo (administrator 
d.b.n.c.t.a.) so appointed by a court of competent jurisdiction.
    (ii) In any case described in paragraph (f)(3)(i) of this section, 
except in the case where the author has left a will without naming an 
executor and a court appointed administrator c.t.a. or administrator 
d.b.n.c.t.a. is in existence at the time of renewal registration, the 
renewal claim also may be registered in the name of the author's next of 
kin. However, registration by the Copyright Office of the conflicting 
renewal claims in these cases should not be interpreted as evidencing 
the validity of either claim.
    (g) Application for renewal registration. (1) Each application for 
renewal registration shall be submitted on Form RE. Copies of Form RE, 
and if applicable, the Addendum to Form RE, are available free upon 
request to the Public Information Office, United States Copyright 
Office, Library of Congress, Washington, DC 20559.
    (2)(i) An application for renewal registration may be submitted by 
any eligible statutory renewal claimant as specified in paragraph (f) of 
this section or by the duty authorized agent of any such claimant.
    (ii) An application for renewal registration shall be accompanied by 
the appropriate fee, as required in Sec. 201.3(c). The application shall 
contain the information required by the form and its accompanying 
instructions, and shall include a certification. The certification shall 
consist of:
    (A) A designation of whether the applicant is the renewal claimant, 
or the duly authorized agent of such claimant (whose identity shall also 
be given);
    (B) The handwritten signature of such claimant or agent, accompanied 
by the typewritten or printed name of that person;
    (C) A declaration that the statements made in the application are 
correct to the best of that person's knowledge; and
    (D) The date of certification.
    (iii) In the case of an application for renewal registration of a 
work for which no original registration was made, the application shall 
be accompanied by an Addendum and deposit material in accordance with 
paragraph (h) of this section.
    (3) Once a renewal registration has been made, the Copyright Office 
will not accept a duplicate application for renewal registration on 
behalf of the same renewal claimant.
    (h) Addendum for an unregistered work--(1)  Content. If original 
term registration is not timely made for a work, the renewal application 
Form RE must be accompanied by an Addendum to Form RE which must contain 
the following information:
    (i) The title of the work;
    (ii) The name of the author(s);
    (iii) The date of first publication of the work;
    (iv) The place of first publication of the work;
    (v) The citizenship of the author(s) on the date of first 
publication of the work;
    (vi) The domicile of the author(s) on the date of first publication 
of the work;
    (vii) An averment that, at the time of first publication, all the 
copies of the work published under the authority of the author or other 
copyright proprietor bore the copyright notice required by the Copyright 
Act of 1909, title 17 of the United States Code in effect on December 
31, 1977, and that United States copyright subsists in the work; and
    (viii) For works of United States origin which were subject to the 
manufacturing provisions of section 16 of the Copyright Act of 1909 as 
it existed at the time the work was published, the Addendum must also 
contain information about the country of manufacture and the 
manufacturing processes.
    (2) Signature. The Addendum must contain the handwritten signature 
of the renewal claimant or the duly authorized agent of the renewal 
claimant. The signature shall (i) be accompanied by the printed 
typewritten name of the person signing the Addendum and by the date of 
the signature; and (ii) shall be immediately preceded by the following 
printed or typewritten statement in accordance with section 1746 of 
title 28 of the United States Code:


[[Page 431]]


    I certify under penalty of perjury under the laws of the United 
States of America that the foregoing is true and correct.

    (3) Deposit requirement for an unregistered work. In addition to the 
Addendum to Form RE, an application for renewal registration of a work 
for which no original term registration is made must be accompanied by 
one copy or phonorecord or identifying material of the work as first 
published in accordance with the deposit requirements set out in 
Secs. 202.20 and 202.21 of the Copyright Office regulations for basic 
registration.
    (4) Waiver of the deposit requirement. In a case where the renewal 
applicant asserts that it is either physically impossible or otherwise 
an undue hardship to satisfy the deposit requirements of Secs. 202.20 
and 202.21, the Copyright Office, at its discretion, may, upon receipt 
of an acceptable explanation of the inability to submit such copy or 
identifying material, permit the deposit of the following in the 
descending order of preference:
    (i) A reprint, photocopy, or identifying reproduction of the work as 
first published; or
    (ii)(A) A photocopy of the title page of the work as first 
published;
    (B) A photocopy of the page of the work as first published bearing 
the copyright notice;
    (C) A specification as to the location, relative to each other, of 
the title and notice pages of the work as first published, if the pages 
are different; and
    (D) A brief description of the copyrightable content of the work, 
which is sufficient to enable the Copyright Office to examine the work. 
The Examining Division of the Copyright Office may request deposit of 
additional descriptive material if the original submission is 
inadequate.

[57 FR 60483, Dec. 21, 1992, as amended at 64 FR 29522, June 1, 1999]



Sec. 202.18  [Reserved]



Sec. 202.19  Deposit of published copies or phonorecords for the Library of Congress.

    (a) General. This section prescribes rules pertaining to the deposit 
of copies and phonorecords of published works for the Library of 
Congress under section 407 of title 17 of the United States Code, as 
amended by Pub. L. 94-553. The provisions of this section are not 
applicable to the deposit of copies and phonorecords for purposes of 
copyright registration under section 408 of title 17, except as 
expressly adopted in Sec. 202.20 of these regulations.
    (b) Definitions. For the purposes of this section:
    (1)(i) The best edition of a work is the edition, published in the 
United States at any time before the date of deposit, that the Library 
of Congress determines to be most suitable for its purposes.
    (ii) Criteria for selection of the ``best edition'' from among two 
or more published editions of the same version of the same work are set 
forth in the statement entitled ``Best Edition of Published Copyrighted 
Works for the Collections of the Library of Congress'' (hereafter 
referred to as the ``Best Edition Statement'') in effect at the time of 
deposit. Copies of the Best Edition Statement are available upon request 
made to the Copyright Acquisitions Division.
    (iii) Where no specific criteria for the selection of the ``best 
edition'' are established in the Best Edition Statement, that edition 
which, in the judgment of the Library of Congress, represents the 
highest quality for its purposes shall be considered the ``best 
edition''. In such cases:
    (A) When the Copyright Office is aware that two or more editions of 
a work have been published it will consult with other appropriate 
officials of the Library of Congress to obtain instructions as to the 
``best edition'' and (except in cases for which special relief is 
granted) will require deposit of that edition; and
    (B) When a potential depositor is uncertain which of two or more 
published editions comprises the ``best edition'', inquiry should be 
made to the Copyright Acquisitions Division.
    (iv) Where differences between two or more ``editions'' of a work 
represent variations in copyrightable content, each edition is 
considered a separate version, and hence a different work, for the 
purpose of this section, and criteria

[[Page 432]]

of ``best edition'' based on such differences do not apply.
    (2) A complete copy includes all elements comprising the unit of 
publication of the best edition of the work, including elements that, if 
considered separately, would not be copyrightable subject matter or 
would otherwise be exempt from mandatory deposit requirements under 
paragraph (c) of this section. In the case of sound recordings, a 
``complete'' phonorecord includes the phonorecord, together with any 
printed or other visually perceptible material published with such 
phonorecord (such as textual or pictorial matter appearing on record 
sleeves or album covers, or embodied in leaflets or booklets included in 
a sleeve, album, or other container). In the case of a musical 
composition published in copies only, or in both copies and 
phonorecords:
    (i) If the only publication of copies in the United States took 
place by the rental, lease, or lending of a full score and parts, a full 
score is a ``complete'' copy; and
    (ii) If the only publication of copies in the United States took 
place by the rental, lease, or lending of a conductor's score and parts, 
a conductor's score is a ``complete'' copy.

In the case of a motion picture, a copy is ``complete'' if the 
reproduction of all of the visual and aural elements comprising the 
copyrightable subject matter in the work is clean, undamaged, 
undeteriorated, and free of splices, and if the copy itself and its 
physical housing are free of any defects that would interfere with the 
performance of the work or that would cause mechanical, visual, or 
audible defects or distortions.
    (3) The terms architectural works, copies, collective work, device, 
fixed, literary work, machine, motion picture, phonorecord, publication, 
sound recording, useful article, and their variant forms, have the 
meanings given to them in 17 U.S.C. 101.
    (c) Exemptions from deposit requirements. The following categories 
of material are exempt from the deposit requirements of section 407(a) 
of title 17:
    (1) Diagrams and models illustrating scientific or technical works 
or formulating scientific or technical information in linear or three-
dimensional form, such as an architectural or engineering blueprint, 
plan, or design, a mechanical drawing, or an anatomical model.
    (2) Greeting cards, picture postcards, and stationery.
    (3) Lectures, sermons, speeches, and addresses when published 
individually and not as a collection of the works of one or more 
authors.
    (4) Literary, dramatic, and musical works published only as embodied 
in phonorecords. This category does not exempt the owner of copyright, 
or of the exclusive right of publication, in a sound recording resulting 
from the fixation of such works in a phonorecord from the applicable 
deposit requirements for the sound recording.
    (5) Automated databases available only on-line in the United States. 
The exemption does not include the following: automated databases 
distributed in the form of machine-readable copies (such as magnetic 
tape or disks, CD-ROM formats, punch cards, or the like); computerized 
information works in the nature of statistical compendia, serials, and 
reference works; works published in a form requiring the use of a 
machine or device for purposes of optical enlargement (such as film, 
filmstrips, slide films and works published in any variety of 
microform); works published in visually perceptible form but used in 
connection with optical scanning devices; and works reproduced in CD-ROM 
formats.
    (6) Three-dimensional sculptural works, and any works published only 
as reproduced in or on jewelry, dolls, toys, games, plaques, floor 
coverings, wallpaper and similar commercial wall coverings, textiles and 
other fabrics, packaging material, or any useful article. Globes, relief 
models, and similar cartographic representations of area are not within 
this category and are subject to the applicable deposit requirements.
    (7) Prints, labels, and other advertising matter, including 
catalogs, published in connection with the rental lease, lending, 
licensing, or sale of articles of merchandise, works of authorship, or 
services.

[[Page 433]]

    (8) Tests, and answer material for tests when published separately 
from other literary works.
    (9) Works first published as individual contributions to collective 
works. This category does not exempt the owner of copyright, or of the 
exclusive right of publication, in the collective work as a whole, from 
the applicable deposit requirements for the collective work.
    (10) Works first published outside the United States and later 
published in the United States without change in copyrightable content, 
if:
    (i) Registration for the work was made under 17 U.S.C. 408 before 
the work was published in the United States; or
    (ii) Registration for the work was made under 17 U.S.C. 408 after 
the work was published in the United States but before a demand for 
deposit is made under 17 U.S.C. 407(d).
    (11) Works published only as embodied in a soundtrack that is an 
integral part of a motion picture. This category does not exempt the 
owner of copyright, or of the exclusive right of publication, in the 
motion picture, from the applicable deposit requirements for the motion 
picture.
    (12) Motion pictures that consist of television transmission 
programs and that have been published, if at all, only by reason of a 
license or other grant to a nonprofit institution of the right to make a 
fixation of such programs directly from a transmission to the public, 
with or without the right to make further uses of such fixations.
    (d) Nature of required deposit. (1) Subject to the provisions of 
paragraph (d)(2) of this section, the deposit required to satisfy the 
provisions of section 407(a) of title 17 shall consist of:
    (i) In the case of published works other than sound recordings, two 
complete copies of the best edition; and
    (ii) In the case of published sound recordings, two complete 
phonorecords of the best edition.
    (2) In the case of certain published works not exempt from deposit 
requirements under paragraph (c) of this section, the following special 
provisions shall apply:
    (i) In the case of published three-dimensional cartographic 
representations of area, such as globes and relief models, the deposit 
of one complete copy of the best edition of the work will suffice in 
lieu of the two copies required by paragraph (d)(1) of this section.
    (ii) In the case of published motion pictures, the deposit of one 
complete copy of the best edition of the work will suffice in lieu of 
the two copies required by paragraph (d)(1) of this section. Any deposit 
of a published motion picture must be accompanied by a separate 
description of its contents, such as a continuity, pressbook, or 
synopsis. The Library of Congress may, at its sole discretion, enter 
into an agreement permitting the return of copies of published motion 
pictures to the depositor under certain conditions and establishing 
certain rights and obligations of the Library with respect to such 
copies. In the event of termination of such an agreement by the Library 
it shall not be subject to reinstatement, nor shall the depositor or any 
successor in interest of the depositor be entitled to any similar or 
subsequent agreement with the Library, unless at the sole discretion of 
the Library it would be in the best interests of the Library to 
reinstate the agreement or enter into a new agreement.
    (iii) In the case of any published work deposited in the form of a 
hologram, the deposit shall be accompanied by:
    (A) Two sets of precise instructions for displaying the image fixed 
in the hologram; and
    (B) Two sets of identifying material in compliance with Sec. 202.21 
of these regulations and clearly showing the displayed image.
    (iv) In any case where an individual author is the owner of 
copyright in a published pictorial or graphic work and (A) less than 
five copies of the work have been published, or (B) the work has been 
published and sold or offered for sale in a limited edition consisting 
of no more than three hundred numbered copies, the deposit of one 
complete copy of the best edition of the work or, alternatively, the 
deposit of photographs or other identifying material in compliance with 
Sec. 202.21 of these regulations, will suffice in lieu of the

[[Page 434]]

two copies required by paragraph (d)(1) of this section.
    (v) In the case of a musical composition published in copies only, 
or in both copies and phonorecords, if the only publication of copies in 
the United States took place by rental, lease, or lending, the deposit 
of one complete copy of the best edition will suffice in lieu of the two 
copies required by paragraph (d)(1) of this section.
    (vi) In the case of published multimedia kits, that include literary 
works, audiovisual works, sound recordings, or any combination of such 
works, the deposit of one complete copy of the best edition will suffice 
in lieu of the two copies required by paragraph (d)(1) of this section.
    (vii) In the case of published computer programs and published 
computerized information works, such as statistical compendia, serials, 
and reference works that are not copy-protected, the deposit of one 
complete copy of the best edition as specified in the current Library of 
Congress Best Edition Statement will suffice in lieu of the two copies 
required by paragraph (d)(1) of this section. If the works are copy-
protected, two copies of the best edition are required.
    (viii) In the case of published architectural works, the deposit 
shall consist of the most finished form of presentation drawings in the 
following descending order of preference:
    (A) Original format, or best quality form of reproduction, including 
offset or silk screen printing;
    (B) Xerographic or photographic copies on good quality paper;
    (C) Positive photostat or photodirect positive;
    (D) Blue line copies (diazo or ozalid process). If photographs are 
submitted, they should be 8 x 10 inches and should clearly show several 
exterior and interior views. The deposit should disclose the name(s) of 
the architect(s) and draftsperson(s) and the building site.
    (e) Special relief. (1) In the case of any published work not exempt 
from deposit under paragraph (c) of this section, the Register of 
Copyrights may, after consultation with other appropriate officials of 
the Library of Congress and upon such conditions as the Register may 
determine after such consultation:
    (i) Grant an exemption from the deposit requirements of section 
407(a) of title 17 on an individual basis for single works or series or 
groups of works; or
    (ii) Permit the deposit of one copy or phonorecord, or alternative 
identifying material, in lieu of the two copies or phonorecords required 
by paragraph (d)(1) of this section; or
    (iii) Permit the deposit of incomplete copies or phonorecords, or 
copies or phonorecords other than those normally comprising the best 
edition; or
    (iv) Permit the deposit of identifying material which does not 
comply with Sec. 202.21 of these regulations.
    (2) Any decision as to whether to grant such special relief, and the 
conditions under which special relief is to be granted, shall be made by 
the Register of Copyrights after consultation with other appropriate 
officials of the Library of Congress, and shall be based upon the 
acquisition policies of the Library of Congress then in force.
    (3) Requests for special relief under this paragraph shall be made 
in writing to the Chief, Examining Division, shall be signed by or on 
behalf of the owner of copyright or of the exclusive right of 
publication in the work, and shall set forth specific reasons why the 
request should be granted.
    (4) The Register of Copyrights may, after consultation with other 
appropriate officials of the Library of Congress, terminate any ongoing 
or continuous grant of special relief. Notice of termination shall be 
given in writing and shall be sent to the individual person or 
organization to whom the grant of special relief had been given, at the 
last address shown in the records of the Copyright Office. A notice of 
termination may be given at any time, but it shall state a specific date 
of termination that is at least 30 days later than the date the notice 
is mailed. Termination shall not affect the validity of any deposit made 
earlier under the grant of special relief.
    (f) Submission and receipt of copies and phonorecords. (1) All 
copies and

[[Page 435]]

phonorecords deposited in the Copyright Office will be considered to be 
deposited only in compliance with section 407 of title 17 unless they 
are accompanied by an application for registration of a claim to 
copyright in the work represented by the deposit, and either a 
registration fee or a deposit account number on the application. Copies 
or phonorecords deposited without such an accompanying application and 
either a fee or a deposit account notation will not be connected with or 
held for receipt of separate applications, and will not satisfy the 
deposit provisions of section 408 of title 17 or Sec. 202.20 of these 
regulations.
    (2) All copies and phonorecords deposited in the Copyright Office 
under section 407 of title 17, unless accompanied by written 
instructions to the contrary, will be considered to be deposited by the 
person or persons named in the copyright notice on the work.
    (3) Upon request by the depositor made at the time of the deposit, 
the Copyright Office will issue a certificate of receipt for the deposit 
of copies or phonorecords of a work under this section. Certificates of 
receipt will be issued in response to requests made after the date of 
deposit only if the requesting party is identified in the records of the 
Copyright Office as having made the deposit. In either case, requests 
for a certificate of receipt must be in writing and accompanied by the 
appropriate fee, as required in Sec. 201.3(c). A certificate of receipt 
will include identification of the depositor, the work deposited, and 
the nature and format of the copy or phonorecord deposited, together 
with the date of receipt.

[51 FR 6403, Feb. 24, 1986, as amended at 54 FR 42299, Oct. 16, 1989; 56 
FR 47403, Sept. 19, 1991; 56 FR 59885, Nov. 26, 1991; 57 FR 45310, Oct. 
1, 1992; 60 FR 34168, June 30, 1995; 64 FR 29522, June 1, 1999]



Sec. 202.20  Deposit of copies and phonorecords for copyright registration.

    (a) General. This section prescribes rules pertaining to the deposit 
of copies and phonorecords of published and unpublished works for the 
purpose of copyright registration under section 408 of title 17 of the 
United States Code, as amended by Pub. L. 94-553. The provisions of this 
section are not applicable to the deposit of copies and phonorecords for 
the Library of Congress under section 407 of title 17, except as 
expressly adopted in Sec. 202.19 of these regulations.
    (b) Definitions. For the purposes of this section:
    (1) The best edition of a work has the meaning set forth in 
Sec. 202.19(b)(1) of these regulations.
    (2) A complete copy or phonorecord means the following:
    (i) Unpublished works. Subject to the requirements of paragraph 
(b)(2)(vi) of this section, a ``complete'' copy or phonorecord of an 
unpublished work is a copy or phonorecord representing the entire 
copyrightable content of the work for which registration is sought;
    (ii) Published works. Subject to the requirements of paragraphs 
(b)(2) (iii) through (vi) of this section, a ``complete'' copy or 
phonorecord of a published work includes all elements comprising the 
applicable unit of publication of the work, including elements that, if 
considered separately, would not be copyrightable subject matter. 
However, even where certain physically separable elements included in 
the applicable unit of publication are missing from the deposit, a copy 
or phonorecord will be considered ``complete'' for purposes of 
registration where:
    (A) The copy or phonorecord deposited contains all parts of the work 
for which copyright registration is sought; and
    (B) The removal of the missing elements did not physically damage 
the copy or phonorecord or garble its contents; and
    (C) The work is exempt from the mandatory deposit requirements under 
section 407 of title 17 of the United States Code and Sec. 202.19(c) of 
these regulations, or the copy deposited consists entirely of a 
container, wrapper, or holder, such as an envelope, sleeve, jacket, 
slipcase, box, bag, folder, binder, or other receptacle acceptable for 
deposit under paragraph (c)(2) of this section;
    (iii) Contributions to collective works. In the case of a published 
contribution to a collective work, a ``complete'' copy is one complete 
copy of the best edition of the entire collective work,

[[Page 436]]

the complete section containing the contribution if published in a 
newspaper, the contribution cut from the paper in which it appeared, or 
a photocopy of the contribution itself as it was published in the 
collective work.
    (iv) Sound recordings. In the case of published sound recordings, a 
``complete'' phonorecord has the meaning set forth in Sec. 202.19(b)(2) 
of these regulations;
    (v) Musical scores. In the case of a musical composition published 
in copies only, or in both copies and phonorecords:
    (A) If the only publication of copies took place by the rental, 
lease, or lending of a full score and parts, a full score is a 
``complete'' copy; and
    (B) If the only publication of copies took place by the rental, 
lease, or lending of a conductor's score and parts, a conductor's score 
is a ``complete'' copy;
    (vi) Motion pictures. In the case of a published or unpublished 
motion picture, a copy is ``complete'' if the reproduction of all of the 
visual and aural elements comprising the copyrightable subject matter in 
the work is clean, undamaged, undeteriorated, and free of splices, and 
if the copy itself and its physical housing are free of any defects that 
would interfere with the performance of the work or that would cause 
mechanical, visual, or audible defects or distortions.
    (3) The terms architectural works, copy, collective work, device, 
fixed, literary work, machine, motion picture, phonorecord, publication, 
sound recording, transmission program, and useful article, and their 
variant forms, have the meanings given to them in 17 U.S.C. 101.
    (4) A secure test is a nonmarketed test administered under 
supervision at specified centers on specific dates, all copies of which 
are accounted for and either destroyed or returned to restricted locked 
storage following each administration. For these purposes a test is not 
marketed if copies are not sold but it is distributed and used in such a 
manner that ownership and control of copies remain with the test sponsor 
or publisher.
    (5) Title 17 means title 17 of the United States Code, as amended by 
Pub. L. 94-553.
    (6) For the purposes of determining the applicable deposit 
requirements under this Sec. 202.20 only, the following shall be 
considered as unpublished motion pictures: motion pictures that consist 
of television transmission programs and that have been published, if at 
all, only by reason of a license or other grant to a nonprofit 
institution of the right to make a fixation of such programs directly 
from a transmission to the public, with or without the right to make 
further uses of such fixations.
    (c) Nature of required deposit. (1) Subject to the provisions of 
paragraph (c)(2) of this section, the deposit required to accompany an 
application for registration of claim to copyright under section 408 of 
title 17 shall consist of:
    (i) In the case of unpublished works, one complete copy or 
phonorecord.
    (ii) In the case of works first published in the United States 
before January 1, 1978, two complete copies or phonorecords of the work 
as first published.
    (iii) In the case of works first published in the United States on 
or after January 1, 1978, two complete copies or phonorecords of the 
best edition.
    (iv) In the case of works first published outside of the United 
States, one complete copy or phonorecord of the work either as first 
published or of the best edition. For purposes of this section, any 
works simultaneously first published within and outside of the United 
States shall be considered to be first published in the United States.
    (2) In the case of certain works, the special provisions set forth 
in this clause shall apply. In any case where this clause specifies that 
one copy or phonorecord may be submitted, that copy or phonorecord shall 
represent the best edition, or the work as first published, as set forth 
in paragraph (c)(1) of this section.
    (i) General. In the following cases the deposit of one complete copy 
or phonorecord will suffice in lieu of two copies or phonorecords:
    (A) Published three-dimensional cartographic representations of 
area, such as globes and relief models;

[[Page 437]]

    (B) Published diagrams illustrating scientific or technical works or 
formulating scientific or technical information in linear or other two-
dimensional form, such as an architectural or engineering blueprint, or 
a mechanical drawing;
    (C) Published greeting cards, picture postcards, and stationery;
    (D) Lectures, sermons, speeches, and addresses published 
individually and not as a collection of the works of one or more 
authors;
    (E) Musical compositions published in copies only, or in both copies 
and phonorecords, if the only publication of copies took place by 
rental, lease, or lending;
    (F) Published multimedia kits or any part thereof;
    (G) Works exempted from the requirement of depositing identifying 
material under paragraph (c)(2)(xi)(B)(5) of this section;
    (H) Literary, dramatic, and musical works published only as embodied 
in phonorecords, although this category does not exempt the owner of 
copyright in a sound recording;
    (I) Choreographic works, pantomimes, literary, dramatic, and musical 
works published only as embodied in motion pictures;
    (J) Published works in the form of two-dimensional games, decals, 
fabric patches or emblems, calendars, instructions for needle work, 
needle work and craft kits; and
    (K) Works reproduced on three-dimensional containers such as boxes, 
cases, and cartons.
    (ii) Motion pictures. In the case of published or unpublished motion 
pictures, the deposit of one complete copy will suffice. The deposit of 
a copy or copies for any published or unpublished motion picture must be 
accompanied by a separate description of its contents, such as a 
continuity, pressbook, or synopsis. In any case where the deposit copy 
or copies required for registration of a motion picture cannot be viewed 
for examining purposes on equipment in the Examining Division of the 
Copyright Office, the description accompanying the deposit must comply 
with Sec. 202.21(h) of these regulations. The Library of Congress may, 
at its sole discretion, enter into an agreement permitting the return of 
copies of published motion pictures to the depositor under certain 
conditions and establishing certain rights and obligations of the 
Library of Congress with respect to such copies. In the event of 
termination of such an agreement by the Library, it shall not be subject 
to reinstatement, nor shall the depositor or any successor in interest 
of the depositor be entitled to any similar or subsequent agreement with 
the Library, unless at the sole discretion of the Library it would be in 
the best interests of the Library to reinstate the agreement or enter 
into a new agreement. In the case of unpublished motion pictures 
(including television transmission programs that have been fixed and 
transmitted to the public, but have not been published), the deposit of 
identifying material in compliance with Sec. 202.21 of these regulations 
may be made and will suffice in lieu of an actual copy. In the case of 
colorized versions of motion pictures made from pre-existing black and 
white motion pictures, in addition to the deposit of one complete copy 
of the colorized motion picture and the separate description of its 
contents as specified above, the deposit shall consist of one complete 
print of the black and white version of the motion picture from which 
the colorized version was prepared. If special relief from this 
requirement is requested and granted, the claimant shall make a good 
faith effort to deposit the best available, near-archival quality black 
and white print, as a condition of any grant of special relief.
    (iii) Holograms. In the case of any work deposited in the form of a 
three-dimensional hologram, the copy or copies shall be accompanied by:
    (A) Precise instructions for displaying the image fixed in the 
hologram; and
    (B) Photographs or other identifying material complying with 
Sec. 202.21 of these regulations and clearly showing the displayed 
image.

The number of sets of instructions and identifying material shall be the 
same as the number of copies required. In the case of a work in the form 
of a two-dimensional hologram, the image of which is visible without the 
use of a

[[Page 438]]

machine or device, one actual copy of the work shall be deposited.
    (iv) Certain pictorial and graphic works. In the case of any 
unpublished pictorial or graphic work, deposit of identifying material 
in compliance with Sec. 202.21 of these regulations may be made and will 
suffice in lieu of deposit of an actual copy. In the case of a published 
pictorial or graphic work, deposit of one complete copy, or of 
identifying material in compliance with Sec. 202.21 of these 
regulations, may be made and will suffice in lieu of deposit of two 
actual copies where an individual author is the owner of copyright, and 
either:
    (A) Less than five copies of the work have been published; or
    (B) The work has been published and sold or offered for sale in a 
limited edition consisting of no more than 300 numbered copies.
    (v) Commercial prints and labels. In the case of prints, labels, and 
other advertising matter, including catalogs, published in connection 
with the rental, lease, lending, licensing, or sale of articles of 
merchandise, works of authorship, or services, the deposit of one 
complete copy will suffice in lieu of two copies. Where the print or 
label is published in a larger work, such as a newspaper or other 
periodical, one copy of the entire page or pages upon which it appears 
may be submitted in lieu of the entire larger work. In the case of 
prints or labels physically inseparable from a three-dimensional object, 
identifying material complying with Sec. 202.21 of these regulations 
must be submitted rather than an actual copy or copies except under the 
conditions of paragraph (c)(2)(xi)(B)(4) of this section.
    (vi) Tests. In the case of tests, and answer material for tests, 
published separately from other literary works, the deposit of one 
complete copy will suffice in lieu of two copies. In the case of any 
secure test the Copyright Office will return the deposit to the 
applicant promptly after examination: Provided, That sufficient 
portions, description, or the like are retained so as to constitute a 
sufficient archival record of the deposit.
    (vii) Computer programs and databases embodied in machine-readable 
copies other than CD-ROM format. In cases where a computer program, 
database, compilation, statistical compendium, or the like, if 
unpublished is fixed, or if published is published only in the form of 
machine-readable copies (such as magnetic tape or disks, punched cards, 
semiconductor chip products, or the like) other than a CD-ROM format, 
from which the work cannot ordinarily be perceived except with the aid 
of a machine or device, the deposit shall consist of:
    (A) For published or unpublished computer programs, one copy of 
identifying portions of the program, reproduced in a form visually 
perceptible without the aid of a machine or device, either on paper or 
in microform. For these purposes ``identifying portions'' shall mean one 
of the following:
    (1) The first and last 25 pages or equivalent units of the source 
code if reproduced on paper, or at least the first and last 25 pages or 
equivalent units of the source code if reproduced in microform, together 
with the page or equivalent unit containing the copyright notice, if 
any. If the program is 50 pages or less, the required deposit will be 
the entire source code. In the case of revised versions of computer 
programs, if the revisions occur throughout the entire program, the 
deposit of the page containing the copyright notice and the first and 
last 25 pages of source code will suffice; if the revisions do not occur 
in the first and last 25 pages, the deposit should consist of the page 
containing the copyright notice and any 50 pages of source code 
representative of the revised material; or
    (2) Where the program contains trade secret material, the page or 
equivalent unit containing the copyright notice, if any, plus one of the 
following: the first and last 25 pages or equivalent units of source 
code with portions of the source code containing trade secrets blocked-
out, provided that the blocked-out portions are proportionately less 
than the material remaining, and the deposit reveals an appreciable 
amount of original computer code; or the first and last 10 pages or 
equivalent units of source code alone with no blocked-out portions; or 
the first and last 25 pages of object code, together with any 10 or more 
consecutive pages of source code with no blocked-out portions; or for

[[Page 439]]

programs consisting of, or less than, 50 pages or equivalent units, 
entire source code with the trade secret portions blocked-out, provided 
that the blocked-out portions are proportionately less than the material 
remaining, and the remaining portion reveals an appreciable amount of 
original computer code. If the copyright claim is in a revision not 
contained in the first and last 25 pages, the deposit shall consist of 
either 20 pages of source code representative of the revised material 
with no blocked-out portions, or any 50 pages of source code 
representative of the revised material with portions of the source code 
containing trade secrets blocked-out, provided that the blocked-out 
portions are proportinately less than the material remaining and the 
deposit reveals an appreciable amount of original computer code. 
Whatever method is used to block out trade secret material, at least an 
appreciable amount of original computer code must remain visible.
    (B) Where registration of a program containing trade secrets is made 
on the basis of an object code deposit the Copyright Office will make 
registration under its rule of doubt and warn that no determination has 
been made concerning the existence of copyrightable authorship.
    (C) Where the application to claim copyright in a computer program 
includes a specific claim in related computer screen displays, the 
deposit, in addition to the identifying portions specified in paragraph 
(c)(2)(vii)(A) of this section, shall consist of:
    (1) Visual reproductions of the copyrightable expression in the form 
of printouts, photographs, or drawings no smaller than 3x3 inches and no 
larger than 9x12 inches; or
    (2) If the authorship in the work is predominantly audiovisual, a 
one-half inch VHS format videotape reproducing the copyrightable 
expression, except that printouts, photographs, or drawings no smaller 
than 3x3 inches and no larger than 9x12 inches must be deposited in lieu 
of videotape where the computer screen material simply constitutes a 
demonstration of the functioning of the computer program.
    (D) For published and unpublished automated databases, compilations, 
statistical compendia, and the like, so fixed or published, one copy of 
identifying portions of the work, reproduced in a form visually 
perceptible without the aid of a machine or device, either on paper or 
in microform. For these purposes:
    (1) Identifying portions shall generally mean either the first and 
last 25 pages or equivalent units of the work if reproduced on paper or 
in microform.
    (2) Datafile and file shall mean a group of data records pertaining 
to a common subject matter regardless of their size or the number of 
data items in them.
    (3) In the case of individual registration of a revised version of 
the works identified in this paragraph (c)(2)(vii)(D), the identifying 
portions deposited shall contain 50 representative pages or data records 
which have been added or modified.
    (4) If the work is an automated database comprising multiple 
separate or distinct data files, ``identifying portions'' shall instead 
consist of 50 complete data records from each data file or the entire 
data file, whichever is less, and the descriptive statement required by 
paragraph (c)(2)(vii)(D)(5).
    (5) In the case of group registration for revised or updated 
versions of a database, the claimant shall deposit identifying portions 
that contain 50 representative pages or equivalent units, or 
representative data records which have been marked to disclose (or do in 
fact disclose solely) the new material added on one representative 
publication date if published, or on one representative creation date, 
if unpublished, and shall also deposit a brief typed or printed 
descriptive statement containing the notice of copyright information 
required under (6) or (7) immediately below, if the work bears a notice, 
and;
    (i) The title of the database;
    (ii) A subtitle, date of creation or publication, or other 
information, to distinguish any separate or distinct data files for 
cataloging purposes;
    (iii) The name and address of the copyright claimant;
    (iv) For each separate file, its name and content, including its 
subject, the

[[Page 440]]

origin(s) of the data, and the approximate number of data records it 
contains; and
    (v) In the case of revised or updated versions of an automated 
database, information as to the nature and frequency of changes in the 
database and some identification of the location within the database or 
the separate data files of the revisions.
    (6) For a copyright notice embodied in machine-readable form, the 
statement shall describe exactly the visually perceptible content of the 
notice which appears in or with the database, and the manner and 
frequency with which it is displayed (e.g., at user's terminal only at 
sign-on, or continuously on terminal display, or on printouts, etc.).
    (7) If a visually perceptible copyright notice is placed on any 
copies of the work (or on magnetic tape reels or containers therefor), a 
sample of such notice must also accompany the statement.
    (viii) Machine-readable copies of works other than computer 
programs, databases, and works fixed in a CD-ROM format. Where a 
literary, musical, pictorial, graphic, or audiovisual work, or a sound 
recording, except for works fixed in a CD-ROM format and literary works 
which are computer programs, databases, compilations, statistical 
compendia or the like, if unpublished has been fixed or, if published, 
has been published only in machine-readable form, the deposit must 
consist of identifying material. The type of identifying material 
submitted should generally be appropriate to the type of work embodied 
in machine-readable form, but in all cases should be that which best 
represents the copyrightable content of the work. In all cases the 
identifying material must include the title of the work. A synopsis may 
also be requested in addition to the other deposit materials as 
appropriate in the discretion of the Copyright Office. In the case of 
any published work subject to this section, the identifying material 
must include a representation of the copyright notice, if one exists. 
Identifying material requirements for certain types of works are 
specified below. In the case of the types of works listed below, the 
requirements specified shall apply except that, in any case where the 
specific requirements are not appropriate for a given work the form of 
the identifying material required will be determined by the Copyright 
Office in consultation with the applicant, but the Copyright Office will 
make the final determination of the acceptability of the identifying 
material.
    (A) For pictorial or graphic works, the deposit shall consist of 
identifying material in compliance with Sec. 202.21 of these 
regulations;
    (B) For audiovisual works, the deposit shall consist of either a 
videotape of the work depicting representative portions of the 
copyrightable content, or a series of photographs or drawings, depicting 
representative portions of the work, plus in all cases a separate 
synopsis of the work;
    (C) For musical compositions, the deposit shall consist of a 
transcription of the entire work such as a score, or a reproduction of 
the entire work on an audiocassette or other phonorecord;
    (D) For sound recordings, the deposit shall consist of a 
reproduction of the entire work on an audiocassette or other 
phonorecord;
    (E) For literary works, the deposit shall consist of a transcription 
of representative portions of the work including the first and last 25 
pages or equivalent units, and five or more pages indicative of the 
remainder.
    (ix) Copies containing both visually-perceptible and machine-
readable material other than a CD-ROM format. Where a published literary 
work is embodied in copies containing both visually-perceptible and 
machine-readable material, except in the case of a CD-ROM format, the 
deposit shall consist of the visually-perceptible material and 
identifying portions of the machine-readable material.
    (x) Works reproduced in or on sheetlike materials. In the case of 
any unpublished work that is fixed, or any published work that is 
published, only in the form of a two-dimensional reproduction on 
sheetlike materials such as textiles and other fabrics, wallpaper and 
similar commercial wall coverings, carpeting, floor tile, and similar 
commercial floor coverings, and wrapping paper and similar packaging 
material,

[[Page 441]]

the deposit shall consist of one copy in the form of an actual swatch or 
piece of such material sufficient to show all elements of the work in 
which copyright is claimed and the copyright notice appearing on the 
work, if any. If the work consists of a repeated pictorial or graphic 
design, the complete design and at least part of one repetition must be 
shown. If the sheetlike material in or on which a published work has 
been reproduced has been embodied in or attached to a three-dimensional 
object, such as furniture, or any other three-dimensional manufactured 
article, and the work has been published only in that form, the deposit 
must consist of identifying material complying with Sec. 202.21 of these 
regulations instead of a copy. If the sheet-like material in or on which 
a published work has been reproduced has been embodied in or attached to 
a two-dimensional object such as wearing apparel, bed linen, or a 
similar item, and the work has been published only in that form, the 
deposit must consist of identifying material complying with Sec. 202.21 
of these regulations instead of a copy unless the copy can be folded for 
storage in a form that does not exceed four inches in thickness.
    (xi) Works reproduced in or on three-dimensional objects. (A) In the 
following cases the deposit must consist of identifying material 
complying with Sec. 201.21 of these regulations instead of a copy or 
copies:
    (1) Any three-dimensional sculptural work, including any 
illustration or formulation of artistic expression or information in 
three-dimensional form. Examples of such works include statues, 
carvings, ceramics, moldings, constructions, models, and maquettes; and
    (2) Any two-dimensional or three-dimensional work that, if 
unpublished, has been fixed, or, if published, has been published only 
in or on jewelry, dolls, toys, games, except as provided in paragraph 
(c)(2)(xi)(B)(3) below, or any three-dimensional useful article.
    (B) In the following cases the requirements of paragraph 
(c)(2)(xi)(A) of this section for the deposit of identifying material 
shall not apply:
    (1) Three-dimensional cartographic representations of area, such as 
globes and relief models;
    (2) Works that have been fixed or published in or on a useful 
article that comprises one of the elements of the unit of publication of 
an educational or instructional kit which also includes a literary or 
audiovisual work, a sound recording, or any combination of such works;
    (3) Published games consisting of multiple parts that are packaged 
and published in a box or similar container with flat sides and with 
dimensions of no more than 12x24x6 inches;
    (4) Works reproduced on three-dimensional containers or holders such 
as boxes, cases, and cartons, where the container or holder can be 
readily opened out, unfolded, slit at the corners, or in some other way 
made adaptable for flat storage, and the copy, when flattened, does not 
exceed 96 inches in any dimension; or
    (5) Any three-dimensional sculptural work that, if unpublished, has 
been fixed, or, if published, has been published only in the form of 
jewelry cast in base metal which does not exceed four inches in any 
dimension.
    (xii) Soundtracks. For separate registration of an unpublished work 
that is fixed, or a published work that is published, only as embodied 
in a soundtrack that is an integral part of a motion picture, the 
deposit of identifying material in compliance with Sec. 202.21 of these 
regulations will suffice in lieu of an actual copy of the motion 
picture.
    (xiii) Oversize deposits. In any case where the deposit otherwise 
required by this section exceeds 96 inches in any dimension, identifying 
material complying with Sec. 202.21 of these regulations must be 
submitted instead of an actual copy or copies.
    (xiv) Pictorial advertising material. In the case of published 
pictorial advertising material, except for advertising material 
published in connection with motion pictures, the deposit of either one 
copy as published or prepublication material consisting of camera-ready 
copy is acceptable.
    (xv) Contributions to collective works. In the case of published 
contributions to collective works, the deposit of either one complete 
copy of the best edition of the entire collective work, the complete 
section containing the contribution if published in a newspaper,

[[Page 442]]

the entire page containing the contribution, the contribution cut from 
the paper in which it appeared, or a photocopy of the contribution 
itself as it was published in the collective work, will suffice in lieu 
of two complete copies of the entire collective work.
    (xvi) Phonorecords. In any case where the deposit phonorecord or 
phonorecords submitted for registration of a claim to copyright is 
inaudible on audio playback devices in the Examining Division of the 
Copyright Office, the Office will seek an appropriate deposit in 
accordance with paragraph (d) of this section.
    (xvii) Group registration of serials. For group registration of 
related serials, as specified in Sec. 202.3(b)(6), the deposit must 
consist of one complete copy of the best edition of each issue included 
in the group registration. In addition, two complimentary subscriptions 
to any serial for which group registration is sought must be entered and 
maintained in the name of the Library of Congress, and the copies must 
be submitted regularly and promptly after publication.
    (xviii) Architectural works. (A) For designs of unconstructed 
buildings, the deposit must consist of one complete copy of an 
architectural drawing or blueprint in visually perceptible form showing 
the overall form of the building and any interior arrangements of spaces 
and/or design elements in which copyright is claimed. For archival 
purposes, the Copyright Office prefers that the drawing submissions 
consist of the following in descending order of preference:
    (1) Original format, or best quality form of reproduction, including 
offset or silk screen printing;
    (2) Xerographic or photographic copies on good quality paper;
    (3) Positive photostat or photodirect positive;
    (4) Blue line copies (diazo or ozalid process).

The Copyright Office prefers that the deposit disclose the name(s) of 
the architect(s) and draftsperson(s) and the building site, if known.
    (B) For designs of constructed buildings, the deposit must consist 
of one complete copy of an architectural drawing or blueprint in 
visually perceptible form showing the overall form of the building and 
any interior arrangement of spaces and/or design elements in which 
copyright is claimed. In addition, the deposit must also include 
identifying material in the form of photographs complying with 
Sec. 202.21 of these regulations, which clearly discloses the 
architectural works being registered. For archival purposes, the 
Copyright Office prefers that the drawing submissions constitute the 
most finished form of presentation drawings and consist of the following 
in descending order of preference:
    (1) Original format, or best quality form of reproduction, including 
offset or silk screen printing;
    (2) Xerographic or photographic copies on good quality paper;
    (3) Positive photostat or photodirect positive;
    (4) Blue line copies (diazo or ozalid process).

With respect to the accompanying photographs, the Copyright Office 
prefers 8 x 10 inches, good quality photographs, which clearly show 
several exterior and interior views. The Copyright Office prefers that 
the deposit disclose the name(s) of the architect(s) and draftsperson(s) 
and the building site.
    (xix) Works fixed in a CD-ROM format. (A) Where a work is fixed in a 
CD-ROM format, the deposit must consist of one complete copy of the 
entire CD-ROM package, including a complete copy of any accompanying 
operating software and instructional manual, and a printed version of 
the work embodied in the CD-ROM, if the work is fixed in print as well 
as a CD-ROM. A complete copy of a published CD-ROM package includes all 
of the elements comprising the applicable unit of publication, including 
elements that if considered separately would not be copyrightable 
subject matter or could be the subject of a separate registration.
    (B) In any case where the work fixed in a CD-ROM package cannot be 
viewed on equipment available in the Examining Division of the Copyright 
Office, the Office will seek an appropriate deposit in accordance with 
paragraph (d) of this section, in addition to the deposit of the CD-ROM 
package.

[[Page 443]]

    (d) Special relief. (1) In any case the Register of Copyrights may, 
after consultation with other appropriate officials of the Library of 
Congress and upon such conditions as the Register may determine after 
such consultation:
    (i) Permit the deposit of one copy or phonorecord, or alternative 
identifying material, in lieu of the one or two copies or phonorecords 
otherwise required by paragraph (c)(1) of this section;
    (ii) Permit the deposit of incomplete copies or phonorecords, or 
copies or phonorecords other than those normally comprising the best 
edition; or
    (iii) Permit the deposit of an actual copy or copies, in lieu of the 
identifying material otherwise required by this section; or
    (iv) Permit the deposit of identifying material which does not 
comply with Sec. 202.21 of these regulations.
    (2) Any decision as to whether to grant such special relief, and the 
conditions under which special relief is to be granted, shall be made by 
the Register of Copyrights after consultation with other appropriate 
officials of the Library of Congress, and shall be based upon the 
acquisition policies of the Library of Congress then in force and the 
archival and examining requirements of the Copyright Office.
    (3) Requests for special relief under this paragraph may be combined 
with requests for special relief under Sec. 202.19(e) of these 
regulations. Whether so combined or made solely under this paragraph, 
such requests shall be made in writing to the Chief, Examining Division 
of the Copyright Office, shall be signed by or on behalf of the person 
signing the application for registration, and shall set forth specific 
reasons why the request should be granted.
    (4) The Register of Copyrights may, after consultation with other 
appropriate officials of the Library of Congress, terminate any ongoing 
or continuous grant of special relief. Notice of termination shall be 
given in writing and shall be sent to the individual person or 
organization to whom the grant of special relief had been given, at the 
last address shown in the records of the Copyright Office. A notice of 
termination may be given at any time, but it shall state a specific date 
of termination that is at least 30 days later than the date the notice 
is mailed. Termination shall not affect the validity of any deposit or 
registration made earlier under the grant of special relief.
    (e) Use of copies and phonorecords deposited for the Library of 
Congress. Copies and phonorecords deposited for the Library of Congress 
under section 407 of title 17 and Sec. 202.19 of these regulations may 
be used to satisfy the deposit provisions of this section if they are 
accompanied by an application for registration of claim to copyright in 
the work represented by the deposit, and either a registration fee or a 
deposit account number on the application.

[51 FR 6405, Feb. 24, 1986, as amended at 53 FR 29890, Aug. 9, 1988; 54 
FR 13176, 13181, Mar. 31, 1989; 54 FR 21059, May 16, 1989; 55 FR 50557, 
Dec. 7, 1990; 56 FR 47403, Sept. 19, 1991; 56 FR 55632, Oct. 29, 1991; 
56 FR 60065, Nov. 27, 1991; 56 FR 65191, Dec. 16, 1991; 57 FR 45310, 
Oct. 1, 1992; 60 FR 34168, June 30, 1995; 62 FR 35421, July 1, 1997]



Sec. 202.21  Deposit of identifying material instead of copies.

    (a) General. Subject to the specific provisions of paragraphs (f) 
and (g) of this section, and to Secs. 202.19(e)(1)(iv) and 
202.20(d)(1)(iv), in any case where the deposit of identifying material 
is permitted or required under Sec. 202.19 or Sec. 202.20 of these 
regulations for published or unpublished works, the material shall 
consist of photographic prints, transparencies, photostats, drawings, or 
similar two-dimensional reproductions or renderings of the work, in a 
form visually perceivable without the aid of a machine or device. In the 
case of pictorial or graphic works, such material should reproduce the 
actual colors employed in the work. In all other cases, such material 
may be in black and white or may consist of a reproduction of the actual 
colors.
    (b) Completeness; number of sets. As many pieces of identifying 
material as are necessary to show the entire copyrightable content in 
the ordinary case, but in no case less than an adequate representation 
of such content, of the work for which deposit is being made, or for 
which registration is being sought shall be submitted. Except in cases 
falling under the provisions of

[[Page 444]]

Sec. 202.19(d)(2)(iii) or Sec. 202.20(c)(2)(iii) with respect to 
holograms, only one set of such complete identifying material is 
required.
    (c) Size. Photographic transparencies must be at least 35mm in size 
and, if such transparencies are 3x3 inches or less, must be fixed in 
cardboard, plastic, or similar mounts to facilitate identification, 
handling, and storage. The Copyright Office prefers that transparencies 
larger than 3x3 inches be mounted in a way that facilitates their 
handling and preservation, and reserves the right to require such 
mounting in particular cases. All types of identifying material other 
than photographic transparencies must be not less than 3x3 inches and 
not more than 9x12 inches, but preferably 8x10 inches. Except in the 
case of transparencies, the image of the work must be either lifesize or 
larger, or if less than lifesize must be large enough to show clearly 
the entire copyrightable content of the work.
    (d) Title and dimensions. At least one piece of identifying material 
must, on its front, back, or mount, indicate the title of the work; and 
the indication of an exact measurement of one or more dimensions of the 
work is preferred.
    (e) Copyright notice. In the case of works published with notice of 
copyright, the notice and its position on the work must be clearly shown 
on at least one piece of identifying material. Where necessary because 
of the size or position of the notice, a separate drawing or similar 
reproduction shall be submitted. Such reproduction shall be no smaller 
than 3 x 3 inches and no larger than 9 x 12 inches, and shall show the 
exact appearance and content of the notice, and its specific position on 
the work.
    (f) For separate registration of an unpublished work that is fixed, 
or a published work that is published, only as embodied in a soundtrack 
that is an integral part of a motion picture, identifying material 
deposited in lieu of an actual copy of the motion picture shall consist 
of:
    (1) A transcription of the entire work, or a reproduction of the 
entire work on a phonorecord; and
    (2) Photographs or other reproductions from the motion picture 
showing the title of the motion picture, the soundtrack credits, and the 
copyright notice for the soundtrack, if any.

The provisions of paragraphs (b), (c), (d), and (e) of this section do 
not apply to identifying material deposited under this paragraph (f).
    (g)(1) In the case of unpublished motion pictures (including 
transmission programs that have been fixed and transmitted to the 
public, but have not been published), identifying material deposited in 
lieu of an actual copy shall consist of either:
    (i) An audio cassette or other phonorecord reproducing the entire 
soundtrack or other sound portion of the motion picture, and description 
of the motion picture; or
    (ii) A set consisting of one frame enlargement or similar visual 
reproduction from each 10-minute segment of the motion picture, and a 
description of the motion picture.
    (2) In either case the ``description'' may be a continuity, a 
pressbook, or a synopsis but in all cases it must include:
    (i) The title or continuing title of the work, and the episode 
title, if any;
    (ii) The nature and general content of the program;
    (iii) The date when the work was first fixed and whether or not 
fixation was simultaneous with first transmission;
    (iv) The date of first transmission, if any;
    (v) The running time; and
    (vi) The credits appearing on the work, if any.
    (3) The provisions of paragraphs (b), (c), (d), and (e) of this 
section do not apply to identifying material submitted under this 
paragraph (g).
    (h) In the case where the deposit copy or copies of a motion picture 
cannot be viewed for examining purposes on equipment in the Examining 
Division of the Copyright Office, the ``description'' required by 
Sec. 202.20(c)(2)(ii) of these regulations may be a continuity, a press-
book, a synopsis, or a final shooting script but in all cases must be 
sufficient to indicate the copyrightable material in the work and 
include
    (1) The continuing title of the work and the episode title, if any;

[[Page 445]]

    (2) The nature and general content of the program and of its 
dialogue or narration, if any;
    (3) The running time; and
    (4) All credits appearing on the work including the copyright 
notice, if any.

The provisions of paragraphs (b), (c), and (d) of this section do not 
apply to identifying material submitted under this paragraph (h).

[51 FR 6409, Feb. 24, 1986]



Sec. 202.22  Acquisition and deposit of unpublished television transmission programs.

    (a) General. This section prescribes rules pertaining to the 
acquisition of copies of unpublished television transmission programs by 
the Library of Congress under section 407(e) of title 17 of the United 
States Code, as amended by Pub. L. 94-553. It also prescribes rules 
pertaining to the use of such copies in the registration of claims to 
copywright, under section 408(b)(2).
    (b) Definitions. For purposes of this section:
    (1) The terms copies, fixed, publication, and transmission program 
and their variant forms, have the meanings given to them in section 101 
of title 17. The term network station has the meaning given it in 
section 111(f) of title 17.
    (2) Title 17 means title of the United States Code, as amended by 
Pub. L. 94-553.
    (c) Off-the-air copying. (1) Library of Congress employees acting 
under the general authority of the Librarian of Congress may make a 
fixation of an unpublished television transmission program directly from 
a transmission to the public in the United States, in accordance with 
section 407(e)(1) and (4) of Title 17 of the United States Code. The 
choice of programs selected for fixation shall be based on the Library 
of Congress acquisition policies in effect at the time of fixation. 
Specific notice of an intent to copy a transmission program off-the-air 
will ordinarily not be given. In general, the Library of Congress will 
seek to copy off-the-air a substantial portion of the programming 
transmitted by noncommercial educational broadcast stations as defined 
in section 397 of itle 47 of the United States Code, and will copy off-
the-air selected programming transmitted by commercial broadcast 
stations, both network and independent.
    (2) Upon written request addressed to the Chief, Motion Picture, 
Broadcasting and Recorded Sound Division by a broadcast station or other 
owner of the right of transmission, the Library of Congress will inform 
the requestor whether a particular transmission program has been copied 
off-the-air by the Library.
    (3) The Library of Congress will not knowingly copy off-the-air any 
unfixed or published television transmission program under the copying 
authority of section 407(e) of title 17 of the United States Code.
    (4) The Library of Congress is entitled under this paragraph (c) to 
presume that a television program transmitted to the public in the 
United States by a noncommercial educational broadcast station as 
defined in section 397 of title 47 of the United States Code has been 
fixed but not published.
    (5) The presumption established by paragraph (c)(4) of this section 
may be overcome by written declaration and submission of appropriate 
documentary evidence to the Chief, Motion Picture, Broadcasting and 
Recorded Sound Division, either before or after off-the-air copying of 
the particular transmission program by the Library of Congress. Such 
written submission shall contain:
    (i) The identification, by title and time of broadcast, of the 
transmission program in question;
    (ii) A brief statement declaring either that the program was not 
fixed or that it was published at the time of transmission;
    (iii) If it is declared that the program was published at the time 
of transmission, a brief statement of the facts of publication, 
including the date and place thereof, the method of publication, the 
name of the owner of the right of first publication, and whether the 
work was published in the United States with notice of copyright; and
    (iv) The actual handwritten signature of an officer or other duly 
authorized agent of the organization which transmitted the program in 
question.

[[Page 446]]

    (6) A declaration that the program was unfixed at the time of 
transmission shall be accepted by the Library of Congress, unless the 
Library can cite evidence to the contrary, and the off-the-air copy will 
either be
    (i) Erased; or
    (ii) Retained, if requested by the owner of copyright or of any 
exclusive right, to satisfy the deposit provision of section 408 of 
title 17 of the United States Code.
    (7) If it is declared that the program was published at the time of 
transmission, the Library of Congress is entitled under this section to 
retain the copy to satisfy the deposit requirement of section 407(a) of 
title 17 of the United States Code.
    (8) The Library of Congress in making fixations of unpublished 
transmission programs transmitted by commercial broadcast stations shall 
not do so without notifying the transmitting organization or its agent 
that such activity is taking place. In the case of network stations, the 
notification will be sent to the particular network. In the case of any 
other commercial broadcasting station, the notification will be sent to 
the particular broadcast station that has transmitted, or will transmit, 
the program. Such notice shall, if possible, be given by the Library of 
Congress prior to the time of broadcast. In every case, the Library of 
Congress shall transmit such notice no later than fourteen days after 
such fixation has occurred. Such notice shall contain:
    (i) The identification, by title and time of broadcast, of the 
transmission program in question;
    (ii) A brief statement asserting the Library of Congress' belief 
that the transmission program has been, or will be by the date of 
transmission, fixed and is unpublished, together with language 
converting the notice to a demand for deposit under section 407 (a) and 
(b) of title 17 of the United States Code, if the transmission program 
has been published in the United States.
    (9) The notice required by paragraph (c)(8) of this section shall 
not cover more than one transmission program except that the notice may 
cover up to thirteen episodes of one title if such episodes are 
generally scheduled to be broadcast at the same time period on a regular 
basis, or may cover all the episodes comprising the title if they are 
scheduled to be broadcast within a period of not more than two months.
    (d) Demands for deposit of a television transmission program. (1) 
The Register of Copyrights may make a written demand upon the owner of 
the right of transmission in the United States to deposit a copy of a 
specific transmission program for the benefit of the Library of Congress 
under the authority of section 407(e)(2) of title 17 of the United 
States Code.
    (2) The Register of Copyrights is entitled to presume, unless clear 
evidence to the contrary is proffered, that the transmitting 
organization is the owner of the United States transmission right.
    (3) Notices of demand shall be in writing and shall contain:
    (i) The identification, by title and time of broadcast, of the work 
in question;
    (ii) An explanation of the optional forms of compliance, including 
transfer of ownership of a copy to the Library, lending a copy to the 
Library for reproduction, or selling a copy to the Library at a price 
not to exceed the cost of reproducing and supplying the copy;
    (iii) A ninety-day deadline by which time either compliance or a 
request for an extension of a request to adjust the scope of the demand 
or the method for fulfilling it shall have been received by the Register 
of Copyrights;
    (iv) A brief description of the controls which are placed on the 
copies' use;
    (v) A statement concerning the Register's perception of the 
publication status of the program, together with language converting 
this demand to a demand for a deposit, under 17 U.S.C. 407 (a) and (c), 
if the recipient takes the position that the work is published; and
    (vi) A statement that a compliance copy must be made and retained if 
the notice is received prior to transmission.
    (4) With respect to paragraph (d)(3)(ii) of this section, the sale 
of a copy in compliance with a demand of this nature shall be at a price 
not to

[[Page 447]]

exceed the cost to the Library of reproducing and supplying the copy. 
The notice of demand should therefore inform the recipient of that cost 
and set that cost, plus reasonable shipping charges, as the maximum 
price for such a sale.
    (5) Copies transferred, lent, or sold under paragraph (d) of this 
section shall be of sound physical condition as described in Appendix A 
to this section.
    (6) Special relief. In the case of any demand made under paragraph 
(d) of this section the Register of Copyrights may, after consultation 
with other appropriate officials of the Library of Congress and upon 
such conditions as the Register may determine after such consultation,
    (i) Extend the time period provided in subparagraph (d)(3)(iii);
    (ii) Make adjustments in the scope of the demand; or
    (iii) Make adjustments in the method of fulfilling the demand. Any 
decision as to whether to allow such extension or adjustments shall be 
made by the Register of Copyrights after consultation with other 
appropriate officials of the Library of Congress and shall be made as 
reasonably warranted by the circumstances. Requests for special relief 
under paragraph (d) of this section shall be made in writing to the 
Copyright Acquisitions Division, shall be signed by or on behalf of the 
owner of the right of transmission in the United States and shall set 
forth the specific reasons why the request shall be granted.
    (e) Disposition and use of copies. (1) All copies acquired under 
this section shall be maintained by the Motion Picture, Broadcasting and 
Recorded Sound Division of the Library of Congress. The Library may make 
one archival copy of a program which it has fixed under the provisions 
of section 407(e)(1) of title 17 of the United States Code and paragraph 
(c) of this section.
    (2) All copies acquired or made under this section, except copies of 
transmission programs consisting of a regularly scheduled newscast or 
on-the-spot coverage of news events, shall be subject to the 
restrictions concerning copying and access found in Library of Congress 
Regulation 818-17, Policies Governing the Use and Availability of Motion 
Pictures and Other Audiovisual Works in the Collections of the Library 
of Congress, or its successors. Copies of transmission programs 
consisting of regularly scheduled newscasts or on-the-spot coverage of 
news events are subject to the provisions of the ``American Television 
and Radio Archives Act'' (section 170 of title 2 of the United States 
Code) and such regulations as the Librarian of Congress shall prescribe.
    (f) Registration of claims to copyright. (1) Copies fixed by the 
Library of Congress under the provisions of paragraph (c) of this 
section may be used as the deposit for copyright registration provided 
that:
    (i) The application and fee, in a form acceptable for registration, 
is received by the Copyright Office not later than ninety days after 
transmission of the program, and
    (ii) Correspondence received by the Copyright Office in the envelope 
containing the application and fee states that a fixation of the instant 
work was made by the Library of Congress and requests that the copy so 
fixed be used to satisfy the registration deposit provisions.
    (2) Copies transferred, lent, or sold to the Library of Congress 
under the provisions of paragraph (d) of this section may be used as the 
deposit for copyright registration purposes only when the application 
and fee, in a form acceptable for registration, accompany, in the same 
container, the copy lent, transferred, or sold, and there is an 
explanation that the copy is intended to satisfy both the demand issued 
under section 407(e)(2) of title 17 of the United States Code and the 
registration deposit provisions.
    (g) Agreements modifying the terms of this section. (1) The Library 
of Congress may, at its sole discretion, enter into an agreement whereby 
the provision of copies of unpublished television transmission programs 
on terms different from those contained in this section is authorized.

[[Page 448]]

    (2) Any such agreement may be terminated without notice by the 
Library of Congress.

(17 U.S.C. 407, 408, 702)

[48 FR 37208, Aug. 17, 1983, as amended at 56 FR 7815, Feb. 26, 1991; 60 
FR 34168, June 30, 1995]



Sec. 202.23  Full term retention of copyright deposits.

    (a) General. (1) This section prescribes conditions under which a 
request for full term retention, under the control of the Copyright 
Office, of copyright deposits (copies, phonorecords, or identifying 
material) of published works may be made and granted or denied pursuant 
to section 704(e) of title 17 of the United States Code. Only copies, 
phonorecords, or identifying material deposited in connection with 
registration of a claim to copyright under title 17 of the United States 
Code are within the provisions of this section. Only the depositor or 
the copyright owner of record of the work identified by the copyright 
deposit, or a duly authorized agent of the depositor or copyright owner, 
may request full term retention. A fee for this service is fixed by this 
section pursuant to section 708(a)(11) of title 17 of the United States 
Code.
    (2) For purposes of this section, under the control of the Copyright 
Office shall mean within the confines of Copyright Office buildings and 
under the control of Copyright Office employees, including retention in 
a Federal records center, but does not include transfer to the Library 
of Congress collections.
    (3) For purposes of this section, full term retention means 
retention for a period of 75 years from the date of publication of the 
work identified by the particular copyright deposit which is retained.
    (4) For purposes of this section, copyright deposit or its plural 
means the copy, phonorecord, or identifying material submitted to the 
Copyright Office in connection with a published work that is 
subsequently registered and made part of the records of the Office.
    (b) Form and content of request for full term retention--(1) Forms. 
The Copyright Office does not provide printed forms for the use of 
persons requesting full term retention of copyright deposits.
    (2) Requests for full term retention must be made in writing 
addressed to the Chief, Information and Reference Division of the 
Copyright Office, and shall (i) be signed by or on behalf of the 
depositor or copyright owner of record, and (ii) clearly indicate that 
full term retention is desired.
    (3) The request for full term retention must adequately identify the 
particular copyright deposit to be retained, preferably by including the 
title used in the registration application, the name of the depositor or 
copyright owner of record, the publication date, and, if registration 
was completed earlier, the registration number.
    (c) Conditions under which requests will be granted or denied--(1) 
General. A request that meets the requirements of paragraph (b) will 
generally be granted if the copyright deposit for which full term 
retention is requested has been continuously in the custody of the 
Copyright Office and the Library of Congress has not, by the date of the 
request, selected the copyright deposit for its collections.
    (2) Time of request. The request for full term retention of a 
particular copyright deposit may be made at the time of deposit or at 
any time thereafter; however, the request will be granted only if at 
least one copy, phonorecord, or set of identifying material is in the 
custody of the Copyright Office at the time of the request. Where the 
request is made concurrent with the initial deposit of the work for 
registration, the requestor must submit one copy or phonorecord more 
than the number specified in Sec. 202.20 of 37 CFR for the particular 
work.
    (3) One deposit retained. The Copyright Office will retain no more 
than one copy, phonorecord, or set of identifying material for a given 
registered work.
    (4) Denial of request for full term retention. The Copyright Office 
reserves the right to deny the request for full term retention where:
    (i) The excessive size, fragility, or weight of the deposit would, 
in the sole discretion of the Register of Copyrights, constitute an 
unreasonable

[[Page 449]]

storage burden. The request may nevertheless be granted if, within 60 
calendar days of the original denial of the request, the requestor pays 
the reasonable administrative costs, as fixed in the particular case by 
the Register of Copyrights, of preparing acceptable identifying 
materials for retention in lieu of the actual copyright deposit;
    (ii) The Library of Congress has selected for its collections the 
single copyright deposit, or both, if two copies or phonorecords were 
deposited; or
    (iii) Retention would result in a health or safety hazard, in the 
sole judgment of the Register of Copyrights. The request may 
nevertheless be granted if, within 60 calendar days of the original 
denial of the request, the requestor pays the reasonable administrative 
costs, as fixed in the particular case by the Register of Copyrights of 
preparing acceptable identifying materials for retention in lieu of the 
actual copyright deposit.
    (d) Form of copyright deposit. If full term retention is granted, 
the Copyright Office will retain under its control the particular 
copyright deposit used to make registration for the work. Any deposit 
made on after September 19, 1978 shall satisfy the requirements of 37 
CFR 202.20 and 202.21.
    (e) Fee for full term retention. (1) Pursuant to section 708(a)(11) 
of title 17 of the United States Code, the Register of Copyrights has 
fixed the fee for full term retention, as prescribed in Sec. 201.3(d), 
for each copyright deposit granted full term retention.
    (2) A check or money order in the amount prescribed in Sec. 201.3(d) 
payable to the Register of Copyrights, must be received in the Copyright 
Office within 60 calendar days from the date of mailing of the Copyright 
Office's notification to the requestor that full term retention has been 
granted for a particular copyright deposit.
    (3) The Copyright Office will issue a receipt acknowledging payment 
of the fee and identifying the copyright deposit for which full term 
retention has been granted.
    (f) Selection by Library of Congress--(1) General. All published 
copyright deposits are available for selection by the Library of 
Congress until the Copyright Office has formally granted a request for 
full term retention. Unless the requestor has deposited the additional 
copy or phonorecord specified by paragraph (c)(2) of this section, the 
Copyright Office will not process a request for full term retention 
submitted concurrent with a copyright registration application and 
deposit, until the Library of Congress has had a reasonable amount of 
time to make its selection determination.
    (2) A request for full term retention made at the time of deposit of 
a published work does not affect the right of the Library to select one 
or both of the copyright deposits.
    (3) If one copyright deposit is selected, the second deposit, if 
any, will be used for full term retention.
    (4) If both copyright deposits are selected, or, in the case where 
the single deposit made is selected, full term retention will be granted 
only if the additional copy or phonorecord specified by paragraph (c)(2) 
was deposited.
    (g) Termination of full term storage. Full term storage will cease 
75 years after the date of publication of the work identified by the 
copyright deposit retained, and the copyright deposit will be disposed 
of in accordance with section 704, paragraphs (b) through (d), of title 
17 of the United States Code.

