[Title 37 CFR ]
[Code of Federal Regulations (annual edition) - July 1, 2009 Edition]
[From the U.S. Government Printing Office]



[[Page i]]

          

          37

          Revised as of July 1, 2009


          Patents, Trademarks, and Copyrights
          



________________________

          Containing a codification of documents of general 
          applicability and future effect

          As of July 1, 2009
          With Ancillaries
                    Published by
                    Office of the Federal Register
                    National Archives and Records
                    Administration
                    A Special Edition of the Federal Register

[[Page ii]]

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                            Table of Contents



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

  Title 37:
          Chapter I--United States Patent and Trademark 
          Office, Department of Commerce                             3
          Chapter II--Copyright Office, Library of Congress        481
          Chapter III--Copyright Royalty Board, Library of 
          Congress                                                 717
          Chapter IV--Assistant Secretary for Technology 
          Policy, Department of Commerce                           795
          Chapter V--Under Secretary for Technology, 
          Department of Commerce                                   819
  Finding Aids:
      Table of CFR Titles and Chapters........................     827
      Alphabetical List of Agencies Appearing in the CFR......     847
      List of CFR Sections Affected...........................     857

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

                     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, 2009), 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, 2001, consult either the List of CFR Sections Affected, 1949-
1963, 1964-1972, 1973-1985, or 1986-2000, published in eleven separate 
volumes. For the period beginning January 1, 2001, 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.
    What if the material incorporated by reference cannot be found? If 
you have any problem locating or obtaining a copy of material listed 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 202-741-6010.

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 Authorities 
and Rules. A list of CFR titles, chapters, subchapters, 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 202-741-6000 
or write to the Director, Office of the Federal Register, National 
Archives and Records Administration, Washington, DC 20408 or e-mail 
[email protected].

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ELECTRONIC SERVICES

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CFR Sections Affected), The United States Government Manual, the Federal 
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    The Office of the Federal Register also offers a free service on the 
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register. The NARA site also contains links to GPO Access.

    Raymond A. Mosley,
    Director,
    Office of the Federal Register.
    July 1, 2009.







[[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, 2009.

    The parts in chapter I, subchapter A, are regrouped according to 
subject matter. All parts pertaining to patents--parts 1, 3, 4, and 5--
appear sequentially. All parts pertaining to trademarks--parts 2, 6, and 
7--follow, also in sequence. Part 3, which pertains to both patents and 
trademarks, follows the first part.

    Indexes appear after parts 5, 7 and 41, within chapter I. An index 
to chapter II appears at the end of the chapter.

    For this volume, Susannah C. Hurley was Chief Editor. The Code of 
Federal Regulations publication program is under the direction of 
Michael L. White, assisted by Ann Worley.


[[Page 1]]



              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS




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

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

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

chapter iii--Copyright Royalty Board, Library of Congress...         301

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--UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF 
                                COMMERCE




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


  Editorial Note: Chapter I--United States 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. For further explanation see This Title, page ix.

                          SUBCHAPTER A--GENERAL

                                 PATENTS

Part                                                                Page
1               Rules of practice in patent cases...........           5
3               Assignment, recording and rights of assignee         198
4               Complaints regarding invention promoters....         205
5               Secrecy of certain inventions and licenses 
                    to export and file applications in 
                    foreign countries.......................         206
                Index I--Rules relating to patents..........         215

                               TRADEMARKS

2               Rules of practice in trademark cases........         237
6               Classification of goods and services under 
                    the Trademark Act.......................         312
7               Rules of practice in filings pursuant to the 
                    protocol relating to the Madrid 
                    agreement concerning the international 
                    registration of marks...................         314
                Index II--Rules relating to trademarks......         325

             PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE

10              Representation of others before the Patent 
                    and Trademark Office....................         346
11              Representation of others before the United 
                    States Patent and Trademark Office......         359
15-15a

[Reserved]

41              Practice before the Board of Patent Appeals 
                    and Interferences.......................         404

[[Page 4]]

                Index III--Rules relating to practice before 
                    the Patent and Trademark Office.........         443
                      SUBCHAPTER B--ADMINISTRATION
100-101

[Reserved]