[52 FR 28822, Aug. 4, 1987, as amended at 60 FR 34168, June 30, 1995; 63 
FR 29139, May 28, 1998; 64 FR 29522, June 1, 1999]

 Appendix A to Part 202--Technical Guidelines Regarding Sound Physical 
                                Condition

    To be considered a copy ``of sound physical condition'' within the 
meaning of 37 CFR 202.22(d)(5), a copy shall conform to all the 
technical guidelines set out in this Appendix.
    A. Physical Condition. All portions of the copy that reproduce the 
transmission program must be:
    1. Clean: Free from dirt, marks, spots, fungus, or other smudges, 
blotches, blemishes, or distortions;
    2. Undamaged: Free from burns, blisters, tears, cuts, scratches, 
breaks, erasure, or other physical damage. The copies must also be free 
from:
    (i) Any damage that interferes with performance from the tape or 
other reproduction, including physical damage resulting from earlier 
mechanical difficulties such as cassette jamming, breaks, tangles, or 
tape overflow; and

[[Page 450]]

    (ii) Any erasures, damage causing visual or audible defects or 
distortions or any material remaining from incomplete erasure of 
previously recorded works.
    3. Unspliced: Free from splices in any part of the copy reproducing 
the transmission program, regardless of whether the splice involves the 
addition or deletion of material or is intended to repair a break or 
cut.
    4. Undeteriorated: Free from any visual or aural deterioration 
resulting from aging or exposure to climatic, atmospheric, or other 
chemical or physical conditions, including heat, cold, humidity, 
electromagnetic fields, or radiation. The copy shall also be free from 
excessive brittleness or stretching, from any visible flaking of oxide 
from the tape base or other medium, and from other visible signs of 
physical deterioration or excessive wear.
    B. Physical Appurtenances of Deposit Copy.
    1. Physical Housing of Video Tape Copy. (a) In the case of video 
tape reproduced for reel-to-reel performance, the deposit copy shall 
consist of reels of uniform size and length. The length of the reels 
will depend on both the size of the tape and its running time (the last 
reel may be shorter). (b) In the case of video tape reproduced for 
cassette, cartridge, or similar performance, the tape drive mechanism 
shall be fully operable and free from any mechanical defects.
    2. ``Leader'' or Equivalent. The copy, whether housed in reels, 
cassettes, or cartridges, shall have a leader segment both preceding the 
beginning and following the end of the recording.
    C. Visual and Aural Quality of Copy:
    1. Visual Quality. The copy should be equivalent to an evaluated 
first generation copy from an edited master tape and must reproduce a 
flawless and consistent electronic signal that meets industry standards 
for television screening.
    2. Aural Quality. The sound channels or other portions must 
reproduce a flawless and consistent electronic signal without any 
audible defects.

(17 U.S.C. 407, 408, 702)

[48 FR 37209, Aug. 17, 1983, as amended at 60 FR 34168, June 30, 1995]

Appendix B to Part 202--``Best Edition'' of Published Copyrighted Works 
             for the Collections of the Library of Congress

    The copyright law (title 17, United States Code) requires that 
copies or phonorecords deposited in the Copyright Office be of the 
``best edition'' of the work. The law states that ``The `best edition' 
of a work is the edition, published in the United States at any time 
before the date of deposit, that the Library of Congress determines to 
be most suitable for its purposes.'' (For works first published only in 
a country other than the United States, the law requires the deposit of 
the best edition as first published.)
    When two or more editions of the same version of a work have been 
published, the one of the highest quality is generally considered to be 
the best edition. In judging quality, the Library of Congress will 
adhere to the criteria set forth below in all but exceptional 
circumstances.
    Where differences between editions represent variations in 
copyrightable content, each edition is a separate version and ``best 
edition'' standards based on such differences do not apply. Each such 
version is a separate work for the purpose of the copyright law.
    The criteria to be applied in determining the best edition of each 
of several types of material are listed below in descending order of 
importance. In deciding between two editions, a criterion-by-criterion 
comparison should be made. The edition which first fails to satisfy a 
criterion is to be considered of inferior quality and will not be an 
acceptable deposit. Example: If a comparison is made between two 
hardbound editions of a book, one a trade edition printed on acid-free 
paper, and the other a specially bound edition printed on average paper, 
the former will be the best edition because the type of paper is a more 
important criterion than the binding.
    Under regulations of the Copyright Office, potential depositors may 
request authorization to deposit copies or phonorecords of other than 
the best edition of a specific work (e.g., a microform rather than a 
printed edition of a serial), by requesting ``special relief'' from the 
deposit requirements. All requests for special relief should be in 
writing and should state the reason(s) why the applicant cannot send the 
required deposit and what the applicant wishes to submit instead of the 
required deposit.

                        I. Printed Textual Matter

    A. Paper, Binding, and Packaging:
    1. Archival-quality rather than less-permanent paper.
    2. Hard cover rather than soft cover.
    3. Library binding rather than commercial binding.
    4. Trade edition rather than book club edition.
    5. Sewn rather than glue-only binding.
    6. Sewn or glued rather than stapled or spiral-bound.
    7. Stapled rather than spiral-bound or plastic-bound.
    8. Bound rather than looseleaf, except when future looseleaf 
insertions are to be issued. In the case of looseleaf materials, this 
includes the submission of all binders and indexes when they are part of 
the unit as published and offered for sale or distribution. 
Additionally, the regular and timely receipt of all appropriate 
looseleaf updates, supplements, and releases including supplemental

[[Page 451]]

binders issued to handle these expanded versions, is part of the 
requirement to properly maintain these publications.
    9. Slip-cased rather than nonslip-cased.
    10. With protective folders rather than without (for broadsides).
    11. Rolled rather than folded (for broadsides).
    12. With protective coatings rather than without (except broadsides, 
which should not be coated).
    B. Rarity:
    1. Special limited edition having the greatest number of special 
features.
    2. Other limited edition rather than trade edition.
    3. Special binding rather than trade binding.
    C. Illustrations:
    1. Illustrated rather than unillustrated.
    2. Illustrations in color rather than black and white.
    D. Special Features:
    1. With thumb notches or index tabs rather than without.
    2. With aids to use such as overlays and magnifiers rather than 
without.
    E. Size:
    1. Larger rather than smaller sizes. (Except that large-type 
editions for the partially-sighted are not required in place of editions 
employing type of more conventional size.)

                             II. Photographs

    A. Size and finish, in descending order of preference:
    1. The most widely distributed edition.
    2. 8 x 10-inch glossy print.
    3. Other size or finish.
    B. Unmounted rather than mounted.
    C. Archival-quality rather than less-permanent paper stock or 
printing process.

                          III. Motion Pictures

    Film medium is considered a better quality than any other medium. 
The formats under ``film'' and ``video formats'' are listed in 
descending order of preference:
    A. Film
    1. Preprint material with special arrangement.
    2. 35mm positive prints.
    3. 16mm positive prints.
    B. Video Formats
    1. One-inch open reel tape
    2. Betacam SP
    3. D-2
    4. Betacam
    5. Videodisc
    6. Three-quarter inch cassette
    7. One-half inch VHS cassette

                        IV. Other Graphic Matter

    A. Paper and Printing:
    1. Archival quality rather than less-permanent paper.
    2. Color rather than black and white.
    B. Size and Content:
    1. Larger rather than smaller size.
    2. In the case of cartographic works, editions with the greatest 
amount of information rather than those with less detail.
    C. Rarity:
    1. The most widely distributed edition rather than one of limited 
distribution.
    2. In the case of a work published only in a limited, numbered 
edition, one copy outside the numbered series but otherwise identical.
    3. A photographic reproduction of the original, by special 
arrangement only.
    D. Text and Other Materials:
    1. Works with annotations, accompanying tabular or textual matter, 
or other interpretative aids rather than those without them.
    E. Binding and Packaging:
    1. Bound rather than unbound.
    2. If editions have different binding, apply the criteria in I.A.2-
I.A.7, above.
    3. Rolled rather than folded.
    4. With protective coatings rather than without.

                             V. Phonorecords

    A. Compact digital disc rather than a vinyl disc.
    B. Vinyl disc rather than tape.
    C. With special enclosures rather than without.
    D. Open-reel rather than cartridge.
    E. Cartridge rather than cassette.
    F. Quadraphonic rather than stereophonic.
    G. True stereophonic rather than monaural.
    H. Monaural rather than electronically rechanneled stereo.

                        VI. Musical Compositions

    A. Fullness of Score:
    1. Vocal music:
    a. With orchestral accompaniment--
    i. Full score and parts, if any, rather than conductor's score and 
parts, if any. (In cases of compositions published only by rental, 
lease, or lending, this requirement is reduced to full score only.)
    ii. Conductor's score and parts, if any, rather than condensed score 
and parts, if any. (In cases of compositions published only by rental, 
lease, or lending, this requirement is reduced to conductor's score 
only.)
    b. Unaccompanied: Open score (each part on separate staff) rather 
than closed score (all parts condensed to two staves).
    2. Instrumental music:
    a. Full score and parts, if any, rather than conductor's score and 
parts, if any. (In cases of compositions published only by rental, 
lease, or lending, this requirement is reduced to full score only.)
    b. Conductor's score and parts, if any, rather than condensed score 
and parts, if any. (In

[[Page 452]]

cases of compositions published only by rental, lease, or lending, this 
requirement is reduced to conductor's score only.)
    B. Printing and Paper:
    1. Archival-quality rather than less-permanent paper.
    C. Binding and Packaging:
    1. Special limited editions rather than trade editions.
    2. Bound rather than unbound.
    3. If editions have different binding, apply the criteria in I.A.2-
I.A.12, above.
    4. With protective folders rather than without.

                             VII. Microforms

    A. Related Materials:
    1. With indexes, study guides, or other printed matter rather than 
without.
    B. Permanence and Appearance:
    1. Silver halide rather than any other emulsion.
    2. Positive rather than negative.
    3. Color rather than black and white.
    C. Format (newspapers and newspaper-formatted serials):
    1. Reel microfilm rather than any other microform.
    D. Format (all other materials):
    1. Microfiche rather than reel microfilm.
    2. Reel microfilm rather than microform cassetes.
    3. Microfilm cassettes rather than micro-opaque prints.
    E. Size:
    1. 35 mm rather than 16 mm.

                      VIII. Machine-Readable Copies

    A. Computer Programs
    1. With documents and other accompanying material rather than 
without.
    2. Not copy-protected rather than copy-protected (if copy-protected 
then with a backup copy of the disk(s)).
    3. Format:
    a. PC-DOS or MS-DOS (or other IBM compatible formats, such as 
XENIX):
    (i) 5\1/4\" Diskette(s).
    (ii) 3\1/2\" Diskette(s).
    (iii) Optical media, such as CD-ROM--best edition should adhere to 
prevailing NISO standards.
    b. Apple Macintosh:
    (i) 3\1/2\" Diskette(s).
    (ii) Optical media, such as CD-ROM--best edition should adhere to 
prevailing NISO standards.
    B. Computerized Information Works, Including Statistical Compendia, 
Serials, or Reference Works:
    1. With documentation and other accompanying material rather than 
without.
    2. With best edition of accompanying program rather than without.
    3. Not copy-protected rather than copy-protected (if copy-protected 
then with a backup copy of the disk(s)).
    4. Format
    a. PC-DOS or MS-DOS (or other IBM compatible formats, such as 
XENIX):
    (i) Optical media, such as CD-ROM--best edition should adhere to 
prevailing NISO standards.
    (ii) 5\1/4\" Diskette(s).
    (iii) 3\1/2\" Diskette(s).
    b. Apple Macintosh:
    (i) Optical media, such as CD-ROM--best edition should adhere to 
prevailing NISO standards.
    (ii) 3\1/2\" Diskette(s).

               IX. Works Existing in More Than One Medium

    Editions are listed below in descending order of preference.
    A. Newspapers, dissertations and theses, newspaper-formatted 
serials:
    1. Microform.
    2. Printed matter.
    B. All other materials:
    1. Printed matter.
    2. Microform.
    3. Phonorecord.

[54 FR 42299, Oct. 16, 1989, as amended at 62 FR 51603, Oct. 2, 1997]



PART 203--FREEDOM OF INFORMATION ACT: POLICIES AND PROCEDURES--Table of Contents




                              Organization

Sec.
203.1  General.
203.2  Authority and functions.
203.3  Organization.

                               Procedures

203.4  Methods of operation.

                       Availability of Information

203.5  Inspection and copying.

                   Charges for Search for Reproduction

203.6  Schedule of fees and methods of payment for services rendered.

    Authority: 17 U.S.C 702; 5 U.S.C 552, as amended.

    Source: 43 FR 774, Jan. 4, 1978, unless otherwise noted.

                              Organization



Sec. 203.1  General.

    This information is furnished for the guidance of the public and in 
compliance with the requirements of section 552 of Title 5, United 
States Code, as amended.

[[Page 453]]



Sec. 203.2  Authority and functions.

    (a) The administration of the copyright law was entrusted to the 
Library of Congress by an act of Congress in 1870, and the Copyright 
Office has been a separate department of the Library since 1897. The 
statutory functions of the Copyright Office are contained in and carried 
out in accordance with the Copyright Act. Pub. L. 94-553 (90 Stat. 2541-
2602), 17 U.S.C. 101-1101.

[43 FR 774, Jan. 4, 1978, as amended at 62 FR 35421, July 1, 1997]



Sec. 203.3  Organization.

    (a) In general. The Office of the Register exercises overall 
direction of the work of the Copyright Office, including work in 
conjunction with copyright legislation and promulgation of copyright 
regulations. The Office of the Register of Copyrights includes the legal 
and administrative, and automation staff.
    (b) The Associate Register of Copyright for Operations has oversight 
of the operating divisions of the Copyright Office. The operating 
divisions are:
    (1) The Receiving and Processing Division, which receives incoming 
materials, dispatches outgoing materials and establishes control over 
fiscal accounts.
    (2) The Examining Division, which examines all applications and 
material presented to the Copyright Office for registration of original 
and renewal copyright claims, and which determines whether the materials 
deposited constitute coyrightable subject matter and whether the other 
legal and formal requirements of title 17 have been met.
    (3) The Cataloging Division, which prepares the bibliographic 
description of all copyrighted works registered in the Copyright Office, 
including the recording of legal facts of copyright pertaining to each 
work, in an on-line database in which copyright records can be searched; 
and which also examines and catalogs in an on-line database documents 
submitted for recordation.
    (4) The Information and Reference Division, which provides a 
national copyright information service through the Public Information 
Office, educates the public on the copyright law, issues and distributes 
information materials, responds to reference requests regarding 
copyright matters, prepares search reports based upon copyright records, 
certifies copies of legal documents concerned with copyright, and 
maintains liaison with the United States Customs Service, the Department 
of the Treasury, and the United States Postal Service on certain 
matters. The Information and Reference Division also develops, services, 
stores, and preserves the official records and catalogs of the Copyright 
Office, including applications for registration, historical records, and 
materials deposited for copyright registration that are not selected by 
the Library of Congress for addition to its collections.
    (5) The Licensing Division, which implements the sections of the 
Copyright Act dealing with secondary transmissions of radio and 
television programs, compulsory licenses for making and distributing 
phonorecords of nondramatic musical, pictorial, graphic, and sculptural 
works in connection with noncommercial broadcasting. The Licensing 
Division is in charge of collecting the statutory royalties and 
distributing these royalties based on either a voluntary agreement among 
the interested parties or a determination of the Copyright Arbitration 
Royalty Panels.
    (c) The Copyright General Counsel is a principal legal officer of 
the Office. The General Counsel has overall supervisory responsibility 
for the legal staff and primary responsibility for providing liaison on 
legal matters between the Office and the Congress, the Department of 
Justice and other agencies of Government, the courts, the legal 
community, and a wide range of interests affected by the copyright law. 
The Copyright General Counsel has responsibility for overseeing all 
functions related to the administration of the compulsory licenses 
including oversight of the Copyright Arbitration Royalty Panels.
    (d) The Associate Register of Copyrights for International Affairs 
and Policy is a principal legal adviser to the Register with primary 
responsibility for the international aspects of

[[Page 454]]

copyright protection, as well as legislative and policy matters.
    (e) The Associate Register of Copyrights for National Programs is 
primarily responsible for initiating, planning, developing, and 
implementing projects and activities related to the Copyright Office 
electronic registration, recordations, and deposit system (CORDS).
    (f) The Office has no field organization.
    (g) The Office is located in The James Madison Memorial Building of 
the Library of Congress, 1st and Independence Avenue, SE., Washington, 
DC. 20559. The Public Information Office is located in Room LM-401. Its 
hours are 8:30 a.m. to 5 p.m., Monday through Friday except legal 
holidays. The phone number of the Public Information Office is (202) 
707-3000. Informational material regarding the copyright law, the 
registration process, fees, and related information about the Copyright 
Office and its functions may be obtained free of charge from the Public 
Information Office upon request.
    (h) All Copyright Office forms may be obtained free of charge from 
the Public Information Office or by calling the Copyright Office Hotline 
anytime day or night at (202) 707-9100.
    (i) The Copyright Office maintains an ``electronic reading room'' by 
making available certain documents and records on its World Wide Web 
page and by providing access to documents that affect the public in 
electronic format pursuant to 5 USC 552(a)(2). Copyright Office records 
in machine-readable form cataloged from January 1, 1978, to the present, 
including registration information and recorded documents, are available 
on the Internet. Frequently requested Copyright Office circulars, 
announcements, and recently proposed as well as final regulations are 
available on-line. The address for the Copyright Office's home page is: 
http://www.loc.gov/copyright; information may also be accessed by 
connecting to the Library of Congress' home page on the World Wide Web. 
The address is: http://www.loc.gov. Other Copyright Office documents may 
be provided on disk when so requested.

[60 FR 34168, June 30, 1995, as amended at 62 FR 55742, Oct. 28, 1997]

                               Procedures



Sec. 203.4  Methods of operation.

    (a) In accordance with section 552(a)(2) of the Freedom of 
Information Act, the Copyright Office makes available for public 
inspection and copying records of copyright registrations and of final 
refusals to register claims to copyright; statements of policy and 
interpretations which have been adopted but are not published in the 
Federal Register; and administrative staff manuals and instructions to 
the staff that affect a member of the public.
    (b) The Copyright Office also maintains and makes available for 
public inspection and copying current indexes providing identifying 
information as to matters issued, adopted, or promulgated after July 4, 
1967, that are within the scope of 5 U.S.C. 552(a)(2). The Copyright 
Office has determined that publication of these indexes is unnecessary 
and impractical. Copies of the indexes will be provided to any member of 
the public upon request at the cost of reproduction.
    (c) The material and indexes referred to in paragraphs (a) and (b) 
of this section are available for public inspection and copying at the 
Public Information Office of the Copyright Office, Room LM-401, The 
James Madison Memorial Building of the Library of Congress, 1st and 
Independence Avenue, SE., Washington, DC, between the hours of 8:30 a.m. 
and 5 p.m., Monday through Friday except legal holidays.
    (d) The Supervisory Copyright Information Specialist is responsible 
for responding to all initial requests submitted under the Freedom of 
Information Act. Individuals desiring to obtain access to Copyright 
Office information under the Act should make a written request to that 
effect either by mail to the Supervisory Copyright Information 
Specialist, Information and Publications Section, Information and 
Reference Division, Copyright Office, Library of Congress, Washington, 
DC 20559, or in person between the hours of 8:30 a.m. and 5 p.m. on any 
working day

[[Page 455]]

except legal holidays at Room LM-401, The James Madison Memorial 
Building, 1st and Independence Avenue, SE., Washington, DC. If a request 
is made by mail, both the request and the envelope carrying it should be 
plainly marked Freedom of Information Act Request. Failure to so mark a 
mailed request may delay the Office response.
    (e) Records must be reasonably described. A request reasonably 
describes records if it enables the Office to identify the records 
requested by any process that is not unreasonably burdensome or 
disruptive of Office operations. The Supervisory Copyright Information 
Specialist will, upon request, aid members of the public to formulate 
their requests in such a manner as to enable the Office to respond 
effectively and reduce search costs for the requester.
    (f) The Office will respond to all properly marked mailed requests 
and all personally delivered written requests for records within twenty 
(20) working days of receipt by the Supervisory Copyright Information 
Specialist. Inquiries should be mailed to: Copyright Office, GC/I&R, 
P.O. Box 70400 Southwest Station, Washington, DC 20024. If hand 
delivered, materials should go to: Copyright Public Information Office, 
LM 401, James Madison Memorial Building, Library of Congress, 101 
Independence Avenue, S.E., Washington, DC Office hours are from 8:30 
a.m. to 5:00 p.m., Monday through Friday, excluding holidays. If it is 
determined that an extension of time greater than ten (10) working days 
is necessary to respond to a request due to unusual circumstances, as 
defined in paragraph (i) of this section, the Supervisory Copyright 
Information Specialist shall so notify the requester and give the 
requester the opportunity to:
    (1) Limit the scope of the request so that it may be processed 
within twenty (20) working days, or
    (2) Arrange with the Office an alternative time frame for processing 
the request or a modified request. If a request is denied, the written 
notification will include the basis for the denial, names of all 
individuals who participated in the determination, and procedures 
available to appeal the determination. If a requestor wishes to appeal a 
denial of some or all of his or her request for information, he or she 
must make an appeal in writing within 30 calendar days of the date of 
the Office's denial. The request should be directed to the General 
Counsel of the United States Copyright Office.
    (g) In the event a request is denied and that denial is appealed, 
the Supervisory Copyright Information Specialist will refer the appeal 
to the General Counsel. Appeals shall be set forth in writing and 
addressed to the Supervisory Copyright Information Specialist at the 
address listed in paragraph (d) of this section. The appeal shall 
include a statement explaining the basis for the appeal. Determinations 
of appeals will be set forth in writing and signed by the General 
Counsel or his or her delegate within 20 working days. If, on appeal, 
the denial is in whole or in part upheld, the written determination will 
include the basis for the appeal denial and will also contain a 
notification of the provisions for judicial review and the names of the 
persons who participated in the determination.
    (h) In unusual circumstances, the General Counsel may extend the 
time limits prescribed in paragraphs (f) and (g) of this section for not 
more than 10 working days. The extension period may be split between the 
initial request and the appeal but the total period of extension shall 
not exceed 10 working days. Extensions will be by written notice to the 
person making the request. The Copyright Office will advise the 
requester of the reasons for the extension and the date the 
determination is expected. As used in this paragraph ``unusual 
circumstances'' means:
    (1) The need to search for and collect the requested records from 
establishments that are physically separate from the office processing 
the request;
    (2) The need to search for, collect, and examine a voluminous amount 
of separate and distinct records which are demanded in a single request; 
or
    (3) The need for consultation, which shall be conducted with all 
practical speed, with another agency having a substantial interest in 
the determination of the request or among two or

[[Page 456]]

more components of the Copyright Office which have a substantial subject 
matter interest therein.
    (i) The Supervisory Copyright Information Specialist will consider 
requests for expedited processing of requests in cases where the 
requester demonstrates a compelling need for such processing. The term 
``compelling need'' means:
    (1) That a failure to obtain requested records on an expedited basis 
could reasonably be expected to pose an imminent threat to the life or 
physical safety of an individual; or
    (2) With respect to a request made by a person primarily engaged in 
disseminating information, urgency to inform the public concerning 
actual or alleged Federal Government activity. Requesters for expedited 
processing must include in their requests a statement setting forth the 
basis for the claim that a ``compelling need'' exists for the requested 
information, certified by the requester to be true and correct to the 
best of his or her knowledge and belief. The Office will determine 
whether to grant a request for expedited processing and will notify the 
requester of such determination within ten (10) days of receipt of the 
request. If a request for expedited processing is approved, documents 
responsive to the request will be processed as soon as is practicable. 
Denials of requests for expedited processing may be appealed to the 
Office of the General Counsel.

[43 FR 774, Jan. 4, 1978, as amended at 47 FR 36820, Aug. 24, 1982; 62 
FR 55742, Oct. 28, 1997; 63 FR 1927, Jan 13, 1998]

                       Availability of Information



Sec. 203.5  Inspection and copying.

    (a) When a request for information has been approved, the person 
making the request may make an appointment to inspect or copy the 
materials requested during regular business hours by writing or 
telephoning the Supervisory Copyright Information Specialist at the 
address or telephone number listed in Sec. 203.4(d). Such material may 
be copied manually without charge, and reasonable facilities are 
available in the Public Information Office for that purpose. Also, 
copies of individual pages of such materials will be made available at 
the price per page specified in paragraphs (a) and (b) of Sec. 203.6.

                   Charges for Search for Reproduction



Sec. 203.6  Schedule of fees and methods of payment for services rendered.

    (a) General. The fee schedule of this section does not apply with 
respect to the charging of fees for those records for which the 
Copyright Act of 1976, title 17 of the United States Code (Pub. L. 94-
553) requires a fee to be charged. The fees required to be charged are 
contained in Sec. 201.3 of this chapter, or have been established by the 
Register of Copyrights or Library of Congress pursuant to the 
requirements of that section. If the Copyright Office receives a request 
for copies or other services involving the public records or indexes of 
the Office or for copies of deposited articles for which a fee is 
required to be charged, the Office will notify the requester of t he 
procedure established to obtain the copies or services and the amount of 
the chargeable fees. Fees pursuant to title 5 U.S.C., section 552 for 
all other services not involving the public records of the Copyright 
Office will be assessed according to the schedule in paragraph (b) of 
this section. All fees so assessed shall be charged to the requester, 
except where the charge is limited under paragraph (c) of this section 
or where a waiver or reduction of fees is granted under paragraph (d) of 
this section. Requests by record subjects asking for copies of records 
about themseleves shall be processed under the Privacy Act fee schedule 
found in 37 CFR 204.6.
    (b) FOIA requests. In responding to requests under this part the 
following fees shall be assessed, unless a waiver or reduction in fees 
has been granted pursuant to paragraph (d) of this section:
    (1) For copies of certificates of copyright registration, $25.
    (2) For copies of all other Copyright Office records not otherwise 
provided for in this section a minimum fee of $15.00 for up to 15 pages 
and $.50 per page over 15.
    (3) For each hour or fraction of an hour spent in searching for a 
requested

[[Page 457]]

record, $65, except that no search fee shall be assessed with respect to 
requests by educational institutions, non-commercial scientific 
institutions, and representatives of the news media. Search fees shall 
be assessed with respect to all other requests, subject to the 
limitations of paragraph (c) of this section. Fees may be assessed for 
time spent searching even if the search fails to locate any responsive 
records or where the records located are subsequently determined to be 
entirely exempt from disclosure.
    (4) For the issuance of any certification, $65 for each hour or 
fraction of an hour consumed in respect thereto.
    (5) Other costs incurred by the Copyright Office in fulfilling a 
request will be chargeable at the actual cost of the Office.
    (6) For computer searches of records, which may be undertaken 
through the use of existing programing, the actual direct costs of 
conducting the search including the cost of operating a central 
processing unit for that portion of operating time that is directly 
attributable to searching for records responsive to a request, as well 
as the direct costs of operator/programmer salary apportionable to 
search (at no less than $65 per hour or fraction thereof).
    (7) No review fees will be charged for time spent in resolving legal 
or policy issues affecting access to Office records. No charge will be 
made for the time involved in examining records to determine whether 
some or all such records may be withheld.
    (c) Fee limitations. The following limitations on fees shall apply:
    (1) Except for requesters seeking records for commercial use the 
following will be provided without charge--
    (i) The first 100 pages of duplication (or its cost equivalent), and
    (ii) The first two hours of search (or its cost equivalent).
    (2) No fees will be charged for ordinary packaging and mailing 
costs.
    (d) Waiver or reduction of fees. (1) Records responsive to a request 
under 5 U.S.C. 552 shall be furnished without charge or at a charge 
reduced below that established under paragraph (b) of this section where 
the Office determines, based upon information provided by a requester in 
support of a fee waiver request or otherwise made known to the Office, 
that disclosure of the requested information is in the public interest 
because it is likely to contribute significantly to public understanding 
of the operations or activities of the government and is not primarily 
in the commercial interest of the requester. Requests for a waiver or 
reduction of fees shall be considered on a case-by-case basis.
    (2) In order to determine whether the first fee waiver requirement 
is met--i.e., that disclosure of the requested information is in the 
public interest because it is likely to contribute significantly to 
public understanding of the operations or activities of the government--
the Office shall consider the following four factors in sequence:
    (i) The subject of the request: Whether the subject of the requested 
records concerns ``the operations or activities of the government.''
    (ii) The informative value of the information to be disclosed: 
Whether the disclosure is ``likely to contribute'' to an understanding 
of government operations or activities.
    (iii) The contribution to an understanding of the subject by the 
public likely to result from disclosures: Whether disclosure of the 
requested information will contribute to ``public understanding.''
    (iv) The significance of the contribution to public understanding: 
Whether the disclosure is likely to contribute ``significantly'' to 
public understanding of government operations or activities.
    (3) In order to determine whether the second fee waiver requirement 
is met--i.e., that disclosure of the requested information is not 
primarily in the commercial interest of the requester--the Office shall 
consider the following two factors in sequence:
    (i) The existence and magnitude of a commercial interest: Whether 
the requester has a commercial interest that would be furthered by the 
requested disclosure.
    (ii) The primary interest in disclosure: Whether the magnitude of 
the identified commercial interest of the

[[Page 458]]

requester is sufficiently large, in comparison with the public interest 
in disclosure, that disclosure is ``primarily in the commercial interest 
of the requester.''
    (4) Where only a portion of the requested records satisfies both of 
the requirements for a waiver or reduction of fees under this paragraph, 
a waiver or reduction shall be granted only as to that portion.
    (e) Notice of anticipated fees in excess of $25.00. Where the Office 
determines or estimates that the fees to be assessed under this section 
may amoun t to more than $25.00, the Office shall notify the requester 
as soon as praticable of the actual or estimated amount of the fees, 
unless the requester has indicated in advance his willingness to pay 
fees as high as those anticipated. (If only a portion of the fee can be 
estimated readily, the Office shall advise the requester that the 
estimated fee may be only a portion of the total fee.) In cases where a 
requester has been notified that actual or estimated fees may amount to 
more than $25.00, the requests will be deemed not to have been received 
until the requester has agreed to pay the anticipated total fee. A 
notice to a requester pursuant to this paragraph shall offer him the 
opportunity to confer with Copyright Office personnel in order to 
reformulate his request to meet his needs at a lower cost.
    (f) Aggregation of requests. Where the Office reasonably believes 
that a requester or a group of requesters acting in concert is 
attempting to divide a request into a series of requests for the purpose 
of evading the assessment of fees, the Office may aggregate any such 
requests and charge accordingly.
    (g) Advance payments. (1) Where the Office estimates that a total 
fee to be assessed under this section is likely to exceed $250.00, it 
may require the requester to make an advance payment of an amount up to 
the entire estimated fee before beginning to process the request, except 
where it receives a satisfactory assurance of full payment from a 
requester with a history of prompt payment.
    (2) Where a requester has previously failed to pay a records access 
fee within 30 days of the date of billing, the Office may require the 
requester to pay the full amount owed, plus any applicable interest (as 
provided for in paragraph (h) of this section), and to make an advance 
payment of the full amount of any estimated fee before the Office begins 
to process a new request or continues to process a pending request from 
that requester.
    (3) For requests other than those described in paragraphs (g)(1) and 
(g)(2) of this section, the Office shall not require the requester to 
make an advance payment, i.e., a payment made before work is commenced 
or continued on a request. Payment owed for work already completed is 
not an advance payment.
    (h) Charging interest. The Office may assess interest charges on an 
unpaid bill starting on the 31st day following the day on which the bill 
was sent to the requester. Once a fee payment has been received by a 
component of the Office, even if not processed, the accrual of interest 
shall be stayed. Interest charges shall be assessed at the rate 
prescribed in section 3717 of Title 31 U.S.C. and shall accrue from the 
date of billing.

[53 FR 8456, Mar. 15, 1988, as amended at 56 FR 59885, Nov. 26, 1991; 62 
FR 55742, Oct. 28, 1997; 63 FR 29139, May 28, 1998; 64 FR 29522, June 1, 
1999]



PART 204--PRIVACY ACT: POLICIES AND PROCEDURES--Table of Contents




Sec.
204.1  Purposes and scope.
204.2  Definitions.
204.3  General policy.
204.4  Procedure for notification of the existence of records pertaining 
          to individuals.
204.5  Procedures for requesting access to records.
204.6  Fees.
204.7  Request for correction or amendment of records.
204.8  Appeal of refusal to correct or amend an individual's record.
204.9  Judicial review.

    Authority: 17 U.S.C. 702; and 5 U.S.C. 552(a).

    Source: 43 FR 776, Jan. 4, 1978, unless otherwise noted.



Sec. 204.1  Purposes and scope.

    The purposes of these regulations are:

[[Page 459]]

    (a) The establishment of procedures by which an individual can 
determine if the Copyright Office maintains a system of records in which 
there is a record pertaining to the individual; and
    (b) The establishment of procedures by which an individual may gain 
access to a record or information maintained on that individual and have 
such record or information disclosed for the purpose of review, copying, 
correction, or amendment.



Sec. 204.2  Definitions.

    For purposes of this part:
    (a) The term individual means a citizen of the United States or an 
alien lawfully admitted for permanent residence;
    (b) The term maintain includes maintain, collect, use, or 
disseminate;
    (c) The term record means any item, collection, or grouping of 
information about an individual that is maintained by an agency, 
including, but not limited to, his education, financial transactions, 
medical history, and criminal or employment history, and that contains 
his or her name, or the identifying number, symbol, or other identifying 
particular assigned to the individual, such as a finger or voice print 
or a photograph;
    (d) The term system of records means a group of any records under 
the control of any agency from which information is retrieved by the 
name of the individual; and
    (e) The term routine use means, with respect to the disclosure of a 
record, the use of such record for a purpose which is compatible with 
the purpose for which it was collected.



Sec. 204.3  General policy.

    The Copyright Office serves primarily as an office of public record. 
Section 705 of title 17, United States Code, requires the Copyright 
Office to open for public inspection all records of copyright deposits, 
registrations, recordations, and other actions taken under title 17. 
Therefore, a routine use of all Copyright Office systems of records 
created under section 705 of title 17 is disclosure to the public. All 
Copyright Office systems of records created under section 705 of title 
17 are also available for public copying as required by section 706(a), 
with the exception of copyright deposits, whose reproduction is governed 
by section 706(b) and the regulations issued under that section. In 
addition to the records mandated by section 705 of title 17, the 
Copyright Office maintains other systems of records which are necessary 
for the Office effectively to carry out its mission. These systems of 
records are routinely consulted and otherwise used by Copyright Office 
employees in the performance of their duties. The Copyright Office will 
not sell, rent, or otherwise make publicly available any mailing list 
prepared by the Office.

[47 FR 36821, Aug. 24, 1982]



Sec. 204.4  Procedure for notification of the existence of records pertaining to individuals.

    (a) The Copyright Office will publish in the Federal Register, upon 
the establishment or revision of the system of records, notices of all 
Copyright Office systems of records subject to the Privacy Act, as 
provided by 5 U.S.C., section 552a(e)(4). Individuals desiring to know 
if a Copyright Office system of records contains a record pertaining to 
them should submit a written request to that effect either by mail to 
the Supervisory Copyright Information Specialist, Information Section, 
Information and Reference Division, Copyright Office, Library of 
Congress, Washington, DC 20559, or in person between the hours of 9 a.m. 
and 4 p.m. on any working day except legal holidays at Room LM-401, The 
James Madison Memorial Building, 1st and Independence Avenue, SE., 
Washington, DC.
    (b) The written request should identify clearly the system of 
records which is the subject of inquiry, by reference, whenever 
possible, to the system number and title as given in the notices of 
systems of records in the Federal Register. Both the written request and 
the envelope carrying it should be plainly marked ``Privacy Act 
Request.'' Failure to so mark the request may delay the Office response.
    (c) The Office will acknowledge all properly marked requests within 
ten working days of receipt and will notify the requester within 30 
working days of

[[Page 460]]

receipt of the existence or non-existence of records pertaining to the 
requester.
    (d) Since all Copyright Office Records created under section 705 of 
title 17 are open to public inspection, no identity verification is 
necessary for individuals who wish to know whether a system of records 
created under section 705 pertains to them.

[43 FR 776, Jan. 4, 1978, as amended at 47 FR 36821, Aug. 24, 1982; 50 
FR 697, Aug. 14, 1985; 60 FR 34169, June 30, 1995]



Sec. 204.5  Procedures for requesting access to records.

    (a) Individuals desiring to obtain access to Copyright Office 
information pertaining to them in a system of records other than those 
created under section 705 of title 17 should make a written request, 
signed by themselves or their duly authorized agent, to that effect 
either by mail to the Supervisory Copyright Information Specialist, 
Information Section, Information and Reference Division, Copyright 
Office, Library of Congress, Washington, DC 20559, or in person between 
the hours of 8:30 a.m. and 5 p.m. on any working day except legal 
holidays at Room LM-401, The James Madison Memorial Building, 1st and 
Independence Avenue, SE., Washington, DC.
    (b) The written request should identify clearly the system of 
records which is the subject of inquiry, by reference, whenever 
possible, to the system number and title as given in the notices of 
systems of records in the Federal Register. Both the written request and 
the envelope carrying it should be plainly marked ``Privacy Act 
Request.'' Failure to so mark the request may delay the Office response.
    (c) The Office will acknowledge all properly marked requests within 
ten working days of receipt; and will notify the requester within 30 
working days of receipt when and where access to the record will be 
granted. If the individual requested a copy of the record, the copy will 
accompany such notification.

[43 FR 776, Jan. 4, 1978, as amended at 47 FR 36821, Aug. 24, 1982; 60 
FR 34169, June 30, 1995]



Sec. 204.6  Fees.

    (a) The Copyright Office will provide, free of charge, one copy to 
an individual of any record pertaining to that individual contained in a 
Copyright Office system of records, except where the request is for a 
copy of a record for which a specific fee is required and identified in 
Sec. 201.3 of this chapter, in which case that fee shall be charged. For 
additional copies of records not covered by section 708 the fee will be 
a minimum of $15.00 for up to 15 pages and $.50 per page over 15. The 
Office will require prepayment of fees estimated to exceed $25.00 and 
will remit any excess paid or bill an additional amount according to the 
differences between the final fee charged and the amount prepaid. When 
prepayment is required, a request is not deemed ``received'' until 
prepayment has been made.
    (b) The Copyright Office may waive the fee requirement whenever it 
determines that such waiver would be in the public interest.

[43 FR 776, Jan. 4, 1978, as amended at 47 FR 36821, Aug. 24, 1982; 56 
FR 59886, Nov. 26, 1991; 63 FR 29139, May 28, 1998; 64 FR 29522, June 1, 
1999]



Sec. 204.7  Request for correction or amendment of records.

    (a) Any individual may request the correction or amendment of a 
record pertaining to her or him. With respect to an error in a copyright 
registration, the procedure for correction and fee chargeable is 
governed by section 408(d) of title 17 of the United States Code, and 
the regulations issued as authorized by that section. With respect to an 
error in any other record, the request shall be in writing and delivered 
either by mail addressed to the Supervisory Copyright Information 
Specialist, Information Section, Information and Reference Division, 
Copyright Office, Library of Congress, Washington, DC 20559, or in 
person between the hours of 8:30 a.m. and 5 p.m. on any working day 
except legal holidays, at Room LM-401, The James Madison Memorial 
Building, 1st and Independence Avenue, SE., Washington, DC. The request 
shall explain why the individual believes the record to be incomplete, 
inaccurate, irrelevant, or untimely.
    (b) With respect to an error in a copyright registration, the time 
limit

[[Page 461]]

for Office response to requests for correction is governed by section 
408(d) of Pub. L. 94-553, and the regulations issued as authorized by 
that section. With respect to other requests for correction or amendment 
of records, the Office will respond within 10 working days indicating to 
the requester that the requested correction or amendment has been made 
or that it has been refused. If the requested correction or amendment is 
refused, the Office response will indicate the reason for the refusal 
and the procedure available to the individual to appeal the refusal.

[43 FR 776, Jan. 4, 1978, as amended at 47 FR 36821, Aug. 24, 1982; 60 
FR 34169, June 30, 1995]



Sec. 204.8  Appeal of refusal to correct or amend an individual's record.

    (a) An individual has 90 calendar days from receipt of the Copyright 
Office's response to appeal the refusal to correct or amend a record 
pertaining to the individual. The individual should submit a written 
appeal to the Register of Copyright, Copyright Office, Library of 
Congress, Washington, DC 20559 for the final administrative 
determination. Appeals, and the envelopes carrying them, should be 
plainly marked ``Privacy Act Appeal''. Failure to so mark the appeal may 
delay the Register's response. An appeal should contain a copy of the 
request for amendment or correction and a copy of the record alleged to 
be untimely, inaccurate, incomplete or irrelevant.
    (b) The Register will issue a written decision granting or denying 
the appeal within 30 working days after receipt of the appeal unless, 
after showing good cause, the Register extends the 30 day period. If the 
appeal is granted, the requested amendment or correction will be made 
promptly. If the appeal is denied, in whole or part, the Register's 
decision will set forth reasons for the denial. Additionally, the 
decision will advise the requester that he or she has the right to file 
with the Copyright Office a concise statement of his or her reasons for 
disagreeing with the refusal to amend the record and that such statement 
will be attached to the requester's record and included in any future 
disclosure of such record.



Sec. 204.9  Judicial review.

    Within two years of the receipt of a final adverse administrative 
determination, an individual may seek judicial review of that 
determination as provided in 5 U.S.C. 552a(g)(1).



PART 211--MASK WORK PROTECTION--Table of Contents




Sec.
211.1  General provisions.
211.2  Recordation of documents pertaining to mask works.
211.3  Mask work fees.
211.4  Registration of claims of protection in mask works.
211.5  Deposit of identifying material.
211.6  Methods of affixation and placement of mask work notice.

    Authority: 17 U.S.C. 702 and 908.

    Source: 50 FR 26719, June 28, 1985, unless otherwise noted.



Sec. 211.1  General provisions.

    (a) Mail and other communications with the Copyright Office 
concerning the Semiconductor Chip Protection Act of 1984, Pub. L. 98-
620, chapter 9 of title 17 U.S.C., shall be addressed to: Library of 
Congress, Department MW, Washington, DC 20540.
    (b) Section 201.2 of this chapter relating to the information given 
by the Copyright Office, and parts 203 and 204 of this chapter 
pertaining to the Freedom of Information Act and Privacy Act, shall 
apply, where appropriate, to the administration by the Copyright Office 
of the Semiconductor Chip Protection Act of 1984, Pub. L. 98-620.
    (c) For purposes of this part, the terms semiconductor chip product, 
mask work, fixed, commercially exploited, and owner, shall have the 
meanings set forth in section 901 of title 17 U.S.C.



Sec. 211.2  Recordation of documents pertaining to mask works.

    The conditions prescribed in Sec. 201.4 of this chapter for 
recordation of transfers of copyright ownership and other documents 
pertaining to copyright are applicable to the recordation of documents 
pertaining to mask works under section 903 of Title 17 U.S.C.

[[Page 462]]



Sec. 211.3  Mask work fees.

    (a) Section 201.3 of this chapter prescribes the fees or charges 
established by the Register of Copyrights for services relating to mask 
works.
    (b) Section 201.6 of this chapter on the payment and refund of 
Copyright Office fees shall apply to mask work fees.

[50 FR 26719, June 28, 1985, as amended at 56 FR 59886, Nov. 26, 1991; 
59 FR 38372, July 28, 1994; 63 FR 29139, May 28, 1998; 64 FR 29522, June 
1, 1999]



Sec. 211.4  Registration of claims of protection in mask works.

    (a) General. This section prescribes conditions for the registration 
of claims of protection in mask works pursuant to section 908 of Title 
17 U.S.C.
    (b) Application for registration. (1) For purposes of registration 
of mask work claims, the Register of Copyrights has designated ``Form 
MW'' to be used for all applications submitted on and after January 7, 
1985. Copies of the form are available free upon request to the Public 
Information Office, U.S. Copyright Office, Library of Congress, 
Washington, DC 20559. Applications submitted before January 7, 1985 will 
be dated January 7, 1985.
    (2) An application for registration of a mask work claim may be 
submitted by the owner of the mask work, or the duly authorized agent of 
any such owner.
    (i) The owner of a mask work includes a party that has obtained the 
transfer of all of the exclusive rights in the work, but does not 
include the transferee of less than all of the exclusive rights, or the 
licensee of all or less than all of these rights.
    (ii) For purposes of eligibility to claim mask work protection 
pursuant to section 902(a)(1)(A) of 17 U.S.C., the owner of the mask 
work must be either the initial owner or a person who has obtained by 
transfer the totality of rights in the mask work under the Act.
    (3) An application for registration shall be submitted on Form MW 
prescribed by the Register under paragraph (b)(1) of this section, and 
shall be accompanied by the registration fee and deposit required under 
17 U.S.C. 908 and Secs. 211.3 and 211.5 of these regulations. The 
application shall contain the information required by the form and its 
accompanying instructions, and shall include a certification. The 
certification shall consist of:
    (i) A declaration that the applicant is authorized to submit the 
application and that the statements made are correct to the best of that 
person's knowledge; and
    (ii) The handwritten signature of the applicant, accompanied by the 
typed or printed name of that person.
    (c) One registration per mask work. (1) Subject to the exception 
specified in paragraph (c)(2) of this section, only one registration can 
generally be made for the same version of a mask work fixed in an 
intermediate or final form of any semiconductor chip product. However, 
where an applicant for registration alleges that an earlier registration 
for the same version of the work is unauthorized and legally invalid and 
submits for recordation a signed affidavit, a registration may be made 
in the applicant's name.
    (2) Notwithstanding the general rule permitting only one 
registration per work, owners of mask works in final forms of 
semiconductor chip products that are produced by adding metal-connection 
layers to unpersonalized gate arrays may separately register the entire 
unpersonalized gate array and the custom metallization layers. 
Applicants seeking to register separately entire unpersonalized gate 
arrays or custom metallization layers should make the nature of their 
claim clear at Space 8 of application Form MW. For these purposes, an 
``unpersonalized gate array'' is an intermediate form chip product that 
includes a plurality of circuit elements that are adaptable to be 
personalized into a plurality of different final form chip products, in 
which some of the circuit elements are, or will be, connected as gates.
    (d) Registration as a single work. Subject to the exception 
specified in paragraph (c)(2) of this section, for purposes of 
registration on a single application and upon payment of a single fee, 
the following shall be considered a single work.
    (1) In the case of a mask work that has not been commercially 
exploited: All original mask work elements fixed

[[Page 463]]

in a particular form of a semiconductor chip product at the time an 
application for registration is filed and in which the owner or owners 
of the mask work is or are the same; and
    (2) In the case of a mask work that has been commercially exploited. 
All original mask work elements fixed in a semiconductor chip product at 
the time that product was first commercially exploited and in which the 
owner or owners of the mask is or are the same.
    (e) Registration in most complete form. Owners seeking registration 
of a mask work contribution must submit the entire original mask work 
contribution in its most complete form as fixed in a semiconductor chip 
product. The most complete form means the stage of the manufacturing 
process which is closest to completion. In cases where the owner is 
unable to register on the basis of the most complete form because he or 
she lacks control over the most complete form, an averment of this fact 
must be made at Space 2 of Form MW. Where such an averment is made, the 
owner may register on the basis of the most complete form in his or her 
possession. For applicants seeking to register an unpersonalized gate 
array or custom metallization layers under paragraph (c)(2), the most 
complete form is the entire chip on which the unpersonalized gate array 
or custom metallization layers reside(s), and registration covers those 
elements of the chip in which work protection is asserted.
    (f) Section 914 Orders. (1) For purposes of this section, the terms 
Commissioner and Order shall have the meaning given them in the 
Guidelines for the Submission of Applications for Interim Protection of 
Mask Works Under 17 U.S.C. 914 (49 FR 44517; Nov. 7, 1984) as follows:
    (i) Commissioner means the Assistant Secretary of Commerce and 
Commissioner of Patents and Trademarks.
    (ii) Order means an action by the Commissioner issuing or 
terminating an Order extending to foreign nationals, domiciliaries and 
sovereign authorities the privilege of making interim registrations for 
mask works pursuant to Chapter 9 of title 17, U.S.C.
    (2) In the case of a mask work which is eligible for registration 
only after issuance of an Order of the Commissioner pursuant to section 
914, 17 U.S.C., applications for registration under section 908 may be 
submitted, along with the proper identifying material and fee, if a 
request for issuance of an Order has been made in accordance with the 
Guidelines. The Copyright Office will process and examine the claims, 
but will not issue a certificate of registration unless and until an 
Order is issued pursuant to 17 U.S.C. 914.
    (3) The effective date of any registration premised on a section 
914, 17 U.S.C. Order shall not be earlier than the effective date of the 
Order.
    (4) Registration premised on a section 914, 17 U.S.C. Order will be 
refused unless the Order is given an effective date before, and the 
proper application, deposit of identifying material, and fee are 
received in the Copyright Office before:
    (i) July 1, 1985, in the case of mask works first commercially 
exploited between July 1, 1983, and November 8, 1984; or
    (ii) The expiration of two years following first commercial 
exploitation, in the case of a mask work commercially exploited on or 
after November 8, 1984.
    (5) Subject to paragraph (e)(4) of this section, registration of a 
claim premised on a section 914, 17 U.S.C. Order will be made even after 
the termination or expiration of an Order, provided that a proper 
application, deposit of identifying material, and fee are received in 
the Copyright Office while the Order is in effect, and the claim is 
otherwise entitled to registration under chapter 9 of title 17 U.S.C.
    (g) Corrections and amplifications of prior registration. Except for 
errors or omissions made by the Copyright Office, no corrections or 
amplifications can be made to the information contained in the record of 
a completed registration after the effective date of the registration. A 
document purporting to correct or amplify the information in a completed 
registration may be recorded in the Copyright Office for whatever effect 
a court of competent jurisdiction may later give to it, if the document 
is signed by the owner of the

[[Page 464]]

mask work, as identified in the registration record, or by a duly 
authorized agent of the owner.

[50 FR 26719, June 28, 1985, as amended at 56 FR 7818, Feb. 26, 1991]



Sec. 211.5  Deposit of identifying material.

    (a) General. This section prescribes rules pertaining to the deposit 
of identifying material for registration of a claim of protection in a 
mask work under section 908 of title 17 U.S.C.
    (b) Nature of required deposit. Subject to the provisions of 
paragraph (c) of this section, the deposit of identifying material to 
accompany an application for registration of a mask work claim under 
Sec. 211.4 of these regulations shall consist of:
    (1) In the case of a commercially exploited mask work, four 
reproductions of the mask work fixed in the form of the semiconductor 
chip product in which it was first commercially exploited. Defective 
chips may be deposited under this section provided that the mask work 
contribution would be revealed in reverse dissection of the chips. The 
four reproductions shall be accompanied by a visually perceptible 
representation of each layer of the mask work consisting of:
    (i) Sets of plastic color overlay sheets;
    (ii) Drawings or plots in composite form on a single sheet or on 
separate sheets; or
    (iii) A photograph of each layer of the work fixed in a 
semiconductor chip product.

The visually perceptible representation of a mask work deposited under 
this section shall be reproduced on material which can be readily stored 
in an 8\1/2\ x 11 inch format, and shall be reproduced at a 
magnification sufficient to reveal the basic circuitry design of the 
mask work and which shall in all cases be at least 20 times 
magnification.
    (2) In the case of a mask work that has not been commercially 
exploited, one of the following:
    (i) Where the mask work contribution in which registration is sought 
represents twenty percent or more of the area of the intended final 
form, a visually perceptible representation of the work in accordance 
with paragraph (b)(1) (i) or (ii) of this section. In addition to the 
deposit of visually perceptible representations of the work, an 
applicant may, at his or her option, deposit four reproductions in the 
most complete form of the mask work as fixed in a semiconductor product.
    (ii) Where the mask work contribution in which registration is 
sought represents less than twenty percent of the area of the intended 
final form, a visually perceptible representation of the work which 
reveals the totality of the mask work contribution to a person trained 
in the state of the art. The visually perceptible representations may 
consist of any combination of plastic color overlay sheets, drawing or 
plots in composite form, or a photograph or photographs of the entire 
mask set. If the visually perceptible representation fails to identify 
all of the elements of the mask work contribution, they may be 
accompanied by additional explanatory material. The visually perceptible 
representation of a mask work deposited under this section shall be 
reproduced on material which can be readily stored in an 8\1/2\ x 11 
inch format and shall be of sufficient magnification and completeness to 
reveal all elements of the mask work contribution. In addition to the 
deposit of visually perceptible representations of the work, an 
applicant may, at his or her option, deposit four reproductions in the 
most complete form of the mask work as fixed in a semiconductor chip 
product.
    (c) Trade secret protection. Where specific layers of a mask work 
fixed in a semiconductor chip product contain information in which trade 
secret protection is asserted, certain material may be withheld as 
follows:
    (1) Mask works commercially exploited. For commercially exploited 
mask works no more than two layers of each five or more layers in the 
work. In lieu of the visually perceptible representations required under 
paragraph (b)(1) of this section, identifying portions of the withheld 
material must be submitted. For these purposes, identifying portions 
shall mean (i) a printout of the mask work design data pertaining to 
each withheld layer, reproduced in microform, or (ii) visually 
perceptible representations in accordance with paragraph (b)(1) (i), 
(ii), or (iii) of this

[[Page 465]]

section with those portions containing sensitive information maintained 
under a claim of trade secrecy blocked out, provided that the portions 
remaining are greater than those which are blocked out.
    (2) Mask work not commercially exploited. For mask works not 
commercially exploited falling under paragraph (b)(2)(i) of this 
section, any layer may be withheld. In lieu of the visually perceptible 
representations required under paragraph (b)(2) of this section, 
``identifying portions'' shall mean (i) a printout of the mask work 
design data pertaining to each withheld layer, reproduced in microform, 
in which sensitive information maintained under a claim of trade secrecy 
has been blocked out or stripped, or (ii) visually perceptible 
representations in accordance with paragraph (b)(2)(i) with those 
portions containing sensitive information maintained under a claim of 
trade secrecy blocked out, provided that the portions remaining are 
greater than those which are blocked out. The identifying portions shall 
be accompanied by a single photograph of the top or other visible layers 
of the mask work fixed in a semiconductor chip product in which the 
sensitive information maintained under a claim of trade secrecy has been 
blocked out, provided that the blocked out portions do not exceed the 
remaining portions.
    (d) Special relief. The Register of Copyrights may decide to grant 
special relief from the deposit requirements of this section, and shall 
determine the conditions under which special relief is to be granted., 
Requests for special relief under this paragraph shall be made in 
writing to the Chief, Examining Division of the Copyright Office, 
Washington, DC 20559, shall be signed by the person signing the 
application for registration, shall set forth specific reasons why the 
request should be granted and shall propose an alternative form of 
deposit.
    (e) Retention and disposition of deposits. (1) Any identifying 
material deposited under this section, including material deposited in 
connection with claims that have been refused registration, are the 
property of the United States Government.
    (2) Where a claim of protection in a mask work is registered in the 
Copyright Office, the identifying material deposited in connection with 
the claim shall be retained under the control of the Copyright Office, 
including retention in Government storage facilities, during the period 
of protection. After that period, it is within the joint discretion of 
the Register of Copyrights and the Librarian of Congress to order its 
destruction or other disposition.

[50 FR 26719, June 28, 1985, as amended at 60 FR 34169, June 30, 1995]



Sec. 211.6  Methods of affixation and placement of mask work notice.

    (a) General. (1) This section specifies methods of affixation and 
placement of the mask work notice that will satisfy the notice 
requirement in section 909 of title 17 U.S.C. A notice deemed 
``acceptable'' under this regulation shall be considered to satisfy the 
requirement of that section that it be affixed ``in such manner and 
location as to give reasonable notice'' of protection. As provided in 
that section, the examples specified in this regulation shall not be 
considered exhaustive of the methods of affixation and positions giving 
reasonable notice of the claim of protection in a mask work.
    (2) The acceptability of a mask work notice under these regulations 
shall depend upon its being legible under normal conditions of use, and 
affixed in such manner and position that, when affixed, it may be viewed 
upon reasonable examination.
    (b) Elements of mask work notice. The elements of a mask work notice 
shall consist of:
    (1) The words mask work, the symbol ``M'' or the symbol ``M'' (the 
letter M in a circle); and
    (2) The name of the owner or owners of the mask work or an 
abbreviation by which the name is recognized or is generally known.
    (c) Methods of affixation and placement of the notice. In the case 
of a mask work fixed in a semiconductor chip

[[Page 466]]

product, the following locations are acceptable:
    (1) A gummed or other label securely affixed or imprinted upon the 
package or other container used as a permanent receptacle for the 
product; or
    (2) A notice imprinted or otherwise affixed in or on the top or 
other visible layer of the product.

[50 FR 26719, June 28, 1985, as amended at 60 FR 34169, June 30, 1995]

[[Page 467]]



 SUBCHAPTER B--COPYRIGHT ARBITRATION ROYALTY PANEL RULES AND PROCEDURES



    Editorial Note: For nomenclature changes to subchapter B, see 58 FR 
67691, Dec. 22, 1993, 59 FR 23993, 23994, and 23995, May 9, 1994, as 
corrected at 59 FR 33201 and 33202, June 28, 1994.



PART 251--COPYRIGHT ARBITRATION ROYALTY PANEL RULES OF PROCEDURE--Table of Contents




                         Subpart A--Organization

Sec.
251.1  Official addresses.
251.2  Purpose of Copyright Arbitration Royalty Panels.
251.3  Arbitrator lists.
251.4  Arbitrator lists: Objections.
251.5  Qualifications of the arbitrators.
251.6  Composition and selection of Copyright Arbitration Royalty 
          Panels.
251.7  Actions of Copyright Arbitration Royalty Panels.
251.8  Suspension of proceedings.

Subpart B--Public Access to Copyright Arbitration Royalty Panel Meetings

251.11  Open meetings.
251.12  Conduct of open meetings.
251.13  Closed meetings.
251.14  Procedure for closed meetings.
251.15  Transcripts of closed meetings.
251.16  Requests to open or close meetings.

          Subpart C--Public Access to and Inspection of Records

251.21  Public records.
251.22  Public access.
251.23  FOIA and Privacy Act.

                     Subpart D--Standards of Conduct

251.30  Basic obligations of arbitrators.
251.31  Financial interests.
251.32  Financial disclosure statement.
251.33  Ex parte communications.
251.34  Gifts and other things of monetary value.
251.35  Outside employment and other activities.
251.36  Pre-arbitration and post-arbitration employment restrictions.
251.37  Use of nonpublic information.
251.38  Billing and commitment to standards.
251.39  Remedies.

      Subpart E--Procedures of Copyright Arbitration Royalty Panels

251.40  Scope.
251.41  Formal hearings.
251.42  Suspension or waiver of rules.
251.43  Written cases.
251.44  Filing and service of written cases and pleadings.
251.45  Discovery and prehearing motions.
251.46  Conduct of hearings: Role of arbitrators.
251.47  Conduct of hearings: Witnesses and counsel.
251.48  Rules of evidence.
251.49  Transcript and record.
251.50  Rulings and orders.
251.51  Closing the record.
251.52  Proposed findings and conclusions.
251.53  Report to the Librarian of Congress.
251.54  Assessment of costs of arbitration panels.
251.55  Post-panel motions.
251.56  Order of the Librarian of Congress.
251.57  Effective date of order.
251.58  Judicial review.

                 Subpart F--Rate Adjustment Proceedings

251.60  Scope.
251.61  Commencement of adjustment proceedings.
251.62  Content of petition.
251.63  Consideration of petition; settlements.
251.64  Disposition of petition; initiation of arbitration proceeding.
251.65  Deduction of costs of rate adjustment proceedings.

             Subpart G--Royalty Fee Distribution Proceedings

251.70  Scope.
251.71  Commencement of proceedings.
251.72  Declaration of controversy: Initiation of arbitration 
          proceeding.
251.73  Deduction of costs of distribution proceedings.

    Authority: 17 U.S.C. 801-803.

    Source: 59 FR 23981, May 9, 1994, unless otherwise noted.



                         Subpart A--Organization



Sec. 251.1  Official addresses.

    Claims, pleadings, and general correspondence should be addressed 
to:


[[Page 468]]


Copyright Arbitration Royalty Panel (CARP), P.O. Box 70977, Southwest 
    Station, Washington, DC 20024

or, hand-delivered to:

Office of the Copyright General Counsel, Room 403, James Madison 
    Building, 101 Independence Avenue, SE., Washington, DC 20540

[61 FR 63717, Dec. 2, 1996]



Sec. 251.2  Purpose of Copyright Arbitration Royalty Panels.

    The Librarian of Congress, upon the recommendation of the Register 
of Copyrights, may appoint and convene a Copyright Arbitration Royalty 
Panel (CARP) for the following purposes:
    (a) To make determinations concerning royalty rates for the cable 
compulsory license, 17 U.S.C. 111;
    (b) To make determinations concerning royalty rates and terms for 
making ephemeral recordings, 17 U.S.C. 112(e);
    (c) To make determinations concerning royalty rates and terms for 
the public performance of sound recordings by certain digital audio 
transmissions, 17 U.S.C. 114;
    (d) To make determinations concerning royalty rates for making and 
distributing phonorecords, and royalty rates and terms for digital 
transmissions that constitute digital phonorecord deliveries, 17 U.S.C. 
115;
    (e) To make determinations concerning royalty rates for coin-
operated phonorecord players (jukeboxes) whenever a negotiated license 
expires or is terminated and is not replaced by another such license 
agreement, 17 U.S.C. 116;
    (f) To make determinations concerning royalty rates and terms for 
the use by noncommercial educational broadcast stations for certain 
copyrighted works, 17 U.S.C. 118;
    (g) To make determinations concerning royalty rates for the 
satellite carrier compulsory license, 17 U.S.C. 119; and
    (h) To make determinations concerning the distribution of cable and 
satellite carrier royalty fees and digital audio recording devices and 
media payments deposited with the Register of Copyrights, 17 U.S.C. 111, 
119, and chapter 10, respectively.

[61 FR 37215, July 17, 1996, as amended at 63 FR 65556, Nov. 27, 1998]



Sec. 251.3  Arbitrator lists.

    (a) Any professional arbitration association or organization may 
submit before January 1, 1998, and every two years thereafter, a list of 
persons qualified to serve as arbitrators on a Copyright Arbitration 
Royalty Panel. The list shall contain the following for each person:
    (1) The full name, address, and telephone number of the person.
    (2) The current position and name of the person's employer, if any, 
along with a brief summary of the person's employment history, including 
areas of expertise, and, if available, a description of the general 
nature of clients represented and the types of proceedings in which the 
person represented clients.
    (3) A brief description of the educational background of the person, 
including teaching positions and membership in professional 
associations, if any.
    (4) A statement of the facts and information which qualify the 
person to serve as an arbitrator under Sec. 251.5.
    (5) A description or schedule detailing fees proposed to be charged 
by the person for service on a CARP.
    (6) Any other information which the professional arbitration 
association or organization may consider relevant.
    (b) After January 1, 1998, and every two years thereafter, the 
Librarian of Congress shall publish in the Federal Register a list of at 
least 30, but not more than 75 persons, submitted to the Librarian from 
at least three professional arbitration associations or organizations. 
The persons so listed must satisfy the qualifications and requirements 
of this subchapter and can reasonably be expected to be available to 
serve as arbitrators on a Copyright Arbitration Royalty Panel during 
that calendar year. This list will constitute the ``arbitrator list'' 
referred to in this subchapter. With respect to persons on the 
arbitrator list, the Librarian will

[[Page 469]]

make available for copying and inspection the information provided under 
paragraph (a) of this section.

[59 FR 23981, May 9, 1994, as amended at 59 63040, Dec. 7, 1994; 61 FR 
63717, Dec. 2, 1996; 63 FR 30635, June 5, 1998]



Sec. 251.4  Arbitrator lists: Objections.

    (a) In the case of a rate adjustment proceeding, any party to a 
proceeding may, during the 45-day period specified in 
Sec. 251.45(b)(2)(i), file an objection with the Librarian of Congress 
to one or more of the persons contained on the arbitrator list for that 
proceeding. Such objection shall plainly state the grounds and reasons 
for each person claimed to be objectionable.
    (b) In the case of a royalty distribution proceeding, any party to 
the proceeding may, during the 45-day period specified in 
Sec. 251.45(b)(1)(i), file an objection with the Librarian of Congress 
to one or more of the persons contained on the arbitrator list for the 
proceeding. Such objection shall plainly state the grounds and reasons 
for each person claimed to be objectionable.

[59 FR 23981, May 9, 1994, as amended at 59 63040, Dec. 7, 1994]



Sec. 251.5  Qualifications of the arbitrators.

    In order to serve as an arbitrator to a Copyright Arbitration 
Royalty Panel, a person must, at a minimum, have the following 
qualifications:
    (a) Admitted to the practice of law in any state, territory, trust 
territory, or possession of the United States.
    (b) Ten or more years of legal practice.
    (c) Experience in conducting arbitration proceedings and 
facilitating the resolution and settlement of disputes.

[59 FR 23981, May 9, 1994, as amended at 61 FR 63717, Dec. 2, 1996]



Sec. 251.6  Composition and selection of Copyright Arbitration Royalty Panels.

    (a) Within ten days after publication of a notice in the Federal 
Register initiating arbitration proceedings under this subchapter, the 
Librarian of Congress will, upon recommendation of the Register of 
Copyrights, select two arbitrators from the arbitrator list for that 
calendar year.
    (b) The two arbitrators so selected shall, within ten days of their 
selection, choose a third arbitrator from the same arbitrator list. The 
third arbitrator shall serve as the chairperson of the panel during the 
course of the proceedings.
    (c) If the two arbitrators fail to agree upon the selection of the 
third, the Librarian will promptly select the third arbitrator from the 
same arbitrator list.
    (d) The third arbitrator so chosen shall serve as the chairperson of 
the panel during the course of the proceeding. In all matters, 
procedural or substantive, the chairperson shall act according to the 
majority wishes of the panel.
    (e) Two arbitrators shall constitute a quorum necessary to the 
determination of any proceeding.
    (f) If, before the commencement of hearings in a proceeding, one or 
more of the arbitrators is unable to continue service on the CARP, the 
Librarian will suspend the proceeding as provided by Sec. 251.8, and 
will inaugurate a procedure to bring the CARP up to the full complement 
of three arbitrators. Where one or two vacancies exist, and either or 
both of the vacant seats were previously occupied by arbitrators 
selected by the Librarian, the Librarian will select the necessary 
replacements from the current arbitrator list. If there is one vacancy, 
and it was previously occupied by the chairperson, the two remaining 
arbitrators shall select the replacement from the arbitrator list, and 
the person chosen shall serve as chairperson. If there are two vacant 
seats, and one of them was previously occupied by the chairperson, the 
Librarian will select one replacement from the arbitrator list, and that 
person shall join with the remaining arbitrator to choose the 
replacement, who shall serve as chairperson.
    (g) After hearings have commenced, the Librarian will not suspend 
the proceedings or inaugurate a replacement procedure unless it is 
necessary in order for the CARP to have a quorum.

[[Page 470]]

If the hearing is underway and two arbitrators are unable to continue 
service, or if the hearing had been proceeding with two arbitrators and 
one of them is no longer able to serve, the Librarian will suspend the 
proceedings under Sec. 251.8 and seek the unanimous written agreement of 
the parties to the proceeding for the Librarian to select a replacement. 
In the absence of such an agreement, the Librarian will terminate the 
proceeding. If such agreement is obtained, the Librarian will select one 
arbitrator from the arbitrator list.
    (h) If, after hearings have commenced, the chairperson of the CARP 
is no longer able to serve, the Librarian will ask the two remaining 
arbitrators, or the one remaining arbitrator and the newly-selected 
arbitrator, to agree between themselves which of them will serve as 
chairperson. In the absence of such an agreement, the Librarian will 
terminate the proceeding.

[59 FR 23981, May 9, 1994, as amended at 63 FR 30635, June 5, 1998]



Sec. 251.7  Actions of Copyright Arbitration Royalty Panels.

    Any action of a Copyright Arbitration Royalty Panel requiring 
publication in the Federal Register according to 17 U.S.C. or the rules 
and regulations of this subchapter shall be published under the 
authority of the Librarian of Congress and the Register of Copyrights. 
Under no circumstances shall a CARP engage in rulemaking designed to 
amend, supplement, or supersede any of the rules and regulations of this 
subchapter, or seek to have any such action published in the Federal 
Register.



Sec. 251.8  Suspension of proceedings.

    (a) Where it becomes necessary to replace a selected arbitrator 
under Sec. 251.6 or to remove and replace a selected arbitrator under 
subpart D of this part, the Librarian will order a suspension of any 
ongoing hearing or other proceeding by notice in writing to all parties. 
Immediately after issuing the order of suspension, and without delay, 
the Librarian will take the necessary steps to replace the arbitrator or 
arbitrators, and upon such replacement will issue an order, by notice in 
writing to all parties, resuming the proceeding from the time and point 
at which it was suspended.
    (b) Where, for any other reason, such as a serious medical or family 
emergency affecting an arbitrator, the Librarian considers a suspension 
of a proceeding necessary and fully justified, he may, with the 
unanimous written consent of all parties to the proceeding, order a 
suspension of the proceeding for a stated period not to exceed one 
month.
    (c) Any suspension under this section shall result in a complete 
cessation of all aspects of the proceeding, including the running of any 
period provided by statute for the completion of the proceeding.



Subpart B--Public Access to Copyright Arbitration Royalty Panel Meetings



Sec. 251.11  Open meetings.

    (a) All meetings of a Copyright Arbitration Royalty Panel shall be 
open to the public, with the exception of meetings that are listed in 
Sec. 251.13.
    (b) At the beginning of each proceeding, the CARP shall develop the 
original schedule of the proceeding which shall be published in the 
Federal Register at least seven calendar days in advance of the first 
meeting. Such announcement shall state the times, dates, and place of 
the meetings, the testimony to be heard, whether any of the meetings, or 
any portion of a meeting, is to be closed, and, if so, which ones, and 
the name and telephone number of the person to contact for further 
information.
    (c) If changes are made to the original schedule, they will be 
announced in open meeting and issued as orders to the parties 
participating in the proceeding, and the changes will be noted in the 
docket file of the proceeding.

In addition, the contact person for the proceeding shall make any 
additional efforts to publicize the change as are practicable.
    (d) If it is decided that the publication of the original schedule 
must be made on shorter notice than seven days, that decision must be 
made by a

[[Page 471]]

recorded vote of the panel and included in the announcement.

[59 FR 23981, May 9, 1994, as amended at 59 63040, Dec. 7, 1994]



Sec. 251.12  Conduct of open meetings.

    Meetings of a Copyright Arbitration Royalty Panel will be conducted 
in a manner to ensure the greatest degree of openness possible. 
Reasonable access for the public will be provided at all public 
sessions. Any person may take photographs, and make audio or video 
recordings of the proceedings, so long as the panel is informed in 
advance. The chairperson has the discretion to regulate the time, place, 
and manner of the taking of photographs or the audio or video recording 
of the proceedings to ensure the order and decorum of the proceedings. 
The right of the public to be present does not include the right to 
participate or make comments.



Sec. 251.13  Closed meetings.

    In the following circumstances, a Copyright Arbitration Royalty 
Panel may close meetings, or any portion of a meeting, or withhold 
information from the public:
    (a) If the matter to be discussed has been specifically authorized 
to be kept secret by Executive Order, in the interests of national 
defense or foreign policy; or
    (b) If the matter relates solely to the internal practices of a 
Copyright Arbitration Royalty Panel; or
    (c) If the matter has been specifically exempted from disclosure by 
statute (other than 5 U.S.C. 552) and there is no discretion on the 
issue; or
    (d) If the matter involves privileged or confidential trade secrets 
or financial information; or
    (e) If the result might be to accuse any person of a crime or 
formally censure him or her; or
    (f) If there would be a clearly unwarranted invasion of personal 
privacy; or
    (g) If there would be disclosure of investigatory records compiled 
for law enforcement, or information that if written would be contained 
in such records, and to the extent disclosure would:
    (1) Interfere with enforcement proceedings; or
    (2) Deprive a person of the right to a fair trial or impartial 
adjudication; or
    (3) Constitute an unwarranted invasion of personal privacy; or
    (4) Disclose the identity of a confidential source or, in the case 
of a criminal investigation or a national security intelligence 
investigation, disclose confidential information furnished only by a 
confidential source; or
    (5) Disclose investigative techniques and procedures; or
    (6) Endanger the life or safety of law enforcement personnel.
    (h) If premature disclosure of the information would frustrate a 
Copyright Arbitration Royalty Panel's action, unless the panel has 
already disclosed the concept or nature of the proposed action, or is 
required by law to make disclosure before taking final action; or
    (i) If the matter concerns a CARP's participation in a civil action 
or proceeding or in an action in a foreign court or international 
tribunal, or an arbitration, or a particular case of formal agency 
adjudication pursuant to 5 U.S.C. 554, or otherwise involving a 
determination on the record after opportunity for a hearing; or
    (j) If a motion or objection has been raised in an open meeting and 
the panel determines that it is in the best interests of the proceeding 
to deliberate on such motion or objection in closed session.

[59 FR 23981, May 9, 1994, as amended at 59 63040, Dec. 7, 1994; 60 FR 
8197, Feb. 13, 1995]



Sec. 251.14  Procedure for closed meetings.

    (a) Meetings may be closed, or information withheld from the public, 
only by a recorded vote of a majority of arbitrators of a Copyright 
Arbitration Royalty Panel. Each question, either to close a meeting or 
to withhold information, must be voted on separately, unless a series of 
meetings is involved, in which case the CARP may vote to keep the 
discussions closed for 30 days, starting from the first meetings. If the 
CARP feels that information about a closed meeting must be withheld, the 
decision to do so must also be the subject of a recorded vote.
    (b) Before a discussion to close a meeting or withhold information, 
the

[[Page 472]]

chairperson of a CARP must certify that such an action is permissible, 
and the chairperson shall cite the appropriate exemption under 
Sec. 251.13. This certification shall be included in the announcement of 
the meeting and be maintained as part of the record of proceedings of 
that CARP.
    (c) Following such a vote, the following information shall be 
published in the Federal Register as soon as possible:
    (1) The vote of each arbitrator; and
    (2) The appropriate exemption under Sec. 251.13; and
    (3) A list of all persons expected to attend the meeting and their 
affiliation.
    (d) The procedure for closed meetings in this section and in 
Sec. 251.15 shall not apply to the internal deliberations of arbitrators 
carried out in furtherance of their duties and obligations under this 
chapter.

[59 FR 23981, May 9, 1994, as amended at 59 63040, Dec. 7, 1994]



Sec. 251.15  Transcripts of closed meetings.

    (a) All meetings closed to the public shall be subject either to a 
complete transcript or, in the case of Sec. 251.13(h) and at the 
discretion of the Copyright Arbitration Royalty Panel, detailed minutes. 
Detailed minutes shall describe all matters discussed, identify all 
documents considered, summarize action taken as well as the reasons for 
it, and record all roll call votes as well as any views expressed.
    (b) Such transcripts or minutes shall be kept by the Copyright 
Office for at least two years, or for at least one year after the 
conclusion of the proceedings, whichever is later. Any portion of 
transcripts of meetings which the chairperson of a CARP does not feel is 
exempt from disclosure under Sec. 251.13 will ordinarily be available to 
the public within 20 working days of the meeting. Transcripts or minutes 
of closed meetings will be reviewed by the chairperson at the end of the 
proceedings of the panel and, if at that time the chairperson determines 
that they should be disclosed, he or she will resubmit the question to 
the CARP to gain authorization for their disclosure.



Sec. 251.16  Requests to open or close meetings.

    (a) Any person may request a Copyright Arbitration Royalty Panel to 
open or close a meeting or disclose or withhold information. Such 
request must be captioned ``Request to Open'' or ``Request to Close'' a 
meeting on a specified date concerning a specific subject. The person 
making the request must state his or her reasons, and include his or her 
name, address, and telephone number.
    (b) In the case of a request to open a meeting that a CARP has 
previously voted closed, the panel must receive the request within 3 
working days of the meeting's announcement. Otherwise the request will 
not be heeded, and the person making the request will be so notified. An 
original and three copies of the request must be submitted.
    (c) For a CARP to act on a request to open or close a meeting, the 
question must be brought to a vote before the panel. If the request is 
granted, an amended meeting announcement will be issued and the person 
making the request notified. If a vote is not taken, or if after a vote 
the request is denied, said person will also be notified promptly.



          Subpart C--Public Access to and Inspection of Records



Sec. 251.21  Public records.

    (a) All official determinations of a Copyright Arbitration Royalty 
Panel will be published in the Federal Register in accordance with 
Sec. 251.7 and include the relevant facts and reasons for those 
determinations.
    (b) All records of a CARP, and all records of the Librarian of 
Congress assembled and/or created under 17 U.S.C. 801 and 802, are 
available for inspection and copying at the address provided in 
Sec. 251.1 with the exception of:
    (1) Records that relate solely to the internal personnel rules and 
practices of the Copyright Office or the Library of Congress;
    (2) Records exempted by statute from disclosure;

[[Page 473]]

    (3) Interoffice memoranda or correspondence not available by law 
except to a party in litigation with a CARP, the Copyright Office, or 
the Library of Congress;
    (4) Personnel, medical, or similar files whose disclosure would be 
an invasion of personal privacy;
    (5) Communications among arbitrators of a CARP concerning the 
drafting of decisions, opinions, reports, and findings on any CARP 
matter or proceeding;
    (6) Communications among the Librarian of Congress and staff of the 
Copyright Office or Library of Congress concerning decisions, opinions, 
reports, selection of arbitrators, or findings on any matter or 
proceeding conducted under 17 U.S.C. chapter 8;
    (7) Offers of settlement that have not been accepted, unless they 
have been made public by the offeror;
    (8) Records not herein listed but which may be withheld as 
``exempted'' if a CARP or the Librarian of Congress finds compelling 
reasons for such action.



Sec. 251.22  Public access.

    (a) Location of records. All of the following records relating to 
rate adjustment and distribution proceedings under this subchapter shall 
be maintained at the Copyright Office:
    (1) Records required to be filed with the Copyright Office; or
    (2) Records submitted to or produced by the Copyright Office or 
Library of Congress under 17 U.S.C. 801 and 802, or
    (3) Records submitted to or produced by a Copyright Arbitration 
Royalty Panel during the course of a concluded proceeding. In the case 
of records submitted to or produced by a CARP that is currently 
conducting a proceeding, such records shall be maintained by the 
chairperson of that panel at the location of the hearing or at a 
location specified by the panel. Upon conclusion of the proceeding, all 
records shall be delivered by the chairperson to the Copyright Office.
    (b) Requesting information. Requests for information or access to 
records described in Sec. 251.21 shall be directed to the Copyright 
Office at the address listed in Sec. 251.1. No requests shall be 
directed to or accepted by a Copyright Arbitration Royalty Panel. In the 
case of records in the possession of a CARP, the Copyright Office shall 
make arrangements with the panel for access and copying by the person 
making the request.
    (c) Fees. Fees for photocopies of CARP or Copyright Office records 
are the applicable Office charge. Fees for searching for records, 
certification of documents, and other costs incurred are as provided in 
17 U.S.C. 705, 708.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63040, Dec. 7, 1994]



Sec. 251.23  FOIA and Privacy Act.

    Freedom of Information Act and Privacy Act provisions applicable to 
CARP proceedings can be found in parts 203 and 204 of subchapter A of 
this chapter.



                     Subpart D--Standards of Conduct



Sec. 251.30  Basic obligations of arbitrators.

    (a) Definitions. For purposes of these regulations, the following 
terms shall have the meanings given in this subsection:
    (1) A ``selected arbitrator'' is a person named by the Librarian of 
Congress, or by other selected arbitrators, for service on a particular 
CARP, in accordance with Sec. 251.6 of these regulations;
    (2) A ``listed arbitrator'' is a person named in the ``arbitration 
list'' published in accordance with Sec. 251.3 of these regulations.
    (b) General principles applicable to arbitrators. Selected 
arbitrators are persons acting on behalf of the United States, and the 
following general principles apply to them. Where a situation is not 
covered by standards set forth specifically in this subpart, selected 
arbitrators shall apply these general principles in all cases in 
determining whether their conduct is proper. Listed arbitrators shall 
apply these principles where applicable.
    (1) Arbitrators are engaged in a matter of trust that requires them 
to place ethical and legal principles above private gain.
    (2) Arbitrators shall not hold financial interests that conflict 
with the

[[Page 474]]

conscientious performance of their service.
    (3) Arbitrators shall not engage in financial transactions using 
nonpublic information or allow the improper use of such information to 
further any private interest.
    (4) Selected arbitrators shall not solicit or accept any gift or 
other item of monetary value from any person or entity whose interests 
may be affected by the arbitrators' decisions. Listed arbitrators may 
accept gifts of nominal value or gifts from friends and family as 
specified in Sec. 251.34(b).
    (5) Arbitrators shall put forth their honest efforts in the 
performance of their service.
    (6) Arbitrators shall act impartially and not give preferential 
treatment to any individual, organization, or entity whose interests may 
be affected by the arbitrators' decisions.
    (7) Arbitrators shall not engage in outside employment or 
activities, including seeking or negotiating for employment, that 
conflicts with the performance of their service.
    (8) Arbitrators shall endeavor to avoid any actions creating the 
appearance that they are violating the law or the ethical standards set 
forth in this subpart.
    (9) Arbitrators shall maintain order and decorum in the proceedings, 
be patient, dignified, and courteous to the parties, witnesses, and 
their representatives, and dispose promptly the business before them.

[59 FR 23981, May 9, 1994, as amended at 63 FR 30635, June 5, 1998]



Sec. 251.31  Financial interests.

    (a) No selected arbitrator shall have a direct or indirect financial 
interest--
    (1) In the case of a distribution proceeding, in any claimant to the 
proceeding whether or not in a voluntary settlement agreement, or any 
copyright owner who receives royalties from such claimants because of 
their representation;
    (2) In the case of a rate adjustment proceeding, in any individual, 
organization or entity that would be affected by the outcome of the 
proceeding.
    (b) ``Direct or indirect financial interest'' shall include: Being 
employed by, being a consultant to, being a representative or agent for, 
being a member or affiliate of, being a partner of, holding any office 
in, owning any stocks, bonds, or other securities, or deriving any 
income from the prohibited entity.
    (c) ``Direct or indirect financial interest'' shall not include--
    (1) Owning shares in any stock or bond mutual fund or blind trust 
which might have an interest in a prohibited entity but whose decisions 
to invest or sell is not under the control of the selected arbitrator, 
or
    (2) Receiving any post-employment benefit such as health insurance 
or a pension so long as the benefit would not be affected by the outcome 
of the proceeding.
    (d) For the purposes of this section, the financial interests of the 
following persons will serve to disqualify the selected arbitrator to 
the same extent as if they were the arbitrator's own interests:
    (1) The arbitrator's spouse;
    (2) The arbitrator's minor child;
    (3) The arbitrator's general partner, except that the personal 
financial holdings, including stock and bond investments, of such 
partner will not serve to disqualify the selected arbitrator; or
    (4) An organization or entity for which the arbitrator serves as 
officer, director, trustee, general partner or employee.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63040, Dec. 7, 1994]



Sec. 251.32  Financial disclosure statement.

    (a) Within 45 days of their nomination, each nominated arbitrator 
shall file with the Librarian of Congress a confidential financial 
disclosure statement as provided by the Library of Congress, which 
statement shall be reviewed by the Librarian and designated Library 
staff to determine what conflicts of interest, if any, exist according 
to Sec. 251.31.
    (b) If any conflicts do exist, the Librarian shall not choose that 
person for the proceeding for which he or she has the financial 
conflict, except--
    (1) The listed arbitrator may divest himself or herself of the 
interest that caused the disqualification, and become qualified to 
serve; or

[[Page 475]]

    (2) The listed arbitrator may offer to disclose on the record the 
conflict of interest causing disqualification. In such instances:
    (i) The Librarian shall publish a list detailing the conflicts of 
interest the listed arbitrators have offered to disclose, and any other 
matters which, although outside of the scope of the restrictions of 
Sec. 251.31, nevertheless, in the view of the Librarian, raise 
sufficient concerns to warrant disclosure to the affected parties;
    (ii) Such list shall be included in an order issued no later than 
the commencement of the 45-day precontroversy discovery period;
    (iii) Such list shall contain the matters of concern, but shall not 
contain the names of the listed arbitrators.
    (iv) Any party to the proceeding for which the listed arbitrator is 
being considered may interpose within the 45-day period described in 
Sec. 251.45(b) an objection to that arbitrator being selected. If the 
objection is raised to a matter found to be within the scope of 
Sec. 251.31, the objection will serve automatically to disqualify the 
arbitrator. If the objection is raised to a matter found to be outside 
the scope of Sec. 251.31, the objection will be taken into account when 
the Librarian makes his or her selection, but will not serve 
automatically to disqualify the arbitrator.
    (c) At such time as the two selected arbitrators choose a third 
arbitrator, they shall consult with the Librarian to determine if any 
conflicts of interest exist for the third arbitrator. If, in the opinion 
of the Librarian of Congress, any conflicts of interest do exist, the 
two selected arbitrators shall be asked to choose another arbitrator who 
has no conflict of interest.
    (d) Within one week of the selection of the CARP, the three selected 
arbitrators shall file with the Librarian an updated confidential 
financial disclosure form or, if there are no changes in the 
arbitrator's financial interests, a statement to that effect. If any 
conflicts of interest are revealed on the updated form, the Librarian 
will suspend the proceeding and replace the selected arbitrator with 
another arbitrator from the arbitrator list in accordance with the 
provision of Sec. 251.6.
    (e) During the following periods of time, the selected arbitrators 
shall be obliged to inform the Librarian immediately of any change in 
their financial interests that would reasonably raise a conflict of 
interest--
    (1) During the period beginning with the filing of the updated 
disclosure form or statement required by paragraph (d) of this section 
and ending with the submission of the panel's report to the Librarian, 
and
    (2) If the same arbitrator or arbitrators are recalled to serve 
following a court-ordered remand, during the time the panel is 
reconvened.
    (f) If the Librarian determines that an arbitrator has failed to 
give timely notice of a financial interest constituting a conflict of 
interest, or that the arbitrator in fact has a conflict of interest, the 
Librarian shall remove that arbitrator from the proceeding.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63040, Dec. 7, 1994; 60 
FR 8197, Feb. 13, 1995; 61 FR 63717, Dec. 2, 1996; 63 FR 30635, June 5, 
1998]



Sec. 251.33  Ex parte communications.

    (a) Communications with Librarian or Register. No person outside the 
Library of Congress shall engage in ex parte communication with the 
Librarian of Congress or the Register of Copyrights on the merit or 
status of any matter, procedural or substantive, relating to the 
distribution of royalty fees, the adjustment of royalty rates or the 
status of digital audio recording devices, at any time whatsoever. This 
prohibition shall not apply to statements concerning public policies 
related to royalty fee distribution and rate adjustment so long as they 
are unrelated to the merits of any particular proceeding.
    (b) Selected arbitrators. No interested person shall engage in, or 
cause someone else to engage in, ex parte communications with the 
selected arbitrators in a proceeding for any reason whatsoever from the 
time of their selection to the time of the submission of their report to 
the Librarian, and, in the case of a remand, from the time of their 
reconvening to the time of their submission of their report to the 
Librarian. Incidental communications unrelated to any proceeding, such 
as an exchange

[[Page 476]]

of pleasantries, shall not be deemed to constitute an ex parte 
communication.
    (c) Listed arbitrators. No interested person shall engage in, or 
cause someone else to engage in, ex parte communications with any person 
listed by the Librarian of Congress as qualified to serve as an 
arbitrator about the merits of any past, pending, or future proceeding 
relating to the distribution of royalty fees or the adjustment of 
royalty rates. This prohibition applies during any period when the 
individual appears on a current arbitrator list.
    (d) Library and Copyright Office personnel. No person outside the 
Library of Congress (including the Copyright Office staff) shall engage 
in ex parte communications with any employee of the Library of Congress 
about the substantive merits of any past, pending, or future proceeding 
relating to the distribution of royalty fees or the adjustment of 
royalty rates. This prohibition does not apply to procedural inquiries 
such as scheduling, filing requirements, status requests, or requests 
for public information.
    (e) Outside contacts. The Librarian of Congress, the Register of 
Copyrights, the selected arbitrators, the listed arbitrators, and the 
employees of the Library of Congress described in paragraphs (a) through 
(d) of this section, shall not initiate or continue the prohibited 
communications that apply to them.
    (f) Responsibilities of recipients of communication. (1) Whoever 
receives a prohibited communication shall immediately end it and place 
on the public record of the applicable proceeding:
    (i) All such written or recorded communications;
    (ii) Memoranda stating the substance of all such oral 
communications; and
    (iii) All written responses, and memoranda stating the substance of 
all oral responses, to the materials described in paragraphs (f)(1) (i) 
and (ii) of this section.
    (2) The materials described in this paragraph (f) shall not be 
considered part of the record for the purposes of decision unless 
introduced into evidence by one of the parties.
    (g) Action by Librarian. When notice of a prohibited communication 
described in paragraphs (a) through (d) of this section has been placed 
in the record of a proceeding, either the Librarian of Congress or the 
CARP may require the party causing the prohibited communication to show 
cause why his or her claim or interest in the proceeding should not be 
dismissed, denied, or otherwise adversely affected.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63040, 63041, Dec. 7, 
1994; 60 FR 8197, Feb. 13, 1995]



Sec. 251.34  Gifts and other things of monetary value.

    (a) Selected arbitrators. From the time of selection to the time of 
the submission of the arbitration panel's report, whether during the 
initial proceeding or during a court-ordered remand, no selected 
arbitrator shall solicit or accept, directly or indirectly, any gift, 
gratuity, favor, travel, entertainment, service, loan, or any other 
thing of monetary value from a person or organization that has an 
interest that would be affected by the outcome of the proceeding, 
regardless of whether the offer was intended to affect the outcome of 
the proceeding.
    (b) Listed arbitrators. No listed arbitrator shall solicit or 
accept, directly or indirectly, any gift, gratuity, favor, travel, 
entertainment, service, loan, or any other thing of monetary value from 
a person or organization that has an interest in any proceeding for 
which the arbitrator might be selected, regardless of whether the offer 
was intended to affect the outcome of the proceeding, except--
    (1) A listed arbitrator may accept unsolicited gifts having an 
aggregate market value of $20 or less per occasion, as long as the 
aggregate market value of individual gifts received from any one source 
does not exceed $50 in a calendar year, or
    (2) A listed arbitrator may accept a gift given under circumstances 
in which it is clear that the gift is motivated by a family relationship 
or personal friendship rather than the potential of the listed 
arbitrator to decide a future proceeding.
    (c) A gift that is solicited or accepted indirectly includes a 
gift--
    (1) Given with the arbitrator's knowledge and acquiescence to the 
arbitrator's parent, sibling, spouse, child, or

[[Page 477]]

dependent relative because of that person's relationship to the 
arbitrator, or
    (2) Given to any other person, including any charitable 
organization, on the basis of designation, recommendation, or other 
specification by the arbitrator.



Sec. 251.35  Outside employment and other activities.

    (a) From the time of selection to the time when all possibility of 
being selected to serve on a court-ordered remand is ended, no 
arbitrator shall--
    (1) Engage in any outside business or other activity that would 
cause a reasonable person to question the arbitrator's ability to render 
an impartial decision;
    (2) Accept any speaking engagement, whether paid or unpaid, related 
to the proceeding or sponsored by a party that would be affected by the 
outcome of the proceeding; or
    (3) Accept any honorarium, whether directly or indirectly paid, for 
any appearance, speech, or article related to the proceeding or offered 
by a party who would be affected by the outcome of the proceeding.
    (b) Honoraria indirectly paid include payments--
    (1) Given with the arbitrator's knowledge and acquiescence to the 
arbitrator's parent, sibling, spouse, child, or dependent relative 
because of that person's relationship to the arbitrator, or
    (2) Given to any other person, including any charitable 
organization, on the basis of designation, recommendation, or other 
specification by the arbitrator.



Sec. 251.36  Pre-arbitration and post-arbitration employment restrictions.

    (a) The Librarian of Congress will not select any arbitrator who was 
employed at any time during the period of five years immediately 
preceding the date of that arbitrator's selection by any party to, or 
any person, organization or entity with a financial interest in, the 
proceeding for which he or she is being considered. However, a listed 
arbitrator may disclose on the record the past employment causing 
disqualification and may ask the parties to consider whether to allow 
him or her to serve in the proceeding, in which case any agreement by 
the parties to allow the listed arbitrator to serve shall be unanimous 
and shall be incorporated into the record of the proceeding.
    (b) No arbitrator may arrange for future employment with any party 
to, or any person, organization, or entity with a financial interest in, 
the proceeding in which he or she is serving.
    (c) For a period of three years from the date of submission of the 
arbitration panel's report to the Librarian, no arbitrator may enter 
into employment with any party to, or any person, organization, or 
entity with a financial interest in, the particular proceeding in which 
he or she served.
    (d) For purposes of this section, ``employed'' or ``employment'' 
means any business relationship involving the provision of personal 
services including, but not limited to, personal services as an officer, 
director, employee, agent, attorney, consultant, contractor, general 
partner or trustee, but does not include serving as an arbitrator, 
mediator, or neutral engaged in alternative dispute resolution.



Sec. 251.37  Use of nonpublic information.

    (a) Unless required by law, no arbitrator shall disclose in any 
manner any information contained in filings, pleadings, or evidence that 
the arbitration panel has ruled to be confidential in nature.
    (b) Unless required by law, no arbitrator shall disclose in any 
manner--
    (1) Intra-panel communications or communications between the Library 
of Congress and the panel intended to be confidential;
    (2) Draft interlocutory rulings or draft decisions; or
    (3) The CARP report before its submission to the Librarian of 
Congress.
    (c) No arbitrator shall engage in a financial transaction using 
nonpublic information, or allow the improper use of nonpublic 
information, to further his or her private interest or that of another, 
whether through advice or recommendation, or by knowing unauthorized 
disclosure.

[[Page 478]]



Sec. 251.38  Billing and commitment to standards.

    (a) Arbitrators are bound by the hourly or daily fee they proposed 
to the Librarian of Congress when their names were submitted to be 
listed under Sec. 251.3, and shall not bill in excess of their proposed 
charges.
    (b) Arbitrators shall not charge the parties any expense in addition 
to their hourly or daily charge, except, in the case of an arbitrator 
who resides outside the Washington, DC metropolitan area, for travel, 
lodging, and meals not to exceed the government rate.
    (c) When submitting their statement of costs to the parties under 
Sec. 251.54, arbitrators shall include a detailed account of their 
charges, including the work performed during each hour or day charged.
    (d) Except for support services provided by the Library of Congress, 
arbitrators shall perform their own work, including research, analysis 
of the record, and decision-writing.
    (e) At the time of selection, arbitrators shall sign an agreement 
stating that they will abide by all the terms therein, including all of 
the standards of conduct and billing restrictions specified in this 
subpart. Any arbitrator who does not sign the agreement will not be 
selected to serve.

[59 FR 23981, May 9, 1994, as amended at 60 FR 8197, Feb. 13, 1995]



Sec. 251.39  Remedies.

    In addition to those provided above, remedies for the violation of 
the standards of conduct of this section may include, but are not 
limited to, the following--
    (a) In the case of a selected arbitrator,
    (1) Removal of the arbitrator from the proceeding;
    (2) Permanent removal of the arbitrator's name from the current and 
any future list of available arbitrators published by the Librarian;
    (3) Referral of the matter to the bar of which the arbitrator is a 
member.
    (b) In the case of a listed but not selected arbitrator--
    (1) Permanent removal of the arbitrator's name from the current and 
any future list of available arbitrators published by the Librarian;
    (2) Referral of the matter to the bar of which the listed arbitrator 
is a member.
    (c) In the case of an interested party or individual who engaged in 
the ethical violation--
    (1) Referral of the matter to the bar or professional association of 
which the interested individual is a member;
    (2) Barring the offending individual from current and/or future 
appearances before the CARP;
    (3) Designation of an issue in the current or in a future proceeding 
as to whether the party's interest should not be dismissed, denied, or 
otherwise adversely affected.
    (d) In all applicable matters of violations of standards of conduct, 
the Librarian may refer the matter to the Department of Justice, or 
other legal authority of competent jurisdiction, for criminal 
prosecution.



      Subpart E--Procedures of Copyright Arbitration Royalty Panels



Sec. 251.40  Scope.

    This subpart governs the proceedings of Copyright Arbitration 
Royalty Panels convened under 17 U.S.C. 803 for the adjustment of 
royalty rates and distribution of royalty fees. This subpart does not 
apply to other arbitration proceedings specified by 17 U.S.C., or to 
actions or rulemakings of the Librarian of Congress or the Register of 
Copyrights, except where expressly provided in the provisions of this 
subpart.



Sec. 251.41  Formal hearings.

    (a) The formal hearings that will be conducted under the rules of 
this subpart are rate adjustment hearings and royalty fee distribution 
hearings. All parties intending to participate in a hearing of a 
Copyright Arbitration Royalty Panel must file a notice of their 
intention. A CARP may also, on its own motion or on the petition of an 
interested party, hold other proceedings it considers necessary to the 
exercise of its functions, subject to the provisions of Sec. 251.7. All 
such proceedings will be governed by the rules of this subpart.

[[Page 479]]

    (b) During the 45-day period specified in Sec. 251.45(b)(1)(i) for 
distribution proceedings, or during the 45-day period specified in 
Sec. 251.45(b)(2)(i) for rate adjustment proceedings, as appropriate, 
any party may petition the Librarian of Congress to dispense with formal 
hearings, and have the CARP decide the controversy or rate adjustment on 
the basis of written pleadings. The petition may be granted if--
    (1) The controversy or rate adjustment, as appropriate, does not 
involve any genuine issue of material fact; or
    (2) All parties to the proceeding agree, in writing, that a grant of 
the petition is appropriate.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63041, Dec. 7, 1994]



Sec. 251.42  Suspension or waiver of rules.

    For purposes of an individual proceeding, the provisions of this 
subpart may be suspended or waived, in whole or in part, by a Copyright 
Arbitration Royalty Panel upon a showing of good cause, subject to the 
provisions of Sec. 251.7. Such suspension or waiver shall apply only to 
the proceeding of the CARP taking that action, and shall not be binding 
on any other panel or proceeding. Where procedures have not been 
specifically prescribed in this subpart, and subject to Sec. 251.7, the 
panel shall follow procedures consistent with 5 U.S.C. chapter 5, 
subchapter II.



Sec. 251.43  Written cases.

    (a) All parties who have filed a notice of intent to participate in 
the hearing shall file written direct cases with the Copyright Office, 
and with other parties in the manner in which the Librarian of Congress 
shall direct in accordance with Sec. 251.45(b).
    (b) The written direct case shall include all testimony, including 
each witness's background and qualifications, along with all the 
exhibits to be presented in the direct case.
    (c) Each party may designate a portion of past records, including 
records of the Copyright Royalty Tribunal, that it wants included in its 
direct case. Complete testimony of each witness whose testimony is 
designated (i.e., direct, cross and redirect) must be referenced.
    (d) In the case of a royalty fee distribution proceeding, each party 
must state in the written direct case its percentage or dollar claim to 
the fund. In the case of a rate adjustment proceeding, each party must 
state its requested rate. No party will be precluded from revising its 
claim or its requested rate at any time during the proceeding up to the 
filing of the proposed findings of fact and conclusions of law.
    (e) No evidence, including exhibits, may be submitted in the written 
direct case without a sponsoring witness, except where the CARP has 
taken official notice, or in the case of incorporation by reference of 
past records, or for good cause shown.
    (f) Written rebuttal cases of the parties shall be filed at a time 
designated by a CARP upon conclusion of the hearing of the direct case, 
in the same form and manner as the direct case, except that the claim or 
the requested rate shall not have to be included if it has not changed 
from the direct case.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63041, Dec. 7, 1994; 61 
FR 63717, Dec. 2, 1996; 63 FR 30635, June 5, 1998]



Sec. 251.44  Filing and service of written cases and pleadings.

    (a) Filing of pleadings. In a royalty fee distribution proceeding or 
in a rate adjustment proceeding, the submitting party shall deliver an 
original and five copies of all filings to the Copyright Office at the 
address listed in Sec. 251.1, unless otherwise instructed by the 
Librarian of Congress or the CARP. The Copyright Office will make 
further distribution to the CARP, as necessary. In no case shall a party 
tender any written case or pleading by facsimile transmission.
    (b) Exhibits. All exhibits must be included with a party's case; 
however, in the case of exhibits whose bulk or whose cost of 
reproduction would unnecessarily encumber the record or burden the 
party, the Librarian of Congress or the CARP may reduce the number of 
required copies. Nevertheless, a complete copy must still be submitted 
to the Copyright Office.
    (c) English language translations. In all filings with a CARP or the 
Librarian of Congress, each submission that

[[Page 480]]

is in a language other than English shall be accompanied by an English-
language translation, duly verified under oath to be a true translation. 
Any other party to the proceeding may, in response, submit its own 
English-language translation, similarly verified.
    (d) Affidavits. The testimony of each witness in a party's written 
case, direct or rebuttal, shall be accompanied by an affidavit or a 
declaration made pursuant to 28 U.S.C. 1746 supporting the testimony.
    (e) Subscription and verification. (1) The original of all documents 
filed by any party represented by counsel shall be signed by at least 
one attorney of record and shall list the attorney's address and 
telephone number. All copies shall be conformed. Except for English-
language translations, written cases, or when otherwise required, 
documents signed by the attorney for a party need not be verified or 
accompanied by an affidavit. The signature of an attorney constitutes 
certification that to the best of his or her knowledge and belief there 
is good ground to support the document, and that it has not been 
interposed for purposes of delay.
    (2) The original of all documents filed by a party not represented 
by counsel shall be signed by that party and list that party's address 
and telephone number.
    (3) The original of a document that is not signed, or is signed with 
the intent to defeat the purpose of this section, may be stricken as 
sham and false, and the matter shall proceed as though the document had 
not been filed.
    (f) The Librarian of Congress shall compile and distribute to those 
parties who have filed a notice of intent to participate, the official 
service list of the proceeding, which shall be composed of the names and 
addresses of the representatives of all the parties to the proceeding. 
In all filings, a copy shall be served upon counsel of all other parties 
identified in the service list, or, if the party is unrepresented by 
counsel, upon the party itself. Proof of service shall accompany the 
filing. Parties shall notify the Librarian of any change in the name or 
address to which service shall be made, and shall serve a copy of such 
notification on all parties and the CARP.
    (g) Oppositions and replies. Except as otherwise provided in this 
part or by the Librarian of Congress or a CARP, oppositions to motions 
shall be filed within seven business days of the filing of the motion, 
and replies to oppositions shall be filed within five business days of 
the filing of the opposition. Each party must serve all motions, 
petitions, objections, oppositions, and replies on the other parties or 
their counsel by means no slower than overnight express mail on the same 
day the pleading is filed.

[59 FR 23981, May 9, 1994, as amended at 60 FR 8197, Feb. 13, 1995; 61 
FR 63717, Dec. 2, 1996]



Sec. 251.45  Discovery and prehearing motions.

    (a) Request for comment, notice of intention to participate. In the 
case of a royalty fee distribution proceeding, the Librarian of Congress 
shall, after the time period for filing claims, publish in the Federal 
Register a notice requesting each claimant on the claimant list to 
negotiate with each other a settlement of their differences, and to 
comment by a date certain as to the existence of controversies with 
respect to the royalty funds described in the notice. Such notice shall 
also establish a date certain by which parties wishing to participate in 
the proceeding must file with the Librarian a notice of intention to 
participate. In the case of a rate adjustment proceeding, the Librarian 
of Congress shall, after receiving a petition for rate adjustment filed 
under Sec. 251.62, or, in the case of noncommercial educational 
broadcasting and satellite carrier, prior to the commencement of 
proceedings, publish in the Federal Register a notice requesting 
interested parties to comment on the petition for rate adjustment. Such 
notice shall also establish a date certain by which parties wishing to 
participate in the proceeding must file with the Librarian a notice of 
intention to participate.
    (b) Precontroversy discovery, filing of written cases, scheduling. 
(1)(i) In the case of a royalty fee distribution proceeding, the 
Librarian of Congress shall, after the filing of comments and

[[Page 481]]

notices described in paragraph (a) of this section, designate a 45-day 
period for precontroversy discovery and exchange of documents. The 
period will begin with the exchange of written direct cases among the 
parties to the proceeding. Each party to the proceeding must effect 
actual delivery of a complete copy of its written direct case on each of 
the other parties to the proceeding no later than the first day of the 
45-day period. At any time during the 45-day period, any party to the 
proceeding may file with the Librarian prehearing motions and 
objections, including petitions to dispense with formal hearings under 
Sec. 251.41(b) and objections to arbitrators appearing on the arbitrator 
list under Sec. 251.4. Responses to motions, petitions, and objections 
must be filed with the Librarian within seven business days from the 
filing of such motions, petitions, and objections. Replies to the 
responses shall be filed within five business days from the filing of 
such responses with the Librarian. Each party must serve all motions, 
petitions, objections, oppositions, and replies on the other parties or 
their counsel by means no slower than overnight express mail on the same 
day the pleading is filed.
    (ii) Subject to Sec. 251.72, the Librarian shall establish, prior to 
the commencement of the 45-day period, the date on which arbitration 
proceedings will be initiated.
    (2)(i) In the case of a rate adjustment proceeding, the Librarian of 
Congress shall, after the filing of comments and notices described in 
paragraph (a) of this section, designate a 45-day period for 
precontroversy discovery and exchange of documents. The period will 
begin with the exchange of written direct cases among the parties to the 
proceeding. Each party to the proceeding must effect actual delivery of 
a complete copy of its written direct case on each of the other parties 
to the proceeding no later than the first day of the 45-day period. At 
any time during the 45-day period, any party to the proceeding may file 
with the Librarian prehearing motions and objections, including 
petitions to dispense with formal hearings under Sec. 251.41(b) and 
objections to arbitrators appearing on the arbitrator list under 
Sec. 251.4. Responses to motions, petitions, and objections must be 
filed with the Librarian within seven business days from the filing of 
such motions, petitions, and objections. Replies to the responses shall 
be filed within five business days from the filing of such responses 
with the Librarian. Each party must serve all motions, petitions, 
objections, oppositions, and replies on the other parties or their 
counsel by means no slower than overnight express mail on the same day 
the pleading is filed.
    (ii) Subject to Sec. 251.64, the Librarian shall establish, prior to 
the commencement of the 45-day period, the date on which arbitration 
proceedings will be initiated.
    (c) Discovery and motions filed with a Copyright Arbitration Royalty 
Panel. (1) A Copyright Arbitration Royalty Panel shall designate a 
period following the filing of written direct and rebuttal cases with it 
in which parties may request of an opposing party nonprivileged 
underlying documents related to the written exhibits and testimony.
    (2) After the filing of written cases with a CARP, any party may 
file with a CARP objections to any portion of another party's written 
case on any proper ground including, without limitation, relevance, 
competency, and failure to provide underlying documents. If an objection 
is apparent from the face of a written case, that objection must be 
raised or the party may thereafter be precluded from raising such an 
objection.
    (d) Amended filings and discovery. In the case of objections filed 
with either the Librarian of Congress or a CARP, each party may amend 
its claim, petition, written case, or direct evidence to respond to the 
objections raised by other parties, or to the requests of either the 
Librarian or a panel. Such amendments must be properly filed with the 
Librarian or the CARP, wherever appropriate, and exchanged with all 
parties. All parties shall be given a reasonable opportunity to conduct 
discovery on the amended filings.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63041, Dec. 7, 1994; 61 
FR 63718, Dec. 2, 1996]

[[Page 482]]



Sec. 251.46  Conduct of hearings: Role of arbitrators.

    (a) At the opening of a hearing conducted by a Copyright Arbitration 
Royalty Panel, the chairperson shall announce the subject under 
consideration.
    (b) Only the arbitrators of a CARP, or counsel as provided in this 
chapter, shall question witnesses.
    (c) Subject to the vote of the CARP, the chairperson shall have 
responsibility for:
    (1) Setting the order of presentation of evidence and appearance of 
witnesses;
    (2) Administering oaths and affirmations to all witnesses;
    (3) Announcing the CARP's ruling on objections and motions and all 
rulings with respect to introducing or excluding documentary or other 
evidence. In all cases, whether there are an even or odd number of 
arbitrators sitting at the hearing, it takes a majority vote to grant a 
motion or sustain an objection. A split vote will result in the denial 
of the motion or the overruling of the objection;
    (4) Regulating the course of the proceedings and the decorum of the 
parties and their counsel, and insuring that the proceedings are fair 
and impartial; and
    (5) Announcing the schedule of subsequent hearings.
    (d) Each arbitrator may examine any witness or call upon any party 
for the production of additional evidence at any time. Further 
examination, cross-examination, or redirect examination by counsel 
relevant to the inquiry initiated by an arbitrator may be allowed by a 
CARP, but only to the limited extent that it is directly responsive to 
the inquiry of the arbitrator.

[59 FR 23981, May 9, 1994, as amended at 63 FR 30635, June 5, 1998]



Sec. 251.47  Conduct of hearings: Witnesses and counsel.

    (a) With all due regard for the convenience of the witnesses, 
proceedings shall be conducted as expeditiously as possible.
    (b) In each distribution or rate adjustment proceeding, each party 
may present its opening statement with the presentation of its direct 
case.
    (c) All witnesses shall be required to take an oath or affirmation 
before testifying; however, attorneys who do not appear as witnesses 
shall not be required to do so.
    (d) Witnesses shall first be examined by their attorney and by 
opposing attorneys for their competency to support their written 
testimony and exhibits (voir dire).
    (e) Witnesses may then summarize, highlight or read their testimony. 
However, witnesses may not materially supplement or alter their written 
testimony except to correct it, unless the CARP expands the witness's 
testimony to complete the record.
    (f) Parties are entitled to raise objections to evidence on any 
proper ground during the course of the hearing, including an objection 
that an opposing party has not furnished nonprivileged underlying 
documents. However, they may not raise objections that were apparent 
from the face of a written case and could have been raised before the 
hearing without leave from the CARP. See Sec. 251.45(c).
    (g) All written testimony and exhibits will be received into the 
record, except any to which the panel sustains an objection; no separate 
motion will be required.
    (h) If the panel rejects or excludes testimony and an offer of proof 
is made, the offer of proof shall consist of a statement of the 
substance of the evidence which it is contended would have been adduced. 
In the case of documentary or written evidence, a copy of such evidence 
shall be marked for identification and shall constitute the offer of 
proof.
    (i) The CARP shall discourage the presentation of cumulative 
evidence, and may limit the number of witnesses that may be heard on 
behalf of any one party on any one issue.
    (j) Parties are entitled to conduct cross-examination and redirect 
examination. Cross-examination is limited to matters raised on direct 
examination. Redirect examination is limited to matters raised on cross-
examination. The panel, however, may limit cross-examination and 
redirect examination if in its judgment this evidence or examination 
would be cumulative or cause undue delay. Conversely, this

[[Page 483]]

subsection does not restrict the discretion of the panel to expand the 
scope of cross-examination or redirect examination.
    (k) Documents that have not been exchanged in advance may be shown 
to a witness on cross-examination. However, copies of such documents 
must be distributed to the CARP and to other participants or their 
counsel at hearing before being shown to the witness at the time of 
cross-examination, unless the panel directs otherwise. If the document 
is not, or will not be, supported by a witness for the cross-examining 
party, that document can be used solely to impeach the witness's direct 
testimony and cannot itself be relied upon in findings of fact as 
rebutting the witness's direct testimony. However, upon leave from the 
panel, the document may be admitted as evidence without a sponsoring 
witness if official notice is proper, or if, in the panel's view, the 
cross-examined witness is the proper sponsoring witness.
    (l) A CARP will encourage individuals or groups with the same or 
similar interests in a proceeding to select a single representative to 
conduct their examination and cross-examination of any given witness. 
However, if there is no agreement on the selection of a representative, 
each individual or group will be allowed to conduct its own examination 
and cross-examination of any given witness, but only on issues affecting 
its particular interests, provided that the questioning is not 
repetitious or cumulative of the questioning of other parties within the 
group.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63041, Dec. 7, 1994; 63 
FR 30635, June 5, 1998]



Sec. 251.48  Rules of evidence.

    (a) Admissibility. In any public hearing before a Copyright 
Arbitration Royalty Panel, evidence that is not unduly repetitious or 
cumulative and is relevant and material shall be admissible. The 
testimony of any witness will not be considered evidence in a proceeding 
unless the witness has been sworn.
    (b) Documentary evidence. Evidence that is submitted in the form of 
documents or detailed data and information shall be presented as 
exhibits. Relevant and material matter embraced in a document containing 
other matter not material or relevant or not intended as evidence must 
be plainly designated as the matter offered in evidence, and the 
immaterial or irrelevant parts shall be marked clearly so as to show 
they are not intended as evidence. In cases where a document in which 
material and relevant matter occurs is of such bulk that it would 
unnecessarily encumber the record, it may be marked for identification 
and the relevant and material parts, once properly authenticated, may be 
read into the record. If the CARP desires, a true copy of the material 
and relevant matter may be presented in extract form, and submitted as 
evidence. Anyone presenting documents as evidence must present copies to 
all other participants at the hearing or their attorneys, and afford 
them an opportunity to examine the documents in their entirety and offer 
into evidence any other portion that may be considered material and 
relevant.
    (c) Documents filed with a Copyright Arbitration Royalty Panel or 
Copyright Office. If the matter offered in evidence is contained in 
documents already on file with a Copyright Arbitration Royalty Panel or 
the Copyright Office, the documents themselves need not be produced, but 
may instead be referred to according to how they have been filed.
    (d) Public documents. If a public document such as an official 
report, decision, opinion, or published scientific or economic data, is 
offered in evidence either in whole or in part, and if the document has 
been issued by an Executive Department, a legislative agency or 
committee, or a Federal administrative agency (Government-owned 
corporations included), and is proved by the party offering it to be 
reasonably available to the public, the document need not be produced 
physically, but may be offered instead by identifying the document and 
signaling the relevant parts.
    (e) Introduction of studies and analyses. If studies or analyses are 
offered in evidence, they shall state clearly the study plan, all 
relevant assumptions, the techniques of data collection, and

[[Page 484]]

the techniques of estimation and testing. The facts and judgments upon 
which conclusions are based shall be stated clearly, together with any 
alternative courses of action considered. If requested, tabulations of 
input data shall be made available to the Copyright Arbitration Royalty 
Panel.
    (f) Statistical studies. Statistical studies offered in evidence 
shall be accompanied by a summary of their assumptions, their study 
plans, and their procedures. Supplementary details shall be included in 
appendices. For each of the following types of statistical studies the 
following should be furnished:
    (1) Sample surveys. (i) A clear description of the survey design, 
the definition of the universe under consideration, the sampling frame 
and units, the validity and confidence limits on major estimates; and
    (ii) An explanation of the method of selecting the sample and of the 
characteristics which were measured and counted.
    (2) Econometric investigations. (i) A complete description of the 
econometric model, the reasons for each assumption, and the reasons for 
the statistical specification;
    (ii) A clear statement of how any changes in the assumptions might 
affect the final result; and
    (iii) Any available alternative studies that employ alternative 
models and variables, if requested.
    (3) Experimental analysis. (i) A complete description of the design, 
the controlled conditions, and the implementation of controls; and
    (ii) A complete description of the methods of observation and 
adjustment of observation.
    (4) Studies involving statistical methodology. (i) The formula used 
for statistical estimates;
    (ii) The standard error for each component;
    (iii) The test statistics, the description of how the tests were 
conducted, related computations, computer programs, and all final 
results; and
    (iv) Summarized descriptions of input data and, if requested, the 
input data themselves.

[59 FR 23981, May 9, 1994, as amended at 60 FR 8197, Feb. 13, 1995; 63 
FR 30635, June 5, 1998]



Sec. 251.49  Transcript and record.

    (a) An official reporter for the recording and transcribing of 
hearings shall be designated by the Librarian of Congress. Anyone 
wishing to inspect or copy the transcript of a hearing may do so at a 
location specified by the chairperson of the Copyright Arbitration 
Royalty Panel conducting the hearing.
    (b) The transcript of testimony and all exhibits, papers, and 
requests filed in the proceeding, shall constitute the official written 
record. Such record shall accompany the report of the determination of 
the CARP to the Librarian of Congress required by 17 U.S.C. 802(e).
    (c) The record, including the report of the determination of a CARP, 
shall be available at the Copyright Office for public inspection and 
copying in accordance with Sec. 251.22.



Sec. 251.50  Rulings and orders.

    In accordance with 5 U.S.C., subchapter II, a Copyright Arbitration 
Royalty Panel may issue rulings or orders, either on its own motion or 
that of an interested party, necessary to the resolution of issues 
contained in the proceeding before it; Provided, that no such rules or 
orders shall amend, supplement or supersede the rules and regulations 
contained in this subchapter. See Sec. 251.7.

[59 FR 23981, May 9, 1994, as amended at 60 FR 8197, Feb. 13, 1995]



Sec. 251.51  Closing the record.

    To close the record of hearing, the chairperson of a Copyright 
Arbitration Royalty Panel shall make an announcement that the taking of 
testimony has concluded. In its discretion the panel may close the 
record as of a future specified date, and allow time for exhibits yet to 
be prepared to be admitted, provided that the parties to the proceeding 
stipulate on the record that they waive the opportunity to cross-examine 
or present evidence with respect to such exhibits. The record in any 
hearing that has been recessed may not be closed by the chairperson 
before the day on which the hearing is to resume,

[[Page 485]]

except upon ten days' notice to all parties.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63041, Dec. 7, 1994]



Sec. 251.52  Proposed findings and conclusions.

    (a) Any party to the proceeding may file proposed findings of fact 
and conclusions, briefs, or memoranda of law, or may be directed by the 
chairperson to do so. Such filings, and any replies to them, shall take 
place at such time after the record has been closed as the chairperson 
directs.
    (b) Failure to file when directed to do so shall be considered a 
waiver of the right to participate further in the proceeding, unless 
good cause for the failure is shown.
    (c) Proposed findings of fact shall be numbered by paragraph and 
include all basic evidentiary facts developed on the record used to 
support proposed conclusions, and shall contain appropriate citations to 
the record for each evidentiary fact. Proposed findings submitted by 
someone other than a party in a proceeding shall be restricted to those 
issues specifically affecting that person.
    (d) Proposed conclusions shall be stated separately.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63041, Dec. 7, 1994; 60 
FR 8197, Feb. 13, 1995]



Sec. 251.53  Report to the Librarian of Congress.

    (a) At any time after the filing of proposed findings of fact and 
conclusions of law and any replies thereto specified in Sec. 251.52, and 
not later than 180 days from publication in the Federal Register of 
notification of commencement of the proceeding, a Copyright Arbitration 
Royalty Panel shall deliver to the Librarian of Congress a report 
incorporating its written determination. Such determination shall be 
accompanied by the written record, and shall set forth the facts that 
the panel found relevant to its determination.
    (b) The determination of the panel shall be certified by the 
chairperson and signed by all of the arbitrators. Any dissenting opinion 
shall be certified and signed by the arbitrator so dissenting.
    (c) At the same time as the submission to the Librarian of Congress, 
the chairperson of the panel shall cause a copy of the determination to 
be delivered to all parties participating in the proceeding.
    (d) The Librarian of Congress shall make the report of the CARP and 
the accompanying record available for public inspection and copying.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63041, Dec. 7, 1994]



Sec. 251.54  Assessment of costs of arbitration panels.

    (a) The ordinary and necessary costs of an arbitrator shall be 
assessed, in accordance with Sec. 251.38, as follows:
    (1) In the case of a rate adjustment proceeding, the parties to the 
proceeding shall bear the entire cost thereof in such manner and 
proportion as the panel shall direct.
    (2) In the case of a distribution proceeding, the parties to the 
proceeding shall bear the total cost of the proceeding in direct 
proportion to their share of the distribution. These costs shall be 
considered reasonable costs incurred by the Librarian of Congress and 
the Copyright Office. Such costs shall be deducted from the royalty fees 
which have been deposited and collected under title 17 of the United 
States Code and which are the subject of the distribution proceeding.
    (b) Each arbitrator shall itemize his or her expenses on the 
statement of cost in a format approved by the General Counsel and shall 
specify the name and address to whom payment should be made. In the case 
of a rate adjustment proceeding, each statement of cost shall specify 
each party's share of the total cost and the amount owed by that party 
to each arbitrator, or alternatively, reflect the method of payment 
agreed upon by the parties and the arbitrators.
    (c) The statements of cost shall be sent to the Library of Congress 
no more frequently than once a month.
    (1) In the case of a distribution proceeding, the statements of cost 
shall be sent to the Accounting Operations Section, Financial Services 
Directorate, Library of Congress, 101 Independence

[[Page 486]]

Avenue, SE, Washington, DC 20540-9112, and a copy of the statements of 
cost shall be submitted to the Copyright Office as directed in paragraph 
(c)(2) of this section.
    (2) In the case of a rate adjustment proceeding, the statements of 
cost shall be sent to the CARP Specialist, P.O. Box 70977, Southwest 
Station, Washington, DC 20024, or hand delivered to the Office of the 
Copyright General Counsel, Room 403, James Madison Building, 101 
Independence Avenue, SE, Washington, DC 20540.
    (d) In the case of a rate adjustment proceeding, all parties to the 
proceeding shall have 30 days from receipt of a proper statement of cost 
in which to tender payment to the arbitrators, unless otherwise directed 
by the panel. Payment should be in the form of a money order, check, 
bank draft, or electronic fund transfer.
    (e) In the case of a distribution proceeding, the Library of 
Congress shall reimburse the arbitrators directly from the royalty fees 
collected under title 17 of the United States Code which are the subject 
of the CARP proceeding. Payment of approved costs shall be made within 
30 days of the receipt of a proper statement of cost in the form of an 
electronic fund transfer in accordance with the regulations of the 
Library of Congress.

[64 FR 25201, May 11, 1999]



Sec. 251.55  Post-panel motions.

    (a) Any party to the proceeding may file with the Librarian of 
Congress a petition to modify or set aside the determination of a 
Copyright Arbitration Royalty Panel within 14 days of the Librarian's 
receipt of the panel's report of its determination. Such petition shall 
state the reasons for modification or reversal of the panel's 
determination, and shall include applicable sections of the party's 
proposed findings of fact and conclusions of law.
    (b) Replies to petitions to modify or set aside shall be filed 
within 14 days of the filing of such petitions.



Sec. 251.56  Order of the Librarian of Congress.

    (a) After the filing of post-panel motions, see Sec. 251.55, but 
within 60 days from receipt of the report of the determination of a 
panel, the Librarian of Congress shall issue an order accepting the 
panel's determination or substituting the Librarian's own determination. 
The Librarian shall adopt the determination of the panel unless he or 
she finds that the determination is arbitrary or contrary to the 
applicable provisions of 17 U.S.C.
    (b) If the Librarian substitutes his or her own determination, the 
order shall set forth the reasons for not accepting the panel's 
determination, and shall set forth the facts which the Librarian found 
relevant to his or her determination.
    (c) The Librarian shall cause a copy of the order to be delivered to 
all parties participating in the proceeding. The Librarian shall also 
publish the order, and the determination of the panel, in the Federal 
Register.



Sec. 251.57  Effective date of order.

    An order of determination issued by the Librarian under Sec. 251.56 
shall become effective 30 days following its publication in the Federal 
Register, unless an appeal has been filed pursuant to Sec. 251.58 and 
notice of the appeal has been served on all parties to the proceeding.



Sec. 251.58  Judicial review.

    (a) Any order of determination issued by the Librarian of Congress 
under Sec. 251.55 may be appealed, by any aggrieved party who would be 
bound by the determination, to the United States Court of Appeals for 
the District of Columbia Circuit, within 30 days after publication of 
the order in the Federal Register.
    (b) If no appeal is brought within the 30 day period, the order of 
determination of the Librarian is final, and shall take effect as set 
forth in the order.
    (c) The pendency of any appeal shall not relieve persons obligated 
to make royalty payments under 17 U.S.C. 111, 112, 114, 115, 116, 118, 
119, or 1003, and who would be affected by the determination on appeal, 
from depositing statements of account and royalty fees by those 
sections.

[59 FR 23981, May 9, 1994, as amended at 61 FR 37215, July 17, 1996; 63 
FR 65556, Nov. 27, 1998]

[[Page 487]]



                 Subpart F--Rate Adjustment Proceedings



Sec. 251.60  Scope.

    This subpart governs only those proceedings dealing with royalty 
rate adjustments affecting cable (17 U.S.C. 111), the making of 
ephemeral recordings (17 U.S.C. 112), certain digital audio 
transmissions (17 U.S.C. 114), the manufacture and distribution of 
phonorecords, including digital phonorecord deliveries (17 U.S.C. 115), 
performances on coin-operated phonorecord players (jukeboxes) (17 U.S.C. 
116), noncommercial educational broadcasting (17 U.S.C. 118) and 
satellite carriers (17 U.S.C. 119). Those provisions of subpart E of 
this part generally regulating the conduct of proceedings shall apply to 
rate adjustment proceedings, unless they are inconsistent with the 
specific provisions of this subpart.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63042, Dec. 7, 1994; 61 
FR 37215, July 17, 1996; 63 FR 30635, June 5, 1998; 63 FR 65556, Nov. 
27, 1998]



Sec. 251.61  Commencement of adjustment proceedings.

    (a) In the case of cable, ephemeral recordings, certain digital 
audio transmissions, phonorecords, digital phonorecord deliveries, and 
coin-operated phonorecord players (jukeboxes), rate adjustment 
proceedings shall commence with the filing of a petition by an 
interested party according to the following schedule:
    (1) Cable: During 1995, and each subsequent fifth calendar year.
    (2) Ephemeral recordings: During a 60-day period prescribed by the 
Librarian in 1999, 2000, and at 2-year intervals thereafter, or as 
otherwise agreed to by the parties.
    (3) Digital audio transmissions: For preexisting digital 
subscription transmission services and preexisting satellite digital 
audio radio services:
    (i) During a 60-day period commencing on July 1, 2001 and at 5-year 
intervals thereafter, or
    (ii) During a 60-day period prescribed by the Librarian in a 
proceeding to set reasonable terms and rates for a new type of 
subscription digital audio transmission service; and for an eligible 
nonsubscription service or a new subscription service:
    (A) During a 60-day period prescribed by the Librarian in 1999,
    (B) During a 60-day period commencing on July 1, 2000, and at 2-year 
intervals thereafter,
    (C) During a 60-day period prescribed by the Librarian in a 
proceeding to set reasonable terms and rates for a new type of eligible 
nonsubscription service or new subscription service, or
    (D) As otherwise agreed to by the parties.
    (4) Phonorecords: During 1997 and each subsequent tenth calendar 
year.
    (5) Digital phonorecord deliveries: During 1997 and each subsequent 
fifth calendar year, or as otherwise agreed to by the parties.
    (6) Coin-operated phonorecord players (jukeboxes): Within one year 
of the expiration or termination of a negotiated license authorized by 
17 U.S.C. 116.
    (b) Cable rate adjustment proceedings may also be commenced by the 
filing of a petition, according to 17 U.S.C. 801(b)(2)(B) and (C), if 
the Federal Communications Commission amends certain of its rules with 
respect to the carriage by cable systems of broadcast signals, or with 
respect to syndicated and sports programming exclusivity.
    (c) In the case of noncommercial educational broadcasting, a 
petition is not necessary for the commencement of proceedings. 
Proceedings commence with the publication of a notice of the initiation 
of arbitration proceedings in the Federal Register on June 30, 1997, and 
at five year intervals thereafter.
    (d) In the case of the satellite carrier compulsory license, rate 
adjustment proceedings shall commence on January 1, 1997, in accordance 
with 17 U.S.C. 119(c)(3)(A), for satellite carriers who are not parties 
to a voluntary agreement filed with the Copyright Office in accordance 
with 17 U.S.C. 119(c)(2).

[59 FR 23981, May 9, 1994, as amended at 59 FR 63042, Dec. 7, 1994; 61 
FR 37215, July 17. 1996; 63 FR 65556, Nov. 27, 1998]



Sec. 251.62  Content of petition.

    (a) In the case of a petition for rate adjustment proceedings for 
cable, ephemeral recordings, certain digital

[[Page 488]]

audio transmissions, phonorecords, digital phonorecord deliveries,and 
coin-operated phonorecord players (jukeboxes), the petition shall detail 
the petitioner's interest in the royalty rate sufficiently to permit the 
Librarian of Congress to determine whether the petitioner has a 
``significant interest'' in the matter. The petition must also identify 
the extent to which the petitioner's interest is shared by other owners 
or users; owners or users with similar interests may file a petition 
jointly.
    (b) In the case of a petition for rate adjustment proceedings as the 
result of a Federal Communications Commission rule change, the petition 
shall also set forth the actions of the Federal Communications 
Commission on which the petition for a rate adjustment is based.

[59 FR 23981, May 9, 1994, as amended at 61 FR 37216, July 17, 1996; 63 
FR 65557, Nov. 27, 1998]



Sec. 251.63  Consideration of petition; settlements.

    (a) To allow time for the parties to settle their differences 
concerning cable, phonorecord, and jukebox rate adjustments, the 
Librarian of Congress shall, after the filing of the petition under 
Sec. 251.62 and before the 45-day period specified in 
Sec. 251.45(b)(2)(i), designate a 30-day period for negotiation of a 
settlement. The Librarian shall cause notice of the dates for that 
period to be published in the Federal Register.
    (b) In the case of a settlement among the parties to a proceeding, 
the Librarian may, upon the request of the parties, submit the agreed 
upon rate to the public in a notice-and-comment proceeding. The 
Librarian may adopt the rate embodied in the proposed settlement without 
convening an arbitration panel, provided that no opposing comment is 
received by the Librarian from a party with an intent to participate in 
a CARP proceeding.

[59 FR 63042, Dec. 7, 1994, as amended at 61 FR 37216, July 17, 1996; 61 
FR 63718, Dec. 2, 1996]



Sec. 251.64  Disposition of petition; initiation of arbitration proceeding.

    After the end of the 45-day precontroversy discovery period, and 
after the Librarian has ruled on all motions and objections filed under 
Sec. 251.45, the Librarian will determine the sufficiency of the 
petition, including, where appropriate, whether one or more of the 
petitioners' interests are ``significant.'' If the Librarian determines 
that a petition is significant, he or she will cause to be published in 
the Federal Register a declaration of a controversy accompanied by a 
notice of initiation of an arbitration proceeding. The same declaration 
and notice of initiation shall be made for noncommercial educational 
broadcasting and the satellite carrier compulsory license in accordance 
with 17 U.S.C. 118 and 119, respectively.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63042, Dec. 7, 1994]



Sec. 251.65  Deduction of costs of rate adjustment proceedings.

    In accordance with 17 U.S.C. 802(h)(1), the Librarian of Congress 
and the Register of Copyrights may assess the reasonable costs incurred 
by the Library of Congress and the Copyright Office as a result of the 
rate adjustment proceedings directly to the parties participating in the 
proceedings.

[59 FR 63042, Dec. 7, 1994]



             Subpart G--Royalty Fee Distribution Proceedings



Sec. 251.70  Scope.

    This subpart governs only those proceedings dealing with 
distribution of royalty payments deposited with the Register of 
Copyrights for cable (17 U.S.C. 111), satellite carrier (17 U.S.C. 119), 
and digital audio recording devices and media (17 U.S.C. chapter 10). 
Those provisions of subpart E generally regulating the conduct of 
proceedings shall apply to royalty fee distribution proceedings, unless 
they are inconsistent with the specific provisions of this subpart.

[[Page 489]]



Sec. 251.71  Commencement of proceedings.

    (a) Cable. In the case of royalty fees collected under the cable 
compulsory license (17 U.S.C. 111), any person claiming to be entitled 
to such fees must file a claim with the Copyright Office during the 
month of July each year in accordance with the requirements of this 
subchapter.
    (b) Satellite carriers. In the case of royalty fees collected under 
the satellite carrier compulsory license (17 U.S.C. 119), any person 
claiming to be entitled to such fees must file a claim with the 
Copyright Office during the month of July each year in accordance with 
the requirements of this subchapter.
    (c) Digital audio recording devices and media. In the case of 
royalty payments for the importation and distribution in the United 
States, or the manufacture and distribution in the United States, of any 
digital recording device or medium, any person claiming to be entitled 
to such payments must file a claim with the Copyright Office during the 
month of January or February each year in accordance with the 
requirements of this subchapter.



Sec. 251.72  Declaration of controversy: Initiation of arbitration proceeding.

    If the Librarian determines that a controversy exists among the 
claimants to either cable, satellite carrier, or digital audio recording 
devices and media royalties, the Librarian shall publish in the Federal 
Register a declaration of controversy along with a notice of initiation 
of an arbitration proceeding. Such notice shall, to the extent feasible, 
describe the nature, general structure and schedule of the proceeding.

[59 FR 23981, May 9, 1994. Redesignated at 59 FR 63042, Dec. 7, 1994]



Sec. 251.73  Deduction of costs of distribution proceedings.

    The Librarian of Congress and the Register of Copyrights may, before 
any distributions of royalty fees are made, deduct the reasonable costs 
incurred by the Library of Congress and the Copyright Office as a result 
of the distribution proceeding, from the relevant royalty pool.

[59 FR 23981, May 9, 1994. Redesignated at 59 FR 63042, Dec. 7, 1994]



PART 252--FILING OF CLAIMS TO CABLE ROYALTY FEES--Table of Contents




Sec.
252.1  Scope.
252.2  Time of filing.
252.3  Content of claims.
252.4  Compliance with statutory dates.
252.5  Copies of claims.

    Authority: 17 U.S.C. 111(d)(4), 801, 803.

    Source: 59 FR 23992, May 9, 1994, unless otherwise noted.



Sec. 252.1  Scope.

    This part prescribes procedures under 17 U.S.C. 111(d)(4)(A), 
whereby parties claiming to be entitled to cable compulsory license 
royalty fees shall file claims with the Copyright Office.

[59 FR 23992, May 9, 1994, as amended at 60 FR 8198, Feb. 13, 1995]



Sec. 252.2  Time of filing.