102             Disclosure of government information........         449
104             Legal processes.............................         473
             SUBCHAPTER C--PROTECTION OF FOREIGN MASK WORKS
150             Requests for Presidential proclamations 
                    pursuant to 17 U.S.C. 902(a)(2).........         478

[[Page 5]]



                          SUBCHAPTER A_GENERAL





PATENTS--Table of Contents






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




                      Subpart A_General Provisions

                 General Information and Correspondence

Sec.
1.1 Addresses for non-trademark correspondence with the United States 
          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 patent, patent application, or patent-related 
          proceeding.
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, search, and examination fees.
1.17 Patent application and reexamination processing fees.
1.18 Patent post allowance (including 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 Methods of payment.
1.24 [Reserved]
1.25 Deposit accounts.
1.26 Refunds.
1.27 Definition of small entities and establishing status as a small 
          entity to permit payment of small entity fees; when a 
          determination of entitlement to small entity status and 
          notification of loss of entitlement to small entity status are 
          required; fraud on the Office.
1.28 Refunds when small entity status is later established; how errors 
          in small entity status are excused.

                Subpart B_National Processing Provisions

     Prosecution of Application and Appointment of Attorney or Agent

1.31 Applicant may be represented by one or more patent practitioners or 
          joint inventors.
1.32 Power of attorney.
1.33 Correspondence respecting patent applications, reexamination 
          proceedings, and other proceedings.
1.34 Acting in a representative capacity.
1.36 Revocation of power of attorney; withdrawal of patent 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 [Reserved]
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, pursuant to 35 U.S.C. 116.

                             The Application

1.51 General requisites of an application.
1.52 Language, paper, writing, margins, compact disc specifications.
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 Incorporation by reference.
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]

[[Page 6]]

                              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).
1.76 Application data sheet.
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.

                              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 Third-party submission in published application.

                       Examination of Applications

1.101 [Reserved]
1.102 Advancement of examination.
1.103 Suspension of action by the Office.
1.104 Nature of examination.
1.105 Requirements for information.
1.106-1.109 [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 to a non-final Office action.
1.112 Reconsideration before final action.
1.113 Final rejection or action.
1.114 Request for continued examination.

                               Amendments

1.115 Preliminary amendments.
1.116 Amendments and affidavits or other evidence after final action and 
          prior to appeal.
1.117 Refund due to cancellation of claim.
1.118-1.119 [Reserved]
1.121 Manner of making amendments in applications.
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 or 
          published application as prior art.
1.131 Affidavit or declaration of prior invention.
1.132 Affidavits or declarations traversing rejections or objections.

                               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, terminated or limited 
          reexamination prosecution, 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 in a design application.
1.155 Expedited examination of design applications.

                              Plant Patents

1.161 Rules applicable.
1.162 Applicant, oath or declaration.

[[Page 7]]

1.163 Specification and arrangement of application elements in a plant 
          application.
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 Reissue specification, drawings, and amendments.
1.174 [Reserved]
1.175 Reissue oath or declaration.
1.176 Examination of reissue.
1.177 Issuance of multiple reissue patents.
1.178 Original patent; continuing duty of applicant.
1.179 [Reserved]

                  Petitions and Action by the Director

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

         Appeal to the Board of Patent Appeals and Interferences

1.191 Appeal to Board of Patent Appeals and Interferences.
1.192-1.196 [Reserved]
1.197 Return of jurisdiction from the Board of Patent Appeals and 
          Interferences; termination of proceedings.
1.198 Reopening after a final decision of the Board of Patent Appeals 
          and Interferences.

                      Publication of Applications.

1.211 Publication of applications.
1.213 Nonpublication request.
1.215 Patent application publication.
1.217 Publication of a redacted copy of an application.
1.219 Early publication.
1.221 Voluntary publication or republication of patent application 
          publication.

                        Miscellaneous Provisions

1.248 Service of papers; manner of service; proof of service in cases 
          other than interferences.
1.251 Unlocatable file.
1.265 Examination support document.

                   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, pursuant to 35 U.S.C. 256.
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.

[[Page 8]]

              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.
1.417 Submission of translation of international publication.
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.

                      The International Application

1.431 International application requirements.
1.432 Designation of States by filing an international application.
1.433 Physical requirements of international application.
1.434 The request.
1.435 The description.
1.436 The claims.
1.437 The drawings.
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.
1.452 Restoration of right of priority.