    During the month of July each year, any party claiming to be 
entitled to cable compulsory license royalty fees for secondary 
transmissions of one or more of its works during the preceding calendar 
year shall file a claim to such fees with the Copyright Office. No 
royalty fees shall be distributed to a party for secondary transmissions 
during the specified period unless such party has timely filed a claim 
to such fees. Claimants may file claims jointly or as a single claim.



Sec. 252.3  Content of claims.

    (a) Claims filed by parties claiming to be entitled to cable 
compulsory license royalty fees shall include the following information:
    (1) The full legal name of the person or entity claiming royalty 
fees.
    (2) The telephone number, facsimile number, if any, and full 
address, including a specific number and street name or rural route, of 
the place of business of the person or entity.
    (3) If the claim is a joint claim, a concise statement of the 
authorization for the filing of the joint claim, and the name of each 
claimant to the joint

[[Page 490]]

claim. For this purpose, a performing rights society shall not be 
required to obtain from its members or affiliates separate 
authorizations, apart from their standard membership affiliate 
agreements, or to list the name of each of its members or affiliates in 
the joint claim.
    (4) For individual claims, a general statement of the nature of the 
claimant's copyrighted works and identification of at least one 
secondary transmission by a cable system of such works establishing a 
basis for the claim. For joint claims, a general statement of the nature 
of the joint claimants' copyrighted works and identification of at least 
one secondary transmission of one of the joint claimants' copyrighted 
works by a cable system establishing a basis for the joint claim.
    (b) Claims shall bear the original signature of the claimant or of a 
duly authorized representative of the claimant.
    (c) In the event that the legal name and/or address of the claimant 
changes after the filing of the claim, the claimant shall notify the 
Copyright Office of such change. If the good faith efforts of the 
Copyright Office to contact the claimant are frustrated because of 
failure to notify the Office of a name and/or address change, the claim 
may be subject to dismissal.

[59 FR 23992, May 9, 1994, as amended at 59 FR 63042, Dec. 7, 1994]



Sec. 252.4  Compliance with statutory dates.

    (a) Claims filed with the Copyright Office shall be considered 
timely filed only if:
    (1) They are hand delivered, either by the claimant, the claimant's 
agent, or a private delivery carrier, to: Office of the Register of 
Copyrights, Room 403, James Madison Memorial Building, 101 Independence 
Avenue, SE., Washington, DC 20540, during normal business hours during 
the month of July; or
    (2) They are addressed to: Copyright Arbitration Royalty Panel, P.O. 
Box 70977, Southwest Station, Washington, DC 20024, and are deposited 
with sufficient postage with the United States Postal Service and bear a 
July U.S. postmark.
    (b) Notwithstanding subsection (a), in any year in which July 31 
falls on a Saturday, Sunday, holiday, or other nonbusiness day within 
the District of Columbia or the Federal Government, claims received by 
the Copyright Office by the first business day in August, or properly 
addressed and deposited with sufficient postage with the United States 
Postal Service and postmarked by the first business day in August, shall 
be considered timely filed.
    (c) Claims dated only with a business meter that are received after 
July 31, will not be accepted as having been timely filed.
    (d) No claim may be filed by facsimile transmission.
    (e) In the event that a properly addressed and mailed claim is not 
timely received by the Copyright Office, a claimant may nonetheless 
prove that the claim was properly filed if it was sent by certified mail 
return receipt requested, and the claimant can provide a receipt bearing 
a July date stamp of the U.S. Postal Service, except where paragraph (b) 
of this section applies. No affidavit of an officer or employee of the 
claimant, or of a U.S. postal worker will be accepted in lieu of the 
receipt.

[59 FR 23992, May 9, 1994, as amended at 59 FR 63042, Dec. 7, 1994; 61 
FR 63718, Dec. 2, 1996; 63 FR 30635, June 5, 1998]



Sec. 252.5  Copies of claims.

    A claimant shall, for each claim submitted to the Copyright Office, 
file an original and two copies of the claim to cable royalty fees.



PART 253--USE OF CERTAIN COPYRIGHTED WORKS IN CONNECTION WITH NONCOMMERCIAL EDUCATIONAL BROADCASTING--Table of Contents




253.1  General.
253.2  Definition of public broadcasting entity.
253.3  Performance of musical compositions in the repertory of ASCAP and 
          BMI by PBS and NPR and other public broadcasting entities 
          engaged in the activities set forth in 17 U.S.C. 118(d).
253.4  Performance of musical compositions by PBS, NPR and other public 
          broadcasting entities engaged in the activities set forth in 
          17 U.S.C. 118(d).

[[Page 491]]

253.5  Performance of musical compositions by public broadcasting 
          entities licensed to colleges and universities.
253.6  Performance of musical compositions by other public broadcasting 
          entities.
253.7  Recording rights, rates and terms.
253.8  Terms and rates of royalty payments for the use of published 
          pictorial, graphic, and sculptural works.
253.9  Unknown copyright owners.
253.10  Cost of living adjustment.
253.11  Notice of restrictions on use of reproductions of transmission 
          programs.

    Authority: 17 U.S.C. 118, 801(b)(1) and 803.

    Source: 57 FR 60954, Dec. 22, 1992, unless otherwise noted. 
Redesignated at 59 FR 23993, May 9, 1994.



Sec. 253.1  General.

    This part 253 establishes terms and rates of royalty payments for 
certain activities using published nondramatic musical works and 
published pictorial, graphic and sculptural works during a period 
beginning on January 1, 1998, and ending on December 31, 2002. Upon 
compliance with 17 U.S.C. 118, and the terms and rates of this part, a 
public broadcasting entity may engage in the activities with respect to 
such works set forth in 17 U.S.C. 118(d).

[57 FR 60954, Dec. 22, 1992. Redesignated at 59 FR 23993, May 9, 1994, 
as amended at 63 FR 2144, Jan 14, 1998]



Sec. 253.2  Definition of public broadcasting entity.

    As used in this part, the term public broadcasting entity means a 
noncommercial educational broadcast station as defined in section 397 of 
title 47 and any nonprofit institution or organization engaged in the 
activities described in 17 U.S.C. 118(d)(2).



Sec. 253.3  Performance of musical compositions in the repertory of ASCAP and BMI by PBS and NPR and other public broadcasting entities engaged in the 
          activities set forth in 17 U.S.C. 118(d).

    (a) Scope. This section shall apply to the performance during a 
period beginning January 1, 1998, and ending on December 31, 2002, by 
the Public Broadcasting Service (PBS), National Public Radio (NPR) and 
other public broadcasting entities (as defined in Sec. 253.2) engaged in 
the activities set forth in 17 U.S.C. 118(d) of copyrighted published 
nondramatic musical compositions in the repertory of the American 
Society of Composers, Authors and Publishers (ASCAP) and Broadcast 
Music, Inc. (BMI), except for public broadcasting entities covered by 
Secs. 253.5 and 253.6.
    (b) Royalty rates. The following annual royalty rates shall apply to 
the performance of published nondramatic musical compositions within the 
scope of this section: $3,320,000 to ASCAP, and $2,123,000 to BMI.
    (c) Payment of royalties. The royalty payments specified in 
paragraph (b) of this section shall be made in two equal payments on 
July 31 and December 31 of each calendar year, except for 1998, in which 
year the royalty payments shall also be made in two equal installments, 
the first of which shall be made within thirty (30) days from the date 
the Librarian of Congress renders his decision in In the Matter of 
Adjustment of the Rates for Noncommercial Educational Broadcasting 
Compulsory License, Docket No. 96-6 CARP NCBRA, and the second of which 
shall be made on December 31, 1998, subject to 17 U.S.C. 802(g).
    (d) Identification of stations. PBS, NPR and/or the Corporation for 
Public Broadcasting (CPB) shall annually for the years 1999-2002, by not 
later than January 31 of each such calendar year, and in 1998, within 
thirty (30) days of the date the Librarian of Congress renders the 
decision in In the Matter of Adjustment of the Rates for Noncommercial 
Educational Broadcasting Compulsory License, Docket No. 96-6 CARP NCBRA, 
furnish to ASCAP and BMI a complete list of all public broadcasting 
entities within the scope of this section, as of January 1 of that 
calendar year. Such lists shall include:
    (1) A list of all public broadcasting entities operating as 
television broadcast stations that are associated with PBS (``PBS 
Stations''), and the PBS licensee with which each PBS Station is 
associated (``PBS Licensees''), identifying which PBS Licensees are 
Single Feed Licensees and which are Multiple Feed Licensees, and which 
PBS Stations or groups of stations are Independently Programmed 
Stations, as those terms are defined in paragraph (e)(2) of this 
section;

[[Page 492]]

    (2) A list of all public broadcasting entities operating as 
television broadcast stations that are not associated with PBS (``Non-
PBS Stations'');
    (3) A list of all public broadcasting entities operating as radio 
broadcast stations that are associated with NPR (``NPR Stations''), 
which list shall designate which NPR Stations have six (6) or more full-
time employees and which NPR Stations repeat one hundred (100) percent 
of the programming of another NPR Station; and
    (4) A list of all public broadcasting entities operating as radio 
broadcast stations that are not associated with NPR (``Non-NPR 
Stations''), which list shall designate which Non-NPR Stations have six 
(6) or more full-time employees.
    (5) For purposes of this section, Non-PBS Stations and Non-NPR 
Stations shall include, but not be limited to, public broadcasting 
entities operating as television and radio broadcast stations which 
receive or are eligible to receive general operational support from CPB 
pursuant to the Public Broadcasting Act of 1967, as amended.
    (e) Records of use. (1) PBS and NPR shall maintain and, within 
thirty-one (31) days after the end of each calendar quarter, furnish to 
ASCAP and BMI copies of their standard cue sheets listing the 
nondramatic performances of musical compositions on PBS and NPR programs 
during the preceding quarter (including to the extent such information 
is reasonably obtainable by PBS and NPR the title, author, publisher, 
type of use, and manner of performance thereof). PBS and NPR will make a 
good faith effort to obtain the information to be listed on such cue 
sheets. In addition, to the extent the information is reasonably 
obtainable, PBS shall furnish to ASCAP and BMI the PBS programming feed 
schedules including, but not limited to, the PBS National Programming 
Service schedule. PBS and NPR shall make a good faith expeditious effort 
to provide the data discussed in this paragraph in electronic format 
where possible.
    (2) PBS Licensees shall furnish to ASCAP and BMI, upon request and 
designation of ASCAP and BMI, music use reports listing all musical 
compositions broadcast by a particular PBS Station owned by such PBS 
Licensee showing the title, author, and publisher of each composition, 
to the extent such information is reasonably obtainable; provided, 
however, that PBS Licensees shall not be responsible for providing cue 
sheets for programs for which cue sheets have already been provided by 
PBS to ASCAP and BMI. PBS Licensees will make a good faith effort to 
obtain the information to be listed on such music use reports. In the 
case where a PBS Licensee operates only one (1) or more PBS Stations 
each of which broadcasts simultaneously or on a delayed basis all or at 
least eighty-five (85) percent of the same programming (a ``Single Feed 
Licensee''), that Single Feed Licensee will not be obligated to furnish 
music use reports to either ASCAP or to BMI for more than one of its PBS 
Stations in each calendar year. In the case where a PBS Licensee 
operates two (2) or more PBS Stations which do not broadcast all or at 
least eighty-five (85) percent of the same programming on a simultaneous 
or delayed basis (a ``Multiple Feed Licensee''), that Multiple Feed 
Licensee may be required to furnish a music use report for each PBS 
Station or group of stations which broadcasts less than eighty-five (85) 
percent of the same programming as that aired by any other PBS Station 
or group of stations operated by that Multiple Feed Licensee (such 
station or group of stations being referred to as an ``Independently 
Programmed Station'') in each calendar year. In each calendar year, 
ASCAP and BMI shall each be limited to requesting music use reports from 
PBS Licensees covering a total number of PBS Stations equal to no more 
than fifty (50) percent of the total of the number of PBS Single Feed 
Licensees plus the number of Independently Programmed Stations operated 
by Multiple Feed Licensees; provided, however, that ASCAP and BMI shall 
be entitled to receive music use reports covering not less than ninety 
(90) PBS Stations in any given calendar year. Subject to the limitations 
set forth above, PBS Stations shall be obligated to furnish to ASCAP and 
BMI such music use reports for each station for a period of no more than 
seven days in each calendar year.

[[Page 493]]

    (3) Non-PBS Stations shall furnish to ASCAP and BMI, upon request 
and designation of ASCAP and BMI, music use reports listing all musical 
compositions broadcast by such Non-PBS Stations showing the title, 
author and publisher of each composition, to the extent such information 
is reasonably obtainable. Non-PBS Stations will make a good faith effort 
to obtain the information to be listed on such music use reports. In 
each calendar year, ASCAP and BMI shall each be limited to requesting 
music use reports from no more than fifty (50) percent of Non-PBS 
Stations. Subject to the limitations set forth above, Non-PBS Stations 
shall be obligated to furnish to ASCAP and BMI such music use reports 
for each station for a period of no more than seven days in each 
calendar year.
    (4) NPR Stations which have six (6) or more full-time employees 
shall furnish to ASCAP and BMI, upon request and designation of ASCAP 
and BMI, music use reports listing all musical compositions broadcast by 
such NPR Station showing the title, author or and publisher of each 
composition, to the extent such information is reasonably obtainable; 
provided, however, that NPR Stations shall not be responsible for 
providing cue sheets for programs for which cue sheets have already been 
provided by NPR to ASCAP and BMI. NPR Stations will make a good faith 
effort to obtain the information to be listed on such music use reports. 
In each calendar year, ASCAP and BMI shall each be limited to requesting 
music use reports from no more than fifty (50) percent of NPR Stations 
which have six (6) or more full-time employees. Notwithstanding the 
foregoing, if the number of NPR Stations with six (6) or more employees 
(from which ASCAP and BMI shall initially designate and request reports) 
falls below twenty-five (25) percent of the total number of all NPR 
Stations, then ASCAP and BMI may each request reports from additional 
NPR Stations, regardless of the number of employees, so that ASCAP and 
BMI shall each be entitled to receive music use reports from not less 
than twenty-five (25) percent of all NPR Stations. NPR Stations shall be 
obligated to furnish music use reports for each station for a period of 
up to one week in each calendar year to ASCAP and BMI.
    (5) Non-NPR Stations which have six (6) or more full-time employees 
shall furnish to ASCAP and BMI, upon request and designation of ASCAP 
and BMI, music use reports listing all musical compositions broadcast by 
such Non-NPR Station showing the title, author and publisher of each 
composition, to the extent such information is reasonably obtainable. 
Non-NPR Stations will make a good faith effort to obtain the information 
to be listed on such music use reports. In each calendar year, ASCAP and 
BMI shall each be limited to requesting music use reports from no more 
than fifty (50) percent of the Non-NPR Stations which have six (6) or 
more full-time employees. Notwithstanding the foregoing, if the number 
of Non-NPR Stations with six (6) or more employees (from which ASCAP and 
BMI shall initially designate and request reports) falls below twenty-
five (25) percent of the total number of all Non-NPR Stations, then 
ASCAP and BMI may each request reports from additional Non-NPR Stations, 
regardless of the number of employees, so that ASCAP and BMI shall each 
be entitled to receive music use reports from not less than twenty-five 
(25) percent of all Non-NPR Stations. Non-NPR Stations shall be 
obligated to furnish music use reports for each station for a period of 
up to one week in each calendar year to ASCAP and BMI.

[63 FR 49836, Sept. 18, 1998]



Sec. 253.4  Performance of musical compositions by PBS, NPR and other public broadcasting entities engaged in the activities set forth in 17 U.S.C. 118(d).

    The following schedule of rates and terms shall apply to the 
performance by PBS, NPR and other public broadcasting entities engaged 
in activities set forth in 17 U.S.C. 118(d) of copyrighted published 
nondramatic musical compositions, except for public broadcasting 
entities covered by Secs. 253.5 and 253.6, and except for compositions 
which are the subject of voluntary license agreements, or compositions 
in the repertories of ASCAP, BMI or SESAC which are licensed on terms

[[Page 494]]

and conditions established by a duly empowered Copyright Arbitration 
Royalty Panel pursuant to the procedures set forth in subchapter B of 37 
CFR, part 251.
    (a) Determination of royalty rate. (1) For the performance of such a 
work in a feature presentation of PBS:

1998-2002........................................................$211.53

    (2) For the performance of such a work as background or theme music 
in a PBS program:

1998-2002.........................................................$53.59

    (3) For the performance of such a work in a feature presentation of 
a station of PBS:

1998-2002.........................................................$18.08

    (4) For the performance of such a work as background or theme music 
in a program of a station of PBS:

1998-2002..........................................................$3.81

    (5) For the performance of such a work in a feature presentation of 
NPR:

1998-2002.........................................................$21.44

    (6) For the performance of such a work as background or theme music 
in an NPR program:

1998-2002..........................................................$5.20

    (7) For the performance of such a work in a feature presentation of 
a station of NPR:

1998-2002..........................................................$1.52

    (8) For the performance of such work as background or theme music in 
a program of a station of NPR:

1998-2002...........................................................$.54

    (9) For the purposes of this schedule the rate for the performance 
of theme music in an entire series shall be double the single program 
theme rate.
    (10) In the event the work is first performed in a program of a 
station of PBS or NPR, and such program is subsequently distributed by 
PBS or NPR, an additional royalty payment shall be made equal to the 
difference between the rate specified in this section for a program of a 
station of PBS or NPR, respectively, and the rate specified in this 
section for a PBS or NPR program, respectively.
    (b) Payment of royalty rate. The required royalty rate shall be paid 
to each known copyright owner not later than July 31 of each calendar 
year for uses during the first six months of that calendar year, and not 
later than January 31 for uses during the last six months of the 
preceding calendar year.
    (c) Records of use. PBS and NPR shall, upon the request of a 
copyright owner of a published musical work who believes a musical 
composition of such owner has been performed under the terms of this 
schedule, permit such copyright owner a reasonable opportunity to 
examine their standard cue sheets listing the nondramatic performances 
of musical compositions on PBS and NPR programs. Any local PBS and NPR 
station that shall be required by the provisions of any voluntary 
license agreement with ASCAP or BMI covering the license period January 
1, 1998, to December 31, 2002, to prepare a music use report shall, upon 
request of a copyright owner who believes a musical composition of such 
owner has been performed under the terms of this schedule, permit such 
copyright owner to examine the report.
    (d) Terms of use. The fees provided in this schedule for the 
performance of a musical work in a program shall cover performances of 
such work in such program for a period of three years following the 
first performance.

[57 FR 60954, Dec. 22, 1992. Redesignated and amended at 59 FR 23993, 
May 9, 1994; 63 FR 2144, Jan 14, 1998]



Sec. 253.5  Performance of musical compositions by public broadcasting entities licensed to colleges and universities.

    (a) Scope. This section applies to the performance of copyrighted 
published nondramatic musical compositions by noncommercial radio 
stations which are licensed to colleges, universities, or other 
nonprofit educational institutions and which are not affiliated with 
National Public Radio.
    (b) Voluntary license agreements. Notwithstanding the schedule of 
rates and terms established in this section, the rates and terms of any 
license agreements entered into by copyright owners and colleges, 
universities, and other nonprofit educational institutions concerning 
the performance of copyrighted musical compositions, including 
performances by noncommercial radio stations, shall apply in lieu of the 
rates and terms of this section.

[[Page 495]]

    (c) Royalty rate. A public broadcasting entity within the scope of 
this section may perform published nondramatic musical compositions 
subject to the following schedule of royalty rates:
    (1) For all such compositions in the repertory of ASCAP, $225 
annually.
    (2) For all such compositions in the repertory of BMI, $225 
annually.
    (3) For all such compositions in the repertory of SESAC, $61 
annually.
    (4) For the performance of any other such compositions: $1.
    (d) Payment of royalty rate. The public broadcasting entity shall 
pay the required royalty rate to ASCAP, BMI and SESAC not later than 
January 31 of each year.
    (e) Records of use. A public broadcasting entity subject to this 
section shall furnish to ASCAP, BMI and SESAC, upon request, a music-use 
report during one week of each calendar year. ASCAP, BMI and SESAC shall 
not in any one calendar year request more than 10 stations to furnish 
such reports.

[57 FR 60954, Dec. 22, 1992, as amended at 58 FR 63294, Dec. 1, 1993; 60 
FR 61655, Dec. 1, 1995; 61 FR 60613, Nov. 29, 1996; 63 FR 2145, Jan. 14, 
1998; 63 FR 66042, Dec. 1, 1998]



Sec. 253.6  Performance of musical compositions by other public broadcasting entities.

    (a) Scope. This section applies to the performance of copyrighted 
published nondramatic musical compositions by radio stations not 
licensed to colleges, universities, or other nonprofit educational 
institutions and which are not affiliated with National Public Radio.
    (b) Voluntary license agreements. Notwithstanding the schedule of 
rates and terms established in this section, the rates and terms of any 
license agreements entered into by copyright owners and noncommercial 
radio stations within the scope of this section concerning the 
performance of copyrighted musical compositions, including performances 
by noncommercial radio stations, shall apply in lieu of the rates and 
terms of this section.
    (c) Royalty rate. A public broadcasting entity within the scope of 
this section may perform published nondramatic musical compositions 
subject to the following schedule of royalty rates:
    (1) For all such compositions in the repertory of ASCAP, in 1998, 
$375; in 1999, $390; in 2000, $405; in 2001, $420; in 2002, $440.
    (2) For all such compositions in the repertory of BMI, in 1998, 
$375; in 1999, $390; in 2000, $405; in 2001, $420; in 2002, $440.
    (3) For all such compositions in the repertory of SESAC, in 1998, 
$78; in 1999, $82; in 2000, $86; in 2001, $89; in 2002, $92.
    (4) For the performance of any other such compositions, in 1998 
through 2002, $1.
    (d) Payment of royalty rate. The public broadcasting entity shall 
pay the required royalty rate to ASCAP, BMI and SESAC not later than 
January 31 of each year.
    (e) Records of use. A public broadcasting entity subject to this 
section shall furnish to ASCAP, BMI and SESAC, upon request, a music-use 
report during one week of each calendar year. ASCAP, BMI and SESAC each 
shall not in any one calendar year request more than 5 stations to 
furnish such reports.

[57 FR 60954, Dec. 22, 1992. Redesignated at 59 FR 23993, May 9, 1994, 
and amended at 60 FR 8198, Feb. 13, 1995; 63 FR 2145, Jan. 14, 1998]



Sec. 253.7  Recording rights, rates and terms.

    (a) Scope. This section establishes rates and terms for the 
recording of nondramatic performances and displays of musical works, 
other than compositions subject to voluntary license agreements, or 
compositions represented by the Harry Fox Agency, Inc., SESAC, and/or 
the National Music Publishers Association and which are licensed on 
terms and conditions established by a duly empowered Copyright 
Arbitration Royalty Panel pursuant to the procedures set forth in this 
subchapter, on and for the radio and television programs of public 
broadcasting entities, whether or not in synchronization or timed 
relationship with the visual or aural content, and for the making, 
reproduction, and distribution of copies and phonorecords of public 
broadcasting programs containing such nondramatic performances and 
displays of musical works solely for the purpose of transmission by 
public

[[Page 496]]

broadcasting entities. The rates and terms established in this schedule 
include the making of the reproductions described in 17 U.S.C. 
118(d)(3).
    (b) Royalty rate. (1)(i) For uses described in paragraph (a) of this 
section of a musical work in a PBS-distributed program, the royalty fees 
shall be calculated by multiplying the following per-composition rates 
by the number of different compositions in that PBS-distributed program:

                                                               1998-2002
Feature....................................................      $106.04
Concert feature (per minute)...............................        31.84
Background.................................................        53.59
Theme:
  Single program or first series program...................        53.59
  Other series program.....................................        21.75
 

    (ii) For such uses other than in a PBS-distributed television 
program, the royalty fee shall be calculated by multiplying the 
following per-composition rates by the number of different compositions 
in that program:

                                                               1998-2002
Feature....................................................        $8.76
Concert feature (per minute)...............................         2.30
Background.................................................         3.81
Theme:
  Single program or first series program...................         3.81
  Other series program.....................................         1.52
 

    (iii) In the event the work is first recorded other than in a PBS-
distributed program, and such program is subsequently distributed by 
PBS, an additional royalty payment shall be made equal to the difference 
between the rate specified in this section for other than a PBS-
distributed program and the rate specified in this section for a PBS-
distributed program.
    (2) For uses licensed herein of a musical work in a NPR program, the 
royalty fees shall be calculated by multiplying the following per-
composition rates by the number of different compositions in any NPR 
program distributed by NPR. For purposes of this schedule ``National 
Public Radio'' programs include all programs produced in whole or in 
part by NPR, or by any NPR station or organization under contract with 
NPR.

                                                               1998-2002
Feature....................................................       $11.48
Concert feature (per half hour)............................        16.85
Background.................................................         5.75
Theme:
  Single program or first series program...................         5.75
  Other series program.....................................         2.29
 

    (3) For the purposes of this schedule, a ``Concert Feature'' shall 
be deemed to be the nondramatic presentation in a program of all or part 
of a symphony, concerto, or other serious work originally written for 
concert performance or the nondramatic presentation in a program of 
portions of a serious work originally written for opera performance.
    (4) For such uses other than in a NPR-produced radio program:

                                                               1998-2002
Feature....................................................         $.74
Feature (concert)(per half hour)...........................         1.54
Background.................................................          .37
 

    (5) The schedule of fees covers broadcast use for a period of three 
years following the first broadcast. Succeeding broadcast use periods 
will require the following additional payment: second three-year 
period--50 percent; each three-year period thereafter--25 percent; 
provided that a 100 percent additional payment prior to the expiration 
of the first three-year period will cover broadcast use during all 
subsequent broadcast use periods without limitation. Such succeeding 
uses which are subsequent to December 31, 2002, shall be subject to the 
royalty rates established in this schedule.
    (c) Payment of royalty rates. The required royalty rates shall be 
paid to each known copyright owner not later than July 31 of each 
calendar year for uses during the first six months of that calendar 
year, and not later than January 31 for uses during the last six months 
of the preceding calendar year.
    (d) Records of use. (1) Maintenance of cue sheets. PBS and its 
stations, NPR, or other television public broadcasting entities shall 
maintain and make available for examination pursuant to subsection (e) 
copies of their standard cue sheets or summaries of same listing the 
recording of the musical works of such copyright owners.
    (2) Content of cue sheets or summaries. Such cue sheets or summaries 
shall include:
    (i) The title, composer and author to the extent such information is 
reasonably obtainable.

[[Page 497]]

    (ii) The type of use and manner of performance thereof in each case.
    (iii) For Concert Feature music, the actual recorded time period on 
the program, plus all distribution and broadcast information available 
to the public broadcasting entity.
    (e) Filing of use reports with the Copyright Office. Deposit of cue 
sheets or summaries. PBS and its stations, NPR, or other television 
public broadcasting entity shall deposit with the Copyright Office 
copies of their standard music cue sheets or summaries of same (which 
may be in the form of hard copy of computerized reports) listing the 
recording pursuant to this schedule of the musical works of copyright 
owners. Such cue sheets or summaries shall be deposited not later than 
July 31 of each calendar year for recordings during the first six months 
of the calendar year and not later than January 31 of each calendar year 
for recordings during the second six months of the preceding calendar 
year. PBS and NPR shall maintain at their offices copies of all standard 
music cue sheets from which such music use reports are prepared. Such 
music cue sheets shall be furnished to the Copyright Office upon its 
request and also shall be available during regular business hours at the 
offices of PBS or NPR for examination by a copyright owner who believes 
a musical composition of such owner has been recorded pursuant to this 
schedule.

[57 FR 60954, Dec. 22, 1992; 58 FR 7051, Feb. 4, 1993; 58 FR 8820, Feb. 
17, 1993, as amended at 63 FR 2145, Jan. 14, 1998; 63 FR 30635, 30636, 
June 5, 1998]



Sec. 253.8  Terms and rates of royalty payments for the use of published pictorial, graphic, and sculptural works.

    (a) Scope. This section establishes rates and terms for the use of 
published pictorial, graphic, and sculptural works by public 
broadcasting entities for the activities described in 17 U.S.C. 118. The 
rates and terms established in this schedule include the making of the 
reproductions described in 17 U.S.C. 118(d)(3).
    (b) Royalty rate. (1) The following schedule of rates shall apply to 
the use of works within the scope of this section:
    (i) For such uses in a PBS-distributed program:
    (A) For a featured display of a work.

1998-2002........................................................$64.78]

    (B) For background and montage display.

1998-2002.........................................................$31.59

    (C) For use of a work for program identification or for thematic 
use.

1998-2002........................................................$127.71

    (D) For the display of an art reproduction copyrighted separately 
from the work of fine art from which the work was reproduced, 
irrespective of whether the reproduced work of fine art is copyrighted 
so as to be subject also to payment of a display fee under the terms of 
the schedule.

1998-2002.........................................................$41.95

    (ii) For such uses in other than PBS-distributed programs:
    (A) For featured display of a work.

1998-2002.........................................................$41.95

    (B) For background and montage display.

1998-2002.........................................................$21.51

    (C) For use of a work for program identification or for thematic 
use.

1998-2002.........................................................$85.76

    (D) For the display of an art reproduction copyrighted separately 
from the work of fine art from which the work was reproduced, 
irrespective of whether the semin reproduced work of fine art is 
copyrighted so as to be subject also to payment of a display fee under 
the terms of this schedule.

1998-2002.........................................................$21.51

    For the purposes of this schedule the rate for the thematic use of a 
work in an entire series shall be double the single program theme rate. 
In the event the work is first used other than in a PBS-distributed 
program, and such program is subsequently distributed by PBS, an 
additional royalty payment shall be made equal to the difference between 
the rate specified in this section for other than a PBS-distributed 
program and the rate specified in this section for a PBS-distributed 
program.
    (2) ``Featured display'' for purposes of this schedule means a full-
screen or substantially full-screen display appearing on the screen for 
more than three seconds. Any display less than

[[Page 498]]

full-screen or substantially full-screen, or full-screen for three 
seconds or less, is deemed to be a ``background or montage display''.
    (3) ``Thematic use'' is the utilization of the works of one or more 
artists where the works constitute the central theme of the program or 
convey a story line.
    (4) ``Display of an art reproduction copyrighted separately from the 
work of fine art from which the work was reproduced'' means a 
transparency or other reproduction of an underlying work of fine art.
    (c) Payment of royalty rate. PBS or other public broadcasting entity 
shall pay the required royalty fees to each copyright owner not later 
than July 31 of each calendar year for uses during the first six months 
of that calendar year, and not later than January 31 for uses during the 
last six months of the preceding calendar year.
    (d) Records of use. (1) PBS and its stations or other public 
broadcasting entity shall maintain and furnish either to copyright 
owners, or to the offices of generally recognized organizations 
representing the copyright owners of pictorial, graphic and sculptural 
works, copies of their standard lists containing the pictorial, graphic, 
and sculptural works displayed on their programs. Such notice shall 
include the name of the copyright owner, if known, the specific source 
from which the work was taken, a description of the work used, the title 
of the program on which the work was used, and the date of the original 
broadcast of the program.
    (2) Such listings shall be furnished not later than July 31 of each 
calendar year for displays during the first six months of the calendar 
year, and not later than January 31 of each calendar year for displays 
during the second six months of the preceding calendar year.
    (e) Filing of use reports with the Copyright Office. (1) PBS and its 
stations or other public broadcasting entity shall deposit with the 
Copyright Office copies of their standard lists containing the 
pictorial, graphic, and sculptural works displayed on their programs. 
Such notice shall include the name of the copyright owner, if known, the 
specific source from which the work was taken, a description of the work 
used, the title of the program on which the work was used, and the date 
of the original broadcast of the program.
    (2) Such listings shall be furnished not later than July 31 of each 
calendar year for displays during the first six months of the calendar 
year, and not later than January 31 of each calendar year for displays 
during the second six months of the preceding calendar year.
    (f) Terms of use. (1) The rates of this schedule are for unlimited 
broadcast use for a period of three years from the date of the first 
broadcast use of the work under this schedule. Succeeding broadcast use 
periods will require the following additional payment: Second three-year 
period--50 percent; each three-year period thereafter--25 percent; 
provided that a 100 percent additional payment prior to the expiration 
of the first three-year period will cover broadcast use during all 
subsequent broadcast use periods without limitation. Such succeeding 
uses which are subsequent to December 31, 2002, shall be subject to the 
rates established in this schedule.
    (2) Pursuant to the provisions of 17 U.S.C. 118 (f), nothing in this 
schedule shall be construed to permit, beyond the limits of fair use as 
provided in 17 U.S.C. 107, the production of a transmission program 
drawn to any substantial extent from a published compilation of 
pictorial, graphic, or sculptural works.

[58 FR 60954, Dec. 22, 1992; 58 FR 7051, Feb. 4, 1993. Redesignated and 
amended at 59 FR 23993, May 9, 1994; 63 FR 2145, Jan. 14, 1998]



Sec. 253.9  Unknown copyright owners.

    If PBS and its stations, NPR and its stations, or other public 
broadcasting entity is not aware of the identity of, or unable to 
locate, a copyright owner who is entitled to receive a royalty payment 
under this part, they shall retain the required fee in a segregated 
trust account for a period of three years from the date of the required 
payment. No claim to such royalty fees shall be valid after the 
expiration of the three year period. Public broadcasting entities may 
establish a joint trust fund for the purposes of this section. Public 
broadcasting entities shall make available to the Copyright Office,

[[Page 499]]

upon request, information concerning fees deposited in trust funds.

[57 FR 60954, Dec. 22, 1992. Redesignated and amended at 59 FR 23993, 
May 9, 1994]



Sec. 253.10  Cost of living adjustment.

    (a) On December 1, 1998, the Librarian of Congress shall publish in 
the Federal Register a notice of the change in the cost of living as 
determined by the Consumer Price Index (all consumers, all items) during 
the period from the most recent Index published prior to December 1, 
1997, to the most recent Index published prior to December 1, 1998. On 
each December 1 thereafter the Librarian of Congress shall publish a 
notice of the change in the cost of living during the period from the 
most recent index published prior to the previous notice, to the most 
recent Index published prior to December 1, of that year.
    (b) On the same date of the notices published pursuant to paragraph 
(a) of this section, the Librarian of Congress shall publish in the 
Federal Register a revised schedule of rates for Sec. 253.5 which shall 
adjust those royalty amounts established in dollar amounts according to 
the change in the cost of living determined as provided in paragraph (a) 
of this section. Such royalty rates shall be fixed at the nearest 
dollar.
    (c) The adjusted schedule of rates for Sec. 253.5 shall become 
effective thirty days after publication in the Federal Register.

[57 FR 60954, Dec. 22, 1992. Redesignated and amended at 59 FR 23993, 
May 9, 1994; 59 FR 63042, Dec. 7, 1994; 63 FR 2145, Jan. 14, 1998]



Sec. 253.11  Notice of restrictions on use of reproductions of transmission programs.

    Any public broadcasting entity which, pursuant to 17 U.S.C. 118, 
supplies a reproduction of a transmission program to governmental bodies 
or nonprofit institutions shall include with each copy of the 
reproduction a warning notice stating in substance that the 
reproductions may be used for a period of not more than seven days from 
the specified date of transmission, that the reproductions must be 
destroyed by the user before or at the end of such period, and that a 
failure to fully comply with these terms shall subject the body or 
institution to the remedies for infringement of copyright.



PART 254--ADJUSTMENT OF ROYALTY RATE FOR COIN-OPERATED PHONORECORD PLAYERS--Table of Contents




Sec.
254.1  General.
254.2  Definition of coin-operated phonorecord player.
254.3  Compulsory license fees for coin-operated phonorecord players.

    Authority: 17 U.S.C. 116, 801(b)(1).



Sec. 254.1  General.

    This part 254 establishes the compulsory license fees for coin-
operated phonorecord players beginning on January 1, 1982, in accordance 
with the provisions of 17 U.S.C. 116.

[45 FR 890, Jan. 5, 1981. Redesignated and amended at 59 FR 23993, May 
9, 1994]



Sec. 254.2  Definition of coin-operated phonorecord player.

    As used in this part, the term coin-operated phonorecord player is a 
machine or device that:
    (a) Is employed solely for the performance of nondramatic musical 
works by means of phonorecords upon being activated by insertion of 
coins, currency, tokens, or other monetary units or their equivalent;
    (b) Is located in an establishment making no direct or indirect 
charge for admission;
    (c) Is accompanied by a list of the titles of all the musical works 
available for performance on it, which list is affixed to the 
phonorecord player or posted in the establishment in a prominent 
position where it can be readily examined by the public; and
    (d) Affords a choice of works available for performance and permits 
the choice to be made by the patrons of the establishment in which it is 
located.

[60 FR 8198, Feb. 13, 1995]



Sec. 254.3  Compulsory license fees for coin-operated phonorecord players.

    (a) Commencing January 1, 1982, the annual compulsory license fee 
for a

[[Page 500]]

coin-operated phonorecord player shall be $25.
    (b) Commencing January 1, 1984, the annual compulsory license fee 
for a coin-operated phonorecord player shall be $50.
    (c) Commencing January 1, 1987, the annual compulsory license fee 
for a coin-operated phonorecord player shall be $63.
    (d) If performances are made available on a particular coin-operated 
phonorecord player for the first time after July 1 of any year, the 
compulsory license fee for the remainder of that year shall be one half 
of the annual rate of (a), (b), or (c) of this section, whichever is 
applicable.
    (e) Commencing January 1, 1990, the annual compulsory license fee 
for a coin-operated phonorecord player is suspended through December 31, 
1999, or until such earlier or later time as the March 1990 license 
agreement between AMOA and ASCAP/BMI/SESAC is terminated.

[51 FR 27537, Aug. 1, 1986, as amended at 55 FR 28197, July 10, 1990. 
Redesignated at 59 FR 23993, May 9, 1994]



PART 255--ADJUSTMENT OF ROYALTY PAYABLE UNDER COMPULSORY LICENSE FOR MAKING AND DISTRIBUTING PHONORECORDS--Table of Contents




Sec.
255.1  General.
255.2  Royalty payable under compulsory license.
255.3  Adjustment of royalty rate.
255.4  Definition of digital phonorecord delivery.
255.5  Royalty rate for digital phonorecord deliveries in general.
255.6  Royalty rate for incidental digital phonorecord deliveries.
255.7  Future proceedings.
255.8  Public performances of sound recordings and musical works.

    Authority: 17 U.S.C. 801(b)(1) and 803.



Sec. 255.1  General.

    This part 255 adjusts the rates of royalties payable under the 
compulsory license for making and distributing phonorecords, including 
digital phonorecord deliveries, embodying nondramatic musical works, 
under 17 U.S.C. 115.

[60 FR 61657, Dec. 1, 1995]



Sec. 255.2  Royalty payable under compulsory license.

    With respect to each work embodied in the phonorecord, the royalty 
payable shall be either four cents, or three-quarters of one cent per 
minute of playing time or fraction thereof, whichever amount is larger, 
for every phonorecord made and distributed on or after July 1, 1981, 
subject to adjustment pursuant to Sec. 255.3.

[46 FR 891, Jan. 5, 1981, as amended at 46 FR 62268, Dec. 23, 1981. 
Redesignated and amended at 59 FR 23993, May 9, 1994]



Sec. 255.3  Adjustment of royalty rate.

    (a) For every phonorecord made and distributed on or after January 
1, 1983, the royalty rate payable with respect to each work embodied in 
the phonorecord shall be either 4.25 cents, or 0.8 cent per minute of 
playing time or fraction thereof, whichever amount is larger, subject to 
further adjustment pursuant to paragraphs (b) through (m) of this 
section.
    (b) For every phonorecord made and distributed on or after July 1, 
1984, the royalty rate payable with respect to each work embodied in the 
phonorecord shall be either 4.5 cents, or 0.85 cent per minute of 
playing time or fraction thereof, whichever amount is larger, subject to 
further adjustment pursuant to paragraphs (c) through (m) of this 
section.
    (c) For every phonorecord made and distributed on or after January 
1, 1986, the royalty rate payable with respect to each work embodied in 
the phonorecord shall be either 5.0 cents, or 0.95 cent per minute of 
playing time or fraction thereof, whichever amount is larger, subject to 
further adjustment pursuant to paragraphs (d) through (m) of this 
section.
    (d) For every phonorecord made and distributed on or after January 
1, 1988, the royalty rate payable with respect to each work embodied in 
the phonorecord shall be either 5.25 cents, or 1.0 cent per minute of 
playing time or fraction thereof, whichever amount is larger, subject to 
further adjustment

[[Page 501]]

pursuant to paragraphs (e) through (m) of this section.
    (e) For every phonorecord made and distributed on or after January 
1, 1990, the royalty rate payable with respect to each work embodied in 
the phonorecord shall be either 5.7 cents, or 1.1 cents per minute of 
playing time or fraction thereof, whichever amount is larger, subject to 
further adjustment pursuant to paragraphs (f) through (m) of this 
section.
    (f) For every phonorecord made and distributed on or after January 
1, 1992, the royalty rate payable with respect to each work embodied in 
the phonorecord shall be either 6.25 cents, or 1.2 cents per minute of 
playing time or fraction thereof, whichever amount is larger, subject to 
further adjustment pursuant to paragraphs (g) through (m) of this 
section.
    (g) For every phonorecord made and distributed on or after January 
1, 1994, the royalty rate payable with respect to each work embodied in 
the phonorecord shall be either 6.6 cents, or 1.25 cents per minute of 
playing time or fraction thereof, whichever amount is larger, subject to 
further adjustment pursuant to paragraphs (h) through (m) of this 
section.
    (h) For every phonorecord made and distributed on or after January 
1, 1996, the royalty rate payable with respect to each work embodied in 
the phonorecord shall be either 6.95 cents, or 1.3 cents per minute of 
playing time or fraction thereof, whichever amount is larger, subject to 
further adjustment pursuant to paragraphs (i) through (m) of this 
section.
    (i) For every phonorecord made and distributed on or after January 
1, 1998, the royalty rate payable with respect to each work embodied in 
the phonorecord shall be either 7.1 cents, or 1.35 cents per minute of 
playing time or fraction thereof, whichever amount is larger, subject to 
further adjustment pursuant to paragraphs (j) through (m) of this 
section.
    (j) For every phonorecord made and distributed on or after January 
1, 2000, the royalty rate payable with respect to each work embodied in 
the phonorecord shall be either 7.55 cents, or 1.45 cents per minute of 
playing time or fraction thereof, whichever amount is larger, subject to 
further adjustment pursuant to paragraphs (k) through (m) of this 
section.
    (k) For every phonorecord made and distributed on or after January 
1, 2002, the royalty rate payable with respect to each work embodied in 
the phonorecord shall be either 8.0 cents, or 1.55 cents per minute of 
playing time or fraction thereof, whichever amount is larger, subject to 
further adjustment pursuant to paragraphs (l) through (m) of this 
section.
    (l) For every phonorecord made and distributed on or after January 
1, 2004, the royalty rate payable with respect to each work embodied in 
the phonorecord shall be either 8.5 cents, or 1.65 cents per minute of 
playing time or fraction thereof, whichever amount is larger, subject to 
further adjustment pursuant to paragraph (m) of this section.
    (m) For every phonorecord made and distributed on or after January 
1, 2006, the royalty rate payable with respect to each work embodied in 
the phonorecord shall be either 9.1 cents, or 1.75 cents per minute of 
playing time or fraction thereof, whichever amount is larger.

[60 FR 55459, Nov. 1, 1995, as amended at 63 FR 7289, Feb. 13, 1998]



Sec. 255.4  Definition of digital phonorecord delivery.

    A ``digital phonorecord delivery'' is each individual delivery of a 
phonorecord by digital transmission of a sound recording which results 
in a specifically identifiable reproduction by or for any transmission 
recipient of a phonorecord of that sound recording, regardless of 
whether the digital transmission is also a public performance of the 
sound recording or any nondramatic musical work embodied therein. A 
digital phonorecord delivery does not result from a real-time, non-
interactive subscription transmission of a sound recording where no 
reproduction of the sound recording or the musical work embodied therein 
is made from the inception of the transmission through to its receipt by 
the transmission recipient in order to make the sound recording audible.

[60 FR 61657, Dec. 1, 1995]

[[Page 502]]



Sec. 255.5  Royalty rate for digital phonorecord deliveries in general.

    (a) For every digital phonorecord delivery made on or before 
December 31, 1997, the royalty rate payable with respect to each work 
embodied in the phonorecord shall be either 6.95 cents, or 1.3 cents per 
minute of playing time or fraction thereof, whichever amount is larger.
    (b) For every digital phonorecord delivery made on or after January 
1, 1998, except for digital phonorecord deliveries where the 
reproduction or distribution of a phonorecord is incidental to the 
transmission which constitutes the digital phonorecord delivery, as 
specified in 17 U.S.C. 115(c)(3)(C) and (D), the royalty rate payable 
with respect to each work embodied in the phonorecord shall be the 
royalty rate prescribed in Sec. 255.3 for the making and distribution of 
a phonorecord made and distributed on the date of the digital 
phonorecord delivery (the ``Physical Rate''). In any future proceeding 
under 17 U.S.C. 115(c)(3)(C) or (D), the royalty rates payable for a 
compulsory license for digital phonorecord deliveries in general shall 
be established de novo, and no precedential effect shall be given to the 
royalty rate payable under this paragraph for any period prior to the 
period as to which the royalty rates are to be established in such 
future proceeding.

[64 FR 6223, Feb. 9, 1999]



Sec. 255.6  Royalty rate for incidental digital phonorecord deliveries.

    The royalty rate for digital phonorecord deliveries where the 
reproduction or distribution of a phonorecord is incidental to the 
transmission which constitutes a digital phonorecord delivery, as 
specified in 17 U.S.C. 115(c)(3)(C) and (D), is deferred for 
consideration until the next digital phonorecord delivery rate 
adjustment proceeding pursuant to the schedule set forth in Sec. 255.7; 
provided, however, that any owner or user of a copyrighted work with a 
significant interest in such royalty rate, as provided in 17 U.S.C. 
803(a)(1), may petition the Librarian of Congress to establish a rate 
prior to the commencement of the next digital phonorecord delivery rate 
adjustment proceeding. In the event such a petition is filed, the 
Librarian of Congress shall proceed in accordance with 17 U.S.C. 
115(c)(3)(D), and all applicable regulations, as though the petition had 
been filed in accordance with 17 U.S.C. 803(a)(1).

[64 FR 6223, Feb. 9, 1999]



Sec. 255.7  Future proceedings.

    The procedures specified in 17 U.S.C. 115(c)(3)(C) shall be repeated 
in 1999, 2001, 2003, and 2006 so as to determine the applicable rates 
and terms for the making of digital phonorecord deliveries during the 
periods beginning January 1, 2001, 2003, 2005, and 2008. The procedures 
specified in 17 U.S.C. 115(c)(3)(D) shall be repeated, in the absence of 
license agreements negotiated under 17 U.S.C. 115(c)(3)(B) and (C), upon 
the filing of a petition in accordance with 17 U.S.C. 803(a)(1), in 
2000, 2002, 2004, and 2007 so as to determine new rates and terms for 
the making of digital phonorecord deliveries during the periods 
beginning January 1, 2001, 2003, 2005, and 2008. Thereafter, the 
procedures specified in 17 U.S.C. 115(c)(3)(C) and (D) shall be repeated 
in each fifth calendar year. Notwithstanding the foregoing, different 
years for the repeating of such proceedings may be determined in 
accordance with 17 U.S.C. 115(c)(3)(C) and (D).

[64 FR 6223, Feb. 9, 1999]



Sec. 255.8  Public performances of sound recordings and musical works.

    Nothing in this part annuls or limits the exclusive right to 
publicly perform a sound recording or the musical work embodied therein, 
including by means of a digital transmission, under 17 U.S.C. 106(4) and 
106(6).

[64 FR 6223, Feb. 9, 1999]



PART 256--ADJUSTMENT OF ROYALTY FEE FOR CABLE COMPULSORY LICENSE--Table of Contents




Sec.
256.1  General.
256.2  Royalty fee for compulsory license for secondary transmission by 
          cable systems.

    Authority: 17 U.S.C. 702, 802.

[[Page 503]]



Sec. 256.1  General.

    This part establishes adjusted terms and rates for royalty payments 
in accordance with the provisions of 17 U.S.C. 111 and 801(b)(2)(A), 
(B), (C), and (D). Upon compliance with 17 U.S.C 111 and the terms and 
rates of this part, a cable system entity may engage in the activities 
set forth in 17 U.S.C. 111.

[47 FR 52159, Nov. 19, 1982. Redesignated at 59 FR 23993, May 9, 1994, 
and amended at 60 FR 8198, Feb. 13, 1995]



Sec. 256.2  Royalty fee for compulsory license for secondary transmission by cable systems.

    (a) Commencing with the first semiannual accounting period of 1985 
and for each semiannual accounting period thereafter, the royalty rates 
established by 17 U.S.C. 111(d)(1)(B) shall be as follows:
    (1) .893 of 1 per centum of such gross receipts for the privilege of 
further transmitting any nonnetwork programming of a primary transmitter 
in whole or in part beyond the local service area of such primary 
transmitter, such amount to be applied against the fees, if any, payable 
pursuant to paragraphs (a) (2) through (4) and (c);
    (2) .893 of 1 per centum of such gross receipts for the first 
distant signal equivalent;
    (3) .563 of 1 per centum of such gross receipts for each of the 
second, third and fourth distant signal equivalents; and
    (4) .265 of 1 per centum of such gross receipts for the fifth 
distant signal equivalent and each additional distant signal equivalent 
thereafter.
    (b) Commencing with the first semiannual accounting period of 1985 
and for each semiannual accounting period thereafter, the gross receipts 
limitations established by 17 U.S.C. 111(d)(1) (C) and (D) shall be 
adjusted as follows:
    (1) If the actual gross receipts paid by subscribers to a cable 
system for the period covered by the statement for the basic service of 
providing secondary transmission of primary broadcast transmitters total 
$146,000 or less, gross receipts of the cable system for the purpose of 
this paragraph shall be computed by subtracting from such actual gross 
receipts the amount by which $146,000 exceeds such actual gross 
receipts, except that in no case shall a cable system's gross receipts 
be reduced to less than $5,600. The royalty fee payable under this 
paragraph shall be 0.5 of 1 per centum regardless of the number of 
distant signal equivalents, if any; and
    (2) If the acutal gross receipts paid by the subscribers to a cable 
system for the period covered by the statement, for the basic service of 
providing secondary transmissions of primary broadcast transmitters, are 
more than $146,000 but less than $292,000, the royalty fee payable under 
this paragraph shall be:
    (i) 0.5 of 1 per centum of any gross receipts up to $146,000 and
    (ii) 1 per centum of any gross receipts in excess of $146,000 but 
less than $292,000, regardless of the number of distant signal 
equivalents, if any.
    (c) Notwithstanding paragraphs (a) and (d) of this section, 
commencing with the first accounting period of 1983 and for each 
semiannual accounting period thereafter, for each distant signal 
equivalent or fraction thereof not represented by the carriage of:
    (1) Any signal which was permitted (or, in the case of cable systems 
commencing operations after June 24, 1981, which would have been 
permitted) under the rules and regulations of the Federal Communications 
Commission in effect on June 24, 1981, or
    (2) A signal of the same type (that is, independent, network, or 
non-commercial educational) substituted for such permitted signal, or
    (3) A signal which was carried pursuant to an individual waiver of 
the rules and regulations of the Federal Communications Commission, as 
such rules were in effect on June 24, 1981;

the royalty rate shall be, in lieu of the royalty rates specified in 
paragraphs (a) (2) through (4) and (d) of this section, 3.75 per centum 
of the gross receipts of the cable systems for each distant signal 
equivalent; any fraction of a distant signal equivalent shall be 
computed at its fractional value.
    (d) Commencing with the first semiannual accounting period of 1990 
and for each semiannual accounting period thereafter, in the case of a 
cable system located outside the 35-mile specified zone of a commercial 
VHF station

[[Page 504]]

that places a predicted Grade B contour, in whole or in part, over the 
cable system, and that is not significantly viewed or otherwise exempt 
from the FCC's syndicated exclusivity rules in effect on June 24, 1981, 
for each distant signal equivalent or fraction thereof represented by 
the carriage of such commercial VHF station, the royalty rate shall be, 
in addition to the amount specified in paragraph (a) of this section,
    (1) For cable systems located wholly or in part within a top 50 
television market,
    (i) .599 per centum of such gross receipts for the first distant 
signal equivalent;
    (ii) .377 per centum of such gross receipts for each of the second, 
third, and fourth distant signal equivalents; and
    (iii) .178 per centum of such gross receipts for the fifth distant 
signal equivalent and each additional distant signal equivalent 
thereafter;
    (2) For cable systems located wholly or in part within a second 50 
television market,
    (i) .300 per centum of such gross receipts for the first distant 
signal equivalent;
    (ii) .189 per centum of such gross receipts for each of the second, 
third, and fourth distant signal equivalents; and
    (iii) .089 per centum of such gross receipts for the fifth distant 
signal equivalent and each additional distant signal equivalent 
thereafter;
    (3) For purposes of this section top 50 television markets and 
``second 50 television markets'' shall be defined as the comparable 
terms are defined or interpreted in accordance with 47 CFR 76.51, as 
effective June 24, 1981.

[47 FR 52159, Nov. 19, 1982, as amended at 50 FR 18481, May 1, 1985; 54 
FR 12619, Mar. 28, 1989; 55 FR 33613, Aug. 16, 1990; 56 FR 12122, Mar. 
22, 1991. Redesignated at 59 FR 23993, May 9, 1994, as amended at 63 FR 
30636, June 5, 1998; 63 FR 39739, July 24, 1998]



PART 257--FILING OF CLAIMS TO SATELLITE CARRIER ROYALTY FEES--Table of Contents




Sec.
257.1  General.
257.2  Time of filing.
257.3  Content of claims.
257.4  Compliance with statutory dates.
257.5  Copies of claims.
257.6  Separate claims required.

    Authority: 17 U.S.C. 119(b)(4).

    Source: 59 FR 23993, May 9, 1994, unless otherwise noted.



Sec. 257.1  General.

    This part prescribes the procedures under 17 U.S.C. 119(b)(4) 
whereby parties claiming to be entitled to compulsory license royalty 
fees for secondary transmissions by satellite carriers of television 
broadcast signals to the public for private home viewing shall file 
claims with the Copyright Office.



Sec. 257.2  Time of filing.

    During the month of July each year, any party claiming to be 
entitled to compulsory license royalty fees for secondary transmissions 
by satellite carriers during the previous calendar year of television 
broadcast signals to the public for private home viewing shall file a 
claim to such fees with the Copyright Office. No royalty fees shall be 
distributed to any party during the specified period unless such party 
has timely filed a claim to such fees. Claimants may file claims jointly 
or as a single claim.



Sec. 257.3  Content of claims.

    (a) Claims filed by parties claiming to be entitled to satellite 
carrier compulsory license royalty fees shall include the following 
information:
    (1) The full legal name of the person or entity claiming royalty 
fees.
    (2) The telephone number, facsimile number, if any, and full 
address, including a specific number and street name or rural route, of 
the place of business of the person or entity.
    (3) If the claim is a joint claim, a concise statement of the 
authorization of the filing of the joint claim, and the name of each 
claimant to the joint claim. For this purpose, a performing rights 
society shall not be required to obtain from its members or affiliates 
separate authorizations, apart from their standard membership or 
affiliate agreements, or to list the name of each of its members or 
affiliates in the joint claim.

[[Page 505]]

    (4) For individual claims, a general statement of the nature of the 
claimant's copyrighted works and identification of at least one 
secondary transmission by a satellite carrier of such works establishing 
a basis for the claim. For joint claims, a general statement of the 
nature of the joint claimants' copyrighted works and identification of 
at least one secondary transmission of one of the joint claimants' 
copyrighted works by a satellite carrier establishing a basis for the 
joint claim.
    (b) Claims shall bear the original signature of the claimant or of a 
duly authorized representative of the claimant.
    (c) In the event that the legal name and/or full address of the 
claimant changes after the filing of the claim, the claimant shall 
notify the Copyright Office of such change. If the good faith efforts of 
the Copyright Office to contact the claimant are frustrated because of 
failure to notify the Office of a name and/or address change, the claim 
may be subject to dismissal.

[59 FR 23993, May 9, 1994, as amended at 59 FR 63043, Dec. 7, 1994]



Sec. 257.4  Compliance with statutory dates.

    (a) Claims filed with the Copyright Office shall be considered 
timely filed only if:
    (1) They are hand delivered, either by the claimant, the claimant's 
agent, or a private delivery carrier, to: Office of the Register of 
Copyrights, Room 403, James Madison Memorial Building, 101 Independence 
Avenue, SE., Washington, DC 20540, during normal business hours during 
the month of July; or
    (2) They are addressed to: Copyright Arbitration Royalty Panel, P.O. 
Box 70977, Southwest Station, Washington, DC 20024, and are deposited 
with sufficient postage with the United States Postal Service and bear a 
July U.S. postmark.
    (b) Notwithstanding subsection (a), in any year in which July 31 
falls on a Saturday, Sunday, holiday, or other nonbusiness day within 
the District of Columbia or the Federal Government, claims received by 
the Copyright Office by the first business day in August, or properly 
addressed and deposited with sufficient postage with the United States 
Postal Service and postmarked by the first business day in August, shall 
be considered timely filed.
    (c) Claims dated only with a business meter that are received after 
July 31, will not be accepted as having been timely filed.
    (d) No claim may be filed by facsimile transmission.
    (e) In the event that a properly addressed and mailed claim is not 
timely received by the Copyright Office, a claimant may nonetheless 
prove that the claim was properly filed if it was sent by certified mail 
return receipt requested, and the claimant can provide a receipt bearing 
a July date stamp of the U.S. Postal Service, except where paragraph (b) 
of this section applies. No affidavit of an officer or employee of the 
claimant, or of a U.S. postal worker will be accepted in lieu of the 
receipt.

[59 FR 23993, May 9, 1994, as amended at 59 FR 63043, Dec. 7, 1994; 61 
FR 63718, Dec. 2, 1996; 63 FR 30636, June 5, 1998]



Sec. 257.5  Copies of claims.

    A claimant shall, for each claim submitted to the Copyright Office, 
file an original and two copies of the claim to satellite carrier 
royalty fees.



Sec. 257.6  Separate claims required.

    If a party intends to file claims for both cable compulsory license 
and satellite carrier compulsory license royalty fees during the same 
month of July, that party must file separate claims with the Copyright 
Office. Any single claim which purports to file for both cable and 
satellite carrier royalty fees will be dismissed.



PART 258--ADJUSTMENT OF ROYALTY FEE FOR SECONDARY TRANSMISSIONS BY SATELLITE CARRIERS--Table of Contents




Sec.
258.1  General.
258.2  Definition of syndex-proof signal.
258.3  Royalty fee for secondary transmission of broadcast stations by 
          satellite carriers.

    Authority: 17 U.S.C. 702, 802.

[[Page 506]]



Sec. 258.1  General.

    This part 258 adjusts the rates of royalties payable under the 
compulsory license for the secondary transmission of broadcast stations 
under 17 U.S.C. 119.

[57 FR 19053, May 1, 1992. Redesignated and amended at 59 FR 23994, May 
9, 1994; 63 FR 30636, June 5, 1998]



Sec. 258.2  Definition of syndex-proof signal.

    A satellite retransmission of a broadcast signal shall be deemed 
``syndex-proof'' for purposes of Sec. 258.3(b) if, during any semiannual 
reporting period, the retransmission does not include any program which, 
if delivered by any cable system in the United States, would be subject 
to the syndicated exclusivity rules of the Federal Communications 
Commission.

[57 FR 19053, May 1, 1992. Redesignated and amended at 59 FR 23994, May 
9, 1994]



Sec. 258.3  Royalty fee for secondary transmission of broadcast stations by satellite carriers.

    (a) Commencing May 1, 1992, the royalty rate for the secondary 
transmission of broadcast stations for private home viewing by satellite 
carriers shall be as follows:
    (1) 17.5 cents per subscriber per month for superstations.
    (2) 14 cents per subscriber per month for superstations whose 
signals are syndex-proof, as defined in Sec. 258.2.
    (3) 6 cents per subscriber per month for network stations and 
noncommercial educational stations.
    (b) Commencing January 1, 1998, the royalty fee for secondary 
transmission of broadcast stations for private home viewing by satellite 
carriers shall be as follows:
    (1) 27 cents per subscriber per month for distant superstations.
    (2) 27 cents per subscriber per month for distant network stations.
    (3) No royalty rate (zero) for a superstation secondarily 
transmitted within the station's local market, as defined in 17 U.S.C. 
119(d)(11).
    (4) No royalty rate (zero) for a network station secondarily 
transmitted within the station's local market, as defined in 17 U.S.C. 
119(d)(11), to subscribers residing in unserved households, as defined 
in 17 U.S.C. 119(d)(10).

[62 FR 55759, Oct. 28, 1997]



PART 259--FILING OF CLAIMS TO DIGITAL AUDIO RECORDING DEVICES AND MEDIA ROYALTY PAYMENTS--Table of Contents




Sec.
259.1  General.
259.2  Time of filing.
259.3  Content of claims.
259.4  Content of notices regarding independent administrators.
259.5  Compliance with statutory dates.
259.6  Copies of claims.

    Authority: 17 U.S.C. 1007(a)(1).

    Source: 58 FR 53826, Oct. 18, 1993, unless otherwise noted. 
Redesignated at 59 FR 23994, May 9, 1994.



Sec. 259.1  General.

    This part prescribes procedures pursuant to 17 U.S.C. 1007(a)(1), 
whereby interested copyright parties, as defined in 17 U.S.C. 1001(7), 
claiming to be entitled to royalty payments made for the importation and 
distribution in the United States, or the manufacture and distribution 
in the United States, of digital audio recording devices and media 
pursuant to 17 U.S.C. 1006, shall file claims with the Copyright Office.

[58 FR 53826, Oct. 18, 1993. Redesignated and amended at 59 FR 23994, 
May 9, 1994; 59 FR 33202, June 28, 1994; 60 FR 8198, Feb. 13, 1995]



Sec. 259.2  Time of filing.

    (a) General. During January and February of each succeeding year, 
every interested copyright party claiming to be entitled to digital 
audio recording devices and media royalty payments made for quarterly 
periods ending during the previous calendar year shall file a claim with 
the Copyright Office. Claimants may file claims jointly or as a single 
claim.
    (b) Consequences of an untimely filing. No royalty payments for the 
previous calendar year shall be distributed to any interested copyright 
party who has not filed a claim to such royalty payments during January 
or February of the following calendar year.
    (c) Authorization. Any organization or association, acting as a 
common agent,

[[Page 507]]

shall be required to obtain from its members or affiliates separate, 
specific, and written authorization, signed by members, affiliates, or 
their representatives, to file claims to the Musical Works Fund or the 
Sound Recordings Fund, apart from their standard agreements, for 
purposes of royalties filing and fee distribution. Such written 
authorization, however, will not be required for claimants to the 
Musical Works Fund where either:
    (1) The agreement between the organization or association and its 
members or affiliates specifically authorizes such entity to represent 
its members or affiliates before the Copyright Office and/or the 
Copyright Arbitration Royalty Panels in royalty filing and fee 
distribution proceedings; or
    (2) The agreement between the organization or association and its 
members or affiliates, as specified in a court order issued by a court 
with authority to interpret the terms of the contract, authorizes such 
entity to represent its members or affiliates before the Copyright 
Office and/or Copyright Arbitration Royalty Panels in royalty filing and 
fee distribution proceedings.

[60 FR 61660, Dec. 1, 1995, as amended at 61 FR 63718, Dec. 2, 1996]



Sec. 259.3  Content of claims.

    (a) Claims filed by interested copyright parties for digital audio 
recording devices and media royalty payments shall include the following 
information:
    (1) The full legal name of the person or entity claiming royalty 
payments.
    (2) The telephone number, facsimile number, if any, and full 
address, including a specific number and street name or rural route, of 
the place of business of the person or entity.
    (3) A statement as to how the claimant fits within the definition of 
interested copyright party specified in 17 U.S.C. 1001(7).
    (4) A statement as to whether the claim is being made against the 
Sound Recordings Fund or the Musical Works Fund, as set forth in 17 
U.S.C. 1006(b) and as to which Subfund of the Sound Recordings Fund 
(i.e., the copyright owners or featured recording artists Subfund) or 
the Musical Works Fund (i.e., the music publishers or writers Subfund) 
the claim is being made against as set forth in 17 U.S.C. 1006(b)(1)-
(2).
    (5) Identification, establishing a basis for the claim, of at least 
one musical work or sound recording embodied in a digital musical 
recording or an analog musical recording lawfully made under title 17 of 
the United States Code that has been distributed (as that term is 
defined in 17 U.S.C. 1001(6), and that, during the period to which the 
royalty payments claimed pertain, has been (i) Distributed (as that term 
is defined in 17 U.S.C. 1001(6) in the form of digital musical 
recordings or analog musical recordings, or (ii) Disseminated to the 
public in transmissions.
    (b) Claims shall bear the original signature of the claimant or of a 
duly authorized representative of the claimant.
    (c) In the event that the legal name and/or address of the claimant 
changes after the filing of the claim, the claimant shall notify the 
Copyright Office of such change. If the good faith efforts of the 
Copyright Office to contact the claimant are frustrated because of 
failure to notify the Office of a name and/or address change, the claim 
may be subject to dismissal.
    (d) If the claim is a joint claim, it shall include a concise 
statement of the authorization for the filing of the joint claim, and 
the name of each claimant to the joint claim.
    (e) If an interested copyright party intends to file claims against 
more than one Subfund, each such claim must be filed separately with the 
Copyright Office. Any claim that purports to file against more than one 
subfund will be rejected.

[58 FR 53826, Oct. 18, 1993. Redesignated and amended at 59 FR 23994, 
May 9, 1994; 59 FR 33202, June 28, 1994; 59 FR 63043, Dec. 7, 1994; 60 
FR 8198, 8199, Feb. 13, 1995]



Sec. 259.4  Content of notices regarding independent administrators.

    (a) The independent administrator jointly appointed by the 
interested copyright parties, as defined in 17 U.S.C. 1001 (7)(A), and 
the American Federation of Musicians (or any successor entity) for the 
purpose of managing, and ultimately distributing the

[[Page 508]]

royalty payments to nonfeatured musicians as defined in 17 U.S.C. 
1006(b)(1), shall file a notice informing the Copyright Office of his/
her name and address.
    (b) The independent administrator jointly appointed by the 
interested copyright parties, as defined in 17 U.S.C. 1001(7)(A), and 
the American Federation of Television and Radio Artists (or any 
successor entity) for the purpose of managing, and ultimately 
distributing the royalty payments to nonfeatured vocalists as defined in 
17 U.S.C. 1006(b)(1), shall file a notice informing the Copyright Office 
of his/her full name and address.
    (c) A notice filed under paragraph (a) or (b) of this section shall 
include the following information:
    (1) The full name of the independent administrator;
    (2) The telephone number and facsimile number, if any, full address, 
including a specific number and street name or rural route, of the place 
of business of the independent administrator.
    (d) Notice shall bear the original signature of the independent 
administrator or a duly authorized representative of the independent 
administrator, and shall be filed with the Copyright Office no later 
than March 31 of each year, commencing with March 31, 1994.
    (e) No notice may be filed by facsimile transmission.

[58 FR 53826, Oct. 18, 1993. Redesignated and amended at 59 FR 23994, 
23995, May 9, 1994; 59 FR 33202, June 28, 1994; 60 FR 8198, Feb. 13, 
1995]



Sec. 259.5  Compliance with statutory dates.

    (a) Claims filed with the Copyright Office shall be considered 
timely filed only if:
    (1) They are hand delivered, either by the claimant, the claimant's 
agent, or a private delivery carrier, to: Office of the Register of 
Copyrights, Room 403, James Madison Memorial Building, 101 Independence 
Avenue SE., Washington, DC 20540, during normal business hours during 
the month of January or February; or
    (2) They are addressed to: Copyright Arbitration Royalty Panel, P.O. 
Box 70977, Southwest Station, Washington, DC 20024, and are deposited 
with sufficient postage with the United States Postal Service and bear a 
January or February U.S. postmark.
    (b) Notwithstanding subsection (a), in any year in which the last 
day of February falls on Saturday, Sunday, a holiday, or other 
nonbusiness day within the District of Columbia or the Federal 
Government, claims received by the Copyright Office by the first 
business day in March, or properly addressed and deposited with 
sufficient postage with the United States Postal Service and postmarked 
by the first business day in March, shall be considered timely filed.
    (c) Claims dated only with a business meter that are received after 
the last day of February, will not be accepted as having been timely 
filed.
    (d) No claim may be filed by facsimile transmission.
    (e) In the event that a properly addressed and mailed claim is not 
timely received by the Copyright Office, a claimant may nonetheless 
prove that the claim was properly filed if it was sent by certified mail 
return receipt requested, and the claimant can provide a receipt bearing 
a January or February date stamp of the U.S. Postal Service, except 
where paragraph (b) of this section applies. No affidavit of an officer 
or employee of the claimant, or of a U.S. postal worker will be accepted 
in lieu of the receipt.

[59 FR 23995, May 9, 1994, as amended at 59 FR 63043, Dec. 7, 1994; 61 
FR 63718, Dec. 2, 1996; 63 FR 30636, June 5, 1998]



Sec. 259.6  Copies of claims.

    A claimant shall, for each claim submitted to the Copyright Office, 
file an original and two copies of the claim to digital audio recording 
devices and media royalty payments.

[59 FR 23995, May 9, 1994]



PART 260--USE OF SOUND RECORDINGS IN A DIGITAL PERFORMANCE--Table of Contents




Sec.
260.1  General.
260.2  Royalty fees for the digital performance of sound recordings.
260.3  Terms for making payment of royalty fees.

[[Page 509]]

260.4  Confidential information and statements of account.
260.5  Verification of statements of account.
260.6  Verification of royalty payments.
260.7  Unknown copyright owners.

    Authority: 17 U.S.C. 114, 801(b)(1).

    Source: 63 FR 25413, May 8, 1998, unless otherwise noted.



Sec. 260.1  General.

    (a) This part 260 establishes terms and rates of royalty payments 
for the public performance of sound recordings by nonexempt subscription 
digital transmission services in accordance with the provisions of 17 
U.S.C. 114 and 801(b)(1).
    (b) Upon compliance with 17 U.S.C. 114 and the terms and rates of 
this part, a nonexempt subscription digital transmission service may 
engage in the activities set forth in 17 U.S.C. 114.



Sec. 260.2  Royalty fees for the digital performance of sound recordings.

    (a) Commencing June 1, 1998, the royalty fee for the digital 
performance of sound recordings by nonexempt subscription digital 
services shall be 6.5% of gross revenues resulting from residential 
services in the United States.
    (b) A nonexempt subscription digital transmission service (the 
``Licensee'') shall pay a late fee of 1.5% per month, or the highest 
lawful rate, whichever is lower, for any payment received after the due 
date. Late fees shall accrue from the due date until payment is 
received.
    (c)(1) For purposes of this section, gross revenues shall mean all 
monies derived from the operation of the programming service of the 
Licensee and shall be comprised of the following:
    (i) Monies received by Licensee from Licensee's carriers and 
directly from residential U.S. subscribers for Licensee's programming 
service;
    (ii) Licensee's advertising revenues (as billed), or other monies 
received from sponsors if any, less advertising agency commissions not 
to exceed 15% of those fees incurred to recognized advertising agency 
not owned or controlled by Licensee;
    (iii) Monies received for the provision of time on the Programming 
Service to any third party;
    (iv) Monies received from the sale of time to providers of paid 
programming such as infomercials;
    (v) Where merchandise or anything or service of value is received by 
licensee in lieu of cash consideration for the use of Licensee's 
programming service, the fair market value thereof or Licensee's 
prevailing published rate, whichever is less;
    (vi) Monies or other consideration received by Licensee from 
Licensee's carriers, but not including monies received by Licensee's 
carriers from others and not accounted for by Licensee's carriers to 
Licensee, for the provision of hardware by anyone and used in connection 
with the Programming Service;
    (vii) Monies or other consideration received for any references to 
or inclusion of any product or service on the programming service; and
    (viii) Bad debts recovered regarding paragraphs (c)(1) (i) through 
(vii) of this section.
    (2)Gross revenues shall include such payments as are in paragraphs 
(c)(1) (i) through (viii) of this section to which Licensee is entitled 
but which are paid to a parent, subsidiary, division, or affiliate of 
Licensee, in lieu of payment to Licensee but not including payments to 
Licensee's carriers for the programming service. Licensee shall be 
allowed a deduction from ``gross revenues'' as defined in paragraph 
(c)(1) of this section for affiliate revenue returned during the 
reporting period and for bad debts actually written off during reporting 
period.
    (d) During any given payment period, the value of each performance 
of each digital sound recording shall be the same.



Sec. 260.3  Terms for making payment of royalty fees.

    (a) All royalty payments shall be made to a designated agent(s), to 
be determined by the parties through voluntary license agreements or by 
a duly appointed Copyright Arbitration Royalty Panel pursuant to the 
procedures set forth in subchapter B of 37 CFR, part 251.
    (b) Payment shall be made on the twentieth day after the end of each 
month for that month, commencing

[[Page 510]]

with the month succeeding the month in which the royalty fees are set.
    (c) The agent designated to receive the royalty payments and the 
statements of account shall have the responsibility of making further 
distribution of these fees to those parties entitled to receive such 
payment according to the provisions set forth at 17 U.S.C. 114(g).
    (d) The designated agent may deduct reasonable costs incurred in the 
administration of the distribution of the royalties, so long as the 
reasonable costs do not exceed the actual costs incurred by the 
collecting entity.
    (e) Commencing June 1, 1998, and until such time as a new 
designation is made, the Recording Industry Association of America, Inc. 
shall be the agent receiving royalty payments and statements of account.

[63 FR 25413, May 8, 1998, as amended at 63 FR 30636, June 5, 1998]



Sec. 260.4  Confidential information and statements of account.

    (a) For purposes of this part, confidential information shall 
include statements of account and any information pertaining to the 
statements of account designated as confidential by the nonexempt 
subscription digital transmission service filing the statement. 
Confidential information shall also include any information so 
designated in a confidentiality agreement which has been duly executed 
between a nonexempt subscription digital transmission service and an 
interested party, or between one or more interested parties; Provided 
that all such information shall be made available, for the verification 
proceedings provided for in Secs. 260.5 and 260.6 of this part.
    (b) Nonexempt subscription digital transmission services shall 
submit monthly statements of account on a form provided by the agent 
designated to collect such forms and the monthly royalty payments.
    (c) A statement of account shall include only such information as is 
necessary to verify the accompanying royalty payment. Additional 
information beyond that which is sufficient to verify the calculation of 
the royalty fees shall not be included on the statement of account.
    (d) Access to the confidential information pertaining to the royalty 
payments shall be limited to:
    (1) Those employees of the designated agent who are not also 
employees or officers of a sound recording copyright owner or performing 
artist, and who, for the purpose of performing their assigned duties 
during the ordinary course of business, require access to the records; 
and
    (2) An independent and qualified auditor who is not an employee or 
officer of a sound recording copyright owner or performing artist, but 
is authorized to act on behalf of the interested copyright owners with 
respect to the verification of the royalty payments.
    (e) The designated agent shall implement procedures to safeguard all 
confidential financial and business information, including but not 
limited to royalty payments, submitted as part of the statements of 
account. Confidential information shall be maintained in locked files.
    (f) Books and records relating to the payment of the license fees 
shall be kept in accordance with generally accepted accounting 
principles for a period of three years. These records shall include, but 
are not limited to, the statements of account, records documenting an 
interested party's share of the royalty fees, and the records pertaining 
to the administration of the collection process and the further 
distribution of the royalty fees to those interested parties entitled to 
receive such fees.



Sec. 260.5  Verification of statements of account.

    (a) General. This section prescribes general rules pertaining to the 
verification of the statements of account by interested parties 
according to terms promulgated by a duly appointed copyright arbitration 
royalty panel, under its authority to set reasonable terms and rates 
pursuant to 17 U.S.C. 114 and 801(b)(1), and the Librarian of Congress 
under his authority pursuant to 17 U.S.C. 802(f).
    (b) Frequency of verification. Interested parties may conduct a 
single

[[Page 511]]

audit of a nonexempt subscription digital transmission service during 
any given calendar year.
    (c) Notice of intent to audit. Interested parties must submit a 
notice of intent to audit a particular service with the Copyright 
Office, which shall publish in the Federal Register a notice announcing 
the receipt of the notice of intent to audit within 30 days of the 
filing of the interested parties' notice. Such notification of intent to 
audit shall also be served at the same time on the party to be audited.
    (d) Retention of records. The party requesting the verification 
procedure shall retain the report of the verification for a period of 
three years.
    (e) Acceptable verification procedure. An audit, including 
underlying paperwork, which was performed in the ordinary course of 
business according to generally accepted auditing standards by an 
independent auditor, shall serve as an acceptable verification procedure 
for all parties.
    (f) Costs of the verification procedure. The interested parties 
requesting the verification procedure shall pay for the cost of the 
verification procedure, unless an independent auditor concludes that 
there was an underpayment of five (5) percent or more; in which case, 
the service which made the underpayment shall bear the costs of the 
verification procedure.
    (g) Interested parties. For purposes of this section, interested 
parties are those copyright owners who are entitled to receive royalty 
fees pursuant to 17 U.S.C. 114(g), their designated agents, or the 
entity designated by the copyright arbitration royalty panel in 37 CFR 
260.3 to receive and to distribute the royalty fees.



Sec. 260.6  Verification of royalty payments.

    (a) General. This section prescribes general rules pertaining to the 
verification of the payment of royalty fees to those parties entitled to 
receive such fees, according to terms promulgated by a duly appointed 
copyright arbitration royalty panel, under its authority to set 
reasonable terms and rates pursuant to 17 U.S.C. 114 and 801(b)(1), and 
the Librarian of Congress under his authority pursuant to 17 U.S.C. 
802(f).
    (b) Frequency of verification. Interested parties may conduct a 
single audit of the entity making the royalty payment during any given 
calendar year.
    (c) Notice of intent to audit. Interested parties must submit a 
notice of intent to audit the entity making the royalty payment with the 
Copyright Office, which shall publish in the Federal Register a notice 
announcing the receipt of the notice of intent to audit within 30 days 
of the filing of the interested parties' notice. Such notification of 
interest shall also be served at the same time on the party to be 
audited.
    (d) Retention of records. The party requesting the verification 
procedure shall retain the report of the verification for a period of 
three years.
    (e) Acceptable verification procedure. An audit, including 
underlying paperwork, which was performed in the ordinary course of 
business according to generally accepted auditing standards by an 
independent auditor, shall serve as an acceptable verification procedure 
for all parties.
    (f) Costs of the verification procedure. The interested parties 
requesting the verification procedure shall pay for the cost of the 
verification procedure, unless an independent auditor concludes that 
there was an underpayment of five (5) percent or more; in which case, 
the entity which made the underpayment shall bear the costs of the 
verification procedure.
    (g) Interested parties. For purposes of this section, interested 
parties are those copyright owners who are entitled to receive royalty 
fees pursuant to 17 U.S.C. 114(g), or their designated agents.



Sec. 260.7  Unknown copyright owners.

    If the designated collecting agent is unable to identify or locate a 
copyright owner who is entitled to receive a royalty payment under this 
part, the collecting agent shall retain the required payment in a 
segregated trust account for a period of three years from the

[[Page 512]]

date of payment. No claim to such payment shall be valid after the 
expiration of the three year period. After the expiration of this 
period, the collecting agent may use the unclaimed funds to offset the 
cost of the administration of the collection and distribution of the 
royalty fees.

[[Page 513]]

       INDEX TO CHAPTER II--COPYRIGHT OFFICE, LIBRARY OF CONGRESS

  Editorial Note: This listing is provided for information purposes 
only. It is compiled and kept up-to-date by the Copyright Office, 
Library of Congress.

                                                                 Section
Access to, and confidentiality of, Statements of Account for 
digital audio recording devices or media
                                                                  201.29
Auditor's Reports, and other verification information filed in the 
Copyright Office for digital audio recording devices or media
                                                                  201.29
Access (public) to CARP \1\ meetings
                                                        251.11 to 251.16
---------------------------------------------------------------------------

    \1\ CARP is the acronym for Copyright Arbitration Royalty Panel.
---------------------------------------------------------------------------

Account (Statements of) for digital audio recording devices or 
media
                                                                  201.28
Acquisition and deposit of unpublished television transmission 
programs
                                                                  202.22
Addresses prescribed for communications with Copyright Office
                                              201.1, 201.2, 201.5, 202.3
Adjustment (rate) proceedings (CARP) \1\
                                                        251.60 to 251.65
Advance notices of potential infringement
                                                                  201.22
Affixation (methods of) of copyright notice and positions on works
                                                                  201.20
Agreements between copyright owners and public broadcasting 
entities, Recordation of
                                                                   201.9
Amend or correct individual's record under Privacy Act, Appeal of 
refusal to
                                                                   204.8
Amendment or correction of records under Privacy Act, Request for 
                                                                   204.7
Annual Statements of Account, Contents of
                                                               201.28(f)
Arbitrators (CARP) \1\, Financial disclosure statements of
                                                                  251.32
Arbitrators (CARP) \1\, Standards of conduct for
                                                        251.30 to 251.39
Architectural works
                                                                  202.11
Architectural works, Deposit of
                                                     202.20(c)(2)(xviii)
Archives and libraries, Warnings of copyright for use by
                                                                  201.14
Arts (visual), registration of (see Pictorial, graphic & 
sculptural works)
                                                          202.10, 202.20
Arts (visual) registry
                                                                  201.25
Assessment of costs of (CARP) \1\ panels
                                                                  251.54
Audio (digital) recording devices or media, Initial notice of 
distribution of
                                                                  201.27
Audio (digital) recording devices or media, Statements of Account 
for
                                                                  201.28
Auditor's Reports filed in Copyright Office for digital audio 
recording devices or media (Access to, and confidentiality of)
                                                                  201.29
Auditor's Reports (In general)
                                                          201.28, 201.29
Basic registration defined
                                                                201.5(a)
Best Edition
                                  202.19, 202.20, Appendix B to Part 202
Blind and physically handicapped, \2\ Voluntary license to permit 
reproduction of nondramatic literary works solely for use of
                                                                  201.15
---------------------------------------------------------------------------

    \2\ But see 17 U.S.C. 121 (reproduction for blind or other people 
with disabilities), added by the Act of September 16, 1996, Pub. L. 104-
197, 110 Stat. 2394, 2416.
---------------------------------------------------------------------------

Broadcasting entities and copyright owners, Recordation of 
agreements between
                                                                   201.9

[[Page 514]]

Broadcasting entities (public), Performance of musical 
compositions by
                                                            253.4, 253.5
Broadcasting entity (public) defined
                                                                   253.2
Cable compulsory license, Adjustment of royalty fees for
                                                            256.1, 256.2
Cable compulsory license, Application of the 3.75% rate
                                                           201.17, 256.2
Cable contracts for systems outside 48 contiguous states, 
Recordation of
                                                                  201.12
Cable royalty fees, Filing of claims for [under 17 U.S.C. 
111(d)(4), 801, and 803]
                                                          252.1 to 252.5
Cable systems, Statements of Account covering compulsory licenses 
for secondary transmissions by
                                                                  201.17
Cancellation of completed registrations
                                                                   201.7
CARP \1\ arbitrators, Financial disclosure statements of
                                                                  251.32
CARP \1\ organization
                                                          251.1 to 251.8
CARP \1\ meetings, Public access to
                                                        251.11 to 251.16
CARP \1\ records, Inspection of
                                                        251.21 to 251.23
Cartographic (three-dimensional) representations of area, such as 
globes and relief models
                                                     202.20(c)(2)(xi)(B)
Certification and Documents Section, Information and Reference 
Division, as address for certain requests
                                                                201.1(c)
Certification of copies or documents, Requests for
                                                                201.2(d)
Certification (official) defined
                                                                201.4(a)
Claimants, Copyright applications
                                                                   202.3
Claims to cable royalty fees under 17 U.S.C. 111(d)(4), 801 and 
803
                                                          252.1 to 252.5
Coin-operated phonorecord player defined
                                                                   254.2
Coin-operated phonorecord players, Adjustment of royalty rate for 
                                                          254.1 to 254.3
Collective works, Deposit of contributions to
                                                        202.20(c)(2)(xv)
Colleges and universities, Performance of nondramatic musical 
compositions by public broadcasting entities licensed to
                                                                   253.5
Commercial prints and labels, Deposit of
                                                         202.20(c)(2)(v)
Communications with Copyright Office, Addresses prescribed for
                                                                   201.1
Complete copy defined for mandatory deposit only
                                                            202.19(b)(2)
Complete copy for purposes of registration, Definition of
                                                            202.20(b)(2)
Compulsory license for making/distributing phonorecords of 
nondramatic musical works, Notice of intention to obtain
                                                                  201.18
Compulsory license for making/distributing phonorecords of 
nondramatic musical works, Rates
                                                          255.1 to 255.5
Compulsory license for making/distributing phonorecords of 
nondramatic musical works, Royalties and statements of account 
under
                                                                  201.19
Compulsory license for secondary transmissions by cable systems, 
Statements of Account covering
                                                                  201.17
Computer programs and databases embodied in machine-readable 
copies other than CD-ROM format, Deposit of
                                                       202.20(c)(2)(vii)
Computer shareware, Recordation of documents pertaining to
                                                                  201.26
Computer software (public domain), Recordation of documents 
regarding donation of
                                                                  201.26
Conduct standards for CARP \1\ arbitrators
                                                        251.30 to 251.39
Confidentiality of, and access to, Statements of Account, 
Auditor's Reports, and other verification information filed in the 
Copyright Office for digital audio recording devices or media
                                                                  201.29
Congress (Library of), Deposit of published copies or phonorecords 
for
                                                                  202.19
Congress (Library of), Transfer of unpublished copyright deposits 
to
                                                                  201.23
Contents of Statements of Account covering compulsory licenses for 
secondary cable transmissions
                                                               201.17(e)
Contributions to collective works, Deposit of
                                                        202.20(c)(2)(xv)
Copies and phonorecords, Deposit for copyright registration of
                                                                  202.20

[[Page 515]]

Copies containing both visually perceptible and machine-readable 
material other than a CD-ROM format, Deposit of
                                                        202.20(c)(2)(ix)
Copies, Deposit of identifying material instead of
                                                                  202.21
Copies deposited, Return of
                                                                201.6(d)
Copies of records or deposits, Requests for
                                                                201.1(c)
Copies or phonorecords (published) for the Library of Congress, 
Deposit of
                                                                  202.19
Copy (complete) defined for mandatory deposit only
                                                            202.19(b)(2)
Copying of records and indexes (Inspection and)
                                                                201.2(b)
Copying of records under Freedom of Information Act [FOIA] 
(Inspection and)
                                                                   203.5
Copyright Arbitration Royalty Panel (CARP) \1\: Rules and Procedures
Access (public) to CARP \1\ meetings....................251.11 to 251.16
Conduct standards of CARP \1\ arbitrators...............251.30 to 251.39
Ex parte communications...........................................251.33
Inspection of CARP \1\ records..........................251.21 to 251.23
Organization of CARP \1\..................................251.1 to 251.8
Procedures of CARP \1\ panels...........................251.40 to 251.58
Public access to CARP \1\ meetings......................251.11 to 251.16
Rate adjustment proceedings.............................251.60 to 251.65
Records (CARP), \1\ Inspection of.......................251.21 to 251.23
Royalty fee distribution proceedings....................251.70 to 251.73
Standards of conduct for CARP \1\ arbitrators...........251.30 to 251.39
Copyright deposits, Full-term retention of
                                                                  202.23
Copyright deposits (unpublished), Transfer to Library of Congress 
of
                                                                  201.23
Copyright, Material not subject to
                                                                   202.1
Copyright notice, General
                                                                   202.2
Copyright notice, Methods of affixation and position
                                                                  201.20
Copyright Office fees. See Fees
                                                                   201.3
Copyright Office, Information given by
                                                                   201.2
Copyright Office, Proper address for mail and other communications 
with
                                                                   201.1
Copyright owners and broadcasting entities, Recordation of 
agreements between
                                                                   201.9
Copyright, Registration of claims to
                                                                   202.3
Copyright restoration for certain motion pictures and their 
contents under NAFTA, \3\ Procedures for
                                                                  201.31
---------------------------------------------------------------------------

    \3\ NAFTA is the acronym for North American Free Trade Agreement.
---------------------------------------------------------------------------

Copyright restoration under Uruguay Round Agreements Act
                                                                  201.33
Copyright Warning for software lending by nonprofit libraries
                                                                  201.24
Correction or amendment of records under Privacy Act, Request for 
                                                                   204.7
Corrections and amplifications of copyright registrations
                                                                   201.5
Correspondence (official), Access and requests for copies of
                                                          201.2(c) & (d)
Costs of CARP \1\ panels, Assessment of
                                                                  251.54
Databases and computer programs embodied in machine-readable 
copies other than CD-ROM format, Deposit of
                                                       202.20(c)(2)(vii)
Date (effective) of registration
                                                                   202.4
Date of recordation defined
                                                     201.4(a), 201.26(f)
Definitions:
Advance Notice of Potential Infringement....................201.22(a)(1)
Annual Statement of Account (compulsory license)............201.19(a)(2)
Architectural works............................................202.11(b)
Basic registration..............................................201.5(a)
Best edition..................................202.19(b)(1), 202.20(b)(1)
Cable system................................................201.17(b)(2)
Cancellation....................................................201.7(a)
Certification (official)........................................201.4(e)

[[Page 516]]

Coin-operated phonorecord player...................................254.2
Complete copy (deposit for registration)....................202.20(b)(2)
Complete copy (mandatory deposit)...........................202.19(b)(2)
Computer shareware.............................................201.26(b)
Contributions to collective works......................202.20(b)(2)(iii)
Current base rate (cable systems)........................201.17(h)(1)(i)
Date of recordation..................................201.4(e), 201.26(f)
Digital audio transmissions, Arbitration concerning rates and 
terms for public performance of ephemeral or by audio 
transmissions......................................251.2, 251.61, 251.62
Digital phonorecord delivery.......................................255.4
Digital subscription transmissions, Initial notice of use of works
                                                         201.35 - 201.37
Display Warning of Copyright................................201.14(a)(1)
Distant signal equivalent...................................201.17(b)(5)
Distributor (satellite carrier)................................201.11(b)
Document designated as pertaining to computer shareware.....201.26(b)(2)
Gross receipts for basic service (cable systems)............201.17(b)(1)
Individual (Privacy Act)........................................204.2(a)
Local service area of a primary transmitter.................201.17(b)(5)
Masthead....................................................201.20(b)(8)
Monthly Statement of Account (compulsory license)...........201.19(a)(1)
Motion pictures.........................................202.20(b)(2)(vi)
Musical scores...........................................202.20(b)(2)(v)
NAFTA \3\ work..............................................201.33(b)(1)
Network station (satellite carrier)............................201.11(b)
Notice (initial) of Distribution of Digital Audio Recording 
Devices........................................................201.27(b)
Notice of objection to certain noncommercial performances......201.13(a)
Off-the-air copying............................................202.22(c)
Order Warning of Copyright..................................201.14(a)(2)
Posthumous work (renewal)......................................202.17(b)
Potential copyright owner (NAFTA) \3\.......................201.31(b)(4)
Primary transmission (satellite carrier)....................201.11(b)(2)
Privacy Act........................................................204.2
Private home viewing (satellite carrier).......................201.11(b)
Public broadcasting entity.........................................253.2
Public domain computer software.............................201.26(b)(3)
Publication (NAFTA) \3\.....................................201.31(b)(5)
Record (Privacy Act)............................................204.2(c)
Registration (supplementary)....................................201.5(a)
Reliance party..............................................201.33(b)(2)
Renewal (posthumous work)......................................202.17(b)
Restored work...............................................201.33(b)(3)
Routine use (Privacy Act).......................................204.2(e)
Satellite carrier..............................................201.11(b)
Secondary transmission (satellite carrier)..................201.11(b)(2)
Secure test.................................................202.20(b)(4)
Single-leaf work............................................201.20(b)(9)
Sound recordings........................................202.20(b)(2)(iv)
Source country..............................................201.33(b)(4)
Subscriber (satellite carrier).................................201.11(b)
Superstation (satellite carrier)...............................201.11(b)
Supplementary registration......................................201.5(a)
Syndex-proof signal (satellite retransmission).....................258.2
System of records (Privacy Act).................................204.2(d)
Title page..................................................201.20(b)(5)
Unserved household (satellite carrier).........................201.11(b)
Warning of Copyright for Software Rental.......................201.24(a)
Deposit accounts
                                                                201.6(b)

[[Page 517]]

Deposit (Acquisition and) of unpublished television transmission 
programs
                                                                  202.22
Deposit (mandatory) of published copies or phonorecords for 
Library of Congress
                                                                  202.19
Deposit, Nature of required
                                                            202.20(c)(1)
Deposit of copies for registration by category:
Architectural works..................................202.20(c)(2)(xviii)
Certain pictorial and graphic works.....................202.20(c)(2)(iv)
Commercial prints and labels.............................202.20(c)(2)(v)
Computer programs and databases embodied in machine-readable 
copies other than CD-ROM format........................202.20(c)(2)(vii)
Contributions to collective works.......................202.20(c)(2)(xv)
Generally................................................202.20(c)(2)(i)
Group registration of serials.........................202.20(c)(2)(xvii)
Holograms..............................................202.20(c)(2)(iii)
Machine-readable copies of works other than computer programs, 
databases, and works fixed in a CD-ROM format.........202.20(c)(2)(viii)
Oversize deposits.....................................202.20(c)(2)(xiii)
Phonorecords...........................................202.20(c)(2)(xvi)
Pictorial advertising material.........................202.20(c)(2)(xiv)
Soundtracks............................................202.20(c)(2)(xii)
Tests...................................................202.20(c)(2)(vi)
Works fixed in a CD-ROM format.........................202.20(c)(2)(xix)
Works reproduced in or on sheetlike materials............202.20(c)(2)(x)
Works reproduced in or on three-dimensional objects.....202.20(c)(2)(xi)
Deposit of copies for registration (special relief)
                                                               202.20(d)
Deposit of copies under 17 U.S.C. 407, Presumption as to
                                                               202.19(f)
Deposit of identifying material instead of copies
                                                                  202.21
Deposit of identifying material (Mask works)
                                                                   211.5
Deposit of oversize material
                                                      202.20(c)(2)(xiii)
Deposit requirements under 17 U.S.C. 407(a), Exemption from
                                                               202.19(c)
Deposits (copyright), Full-term retention of
                                                                  202.23
Deposits, Requests for copies of
                                                                201.1(c)
Deposits (unpublished copyright), Transfer to Library of Congress 
of
                                                                  201.23
Digital audio recording devices and media royalty payments, Filing 
of claims to
                                                          259.1 to 259.6
Digital audio recording devices or media (Access to, and 
confidentiality of, Statements of Account, Auditor's Reports, and 
other verification information filed in the Copyright Office for) 
                                                                  201.29
Digital audio recording devices or media, Initial notice of 
distribution of
                                                                  201.27
Digital audio recording devices or media, Statements of account 
for
                                                                  201.28
Digital phonorecord delivery, definition of
                                                                   255.4
Digital phonorecord delivery, royalty rate for
                                                                   255.5
Digital subscription transmissions of sound recordings, Rates and 
terms
                                                          260.1 to 260.5
Disclosure (financial) statements of CARP \1\ arbitrators
                                                                  251.32
Displays [and] nondramatic performances of musical works for 
public broadcasting entities
                                                                   253.7
Distribution proceedings (CARP) \1\ for royalty fees
                                                        251.70 to 251.73
Documents pertaining to computer shareware, and public domain 
computer software, Recordation of
                                                                  201.26
Documents, recordable
                                                                201.4(c)
Documents, Recordation of
                                                                   201.4
Effective date of registration
                                                                   202.4
Errors corrected by supplementary registration
                                                                   201.5
Errors (minor) or omissions in registration
                                                                201.7(d)
Exemption from deposit requirements under 17 U.S.C. 407(a)
                                                               202.19(c)

[[Page 518]]

Extended renewal term, Notices of termination of transfers and 
licenses covering
                                                                  201.10
Fees, Generally for Copyright Office services
                                                                   201.3
Freedom of Information Act.........................................203.6
Licensing Division service fees.................................201.3(e)
Mask works......................................................201.3(c)
Payment and Refunds................................................201.6
Privacy Act........................................................204.6
Registration, recordation and related services.................201.3 (c)
Special services................................................201.3(d)
Fees, Information on royalty payments or fees. See Royalty or Royalties.
Filing and service of written cases and pleadings with CARP \1\
                                                                  251.44
Financial disclosure statement of CARP \1\ arbitrators
                                                                  251.32
Forms for recordation not provided by Copyright Office
                                                                201.4(b)
Forms, Registration
                                                             202.3(b)(2)
Forty-eight contiguous states, Recordation of certain contracts by 
cable systems located outside of
                                                                  201.12
Freedom of Information Act (FOIA), Electronic Records, public inspection
and search
                                                          203.3 to 203.6
Freedom of Information Act (FOIA): Policies and Procedures
                                                                Part 203
Authority and functions............................................203.2
FOIA and Privacy Act (CARP \1\ proceedings).......................251.23
In general.........................................................203.1
Inspection and copying.............................................203.5
Methods of operation...............................................203.4
Organization [of the Copyright Office].............................203.3
Schedule of fees and methods of payment for services rendered......203.6
Full-term retention of copyright deposits
                                                                  202.23
Graphic works, Pictorial, sculptural, and
                                                                  202.10
Handicapped; physically or blind,\2\ Voluntary license to permit 
reproduction of nondramatic literary works solely for use of those 
who are
                                                                  201.15
Holograms, Deposit of
                                                       202.20(c)(2)(iii)
Identifying material instead of copies, Deposit of
                                                                  202.21
Identifying material for Mask works, Deposit of
                                                                   211.5
Indexes. See Records.
Individual defined for purposes of Privacy Act
                                                                204.2(a)
Information (Freedom of) Act. See Freedom of Information Act (FOIA).
Information given by Copyright Office
                                                                   201.2
Infringement, Advance notices of potential
                                                                  201.22
Initial notice of distribution of digital audio recording devices 
or media
                                                                  201.27
Inquiries by mail, etc.; addresses
                                                                   201.1
Inspection and copying of records
                                                                201.2(b)
Inspection and copying of records under the Freedom of Information 
Act (FOIA)
                                                                   203.5
Inspection of CARP \1\ records
                                                        251.21 to 251.23
Judicial review of determinations by the Librarian of Congress in 
CARP \1\ proceedings
                                                                  251.58
Labels, Deposit of commercial prints and
                                                         202.20(c)(2)(v)
Lending of software by nonprofit libraries, Warning of copyright 
for
                                                                  201.24
Library of Congress, Deposit of published copies or phonorecords 
for
                                                                  202.19
Library of Congress, Transfer of unpublished copyright deposits to
                                                                  201.23
Libraries and archives, Warning of copyright for use by
                                                                  201.14
Libraries and archives, Notice of normal commercial exploitation 
or availability at reasonable price
                                                                  201.39
Libraries (Nonprofit), Warning of copyright for software lending 
by
                                                                  201.24
License (compulsory) for making/distributing phonorecords of 
nondramatic musical works, Notice of intention to obtain
                                                                  201.18

[[Page 519]]

License (voluntary) solely for use of blind \2\ and physically 
handicapped
                                                                  201.15
Licenses and transfers covering extended renewal term, Notices of 
termination of
                                                                  201.10
Licenses (compulsory) for secondary transmissions by cable 
systems, Statements of account covering
                                                                  201.17
Licenses (statutory) for secondary transmissions for private home 
viewing, Satellite carrier statements of account covering
                                                                  201.11
Licensing Division; inquiries/address
                                                                   201.1
Machine-readable copies of works other than computer programs, 
databases, and works fixed in a CD-ROM format, Deposit of 
                                                      202.20(c)(2)(viii)
Machine-readable copies other than CD-ROM format, Computer 
programs and databases embodied in
                                                       202.20(c)(2)(vii)
Mail and other communications with Copyright Office, Proper 
address for
                                                                   201.1
Mask Work Protection:
Deposit of identifying material....................................211.5
General provisions.................................................211.1
Mask work fees...........................................201.3(c), 211.3
Methods of affixation and placement of mask work notice............211.6
Recordation of documents pertaining to mask works..................211.2
Registration of claims of protection for mask works................211.4
Material not subject to copyright
                                                                   202.1
Media, Initial notice of distribution of digital audio recording 
devices or
                                                                  201.27
Meetings of CARP \1\, Public access to
                                                        251.11 to 251.16
Motion pictures and their contents, Procedures for copyright 
restoration in accordance with NAFTA\3\ for certain
                                                                  201.31
Motion pictures, Deposit of
                                                        202.20(c)(2)(ii)
Musical compositions, Performance by public broadcasting entities 
of
                                                          253.4 to 253.6
Musical works (nondramatic), Notice of intention to obtain 
compulsory license for making/distributing phonorecords of
                                                                  201.18
NAFTA, \3\ Procedures for copyright restoration of certain motion
pictures and the contents in accordance with
                                                                  201.31
Noncommercial educational broadcasting
                                                         253.1 to 253.11
Noncommercial performances of nondramatic literary or musical 
works, Notices of objection to certain
                                                                  201.13
Nondramatic literary or musical works, Notices of objection to 
certain noncommercial performances of
                                                                  201.13
Nondramatic literary works, License to permit reproduction solely 
for use of blind and physically handicapped \2\
                                                                  201.15
Nondramatic musical works, Notice of intention to obtain 
compulsory license for making/distributing phonorecords of
                                                                  201.18
Nondramatic musical works, Royalties and statements of account 
under compulsory license for making/distributing phonorecords of 
                                                                  201.19
Nondramatic performances and displays of musical works for public 
broadcasting entities
                                                                   253.7
Nonprofit libraries, Warning of copyright for lending of software 
by
                                                                  201.24
Notice (Mask work), Method of affixation and placement of
                                                                   211.6
Notice of copyright
                                                                   202.2
Notice of copyright, Methods of affixation and positions on works 
                                                                  201.20
Contributions to collective works..............................201.20(f)
Motion pictures and other audiovisual works....................201.20(h)
Pictorial, graphic, and sculptural works.......................201.20(i)
Single-leaf works..............................................201.20(e)
Works published in book form...................................201.20(d)
Works reproduced in machine-readable copies....................201.20(g)

[[Page 520]]

Notice (initial) of distribution of digital audio recording 
devices or media
                                                                  201.27
Notices of Intent to Enforce a restored copyright, Correction
notices, Procedures for filing
                                                                  201.34
Notices of Intent to Enforce a restored copyright under the 
Uruguay Round Agreements Act, Procedures for filing
                                                                  201.33
Notice of intention to obtain compulsory license for making/
distributing phonorecords
                                                                  201.18
Notices (advance) of potential infringement
                                                                  201.22
Notices of objection to certain noncommercial performances of 
nondramatic literary or musical works
                                                                  201.13
Notices of termination of transfers and licenses covering extended 
renewal term
                                                                  201.10
Objection (Notice of) to certain noncommercial performances of 
nondramatic literary or musical works
                                                                  201.13
Off-the-air copying of unpublished television transmission 
programs
                                                               202.22(c)
Organization of CARP \1\
                                                          251.1 to 251.8
Oversize deposits
                                                      202.20(c)(2)(xiii)
Panels (CARP) \1\, Procedures of
                                                        251.40 to 251.58
Performances (nondramatic) and displays of musical works for 
public broadcasting entities
                                                                   253.7
Performances of musical compositions by public broadcasting 
entities
                                                          253.4 to 253.6
Performances of nondramatic literary or musical works, Notices of 
objection to certain noncommercial
                                                                  201.13
Phonorecords, Deposit for copyright registration
                                                                  202.20
Phonorecords for Library of Congress, Deposit of published
                                                                  202.19
Phonorecords of nondramatic musical works, Notice of intention to 
obtain compulsory license for making/distributing
                                                                  201.18
Phonorecords of nondramatic musical works, Royalties and 
statements of account under compulsory license for making/
distributing
                                                                  201.19
Phonorecords, Royalty payable under compulsory license for making 
and distributing
                                                          255.1 to 255.8
Pictorial advertising material, Deposit of
                                                       202.20(c)(2)(xiv)
Pictorial, graphic, and sculptural works
                                                                  202.10
Pictorial, graphic, and sculptural works published by public 
broadcasting entities, Terms and rates of royalty payments for the 
use of
                                                                   253.8
Positions and methods of affixation of copyright notice
                                                                  201.20
Presumption as to deposit of copies under 17 U.S.C. 407
                                                               202.19(f)
Prints (commercial) and labels , Deposit of
                                                         202.20(c)(2)(v)
Privacy Act and FOIA (CARP \1\ proceedings)
                                                                  251.23
Privacy Act: Policies and Procedures
                                                                Part 204
Appeal of refusal to correct or amend an individual's record.......204.8
Definitions........................................................204.2
Fees...............................................................204.6
General policy.....................................................204.3
Judicial review....................................................204.9
Procedure for notification of the existence of records pertaining 
to individuals.....................................................204.4
Procedures for requesting access to records........................204.5
Request for correction or amendment of records.....................204.7
Private home viewing, Satellite carrier statements of account 
covering statutory licenses for secondary transmissions for
                                                                  201.11
Procedures for copyright restoration in U.S.A. of certain motion 
pictures and their contents in accordance with NAFTA \3\
                                                                  201.31
Procedures of CARP \1\ panels
                                                        251.40 to 251.58
Proceedings for CARP \1\ royalty fee distribution
                                                        251.70 to 251.73

[[Page 521]]

Proceedings for rate adjustment (CARP \1\)
                                                        251.60 to 251.65
Public access to CARP \1\ meetings
                                                        251.11 to 251.16
Public access to CARP \1\ records
                                                        251.21 to 251.23
Public broadcasting entities, Nondramatic performances and 
displays of musical works for
                                                                   253.7
Public broadcasting entities, Performance of musical compositions 
by
                                                          253.4 to 253.6
Public broadcasting entities, Recordation of agreements between 
copyright owners and
                                                                   201.9
Public broadcasting entity defined
                                                                   253.2
Public domain computer software, Recordation of documents 
pertaining to donation of
                                                                  201.26
Published copies or phonorecords, Deposit (mandatory) for Library 
of Congress
                                                                  202.19
Rate adjustment proceedings (CARP) \1\
                                                        251.60 to 251.65
Rate adjustment proceedings for secondary transmissions by 
satellite carriers (CARP)
                                                           258.1 - 258.3
Record of individual under Privacy Act, Appeal of refusal to 
correct or amend
                                                                   204.8
Recordability of documents (general requirements)
                                                                201.4(c)
Recordation, Date of
                                                                201.4(e)
Recordation fees
                                                                201.4(d)
Recordation forms not necessary
                                                                201.4(b)
Recordation of agreements between copyright owners and public 
broadcasting entities
                                                                   201.9
Recordation of cable contracts for systems outside the 48 
contiguous states
                                                                  201.12
Recordation of transfers and other documents
                                                                   201.4
Recording devices (digital audio) or media, Initial notice of 
distribution of
                                                                  201.27
Recording devices (digital audio) or media, Statements of account 
for
                                                                  201.28
Records and indexes, Inspection and copying of
                                                                201.2(b)
Records (CARP) \1\, Inspection of
                                                        251.21 to 251.23
Records; filings; addresses for requests
                                                                   201.1
Records, Request under Privacy Act for amendment or correction of 
                                                                   204.7
Records (System of) under Privacy Act
                                                                204.2(d)
Records under Freedom of Information Act (FOIA), Inspection and 
copying of
                                                                   203.5
Reference and Bibliography Section as address for search requests 
                                                                201.1(d)
Refund of Copyright Office fees
                                                                   201.6
Refusal to correct or amend an individual's record, Appeal of
                                                                   204.8
Registration (basic), Effect of supplementary registration on
                                                                201.5(d)
Registration (copyright), Deposit of copies and phonorecords for 
                                                                  202.20
Registration, Effective date of
                                                                   202.4
Registration of copyright
                                                                   202.3
Registration of group of related works
                                                      202.3(b)(4) to (8)
Automated databases..........................................202.3(b)(4)
Contributions to periodicals.................................202.3(b)(7)
Daily newsletters............................................202.3(b)(8)
Daily newspapers.............................................202.3(b)(6)
Serials......................................................202.3(b)(5)
Registrations and recordations, Requests for searches of
                                                                201.1(d)
Registrations (completed), Cancellation of
                                                                   201.7
Registrations (corrected and amplified)
                                                                   201.5
Registrations (supplementary)
                                                                   201.5
Registry (Visual Arts)
                                                                  201.25
Relief (Special)
                                                    202.19(e), 202.20(d)

[[Page 522]]

Renewal term (extended), Notices of termination of transfers and 
licenses covering
                                                                  201.10
Renewals
                                                                  202.17
Restoration of copyright for certain motion pictures and their 
contents in accordance with NAFTA, \3\ Procedures for
                                                                  201.31
Restoration of copyright under the Uruguay Round Agreement Act
                                                          201.33, 202.12
Restored copyrights, Registration of
                                                                  202.12
Retention (Full-term) of copyright deposits
                                                                  202.23
Royalties and statements of account under compulsory license for 
making/distributing phonorecords of nondramatic musical works
                                                                  201.19
Royalty (cable) fees, Filing of claims under 17 U.S.C. 111(d)(4), 
801, 803, to
                                                          252.1 to 252.5
Royalty fee (CARP) distribution proceedings
                                                        251.70 to 251.73
Royalty fee for cable compulsory license, Adjustment of
                                                         256.1 and 256.2
Royalty fee for secondary transmissions by satellite carriers, 
Adjustment of
                                                          258.1 to 258.3
Royalty fees for secondary transmissions by satellite carriers, 
Filing of claims to
                                                          257.1 to 257.6
Royalty payable under compulsory license for making/distributing 
phonorecords
                                                   255.1 to 255.3, 255.5
Royalty payments for digital audio recording devices and media, 
Filing of claims to
                                                          259.1 to 259.6
Royalty payments for use of published pictorial, graphic, and 
sculptural works
                                                                   253.8
Royalty rate for coin-operated phonorecord players, Adjustment of 
                                                          254.1 to 254.3
Satellite carrier royalty fees, Filing of claims to
                                                          257.1 to 257.6
Satellite carrier statements of account and royalty fees covering 
licenses for secondary transmissions for private home viewing
                                                                  201.11
Satellite carriers, Adjustment of royalty fee for secondary 
transmissions by
                                                          258.1 to 258.3
Sculptural works (Pictorial, graphic, and)
                                                                  202.10
Search of records, Requests for
                                                                201.1(d)
Secondary transmission by cable systems, Royalty fee for 
compulsory license for
                                                                   256.2
Secondary transmission by satellite carriers, Royalty fee for
                                                                   258.3
Second transmissions by cable systems, Statements of Account 
covering compulsory licenses for
                                                                  201.17
Serials, Group registration of
                                                      202.20(c)(2)(xvii)
Shareware (computer), Recordation of documents pertaining to
                                                                  201.26
Software lending by nonprofit libraries, Warning of copyright for 
                                                                  201.24
Software (public domain computer), Recordation of documents 
pertaining to donation of
                                                                  201.26
Soundtracks, Deposit of
                                                       202.20(c)(2)(xii)
Special relief (deposit of copies for registration)
                                                               202.20(d)
Special relief (mandatory deposit under 17 U.S.C. 407)
                                                               202.19(e)
Special Services (Copyright Office), Fees for
                                                                201.3(d)
Specialty stations designated under cable compulsory license
                                                                   256.2
Standards of conduct for CARP \1\ arbitrators
                                                        251.30 to 251.39
Statements of account (and royalties) under compulsory license for 
making/distributing phonorecords of nondramatic musical works
                                                                  201.19
Statements of account and royalty fees (satellite carrier) 
covering licenses for secondary transmissions for private home 
viewing
                                                                  201.11
Statements of Account, Auditor's Reports, etc. filed in Copyright 
Office for digital audio recording devices or media, Access to and 
confidentiality of
                                                                  201.29
Statements of account covering compulsory licenses for secondary 
transmissions by cable systems
                                                                  201.17
Statements of account for digital audio recording devices or media
                                                                  201.28

[[Page 523]]

Statements of Account (In general)
                                  201.11, 201.17, 201.19, 201.28, 201.29
States (48 contiguous), Recordation of cable contracts for systems 
outside of
                                                                  201.12
Statutory licenses for secondary transmissions for private home 
viewing, Satellite carrier statements of account and royalty fees 
covering
                                                                  201.11
Supplementary registration application (form and content)
                                                                201.5(c)
Supplementary registration, Effect on basic registration of
                                                                201.5(d)
Syndex-proof signal (satellite carrier retransmission), Definition 
of
                                                                   258.2
System of records under Privacy Act
                                                                204.2(d)
Television broadcast signals transmitted by satellite carriers to 
the public for private home viewing, Adjustment of royalties 
payable under compulsory license for
                                                          258.1 to 258.3
Television broadcast signals transmitted by satellite carriers to 
the public for private home viewing, Procedures for filing claims 
for compulsory license royalty fees covering
                                                          257.1 to 257.6
Television transmission programs (unpublished), Acquisition and 
deposit of
                                                                  202.22
Termination of transfers and licenses covering extended renewal 
term, Notices of
                                                                  201.10
Tests, Deposit of
                                                        202.20(c)(2)(vi)
Transfer of unpublished copyright deposits to Library of Congress 
                                                                  201.23
Transfers and licenses covering extended renewal term, Notices of 
termination of
                                                                  201.10
Transfers and other documents, Recordation of
                                                                   201.4
Transmission programs (television), Acquisition and deposit of 
unpublished
                                                                  202.22
Unpublished copyright deposits, Transfer to Library of Congress of
                                                                  201.23
Unpublished television transmission programs, Acquisition and 
deposit of
                                                                  202.22
Use (routine) under Privacy Act
                                                                204.2(e)
Verification information filed in Copyright Office for digital 
audio recording devices or media, Access to and confidentiality of
                                                                  201.29
Visual Arts Registry
                                                                  201.25
Visually perceptible and machine-readable material other than a 
CD-ROM format, Deposit of copies containing both
                                                        202.20(c)(2)(ix)
Voluntary license to permit reproduction of nondramatic literary 
works solely for use of the blind and physically handicapped \2\ 
                                                                  201.15
Warning of copyright for software lending by nonprofit libraries 
                                                                  201.24
Warnings (display) of copyright for use by certain libraries and 
archives
                                                                  201.14
Works:
Architectural.....................................................202.11
Nondramatic literary..............................................201.13
Nondramatic musical...........................201.13, 201.18, and 201.19
Pictorial, graphic, and sculptural................................202.10
Works consisting of sounds, images, or both, Advance notices of 
potential infringement of
                                                                  201.22
Works fixed in CD-ROM format, Deposit of
                                                       202.20(c)(2)(xix)
Works reproduced in or on sheetlike materials, Deposit of 
                                                         202.20(c)(2)(x)
Works reproduced in or on three-dimensional objects, Deposit of 
                                                        202.20(c)(2)(xi)
Xerographic or photographic copies on good quality paper are 
acceptable deposits for archival purposes in connection with the 
registration of claims to copyright in architectural works 
                                                     202.20(c)(2)(xviii)

[[Page 525]]



  CHAPTER IV--ASSISTANT SECRETARY FOR TECHNOLOGY POLICY, DEPARTMENT OF 
                                COMMERCE




  --------------------------------------------------------------------
Part                                                                Page
401             Rights to inventions made by nonprofit 
                    organizations and small business firms 
                    under Government grants, contracts, and 
                    cooperative agreements..................         527
404             Licensing of Government owned inventions....         543

[[Page 527]]



PART 401--RIGHTS TO INVENTIONS MADE BY NONPROFIT ORGANIZATIONS AND SMALL BUSINESS FIRMS UNDER GOVERNMENT GRANTS, CONTRACTS, AND COOPERATIVE AGREEMENTS--Table of Contents




Sec.
401.1  Scope.
401.2  Definitions.
401.3  Use of the standard clauses at Sec. 401.14.
401.4  Contractor appeals of exceptions.
401.5  Modification and tailoring of clauses.
401.6  Exercise of march-in rights.
401.7  Small business preference.
401.8  Reporting on utilization of subject inventions.
401.9  Retention of rights by contractor employee inventor.
401.10  Government assignment to contractor of rights in invention of 
          government employee.
401.11  Appeals.
401.12  Licensing of background patent rights to third parties.
401.13  Administration of patent rights clauses.
401.14  Standard patent rights clauses.
401.15  Deferred determinations.
401.16  Electronic filing.
401.17  Submissions and inquiries.

    Authority: 35 U.S.C. 206 and the delegation of authority by the 
Secretary of Commerce to the Assistant Secretary of Commerce for 
Technology Policy at sec. 3(g) of DOO 10-18.

    Source: 52 FR 8554, Mar. 18, 1987, unless otherwise noted.



Sec. 401.1  Scope.

    (a) Traditionally there have been no conditions imposed by the 
government on research performers while using private facilities which 
would preclude them from accepting research funding from other sources 
to expand, to aid in completing or to conduct separate investigations 
closely related to research activities sponsored by the government. 
Notwithstanding the right of research organizations to accept 
supplemental funding from other sources for the purpose of expediting or 
more comprehensively accomplishing the research objectives of the 
government sponsored project, it is clear that the ownership provisions 
of these regulations would remain applicable in any invention 
``conceived or first actually reduced to practice in performance'' of 
the project. Separate accounting for the two funds used to support the 
project in this case is not a determining factor.
    (1) To the extent that a non-government sponsor established a 
project which, although closely related, falls outside the planned and 
committed activities of a government-funded project and does not 
diminish or distract from the performance of such activities, inventions 
made in performance of the non-government sponsored project would not be 
subject to the conditions of these regulations. An example of such 
related but separate projects would be a government sponsored project 
having research objectives to expand scientific understanding in a field 
and a closely related industry sponsored project having as its 
objectives the application of such new knowledge to develop usable new 
technology. The time relationship in conducting the two projects and the 
use of new fundamental knowledge from one in the performance of the 
other are not important determinants since most inventions rest on a 
knowledge base built up by numerous independent research efforts 
extending over many years. Should such an invention be claimed by the 
performing organization to be the product of non-government sponsored 
research and be challenged by the sponsoring agency as being reportable 
to the government as a ``subject invention'', the challenge is 
appealable as described in Sec. 401.11(d).
    (2) An invention which is made outside of the research activities of 
a government-funded project is not viewed as a ``subject invention'' 
since it cannot be shown to have been ``conceived or first actually 
reduced to practice'' in performance of the project. An obvious example 
of this is a situation where an instrument purchased with government 
funds is later used, without interference with or cost to the 
government-funded project, in making an invention all expenses of which 
involve only non-government funds.
    (b) This part inplements 35 U.S.C. 202 through 204 and is applicable 
to all Federal agencies. It applies to all funding agreements with small 
business firms and nonprofit organizations executed after the effective 
date of this part, except for a funding agreement

[[Page 528]]

made primarily for educational purposes. Certain sections also provide 
guidance for the administration of funding agreements which predate the 
effective date of this part. In accordance with 35 U.S.C. 212, no 
scholarship, fellowship, training grant, or other funding agreement made 
by a Federal agency primarily to an awardee for educational purposes 
will contain any provision giving the Federal agency any rights to 
inventions made by the awardee.
    (c) The march-in and appeals procedures in Secs. 401.6 and 401.11 
shall apply to any march-in or appeal proceeding under a funding 
agreement subject to Chapter 18 of Title 35, U.S.C., initiated after the 
effective date of this part even if the funding agreement was executed 
prior to that date.
    (d) At the request of the contractor, a funding agreement for the 
operation of a government-owned facility which is in effect on the 
effective date of this part shall be promptly amended to include the 
provisions required by Secs. 401.3(a) unless the agency determines that 
one of the exceptions at 35 U.S.C. 202(a)(i) through (iv) 
Sec. 401.3(a)(8) through (iv) of this part) is applicable and will be 
applied. If the exception at Sec. 401.3(a)(iv) is determined to be 
applicable, the funding agreement will be promptly amended to include 
the provisions required by Sec. 401.3(c).
    (e) This regulation supersedes OMB Circular A-124 and shall take 
precedence over any regulations dealing with ownership of inventions 
made by small businesses and nonprofit organizations which are 
inconsistent with it. This regulation will be followed by all agencies 
pending amendment of agency regulations to conform to this part and 
amended Chapter 18 of Title 35. Only deviations requested by a 
contractor and not inconsistent with Chapter 18 of Title 35, United 
States Code, may be made without approval of the Secretary. 
Modifications or tailoring of clauses as authorized by Sec. 401.5 or 
Sec. 401.3, when alternative provisions are used under Sec. 401.3(a)(1) 
through (4), are not considered deviations requiring the Secretary's 
approval. Three copies of proposed and final agency regulations 
supplementing this part shall be submitted to the Secretary at the 
office set out in Sec. 401.16 for approval for consistency with this 
part before they are submitted to the Office of Management and Budget 
(OMB) for review under Executive Order 12291 or, if no submission is 
required to be made to OMB, before their submission to the Federal 
Register for publication.
    (f) In the event an agency has outstanding prime funding agreements 
that do not contain patent flow-down provisions consistent with this 
part or earlier Office of Federal Procurement Policy regulations (OMB 
Circular A-124 or OMB Bulletin 81-22), the agency shall take appropriate 
action to ensure that small business firms or nonprofit organizations 
that are subcontractors under any such agreements and that received 
their subcontracts after July 1, 1981, receive rights in their subject 
inventions that are consistent with Chapter 18 and this part.
    (g) This part is not intended to apply to arrangements under which 
nonprofit organizations, small business firms, or others are allowed to 
use government-owned research facilities and normal technical assistance 
provided to users of those facilities, whether on a reimbursable or 
nonreimbursable basis. This part is also not intended to apply to 
arrangements under which sponsors reimburse the government or facility 
contractor for the contractor employee's time in performing work for the 
sponsor. Such arrangements are not considered ``funding agreements'' as 
defined at 35 U.S.C. 201(b) and Sec. 401.2(a) of this part.



Sec. 401.2  Definitions.

    As used in this part--
    (a) The term funding agreement means any contract, grant, or 
cooperative agreement entered into between any Federal agency, other 
than the Tennessee Valley Authority, and any contractor for the 
performance of experimental, developmental, or research work funded in 
whole or in part by the Federal government. This term also includes any 
assignment, substitution of parties, or subcontract of any type entered 
into for the performance of experimental, developmental, or research 
work under a funding agreement as defined in the first sentence of this 
paragraph.

[[Page 529]]

    (b) The term contractor means any person, small business firm or 
nonprofit organization which is a party to a funding agreement.
    (c) The term invention means any invention or discovery which is or 
may be patentable or otherwise protectable under Title 35 of the United 
States Code, or any novel variety of plant which is or may be 
protectable under the Plant Variety Protection Act (7 U.S.C. 2321 et 
seq.).
    (d) The term subject invention means any invention of a contractor 
conceived or first actually reduced to practice in the performance of 
work under a funding agreement; provided that in the case of a variety 
of plant, the date of determination (as defined in section 41(d) of the 
Plant Variety Protection Act, 7 U.S.C. 2401(d)) must also occur during 
the period of contract performance.
    (e) The term practical application means to manufacture in the case 
of a composition of product, to practice in the case of a process or 
method, or to operate in the case of a machine or system; and, in each 
case, under such conditions as to establish that the invention is being 
utilized and that its benefits are, to the extent permitted by law or 
government regulations, available to the public on reasonable terms.
    (f) The term made when used in relation to any invention means the 
conception or first actual reduction to practice of such invention.
    (g) The term small business firm means a small business concern as 
defined at section 2 of Pub. L. 85-536 (15 U.S.C. 632) and implementing 
regulations of the Administrator of the Small Business Administration. 
For the purpose of this part, the size standards for small business 
concerns involved in government procurement and subcontracting at 13 CFR 
121.5 will be used.
    (h) The term nonprofit organization means universities and other 
institutions of higher education or an organization of the type 
described in section 501(c)(3) of the Internal Revenue Code of 1954 (26 
U.S.C. 501(c) and exempt from taxation under section 501(a) of the 
Internal Revenue Code (26 U.S.C. 501(a)) or any nonprofit scientific or 
educational organization qualified under a state nonprofit organization 
statute.
    (i) The term Chapter 18 means Chapter 18 of Title 35 of the United 
States Code.
    (j) The term Secretary means the Assistant Secretary of Commerce for 
Technology Policy.
    (k) The term electronically filed means any submission of 
information transmitted by an electronic or optical-electronic system.
    (l) The term electronic or optical-electronic system means a 
software-based system approved by the agency for the transmission of 
information.
    (m) The term patent application or ``application for patent'' 
includes a provisional or nonprovisional U.S. national application for 
patent as defined in 37 CFR 1.9 (a)(2) and (a)(3), respectively, or an 
application for patent in a foreign country or in an international 
patent office.
    (n) The term initial patent application means a nonprovisional U.S. 
national application for patent as defined in 37 CFR 1.9(a)(3).

[52 FR 8554, Mar. 18, 1987, as amended at 60 FR 41812, Aug. 14, 1995]



Sec. 401.3  Use of the standard clauses at Sec. 401.14.

    (a) Each funding agreement awarded to a small business firm or 
nonprofit organization (except those subject to 35 U.S.C. 212) shall 
contain the clause found in Sec. 401.14(a) with such modifications and 
tailoring as authorized or required elsewhere in this part. However, a 
funding agreement may contain alternative provisions--
    (1) When the contractor is not located in the United States or does 
not have a place of business located in the United States or is subject 
to the control of a foreign government; or
    (2) In exceptional circumstances when it is determined by the agency 
that restriction or elimination of the right to retain title to any 
subject invention will better promote the policy and objectives of 
Chapter 18 of Title 35 of the United States Code; or
    (3) When it is determined by a government authority which is 
authorized

[[Page 530]]

by statute or executive order to conduct foreign intelligence or 
counterintelligence activities that the restriction or elimination of 
the right to retain title to any subject invention is necessary to 
protect the security to such activities; or
    (4) When the funding agreement includes the operation of the 
government-owned, contractor-operated facility of the Department of 
Energy primarily dedicated to that Department's naval nuclear propulsion 
or weapons related programs and all funding agreement limitations under 
this subparagraph on the contractor's right to elect title to a subject 
invention are limited to inventions occurring under the above two 
programs.
    (b) When an agency exercises the exceptions at Sec. 401.3(a)(2) or 
(3), it shall use the standard clause at Sec. 401.14(a) with only such 
modifications as are necessary to address the exceptional circumstances 
or concerns which led to the use of the exception. For example, if the 
justification relates to a particular field of use or market, the clause 
might be modified along lines similar to those described in 
Sec. 401.14(b). In any event, the clause should provide the contractor 
with an opportunity to receive greater rights in accordance with the 
procedures at Sec. 401.15. When an agency justifies and exercises the 
exception at Sec. 401.3(a)(2) and uses an alternative provision in the 
funding agreement on the basis of national security, the provision shall 
provide the contractor with the right to elect ownership to any 
invention made under such funding agreement as provided by the Standard 
Patent Rights Clause found at Sec. 401.14(a) if the invention is not 
classified by the agency within six months of the date it is reported to 
the agency, or within the same time period the Department of Energy does 
not, as authorized by regulation, law or Executive order or implementing 
regulations thereto, prohibit unauthorized dissemination of the 
invention. Contracts in support of DOE's naval nuclear propulsion 
program are exempted from this paragraph.
    (c) When the Department of Energy exercises the exception at 
Sec. 401.3(a)(4), it shall use the clause prescribed at Sec. 401.14(b) 
or substitute thereto with such modification and tailoring as authorized 
or required elsewhere in this part.
    (d) When a funding agreement involves a series of separate task 
orders, an agency may apply the exceptions at Sec. 401.3(a)(2) or (3) to 
individual task orders, and it may structure the contract so that 
modified patent rights provisions will apply to the task order even 
though the clauses at either Sec. 401.14(a) or (b) are applicable to the 
remainder of the work. Agencies are authorized to negotiate such 
modified provisions with respect to task orders added to a funding 
agreement after its initial award.
    (e) Before utilizing any of the exceptions in Sec. 401.3(a) of this 
section, the agency shall prepare a written determination, including a 
statement of facts supporting the determination, that the conditions 
identified in the exception exist. A separate statement of facts shall 
be prepared for each exceptional circumstances determination, except 
that in appropriate cases a single determination may apply to both a 
funding agreement and any subcontracts issued under it or to any funding 
agreement to which such an exception is applicable. In cases when 
Sec. 401.3(a)(2) is used, the determination shall also include an 
analysis justifying the determination. This analysis should address with 
specificity how the alternate provisions will better achieve the 
objectives set forth in 35 U.S.C. 200. A copy of each determination, 
statement of facts, and, if applicable, analysis shall be promptly 
provided to the contractor or prospective contractor along with a 
notification to the contractor or prospective contractor of its rights 
to appeal the determination of the exception under 35 U.S.C. 202(b)(4) 
and Sec. 401.4 of this part.
    (f) Except for determinations under Sec. 401.3(a)(3), the agency 
shall also provide copies of each determination, statement of fact, and 
analysis to the Secretary. These shall be sent within 30 days after the 
award of the funding agreement to which they pertain. Copies shall also 
be sent to the Chief Counsel for Advocacy of the Small Business 
Administration if the funding agreement is with a small business firm. 
If the Secretary of Commerce believes

[[Page 531]]

that any individual determination or pattern of determinations is 
contrary to the policies and objectives of this chapter or otherwise not 
in conformance with this chapter, the Secretary shall so advise the head 
of the agency concerned and the Administrator of the Office of Federal 
Procurement Policy and recommend corrective actions.
    (g) To assist the Comptroller General of the United States to 
accomplish his or her responsibilities under 35 U.S.C. 202, each Federal 
agency that enters into any funding agreements with nonprofit 
organizations or small business firms shall accumulate and, at the 
request of the Comptroller General, provide the Comptroller General or 
his or her duly authorized representative the total number of prime 
agreements entered into with small business firms or nonprofit 
organizations that contain the patent rights clause in this part or 
under OMB Circular A-124 for each fiscal year beginning with October 1, 
1982.
    (h) To qualify for the standard clause, a prospective contractor may 
be required by an agency to certify that it is either a small business 
firm or a nonprofit organization. If the agency has reason to question 
the status of the prospective contractor as a small business firm, it 
may file a protest in accordance with 13 CFR 121.9. If it questions 
nonprofit status, it may require the prospective contractor to furnish 
evidence to establish its status as a nonprofit organization.



Sec. 401.4  Contractor appeals of exceptions.

    (a) In accordance with 35 U.S.C. 202(b)(4) a contractor has the 
right to an administrative review of a determination to use one of the 
exceptions at Sec. 401.3(a) (1) through (4) if the contractor believes 
that a determination is either contrary to the policies and objectives 
of this chapter or constitutes an abuse of discretion by the agency. 
Paragraph (b) of this section specifies the procedures to be followed by 
contractors and agencies in such cases. The assertion of such a claim by 
the contractor shall not be used as a basis for withholding or delaying 
the award of a funding agreement or for suspending performance under an 
award. Pending final resolution of the claim the contract may be issued 
with the patent rights provision proposed by the agency; however, should 
the final decision be in favor of the contractor, the funding agreement 
will be amended accordingly and the amendment made retroactive to the 
effective date of the funding agreement.
    (b)(1) A contractor may appeal a determination by providing written 
notice to the agency within 30 working days from the time it receives a 
copy of the agency's determination, or within such longer time as an 
agency may specify in its regulations. The contractor's notice should 
specifically identify the basis for the appeal.
    (2) The appeal shall be decided by the head of the agency or by his/
her designee who is at a level above the person who made the 
determination. If the notice raises a genuine dispute over the material 
facts, the head of the agency or the designee shall undertake, or refer 
the matter for, fact-finding.
    (3) Fact-finding shall be conducted in accordance with procedures 
established by the agency. Such procedures shall be as informal as 
practicable and be consistent with principles of fundamental fairness. 
The procedures should afford the contractor the opportunity to appear 
with counsel, submit documentary evidence, present witnesses and 
confront such persons as the agency may rely upon. A transcribed record 
shall be made and shall be available at cost to the contractor upon 
request. The requirement for a transcribed record may be waived by 
mutual agreement of the contractor and the agency.
    (4) The official conducting the fact-finding shall prepare or adopt 
written findings of fact and transmit them to the head of the agency or 
designee promptly after the conclusion of the fact-finding proceeding 
along with a recommended decision. A copy of the findings of fact and 
recommended decision shall be sent to the contractor by registered or 
certified mail.
    (5) Fact-finding should be completed within 45 working days from the 
date the agency receives the contractor's written notice.
    (6) When fact-finding has been conducted, the head of the agency or 
designee shall base his or her decision on

[[Page 532]]

the facts found, together with any argument submitted by the contractor, 
agency officials or any other information in the administrative record. 
In cases referred for fact-finding, the agency head or the designee may 
reject only those facts that have been found to be clearly erroneous, 
but must explicitly state the rejection and indicate the basis for the 
contrary finding. The agency head or the designee may hear oral 
arguments after fact-finding provided that the contractor or 
contractor's attorney or representative is present and given an 
opportunity to make arguments and rebuttal. The decision of the agency 
head or the designee shall be in writing and, if it is unfavorable to 
the contractor shall include an explanation of the basis of the 
decision. The decision of the agency or designee shall be made within 30 
working days after fact-finding or, if there was no fact-finding, within 
45 working days from the date the agency received the contractor's 
written notice. A contractor adversely affected by a determination under 
this section may, at any time within sixty days after the determination 
is issued, file a petition in the United States Claims Court, which 
shall have jurisdiction to determine the appeal on the record and to 
affirm, reverse, remand, or modify as appropriate, the determination of 
the Federal agency.



Sec. 401.5  Modification and tailoring of clauses.