                             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 National stage commencement and entry
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.
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_Ex Parte Reexamination of Patents

                          Citation of Prior Art

1.501 Citation of prior art in patent files.
1.502 Processing of prior art citations during an ex parte reexamination 
          proceeding.

                   Request for Ex Parte Reexamination

1.510 Request for ex parte reexamination.
1.515 Determination of the request for ex parte

[[Page 9]]

1.520 Ex parte reexamination at the initiative of the Director.

                         Ex Parte Reexamination

1.525 Order for ex parte reexamination.
1.530 Statement by patent owner in ex parte reexamination; amendment by 
          patent owner in ex parte or inter partes reexamination; 
          inventorship change in ex parte or inter partes reexamination.
1.535 Reply by third party requester in ex parte reexamination.
1.540 Consideration of responses in ex parte reexamination.
1.550 Conduct of ex parte reexamination proceedings.
1.552 Scope of reexamination in ex parte reexamination proceedings.
1.555 Information material to patentability in ex parte reexamination 
          and inter partes reexamination proceedings.
1.560 Interviews in ex parte reexamination proceedings.
1.565 Concurrent office proceedings which include an ex parte 
          reexamination proceeding.

                   Ex Parte Reexamination Certificate

1.570 Issuance of ex parte reexamination certificate after ex parte 
          reexamination proceedings.

Subpart E [Reserved]

            Subpart F_Adjustment and Extension of Patent Term

           Adjustment of Patent Term Due to Examination Delay

1.701 Extension of patent term due to examination delay under the 
          Uruguay Round Agreements Act of 1999 (original applications, 
          other than designs, filed on or after June 8, 1995, and before 
          May 29, 2000).
1.702 Grounds for adjustment of patent term due to examination delay 
          under the Patent Term Guarantee Act of 1999 (original 
          applications, other than designs, filed on or after May 29, 
          2000).
1.703 Period of adjustment of patent term due to examination delay.
1.704 Reduction of period of adjustment of patent term.
1.705 Patent term adjustment determination.

            Extension of Patent Term Due to Regulatory Review

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; signature requirements.
1.740 Formal requirements for application for extension of patent term; 
          correction of informalities.
1.741 Complete application given a filing date; petition procedure.
1.750 Determination of eligibility for extension of patent term.
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 or order 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.
1.824 Form and format for nucleotide and/or amino acid sequence 
          submissions in computer readable form.

[[Page 10]]

1.825 Amendments to or replacement of sequence listing and computer 
          readable copy thereof.

Appendix A to Subpart G--Sample Sequence Listing

  Subpart H_Inter Partes Reexamination of Patents That Issued From an 
Original Application Filed in the United States on or After November 29, 
                                  1999

                           Prior Art Citations

1.902 Processing of prior art citations during an inter partes 
          reexamination proceeding.

         Requirements for Inter Partes Reexamination Proceedings

1.903 Service of papers on parties in inter partes reexamination.
1.904 Notice of inter partes reexamination in Official Gazette.
1.905 Submission of papers by the public in inter partes reexamination.
1.906 Scope of reexamination in inter partes reexamination proceeding.
1.907 Inter partes reexamination prohibited.
1.913 Persons eligible to file request for inter partes reexamination.
1.915 Content of request for inter partes reexamination.
1.919 Filing date of request for inter partes reexamination.
1.923 Examiner's determination on the request for inter partes 
          reexamination.
1.925 Partial refund if request for inter partes reexamination is not 
          ordered.
1.927 Petition to review refusal to order inter partes reexamination.

                  Inter Partes Reexamination of Patents

1.931 Order for inter partes reexamination.

          Information Disclosure in Inter Partes Reexamination

1.933 Patent owner duty of disclosure in inter partes reexamination 
          proceedings.

   Office Actions and Responses (Before the Examiner) in Inter Partes 
                              Reexamination

1.935 Initial Office action usually accompanies order for inter partes 
          reexamination.
1.937 Conduct of inter partes reexamination.
1.939 Unauthorized papers in inter partes reexamination.
1.941 Amendments by patent owner in inter partes reexamination.
1.943 Requirements of responses, written comments, and briefs in inter 
          partes reexamination.
1.945 Response to Office action by patent owner in inter partes 
          reexamination.
1.947 Comments by third party requester to patent owner's response in 
          inter partes reexamination.
1.948 Limitations on submission of prior art by third party requester 
          following the order for inter partes reexamination.
1.949 Examiner's Office action closing prosecution in inter partes 
          reexamination.
1.951 Options after Office action closing prosecution in inter partes 
          reexamination.
1.953 Examiner's Right of Appeal Notice in inter partes reexamination.