    (a) Agencies should complete the blank in paragraph (g)(2) of the 
clauses at Sec. 401.14 in accordance with their own or applicable 
government-wide regulations such as the Federal Acquisition Regulation. 
In grants and cooperative agreements (and in contracts, if not 
inconsistent with the Federal Acquisition Regulation) agencies wishing 
to apply the same clause to all subcontractors as is applied to the 
contractor may delete paragraph (g)(2) of the clause and delete the 
words ``to be performed by a small business firm or domestic nonprofit 
organization'' from paragraph (g)(1). Also, if the funding agreement is 
a grant or cooperative agreement, paragraph (g)(3) may be deleted. When 
either paragraph (g)(2) or paragraphs (g) (2) and (3) are deleted, the 
remaining paragraph or paragraphs should be renumbered appropriately.
    (b) Agencies should complete paragraph (l), ``Communications'', at 
the end of the clauses at Sec. 401.14 by designating a central point of 
contact for communications on matters relating to the clause. Additional 
instructions on communications may also be included in paragraph (l).
    (c) Agencies may replace the italicized words and phrases in the 
clauses at Sec. 401.14 with those appropriate to the particular funding 
agreement. For example, ``contracts'' could be replaced by ``grant,'' 
``contractor'' by ``grantee,'' and ``contracting officer'' by ``grants 
officer.'' Depending on its use, ``Federal agency'' can be replaced 
either by the identification of the agency or by the specification of 
the particular office or official within the agency.
    (d) When the agency head or duly authorized designee determines at 
the time of contracting with a small business firm or nonprofit 
organization that it would be in the national interest to acquire the 
right to sublicense foreign governments or international organizations 
pursuant to any existing treaty or international agreement, a sentence 
may be added at the end of paragraph (b) of the clause at Sec. 401.14 as 
follows:

    This license will include the right of the government to sublicense 
foreign governments, their nationals, and international organizations, 
pursuant to the following treaties or international agreements:

----------------.


The blank above should be completed with the names of applicable 
existing treaties or international agreements, agreements of 
cooperation, memoranda of understanding, or similar arrangements, 
including military agreements relating to weapons development and 
production. The above language is not intended to apply to treaties or 
other agreements that are in effect on the date of the award but which 
are not listed. Alternatively, agencies may use substantially similar 
language relating the government's rights to specific treaties or other 
agreements identified elsewhere in the funding agreement. The language 
may also be modified to

[[Page 533]]

make clear that the rights granted to the foreign government, and its 
nationals or an international organization may be for additional rights 
beyond a license or sublicense if so required by the applicable treaty 
or international agreement. For example, in some exclusive licenses or 
even the assignment of title in the foreign country involved might be 
required. Agencies may also modify the language above to provide for the 
direct licensing by the contractor of the foreign government or 
international organization.
    (e) If the funding agreement involves performance over an extended 
period of time, such as the typical funding agreement for the operation 
of a government-owned facility, the following language may also be 
added:

    The agency reserves the right to unilaterally amend this funding 
agreement to identify specific treaties or international agreements 
entered into or to be entered into by the government after the effective 
date of this funding agreement and effectuate those license or other 
rights which are necessary for the government to meet its obligations to 
foreign governments, their nationals and international organizations 
under such treaties or international agreements with respect to subject 
inventions made after the date of the amendment.

    (f) Agencies may add additional subparagraphs to paragraph (f) of 
the clauses at Sec. 401.14 to require the contractor to do one or more 
of the following:
    (1) Provide a report prior to the close-out of a funding agreement 
listing all subject inventions or stating that there were none.
    (2) Provide, upon request, the filing date, patent application 
number and title; a copy of the patent application; and patent number 
and issue date for any subject invention in any country in which the 
contractor has applied for a patent.
    (3) Provide periodic (but no more frequently than annual) listings 
of all subject inventions which were disclosed to the agency during the 
period covered by the report.
    (g) If the contract is with a nonprofit organization and is for the 
operation of a government-owned, contractor-operated facility, the 
following will be substituted for paragraph (k)(3) of the clause at 
Sec. 401.14(a):

    (3) After payment of patenting costs, licensing costs, payments to 
inventors, and other expenses incidental to the administration of 
subject inventions, the balance of any royalties or income earned and 
retained by the contractor during any fiscal year on subject inventions 
under this or any successor contract containing the same requirement, up 
to any amount equal to five percent of the budget of the facility for 
that fiscal year, shall be used by the contractor for scientific 
research, development, and education consistent with the research and 
development mission and objectives of the facility, including activities 
that increase the licensing potential of other inventions of the 
facility. If the balance exceeds five percent, 75 percent of the excess 
above five percent shall be paid by the contractor to the Treasury of 
the United States and the remaining 25 percent shall be used by the 
contractor only for the same purposes as described above. To the extent 
it provides the most effective technology transfer, the licensing of 
subject inventions shall be administered by contractor employees on 
location at the facility.

    (h) If the contract is for the operation of a government-owned 
facility, agencies may add the following at the end of paragraph (f) of 
the clause at Sec. 401.14(a):

    (5) The contractor shall establish and maintain active and effective 
procedures to ensure that subject inventions are promptly identified and 
timely disclosed and shall submit a description of the procedures to the 
contracting officer so that the contracting officer may evaluate and 
determine their effectiveness.

[52 FR 8554, Mar. 18, 1987, as amended at 60 FR 41812, Aug. 14, 1995]



Sec. 401.6  Exercise of march-in rights.

    (a) The following procedures shall govern the exercise of the march-
in rights of the agencies set forth in 35 U.S.C. 203 and paragraph (j) 
of the clause at Sec. 401.14.
    (b) Whenever an agency receives information that it believes might 
warrant the exercise of march-in rights, before initiating any march-in 
proceeding, it shall notify the contractor in writing of the information 
and request informal written or oral comments from the contractor as 
well as information relevant to the matter. In the absence of any 
comments from the contractor within 30 days, the agency may, at its 
discretion, proceed with the procedures below. If a comment is received 
within 30 days, or later if the

[[Page 534]]

agency has not initiated the procedures below, then the agency shall, 
within 60 days after it receives the comment, either initiate the 
procedures below or notify the contractor, in writing, that it will not 
pursue march-in rights on the basis of the available information.
    (c) A march-in proceeding shall be initiated by the issuance of a 
written notice by the agency to the contractor and its assignee or 
exclusive licensee, as applicable and if known to the agency, stating 
that the agency is considering the exercise of march-in rights. The 
notice shall state the reasons for the proposed march-in in terms 
sufficient to put the contractor on notice of the facts upon which the 
action would be based and shall specify the field or fields of use in 
which the agency is considering requiring licensing. The notice shall 
advise the contractor (assignee or exclusive licensee) of its rights, as 
set forth in this section and in any supplemental agency regulations. 
The determination to exercise march-in rights shall be made by the head 
of the agency or his or her designee.
    (d) Within 30 days after the receipt of the written notice of march-
in, the contractor (assignee or exclusive licensee) may submit in 
person, in writing, or through a representative, information or argument 
in opposition to the proposed march-in, including any additional 
specific information which raises a genuine dispute over the material 
facts upon which the march-in is based. If the information presented 
raises a genuine dispute over the material facts, the head of the agency 
or designee shall undertake or refer the matter to another official for 
fact-finding.
    (e) Fact-finding shall be conducted in accordance with the 
procedures established by the agency. Such procedures shall be as 
informal as practicable and be consistent with principles of fundamental 
fairness. The procedures should afford the contractor the opportunity to 
appear with counsel, submit documentary evidence, present witnesses and 
confront such persons as the agency may present. A transcribed record 
shall be made and shall be available at cost to the contractor upon 
request. The requirement for a transcribed record may be waived by 
mutual agreement of the contractor and the agency. Any portion of the 
march-in proceeding, including a fact-finding hearing that involves 
testimony or evidence relating to the utilization or efforts at 
obtaining utilization that are being made by the contractor, its 
assignee, or licensees shall be closed to the public, including 
potential licensees. In accordance with 35 U.S.C. 202(c)(5), agencies 
shall not disclose any such information obtained during a march-in 
proceeding to persons outside the government except when such release is 
authorized by the contractor (assignee or licensee).
    (f) The official conducting the fact-finding shall prepare or adopt 
written findings of fact and transmit them to the head of the agency or 
designee promptly after the conclusion of the fact-finding proceeding 
along with a recommended determination. A copy of the findings of fact 
shall be sent to the contractor (assignee or exclusive licensee) by 
registered or certified mail. The contractor (assignee or exclusive 
licensee) and agency representatives will be given 30 days to submit 
written arguments to the head of the agency or designee; and, upon 
request by the contractor oral arguments will be held before the agency 
head or designee that will make the final determination.
    (g) In cases in which fact-finding has been conducted, the head of 
the agency or designee shall base his or her determination on the facts 
found, together with any other information and written or oral arguments 
submitted by the contractor (assignee or exclusive licensee) and agency 
representatives, and any other information in the administrative record. 
The consistency of the exercise of march-in rights with the policy and 
objectives of 35 U.S.C. 200 shall also be considered. In cases referred 
for fact-finding, the head of the agency or designee may reject only 
those facts that have been found to be clearly erroneous, but must 
explicitly state the rejection and indicate the basis for the contrary 
finding. Written notice of the determination whether march-in rights 
will be exercised shall be made by the head of the agency or designee 
and sent to the contractor (assignee of exclusive licensee) by certified 
or registered mail within 90 days

[[Page 535]]

after the completion of fact-finding or 90 days after oral arguments, 
whichever is later, or the proceedings will be deemed to have been 
terminated and thereafter no march-in based on the facts and reasons 
upon which the proceeding was initiated may be exercised.
    (h) An agency may, at any time, terminate a march-in proceeding if 
it is satisfied that it does not wish to exercise march-in rights.
    (i) The procedures of this part shall also apply to the exercise of 
march-in rights against inventors receiving title to subject inventions 
under 35 U.S.C. 202(d) and, for that purpose, the term ``contractor'' as 
used in this section shall be deemed to include the inventor.
    (j) An agency determination unfavorable to the contractor (assignee 
or exclusive licensee) shall be held in abeyance pending the exhaustion 
of appeals or petitions filed under 35 U.S.C. 203(2).
    (k) For purposes of this section the term exclusive licensee 
includes a partially exclusive licensee.
    (l) Agencies are authorized to issue supplemental procedures not 
inconsistent with this part for the conduct of march-in proceedings.



Sec. 401.7  Small business preference.

    (a) Paragraph (k)(4) of the clauses at Sec. 401.14 Implements the 
small business preference requirement of 35 U.S.C. 202(c)(7)(D). 
Contractors are expected to use efforts that are reasonable under the 
circumstances to attract small business licensees. They are also 
expected to give small business firms that meet the standard outlined in 
the clause a preference over other applicants for licenses. What 
constitutes reasonable efforts to attract small business licensees will 
vary with the circumstances and the nature, duration, and expense of 
efforts needed to bring the invention to the market. Paragraph (k)(4) is 
not intended, for example, to prevent nonprofit organizations from 
providing larger firms with a right of first refusal or other options in 
inventions that relate to research being supported under long-term or 
other arrangements with larger companies. Under such circumstances it 
would not be resonable to seek and to give a preference to small 
business licensees.
    (b) Small business firms that believe a nonprofit organization is 
not meeting its obligations under the clause may report their concerns 
to the Secretary. To the extent deemed appropriate, the Secretary will 
undertake informal investigation of the concern, and, if appropriate, 
enter into discussions or negotiations with the nonprofit organization 
to the end of improving its efforts in meeting its obligations under the 
clause. However, in no event will the Secretary intervene in ongoing 
negotiations or contractor decisions concerning the licensing of a 
specific subject invention. All the above investigations, discussions, 
and negotiations of the Secretary will be in coordination with other 
interested agencies, including the Small Business Administration; and in 
the case of a contract for the operation of a government-owned, 
contractor operated research or production facility, the Secretary will 
coordinate with the agency responsible for the facility prior to any 
discussions or negotiations with the contractor.



401.8  Reporting on utilization of subject inventions.

    (a) Paragraph (h) of the clauses at Sec. 401.14 and its counterpart 
in the clause at Attachment A to OMB Circular A-124 provides that 
agencies have the right to receive periodic reports from the contractor 
on utilization of inventions. Agencies exercising this right should 
accept such information, to the extent feasible, in the format that the 
contractor normally prepares it for its own internal purposes. The 
prescription of forms should be avoided. However, any forms or standard 
questionnaires that are adopted by an agency for this purpose must 
comply with the requirements of the Paperwork Reduction Act. Copies 
shall be sent to the Secretary.
    (b) In accordance with 35 U.S.C. 202(c)(5) and the terms of the 
clauses at Sec. 401.14, agencies shall not disclose such information to 
persons outside the government. Contractors will continue to provide 
confidential markings to help prevent inadvertent release outside the 
agency.

[[Page 536]]



Sec. 401.9  Retention of rights by contractor employee inventor.

    Agencies which allow an employee/inventor of the contractor to 
retain rights to a subject invention made under a funding agreement with 
a small business firm or nonprofit organization contractor, as 
authorized by 35 U.S.C. 202(d), will impose upon the inventor at least 
those conditions that would apply to a small business firm contractor 
under paragraphs (d)(1) and (3); (f)(4); (h); (i); and (j) of the clause 
at Sec. 401.14(a).



Sec. 401.10  Government assignment to contractor of rights in invention of government employee.

    In any case when a Federal employee is a co-inventor of any 
invention made under a funding agreement with a small business firm or 
nonprofit organization and the Federal agency employing such co-inventor 
transfers or reassigns the right it has acquired in the subject 
invention from its employee to the contractor as authorized by 35 U.S.C. 
202(e), the assignment will be made subject to the same conditions as 
apply to the contractor under the patent rights clause of its funding 
agreement. Agencies may add additional conditions as long as they are 
consistent with 35 U.S.C. 201-206.



Sec. 401.11  Appeals.

    (a) As used in this section, the term standard clause means the 
clause at Sec. 401.14 of this part and the clauses previously prescribed 
by either OMB Circular A-124 or OMB Bulletin 81-22.
    (b) The agency official initially authorized to take any of the 
following actions shall provide the contractor with a written statement 
of the basis for his or her action at the time the action is taken, 
including any relevant facts that were relied upon in taking the action.
    (1) A refusal to grant an extension under paragraph (c)(4) of the 
standard clauses.
    (2) A request for a conveyance of title under paragraph (d) of the 
standard clauses.
    (3) A refusal to grant a waiver under paragraph (i) of the standard 
clauses.
    (4) A refusal to approve an assignment under paragraph (k)(1) of the 
standard clauses.
    (5) A refusal to grant an extension of the exclusive license period 
under paragraph (k)(2) of the clauses prescribed by either OMB Circular 
A-124 or OMB Bulletin 81-22.
    (c) Each agency shall establish and publish procedures under which 
any of the agency actions listed in paragraph (b) of this section may be 
appealed to the head of the agency or designee. Review at this level 
shall consider both the factual and legal basis for the actions and its 
consistency with the policy and objectives of 35 U.S.C. 200-206.
    (d) Appeals procedures established under paragraph (c) of this 
section shall include administrative due process procedures and 
standards for fact-finding at least comparable to those set forth in 
Sec. 401.6 (e) through (g) whenever there is a dispute as to the factual 
basis for an agency request for a conveyance of title under paragraph 
(d) of the standard clause, including any dispute as to whether or not 
an invention is a subject invention.
    (e) To the extent that any of the actions described in paragraph (b) 
of this section are subject to appeal under the Contract Dispute Act, 
the procedures under the Act will satisfy the requirements of paragraphs 
(c) and (d) of this section.



Sec. 401.12  Licensing of background patent rights to third parties.

    (a) A funding agreement with a small business firm or a domestic 
nonprofit organization will not contain a provision allowing a Federal 
agency to require the licensing to third parties of inventions owned by 
the contractor that are not subject inventions unless such provision has 
been approved by the agency head and a written justification has been 
signed by the agency head. Any such provision will clearly state whether 
the licensing may be required in connection with the practice of a 
subject invention, a specifically identified work object, or both. The 
agency head may not delegate the authority to approve such provisions or 
to sign the justification required for such provisions.

[[Page 537]]

    (b) A Federal agency will not require the licensing of third parties 
under any such provision unless the agency head determines that the use 
of the invention by others is necessary for the practice of a subject 
invention or for the use of a work object of the funding agreement and 
that such action is necessary to achieve practical application of the 
subject invention or work object. Any such determination will be on the 
record after an opportunity for an agency hearing. The contractor shall 
be given prompt notification of the determination by certified or 
registered mail. Any action commenced for judicial review of such 
determination shall be brought within sixty days after notification of 
such determination.



Sec. 401.13  Administration of patent rights clauses.

    (a) In the event a subject invention is made under funding 
agreements of more than one agency, at the request of the contractor or 
on their own initiative the agencies shall designate one agency as 
responsible for administration of the rights of the government in the 
invention.
    (b) Agencies shall promptly grant, unless there is a significant 
reason not to, a request by a nonprofit organization under paragraph 
(k)(2) of the clauses prescribed by either OMB Circular A-124 or OMB 
Bulletin 81-22 inasmuch as 35 U.S.C. 202(c)(7) has since been amended to 
eliminate the limitation on the duration of exclusive licenses. 
Similarly, unless there is a significant reason not to, agencies shall 
promptly approve an assignment by a nonprofit organization to an 
organization which has as one of its primary functions the management of 
inventions when a request for approval has been necessitated under 
paragraph (k)(1) of the clauses prescribed by either OMB Circular A-124 
or OMB Bulletin 81-22 because the patent management organization is 
engaged in or holds a substantial interest in other organizations 
engaged in the manfacture or sale of products or the use of processes 
that might utilize the invention or be in competition with embodiments 
of the invention. As amended, 35 U.S.C. 202(c)(7) no longer contains 
this limitation. The policy of this subsection should also be followed 
in connection with similar approvals that may be required under 
Institutional Patent Agreements, other patent rights clauses, or waivers 
that predate Chapter 18 of Title 35, United States Code.
    (c) The President's Patent Policy Memorandum of February 18, 1983, 
states that agencies should protect the confidentiality of invention 
disclosure, patent applications, and utilization reports required in 
performance or in consequence of awards to the extent permitted by 35 
U.S.C. 205 or other applicable laws. The following requirements should 
be followed for funding agreements covered by and predating this part 
401.
    (1) To the extent authorized by 35 U.S.C. 205, agencies shall not 
disclose to third parties pursuant to requests under the Freedom of 
Information Act (FOIA) any information disclosing a subject invention 
for a reasonable time in order for a patent application to be filed. 
With respect to subject inventions of contractors that are small 
business firms or nonprofit organizations, a reasonable time shall be 
the time during which an initial patent application may be filed under 
paragraph (c) of the standard clause found at Sec. 401.14(a) or such 
other clause may be used in the funding agreement. However, an agency 
may disclose such subject inventions under the FOIA, at its discretion, 
after a contractor has elected not to retain title or after the time in 
which the contractor is required to make an election if the contractor 
has not made an election within that time. Similarly, an agency may 
honor a FOIA request at its discretion if it finds that the same 
information has previously been published by the inventor, contractor, 
or otherwise. If the agency plans to file itself when the contractor has 
not elected title, it may, of course, continue to avail itself of the 
authority of 35 U.S.C. 205.
    (2) In accordance with 35 U.S.C. 205, agencies shall not disclose or 
release for a period of 18 months from the filing date of the patent 
application to third parties pursuant to requests under the Freedom of 
Information Act, or otherwise, copies of any document which the agency 
obtained under this clause which is part of an application

[[Page 538]]

for patent with the U.S. Patent and Trademark Office or any foreign 
patent office filed by the contractor (or its assignees, licensees, or 
employees) on a subject invention to which the contractor has elected to 
retain title. This prohibition does not extend to disclosure to other 
government agencies or contractors of government agencies under an 
obligation to maintain such information in confidence.
    (3) A number of agencies have policies to encourage public 
dissemination of the results of work supported by the agency through 
publication in government or other publications of technical reports of 
contractors or others. In recognition of the fact that such publication, 
if it included descriptions of a subject invention could create bars to 
obtaining patent protection, it is the policy of the executive branch 
that agencies will not include in such publication programs copies of 
disclosures of inventions submitted by small business firms or nonprofit 
organizations, pursuant to paragraph (c) of the standard clause found at 
Sec. 401.14(a), except that under the same circumstances under which 
agencies are authorized to release such information pursuant to FOIA 
requests under paragraph (c)(1) of this section, agencies may publish 
such disclosures.
    (4) Nothing in this paragraph is intended to preclude agencies from 
including in the publication activities described in the first sentence 
of paragraph (c)(3), the publication of materials describing a subject 
invention to the extent such materials were provided as part of a 
technical report or other submission of the contractor which were 
submitted independently of the requirements of the patent rights 
provisions of the contract. However, if a small business firm or 
nonprofit organization notifies the agency that a particular report or 
other submission contains a disclosure of a subject invention to which 
it has elected title or may elect title, the agency shall use reasonable 
efforts to restrict its publication of the material for six months from 
date of its receipt of the report or submission or, if earlier, until 
the contractor has filed an initial patent application. Agencies, of 
course, retain the discretion to delay publication for additional 
periods of time.
    (5) Nothing in this paragraph is intended to limit the authority of 
agencies provided in 35 U.S.C. 205 in circumstances not specifically 
described in this paragraph.

[52 FR 8554, Mar. 18, 1987, as amended at 60 FR 41812, Aug. 14, 1995]



Sec. 401.14  Standard patent rights clauses.

    (a) The following is the standard patent rights clause to be used as 
specified in Sec. 401.3(a).

    Patent Rights (Small Business Firms and Nonprofit Organizations)

                             (a) Definitions

    (1) Invention means any invention or discovery which is or may be 
patentable or otherwise protectable under Title 35 of the United States 
Code, or any novel variety of plant which is or may be protected under 
the Plant Variety Protection Act (7 U.S.C. 2321 et seq.).
    (2) Subject invention means any invention of the contractor 
conceived or first actually reduced to practice in the performance of 
work under this contract, provided that in the case of a variety of 
plant, the date of determination (as defined in section 41(d) of the 
Plant Variety Protection Act, 7 U.S.C. 2401(d)) must also occur during 
the period of contract performance.
    (3) Practical Application means to manufacture in the case of a 
composition or product, to practice in the case of a process or method, 
or to operate in the case of a machine or system; and, in each case, 
under such conditions as to establish that the invention is being 
utilized and that its benefits are, to the extent permitted by law or 
government regulations, available to the public on reasonable terms.
    (4) Made when used in relation to any invention means the conception 
or first actual reduction to practice of such invention.
    (5) Small Business Firm means a small business concern as defined at 
section 2 of Pub. L. 85-536 (15 U.S.C. 632) and implementing regulations 
of the Administrator of the Small Business Administration. For the 
purpose of this clause, the size standards for small business concerns 
involved in government procurement and subcontracting at 13 CFR 121.3-8 
and 13 CFR 121.3-12, respectively, will be used.
    (6) Nonprofit Organization means a university or other institution 
of higher education or an organization of the type described in section 
501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c) and 
exempt from taxation under section 501(a) of the Internal

[[Page 539]]

Revenue Code (25 U.S.C. 501(a)) or any nonprofit scientific or 
educational organization qualified under a state nonprofit organization 
statute.

                   (b) Allocation of Principal Rights

    The Contractor may retain the entire right, title, and interest 
throughout the world to each subject invention subject to the provisions 
of this clause and 35 U.S.C. 203. With respect to any subject invention 
in which the Contractor retains title, the Federal government shall have 
a nonexclusive, nontransferable, irrevocable, paid-up license to 
practice or have practiced for or on behalf of the United States the 
subject invention throughout the world.

    (c) Invention Disclosure, Election of Title and Filing of Patent 
                        Application by Contractor

    (1) The contractor will disclose each subject invention to the 
Federal Agency within two months after the inventor discloses it in 
writing to contractor personnel responsible for patent matters. The 
disclosure to the agency shall be in the form of a written report and 
shall identify the contract under which the invention was made and the 
inventor(s). It shall be sufficiently complete in technical detail to 
convey a clear understanding to the extent known at the time of the 
disclosure, of the nature, purpose, operation, and the physical, 
chemical, biological or electrical characteristics of the invention. The 
disclosure shall also identify any publication, on sale or public use of 
the invention and whether a manuscript describing the invention has been 
submitted for publication and, if so, whether it has been accepted for 
publication at the time of disclosure. In addition, after disclosure to 
the agency, the Contractor will promptly notify the agency of the 
acceptance of any manuscript describing the invention for publication or 
of any on sale or public use planned by the contractor.
    (2) The Contractor will elect in writing whether or not to retain 
title to any such invention by notifying the Federal agency within two 
years of disclosure to the Federal agency. However, in any case where 
publication, on sale or public use has initiated the one year statutory 
period wherein valid patent protection can still be obtained in the 
United States, the period for election of title may be shortened by the 
agency to a date that is no more than 60 days prior to the end of the 
statutory period.
    (3) The contractor will file its initial patent application on a 
subject invention to which it elects to retain title within one year 
after election of title or, if earlier, prior to the end of any 
statutory period wherein valid patent protection can be obtained in the 
United States after a publication, on sale, or public use. The 
contractor will file patent applications in additional countries or 
international patent offices within either ten months of the 
corresponding initial patent application or six months from the date 
permission is granted by the Commissioner of Patents and Trademarks to 
file foreign patent applications where such filing has been prohibited 
by a Secrecy Order.
    (4) Requests for extension of the time for disclosure, election, and 
filing under subparagraphs (1), (2), and (3) may, at the discretion of 
the agency, be granted.

           (d) Conditions When the Government May Obtain Title

    The contractor will convey to the Federal agency, upon written 
request, title to any subject invention--
    (1) If the contractor fails to disclose or elect title to the 
subject invention within the times specified in (c), above, or elects 
not to retain title; provided that the agency may only request title 
within 60 days after learning of the failure of the contractor to 
disclose or elect within the specified times.
    (2) In those countries in which the contractor fails to file patent 
applications within the times specified in (c) above; provided, however, 
that if the contractor has filed a patent application in a country after 
the times specified in (c) above, but prior to its receipt of the 
written request of the Federal agency, the contractor shall continue to 
retain title in that country.
    (3) In any country in which the contractor decides not to continue 
the prosecution of any application for, to pay the maintenance fees on, 
or defend in reexamination or opposition proceeding on, a patent on a 
subject invention.

(e) Minimum Rights to Contractor and Protection of the Contractor Right 
                                 to File

    (1) The contractor will retain a nonexclusive royalty-free license 
throughout the world in each subject invention to which the Government 
obtains title, except if the contractor fails to disclose the invention 
within the times specified in (c), above. The contractor's license 
extends to its domestic subsidiary and affiliates, if any, within the 
corporate structure of which the contractor is a party and includes the 
right to grant sublicenses of the same scope to the extent the 
contractor was legally obligated to do so at the time the contract was 
awarded. The license is transferable only with the approval of the 
Federal agency except when transferred to the sucessor of that party of 
the contractor's business to which the invention pertains.
    (2) The contractor's domestic license may be revoked or modified by 
the funding Federal agency to the extent necessary to achieve 
expeditious practical application of

[[Page 540]]

the subject invention pursuant to an application for an exclusive 
license submitted in accordance with applicable provisions at 37 CFR 
part 404 and agency licensing regulations (if any). This license will 
not be revoked in that field of use or the geographical areas in which 
the contractor has achieved practical application and continues to make 
the benefits of the invention reasonably accessible to the public. The 
license in any foreign country may be revoked or modified at the 
discretion of the funding Federal agency to the extent the contractor, 
its licensees, or the domestic subsidiaries or affiliates have failed to 
achieve practical application in that foreign country.
    (3) Before revocation or modification of the license, the funding 
Federal agency will furnish the contractor a written notice of its 
intention to revoke or modify the license, and the contractor will be 
allowed thirty days (or such other time as may be authorized by the 
funding Federal agency for good cause shown by the contractor) after the 
notice to show cause why the license should not be revoked or modified. 
The contractor has the right to appeal, in accordance with applicable 
regulations in 37 CFR part 404 and agency regulations (if any) 
concerning the licensing of Government-owned inventions, any decision 
concerning the revocation or modification of the license.

       (f) Contractor Action to Protect the Government's Interest

    (1) The contractor agrees to execute or to have executed and 
promptly deliver to the Federal agency all instruments necessary to (i) 
establish or confirm the rights the Government has throughout the world 
in those subject inventions to which the contractor elects to retain 
title, and (ii) convey title to the Federal agency when requested under 
paragraph (d) above and to enable the government to obtain patent 
protection throughout the world in that subject invention.
    (2) The contractor agrees to require, by written agreement, its 
employees, other than clerical and nontechnical employees, to disclose 
promptly in writing to personnel identified as responsible for the 
administration of patent matters and in a format suggested by the 
contractor each subject invention made under contract in order that the 
contractor can comply with the disclosure provisions of paragraph (c), 
above, and to execute all papers necessary to file patent applications 
on subject inventions and to establish the government's rights in the 
subject inventions. This disclosure format should require, as a minimum, 
the information required by (c)(1), above. The contractor shall instruct 
such employees through employee agreements or other suitable educational 
programs on the importance of reporting inventions in sufficient time to 
permit the filing of patent applications prior to U.S. or foreign 
statutory bars.
    (3) The contractor will notify the Federal agency of any decisions 
not to continue the prosecution of a patent application, pay maintenance 
fees, or defend in a reexamination or opposition proceeding on a patent, 
in any country, not less than thirty days before the expiration of the 
response period required by the relevant patent office.
    (4) The contractor agrees to include, within the specification of 
any United States patent applications and any patent issuing thereon 
covering a subject invention, the following statement, ``This invention 
was made with government support under (identify the contract) awarded 
by (identify the Federal agency). The government has certain rights in 
the invention.''

                            (g) Subcontracts

    (1) The contractor will include this clause, suitably modified to 
identify the parties, in all subcontracts, regardless of tier, for 
experimental, developmental or research work to be performed by a small 
business firm or domestic nonprofit organization. The subcontractor will 
retain all rights provided for the contractor in this clause, and the 
contractor will not, as part of the consideration for awarding the 
subcontract, obtain rights in the subcontractor's subject inventions.
    (2) The contractor will include in all other subcontracts, 
regardless of tier, for experimental developmental or research work the 
patent rights clause required by (cite section of agency implementing 
regulations or FAR).
    (3) In the case of subcontracts, at any tier, when the prime award 
with the Federal agency was a contract (but not a grant or cooperative 
agreement), the agency, subcontractor, and the contractor agree that the 
mutual obligations of the parties created by this clause constitute a 
contract between the subcontractor and the Federal agency with respect 
to the matters covered by the clause; provided, however, that nothing in 
this paragraph is intended to confer any jurisdiction under the Contract 
Disputes Act in connection with proceedings under paragraph (j) of this 
clause.

           (h) Reporting on Utilization of Subject Inventions

    The Contractor agrees to submit on request periodic reports no more 
frequently than annually on the utilization of a subject invention or on 
efforts at obtaining such utilization that are being made by the 
contractor or its licensees or assignees. Such reports shall include 
information regarding the status of development, date of first 
commerical sale or use, gross royalties received by the contractor, and 
such other data and information as the agency may reasonably specify. 
The

[[Page 541]]

contractor also agrees to provide additional reports as may be requested 
by the agency in connection with any march-in proceeding undertaken by 
the agency in accordance with paragraph (j) of this clause. As required 
by 35 U.S.C. 202(c)(5), the agency agrees it will not disclose such 
information to persons outside the government without permission of the 
contractor.

                (i) Preference for United States Industry

    Notwithstanding any other provision of this clause, the contractor 
agrees that neither it nor any assignee will grant to any person the 
exclusive right to use or sell any subject inventions in the United 
States unless such person agrees that any products embodying the subject 
invention or produced through the use of the subject invention will be 
manufactured substantially in the United States. However, in individual 
cases, the requirement for such an agreement may be waived by the 
Federal agency upon a showing by the contractor or its assignee that 
reasonable but unsuccessful efforts have been made to grant licenses on 
similar terms to potential licensees that would be likely to manufacture 
substantially in the United States or that under the circumstances 
domestic manufacture is not commerically feasible.

                           (j) March-in Rights

    The contractor agrees that with respect to any subject invention in 
which it has acquired title, the Federal agency has the right in 
accordance with the procedures in 37 CFR 401.6 and any supplemental 
regulations of the agency to require the contractor, an assignee or 
exclusive licensee of a subject invention to grant a nonexclusive, 
partially exclusive, or exclusive license in any field of use to a 
responsible applicant or applicants, upon terms that are reasonable 
under the circumstances, and if the contractor, assignee, or exclusive 
licensee refuses such a request the Federal agency has the right to 
grant such a license itself if the Federal agency determines that:
    (1) Such action is necessary because the contractor or assignee has 
not taken, or is not expected to take within a reasonable time, 
effective steps to achieve practical application of the subject 
invention in such field of use.
    (2) Such action is necessary to alleviate health or safety needs 
which are not reasonably satisfied by the contractor, assignee or their 
licensees;
    (3) Such action is necessary to meet requirements for public use 
specified by Federal regulations and such requirements are not 
reasonably satisfied by the contractor, assignee or licensees; or
    (4) Such action is necessary because the agreement required by 
paragraph (i) of this clause has not been obtained or waived or because 
a licensee of the exclusive right to use or sell any subject invention 
in the United States is in breach of such agreement.

    (k) Special Provisions for Contracts with Nonprofit Organizations

    If the contractor is a nonprofit organization, it agrees that:
    (1) Rights to a subject invention in the United States may not be 
assigned without the approval of the Federal agency, except where such 
assignment is made to an organization which has as one of its primary 
functions the management of inventions, provided that such assignee will 
be subject to the same provisions as the contractor;
    (2) The contractor will share royalties collected on a subject 
invention with the inventor, including Federal employee co-inventors 
(when the agency deems it appropriate) when the subject invention is 
assigned in accordance with 35 U.S.C. 202(e) and 37 CFR 401.10;
    (3) The balance of any royalties or income earned by the contractor 
with respect to subject inventions, after payment of expenses (including 
payments to inventors) incidential to the administration of subject 
inventions, will be utilized for the support of scientific research or 
education; and
    (4) It will make efforts that are reasonable under the circumstances 
to attract licensees of subject invention that are small business firms 
and that it will give a preference to a small business firm when 
licensing a subject invention if the contractor determines that the 
small business firm has a plan or proposal for marketing the invention 
which, if executed, is equally as likely to bring the invention to 
practical application as any plans or proposals from applicants that are 
not small business firms; provided, that the contractor is also 
satisfied that the small business firm has the capability and resources 
to carry out its plan or proposal. The decision whether to give a 
preference in any specific case will be at the discretion of the 
contractor. However, the contractor agrees that the Secretary may review 
the contractor's licensing program and decisions regarding small 
business applicants, and the contractor will negotiate changes to its 
licensing policies, procedures, or practices with the Secretary when the 
Secretary's review discloses that the contractor could take reasonable 
steps to implement more effectively the reqirements of this paragraph 
(k)(4).

                            (l) Communication

    (Complete According to Instructions at 401.5(b))

    (b) When the Department of Energy (DOE) determines to use 
alternative provisions under Sec. 401.3(a)(4), the standard clause at 
Sec. 401.14(a), of this section,

[[Page 542]]

shall be used with the following modifications unless a substitute 
clause is drafted by DOE:
    (1) The title of the clause shall be changed to read as follows: 
Patent Rights to Nonprofit DOE Facility Operators
    (2) Add an ``(A)'' after ``(1)'' in paragraph (c)(1) and add 
subparagraphs (B) and (C) to paragraph (c)(1) as follows:

    (B) If the subject invention occurred under activities funded by the 
naval nuclear propulsion or weapons related programs of DOE, then the 
provisions of this subparagraph (c)(1)(B) will apply in lieu of 
paragraphs (c)(2) and (3). In such cases the contractor agrees to assign 
the government the entire right, title, and interest thereto throughout 
the world in and to the subject invention except to the extent that 
rights are retained by the contractor through a greater rights 
determination or under paragraph (e), below. The contractor, or an 
employee-inventor, with authorization of the contractor, may submit a 
request for greater rights at the time the invention is disclosed or 
within a reasonable time thereafter. DOE will process such a request in 
accordance with procedures at 37 CFR 401.15. Each determination of 
greater rights will be subject to paragraphs (h)-(k) of this clause and 
such additional conditions, if any, deemed to be appropriate by the 
Department of Energy.
    (C) At the time an invention is disclosed in accordance with 
(c)(1)(A) above, or within 90 days thereafter, the contractor will 
submit a written statement as to whether or not the invention occurred 
under a naval nuclear propulsion or weapons-related program of the 
Department of Energy. If this statement is not filed within this time, 
subparagraph (c)(1)(B) will apply in lieu of paragraphs (c)(2) and (3). 
The contractor statement will be deemed conclusive unless, within 60 
days thereafter, the Contracting Officer disagrees in writing, in which 
case the determination of the Contracting Officer will be deemed 
conclusive unless the contractor files a claim under the Contract 
Disputes Act within 60 days after the Contracting Officer's 
determination. Pending resolution of the matter, the invention will be 
subject to subparagraph (c)(1)(B).

    (3) Paragraph (k)(3) of the clause will be modified as prescribed at 
Sec. 401.5(g).



Sec. 401.15  Deferred determinations.

    (a) This section applies to requests for greater rights in subject 
inventions made by contractors when deferred determination provisions 
were included in the funding agreement because one of the exceptions at 
Sec. 401.3(a) was applied, except that the Department of Energy is 
authorized to process deferred determinations either in accordance with 
its waiver regulations or this section. A contractor requesting greater 
rights should include with its request information on its plans and 
intentions to bring the invention to practical application. Within 90 
days after receiving a request and supporting information, or sooner if 
a statutory bar to patenting is imminent, the agency should seek to make 
a determination. In any event, if a bar to patenting is imminent, unless 
the agency plans to file on its own, it shall authorize the contractor 
to file a patent application pending a determination by the agency. Such 
a filing shall normally be at the contractor's own risk and expense. 
However, if the agency subsequently refuses to allow the contractor to 
retain title and elects to proceed with the patent application under 
government ownership, it shall reimburse the contractor for the cost of 
preparing and filing the patent application.
    (b) If the circumstances of concerns which originally led the agency 
to invoke an exception under Sec. 401.3(a) are not applicable to the 
actual subject invention or are no longer valid because of subsequent 
events, the agency should allow the contractor to retain title to the 
invention on the same conditions as would have applied if the standard 
clause at Sec. 401.14(a) had been used originally, unless it has been 
licensed.
    (c) If paragraph (b) is not applicable the agency shall make its 
determination based on an assessment whether its own plans regarding the 
invention will better promote the policies and objectives of 35 U.S.C. 
200 than will contractor ownership of the invention. Moreover, if the 
agency is concerned only about specific uses or applications of the 
invention, it shall consider leaving title in the contractor with 
additional conditions imposed upon the contractor's use of the invention 
for such applications or with expanded government license rights in such 
applications.
    (d) A determination not to allow the contractor to retain title to a 
subject invention or to restrict or condition its title with conditions 
differing from

[[Page 543]]

those in the clause at Sec. 401.14(a), unless made by the head of the 
agency, shall be appealable by the contractor to an agency official at a 
level above the person who made the determination. This appeal shall be 
subject to the procedures applicable to appeals under Sec. 401.11 of 
this part.



Sec. 401.16  Electronic filing.

    Unless otherwise requested or directed by the agency,
    (a) The written report required in (c)(1) of the standard clause in 
Sec. 401.14(a) may be electronically filed;
    (b) The written election required in (c)(2) of the standard clause 
in Sec. 401.14(a) may be electronically filed; and
    (c) The close-out report in (f)(1) and the information identified in 
(f)(2) and (f)(3) of Sec. 401.5 may be electronically filed.

[60 FR 41812, Aug. 14, 1995]



Sec. 401.17  Submissions and inquiries.

    All submissions or inquiries should be directed to Director, 
Technology Competitiveness Staff, Office of Technology Policy, 
Technology Administration, telephone number 202-482-2100, Room H4418, 
U.S. Department of Commerce, Washington, DC 20230.

[60 FR 41812, Aug. 14, 1995]



PART 404--LICENSING OF GOVERNMENT OWNED INVENTIONS--Table of Contents




Sec.
404.1  Scope of part.
404.2  Policy and objective.
404.3  Definitions.
404.4  Authority to grant licenses.
404.5  Restrictions and conditions on all licenses granted under this 
          part.
404.6  Nonexclusive licenses.
404.7  Exclusive and partially exclusive licenses.
404.8  Application for a license.
404.9  Notice to Attorney General.
404.10  Modification and termination of licenses.
404.11  Appeals.
404.12  Protection and administration of inventions.
404.13  Transfer of custody.
404.14  Confidentiality of information.

    Authority: 35 U.S.C. 206 and the delegation of authority by the 
Secretary of Commerce to the Assistant Secretary of Commerce for 
Technology Policy at sec. 3(g) of DOO 10-18.

    Source: 50 FR 9802, Mar. 12, 1985, unless otherwise noted.



Sec. 404.1  Scope of part.

    This part prescribes the terms, conditions, and procedures upon 
which a federally owned invention, other than an invention in the 
custody of the Tennessee Valley Authority, may be licensed. It 
supersedes the regulations at 41 CFR Subpart 101-4.1. This part does not 
affect licenses which (a) were in effect prior to July 1, 1981; (b) may 
exist at the time of the Government's acquisition of title to the 
invention, including those resulting from the allocation of rights to 
inventions made under Government research and development contracts; (c) 
are the result of an authorized exchange of rights in the settlement of 
patent disputes; or (d) are otherwise authorized by law or treaty.



Sec. 404.2  Policy and objective.

    It is the policy and objective of this subpart to use the patent 
system to promote the utilization of inventions arising from federally 
supported research or development.



Sec. 404.3  Definitions.

    (a) Federally owned invention means an invention, plant, or design 
which is covered by a patent, or patent application in the United 
States, or a patent, patent application, plant variety protection, or 
other form of protection, in a foreign country, title to which has been 
assigned to or otherwise vested in the United States Government.
    (b) Federal agency means an executive department, military 
department, Government corporation, or independent establishment, except 
the Tennessee Valley Authority, which has custody of a federally owned 
invention.
    (c) Small business firm means a small business concern as defined in 
section 2 of Pub. L. 85-536 (15 U.S.C. 632) and implementing regulations 
of the Administrator of the Small Business Administration.
    (d) Practical application means to manufacture in the case of a 
composition or product, to practice in the case of a process or method, 
or to operate in the case of a machine or system; and,

[[Page 544]]

in each case, under such conditions as to establish that the invention 
is being utilized and that its benefits are to the extent permitted by 
law or Government regulations available to the public on reasonable 
terms.
    (e) United States means the United States of America, its 
territories and possessions, the District of Columbia, and the 
Commonwealth of Puerto Rico.



Sec. 404.4  Authority to grant licenses.

    Federally owned inventions shall be made available for licensing as 
deemed appropriate in the public interest. Federal agencies having 
custody of federally owned inventions may grant nonexclusive, partially 
exclusive, or exclusive licenses thereto under this part.



Sec. 404.5  Restrictions and conditions on all licenses granted under this part.

    (a)(1) A license may be granted only if the applicant has supplied 
the Federal agency with a satifactory plan for development or marketing 
of the invention, or both, and with information about the applicant's 
capability to fulfill the plan.
    (2) A license granting rights to use or sell under a federally owned 
invention in the United States shall normally be granted only to a 
licensee who agrees that any products embodying the invention or 
produced through the use of the invention will be manufactured 
substantially in the United States.
    (b) Licenses shall contain such terms and conditions as the Federal 
agency determines are appropriate for the protection of the interests of 
the Federal Government and the public and are not in conflict with law 
or this part. The following terms and conditions apply to any license:
    (1) The duration of the license shall be for a period specified in 
the license agreement, unless sooner terminated in accordance with this 
part.
    (2) The license may be granted for all or less than all fields of 
use of the invention or in specified geographical areas, or both.
    (3) The license may extend to subsidiaries of the licensee or other 
parties if provided for in the license but shall be nonassignable 
without approval of the Federal agency, except to the successor of that 
part of the licensee's business to which the invention pertains.
    (4) The licensee may provide the license the right to grant 
sublicenses under the license, subject to the approval of the Federal 
agency. Each sublicense shall make reference to the license, including 
the rights retained by the Government, and a copy of such sublicense 
shall be furnished to the Federal agency.
    (5) The license shall require the licensee to carry out the plan for 
development or marketing of the invention, or both, to bring the 
invention to practical application within a period specified in the 
license, and to continue to make the benefits of the invention 
reasonably accessible to the public.
    (6) The license shall require the licensee to report periodically on 
the utilization or efforts at obtaining utilization that are being made 
by the licensee, with particular reference to the plan submitted.
    (7) Licenses may be royalty-free or for royalties or other 
consideration.
    (8) Where an agreement is obtained pursuant to Sec. 404.5(a)(2) that 
any products embodying the invention or produced through use of the 
invention will be manufactured substantially in the United States, the 
license shall recite such agreement.
    (9) The license shall provide for the right of the Federal agency to 
terminate the license, in whole or in part, if:
    (i) The Federal agency determines that the licensee is not executing 
the plan submitted with its request for a license and the licensee 
cannot otherwise demonstrate to the satisfaction of the Federal agency 
that it has taken or can be expected to take within a reasonable time 
effective steps to achieve practical application of the invention;
    (ii) The Federal agency determines that such action is necessary to 
meet requirements for public use specified by Federal regulations issued 
after the date of the license and such requirements are not reasonably 
satisfied by the licensee;
    (iii) The licensee has willfully made a false statement of or 
willfully omitted a material fact in the license application or in any 
report required by the license agreement; or

[[Page 545]]

    (iv) The licensee commits a substantial breach of a covenant or 
agreement contained in the license.
    (10) The license may be modified or terminated, consistent with this 
part, upon mutual agreement of the Federal agency and the licensee.
    (11) Nothing relating to the grant of a license, nor the grant 
itself, shall be construed to confer upon any person any immunity from 
or defenses under the antitrust laws or from a charge of patent misuse, 
and the acquisition and use of rights pursuant to this part shall not be 
immunized from the operation of state or Federal law by reason of the 
source of the grant.



Sec. 404.6  Nonexclusive licenses.

    (a) Nonexclusive licenses may be granted under federally owned 
inventions without publication of availability or notice of a 
prospective license.
    (b) In addition to the provisions of Sec. 404.5, the nonexclusive 
license may also provide that, after termination of a period specified 
in the license agreement, the Federal agency may restrict the license to 
the fields of use or geographic areas, or both, in which the licensee 
has brought the invention to practical application and continues to make 
the benefits of the invention reasonably accessible to the public. 
However, such restriction shall be made only in order to grant an 
exclusive or partially exclusive license in accordance with this 
subpart.



Sec. 404.7  Exclusive and partially exclusive licenses.

    (a)(1) Exclusive or partially exclusive domestic licenses may be 
granted on federally owned inventions three months after notice of the 
invention's availability has been announced in the Federal Register, or 
without such notice where the Federal agency determines that expeditious 
granting of such a license will best serve the interest of the Federal 
Government and the public; and in either situation, only if;
    (i) Notice of a prospective license, identifying the invention and 
the prospective licensee, has been published in the Federal Register, 
providing opportunity for filing written objections within a 60-day 
period;
    (ii) After expiration of the period in Sec. 404.7(a)(1)(i) and 
consideration of any written objections received during the period, the 
Federal agency has determined that;
    (A) The interests of the Federal Government and the public will best 
be served by the proposed license, in view of the applicant's 
intentions, plans, and ability to bring the invention to practical 
application or otherwise promote the invention's utilization by the 
public;
    (B) The desired practical application has not been achieved, or is 
not likely expeditiously to be achieved, under any nonexclusive license 
which has been granted, or which may be granted, on the invention;
    (C) Exclusive or partially exclusive licensing is a reasonable and 
necessary incentive to call forth the investment of risk capital and 
expenditures to bring the invention to practical application or 
otherwise promote the invention's utilization by the public; and
    (D) The proposed terms and scope of exclusivity are not greater than 
reasonably necessary to provide the incentive for bringing the invention 
to practical application or otherwise promote the invention's 
utilization by the public;
    (iii) The Federal agency has not determined that the grant of such 
license will tend substantially to lessen competition or result in undue 
concentration in any section of the country in any line of commerce to 
which the technology to be licensed relates, or to create or maintain 
other situations inconsistent with the antitrust laws; and
    (iv) The Federal agency has given first preference to any small 
business firms submitting plans that are determined by the agency to be 
within the capabilities of the firms and as equally likely, if executed, 
to bring the invention to practical application as any plans submitted 
by applicants that are not small business firms.
    (2) In addition to the provisions of Sec. 404.5, the following terms 
and conditions apply to domestic exclusive and partially exclusive 
licenses;
    (i) The license shall be subject to the irrevocable, royalty-free 
right of the Government of the United States to

[[Page 546]]

practice and have practiced the invention on behalf of the United States 
and on behalf of any foreign government or international organization 
pursuant to any existing or future treaty or agreement with the United 
States.
    (ii) The license shall reserve to the Federal agency the right to 
require the licensee to grant sublicenses to responsible applicants, on 
reasonable terms, when necessary to fulfill health or safety needs.
    (iii) The license shall be subject to any licenses in force at the 
time of the grant of the exclusive or partially exclusive license.
    (iv) The license may grant the licensee the right of enforcement of 
the licensed patent pursuant to the provisions of Chapter 29 of Title 
35, United States Code, or other statutes, as determined appropriate in 
the public interest.
    (b)(1) Exclusive or partially exclusive licenses may be granted on a 
federally owned invention covered by a foreign patent, patent 
application, or other form of protection, provided that;
    (i) Notice of a prospective license, identifying the invention and 
prospective licensee, has been published in the Federal Register, 
providing opportunity for filing written objections within a 60-day 
period and following consideration of such objections;
    (ii) The agency has considered whether the interests of the Federal 
Government or United States industry in foreign commerce will be 
enhanced; and
    (iii) The Federal agency has not determined that the grant of such 
license will tend substantially to lessen competition or result in undue 
concentration in any section of the United States in any line of 
commerce to which the technology to be licensed relates, or to create or 
maintain other situations inconsistent with antitrust laws.
    (2) In addition to the provisions of Sec. 404.5 the following terms 
and conditions apply to foreign exclusive and partially exclusive 
licenses:
    (i) The license shall be subject to the irrevocable, royalty-free 
right of the Government of the United States to practice and have 
practiced the invention on behalf of the United States and on behalf of 
any foreign government or international organization pursuant to any 
existing or future treaty or agreement with the United States.
    (ii) The license shall be subject to any licenses in force at the 
time of the grant of the exclusive or partially exclusive license.
    (iii) The license may grant the licensee the right to take any 
suitable and necessary actions to protect the licensed property, on 
behalf of the Federal Government.
    (c) Federal agencies shall maintain a record of determinations to 
grant exclusive or partially exclusive licenses.



Sec. 404.8  Application for a license.

    An application for a license should be addressed to the Federal 
agency having custody of the invention and shall normally include:
    (a) Identification of the invention for which the license is desired 
including the patent application serial number or patent number, title, 
and date, if known;
    (b) Identification of the type of license for which the application 
is submitted;
    (c) Name and address of the person, company, or organization 
applying for the license and the citizenship or place of incorporation 
of the applicant;
    (d) Name, address, and telephone number of the representative of the 
applicant to whom correspondence should be sent;
    (e) Nature and type of applicant's business, identifying products or 
services which the applicant has successfully commercialized, and 
approximate number of applicant's employees;
    (f) Source of information concerning the availability of a license 
on the invention;
    (g) A statement indicating whether the applicant is a small business 
firm as defined in Sec. 404.3(c)
    (h) A detailed description of applicant's plan for development or 
marketing of the invention, or both, which should include:
    (1) A statement of the time, nature and amount of anticipated 
investment of capital and other resources which applicant believes will 
be required to bring the invention to practical application;

[[Page 547]]

    (2) A statement as to applicant's capability and intention to 
fulfill the plan, including information regarding manufacuturing, 
marketing, financial, and technical resources;
    (3) A statement of the fields of use for which applicant intends to 
practice the invention; and
    (4) A statement of the geographic areas in which applicant intends 
to manufacture any products embodying the invention and geographic areas 
where applicant intends to use or sell the invention, or both;
    (i) Identification of licenses previously granted to applicant under 
federally owned inventions;
    (j) A statement containing applicant's best knowledge of the extent 
to which the invention is being practiced by private industry or 
Government, or both, or is otherwise available commercially; and
    (k) Any other information which applicant believes will support a 
determination to grant the license to applicant.



Sec. 404.9  Notice to Attorney General.

    A copy of the notice provided for in Sec. 404.7 (a)(1)(i) and 
(b)(1)(i) will be sent to the Attorney General.



Sec. 404.10  Modification and termination of licenses.

    Before modifying or terminating a license, other than by mutual 
agreement, the Federal agency shall furnish the licensee and any 
sublicensee of record a written notice of intention to modify or 
terminate the license, and the licensee and any sublicensee shall be 
allowed 30 days after such notice to remedy any breach of the license or 
show cause why the license shall not be modified or terminated.



Sec. 404.11  Appeals.

    In accordance with procedures prescribed by the Federal agency, the 
following parties may appeal to the agency head or designee any decision 
or determination concerning the grant, denial, interpretation, 
modification, or termination of a license:
    (a) A person whose application for a license has been denied.
    (b) A licensee whose license has been modified or terminated, in 
whole or in part; or
    (c) A person who timely filed a written objection in response to the 
notice required by Sec. 404.7(a)(1)(i) or Sec. 404.7(b)(1)(i) and who 
can demonstrate to the satisfaction of the Federal agency that such 
person may be damaged by the agency action.



Sec. 404.12  Protection and administration of inventions.

    A Federal agency may take any suitable and necessary steps to 
protect and administer rights to federally owner inventions, either 
directly or through contract.



Sec. 404.13  Transfer of custody.

    A Federal agency having custody of a federally owned invention may 
transfer custody and administration, in whole or in part, to another 
Federal agency, of the right, title, or interest in such invention.



Sec. 404.14  Confidentiality of information.

    Title 35, United States Code, section 209, provides that any plan 
submitted pursuant to Sec. 404.8(h) and any report required by 
Sec. 404.5(b)(6) may be treated by the Federal agency as commercial and 
financial information obtained from a person and privileged and 
confidential and not subject to disclosure under section 552 of Title 5 
of the United States Code.

[[Page 549]]



    CHAPTER V--UNDER SECRETARY FOR TECHNOLOGY, DEPARTMENT OF COMMERCE




  --------------------------------------------------------------------
Part                                                                Page
501             Uniform patent policy for rights in 
                    inventions made by government employees.         551

[[Page 551]]



PART 501--UNIFORM PATENT POLICY FOR RIGHTS IN INVENTIONS MADE BY GOVERNMENT EMPLOYEES--Table of Contents




Sec.
501.1  Purpose.
501.2  Scope.
501.3  Definitions.
501.4  Determination of inventions and rights.
501.5  Agency liaison officer.
501.6  Criteria for the determination of rights in and to inventions.
501.7  Agency determination.
501.8  Appeals by employees.
501.9  Patent protection.
501.10  Dissemination of this part and of implementing regulations.
501.11  Submissions and inquiries.

    Authority: Sec. 4, E.O. 10096, 3 CFR, 1949-1953 Comp., p. 292, as 
amended by E.O. 10930, 3 CFR, 1959-1963 Comp., p. 456 and by E.O. 10695, 
3 CFR, 1954-1958 Comp., p. 355; DOO 10-17, July 15, 1992, and DOO 10-18, 
March 31, 1994.

    Source: 53 FR 39735, Oct. 11, 1988, unless otherwise noted.



Sec. 501.1  Purpose.

    The purpose of this part is to provide for the administration of a 
uniform patent policy for the Government with respect to the rights in 
inventions made by Government employees and to prescribe rules and 
regulations for implementing and effectuating such policy.

[61 FR 40999, Aug. 7, 1996]



Sec. 501.2  Scope.

    This part applies to any invention made by a Government employee and 
to any action taken with respect thereto.



Sec. 501.3  Definitions.

    (a) The term Secretary, as used in this part, means the Under 
Secretary of Commerce for Technology.
    (b) The term Government agency, as used in this part, means any 
Executive department or independent establishment of the Executive 
branch of the Government (including any independent regulatory 
commission or board, any corporation wholly owned by the United States, 
and the Smithsonian Institution), but does not include the Department of 
Energy for inventions made under the provisions of 42 U.S.C. 2182, the 
Tennessee Valley Authority, or the Postal Service.
    (c) The term Government employee, as used in this part, means any 
officer or employee, civilian or military, of any Government agency, 
including any special Government employee as defined in 18 U.S.C. 202 or 
an individual working for a Federal agency pursuant to the 
Intergovernmental Personnel Act (IPA), 5 U.S.C. 1304 and 3371-3376, or a 
part-time consultant or part-time employee as defined in 29 U.S.C. 
2101(a)(8) except as may otherwise be provided by agency regulation 
approved by the Secretary.
    (d) The term invention, as used in this part, means any art or 
process, machine, manufacture, design, or composition of matter, or any 
new and useful improvement thereof, or any variety of plant, which is or 
may be patentable under the patent laws of the United States.
    (e) The term made as used in this part in relation to any invention, 
means the conception or first actual reduction to practice of such 
invention as stated in In re King, 3 USPQ2d (BNA) 1747 (Comm'r Pat. 
1987).

[61 FR 40999, Aug. 7, 1996]



Sec. 501.4  Determination of inventions and rights.

    Each Government agency has the approval of the Secretary to 
determine whether the results of research, development, or other 
activity in the agency constitute an invention within the purview of 
Executive Order 10096, as amended by Executive Order 10930 and Executive 
Order 10695, and to determine the rights in and to the invention in 
accordance with the provisions of Secs. 501.6 and 501.7.

[61 FR 40999, Aug. 7, 1996]



Sec. 501.5  Agency liaison officer.

    Each Government agency shall designate a liaison officer to 
represent the agency before the Secretary; Provided, however, that the 
Departments of the Army, the Navy, and the Air Force may each designate 
a liaison officer.

[[Page 552]]



Sec. 501.6  Criteria for the determination of rights in and to inventions.

    (a) The following rules shall be applied in determining the 
respective rights of the Government and of the inventor in and to any 
invention that is subject to the provisions of this part:
    (1) The Government shall obtain, except as herein otherwise 
provided, the entire right, title and interest in and to any invention 
made by any Government employee:
    (i) During working hours, or
    (ii) With a contribution by the Government of facilities, equipment, 
materials, funds or information, or of time or services of other 
Government employees on official duty, or
    (iii) Which bears a direct relation to or is made in consequence of 
the official duties of the inventor.
    (2) In any case where the contribution of the Government, as 
measured by any one or more of the criteria set forth in paragraph 
(a)(1) of this section, to the invention is insufficient equitably to 
justify a requirement of assignment to the Government of the entire 
right, title and interest in and to such invention, or in any case where 
the Government has insufficient interest in an invention to obtain the 
entire right, title and interest therein (although the Government could 
obtain same under paragraph (a)(1) of this section), the Government 
agency concerned shall leave title to such invention in the employee, 
subject however, to the reservation to the Government of a nonexclusive, 
irrevocable, royalty-free license in the invention with power to grant 
licenses for all governmental purposes. The terms of such reservation 
will appear, where practicable, in any patent, domestic or foreign, 
which may issue on such invention. Reference is made to section 15 of 
the Federal Technology Transfer Act of 1986 (15 U.S.C. 3710d) which 
requires a Government agency to allow the inventor to retain title to 
any covered invention when the agency does not intend to file a patent 
application or otherwise promote commercialization.
    (3) In applying the provisions of paragraphs (a)(1) and (2) of this 
section to the facts and circumstances relating to the making of a 
particular invention, it shall be presumed that an invention made by an 
employee who is employed or assigned:
    (i) To invent or improve or perfect any art or process, machine, 
design, manufacture, or composition of matter;
    (ii) To conduct or perform research, development work, or both,
    (iii) To supervise, direct, coordinate, or review Government 
financed or conducted research, development work, or both, or
    (iv) To act in a liaison capacity among governmental or non-
governmental agencies or individuals engaged in such research or 
development work,

falls within the provisions of paragraph (a)(1) of this section, and it 
shall be presumed that any invention made by any other employee falls 
within the provisions of paragraph (a)(2) of this section. Either 
presumption may be rebutted by a showing of the facts and circumstances 
in the case and shall not preclude a determination that these facts and 
circumstances justify leaving the entire right, title and interest in 
and to the invention in the Government employee, subject to law.
    (4) In any case wherein the Government neither:
    (i) Obtains the entire right, title and interest in and to an 
invention pursuant to the provisions of paragraph (a)(1) of this section 
nor
    (ii) Reserves a nonexclusive, irrevocable, royalty-free license in 
the invention, with power to grant licenses for all governmental 
purposes, pursuant to the provisions of paragraph (a)(2) of this 
section,

the Government shall leave the entire right, title and interest in and 
to the invention in the Government employee, subject to law.

[53 FR 39735, Oct. 11, 1988, as amended at 61 FR 40999, Aug. 7, 1996]



Sec. 501.7  Agency determination.

    (a) If the agency determines that the Government is entitled to 
obtain title pursuant to Sec. 501.6(a)(1) and the employee does not 
appeal, no further review is required.
    (b) In the event that a Government agency determines, pursuant to 
paragraph (a)(2) or (a)(4) of Sec. 501.6, that title to an invention 
will be left with the employee, the agency shall notify the

[[Page 553]]

employee of this determination. In cases pursuant to Sec. 501.6(a)(2) 
where the Government's insufficient interest in the invention is 
evidenced by its decision not to file a patent application, the agency 
may impose on the employee any one or all of the following conditions or 
any other conditions that may be necessary in a particular case:
    (1) That a patent application be filed in the United States and/or 
abroad, if the Government has determined that it has or may need to 
practice the invention;
    (2) That the invention not be assigned to any foreign-owned or 
controlled corporation without the written permission of the agency; and
    (3) That any assignment or license of rights to use or sell the 
invention in the United States shall contain a requirement that any 
products embodying the invention or produced through the use of the 
invention be substantially manufactured in the United States. The agency 
shall notify the employee of any conditions imposed.
    (c) In the case of a determination under either paragraph (a) or (b) 
of this section, the agency shall promptly provide the employee with:
    (1) A signed and dated statement of its determination and reasons 
therefor; and
    (2) A copy of 37 CFR part 501.

[53 FR 39735, Oct. 11, 1988, as amended at 61 FR 40999, Aug. 7, 1996]



Sec. 501.8  Appeals by employees.

    (a) Any Government employee who is aggrieved by a Government agency 
determination pursuant to Secs. 501.6(a)(1) or (a)(2), may obtain a 
review of any agency determination by filing, within 30 days (or such 
longer period as the Secretary may, for good cause shown in writing, fix 
in any case) after receiving notice of such determination, two copies of 
an appeal with the Secretary. The Secretary then shall forward one copy 
of the appeal to the liaison officer of the Government agency.
    (b) On receipt of a copy of an appeal filed pursuant to paragraph 
(a) of this section, the agency liaison officer shall, subject to 
considerations of national security, or public health, safety or 
welfare, promptly furnish both the Secretary and the inventor with a 
copy of a report containing the following information about the 
invention involved in the appeal:
    (1) A copy of the agency's statement specified in Sec. 501.7(c);
    (2) A description of the invention in sufficient detail to identify 
the invention and show its relationship to the employee's duties and 
work assignments;
    (3) The name of the employee and employment status, including a 
detailed statement of official duties and responsibilities at the time 
the invention was made; and
    (4) A detailed statement of the points of dispute or controversy, 
together with copies of any statements or written arguments filed with 
the agency, and of any other relevant evidence that the agency 
considered in making its determination of Government interest.
    (c) Within 25 days (or such longer period as the Secretary may, for 
good cause shown, fix in any case) after the transmission of a copy of 
the agency report to the employee, the employee may file a reply with 
the Secretary and file one copy with the agency liaison officer.
    (d) After the time for the inventor's reply to the Government 
agency's report has expired and if the inventor has so requested in his 
or her appeal, a date will be set for hearing of oral arguments before 
the Secretary, by the employee (or by an attorney whom he or she 
designates by written power of attorney filed before, or at the hearing) 
and a representative of the Government agency involved. Unless it shall 
be otherwise ordered before the hearing begins, oral arguments will be 
limited to thirty minutes for each side. The employee need not retain an 
attorney or request an oral hearing to secure full consideration of the 
facts and his or her arguments. The employee may expedite such 
consideration by notifying the Secretary when he or she does not intend 
to file a reply to the agency report.
    (e) After a hearing on the appeal, if a hearing was requested, or 
after expiration of the period for the inventor's reply to the agency 
report if no hearing is set, the Secretary shall issue a decision on the 
matter within 120 days, which decision shall be final after a

[[Page 554]]

thirty day period for requesting reconsideration expires or on the date 
that a decision on a petition for reconsideration is finally disposed 
of. Any request for reconsideration or modification of the decision must 
be filed within 30 days from the date of the original decision (or 
within such an extension thereof as may be set by the Secretary before 
the original period expires). The decision of the Secretary shall be 
made after consideration of the statements of fact in the employee's 
appeal, the agency's report, and the employee's reply, but the Secretary 
at his or her discretion and with due respect to the rights and 
convenience of the inventor and the Government agency, may call for 
further statements on specific questions of fact or may request 
additional evidence in the form of affidavits or depositions on specific 
facts in dispute.

[53 FR 39735, Oct. 11, 1988, as amended at 61 FR 41000, Aug. 7, 1996]



Sec. 501.9  Patent protection.

    (a) A Government agency, upon determining that an invention coming 
within the scope of Secs. 501.6(a)(1) or (a)(2) has been made, shall 
promptly determine whether patent protection will be sought in the 
United States by or on behalf of the agency for such invention. A 
controversy over the respective rights of the Government and of the 
employee shall not unnecessarily delay the filing of a patent 
application by the agency to avoid the loss of patent rights. In cases 
coming within the scope of Sec. 501.6(a)(2), the filing of a patent 
application shall be contingent upon the consent of the employee.
    (b) Where there is an appealed dispute as to whether Secs. 501.6 
(a)(1) or (a)(2) applies in determining the respective rights of the 
Government and of an employee in and to any invention, the agency may 
determine whether patent protection will be sought in the United States 
pending the Secretary's decision on the dispute. If the agency decides 
that an application for patent should be filed, the agency will take 
such rights as are specified in Sec. 501.6(a)(2), but this shall be 
without prejudice to acquiring the rights specified in paragraph (a)(1) 
of that section should the Secretary so decide.
    (c) Where an agency has determined to leave title to an invention 
with an employee under Sec. 501.6(a)(2), the agency will, upon the 
filing of an application for patent, take the rights specified in that 
paragraph without prejudice to the subsequent acquisition by the 
Government of the rights specified in paragraph (a)(1) of that section 
should the Secretary so decide.
    (d) Where an agency has filed a patent application in the United 
States, the agency will, within 8 months from the filing date of the 
U.S. application, determine if any foreign patent applications should 
also be filed. If the agency chooses not to file an application in any 
foreign country, the employee may request rights in that country subject 
to the conditions stated in Sec. 501.7(b) that may be imposed by the 
agency. Alternatively, the agency may permit the employee to retain 
foreign rights by including in any assignment to the Government of an 
unclassified U.S. patent application on the invention an option for the 
Government to acquire title in any foreign country within 8 months from 
the filing date of the U.S. application.