           Interviews Prohibited in Inter Partes Reexamination

1.955 Interviews prohibited in inter partes reexamination proceedings.

   Extensions of Time, Terminating of Reexamination Prosecution, and 
            Petitions To Revive in Inter Partes Reexamination

1.956 Patent owner extensions of time in inter partes reexamination.
1.957 Failure to file a timely, appropriate or complete response or 
          comment in inter partes reexamination.
1.958 Petition to revive inter partes reexamination prosecution 
          terminated for lack of patent owner response.

Appeal to the Board of Patent Appeals and Interferences in Inter Partes 
                              Reexamination

1.959 Appeal in inter partes reexamination.
1.961-1.977 [Reserved]
1.979 Return of Jurisdiction from the Board of Patent Appeals and 
          Interferences; termination of appeal proceedings.
1.981 Reopening after a final decision of the Board of Patent Appeals 
          and Interferences.

Appeal to the United States Court of Appeals for the Federal Circuit in 
                       Inter Partes Reexamination

1.983 Appeal to the United States Court of Appeals for the Federal 
          Circuit in inter partes reexamination.

      Concurrent Proceedings Involving Same Patent in Inter Partes 
                              Reexamination

1.985 Notification of prior or concurrent proceedings in inter partes 
          reexamination.
1.987 Suspension of inter partes reexamination proceeding due to 
          litigation.
1.989 Merger of concurrent reexamination proceedings.
1.991 Merger of concurrent reissue application and inter partes 
          reexamination proceeding.
1.993 Suspension of concurrent interference and inter partes 
          reexamination proceeding.
1.995 Third party requester's participation rights preserved in merged 
          proceeding.

[[Page 11]]

         Reexamination Certificate in Inter Partes Reexamination

1.997 Issuance and publication of inter partes reexamination certificate 
          concludes inter partes reexamination proceeding.

    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

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

    Editorial Notes: 1. In Patent and Trademark Office publications and 
usage the part number is omitted from the numbers of Sec. Sec. 1.1 to 
1.352 and the numbers to the right of the decimal point correspond with 
the respective rule numbers.

    2. For nomenclature changes to part 1, see 68 FR 14335, Mar. 25, 
2003.



                      Subpart A_General Provisions

                 General Information and Correspondence



Sec. 1.1  Addresses for non-trademark correspondence with the 
United States Patent and Trademark Office.

    (a) In general. Except as provided in paragraphs (a)(3)(i), 
(a)(3)(ii), and (d)(1) of this section, all correspondence intended for 
the United States Patent and Trademark Office must be addressed to 
either ``Director of the United States Patent and Trademark Office, P.O. 
Box 1450, Alexandria, Virginia 22313-1450'' or to specific areas within 
the Office as set out in paragraphs (a)(1), and (a)(3)(iii) of this 
section. When appropriate, correspondence should also be marked for the 
attention of a particular office or individual.
    (1) Patent correspondence. (i) In general. All correspondence 
concerning patent matters processed by organizations reporting to the 
Commissioner for Patents should be addressed to: Commissioner for 
Patents, PO Box 1450, Alexandria, Virginia 22313-1450.
    (ii) Board of Patent Appeals and Interferences. See Sec. 41.10 of 
this title. Notices of appeal, appeal briefs, reply briefs, requests for 
oral hearing, as well as all other correspondence in an application or a 
patent involved in an appeal to the Board for which an address is not 
otherwise specified, should be addressed as set out in paragraph 
(a)(1)(i) of this section.
    (2) [Reserved]
    (3) Office of General Counsel correspondence--(i) Litigation and 
service. Correspondence relating to pending litigation or otherwise 
within the scope of part 104 of this title shall be addressed as 
provided in Sec. 104.2.
    (ii) Disciplinary proceedings. Correspondence to counsel for the 
Director of the Office of Enrollment and Discipline relating to 
disciplinary proceedings pending before an Administrative Law Judge or 
the Director shall be mailed to: Office of the Solicitor, PO Box 16116, 
Arlington, Virginia 22215.
    (iii) Solicitor, in general. Correspondence to the Office of the 
Solicitor not otherwise provided for shall be addressed to: Mail Stop 8, 
Director of the United States Patent and Trademark Office, PO Box 1450, 
Alexandria, Virginia 22313-1450.
    (iv) General Counsel. Correspondence to the Office of the General 
Counsel not otherwise provided for, including correspondence to the 
General Counsel relating to disciplinary proceedings, shall be addressed 
to: General Counsel, United States Patent and Trademark Office, PO Box 
1450, Alexandria, Virginia 22313-1450.
    (v) Improper correspondence. Correspondence improperly addressed to 
a Post Office Box specified in paragraphs (a)(3)(i) and(a)(3)(ii) of 
this section will not be filed elsewhere in the United States Patent and 
Trademark Office, and may be returned.
    (4) Office of Public Records correspondence. (i) Assignments. All 
patent-related documents submitted by mail to be recorded by Assignment 
Services Division, except for documents filed together with a new 
application, should be addressed to: Mail Stop Assignment Recordation 
Services, Director of the United States Patent and Trademark Office, 
P.O. Box 1450, Alexandria, Virginia 22313-1450. See Sec. 3.27.
    (5) Office of Enrollment and Discipline correspondence. All 
correspondence directed to the Office of Enrollment and Discipline 
concerning enrollment, registration, and investigation matters should be 
addressed to Mail Stop OED, Director of the United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
    (ii) Documents. All requests for certified or uncertified copies of 
patent

[[Page 12]]

documents should be addressed to: Mail Stop Document Services, Director 
of the United States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, Virginia 22313-1450.
    (b) Patent Cooperation Treaty. 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 ``Mail Stop PCT.''
    (c) For reexamination proceedings. (1) Requests for ex parte 
reexamination (original request papers) and all subsequent ex parte 
reexamination correspondence filed in the Office, other than 
correspondence to the Office of the General Counsel pursuant to Sec. 
1.1(a)(3) and Sec. 1.302(c), should be additionally marked ``Mail Stop 
Ex Parte Reexam.''
    (2) Requests for inter partes reexamination (original request 
papers) and all subsequent inter partes reexamination correspondence 
filed in the Office, other than correspondence to the Office of the 
General Counsel pursuant to Sec. 1.1(a)(3) and Sec. 1.302(c), should 
be additionally marked ``Mail Stop Inter partes Reexam.''
    (d) Payments of maintenance fees in patents not submitted 
electronically over the Internet, and correspondence related to 
maintenance fees may be addressed to: Director of the United States 
Patent and Trademark Office, Attn: Maintenance Fee, 2051 Jamieson 
Avenue, Suite 300, Alexandria, Virginia 22314.
    (e) Patent term extension. All applications for extension of patent 
term under 35 U.S.C. 156 and any communications relating thereto 
intended for the United States Patent and Trademark Office should be 
additionally marked ``Mail Stop Patent Ext.'' When appropriate, the 
communication should also be marked to the attention of a particular 
individual, as where a decision has been rendered.
    (f) [Reserved]

[68 FR 14335, Mar. 25, 2003; 68 FR 19371, Apr. 21, 2003, as amended at 
68 FR 48287, Aug. 13, 2003; 68 FR 71006, Dec. 22, 2003; 69 FR 29877, May 
26, 2004; 69 FR 35451, June 24, 2004; 69 FR 49997, Aug. 12, 2004; 72 FR 
18904, Apr. 16, 2007; 73 FR 47540, Aug. 14, 2008]



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 United States Patent and Trademark Office with 
decorum and courtesy. Papers presented in violation of this requirement 
will be submitted to the Director and will not be entered. A notice of 
the non-entry of the paper will be provided. Complaints against 
examiners and other employees must be made in correspondence separate 
from other papers.