[61 FR 41000, Aug. 7, 1996]



Sec. 501.10  Dissemination of this part and of implementing regulations.

    Each Government agency shall disseminate to its employees the 
provisions of this part, and any appropriate implementing agency 
regulations and delegations. Copies of any such regulations shall be 
sent to the Secretary. If the Secretary identifies an inconsistency 
between this part and the agency regulations or delegations, the agency, 
upon being informed by the Secretary of the inconsistency, shall take 
prompt action to correct it.



Sec. 501.11  Submissions and inquiries.

    All submissions or inquiries should be directed to Chief Counsel for 
Technology, telephone number 202-482-1984, Room H4835, U.S. Department 
of Commerce, Washington DC 20230.

[61 FR 41000, Aug. 7, 1996]

[[Page 555]]



                              FINDING AIDS




  --------------------------------------------------------------------

  A list of current CFR titles, subtitles, chapters, subchapters and 
parts and an alphabetical list of agencies publishing in the CFR are 
included in the CFR Index and Finding Aids volume to the Code of Federal 
Regulations which is published separately and revised annually.

  Material Approved for Incorporation by Reference
  Table of CFR Titles and Chapters
  Alphabetical List of Agencies Appearing in the CFR
  List of CFR Sections Affected

[[Page 557]]

            Material Approved for Incorporation by Reference

                      (Revised as of July 1, 1999)

  The Director of the Federal Register has approved under 5 U.S.C. 
552(a) and 1 CFR Part 51 the incorporation by reference of the following 
publications. This list contains only those incorporations by reference 
effective as of the revision date of this volume. Incorporations by 
reference found within a regulation are effective upon the effective 
date of that regulation. For more information on incorporation by 
reference, see the preliminary pages of this volume.


37 CFR

PATENT AND TRADEMARK OFFICE
                                                                  37 CFR


World Intellectual Property Organization (WIPO)

  34 chemin des Colombettes, 1211 Geneva 20, 
  Switzerland
WIPO Handbook on Industrial Property Information            1.821; 1.822
  and Documentation, Standard ST.25; Standard for 
  the Presentation of Nucleotide and Amino Acid 
  Sequence Listings in Patent Applications, 
  including Tables 1 through 6 in Appendix 2, 
  1998.

[[Page 559]]



                    Table of CFR Titles and Chapters




                      (Revised as of July 1, 1999)

                      Title 1--General Provisions

         I  Administrative Committee of the Federal Register 
                (Parts 1--49)
        II  Office of the Federal Register (Parts 50--299)
        IV  Miscellaneous Agencies (Parts 400--500)

                          Title 2--[Reserved]

                        Title 3--The President

         I  Executive Office of the President (Parts 100--199)

                           Title 4--Accounts

         I  General Accounting Office (Parts 1--99)
        II  Federal Claims Collection Standards (General 
                Accounting Office--Department of Justice) (Parts 
                100--299)

                   Title 5--Administrative Personnel

         I  Office of Personnel Management (Parts 1--1199)
        II  Merit Systems Protection Board (Parts 1200--1299)
       III  Office of Management and Budget (Parts 1300--1399)
        IV  Advisory Committee on Federal Pay (Parts 1400--1499)
         V  The International Organizations Employees Loyalty 
                Board (Parts 1500--1599)
        VI  Federal Retirement Thrift Investment Board (Parts 
                1600--1699)
       VII  Advisory Commission on Intergovernmental Relations 
                (Parts 1700--1799)
      VIII  Office of Special Counsel (Parts 1800--1899)
        IX  Appalachian Regional Commission (Parts 1900--1999)
        XI  Armed Forces Retirement Home (Part 2100)
       XIV  Federal Labor Relations Authority, General Counsel of 
                the Federal Labor Relations Authority and Federal 
                Service Impasses Panel (Parts 2400--2499)
        XV  Office of Administration, Executive Office of the 
                President (Parts 2500--2599)
       XVI  Office of Government Ethics (Parts 2600--2699)
       XXI  Department of the Treasury (Parts 3100--3199)

[[Page 560]]

      XXII  Federal Deposit Insurance Corporation (Part 3201)
     XXIII  Department of Energy (Part 3301)
      XXIV  Federal Energy Regulatory Commission (Part 3401)
       XXV  Department of the Interior (Part 3501)
      XXVI  Department of Defense (Part 3601)
    XXVIII  Department of Justice (Part 3801)
      XXIX  Federal Communications Commission (Parts 3900--3999)
       XXX  Farm Credit System Insurance Corporation (Parts 4000--
                4099)
      XXXI  Farm Credit Administration (Parts 4100--4199)
    XXXIII  Overseas Private Investment Corporation (Part 4301)
      XXXV  Office of Personnel Management (Part 4501)
        XL  Interstate Commerce Commission (Part 5001)
       XLI  Commodity Futures Trading Commission (Part 5101)
      XLII  Department of Labor (Part 5201)
     XLIII  National Science Foundation (Part 5301)
       XLV  Department of Health and Human Services (Part 5501)
      XLVI  Postal Rate Commission (Part 5601)
     XLVII  Federal Trade Commission (Part 5701)
    XLVIII  Nuclear Regulatory Commission (Part 5801)
         L  Department of Transportation (Part 6001)
       LII  Export-Import Bank of the United States (Part 6201)
      LIII  Department of Education (Parts 6300--6399)
       LIV  Environmental Protection Agency (Part 6401)
      LVII  General Services Administration (Part 6701)
     LVIII  Board of Governors of the Federal Reserve System (Part 
                6801)
       LIX  National Aeronautics and Space Administration (Part 
                6901)
        LX  United States Postal Service (Part 7001)
       LXI  National Labor Relations Board (Part 7101)
      LXII  Equal Employment Opportunity Commission (Part 7201)
     LXIII  Inter-American Foundation (Part 7301)
       LXV  Department of Housing and Urban Development (Part 
                7501)
      LXVI  National Archives and Records Administration (Part 
                7601)
      LXIX  Tennessee Valley Authority (Part 7901)
      LXXI  Consumer Product Safety Commission (Part 8101)
     LXXIV  Federal Mine Safety and Health Review Commission (Part 
                8401)
     LXXVI  Federal Retirement Thrift Investment Board (Part 8601)
    LXXVII  Office of Management and Budget (Part 8701)

                          Title 6--[Reserved]

                         Title 7--Agriculture

            Subtitle A--Office of the Secretary of Agriculture 
                (Parts 0--26)
            Subtitle B--Regulations of the Department of 
                Agriculture

[[Page 561]]

         I  Agricultural Marketing Service (Standards, 
                Inspections, Marketing Practices), Department of 
                Agriculture (Parts 27--209)
        II  Food and Nutrition Service, Department of Agriculture 
                (Parts 210--299)
       III  Animal and Plant Health Inspection Service, Department 
                of Agriculture (Parts 300--399)
        IV  Federal Crop Insurance Corporation, Department of 
                Agriculture (Parts 400--499)
         V  Agricultural Research Service, Department of 
                Agriculture (Parts 500--599)
        VI  Natural Resources Conservation Service, Department of 
                Agriculture (Parts 600--699)
       VII  Farm Service Agency, Department of Agriculture (Parts 
                700--799)
      VIII  Grain Inspection, Packers and Stockyards 
                Administration (Federal Grain Inspection Service), 
                Department of Agriculture (Parts 800--899)
        IX  Agricultural Marketing Service (Marketing Agreements 
                and Orders; Fruits, Vegetables, Nuts), Department 
                of Agriculture (Parts 900--999)
         X  Agricultural Marketing Service (Marketing Agreements 
                and Orders; Milk), Department of Agriculture 
                (Parts 1000--1199)
        XI  Agricultural Marketing Service (Marketing Agreements 
                and Orders; Miscellaneous Commodities), Department 
                of Agriculture (Parts 1200--1299)
      XIII  Northeast Dairy Compact Commission (Parts 1300--1399)
       XIV  Commodity Credit Corporation, Department of 
                Agriculture (Parts 1400--1499)
        XV  Foreign Agricultural Service, Department of 
                Agriculture (Parts 1500--1599)
       XVI  Rural Telephone Bank, Department of Agriculture (Parts 
                1600--1699)
      XVII  Rural Utilities Service, Department of Agriculture 
                (Parts 1700--1799)
     XVIII  Rural Housing Service, Rural Business-Cooperative 
                Service, Rural Utilities Service, and Farm Service 
                Agency, Department of Agriculture (Parts 1800--
                2099)
      XXVI  Office of Inspector General, Department of Agriculture 
                (Parts 2600--2699)
     XXVII  Office of Information Resources Management, Department 
                of Agriculture (Parts 2700--2799)
    XXVIII  Office of Operations, Department of Agriculture (Parts 
                2800--2899)
      XXIX  Office of Energy, Department of Agriculture (Parts 
                2900--2999)
       XXX  Office of the Chief Financial Officer, Department of 
                Agriculture (Parts 3000--3099)
      XXXI  Office of Environmental Quality, Department of 
                Agriculture (Parts 3100--3199)
     XXXII  Office of Procurement and Property Management, 
                Department of Agriculture (Parts 3200--3299)

[[Page 562]]

    XXXIII  Office of Transportation, Department of Agriculture 
                (Parts 3300--3399)
     XXXIV  Cooperative State Research, Education, and Extension 
                Service, Department of Agriculture (Parts 3400--
                3499)
      XXXV  Rural Housing Service, Department of Agriculture 
                (Parts 3500--3599)
     XXXVI  National Agricultural Statistics Service, Department 
                of Agriculture (Parts 3600--3699)
    XXXVII  Economic Research Service, Department of Agriculture 
                (Parts 3700--3799)
   XXXVIII  World Agricultural Outlook Board, Department of 
                Agriculture (Parts 3800--3899)
       XLI  [Reserved]
      XLII  Rural Business-Cooperative Service and Rural Utilities 
                Service, Department of Agriculture (Parts 4200--
                4299)

                    Title 8--Aliens and Nationality

         I  Immigration and Naturalization Service, Department of 
                Justice (Parts 1--499)

                 Title 9--Animals and Animal Products

         I  Animal and Plant Health Inspection Service, Department 
                of Agriculture (Parts 1--199)
        II  Grain Inspection, Packers and Stockyards 
                Administration (Packers and Stockyards Programs), 
                Department of Agriculture (Parts 200--299)
       III  Food Safety and Inspection Service, Department of 
                Agriculture (Parts 300--599)

                           Title 10--Energy

         I  Nuclear Regulatory Commission (Parts 0--199)
        II  Department of Energy (Parts 200--699)
       III  Department of Energy (Parts 700--999)
         X  Department of Energy (General Provisions) (Parts 
                1000--1099)
      XVII  Defense Nuclear Facilities Safety Board (Parts 1700--
                1799)

                      Title 11--Federal Elections

         I  Federal Election Commission (Parts 1--9099)

                      Title 12--Banks and Banking

         I  Comptroller of the Currency, Department of the 
                Treasury (Parts 1--199)
        II  Federal Reserve System (Parts 200--299)
       III  Federal Deposit Insurance Corporation (Parts 300--399)

[[Page 563]]

        IV  Export-Import Bank of the United States (Parts 400--
                499)
         V  Office of Thrift Supervision, Department of the 
                Treasury (Parts 500--599)
        VI  Farm Credit Administration (Parts 600--699)
       VII  National Credit Union Administration (Parts 700--799)
      VIII  Federal Financing Bank (Parts 800--899)
        IX  Federal Housing Finance Board (Parts 900--999)
        XI  Federal Financial Institutions Examination Council 
                (Parts 1100--1199)
       XIV  Farm Credit System Insurance Corporation (Parts 1400--
                1499)
        XV  Department of the Treasury (Parts 1500--1599)
      XVII  Office of Federal Housing Enterprise Oversight, 
                Department of Housing and Urban Development (Parts 
                1700--1799)
     XVIII  Community Development Financial Institutions Fund, 
                Department of the Treasury (Parts 1800--1899)

               Title 13--Business Credit and Assistance

         I  Small Business Administration (Parts 1--199)
       III  Economic Development Administration, Department of 
                Commerce (Parts 300--399)

                    Title 14--Aeronautics and Space

         I  Federal Aviation Administration, Department of 
                Transportation (Parts 1--199)
        II  Office of the Secretary, Department of Transportation 
                (Aviation Proceedings) (Parts 200--399)
       III  Commercial Space Transportation, Federal Aviation 
                Administration, Department of Transportation 
                (Parts 400--499)
         V  National Aeronautics and Space Administration (Parts 
                1200--1299)

                 Title 15--Commerce and Foreign Trade

            Subtitle A--Office of the Secretary of Commerce (Parts 
                0--29)
            Subtitle B--Regulations Relating to Commerce and 
                Foreign Trade
         I  Bureau of the Census, Department of Commerce (Parts 
                30--199)
        II  National Institute of Standards and Technology, 
                Department of Commerce (Parts 200--299)
       III  International Trade Administration, Department of 
                Commerce (Parts 300--399)
        IV  Foreign-Trade Zones Board, Department of Commerce 
                (Parts 400--499)
       VII  Bureau of Export Administration, Department of 
                Commerce (Parts 700--799)

[[Page 564]]

      VIII  Bureau of Economic Analysis, Department of Commerce 
                (Parts 800--899)
        IX  National Oceanic and Atmospheric Administration, 
                Department of Commerce (Parts 900--999)
        XI  Technology Administration, Department of Commerce 
                (Parts 1100--1199)
      XIII  East-West Foreign Trade Board (Parts 1300--1399)
       XIV  Minority Business Development Agency (Parts 1400--
                1499)
            Subtitle C--Regulations Relating to Foreign Trade 
                Agreements
        XX  Office of the United States Trade Representative 
                (Parts 2000--2099)
            Subtitle D--Regulations Relating to Telecommunications 
                and Information
     XXIII  National Telecommunications and Information 
                Administration, Department of Commerce (Parts 
                2300--2399)

                    Title 16--Commercial Practices

         I  Federal Trade Commission (Parts 0--999)
        II  Consumer Product Safety Commission (Parts 1000--1799)

             Title 17--Commodity and Securities Exchanges

         I  Commodity Futures Trading Commission (Parts 1--199)
        II  Securities and Exchange Commission (Parts 200--399)
        IV  Department of the Treasury (Parts 400--499)

          Title 18--Conservation of Power and Water Resources

         I  Federal Energy Regulatory Commission, Department of 
                Energy (Parts 1--399)
       III  Delaware River Basin Commission (Parts 400--499)
        VI  Water Resources Council (Parts 700--799)
      VIII  Susquehanna River Basin Commission (Parts 800--899)
      XIII  Tennessee Valley Authority (Parts 1300--1399)

                       Title 19--Customs Duties

         I  United States Customs Service, Department of the 
                Treasury (Parts 1--199)
        II  United States International Trade Commission (Parts 
                200--299)
       III  International Trade Administration, Department of 
                Commerce (Parts 300--399)

[[Page 565]]

                     Title 20--Employees' Benefits

         I  Office of Workers' Compensation Programs, Department 
                of Labor (Parts 1--199)
        II  Railroad Retirement Board (Parts 200--399)
       III  Social Security Administration (Parts 400--499)
        IV  Employees' Compensation Appeals Board, Department of 
                Labor (Parts 500--599)
         V  Employment and Training Administration, Department of 
                Labor (Parts 600--699)
        VI  Employment Standards Administration, Department of 
                Labor (Parts 700--799)
       VII  Benefits Review Board, Department of Labor (Parts 
                800--899)
      VIII  Joint Board for the Enrollment of Actuaries (Parts 
                900--999)
        IX  Office of the Assistant Secretary for Veterans' 
                Employment and Training, Department of Labor 
                (Parts 1000--1099)

                       Title 21--Food and Drugs

         I  Food and Drug Administration, Department of Health and 
                Human Services (Parts 1--1299)
        II  Drug Enforcement Administration, Department of Justice 
                (Parts 1300--1399)
       III  Office of National Drug Control Policy (Parts 1400--
                1499)

                      Title 22--Foreign Relations

         I  Department of State (Parts 1--199)
        II  Agency for International Development (Parts 200--299)
       III  Peace Corps (Parts 300--399)
        IV  International Joint Commission, United States and 
                Canada (Parts 400--499)
         V  United States Information Agency (Parts 500--599)
       VII  Overseas Private Investment Corporation (Parts 700--
                799)
        IX  Foreign Service Grievance Board Regulations (Parts 
                900--999)
         X  Inter-American Foundation (Parts 1000--1099)
        XI  International Boundary and Water Commission, United 
                States and Mexico, United States Section (Parts 
                1100--1199)
       XII  United States International Development Cooperation 
                Agency (Parts 1200--1299)
      XIII  Board for International Broadcasting (Parts 1300--
                1399)
       XIV  Foreign Service Labor Relations Board; Federal Labor 
                Relations Authority; General Counsel of the 
                Federal Labor Relations Authority; and the Foreign 
                Service Impasse Disputes Panel (Parts 1400--1499)
        XV  African Development Foundation (Parts 1500--1599)
       XVI  Japan-United States Friendship Commission (Parts 
                1600--1699)
      XVII  United States Institute of Peace (Parts 1700--1799)

[[Page 566]]

                          Title 23--Highways

         I  Federal Highway Administration, Department of 
                Transportation (Parts 1--999)
        II  National Highway Traffic Safety Administration and 
                Federal Highway Administration, Department of 
                Transportation (Parts 1200--1299)
       III  National Highway Traffic Safety Administration, 
                Department of Transportation (Parts 1300--1399)

                Title 24--Housing and Urban Development

            Subtitle A--Office of the Secretary, Department of 
                Housing and Urban Development (Parts 0--99)
            Subtitle B--Regulations Relating to Housing and Urban 
                Development
         I  Office of Assistant Secretary for Equal Opportunity, 
                Department of Housing and Urban Development (Parts 
                100--199)
        II  Office of Assistant Secretary for Housing-Federal 
                Housing Commissioner, Department of Housing and 
                Urban Development (Parts 200--299)
       III  Government National Mortgage Association, Department 
                of Housing and Urban Development (Parts 300--399)
        IV  Office of Multifamily Housing Assistance 
                Restructuring, Department of Housing and Urban 
                Development (Parts 400--499)
         V  Office of Assistant Secretary for Community Planning 
                and Development, Department of Housing and Urban 
                Development (Parts 500--599)
        VI  Office of Assistant Secretary for Community Planning 
                and Development, Department of Housing and Urban 
                Development (Parts 600--699) [Reserved]
       VII  Office of the Secretary, Department of Housing and 
                Urban Development (Housing Assistance Programs and 
                Public and Indian Housing Programs) (Parts 700--
                799)
      VIII  Office of the Assistant Secretary for Housing--Federal 
                Housing Commissioner, Department of Housing and 
                Urban Development (Section 8 Housing Assistance 
                Programs, Section 202 Direct Loan Program, Section 
                202 Supportive Housing for the Elderly Program and 
                Section 811 Supportive Housing for Persons With 
                Disabilities Program) (Parts 800--899)
        IX  Office of Assistant Secretary for Public and Indian 
                Housing, Department of Housing and Urban 
                Development (Parts 900--999)
         X  Office of Assistant Secretary for Housing--Federal 
                Housing Commissioner, Department of Housing and 
                Urban Development (Interstate Land Sales 
                Registration Program) (Parts 1700--1799)
       XII  Office of Inspector General, Department of Housing and 
                Urban Development (Parts 2000--2099)
        XX  Office of Assistant Secretary for Housing--Federal 
                Housing Commissioner, Department of Housing and 
                Urban Development (Parts 3200--3899)
       XXV  Neighborhood Reinvestment Corporation (Parts 4100--
                4199)

[[Page 567]]

                           Title 25--Indians

         I  Bureau of Indian Affairs, Department of the Interior 
                (Parts 1--299)
        II  Indian Arts and Crafts Board, Department of the 
                Interior (Parts 300--399)
       III  National Indian Gaming Commission, Department of the 
                Interior (Parts 500--599)
        IV  Office of Navajo and Hopi Indian Relocation (Parts 
                700--799)
         V  Bureau of Indian Affairs, Department of the Interior, 
                and Indian Health Service, Department of Health 
                and Human Services (Part 900)
        VI  Office of the Assistant Secretary-Indian Affairs, 
                Department of the Interior (Part 1001)
       VII  Office of the Special Trustee for American Indians, 
                Department of the Interior (Part 1200)

                      Title 26--Internal Revenue

         I  Internal Revenue Service, Department of the Treasury 
                (Parts 1--799)

           Title 27--Alcohol, Tobacco Products and Firearms

         I  Bureau of Alcohol, Tobacco and Firearms, Department of 
                the Treasury (Parts 1--299)

                   Title 28--Judicial Administration

         I  Department of Justice (Parts 0--199)
       III  Federal Prison Industries, Inc., Department of Justice 
                (Parts 300--399)
         V  Bureau of Prisons, Department of Justice (Parts 500--
                599)
        VI  Offices of Independent Counsel, Department of Justice 
                (Parts 600--699)
       VII  Office of Independent Counsel (Parts 700--799)

                            Title 29--Labor

            Subtitle A--Office of the Secretary of Labor (Parts 
                0--99)
            Subtitle B--Regulations Relating to Labor
         I  National Labor Relations Board (Parts 100--199)
        II  Office of Labor-Management Standards, Department of 
                Labor (Parts 200--299)
       III  National Railroad Adjustment Board (Parts 300--399)
        IV  Office of Labor-Management Standards, Department of 
                Labor (Parts 400--499)
         V  Wage and Hour Division, Department of Labor (Parts 
                500--899)
        IX  Construction Industry Collective Bargaining Commission 
                (Parts 900--999)
         X  National Mediation Board (Parts 1200--1299)

[[Page 568]]

       XII  Federal Mediation and Conciliation Service (Parts 
                1400--1499)
       XIV  Equal Employment Opportunity Commission (Parts 1600--
                1699)
      XVII  Occupational Safety and Health Administration, 
                Department of Labor (Parts 1900--1999)
        XX  Occupational Safety and Health Review Commission 
                (Parts 2200--2499)
       XXV  Pension and Welfare Benefits Administration, 
                Department of Labor (Parts 2500--2599)
     XXVII  Federal Mine Safety and Health Review Commission 
                (Parts 2700--2799)
        XL  Pension Benefit Guaranty Corporation (Parts 4000--
                4999)

                      Title 30--Mineral Resources

         I  Mine Safety and Health Administration, Department of 
                Labor (Parts 1--199)
        II  Minerals Management Service, Department of the 
                Interior (Parts 200--299)
       III  Board of Surface Mining and Reclamation Appeals, 
                Department of the Interior (Parts 300--399)
        IV  Geological Survey, Department of the Interior (Parts 
                400--499)
        VI  Bureau of Mines, Department of the Interior (Parts 
                600--699)
       VII  Office of Surface Mining Reclamation and Enforcement, 
                Department of the Interior (Parts 700--999)

                 Title 31--Money and Finance: Treasury

            Subtitle A--Office of the Secretary of the Treasury 
                (Parts 0--50)
            Subtitle B--Regulations Relating to Money and Finance
         I  Monetary Offices, Department of the Treasury (Parts 
                51--199)
        II  Fiscal Service, Department of the Treasury (Parts 
                200--399)
        IV  Secret Service, Department of the Treasury (Parts 
                400--499)
         V  Office of Foreign Assets Control, Department of the 
                Treasury (Parts 500--599)
        VI  Bureau of Engraving and Printing, Department of the 
                Treasury (Parts 600--699)
       VII  Federal Law Enforcement Training Center, Department of 
                the Treasury (Parts 700--799)
      VIII  Office of International Investment, Department of the 
                Treasury (Parts 800--899)

                      Title 32--National Defense

            Subtitle A--Department of Defense
         I  Office of the Secretary of Defense (Parts 1--399)
         V  Department of the Army (Parts 400--699)
        VI  Department of the Navy (Parts 700--799)

[[Page 569]]

       VII  Department of the Air Force (Parts 800--1099)
            Subtitle B--Other Regulations Relating to National 
                Defense
       XII  Defense Logistics Agency (Parts 1200--1299)
       XVI  Selective Service System (Parts 1600--1699)
       XIX  Central Intelligence Agency (Parts 1900--1999)
        XX  Information Security Oversight Office, National 
                Archives and Records Administration (Parts 2000--
                2099)
       XXI  National Security Council (Parts 2100--2199)
      XXIV  Office of Science and Technology Policy (Parts 2400--
                2499)
     XXVII  Office for Micronesian Status Negotiations (Parts 
                2700--2799)
    XXVIII  Office of the Vice President of the United States 
                (Parts 2800--2899)
      XXIX  Presidential Commission on the Assignment of Women in 
                the Armed Forces (Part 2900)

               Title 33--Navigation and Navigable Waters

         I  Coast Guard, Department of Transportation (Parts 1--
                199)
        II  Corps of Engineers, Department of the Army (Parts 
                200--399)
        IV  Saint Lawrence Seaway Development Corporation, 
                Department of Transportation (Parts 400--499)

                          Title 34--Education

            Subtitle A--Office of the Secretary, Department of 
                Education (Parts 1--99)
            Subtitle B--Regulations of the Offices of the 
                Department of Education
         I  Office for Civil Rights, Department of Education 
                (Parts 100--199)
        II  Office of Elementary and Secondary Education, 
                Department of Education (Parts 200--299)
       III  Office of Special Education and Rehabilitative 
                Services, Department of Education (Parts 300--399)
        IV  Office of Vocational and Adult Education, Department 
                of Education (Parts 400--499)
         V  Office of Bilingual Education and Minority Languages 
                Affairs, Department of Education (Parts 500--599)
        VI  Office of Postsecondary Education, Department of 
                Education (Parts 600--699)
       VII  Office of Educational Research and Improvement, 
                Department of Education (Parts 700--799)
        XI  National Institute for Literacy (Parts 1100--1199)
            Subtitle C--Regulations Relating to Education
       XII  National Council on Disability (Parts 1200--1299)

[[Page 570]]

                        Title 35--Panama Canal

         I  Panama Canal Regulations (Parts 1--299)

             Title 36--Parks, Forests, and Public Property

         I  National Park Service, Department of the Interior 
                (Parts 1--199)
        II  Forest Service, Department of Agriculture (Parts 200--
                299)
       III  Corps of Engineers, Department of the Army (Parts 
                300--399)
        IV  American Battle Monuments Commission (Parts 400--499)
         V  Smithsonian Institution (Parts 500--599)
       VII  Library of Congress (Parts 700--799)
      VIII  Advisory Council on Historic Preservation (Parts 800--
                899)
        IX  Pennsylvania Avenue Development Corporation (Parts 
                900--999)
         X  Presidio Trust (Parts 1000--1099)
        XI  Architectural and Transportation Barriers Compliance 
                Board (Parts 1100--1199)
       XII  National Archives and Records Administration (Parts 
                1200--1299)
       XIV  Assassination Records Review Board (Parts 1400--1499)

             Title 37--Patents, Trademarks, and Copyrights

         I  Patent and Trademark Office, Department of Commerce 
                (Parts 1--199)
        II  Copyright Office, Library of Congress (Parts 200--299)
        IV  Assistant Secretary for Technology Policy, Department 
                of Commerce (Parts 400--499)
         V  Under Secretary for Technology, Department of Commerce 
                (Parts 500--599)

           Title 38--Pensions, Bonuses, and Veterans' Relief

         I  Department of Veterans Affairs (Parts 0--99)

                       Title 39--Postal Service

         I  United States Postal Service (Parts 1--999)
       III  Postal Rate Commission (Parts 3000--3099)

                  Title 40--Protection of Environment

         I  Environmental Protection Agency (Parts 1--799)
         V  Council on Environmental Quality (Parts 1500--1599)
       VII  Environmental Protection Agency and Department of 
                Defense; Uniform National Discharge Standards for 
                Vessels of the Armed Forces (Parts 1700--1799)

          Title 41--Public Contracts and Property Management

            Subtitle B--Other Provisions Relating to Public 
                Contracts

[[Page 571]]

        50  Public Contracts, Department of Labor (Parts 50-1--50-
                999)
        51  Committee for Purchase From People Who Are Blind or 
                Severely Disabled (Parts 51-1--51-99)
        60  Office of Federal Contract Compliance Programs, Equal 
                Employment Opportunity, Department of Labor (Parts 
                60-1--60-999)
        61  Office of the Assistant Secretary for Veterans 
                Employment and Training, Department of Labor 
                (Parts 61-1--61-999)
            Subtitle C--Federal Property Management Regulations 
                System
       101  Federal Property Management Regulations (Parts 101-1--
                101-99)
       105  General Services Administration (Parts 105-1--105-999)
       109  Department of Energy Property Management Regulations 
                (Parts 109-1--109-99)
       114  Department of the Interior (Parts 114-1--114-99)
       115  Environmental Protection Agency (Parts 115-1--115-99)
       128  Department of Justice (Parts 128-1--128-99)
            Subtitle D--Other Provisions Relating to Property 
                Management [Reserved]
            Subtitle E--Federal Information Resources Management 
                Regulations System
       201  Federal Information Resources Management Regulation 
                (Parts 201-1--201-99) [Reserved]
            Subtitle F--Federal Travel Regulation System
       300  General (Parts 300-1--300.99)
       301  Temporary Duty (TDY) Travel Allowances (Parts 301-1--
                301-99)
       302  Relocation Allowances (Parts 302-1--302-99)
       303  Payment of Expenses Connected with the Death of 
                Certain Employees (Parts 303-1--303-2)
       304  Payment from a Non-Federal Source for Travel Expenses 
                (Parts 304-1--304-99)

                        Title 42--Public Health

         I  Public Health Service, Department of Health and Human 
                Services (Parts 1--199)
        IV  Health Care Financing Administration, Department of 
                Health and Human Services (Parts 400--499)
         V  Office of Inspector General-Health Care, Department of 
                Health and Human Services (Parts 1000--1999)

                   Title 43--Public Lands: Interior

            Subtitle A--Office of the Secretary of the Interior 
                (Parts 1--199)
            Subtitle B--Regulations Relating to Public Lands
         I  Bureau of Reclamation, Department of the Interior 
                (Parts 200--499)
        II  Bureau of Land Management, Department of the Interior 
                (Parts 1000--9999)

[[Page 572]]

       III  Utah Reclamation Mitigation and Conservation 
                Commission (Parts 10000--10005)

             Title 44--Emergency Management and Assistance

         I  Federal Emergency Management Agency (Parts 0--399)
        IV  Department of Commerce and Department of 
                Transportation (Parts 400--499)

                       Title 45--Public Welfare

            Subtitle A--Department of Health and Human Services 
                (Parts 1--199)
            Subtitle B--Regulations Relating to Public Welfare
        II  Office of Family Assistance (Assistance Programs), 
                Administration for Children and Families, 
                Department of Health and Human Services (Parts 
                200--299)
       III  Office of Child Support Enforcement (Child Support 
                Enforcement Program), Administration for Children 
                and Families, Department of Health and Human 
                Services (Parts 300--399)
        IV  Office of Refugee Resettlement, Administration for 
                Children and Families Department of Health and 
                Human Services (Parts 400--499)
         V  Foreign Claims Settlement Commission of the United 
                States, Department of Justice (Parts 500--599)
        VI  National Science Foundation (Parts 600--699)
       VII  Commission on Civil Rights (Parts 700--799)
      VIII  Office of Personnel Management (Parts 800--899)
         X  Office of Community Services, Administration for 
                Children and Families, Department of Health and 
                Human Services (Parts 1000--1099)
        XI  National Foundation on the Arts and the Humanities 
                (Parts 1100--1199)
       XII  Corporation for National and Community Service (Parts 
                1200--1299)
      XIII  Office of Human Development Services, Department of 
                Health and Human Services (Parts 1300--1399)
       XVI  Legal Services Corporation (Parts 1600--1699)
      XVII  National Commission on Libraries and Information 
                Science (Parts 1700--1799)
     XVIII  Harry S. Truman Scholarship Foundation (Parts 1800--
                1899)
       XXI  Commission on Fine Arts (Parts 2100--2199)
      XXII  Christopher Columbus Quincentenary Jubilee Commission 
                (Parts 2200--2299)
     XXIII  Arctic Research Commission (Part 2301)
      XXIV  James Madison Memorial Fellowship Foundation (Parts 
                2400--2499)
       XXV  Corporation for National and Community Service (Parts 
                2500--2599)

[[Page 573]]

                          Title 46--Shipping

         I  Coast Guard, Department of Transportation (Parts 1--
                199)
        II  Maritime Administration, Department of Transportation 
                (Parts 200--399)
       III  Coast Guard (Great Lakes Pilotage), Department of 
                Transportation (Parts 400--499)
        IV  Federal Maritime Commission (Parts 500--599)

                      Title 47--Telecommunication

         I  Federal Communications Commission (Parts 0--199)
        II  Office of Science and Technology Policy and National 
                Security Council (Parts 200--299)
       III  National Telecommunications and Information 
                Administration, Department of Commerce (Parts 
                300--399)

           Title 48--Federal Acquisition Regulations System

         1  Federal Acquisition Regulation (Parts 1--99)
         2  Department of Defense (Parts 200--299)
         3  Department of Health and Human Services (Parts 300--
                399)
         4  Department of Agriculture (Parts 400--499)
         5  General Services Administration (Parts 500--599)
         6  Department of State (Parts 600--699)
         7  United States Agency for International Development 
                (Parts 700--799)
         8  Department of Veterans Affairs (Parts 800--899)
         9  Department of Energy (Parts 900--999)
        10  Department of the Treasury (Parts 1000--1099)
        12  Department of Transportation (Parts 1200--1299)
        13  Department of Commerce (Parts 1300--1399)
        14  Department of the Interior (Parts 1400--1499)
        15  Environmental Protection Agency (Parts 1500--1599)
        16  Office of Personnel Management Federal Employees 
                Health Benefits Acquisition Regulation (Parts 
                1600--1699)
        17  Office of Personnel Management (Parts 1700--1799)
        18  National Aeronautics and Space Administration (Parts 
                1800--1899)
        19  United States Information Agency (Parts 1900--1999)
        20  Nuclear Regulatory Commission (Parts 2000--2099)
        21  Office of Personnel Management, Federal Employees 
                Group Life Insurance Federal Acquisition 
                Regulation (Parts 2100--2199)
        23  Social Security Administration (Parts 2300--2399)
        24  Department of Housing and Urban Development (Parts 
                2400--2499)
        25  National Science Foundation (Parts 2500--2599)
        28  Department of Justice (Parts 2800--2899)
        29  Department of Labor (Parts 2900--2999)

[[Page 574]]

        34  Department of Education Acquisition Regulation (Parts 
                3400--3499)
        35  Panama Canal Commission (Parts 3500--3599)
        44  Federal Emergency Management Agency (Parts 4400--4499)
        51  Department of the Army Acquisition Regulations (Parts 
                5100--5199)
        52  Department of the Navy Acquisition Regulations (Parts 
                5200--5299)
        53  Department of the Air Force Federal Acquisition 
                Regulation Supplement (Parts 5300--5399)
        54  Defense Logistics Agency, Department of Defense (Part 
                5452)
        57  African Development Foundation (Parts 5700--5799)
        61  General Services Administration Board of Contract 
                Appeals (Parts 6100--6199)
        63  Department of Transportation Board of Contract Appeals 
                (Parts 6300--6399)
        99  Cost Accounting Standards Board, Office of Federal 
                Procurement Policy, Office of Management and 
                Budget (Parts 9900--9999)

                       Title 49--Transportation

            Subtitle A--Office of the Secretary of Transportation 
                (Parts 1--99)
            Subtitle B--Other Regulations Relating to 
                Transportation
         I  Research and Special Programs Administration, 
                Department of Transportation (Parts 100--199)
        II  Federal Railroad Administration, Department of 
                Transportation (Parts 200--299)
       III  Federal Highway Administration, Department of 
                Transportation (Parts 300--399)
        IV  Coast Guard, Department of Transportation (Parts 400--
                499)
         V  National Highway Traffic Safety Administration, 
                Department of Transportation (Parts 500--599)
        VI  Federal Transit Administration, Department of 
                Transportation (Parts 600--699)
       VII  National Railroad Passenger Corporation (AMTRAK) 
                (Parts 700--799)
      VIII  National Transportation Safety Board (Parts 800--999)
         X  Surface Transportation Board, Department of 
                Transportation (Parts 1000--1399)
        XI  Bureau of Transportation Statistics, Department of 
                Transportation (Parts 1400--1499)

                   Title 50--Wildlife and Fisheries

         I  United States Fish and Wildlife Service, Department of 
                the Interior (Parts 1--199)

[[Page 575]]

        II  National Marine Fisheries Service, National Oceanic 
                and Atmospheric Administration, Department of 
                Commerce (Parts 200--299)
       III  International Fishing and Related Activities (Parts 
                300--399)
        IV  Joint Regulations (United States Fish and Wildlife 
                Service, Department of the Interior and National 
                Marine Fisheries Service, National Oceanic and 
                Atmospheric Administration, Department of 
                Commerce); Endangered Species Committee 
                Regulations (Parts 400--499)
         V  Marine Mammal Commission (Parts 500--599)
        VI  Fishery Conservation and Management, National Oceanic 
                and Atmospheric Administration, Department of 
                Commerce (Parts 600--699)

                      CFR Index and Finding Aids

            Subject/Agency Index
            List of Agency Prepared Indexes
            Parallel Tables of Statutory Authorities and Rules
            List of CFR Titles, Chapters, Subchapters, and Parts
            Alphabetical List of Agencies Appearing in the CFR

[[Page 577]]





           Alphabetical List of Agencies Appearing in the CFR




                      (Revised as of July 1, 1999)

                                                  CFR Title, Subtitle or 
                     Agency                               Chapter

Administrative Committee of the Federal Register  1, I
Advanced Research Projects Agency                 32, I
Advisory Commission on Intergovernmental          5, VII
     Relations
Advisory Committee on Federal Pay                 5, IV
Advisory Council on Historic Preservation         36, VIII
African Development Foundation                    22, XV
  Federal Acquisition Regulation                  48, 57
Agency for International Development, United      22, II
     States
  Federal Acquisition Regulation                  48, 7
Agricultural Marketing Service                    7, I, IX, X, XI
Agricultural Research Service                     7, V
Agriculture Department
  Agricultural Marketing Service                  7, I, IX, X, XI
  Agricultural Research Service                   7, V
  Animal and Plant Health Inspection Service      7, III; 9, I
  Chief Financial Officer, Office of              7, XXX
  Commodity Credit Corporation                    7, XIV
  Cooperative State Research, Education, and      7, XXXIV
       Extension Service
  Economic Research Service                       7, XXXVII
  Energy, Office of                               7, XXIX
  Environmental Quality, Office of                7, XXXI
  Farm Service Agency                             7, VII, XVIII
  Federal Acquisition Regulation                  48, 4
  Federal Crop Insurance Corporation              7, IV
  Food and Nutrition Service                      7, II
  Food Safety and Inspection Service              9, III
  Foreign Agricultural Service                    7, XV
  Forest Service                                  36, II
  Grain Inspection, Packers and Stockyards        7, VIII; 9, II
       Administration
  Information Resources Management, Office of     7, XXVII
  Inspector General, Office of                    7, XXVI
  National Agricultural Library                   7, XLI
  National Agricultural Statistics Service        7, XXXVI
  Natural Resources Conservation Service          7, VI
  Operations, Office of                           7, XXVIII
  Procurement and Property Management, Office of  7, XXXII
  Rural Business-Cooperative Service              7, XVIII, XLII
  Rural Development Administration                7, XLII
  Rural Housing Service                           7, XVIII, XXXV
  Rural Telephone Bank                            7, XVI
  Rural Utilities Service                         7, XVII, XVIII, XLII
  Secretary of Agriculture, Office of             7, Subtitle A
  Transportation, Office of                       7, XXXIII
  World Agricultural Outlook Board                7, XXXVIII
Air Force Department                              32, VII
  Federal Acquisition Regulation Supplement       48, 53
Alcohol, Tobacco and Firearms, Bureau of          27, I
AMTRAK                                            49, VII
American Battle Monuments Commission              36, IV
American Indians, Office of the Special Trustee   25, VII
Animal and Plant Health Inspection Service        7, III; 9, I
Appalachian Regional Commission                   5, IX

[[Page 578]]

Architectural and Transportation Barriers         36, XI
     Compliance Board
Arctic Research Commission                        45, XXIII
Armed Forces Retirement Home                      5, XI
Army Department                                   32, V
  Engineers, Corps of                             33, II; 36, III
  Federal Acquisition Regulation                  48, 51
Assassination Records Review Board                36, XIV
Benefits Review Board                             20, VII
Bilingual Education and Minority Languages        34, V
     Affairs, Office of
Blind or Severely Disabled, Committee for         41, 51
     Purchase From People Who Are
Board for International Broadcasting              22, XIII
Census Bureau                                     15, I
Central Intelligence Agency                       32, XIX
Chief Financial Officer, Office of                7, XXX
Child Support Enforcement, Office of              45, III
Children and Families, Administration for         45, II, III, IV, X
Christopher Columbus Quincentenary Jubilee        45, XXII
     Commission
Civil Rights, Commission on                       45, VII
Civil Rights, Office for                          34, I
Coast Guard                                       33, I; 46, I; 49, IV
Coast Guard (Great Lakes Pilotage)                46, III
Commerce Department                               44, IV
  Census Bureau                                   15, I
  Economic Affairs, Under Secretary               37, V
  Economic Analysis, Bureau of                    15, VIII
  Economic Development Administration             13, III
  Emergency Management and Assistance             44, IV
  Export Administration, Bureau of                15, VII
  Federal Acquisition Regulation                  48, 13
  Fishery Conservation and Management             50, VI
  Foreign-Trade Zones Board                       15, IV
  International Trade Administration              15, III; 19, III
  National Institute of Standards and Technology  15, II
  National Marine Fisheries Service               50, II, IV, VI
  National Oceanic and Atmospheric                15, IX; 50, II, III, IV, 
       Administration                             VI
  National Telecommunications and Information     15, XXIII; 47, III
       Administration
  National Weather Service                        15, IX
  Patent and Trademark Office                     37, I
  Productivity, Technology and Innovation,        37, IV
       Assistant Secretary for
  Secretary of Commerce, Office of                15, Subtitle A
  Technology, Under Secretary for                 37, V
  Technology Administration                       15, XI
  Technology Policy, Assistant Secretary for      37, IV
Commercial Space Transportation                   14, III
Commodity Credit Corporation                      7, XIV
Commodity Futures Trading Commission              5, XLI; 17, I
Community Planning and Development, Office of     24, V, VI
     Assistant Secretary for
Community Services, Office of                     45, X
Comptroller of the Currency                       12, I
Construction Industry Collective Bargaining       29, IX
     Commission
Consumer Product Safety Commission                5, LXXI; 16, II
Cooperative State Research, Education, and        7, XXXIV
     Extension Service
Copyright Office                                  37, II
Corporation for National and Community Service    45, XII, XXV
Cost Accounting Standards Board                   48, 99
Council on Environmental Quality                  40, V
Customs Service, United States                    19, I
Defense Contract Audit Agency                     32, I
Defense Department                                5, XXVI; 32, Subtitle A; 
                                                  40, VII
  Advanced Research Projects Agency               32, I
  Air Force Department                            32, VII

[[Page 579]]

  Army Department                                 32, V; 33, II; 36, III, 
                                                  48, 51
  Defense Intelligence Agency                     32, I
  Defense Logistics Agency                        32, I, XII; 48, 54
  Engineers, Corps of                             33, II; 36, III
  Federal Acquisition Regulation                  48, 2
  National Imagery and Mapping Agency             32, I
  Navy Department                                 32, VI; 48, 52
  Secretary of Defense, Office of                 32, I
Defense Contract Audit Agency                     32, I
Defense Intelligence Agency                       32, I
Defense Logistics Agency                          32, XII; 48, 54
Defense Nuclear Facilities Safety Board           10, XVII
Delaware River Basin Commission                   18, III
Drug Enforcement Administration                   21, II
East-West Foreign Trade Board                     15, XIII
Economic Affairs, Under Secretary                 37, V
Economic Analysis, Bureau of                      15, VIII
Economic Development Administration               13, III
Economic Research Service                         7, XXXVII
Education, Department of                          5, LIII
  Bilingual Education and Minority Languages      34, V
       Affairs, Office of
  Civil Rights, Office for                        34, I
  Educational Research and Improvement, Office    34, VII
       of
  Elementary and Secondary Education, Office of   34, II
  Federal Acquisition Regulation                  48, 34
  Postsecondary Education, Office of              34, VI
  Secretary of Education, Office of               34, Subtitle A
  Special Education and Rehabilitative Services,  34, III
       Office of
  Vocational and Adult Education, Office of       34, IV
Educational Research and Improvement, Office of   34, VII
Elementary and Secondary Education, Office of     34, II
Employees' Compensation Appeals Board             20, IV
Employees Loyalty Board                           5, V
Employment and Training Administration            20, V
Employment Standards Administration               20, VI
Endangered Species Committee                      50, IV
Energy, Department of                             5, XXIII; 10, II, III, X
  Federal Acquisition Regulation                  48, 9
  Federal Energy Regulatory Commission            5, XXIV; 18, I
  Property Management Regulations                 41, 109
Energy, Office of                                 7, XXIX
Engineers, Corps of                               33, II; 36, III
Engraving and Printing, Bureau of                 31, VI
Environmental Protection Agency                   5, LIV; 40, I, VII
  Federal Acquisition Regulation                  48, 15
  Property Management Regulations                 41, 115
Environmental Quality, Office of                  7, XXXI
Equal Employment Opportunity Commission           5, LXII; 29, XIV
Equal Opportunity, Office of Assistant Secretary  24, I
     for
Executive Office of the President                 3, I
  Administration, Office of                       5, XV
  Environmental Quality, Council on               40, V
  Management and Budget, Office of                25, III, LXXVII; 48, 99
  National Drug Control Policy, Office of         21, III
  National Security Council                       32, XXI; 47, 2
  Presidential Documents                          3
  Science and Technology Policy, Office of        32, XXIV; 47, II
  Trade Representative, Office of the United      15, XX
       States
Export Administration, Bureau of                  15, VII
Export-Import Bank of the United States           5, LII; 12, IV
Family Assistance, Office of                      45, II
Farm Credit Administration                        5, XXXI; 12, VI
Farm Credit System Insurance Corporation          5, XXX; 12, XIV
Farm Service Agency                               7, VII, XVIII
Federal Acquisition Regulation                    48, 1

[[Page 580]]

Federal Aviation Administration                   14, I
  Commercial Space Transportation                 14, III
Federal Claims Collection Standards               4, II
Federal Communications Commission                 5, XXIX; 47, I
Federal Contract Compliance Programs, Office of   41, 60
Federal Crop Insurance Corporation                7, IV
Federal Deposit Insurance Corporation             5, XXII; 12, III
Federal Election Commission                       11, I
Federal Emergency Management Agency               44, I
  Federal Acquisition Regulation                  48, 44
Federal Employees Group Life Insurance Federal    48, 21
     Acquisition Regulation
Federal Employees Health Benefits Acquisition     48, 16
     Regulation
Federal Energy Regulatory Commission              5, XXIV; 18, I
Federal Financial Institutions Examination        12, XI
     Council
Federal Financing Bank                            12, VIII
Federal Highway Administration                    23, I, II; 49, III
Federal Home Loan Mortgage Corporation            1, IV
Federal Housing Enterprise Oversight Office       12, XVII
Federal Housing Finance Board                     12, IX
Federal Labor Relations Authority, and General    5, XIV; 22, XIV
     Counsel of the Federal Labor Relations 
     Authority
Federal Law Enforcement Training Center           31, VII
Federal Maritime Commission                       46, IV
Federal Mediation and Conciliation Service        29, XII
Federal Mine Safety and Health Review Commission  5, LXXIV; 29, XXVII
Federal Pay, Advisory Committee on                5, IV
Federal Prison Industries, Inc.                   28, III
Federal Procurement Policy Office                 48, 99
Federal Property Management Regulations           41, 101
Federal Property Management Regulations System    41, Subtitle C
Federal Railroad Administration                   49, II
Federal Register, Administrative Committee of     1, I
Federal Register, Office of                       1, II
Federal Reserve System                            12, II
  Board of Governors                              5, LVIII
Federal Retirement Thrift Investment Board        5, VI, LXXVI
Federal Service Impasses Panel                    5, XIV
Federal Trade Commission                          5, XLVII; 16, I
Federal Transit Administration                    49, VI
Federal Travel Regulation System                  41, Subtitle F
Fine Arts, Commission on                          45, XXI
Fiscal Service                                    31, II
Fish and Wildlife Service, United States          50, I, IV
Fishery Conservation and Management               50, VI
Food and Drug Administration                      21, I
Food and Nutrition Service                        7, II
Food Safety and Inspection Service                9, III
Foreign Agricultural Service                      7, XV
Foreign Assets Control, Office of                 31, V
Foreign Claims Settlement Commission of the       45, V
     United States
Foreign Service Grievance Board                   22, IX
Foreign Service Impasse Disputes Panel            22, XIV
Foreign Service Labor Relations Board             22, XIV
Foreign-Trade Zones Board                         15, IV
Forest Service                                    36, II
General Accounting Office                         4, I, II
General Services Administration                   5, LVII
  Contract Appeals, Board of                      48, 61
  Federal Acquisition Regulation                  48, 5
  Federal Property Management Regulations System  41, 101, 105
  Federal Travel Regulation System                41, Subtitle F
  General                                         41, 300
  Payment From a Non-Federal Source for Travel    41, 304
       Expenses
  Payment of Expenses Connected With the Death    41, 303
       of Certain Employees
  Relocation Allowances                           41, 302

[[Page 581]]

  Temporary Duty (TDY) Travel Allowances          41, 301
Geological Survey                                 30, IV
Government Ethics, Office of                      5, XVI
Government National Mortgage Association          24, III
Grain Inspection, Packers and Stockyards          7, VIII; 9, II
     Administration
Harry S. Truman Scholarship Foundation            45, XVIII
Health and Human Services, Department of          5, XLV; 45, Subtitle A
  Child Support Enforcement, Office of            45, III
  Children and Families, Administration for       45, II, III, IV, X
  Community Services, Office of                   45, X
  Family Assistance, Office of                    45, II
  Federal Acquisition Regulation                  48, 3
  Food and Drug Administration                    21, I
  Health Care Financing Administration            42, IV
  Human Development Services, Office of           45, XIII
  Indian Health Service                           25, V
  Inspector General (Health Care), Office of      42, V
  Public Health Service                           42, I
  Refugee Resettlement, Office of                 45, IV
Health Care Financing Administration              42, IV
Housing and Urban Development, Department of      5, LXV; 24, Subtitle B
  Community Planning and Development, Office of   24, V, VI
       Assistant Secretary for
  Equal Opportunity, Office of Assistant          24, I
       Secretary for
  Federal Acquisition Regulation                  48, 24
  Federal Housing Enterprise Oversight, Office    12, XVII
       of
  Government National Mortgage Association        24, III
  Housing--Federal Housing Commissioner, Office   24, II, VIII, X, XX
       of Assistant Secretary for
  Inspector General, Office of                    24, XII
  Multifamily Housing Assistance Restructuring,   24, IV
       Office of
  Public and Indian Housing, Office of Assistant  24, IX
       Secretary for
  Secretary, Office of                            24, Subtitle A, VII
Housing--Federal Housing Commissioner, Office of  24, II, VIII, X, XX
     Assistant Secretary for
Human Development Services, Office of             45, XIII
Immigration and Naturalization Service            8, I
Independent Counsel, Office of                    28, VII
Indian Affairs, Bureau of                         25, I, V
Indian Affairs, Office of the Assistant           25, VI
     Secretary
Indian Arts and Crafts Board                      25, II
Indian Health Service                             25, V
Information Agency, United States                 22, V
  Federal Acquisition Regulation                  48, 19
Information Resources Management, Office of       7, XXVII
Information Security Oversight Office, National   32, XX
     Archives and Records Administration
Inspector General
  Agriculture Department                          7, XXVI
  Health and Human Services Department            42, V
  Housing and Urban Development Department        24, XII
Institute of Peace, United States                 22, XVII
Inter-American Foundation                         5, LXIII; 22, X
Intergovernmental Relations, Advisory Commission  5, VII
     on
Interior Department
  American Indians, Office of the Special         25, VII
       Trustee
  Endangered Species Committee                    50, IV
  Federal Acquisition Regulation                  48, 14
  Federal Property Management Regulations System  41, 114
  Fish and Wildlife Service, United States        50, I, IV
  Geological Survey                               30, IV
  Indian Affairs, Bureau of                       25, I, V
  Indian Affairs, Office of the Assistant         25, VI
       Secretary
  Indian Arts and Crafts Board                    25, II
  Land Management, Bureau of                      43, II
  Minerals Management Service                     30, II
  Mines, Bureau of                                30, VI

[[Page 582]]

  National Indian Gaming Commission               25, III
  National Park Service                           36, I
  Reclamation, Bureau of                          43, I
  Secretary of the Interior, Office of            43, Subtitle A
  Surface Mining and Reclamation Appeals, Board   30, III
       of
  Surface Mining Reclamation and Enforcement,     30, VII
       Office of
Internal Revenue Service                          26, I
International Boundary and Water Commission,      22, XI
     United States and Mexico, United States 
     Section
International Development, United States Agency   22, II
     for
  Federal Acquisition Regulation                  48, 7
International Development Cooperation Agency,     22, XII
     United States
  International Development, United States        22, II; 48, 7
       Agency for
  Overseas Private Investment Corporation         5, XXXIII; 22, VII
International Fishing and Related Activities      50, III
International Investment, Office of               31, VIII
International Joint Commission, United States     22, IV
     and Canada
International Organizations Employees Loyalty     5, V
     Board
International Trade Administration                15, III; 19, III
International Trade Commission, United States     19, II
Interstate Commerce Commission                    5, XL
James Madison Memorial Fellowship Foundation      45, XXIV
Japan-United States Friendship Commission         22, XVI
Joint Board for the Enrollment of Actuaries       20, VIII
Justice Department                                5, XXVIII; 28, I
  Drug Enforcement Administration                 21, II
  Federal Acquisition Regulation                  48, 28
  Federal Claims Collection Standards             4, II
  Federal Prison Industries, Inc.                 28, III
  Foreign Claims Settlement Commission of the     45, V
       United States
  Immigration and Naturalization Service          8, I
  Offices of Independent Counsel                  28, VI
  Prisons, Bureau of                              28, V
  Property Management Regulations                 41, 128
Labor Department                                  5, XLII
  Benefits Review Board                           20, VII
  Employees' Compensation Appeals Board           20, IV
  Employment and Training Administration          20, V
  Employment Standards Administration             20, VI
  Federal Acquisition Regulation                  48, 29
  Federal Contract Compliance Programs, Office    41, 60
       of
  Federal Procurement Regulations System          41, 50
  Labor-Management Standards, Office of           29, II, IV
  Mine Safety and Health Administration           30, I
  Occupational Safety and Health Administration   29, XVII
  Pension and Welfare Benefits Administration     29, XXV
  Public Contracts                                41, 50
  Secretary of Labor, Office of                   29, Subtitle A
  Veterans' Employment and Training, Office of    41, 61; 20, IX
       the Assistant Secretary for
  Wage and Hour Division                          29, V
  Workers' Compensation Programs, Office of       20, I
Labor-Management Standards, Office of             29, II, IV
Land Management, Bureau of                        43, II
Legal Services Corporation                        45, XVI
Library of Congress                               36, VII
  Copyright Office                                37, II
Management and Budget, Office of                  5, III, LXXVII; 48, 99
Marine Mammal Commission                          50, V
Maritime Administration                           46, II
Merit Systems Protection Board                    5, II
Micronesian Status Negotiations, Office for       32, XXVII
Mine Safety and Health Administration             30, I
Minerals Management Service                       30, II
Mines, Bureau of                                  30, VI

[[Page 583]]

Minority Business Development Agency              15, XIV
Miscellaneous Agencies                            1, IV
Monetary Offices                                  31, I
Multifamily Housing Assistance Restructuring,     24, IV
     Office of
National Aeronautics and Space Administration     5, LIX; 14, V
  Federal Acquisition Regulation                  48, 18
National Agricultural Library                     7, XLI
National Agricultural Statistics Service          7, XXXVI
National Archives and Records Administration      5, LXVI; 36, XII
  Information Security Oversight Office           32, XX
National Bureau of Standards                      15, II
National Capital Planning Commission              1, IV
National Commission for Employment Policy         1, IV
National Commission on Libraries and Information  45, XVII
     Science
National and Community Service, Corporation for   45, XII, XXV
National Council on Disability                    34, XII
National Credit Union Administration              12, VII
National Drug Control Policy, Office of           21, III
National Foundation on the Arts and the           45, XI
     Humanities
National Highway Traffic Safety Administration    23, II, III; 49, V
National Imagery and Mapping Agency               32, I
National Indian Gaming Commission                 25, III
National Institute for Literacy                   34, XI
National Institute of Standards and Technology    15, II
National Labor Relations Board                    5, LXI; 29, I
National Marine Fisheries Service                 50, II, IV, VI
National Mediation Board                          29, X
National Oceanic and Atmospheric Administration   15, IX; 50, II, III, IV, 
                                                  VI
National Park Service                             36, I
National Railroad Adjustment Board                29, III
National Railroad Passenger Corporation (AMTRAK)  49, VII
National Science Foundation                       5, XLIII; 45, VI
  Federal Acquisition Regulation                  48, 25
National Security Council                         32, XXI
National Security Council and Office of Science   47, II
     and Technology Policy
National Telecommunications and Information       15, XXIII; 47, III
     Administration
National Transportation Safety Board              49, VIII
National Weather Service                          15, IX
Natural Resources Conservation Service            7, VI
Navajo and Hopi Indian Relocation, Office of      25, IV
Navy Department                                   32, VI
  Federal Acquisition Regulation                  48, 52
Neighborhood Reinvestment Corporation             24, XXV
Northeast Dairy Compact Commission                7, XIII
Nuclear Regulatory Commission                     5, XLVIII; 10, I
  Federal Acquisition Regulation                  48, 20
Occupational Safety and Health Administration     29, XVII
Occupational Safety and Health Review Commission  29, XX
Offices of Independent Counsel                    28, VI
Operations Office                                 7, XXVIII
Overseas Private Investment Corporation           5, XXXIII; 22, VII
Panama Canal Commission                           48, 35
Panama Canal Regulations                          35, I
Patent and Trademark Office                       37, I
Payment From a Non-Federal Source for Travel      41, 304
     Expenses
Payment of Expenses Connected With the Death of   41, 303
     Certain Employees
Peace Corps                                       22, III
Pennsylvania Avenue Development Corporation       36, IX
Pension and Welfare Benefits Administration       29, XXV
Pension Benefit Guaranty Corporation              29, XL
Personnel Management, Office of                   5, I, XXXV; 45, VIII
  Federal Acquisition Regulation                  48, 17
  Federal Employees Group Life Insurance Federal  48, 21
     Acquisition Regulation
[[Page 584]]

  Federal Employees Health Benefits Acquisition   48, 16
       Regulation
Postal Rate Commission                            5, XLVI; 39, III
Postal Service, United States                     5, LX; 39, I
Postsecondary Education, Office of                34, VI
President's Commission on White House             1, IV
     Fellowships
Presidential Commission on the Assignment of      32, XXIX
     Women in the Armed Forces
Presidential Documents                            3
Presidio Trust                                    36, X
Prisons, Bureau of                                28, V
Procurement and Property Management, Office of    7, XXXII
Productivity, Technology and Innovation,          37, IV
     Assistant Secretary
Public Contracts, Department of Labor             41, 50
Public and Indian Housing, Office of Assistant    24, IX
     Secretary for
Public Health Service                             42, I
Railroad Retirement Board                         20, II
Reclamation, Bureau of                            43, I
Refugee Resettlement, Office of                   45, IV
Regional Action Planning Commissions              13, V
Relocation Allowances                             41, 302
Research and Special Programs Administration      49, I
Rural Business-Cooperative Service                7, XVIII, XLII
Rural Development Administration                  7, XLII
Rural Housing Service                             7, XVIII, XXXV
Rural Telephone Bank                              7, XVI
Rural Utilities Service                           7, XVII, XVIII, XLII
Saint Lawrence Seaway Development Corporation     33, IV
Science and Technology Policy, Office of          32, XXIV
Science and Technology Policy, Office of, and     47, II
     National Security Council
Secret Service                                    31, IV
Securities and Exchange Commission                17, II
Selective Service System                          32, XVI
Small Business Administration                     13, I
Smithsonian Institution                           36, V
Social Security Administration                    20, III; 48, 23
Soldiers' and Airmen's Home, United States        5, XI
Special Counsel, Office of                        5, VIII
Special Education and Rehabilitative Services,    34, III
     Office of
State Department                                  22, I
  Federal Acquisition Regulation                  48, 6
Surface Mining and Reclamation Appeals, Board of  30, III
Surface Mining Reclamation and Enforcement,       30, VII
     Office of
Surface Transportation Board                      49, X
Susquehanna River Basin Commission                18, VIII
Technology Administration                         15, XI
Technology Policy, Assistant Secretary for        37, IV
Technology, Under Secretary for                   37, V
Tennessee Valley Authority                        5, LXIX; 18, XIII
Thrift Supervision Office, Department of the      12, V
     Treasury
Trade Representative, United States, Office of    15, XX
Transportation, Department of                     5, L
  Coast Guard                                     33, I; 46, I; 49, IV
  Coast Guard (Great Lakes Pilotage)              46, III
  Commercial Space Transportation                 14, III
  Contract Appeals, Board of                      48, 63
  Emergency Management and Assistance             44, IV
  Federal Acquisition Regulation                  48, 12
  Federal Aviation Administration                 14, I
  Federal Highway Administration                  23, I, II; 49, III
  Federal Railroad Administration                 49, II
  Federal Transit Administration                  49, VI
  Maritime Administration                         46, II
  National Highway Traffic Safety Administration  23, II, III; 49, V
  Research and Special Programs Administration    49, I
  Saint Lawrence Seaway Development Corporation   33, IV

[[Page 585]]

  Secretary of Transportation, Office of          14, II; 49, Subtitle A
  Surface Transportation Board                    49, X
  Transportation Statistics Bureau                49, XI
Transportation, Office of                         7, XXXIII
Transportation Statistics Brureau                 49, XI
Travel Allowances, Temporary Duty (TDY)           41, 301
Treasury Department                               5, XXI; 12, XV; 17, IV
  Alcohol, Tobacco and Firearms, Bureau of        27, I
  Community Development Financial Institutions    12, XVIII
       Fund
  Comptroller of the Currency                     12, I
  Customs Service, United States                  19, I
  Engraving and Printing, Bureau of               31, VI
  Federal Acquisition Regulation                  48, 10
  Federal Law Enforcement Training Center         31, VII
  Fiscal Service                                  31, II
  Foreign Assets Control, Office of               31, V
  Internal Revenue Service                        26, I
  International Investment, Office of             31, VIII
  Monetary Offices                                31, I
  Secret Service                                  31, IV
  Secretary of the Treasury, Office of            31, Subtitle A
  Thrift Supervision, Office of                   12, V
Truman, Harry S. Scholarship Foundation           45, XVIII
United States and Canada, International Joint     22, IV
     Commission
United States and Mexico, International Boundary  22, XI
     and Water Commission, United States Section
Utah Reclamation Mitigation and Conservation      43, III
     Commission
Veterans Affairs Department                       38, I
  Federal Acquisition Regulation                  48, 8
Veterans' Employment and Training, Office of the  41, 61; 20, IX
     Assistant Secretary for
Vice President of the United States, Office of    32, XXVIII
Vocational and Adult Education, Office of         34, IV
Wage and Hour Division                            29, V
Water Resources Council                           18, VI
Workers' Compensation Programs, Office of         20, I
World Agricultural Outlook Board                  7, XXXVIII

[[Page 587]]



List of CFR Sections Affected




All changes in this volume of the Code of Federal Regulations which were 
made by documents published in the Federal Register since January 1, 
1986, are enumerated in the following list. Entries indicate the nature 
of the changes effected. Page numbers refer to Federal Register pages. 
The user should consult the entries for chapters and parts as well as 
sections for revisions.
For the period before January 1, 1986, see the ``List of CFR Sections 
Affected, 1949-1963, 1964-1972, and 1973-1985'' published in seven 
separate volumes.