[68 FR 38624, June 30, 2003]



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, 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 the rules relating to 
the filing, processing, or other proceedings of national applications in 
subpart B, Sec. Sec. 1.31 to 1.378; of international applications in 
subpart C, Sec. Sec. 1.401 to 1.499; of ex parte reexaminations of 
patents in subpart D, Sec. Sec. 1.501 to 1.570; of extension of patent 
term in subpart F, Sec. Sec. 1.710 to 1.785; of inter partes 
reexaminations of patents in subpart H, Sec. Sec. 1.902 to 1.997; and 
of the Board of Patent Appeals and Interferences in part 41 of this 
title.

[[Page 13]]

    (b) Since each file must be complete in itself, a separate copy of 
every paper to be filed in a patent application, patent file, or other 
proceeding must be furnished for each file to which the paper pertains, 
even though the contents of the papers filed in two or more files may be 
identical. The filing of duplicate copies of correspondence in the file 
of an application, patent, or other proceeding should be avoided, except 
in situations in which the Office requires the filing of duplicate 
copies. The Office may dispose of duplicate copies of correspondence in 
the file of an application, patent, or other proceeding.
    (c) Since different matters may be considered by different branches 
or sections of the United States Patent and Trademark Office, each 
distinct subject, inquiry or order must be contained in a separate paper 
to avoid confusion and delay in answering papers dealing with different 
subjects.
    (d)(1) Handwritten signature. Each piece of correspondence, except 
as provided in paragraphs (d)(2), (d)(3), (e) and (f) of this section, 
filed in an application, patent file, or other proceeding in the Office 
which requires a person's signature, must:
    (i) Be an original, that is, have an original handwritten signature 
personally signed, in permanent dark ink or its equivalent, 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 Office may 
require submission of the original.
    (2) S-signature. An S-signature is a signature inserted between 
forward slash marks, but not a handwritten signature as defined by Sec. 
1.4(d)(1). An S-signature includes any signature made by electronic or 
mechanical means, and any other mode of making or applying a signature 
not covered by a handwritten signature of Sec. 1.4(d)(1). 
Correspondence being filed in the Office in paper, by facsimile 
transmission as provided in Sec. 1.6(d), or via the Office electronic 
filing system as an attachment as provided in Sec. 1.6(a)(4), for a 
patent application, patent, or a reexamination proceeding may be S-
signature signed instead of being personally signed (i.e., with a 
handwritten signature) as provided for in paragraph (d)(1) of this 
section. The requirements for an S-signature under this paragraph (d)(2) 
of this section are as follows.
    (i) The S-signature must consist only of letters, or Arabic 
numerals, or both, with appropriate spaces and commas, periods, 
apostrophes, or hyphens for punctuation, and the person signing the 
correspondence must insert his or her own S-signature with a first 
single forward slash mark before, and a second single forward slash mark 
after, the S-signature (e.g., /Dr. James T. Jones, Jr./); and
    (ii) A patent practitioner (Sec. 1.32(a)(1)), signing pursuant to 
Sec. Sec. 1.33(b)(1) or 1.33(b)(2), must supply his/her registration 
number either as part of the S-signature, or immediately below or 
adjacent to the S-signature. The number () character may be 
used only as part of the S-signature when appearing before a 
practitioner's registration number; otherwise the number character may 
not be used in an S-signature.
    (iii) The signer's name must be:
    (A) Presented in printed or typed form preferably immediately below 
or adjacent the S-signature, and
    (B) Reasonably specific enough so that the identity of the signer 
can be readily recognized.
    (3) Forms. The Office provides forms to the public to use in certain 
situations to assist in the filing of correspondence for a certain 
purpose and to meet certain requirements for patent applications and 
proceedings. Use of the forms for purposes for which they were not 
designed is prohibited. No changes to certification statements on the 
Office forms (e.g., oath or declaration forms, terminal disclaimer 
forms, petition forms, and nonpublication request form) may be made. The 
existing text of a form, other than a certification statement, may be 
modified, deleted, or added to, if all text identifying the form as an 
Office form is removed. The presentation to the Office (whether by 
signing, filing, submitting, or later advocating) of any Office form 
with text identifying the form as an Office form by a party, whether a 
practitioner or non-practitioner, constitutes a certification