                                  1986

37 CFR
                                                                   51 FR
                                                                    Page
Chapter I
1.24  Revised......................................................28057
    Effective date corrected.......................................28556
2  Authority citation revised...............................28057, 28709
2.1  Revised.......................................................28709
2.6  Introductory text republished; (a), (n), (o), and (q) revised
                                                                   28057
    Effective date corrected; text corrected.......................28556
2.21  (a) introductory text republished; (a)(3) revised............29921
2.52  Revised......................................................29921
2.54  Removed......................................................29922
2.58  (b) revised..................................................29922
2.101  (b) revised.................................................28709
2.104  Revised.....................................................28709
2.112  (a) revised.................................................28710
2.114  (c) revised.................................................28710
2.132  (c) revised.................................................28710
2.145  (d)(1) revised..............................................28710
Chapter II
201  Policy statement................................................599
201.2  (b)(2) and (c)(1) amended...................................30062
201.17  (j)(3) temporarily waived....................................599
    (k) added; interim.............................................30216
    (k) revised....................................................45112
202  Authority citation revised.....................................6403
202.19  Revised.....................................................6403
202.20  Revised.....................................................6405
202.21  Revised.....................................................6409
Chapter III
304.5  (c) amended.................................................43609
306.3  Revised.....................................................27537
306.4  Removed.....................................................27537
Chapter IV
401  Added; interim................................................25511

                                  1987

37 CFR
                                                                   52 FR
                                                                    Page
Chapter I
1.1  (f) added......................................................9394
1.8  (a)(2)(xi) revised............................................20046
1.20  (n) added.....................................................9394
1.61  Removed......................................................20046
1.70  Removed......................................................20046
1.101  (a) revised.................................................20046
1.141  Revised.....................................................20046
1.401--1.499 (Subpart C)  Authority citation revised...............20047
1.401  (g) redesignated as (i); new (g) and (h) added..............20047
1.414  Revised.....................................................20047
1.416  Added.......................................................20047
1.431  (d)(2) revised..............................................20047
1.432  (b) revised.................................................20047
1.445  Heading and (a) revised.....................................20047
1.472  Redesignated from 1.475.....................................20047
1.475  Redesignated as 1.472; new 1.475 added......................20047
1.476  Redesignated from 1.481 and (a) revised.....................20048
1.477  Redesignated from 1.482 and heading and (b) revised.........20048
1.480--1.489  Undesignated center heading added....................20048
1.480  Added.......................................................20048

[[Page 588]]

1.481  Redesignated as 1.476 and (a) revised.......................20048
1.482  Redesignated as 1.477 and heading and (b) revised; new 
        1.482 added................................................20048
1.484  Added.......................................................20049
1.485  Added.......................................................20049
1.487  Added.......................................................20049
1.488  Added.......................................................20049
1.489  Added.......................................................20050
1.491--1.499  Undesignated center heading added....................20050
1.491  Added.......................................................20050
1.492  Added.......................................................20050
1.494  Added.......................................................20050
1.495  Added.......................................................20051
1.496  Added.......................................................20051
1.497  Added.......................................................20052
1.499  Added.......................................................20052
1.690  Added.......................................................13838
1.710--1.785 (Subpart F)  Added.....................................9394
Chapter II
201.11  Heading, (a)(1), (2), and (5), and (b) through (f) 
        removed; (a)(3) and (4) redesignated as 201.17 (b)(2) and 
        (4)........................................................28253
201.17  (b)(2) and (4) redesignated from 201.11 (a)(3) and (4); 
        (b)(7), (e)(2), (9)(vii), and (12), and (g) amended; 
        (d)(2)(i) and (ii), (e)(14)(iii)(E), (h)(2) introductory 
        text, and (3) introductory text revised; footnote 8, 
        (h)(4)(iv), and (j)(5) removed.............................28253
202  Registration decision.........................................23443
202.23  Revised....................................................28822
Chapter III
304  Revised.......................................................49011
307.3  (a), (b) and (c) amended; (d) and (e) added; eff. 7-15-87 
                                                                   22637
    (e)(2) correctly revised.......................................23546
    (d) and (e)(1) revised.........................................41711
Chapter IV
401  Revised........................................................8554

                                  1988

37 CFR
                                                                   53 FR
                                                                    Page
Chapter I
1.1  (g) added.....................................................16413
1.4  (a)(2) revised................................................47807
1.5  (a) and (b) revised...........................................47807
1.14  (e) revised; eff. 9-12-88....................................23733
1.15  Revised......................................................47686
1.53  (c) and (d) revised..........................................47808
1.56  (e) revised..................................................47808
1.71  (d) and (e) added............................................47808
1.81  Heading and (a) revised......................................47808
1.84  (a), (b) introductory text, (i), (j), and (l) revised; 
        (b)(2) redesignated as (b)(3); new (b)(2), (n), (o), and 
        (p) added..................................................47809
1.85  Revised......................................................47810
1.131  (a) and (b) revised; eff. 9-12-88...........................23734
1.152  Revised.....................................................47810
1.192  (a) revised; (c) and (d) added; eff. 9-12-88................23734
1.193  (b) revised; eff. 9-12-88...................................23735
1.194  (b) revised; eff. 9-12-88...................................23735
1.196  (b)(1) revised; eff. 9-12-88................................23735
1.302  (c) added...................................................16414
1.378  (b)(1) and (c)(1) revised...................................47810
1.421  (f) revised; (g) added......................................47810
1.480  (d) revised.................................................47810
1.604  (a) revised; eff. 9-12-88...................................23735
1.607  (a) revised; eff. 9-12-88...................................23735
1.612  (a) revised; eff. 9-12-88...................................23735
1.637  (e)(1)(vi) revised; eff. 9-12-88............................23735
1.662  (b) revised; eff. 9-12-88...................................23735
2.145  (b)(3) added................................................16414
5  Authority citation revised......................................23735
5.3  (b) revised; eff. 9-12-88.....................................23736
10.6  (d) and (e) removed..........................................38950
10.10  Revised.....................................................38950
    (b)(1) and (2) corrected.......................................41278
10.23  (c)(13) revised; (c)(19) and (29) added.....................38950
    (c)(13) corrected..............................................41278
10.157  (a) corrected..............................................13120
150 (Subchapter C and part)  Added; eff. 8-1-88....................24447
100  Removed.......................................................39734
Chapter II
201  Policy decision................................................2493
    Policy decision corrected.......................................3118
201.4  (c)(1) revised; (c) introductory text republished.............123
201.8  Removed.......................................................124
202.3  Registration decision.......................................21817
202.20  (c)(2)(ii) amended.........................................29890
203.6  Revised......................................................8456
Chapter III
304.5  (c)(1) through (4) revised..................................48535
Chapter V
Chapter V  Chapter established.....................................39735
501  Added.........................................................39735

[[Page 589]]

                                  1989

37 CFR
                                                                   54 FR
                                                                    Page
Chapter I
1.1  (h) added.....................................................37588
1.8  (a)(2)(xiv), (xv), and (xvi) added............................37588
1.12  (a) and (c) revised...........................................6900
1.14  (e) revised...................................................6900
1.16  (a), (b), (d) through (i), and note revised...................6900
1.17  (a) through (h), and (j) through (m) revised; existing (i) 
        redesignated as (i)(1) and revised; new (i)(2) added........6901
    (g), (h), (l)(1), and (m) corrected.............................9431
    (i)(1) revised.................................................47518
1.18  Revised.......................................................6901
1.19  Revised.......................................................6901
    (a)(1) corrected................................................9432
1.20  Revised.......................................................6902
    (i) and (j) corrected...........................................8053
1.21  Introductory text and (b) republished; (a), (b)(1), (d) 
        through (j), (l), and (m) revised...........................6902
    (b) corrected...................................................8053
    (e) corrected...................................................9432
    (d) and (g) corrected..........................................34282
    (n) added......................................................47518
    (o) through (q) added..........................................50949
    (o) corrected..................................................51550
1.26  (c) revised...................................................6902
1.53  (b) and (c) revised..........................................47518
1.55  (a) revised..................................................47518
1.60  (a) removed; (b) revised; new (c) added......................47519
1.62  (e) revised; (j) added.......................................47519
1.96  (b)(1) revised...............................................47519
1.102  (d) revised..................................................6903
1.103  (a) revised..................................................6903
1.136  Revised.....................................................29551
    (b) corrected..................................................32637
1.171  Revised......................................................6903
    Corrected.......................................................9432
1.177  Revised......................................................6903
    Corrected.......................................................9432
1.191  (b) and (d) revised; (e) added..............................29552
1.196  (a), (b) and (d) revised; (e) and (f) added.................29552
1.197  (b) and (c) revised.........................................29552
1.296  Revised......................................................6903
1.301  Revised.....................................................29552
1.303  (c) revised.................................................29553
    (c) corrected..................................................32637
1.304  Revised.....................................................29553
1.313  (a) revised..................................................6903
    (a) corrected...................................................9432
1.314  Revised......................................................6903
1.334  (c) revised..................................................6903
1.445  (a) introductory text republished; (a)(2) and (3) revised 
                                                                    6903
    Heading and (a) introductory text corrected; (a)(2)(iii) 
correctly redesignated as (a)(3)....................................9432
1.451  (b) revised..................................................6903
1.482  (a) revised..................................................6904
1.492  Introductory text and (a) republished; (a)(1) through (3); 
        (b), (d) and (f) revised....................................6904
1.550  (c) revised.................................................29553
1.645  (a) and (b) revised.........................................29553
1.658  (b) revised.................................................29553
1.666  (b) revised..................................................6904
1.710  Revised.....................................................30379
1.720  (e)(2) and (f) revised; (e)(3) added........................30380
1.740  (a)(4), (9), (10), and (13) revised.........................30380
1.741  (a)(2) and (5) revised......................................30380
1.765  (a) revised.................................................30381
1.775  Heading and (a), (b), (c), and (d) introductory text 
        revised....................................................30381
1.778  Added.......................................................30381
1.779  Added.......................................................30382
1.785  (b) revised.................................................30382
1.801--1.809 (Subpart G)  Undesignated center heading and sections 
        added......................................................34880
2  Technical correction............................................51550
2.2  Added.........................................................37588
2.6  (a) and (q) revised............................................6904
    Introductory text republished; (u) and (v) added...............37588
    (x) added......................................................50949
    (w) added; eff. to 2-12-90 and suspended.......................50949
2.18  Revised......................................................37588
2.21  (a)(5) and (6) revised.......................................37588
2.24  Revised......................................................37588
2.31  Revised......................................................37589
2.33  (a)(1)(ix) redesignated as (a)(1)(x); Heading, (a)(1)(ii), 
        (iv) through (viii), new (x), (2), (b), and (c) revised; 
        new (a)(1)(ix) and (d) added...............................37589
2.38  (a) revised..................................................37589
2.39  Revised......................................................37589
2.41  Revised......................................................37590
2.42  Revised......................................................34897
2.44  Revised......................................................37590

[[Page 590]]

2.45  Revised......................................................37590
2.47  Revised......................................................37590
2.51  Revised......................................................37590
2.52  (a), (d), and (e) revised....................................37591
    (e) corrected..................................................46231
2.53  Revised......................................................37591
    Corrected......................................................46231
2.56  Revised......................................................37591
2.57  Revised......................................................37591
2.59  Added........................................................37591
2.61  (a) and (c) revised..........................................37592
2.64  (c) added....................................................37592
2.65  (c) added....................................................37592
2.66  Revised......................................................37592
2.68  Revised......................................................34897
2.69  Revised......................................................37592
2.71  Revised......................................................37592
2.72  Revised......................................................37593
2.73  Revised......................................................37593
2.75  Revised......................................................37593
2.76  Added........................................................37593
2.77  Added........................................................37594
2.80  Undesignated center heading revised..........................37594
2.81  Existing text redesignated as (a); heading and new (a) 
        revised; (b) added.........................................37594
2.82  Revised......................................................37594
2.83  (a) and (b) revised..........................................37594
2.84  Revised......................................................37594
2.86  Revised......................................................37594
2.87  Revised......................................................37595
2.88  Undesignated center heading and section added................37595
2.89  Added........................................................37595
2.91  Heading revised..............................................34897
2.92  Revised......................................................34897
2.93  Revised......................................................34897
2.99  (g) revised; (h) added.......................................37596
2.101  (b) revised.................................................37596
2.104  Revised.....................................................34897
2.106  (b)(1) and (c) revised......................................34897
2.111  (b) revised.................................................37596
2.112  (a) revised.................................................34897
2.113  Revised.....................................................34897
    Corrected......................................................38041
2.114  (b)(1) and (c) revised......................................34898
2.119  Heading, (b), and (c) revised; (d) and (e) added............34898
    (d) corrected..................................................38041
2.120  (a), (d), (g), (j)(3), (4), (5), and (8) revised............34898
    (j)(8) corrected...............................................38041
2.121  (a)(1) revised..............................................34899
2.122  (e) revised.................................................34899
    (e) corrected..................................................38041
2.123  (c), (e)(2), and (g)(1) revised.............................34899
    (e) correctly designated.......................................38041
2.125  (a) revised.................................................34900
2.127  (e) and (f) revised.........................................34900
2.128  (b) revised.................................................34900
2.129  (c) revised.................................................29554
    (a) revised....................................................34900
    (d) added......................................................37597
2.133  Revised.....................................................37597
2.134  (a) revised.................................................34900
2.135  Revised.....................................................34900
2.142  (f)(6) added; (b) and (e)(1) revised........................34901
2.144  Revised.....................................................29554
2.145  (a), (c)(2) and (3), (d)(1), (2) and (3) revised; (e) added
                                                                   29554
    (c)(4) added...................................................34901
2.161  Revised.....................................................37597
2.162  (e), (f) and (g) revised....................................37597
2.181  (a) revised.................................................37597
2.186  Revised.....................................................34901
2.187  Revised.....................................................37597
10.101  (b) corrected...............................................6520
10.155  (d) added; eff. 8-1-89.....................................26026
10.156  (a) revised; (c) added......................................6660
10.157  (a) revised; eff. 8-1-89...................................26027
15  Added...........................................................3976
15a  Added..........................................................3977
Chapter II
201.11  Added......................................................27877
201.17  (i)(1) designation and (i)(2) added; eff. 7-1-89...........14221
202.19  (c)(5) revised; (d)(2)(vii) added..........................42299
202  Appendix B added..............................................42299
202.3  (b)(3)(B)(ii) amended; (b)(4) added.........................13181
    (b)(4)(i)(G) and (ii)(C) corrected.............................21059
202.20  (c)(2)(vii) introductory text and (A) revised; 
        (c)(2)(vii)(B) redesignated as (c)(2)(vii)(D); new 
        (c)(2)(vii)(B) and (C) added...............................13176
    (c)(2)(vii)(B) revised.........................................13181
    (c)(2)(vii)(D) correctly designated and corrected..............21059
Chapter III
301.1  (d) revised; (e) added......................................32811
301.4  (a) revised; eff. 7-6-89....................................24172
301.7  (b) revised.................................................12615
301.14  (b) and (c) introductory text revised......................12615
301.22  Revised....................................................12615
301.44  Revised....................................................12616

[[Page 591]]

301.45  Redesignated as 301.51.....................................12616
    Added..........................................................12617
301.46  Removed....................................................12616
    Added..........................................................12617
301.47  Redesignated as 301.50.....................................12616
    Added..........................................................12617
301.48  Redesignated as 301.52.....................................12616
    Added..........................................................12617
301.49  Removed; new 301.49 redesignated from 301.51...............12616
    (e), (f), (g), (j), (k), (l) removed; (h) and (i) redesignated 
as (e) and (f).....................................................12618
301.50  Redesignated as 301.55; new 301.50 redesignated from 
        301.47.....................................................12616
301.51  Redesignated as 301.49; new 301.51 redesignated from 
        301.45.....................................................12616
301.52  Removed....................................................12616
    Redesignated from 301.48.......................................12617
301.53  Removed; new 301.53 redesignated from301.54................12616
    (d) removed....................................................12618
301.54  Redesignated as 301.53; new 301.54 redesignated from 
        301.55.....................................................12616
301.55  Redesignated as 301.54.....................................12616
    New 301.55 redesignated from 301.50............................12616
301.63  Revised....................................................12618
301.64  Revised....................................................12618
301.66  (a) revised................................................12618
301.70  Revised....................................................32811
301.71  (c) added..................................................32811
301.74  (a) revised................................................12618
301.80--301.83 (Subpart H)  Added..................................12618
302  Authority citation amended....................................12619
302.1  Amended.....................................................12619
302.2  Removed.....................................................12619
302.3  Removed.....................................................12619
302.6  Removed.....................................................12619
302.7  (a) and (b) introductory text revised.......................12619
302.8  Revised.....................................................12619
302.10  Amended....................................................12619
304.5  (c)(1) through (4) revised..................................49977
305.2  Revised.....................................................12619
305.4  Revised.....................................................12619
307.3  Revised.....................................................46066
308.2  (a) and (b) amended.........................................12619
      Added........................................................32811

                                  1990

37 CFR
                                                                   55 FR
                                                                    Page
Chapter I
1.16  Notice.......................................................46951
    Heading, (a) through (d) and (f) through (j) revised; 
authority citation added; interim..................................49041
1.17  Notice.......................................................46951
    Heading, (a) through (g), (l) and (m) and authority citation 
revised; interim...................................................49041
1.18  Notice.......................................................46951
    Revised; interim...............................................49041
1.20  Notice.......................................................46951
    Heading, (d), (h) through (j) and authority citation revised; 
interim............................................................49042
1.821--1.825  Undesignated center heading and sections added.......18245
1.801--1.825 (Subpart G)  Appendix A added.........................18250
    Appendix B added...............................................18254
2.6  (w) suspension lifted; eff. 11-13-90..........................37468
Chapter II
201.11  (c)(3) revised.............................................49998
201.17  (h)(1)(ii) and (2)(ii) revised.............................49999
202.3  (b)(5) and (6) redesignated as (b)(6) and (7); new (b)(5) 
        added......................................................50557
202.4  Added.......................................................50001
202.20  (c)(2)(xvii) added.........................................50557
Chapter III
301.1  Revised.....................................................28196
301.61  (b)(3) revised.............................................28197
301.63  Revised....................................................28197
304.5  (c)(1) through (4) revised..................................49616
306  Authority citation revised....................................28197
306.3  (e) added...................................................28197
308  Authority citation revised....................................33613
308.2  (d)(1) and (2) revised......................................33613
    (d) introductory text revised..................................48601
Chapter IV
Chapter IV  Heading revised........................................38983
401  Authority citation revised....................................38983
404  Authority citation revised....................................38983
Chapter V
Chapter V  Heading revised.........................................38983
501  Authority citation revised....................................38983
501.3  (a) amended.................................................38983

[[Page 592]]

                                  1991

37 CFR
                                                                   56 FR
                                                                    Page
Chapter I
1.8  (a)(2)(xiv), (xv), and (xvi) CFR correction...................14648
1.12  (a) and (d) revised..........................................65151
    (d) corrected..................................................66670
1.13  (b) revised..................................................65151
1.14  (d) revised..................................................55461
1.16  Revised......................................................65151
1.17  Revised......................................................65152
1.18  Revised......................................................65152
1.19  Revised......................................................65152
1.20  Revised......................................................65153
1.21  Revised......................................................65153
1.24  Revised......................................................65153
1.26  (c) revised..................................................65153
1.171  Revised.....................................................65153
1.296  Revised.....................................................65153
1.362  (a), (b) and (e) revised....................................65154
1.378  (a), (b), (c)(1), (2) and (e) revised.......................65154
1.445  (a) revised.................................................65154
1.482  (a) revised.................................................65154
1.492  Revised.....................................................65154
1.651  Revised.....................................................42529
    (c)(3) corrected...............................................46823
1.684  Revised.....................................................42529
    (c)(3) corrected...............................................46823
1.740  (a)(14) revised.............................................65155
1.770  Revised.....................................................65155
2.6  Revised.......................................................65155
    (a)(15), (b)(4) and (8) corrected..............................66670
2.120  (d)(1) revised..............................................46379
    (d)(1) corrected...............................................54917
5  Authority citation revised.......................................1928
5.11  (a) and (e) revised...........................................1928
5.15  (a) through (c), (e) and (f) revised..........................1928
5.25  (a) revised...................................................1929
Chapter II
201  Authority citation amended...............................7812, 7813
    Technical correction...........................................10660
    Authority citation corrected.....................27197, 28959, 38341
201.4  (d) revised.................................................59885
201.5  (c)(1) introductory text and footnote 2 amended.............59885
201.6  (c) revised..................................................7813
201.9  (b) revised.................................................59885
201.10  (f)(2) revised.............................................59885
201.11  (f) revised; (g)(3)(iv)(B) and (h)(1) amended..............29589
201.12  (b) revised................................................59885
201.16  (a) revised.................................................7815
201.17  (d)(2)(iii) and (k) removed; (j)(1)(ii) amended.............7813
    (i)(1) revised; (i)(2) and (j)(3)(iv)(B) amended...............29589
201.18  (e)(1) and (3) amended.....................................59885
201.19  (e)(4)(ii) amended..........................................7813
    (e)(7)(ii)(D) and (f)(7)(iii)(D) amended.......................59885
201.24  Added.......................................................7812
201.25  Added......................................................38341
201.26  Added......................................................50658
202  Authority citation amended...............................7813, 7815
202.3  (b)(1) introductory text, (i) and (2) introductory text 
        amended; (b)(1)(v) added....................................7813
    (b)(6)(i)(D) revised............................................7815
    (b)(6)(i)(D) corrected.........................................27197
    (b)(4)(ii)(B), (6)(ii)(C) and (c)(2) amended...................59885
    (b)(6)(ii)(C) and (c)(2) correctly designated; (b)(3)(ii), 
(6)(ii) introductory text and (C), and (c)(2) footnote 6 amended 
                                                                   65190
202.17  (e)(2)(ii) amended.........................................59885
202.18  Added......................................................65002
202.19  (c)(5) revised.............................................47403
    (f)(3) amended.................................................59885
202.20  (c)(2)(vii) introductory text and (ix) revised; 
        (c)(2)(viii) introductory text amended; (c)(2)(xix) added 
                                                                   47403
    (c)(2)(xix) correctly designated...............................55632
    (c)(1)(iv) revised.............................................60065
    (c)(2)(xvii) amended...........................................65191
202.22  (c)(7) and (8) revised......................................7815
203.6  (b)(1) through (4) amended..................................59885
204.6  (a) amended.................................................59886
211  Authority citation revised.....................................7817
211.3  (a) revised.................................................59886
211.4  (c) through (e) revised......................................7818
    Technical correction...........................................10660
Chapter III
301.2  Revised......................................................2438
301.45  (a) revised.................................................2438
302.7  (c) and (d) added............................................2438
302.8  Introductory text republished; (b) revised...................2438
304.5  (c)(1) through (4) revised..................................60924
305  Authority citation revised.....................................2438
305.1  Revised......................................................2438
305.3  Introductory text republished, (d) and (e) added.............2438

[[Page 593]]

305.4  Introductory text republished; (b) revised...................2438
307.3  Revised.....................................................56158
308.2  (d) introductory text revised...............................12122
309.3  Introductory text republished; (e) and (f) added.............2438
309.4  Introductory text republished; (b) revised...................2438

                                  1992

37 CFR
                                                                   57 FR
                                                                    Page
Chapter I
1.12  (a) and (d) revised..........................................29641
1.16  (a) through (d), (f) through (j) and note revised............38194
1.17  (i)(1) revised; (p) added.....................................2033
    (i)(1) revised..........................................29642, 32439
    (b) through (g), (j) and (m) through (o) revised...............38194
1.18  Revised......................................................38195
1.19  (b)(4), (f) and (h) revised..................................38195
1.20  (a), (c), (e), (f), (g) and (i) revised......................38195
    (i) revised; interim...........................................56450
1.21  (a)(1), (5), (6), (b)(2), (3), (e) and (i) revised; (p) 
        added and suspended........................................38195
    (a)(6)  corrected..............................................40493
1.26  (a) and (c) revised..........................................38195
1.28  (d)(2) revised................................................2033
1.32  Removed......................................................29642
1.46  Revised......................................................29642
1.48  (a) revised..................................................56447
1.51  (b) revised...................................................2033
1.52  (c) revised...................................................2033
1.56  Revised.......................................................2034
1.60  (b) and (c) revised; (d) added...............................56447
1.63  (b)(3) and (d) revised........................................2034
1.67  (c) added.....................................................2034
1.97  Revised.......................................................2034
1.98  Revised.......................................................2035
1.99  Removed.......................................................2035
1.104  (e) revised.................................................29642
1.175  (a)(7) revised...............................................2035
1.193  (c) removed..................................................2035
1.291  (a) and (c) revised..........................................2035
1.313  (b) revised..................................................2035
1.331--1.335  Undesignated center heading revised..................29642
1.331  Removed.....................................................29642
1.332  Removed.....................................................29642
1.333  Removed.....................................................29642
1.334  Removed.....................................................29642
1.378  (a), (b) and (c) revised; interim...........................56450
1.445  (a) revised.................................................38195
    Corrected......................................................40493
1.482  (a) introductory text, (1) and (2)(ii) revised..............38196
1.492  (a)(1), (2), (3), (5) and (b) through (d) revised...........38196
1.555  Revised......................................................2036
2.6  (a)(1) and (b)(7) revised; (a)(19) added......................38196
2.87  Revised......................................................38196
    (c) corrected..................................................40493
2.185--2.187  Undesignated center heading removed..................29642
2.185  Removed.....................................................29642
2.186  Removed.....................................................29642
2.187  Removed.....................................................29642
3  Added...........................................................29642
10.23  (c)(10) and (11) revised.....................................2036
Chapter II
201  Authority citation revised..............................3296, 55465
201.5  (b)(2)(iv) revised..........................................60482
201.11  (h)(2) and (3) revised.....................................61834
201.17  (k) added; eff. 1-1-94......................................3296
    (i)(2)(i) and (ii) revised; (i)(2)(iii) added..................61834
201.27  Added; interim.............................................55465
202.1  (e) added....................................................6202
202.3  (b)(6) and (7) redesignated as (b)(7) and (8); new (b)(6) 
        added......................................................39616
202.11  Added......................................................45310
202.17  Revised....................................................60483
202.19  (b)(3) revised; (b)(4) removed; (d)(2)(viii) added.........45310
202.20  (b)(3) revised; (c)(2)(xviii) added........................45310
Chapter III
304  Revised.......................................................60954
310  Added.........................................................19053
    Technical correction...........................................21152

                                  1993

37 CFR
                                                                   58 FR
                                                                    Page
Chapter I
1  Technical correction............................................64155
1.4  Heading revised; (d), (e) and (f) added.......................54501
1.5  (a) revised...................................................54501
1.6  Revised.......................................................54501
    (d)(3) corrected...............................................64154
1.8  Revised.......................................................54502

[[Page 594]]

    (a)(2) introductory text corrected.............................64154
1.9  (d) revised...................................................54508
1.13  Revised......................................................54508
1.14  (b) revised..................................................54509
1.17  (h) revised..................................................38723
    Corrected......................................................45841
1.19  (a)(3) revised...............................................38723
1.20  (i) revised..................................................44280
1.28  (c) revised..................................................54509
1.55  (a) revised..................................................54509
1.71  (d) revised..................................................38723
1.78  (a) revised..................................................54509
1.84  Revised......................................................38723
    (b)(1)(ii) corrected...........................................45841
    (g)(3) and (h)(2) corrected....................................45842
1.88  Removed......................................................38726
1.123  Revised.....................................................38726
1.136  (a) revised.................................................54509
1.137  Revised.....................................................44280
1.152  Revised.....................................................38726
1.155  (b), (c) and (d) revised; (e) and (f) added.................44280
1.165  Revised.....................................................38726
1.191  (d) revised.................................................54510
1.192  (a), (c) introductory text and (d) revised..................54510
1.193  (b) revised.................................................54510
1.194  (b) revised.................................................54510
1.196  (f) revised.................................................54510
1.197  (b) revised.................................................54510
1.304  (a) and (c) revised.........................................54502
1.312  (b) revised.................................................54510
1.316  (b), (c) and (d) revised; (e) and (f) added.................44281
1.317  Revised.....................................................44281
1.321  Revised.....................................................54510
1.352  (a) revised.................................................54511
1.362  (c)(4) and (e) revised; (h) added...........................54511
1.366  (b) revised.................................................54503
1.378  (a), (b), (c) and (e) revised...............................44282
1.431  (b)(1) through (3)(ii), (c) and (d) revised; (e) removed.....4344
1.432  Revised......................................................4344
1.434  (a) revised..................................................4345
1.445  (a)(4) added.................................................4345
1.446  (d) revised; (e) added.......................................4345
1.451  (a) revised..................................................4345
1.455  (a) revised..................................................4345
1.475  Revised......................................................4345
1.476  (a) revised..................................................4346
1.480  (b) revised..................................................4346
1.482  (a)(2)(i) and (b) revised....................................4346
1.484  (b) revised..................................................4346
1.485  Revised......................................................4346
1.487  Removed......................................................4346
1.488  (a) revised..................................................4346
1.492  Introductory text and (e) revised............................4346
1.494  (a) through (d) and (g) revised; (h) removed.................4346
1.495  (a) through (e) and (h) revised; (i) removed.................4347
1.499  Revised......................................................4347
1.601  (q) added...................................................49434
1.607  (a)(5)(i) revised...........................................54511
1.637  (a) revised.................................................49434
1.639  (c) revised; (d) through (g) added..........................49434
1.655  (a) revised.................................................49434
1.741  (a) revised.................................................54503
1.821  (h) revised..................................................4348
2  Technical correction............................................64154
2.145  (c)(3) and (d)(1) revised...................................54503
2.165  (a)(1) revised..............................................54503
5  Technical correction............................................64155
5.19  (a) revised..................................................54511
10  Technical correction....................................64154, 64155
10.9  (c) added.....................................................4348
10.18  Revised.....................................................54503
10.23  (c)(9) revised..............................................54504
10.48  (b) revised.................................................54511
Chapter II
201  Authority citation revised.....................................9546
201.17  Regulation at 57 FR 3296 eff. date extended to 1-1-95......40363
    (k) revised; eff. 1-1-95.......................................45263
201.26  Revised....................................................29107
201.28  Added; interim..............................................9546
202.3  (b)(3)(ii), (7)(ii) introductory text, (ii)(C) and (c)(2) 
        Footnote 6 amended.........................................17778
Chapter III
Chapter III Nomenclature change; heading revised; interim..........67691
301  Technical correction...........................................8655
    Heading revised; interim.......................................67691
    Authority citation revised.....................................67691
301.1  (g) and (h) added; interim...................................6445
    Regulation at 58 FR 6445 comment period established............13413
    (g) and (h) revised............................................53825
301.2  Revised; interim............................................67691
301.3  Revised......................................................5616
301.70  Revised; interim............................................6445
    Regulation at 58 FR 6445 comment period established............13413
    Revised........................................................53825
301.71  (d) added; interim..........................................6445
    Regulation at 58 FR 6445 comment period established............13413

[[Page 595]]

    (d) revised....................................................53826
301.72  (d) added; interim..........................................6445
    Regulation at 58 FR 6445 comment period established............13413
    (d) revised....................................................53826
302  Authority citation revised....................................67691
303  Authority citation revised....................................67691
304  Authority citation revised....................................67691
304.5  (c)(1) through (4) revised..................................63294
304.7  (b)(2) table corrected.......................................7051
    (b)(1)(i) corrected.............................................8820
304.8  (b)(1)(ii)(D) corrected......................................7051
305  Authority citation revised....................................67691
306  Authority citation revised....................................67691
307  Authority citation revised....................................67691
307.3  Revised.....................................................58283
    (f) corrected..................................................60787
308  Authority citation revised....................................67691
309  Authority citation revised....................................67691
310  Authority citation revised....................................67691
311  Added; interim.................................................6445
    Technical correction............................................8655
    Regulation at 58 FR 6445 comment period established............13413
    Revised........................................................53826
    Corrected......................................................59658
    Authority citation revised.....................................67691

                                  1994

37 CFR
                                                                   59 FR
                                                                    Page
Chapter I
1  Technical correction............................................45757
1.16  (a), (b), (d) and (f) through (i) revised....................43740
1.17  (b) through (g), (j) and (m) through (p) revised.............43740
1.18  Revised......................................................43741
1.20  (c), (e), (f), (g), (i)(1) and (j) revised...................43741
1.21  (p) removed..................................................43741
1.97  (c)(2) amended...............................................32658
1.175  Corrected; CFR correction...................................18300
1.445  (a) revised.................................................43741
1.482  (a)(1) and (2)(ii) revised..................................43741
1.492  (a)(1) through (5), (b) and (d) revised.....................43742
    (a)(5) correctly revised.......................................47082
2.6  (a)(1) revised..................................................257
Chapter II
201--211 (Subchapter A)  Heading added; interim....................23981
201  Authority citation revised......................12164, 38371, 67635
201.6  (c) amended; interim........................................38371
201.11  Amended....................................................67635
201.16  (a) and (b)(3)(iii) amended................................33201
201.17  (a), (b)(2), (5), (h)(1)(i), (iii), (2)(i), (3)(iii)(A) 
        and (9) amended............................................67635
    (k) revised....................................................67636
201.28  Revised; interim............................................4589
201.31  Added; interim.............................................12164
    (d)(2) revised; (d)(3) and (4) redesignated as (d)(6) and (7); 
new (d)(3), new (4) and (5) added..................................58789
201.32  Added; interim.............................................38371
211.3  (a)(7) amended; interim.....................................38372
251--259 (Subchapter B)  Heading added; interim....................23981
251  Added; interim................................................23981
251.2  (f) added...................................................63040
251.3  (a) and (b) amended.........................................63040
251.4  (a) and (b) amended.........................................63040
251.11  (b) amended................................................63040
251.13  Introductory text revised..................................63040
251.14  (d) added..................................................63040
251.22  (c) amended................................................63040
251.31  (d) revised................................................63040
251.32  (b) revised................................................63040
251.33  (b) revised................................................63040
    (c) amended....................................................63041
251.41  (b) revised................................................63041
251.43  (a) revised................................................63041
251.45  Heading, (a), (b) and (c) revised..........................63041
251.47  (l) amended................................................63041
251.51  Heading revised............................................63041
251.52  (c) amended................................................63041
251.53  (a) amended................................................63041
251.54  (a) and (c) amended........................................63042
251.60  Amended....................................................63042
251.61  (d) added..................................................63042
251.63  Revised....................................................63042
251.64  Amended....................................................63042
251.65  Revised....................................................63042
251.72  Removed; new 251.72 redesignated from 251.73...............63042
251.73  Redesignated as 251.72; new 251.73 redesignated from 
        251.74.....................................................63042
251.74  Redesignated as 251.73.....................................63042
252  Added; interim................................................23992
252.3  (a)(3) and (4) revised; (d) removed.........................63042
252.4  (a) and (e) revised.........................................63042
253  Authority citation revised....................................23993

[[Page 596]]

    Redesignated  from 304; heading revised; interim...............23993
253.4  Introductory text amended; interim..........................23993
253.5  (c)(1), (2) and (3) revised.................................60901
253.8  (e) amended; interim........................................23993
253.9  Amended; interim............................................23993
253.10  Amended; interim...........................................23993
    Amended........................................................63042
253.12  Removed; interim...........................................23993
253.13  Removed; interim...........................................23993
254  Authority citation revised....................................23993
    Redesignated  from 306; heading revised; interim...............23993
254.1  Amended; interim............................................23993
255  Authority citation revised....................................23993
    Redesignated  from 307; heading revised; interim...............23993
255.1  Amended; interim............................................23993
255.2  Amended; interim............................................23993
255.3  (g)(1) and (2) amended; interim.............................23993
    Corrected......................................................33201
256  Redesignated  from 308; heading revised; interim..............23993
257  Redesignated from 309 and revised; interim....................23993
257.3  (a)(3) and (4) revised; (d) removed.........................63043
257.4  (a) and (e) revised.........................................63043
258  Redesignated from 310; heading revised; interim...............23994
258.1  Amended; interim............................................23994
258.2  Amended; interim............................................23994
259  Authority citation revised....................................23994
    Redesignated  from 311; heading revised; interim...............23994
259.1  Amended; interim............................................23994
    Corrected......................................................33202
259.2  Amended;  interim...........................................23994
    Corrected......................................................33202
    Stayed; eff. 12-7-94 through 2-28-95...........................63045
259.3  Amended;  (c) revised; interim..............................23994
    Corrected......................................................33202
    (d) revised; (f) removed.......................................63043
259.4  Amended;  (e) added; interim................................23995
    Corrected......................................................33202
259.5  Revised;  interim...........................................23995
    (a) and (e) revised............................................63043
259.6  Revised; interim............................................23995
Chapter III
Chapter  removed;  interim.........................................23995
301  Removed;  interim.............................................23981
302  Removed;  interim.............................................23992
303  Removed;  interim.............................................23993
304  Redesignated  as 253; interim.................................23993
305  Removed;  interim.............................................23993
306  Redesignated  as 254; interim.................................23993
307  Redesignated  as 255; interim.................................23993
308  Redesignated  as 256; interim.................................23993
309  Redesignated  as 257; interim.................................23993
310  Redesignated  as 258; interim.................................23994
311  Redesignated  as 259; interim.................................23994

                                  1995

37 CFR
                                                                   60 FR
                                                                    Page
Chapter I
1  Authority citation revised......................................14518
    Technical correction......................16920, 27598, 36462, 44120
1.1  (i) added.....................................................20220
1.9  (a) revised...................................................20220
1.11  (e) revised..................................................14518
1.12  (c) revised..................................................20221
1.14  (e) revised..................................................20221
1.16  (a) through (g) revised; (k) and (l) added...................20221
    (a), (b), (d) and (f) through (i) revised......................41022
1.17  (h) and (i) revised; (q), (r) and (s) added..................20221
    (b) through (g), (j), (m) through (p), (r) and (s) revised.....41022
1.18  Revised......................................................41022
1.19  (a)(1)(ii), (iii), (b)(1)(i) and (ii) revised................41022
1.20  (j) revised; eff. 7-11-95....................................25618
    (c), (e), (f), (g), (i)(1), (2) and (j) revised................41022
1.21  (l) revised..................................................20222
    (a)(1) revised.................................................41022
1.28  (a) revised..................................................20222
1.45  (c) revised..................................................20222
1.48  Revised......................................................20222
1.51  (a) and (b) revised..........................................20222
1.53  Heading and (a) through (e) revised..........................20223
1.55  Revised......................................................20224
1.59  Revised......................................................20224
1.60  Heading and (b) revised......................................20224
1.62  (a) and (e) revised..........................................20225

[[Page 597]]

1.63  (a) revised..................................................20225
1.67  (b) revised..................................................20225
1.78  (a)(1) and (2) revised; (a)(3) and (4) added.................20225
1.83  (a) and (c) revised..........................................20226
1.97  (d) revised..................................................20226
1.101  (a) revised.................................................20226
1.102  (d) revised.................................................20226
1.103  (a) revised.................................................20226
1.129  Undesignated center heading and section added...............20226
1.131  (a) revised.................................................21044
1.137  (c) revised.................................................20227
1.139  Added.......................................................20227
1.177  Revised.....................................................20227
1.192  (c)(1) through (7) redesignated as (c)(3) through (9); (a), 
        (c) introductory text, new (7), new (8) introductory text, 
        new (v) and (d) revised; new (c)(1) and new (2) added......14518
1.312  (b) revised.................................................20227
1.313  (a) revised.................................................20227
1.314  Revised.....................................................20227
1.316  (d) revised.................................................20228
1.317  (d) removed.................................................20228
1.412  (c)(6) added................................................21439
1.421  (a) revised.................................................21440
1.445  (a)(5) added................................................21440
    (a) revised....................................................41023
1.482  (a)(1) and (2)(ii) revised..................................41023
1.492  (a), (b) and (d) revised....................................41023
1.601  (f), (g), (j) through (n) and (q) revised; (r) and (s) 
        added......................................................14519
1.602  (c) revised.................................................14519
1.603  Revised.....................................................14519
1.604  (a)(1) revised..............................................14519
1.605  (a) revised.................................................14519
1.606  Revised.....................................................14520
1.607  (a)(4) revised; (a)(6) added................................14520
1.608  Revised.....................................................14520
1.609  (b)(1), (2) and (3) revised.................................14520
1.610  Revised.....................................................14520
1.611  (b), (c)(6), (7) and (d) revised; (c)(8) redesignated as 
        (c)(9); new (c)(8) added...................................14521
1.612  (a) revised.................................................14521
1.613  (c) and (d) revised.........................................14521
1.614  (a) and (c) revised.........................................14521
1.615  Revised.....................................................14521
1.616  Revised.....................................................14521
1.617  (a), (b), (d), (e), (g) and (h) revised.....................14522
1.618  (a) revised.................................................14522
1.621  (b) revised.................................................14522
1.622  (b) revised.................................................14522
1.623  Heading and (a) introductory text revised...................14522
1.624  Heading, (a) and (c) revised................................14523
1.625  (a) introductory text revised...............................14523
1.626  Revised.....................................................14523
1.627  (b) revised.................................................14523
1.628  Revised.....................................................14523
1.629  (a), (c)(1) and (d) revised.................................14523
1.630  Revised.....................................................14524
1.631  (a) revised.................................................14524
1.632  Revised.....................................................14524
1.633  (a), (b), (f), (g) and (i) revised..........................14524
1.636  Revised.....................................................14524
1.637  (a), (b), (c)(1)(v), (vi), (2)(ii), (iii), (3)(ii), 
        (4)(ii), (d) introductory text, (e)(1)(viii), (2)(vii), 
        (f)(2) and (h)(4) revised; (c)(1)(vii), (e)(1)(ix) and 
        (2)(viii) added; (c)(2)(iv), (3)(iii) and (d)(4) removed 
                                                                   14524
1.638  Revised.....................................................14525
1.639  (a), (b), (c) and (d)(1) revised............................14525
1.640  (a), (b), (c), (d) introductory text, (1), (3) and (e) 
        revised....................................................14525
1.641  Revised.....................................................14526
1.642  Revised.....................................................14526
1.643  (b) revised.................................................14527
1.644  (a) introductory text, (1), (2), (b), (c), (d), (f) and (g) 
        revised....................................................14527
1.645  (a), (b) and (d) revised....................................14527
1.646  (c)(5) redesignated as (c)(6); (a)(1), (2), (b), (c) 
        introductory text, (1), (4), new (6), (d) and (e) revised; 
        new (c)(5) added...........................................14527
1.647  Revised.....................................................14528
1.651  (a), (c)(1), (2), (3) and (d) revised.......................14528
1.652  Revised.....................................................14528
1.653  (a), (b), (c) introductory text, (1), (4), (d), (g) and (i) 
        revised; (c)(5), (f) and (h) removed.......................14528
1.654  (a) and (d) revised.........................................14529
1.655  Revised.....................................................14529
1.656  (b)(1) through (6) redesignated as (b)(3) through (8); (a), 
        new (b)(5), new (6), (d), (e), (g), (h) and (i) revised; 
        new (b)(1) and (2) added...................................14529
1.657  Revised.....................................................14530
1.658  (a) and (b) revised.........................................14530

[[Page 598]]

1.660  (e) added...................................................14530
1.662  (a) and (b) revised.........................................14530
1.664  Revised.....................................................14530
1.666  (b) revised.................................................20228
1.671  (h) redesignated as (i); (a) introductory text, (c)(1), 
        (2), (6), (7), (e), (f), (g) and new (i) revised; new (h) 
        and (j) added..............................................14530
1.672  Revised.....................................................14531
1.673  (a), (b) introductory text, (c), (d), (e) and (g) revised 
                                                                   14532
1.674  (a) revised.................................................14533
1.675  (d) revised.................................................14533
1.676  (a)(4) revised..............................................14533
1.677  Revised.....................................................14533
1.678  Revised.....................................................14533
1.679  Revised.....................................................14533
1.682  Revised.....................................................14533
1.683  Revised.....................................................14534
1.684  Removed.....................................................14534
1.685  (d) and (e) revised.........................................14534
1.687  (c) revised.................................................14535
1.688  Revised.....................................................14535
1.690  (a), (b) and (c) revised....................................14535
1.701  Added.......................................................20228
1.750  Revised; eff. 7-11-95.......................................25618
1.760  Heading revised; eff. 7-11-95...............................25618
1.765  (a) revised; eff. 7-11-95...................................25618
1.780  Revised; eff. 7-11-95.......................................25618
1.785  Revised; eff. 7-11-95.......................................25618
1.790  Added; eff. 7-11-95.........................................25619
1.791  Added; eff. 7-11-95.........................................25619
2  Technical correction............................................44120
2.6  (b)(1)(ii), (iii), (2)(i) and (ii) revised....................41023
3  Technical correction............................................36462
3.21  Revised......................................................20228
3.81  (b) revised..................................................20229
7  Technical correction............................................44120
7.1  Revised.......................................................41023
10.9  (c) revised..................................................21440
10.155  (a) revised................................................64126
Chapter II
201  Authority citation revised...............25998, 34168, 50420, 57937
    Technical correction...........................................28019
201.1  (b) amended.................................................34168
201.5  (b)(2)(iv), (c)(1) and (iii) amended........................34168
201.7  (c)(4)(ii) amended..........................................34168
201.10  (d)(1) and (3) amended.....................................34168
201.11  (f), (g)(3)(iii)(B), (v) and (vi) amended..................34168
    (c)(4) added; (g)(3)(i) amended; (g)(3)(iii) introductory text 
revised............................................................57937
201.15  (c) amended................................................34168
201.16  Removed....................................................34168
201.17  (b)(2)(A) and (B) redesignated as (b)(2)(i) and (ii); 
        (c)(1), (g) introductory text, (h)(4)(iii) and (8) amended
                                                                   34168
    (c)(4) added; (j)(3)(i) amended; (j)(3)(iii) introductory text 
revised............................................................57938
201.26  (b)(2) amended.............................................34168
201.29  Added......................................................25998
201.31  (a) amended................................................50420
201.33  Added......................................................50420
202  Policy decision...............................................21983
    Authority citation revised..............................34168, 50422
202.2  (b)(1) amended..............................................34168
202.3  (b)(3)(ii) amended; (b)(8) redesignated as (b)(9); new 
        (b)(8) added; (c)(2) Footnote 6 revised....................15875
    (b)(5)(i)(D) amended...........................................34168
202.10  (a) and (b) removed; (c) redesignated as (b); new (a) 
        added......................................................15606
202.12  Added......................................................50422
202.18  Removed....................................................34168
202.19  (b)(1)(ii), (iii)(B) and (e)(3) amended....................34168
202.20  (b)(2)(iii) amended........................................34168
202.22  (d)(6)(iii) amended........................................34168
202.23  (e)(1) and (2) amended.....................................34168
202  Appendix A amended............................................34168
203  Authority citation revised....................................34168
203.3  Revised.....................................................34168
204  Authority citation revised....................................34169
204.4  (a) amended.................................................34169
204.5  (a) amended.................................................34169
204.7  (a) amended.................................................34169
211.5  (a) amended.................................................34169
211.6  (b)(1) amended..............................................34169
251.13  (f) amended.................................................8197
251.32  (a) amended.................................................8197
251.33  (c) amended.................................................8197
251.38  (b) amended.................................................8197
251.44  (e)(1) and (g) amended......................................8197
251.48  (f)(1)(ii) revised..........................................8197
251.50  Amended.....................................................8197
251.52  (c) amended; (d) added......................................8197
251.72  Corrected...................................................8199
252.1  Amended......................................................8198
253.5  (c)(1), (2) and (3) revised.................................61655
253.6  (c)(4) amended...............................................8198

[[Page 599]]

254.2  Revised......................................................8198
255.1  Revised.....................................................61657
255.3  (f) and (g) redesignated as (g) and (h); (a) through (e) 
        and new (g) amended; new (f) added..........................8198
    (h)(2) and (3) amended.........................................34169
    Revised........................................................55459
255.4  Added.......................................................61657
255.5  Added.......................................................61657
256.1  Amended......................................................8198
259.1  Amended......................................................8198
259.2  (a) and (b) amended..........................................8198
    Revised........................................................61660
259.3  (a) amended..................................................8198
    (d) corrected...................................................8199
259.4  (a) and (b) amended..........................................8198
Chapter IV
401.2  (j) revised; (k) through (m) added; interim.................41812
401.5  (f)(2) revised; interim.....................................41812
401.13  (c)(2) revised; interim....................................41812
401.16  Redesignated as 401.17; new 401.16 added; interim..........41812
401.17  Redesignated from 401.16 and revised; interim..............41812

                                  1996

37 CFR
                                                                   61 FR
                                                                    Page
Chapter I
1.1  Heading and (a) revised; (g) removed..........................56446
1.3  Revised.......................................................56446
1.5  (f) added.....................................................42802
    (a) revised....................................................56446
1.6  (a) revised...................................................56447
1.8  (a)(1)(i)(A) and (2)(ii) revised..............................56447
1.9  (h) added.....................................................56447
1.10  Revised......................................................56447
1.12  (c) added....................................................42802
1.14  Heading, (a), (b) and (e) revised............................42802
1.16  (a), (b), (d) and (f) through (i) revised; (m) added.........39587
    (m) corrected..................................................43400
1.17  (b) through (g), (j), (m) through (p), (r) amd (s) revised 
                                                                   39587
1.18  Revised......................................................39588
1.20  (c), (e), (f), (g), (i)(1), (2), (j)(1), (2) and (3) revised
                                                                   39588
1.21  (a)(1), (3) and (6) revised..................................39588
    (a)(1) corrected...............................................43400
1.52  (a) and (b) revised..........................................42803
1.54  (b) revised..................................................42803
1.58  Heading and (c) revised; (b) removed.........................42803
1.62  (e) and (f) revised..........................................42803
1.72  (b) revised..................................................42803
1.75  (g) revised; (h) and (i) added...............................42803
1.77  Revised......................................................42803
1.78  (a)(2) and (c) revised; (d) removed..........................42804
1.84  (c), (f), (g) and (x) revised................................42804
1.96  Revised......................................................42804
1.97  (a) through (d) revised......................................42805
1.107  (a) revised.................................................42805
1.110  Revised.....................................................42805
1.130  Added.......................................................42805
1.131  (a) revised.................................................42806
1.132  Revised.....................................................42806
1.154  Revised.....................................................42806
1.163  (c) and (d) added...........................................42806
1.291  (a) and (b) revised.........................................42806
1.292  (a) and (b) revised.........................................42807
1.315  Revised.....................................................42807
1.321  (c) revised.................................................42807
1.445  (a) revised.................................................39588
1.482  (a)(1)(i), (ii) and (2)(ii) revised.........................39588
1.492  (a), (b) and (d) revised....................................39588
1.497  Revised.....................................................42807
1.741  (a) revised.................................................64028
2.7  Added.........................................................55223
2.53  Removed......................................................55223
2.102  (c)(2) revised..............................................36825
2.165  (a)(1) revised..............................................56448
2.189  Undesignated center heading and section removed.............55223
5.33  Revised......................................................56448
10.23  (c)(9) revised..............................................56448
15  Removed........................................................42808
15a  Removed.......................................................42808
101  Removed.......................................................40999
102  Removed.......................................................40999
Chapter II
201  Authority citation revised....................................30813
201  Comment period extension......................................49680
201.30  Added; interim.............................................30813
251.1  Revised.....................................................63717
251.2  Revised.....................................................37215
251.3  (a) introductory text and (b) amended.......................63717
251.5  (c) amended.................................................63717
251.32  (a) and (b)(2)(ii) revised; (d) amended....................63717
251.43  (a) amended................................................63717
251.44  (a), (b), (e)(2), (f) and (g) revised......................63717

[[Page 600]]

251.45  (b)(1)(i) and (2)(i) revised...............................63718
251.58  (c) revised................................................37215
251.60  Amended....................................................37215
251.61  (a) revised................................................37215
251.62  (a) amended................................................37216
251.63  (a) amended.........................................37216, 63718
252.4  (e) revised.................................................63718
253.5  (c)(1), (2) and (3) revised.................................60613
257.4  (e) revised.................................................63718
259.2  (c) introductory text amended...............................63718
259.5  (e) revised.................................................63718
Chapter V
501  Authority citation revised....................................40999
    Heading revised; interim.......................................40999
501.1  Revised; interim............................................40999
501.3  Revised; interim............................................40999
501.4  Revised; interim............................................40999
501.6  (a)(1) introductory text, (iii), (2), (3)(i) and (4)(i) 
        revised; interim...........................................40999
501.7  (b) and (c) revised; interim................................40999
501.8  (a) and (b) revised; (c) and (d) redesignated as (d) and 
        (e); new (c) added; interim................................41000
501.9  Revised; interim............................................41000
501.11  Added; interim.............................................41000

                                  1997

37 CFR
                                                                   62 FR
                                                                    Page
Chapter I
1  Technical correction............................................43100
1.4  (d) revised; (g) added........................................53180
1.6  (d)(3), (6) and (e) revised; (f) added........................53180
1.8  (a)(2)(i)(A) and (b) revised..................................53181
1.9  (d) and (f) revised...........................................53181
1.10  (d) and (e) revised..........................................53181
1.11  (b) revised..................................................53181
1.14  (a) revised; (f) added.......................................53182
1.16  (a), (b), (d) and (f) through (i) revised....................40452
    (d) and (l) revised............................................53182
1.17  (b) through (g), (j), (m) through (p), (r) and (s) revised 
                                                                   40452
    (a) through (d), (h), (i) and (q) revised; (e), (f) and (g) 
removed............................................................53182
    (q) correctly revised..........................................61235
1.18  Revised......................................................40452
1.19  (a)(2) and (3) revised.......................................40452
1.20  (c), (e), (f), (g), (i)(1), (2), (j)(1), (2) and (3) revised
                                                                   40453
1.21  (a)(1)(ii), (6) and (j) revised..............................40453
    (l) and (n) revised............................................53183
1.26  (a) revised..................................................53183
1.27  Revised......................................................53183
1.28  (a) and (c) revised..........................................53183
1.33  (a) and (b) revised..........................................53184
1.41  (a) revised..................................................53184
1.47  Revised......................................................53184
1.48  Revised......................................................53185
1.51  Revised......................................................53185
1.52  (a), (c) and (d) revised.....................................53186
1.53  Revised......................................................53186
1.54  Revised......................................................53188
1.55  (a) revised..................................................53188
1.59  Revised......................................................53188
1.60  Removed......................................................53188
1.62  Removed......................................................53188
1.63  (a) and (d) revised; (e) added...............................53188
1.67  (b) revised..................................................53189
1.69  (b) revised..................................................53189
1.78  (a) revised..................................................53189
1.84  (a)(2)(i). (b), (c) and (g) revised..........................53190
1.91  Revised......................................................53190
1.92  Removed......................................................53190
1.97  (c), (d) and (e) revised.....................................53190
1.101  Removed.....................................................53190
1.102  (a) revised.................................................53191
1.103  (a) revised.................................................53191
1.104  Revised.....................................................53191
1.105  Removed.....................................................53192
1.106  Removed.....................................................53192
1.107  Removed.....................................................53192
1.108  Removed.....................................................53192
1.109  Removed.....................................................53192
1.111  (b) revised.................................................53192
1.112  Revised.....................................................53192
1.113  Revised.....................................................53192
1.115  Removed.....................................................53192
1.116  Heading and (a) revised.....................................53192
1.117  Removed.....................................................53192
1.118  Removed.....................................................53192
1.119  Removed.....................................................53192
1.121  Revised.....................................................53192
    (a)(4) correctly removed.......................................61235
1.122  Removed.....................................................53193
1.123  Removed.....................................................53193
1.124  Removed.....................................................53193
1.125  Revised.....................................................53193
1.126  Revised.....................................................53194
1.133  (b) revised.................................................53194
1.134--1.139  Undesignated center heading revised..................53194

[[Page 601]]

1.134  Revised.....................................................53194
1.135  Revised.....................................................53194
1.136  Revised.....................................................53194
1.137  Revised.....................................................53194
1.139  Removed.....................................................53195
1.142  (a) revised.................................................53195
1.144  Revised.....................................................53195
1.146  Revised.....................................................53195
1.152  Revised.....................................................53195
1.154  Heading and (a)(3) revised..................................53196
1.155  Revised.....................................................53196
1.163  Heading and (b) revised.....................................53196
1.167  Revised.....................................................53196
1.171  Revised.....................................................53196
1.172  (a) revised.................................................53196
1.175  Revised.....................................................53196
1.182  Revised.....................................................53196
1.184  Removed.....................................................53196
1.191  (a) and (b) revised.........................................53196
1.192  (a) revised.................................................53196
1.193  Revised.....................................................53197
1.194  Revised.....................................................53197
1.196  (b) and (d) revised.........................................53197
1.197  (a) and (b) revised.........................................53198
1.291  (c) revised.................................................53198
1.293  (c) revised.................................................53198
1.294  (b) revised.................................................53198
1.304  (a)(1) revised..............................................53198
1.312  (b) revised.................................................53198
1.316  Revised.....................................................53198
1.317  Revised.....................................................53198
1.318  Removed.....................................................53198
1.324  Revised.....................................................53199
1.352  Removed.....................................................53199
1.366  (b), (c) and (d) revised....................................53199
1.377  (c) revised.................................................53199
1.378  (d) revised.................................................53199
1.425  Revised.....................................................53199
1.445  (a) revised.................................................40453
1.482  (a)(1)(i), (ii) and (2)(ii) revised.........................40453
1.484  (d), (e) and (f) revised....................................53199
1.485  (a) revised.................................................53200
1.488  (b)(3) revised..............................................53200
1.492  (a), (b) and (d) revised....................................40453
    (g) added......................................................53200
1.494  (c) revised.................................................53200
1.495  (c) revised.................................................53200
1.510  (e) revised.................................................53200
1.530  Heading and (d) revised; (e) removed........................53200
1.550  (a), (b) and (e) revised....................................53201
1.770  Revised.....................................................53201
1.785  (d) revised.................................................53201
1.804  (b) revised.................................................53202
1.805  (c) revised.................................................53202
2  Technical correction............................................43100
2.6  (b)(4) and (10) revised.......................................40453
3.11  Revised......................................................53202
3.21  Revised......................................................53202
3.26  Revised......................................................53202
3.27  Revised......................................................53202
3.31  (c) added....................................................53202
3.41  Revised......................................................53202
3.51  Revised......................................................53203
3.58  Added........................................................53203
3.71--3.73  Undesignated center heading revised....................53203
3.73  Heading and (b) revised......................................53202
5.1  Revised.......................................................53203
5.2  (b) revised; (c) and (d) removed..............................53203
5.3  (c) revised...................................................53203
5.4  (a) and (d) revised...........................................53204
5.5  (b) and (e) revised...........................................53204
5.6  Removed.......................................................53204
5.7  Removed.......................................................53204
5.8  Removed.......................................................53204
5.11  (b), (c) and (e)(3) revised..................................53204
5.12  (b) revised..................................................53204
5.13  Revised......................................................53204
5.14  (a) revised..................................................53204
5.15  (a), (b), (c) and (e) revised................................53204
5.16  Removed......................................................53205
5.17  Removed......................................................53205
5.18  Revised......................................................53205
5.19  Revised......................................................53205
5.20  Revised......................................................53205
5.25  (c) removed..................................................53206
5.31  Removed......................................................53206
5.32  Removed......................................................53206
5.33  Removed......................................................53206
7  Removed.........................................................53206
10.18  Revised.....................................................53206
10.23  (c)(15) revised.............................................53206
Chapter II
201  Authority citation revised.............................18710, 55739
201.1  (a) and (b) amended.........................................35420
    (c) and (d) amended............................................35421
    (b) amended....................................................40457
201.2  (b)(5) amended..............................................35421
201.5  (c)(2) amended..............................................35421
201.17  (b)(1), (2) introductory text and (e)(2)(i) amended........18710
    (h)(2)(iv) added...............................................23362
201.34  Added; interim.............................................55739
202.3  (b)(2) amended..............................................35421
    (b)(5)(ii) amended.............................................63657
    (b)(5)(iii) amended............................................66822

[[Page 602]]

202.20  (c)(2)(vii)(A)(2) and (D)(1) amended.......................35421
202  Appendix B amended............................................51603
203  Authority citation revised....................................55742
203.2  (a) amended.................................................35421
203.3  (i) revised; interim........................................55742
203.4  (f) revised; (i) added; interim.............................55742
203.6  (b)(6) amended; interim.....................................55742
258  Technical correction...................................62262, 62404
258.3  Revised.....................................................55759

                                  1998

37 CFR
                                                                   63 FR
                                                                    Page
Chapter I
1.14  (g) added; interim...........................................29617
    Regulation at 63 FR 29617 confirmed............................66041
1.16  (a) through (d) and (f) through (j) revised...........39733, 67579
    Regulation at 63 FR 39733 eff. date delayed to 10-10-98........52610
1.17  (a)(1) through (5), (b), (c), (d), (l), (m), (r) and (s) 
        revised.............................................39733, 67580
    Regulation at 63 FR 39733 eff. date delayed to 10-10-98........52610
1.18  Revised...............................................39733, 67580
    Regulation at 63 FR 39733 eff. date delayed to 10-10-98........52610
1.20  (d) through (g) revised...............................39733, 67580
    Regulation at 63 FR 39733 eff. date delayed to 10-10-98........52610
1.21  (a)(6)(ii) revised....................................39734, 67580
    Regulation at 63 FR 39733 eff. date delayed to 10-10-98........52610
1.53  (d)(1)(i) revised; interim....................................5734
    Regulation at 63 FR 5734 confirmed.............................36185
1.412  (c)(6) revised; interim.....................................29617
    Regulation at 63 FR 29617 confirmed............................66041
1.416  (c) revised; interim........................................29617
    Regulation at 63 FR 29617 confirmed............................66041
1.419  Added; interim..............................................29617
    Regulation at 63 FR 29617 confirmed............................66041
1.431  (c) and (d) revised; interim................................29618
    Regulation at 63 FR 29618 confirmed............................66041
1.432  Heading, (b) and (c) revised; (d) added; interim............29618
    Regulation at 63 FR 29618 confirmed............................66041
1.435  (a) revised; interim........................................29618
    Regulation at 63 FR 29618 confirmed............................66041
1.445  (a) revised; interim........................................29619
    Regulation at 63 FR 29619 confirmed............................66041
1.451  (a) revised; (d) added; interim.............................29619
    Regulation at 63 FR 29619 confirmed............................66041
1.461  (a) revised; interim........................................29619
    Regulation at 63 FR 29619 confirmed............................66041
1.465  (b) and (c) revised; interim................................29619
    Regulation at 63 FR 29619 confirmed............................66041
1.471  (a) revised; interim........................................29619
    Regulation at 63 FR 29619 confirmed............................66041
1.480  (a) revised; interim........................................29619
    Regulation at 63 FR 29619 confirmed............................66041
1.481  Added; interim..............................................29619
    Regulation at 63 FR 29619 confirmed............................66041
1.484  (b) revised; interim........................................29619
    Regulation at 63 FR 29619 confirmed............................66041
1.485  (a) revised; interim........................................29620
    Regulation at 63 FR 29620 confirmed............................66041
1.492  (a) through (d) revised..............................39734, 67580
    (a)(5) corrected...............................................46892
    Regulation at 63 FR 39733 eff. date delayed to 10-10-98........52610
1.494  (c) revised; interim........................................29620
    Regulation at 63 FR 29620 confirmed............................66041
1.495  (c) revised; interim........................................29620
    Regulation at 63 FR 29620 confirmed............................66041
1.801--1.825 (Subpart G)  Appendix B removed.......................48448
1.821  Revised.....................................................29634
1.822  Revised.....................................................29635
1.823  Revised.....................................................29636
1.824  Revised.....................................................29637
1.825  Revised.....................................................29638
1.801--1.825 (Subpart G)  Appendix A revised.......................29639
2.76  (a), (g) and (h) revised.....................................48097
2.85  (e) revised..................................................48097

[[Page 603]]

2.87  (c) revised..................................................48097
2.101  (d)(1) revised..............................................48097
2.102  (d) revised.................................................48097
2.111  (b) and (c)(1) revised......................................48097
2.117  (a) and (b) revised.........................................48097
2.119  (d) revised.................................................48097
2.120  (e) and (h) redesignated as (e)(1) and (h)(1); (e)(2) and 
        (h)(2) added; (a), new (e)(1), (g)(1) and new (h)(1) 
        revised....................................................48098
    (a) correctly revised..........................................52159
2.121  (a)(1), (c) and (d) revised.................................48099
2.122  (b)(1), (d)(1) and (2) revised..............................48099
2.123  (b) and (f) revised.........................................48099
2.125  (c) revised.................................................48099
2.127  (a), (b), (d), (e)(1) and (f) revised.......................48099
    (a) correctly revised..........................................52159
2.134  (a) revised.................................................48100
2.146  (e)(1) revised..............................................48100
3.41  Revised......................................................48100
    Correctly revised..............................................52159
Chapter II
201.5  (b)(2)(ii) and (iii)(A) revised; interim....................59236
    (b)(2)(iii)(A) amended.........................................66042
201.11  (e)(3) amended.............................................30635
201.17  (b)(2) introductory text, (e)(2)(i), (12), (f)(4), 
        (h)(3)(iii)(B)(1) and (9) introductory text amended........30635
    (h)(2)(iv) amended.............................................39738
201.18  (a)(3) amended.............................................30635
201.19  (a)(3) amended.............................................30635
201.22  (e)(1) revised.............................................66042
201.29  (e)(3) amended.............................................30635
201.32  Table revised..............................................29138
201.33  (e)(1) amended.............................................30635
201.35  Added; interim; eff. 7-20-98...............................34296
201.36  Added; interim; eff. 7-20-98...............................34296
201.37  Added; interim; eff. 7-20-98...............................34297
201.38  Added; interim.............................................59234
201.39  Added; interim.............................................71787
202.23  (e)(1) and (2) amended.....................................29139
203  Authority citation revised.....................................1927
203.3  Regulation at 62 FR 55742 confirmed..........................1927
203.4  Regulation at 62 FR 55742 confirmed; (f) and (i)(2) amended
                                                                    1927
203.6  Regulation at 62 FR 55742 confirmed..........................1927
    (b)(2) amended.................................................29139
204.6  (a) amended.................................................29139
211.3  (a)(1), (2) and (7) amended.................................29139
251  CARP arbitration list..........................................9419
251.2  (b) through (g) redesignated as (c) through (h); new (b) 
        added; new (c) revised.....................................65556
251.3  (a) introductory text and (b) amended.......................30635
251.6  (b) amended.................................................30635
251.30  (a)(1) amended.............................................30635
251.32  (d) amended................................................30635
251.43  (e) amended................................................30635
251.46  (c)(3) and (d) amended.....................................30635
251.47  (e), (f), (i) and (k) amended..............................30635
251.48  (b) amended................................................30635
251.58  (c) amended................................................65556
251.60  Amended.............................................30635, 65556
251.61  (a) revised................................................65556
251.62  (a) amended................................................65557
252.4  (a)(1) amended..............................................30635
253.1  Amended......................................................2144
253.3  Added.......................................................49836
253.4  Introductory text and (a)(1) through (8) revised; (c) 
        amended.....................................................2144
253.5  (c)(1), (2) and (3) revised..................................2145
    (c)(1), (2) and (3) revised....................................66042
253.6  (c) revised..................................................2145
253.7  (a) revised; (b)(1)(i), (ii), (2), (4) and (5) amended.......2145
    (e) heading amended............................................30635
    (e) amended....................................................30636
253.8  (b)(1) revised; (f)(1) amended...............................2145
253.10  (a) amended.................................................2145
255.3  (a) through (h) amended; (i) through (m) added...............7289
256.2  (b)(2) introductory text amended............................30636
    256.2  (a)(1) and (c) amended..................................39739
257.4  (a)(1) amended..............................................30636
258.1  Amended.....................................................30636
259.5  (a)(1) amended..............................................30636
260  Added.........................................................25413
260.3  (e) amended.................................................30636

                                  1999

    (Regulations published from January 1, 1999 through July 1, 1999)

37 CFR
                                                                   64 FR
                                                                    Page
Chapter I
1.655  (a) revised; interim........................................12901

[[Page 604]]

Chapter II
201.2  (b)(4) amended..............................................29520
201.3  Added.......................................................29520
201.4  (d) revised.................................................29521
201.5  (c)(1) introductory text amended............................29521
201.9  (a) introductory text amended; (b) revised..................29521
201.10  (f)(2) revised.............................................29521
201.12  (a) introductory text amended; (b) revised.................29521
201.18  (e)(1) and (3) amended.....................................29521
201.19  (e)(7)(ii)(D) and (f)(7)(iii)(D) amended...................29521
201.25  (d) revised................................................29522
201.26  (e) revised................................................29522
201.32  Removed....................................................29522
201.33  (d)(1) revised.............................................12902
202.3  (b)(4)(ii)(B), (5)(v)(B), (6)(i)(E), (7)(ii)(C), (8)(vii) 
        and (c)(2) introductory text amended.......................29522
    (b)(8) and (c)(2) introductory text footnote revised...........29523
202.12  (c)(1) amended.............................................12902
    (c)(3)(i), (5)(i) and (ii) amended.............................29522
202.17  (g)(2)(ii) amended.........................................29522
202.19  (f)(3) amended.............................................29522
202.23  (e)(1) and (2) amended.....................................29522
203.6  (a), (b)(1), (3), (4) and (6) amended.......................29522
204.6  (a) amended.................................................29522
211.3  (a) revised.................................................29522
251.54  Revised....................................................25201
255.5  Revised......................................................6223
255.6  Added........................................................6223
255.7  Added........................................................6223
255.8  Added........................................................6223