[[Page 14]]

under Sec. 11.18(b) of this chapter that the existing text and any 
certification statements on the form have not been altered other than 
permitted by EFS-Web customization.
    (4) Certifications. (i) Section 11.18 certifications: 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. 11.18(b) of 
this subchapter. Violations of Sec. 11.18(b)(2) of this subchapter by a 
party, whether a practitioner or non-practitioner, may result in the 
imposition of sanctions under Sec. 11.18(c) of this subchapter. Any 
practitioner violating Sec. 11.18(b) of this subchapter may also be 
subject to disciplinary action. See Sec. Sec. 11.18(d) and 11.804(b)(9) 
of this subchapter.
    (ii) Certifications as to the signature:
    (A) Of another: A person submitting a document signed by another 
under paragraph (d)(2) of this section is obligated to have a reasonable 
basis to believe that the person whose signature is present on the 
document was actually inserted by that person, and should retain 
evidence of authenticity of the signature.
    (B) Self certification: The person inserting a signature under 
paragraph (d)(2) of this section in a document submitted to the Office 
certifies that the inserted signature appearing in the document is his 
or her own signature.
    (C) Sanctions: Violations of the certifications as to the signature 
of another or a person's own signature, set forth in paragraphs 
(d)(4)(ii)(A) and (B) of this section, may result in the imposition of 
sanctions under Sec. 11.18(c) and (d) of this chapter.
    (e) Correspondence requiring a person's signature and relating to 
registration practice before the Patent and Trademark Office in patent 
cases, enrollment and disciplinary investigations, or disciplinary 
proceedings must be submitted with an original handwritten signature 
personally signed in permanent dark ink or its equivalent 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.
    (h) Ratification/confirmation/evidence of authenticity: The Office 
may require ratification, confirmation (which includes submission of a 
duplicate document but with a proper signature), or evidence of 
authenticity of a signature, such as when the Office has reasonable 
doubt as to the authenticity (veracity) of the signature, e.g., where 
there are variations of a signature, or where the signature and the 
typed or printed name, do not clearly identify the person signing.

(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; 64 FR 48917, Sept. 8, 1999; 65 FR 
54656, Sept. 8, 2000; 66 FR 76772, Dec. 7, 2000; 67 FR 79522, Dec. 30, 
2002; 68 FR 48287, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR 
56535, Sept. 21, 2004; 70 FR 56126, Sept. 26, 2005; 72 FR 2775, Jan. 23, 
2007; 73 FR 47684, Aug. 14, 2008]



Sec. 1.5  Identification of patent, patent application, or patent-related
proceeding.

    (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 15]]

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) [Reserved]
    (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) [Reserved]
    (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; 64 FR 48917, Sept. 8, 1999; 68 FR 48288, Aug. 13, 
2003; 69 FR 49997, Aug. 12, 2004]



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 under paragraph (a)(3) of this section, or filed 
electronically under paragraph (a)(4) of this section, no correspondence 
is received in the 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 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.
    (4) Correspondence may be submitted using the Office electronic 
filing system only in accordance with the Office electronic filing 
system requirements. Correspondence submitted to the Office

[[Page 16]]

by way of the Office electronic filing system will be accorded a receipt 
date, which is the date the correspondence is received at the 
correspondence address for the Office set forth in Sec. 1.1 when it was 
officially submitted.
    (b) [Reserved]
    (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 United States 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 United States Patent 
and Trademark Office. The application number of a patent application, 
the control number of a reexamination proceeding, the interference 
number of an interference proceeding, or the patent number of a patent 
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), 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) Color drawings submitted under Sec. Sec. 1.81, 1.83 through 
1.85, 1.152, 1.165, 1.173, or 1.437;
    (5) A request for reexamination under Sec. 1.510 or Sec. 1.913;
    (6) Correspondence to be filed in a patent application subject to a 
secrecy order under Sec. Sec. 5.1 through 5.5 of this chapter and 
directly related to the secrecy order content of the application;
    (7)-(8) [Reserved]
    (9) In contested cases before the Board of Patent Appeals and 
Interferences except as the Board may expressly authorize.
    (e) [Reserved]
    (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 transmission, the party who 
transmitted the application under Sec. 1.53(d) may petition the 
Director 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 Director 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.
    (g) Submission of the national stage correspondence required by 
Sec. 1.495 via the Office electronic filing system. In the event that 
the Office has no evidence of receipt of the national stage 
correspondence required by Sec. 1.495, which was submitted to the 
Office by the Office electronic filing system, the party who

[[Page 17]]

submitted the correspondence may petition the Director to accord the 
national stage correspondence a receipt date as of the date the 
correspondence is shown to have been officially submitted to the Office.
    (1) The petition of this paragraph (g) requires that the party who 
submitted such national stage correspondence:
    (i) Informs the Office of the previous submission of the 
correspondence promptly after becoming aware that the Office has no 
evidence of receipt of the correspondence under Sec. 1.495;
    (ii) Supplies an additional copy of the previously submitted 
correspondence;
    (iii) Includes a statement that attests on a personal knowledge 
basis, or to the satisfaction of the Director, that the correspondence 
was previously officially submitted; and
    (iv) Supplies a copy of an acknowledgment receipt generated by the 
Office electronic filing system, or equivalent evidence, confirming the 
submission to support the statement of paragraph (g)(1)(iii) of this 
section.
    (2) The Office may require additional evidence to determine if the 
national stage correspondence was submitted to 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; 64 FR 48917, Sept. 8, 1999; 65 
FR 54657, Sept. 8, 2000; 65 FR 76772, Dec. 7, 2000; 68 FR 14336, Mar. 
25, 2003; 68 FR 48288, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR 
56536, Sept. 21, 2004; 72 FR 2775, Jan. 23, 2007]



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

    (a) 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 United States 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 business 
day which is not a Saturday, Sunday, or a Federal holiday. See Sec. 
1.304 for time for appeal or for commencing civil action.
    (b) If the day that is twelve months after the filing date of a 
provisional application under 35 U.S.C. 111(b) and Sec. 1.53(c) falls 
on Saturday, Sunday, or on a Federal holiday within the District of 
Columbia, the period of pendency shall be extended to the next 
succeeding secular or business day which is not a Saturday, Sunday, or a 
Federal holiday.

[65 FR 14871, Mar. 20, 2000]



Sec. 1.8  Certificate of mailing or transmission.

    (a) Except in the situations enumerated in paragraph (a)(2) of this 
section or as otherwise expressly excluded in this chapter, 
correspondence required to be filed in the U.S. 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;
    (B) Transmitted by facsimile to the Patent and Trademark Office in 
accordance with Sec. 1.6(d); or
    (C) Transmitted via the Office electronic filing system in 
accordance with Sec. 1.6(a)(4); 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) [Reserved]

[[Page 18]]

    (C) Papers filed in contested cases before the Board of Patent 
Appeals and Interferences, which are governed by Sec. 41.106(f) of this 
title;
    (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. 1.495(b).
    (ii) [Reserved]
    (iii) Relative to Disciplinary Proceedings--
    (A) Correspondence filed in connection with a disciplinary 
proceeding under part 11 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 U.S. Patent and Trademark Office after 
a reasonable amount of time has elapsed from the time of mailing or 
transmitting of the correspondence, or after the application is held to 
be abandoned, or after the proceeding is dismissed or decided with 
prejudice, or the prosecution of a reexamination proceeding is 
terminated pursuant to Sec. 1.550(d) or Sec. 1.957(b) or limited 
pursuant to Sec. 1.957(c), or a requester paper is refused 
consideration pursuant to Sec. 1.957(a), 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 that attests on a personal knowledge basis 
or to the satisfaction of the Director to the previous timely mailing, 
transmission or submission. 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. If the 
correspondence was transmitted via the Office electronic filing system, 
a copy of an acknowledgment receipt generated by the Office electronic 
filing system confirming submission 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; 67 FR 523, Jan. 4, 
2002; 68 FR 48288, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR 
56536, Sept. 21, 2004; 72 FR 2775, Jan. 23, 2007; 72 FR 18904, Apr. 16, 
2007; 73 FR 47684, Aug. 14, 2008]



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) A published application as used in this chapter means an 
application for patent which has been published under 35 U.S.C. 122(b).
    (d)-(f) [Reserved]
    (g) For definitions in Board of Patent Appeals and Interferences 
proceedings, see part 41 of this title.
    (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.

[[Page 19]]

    (i) National security classified as used in this chapter means 
specifically authorized under criteria established by an Act of Congress 
or Executive Order to be kept secret in the interest of national defense 
or foreign policy and, in fact, properly classified pursuant to such Act 
of Congress or Executive Order.
    (j) Director as used in this chapter, except for part 11 of this 
chapter, means the Under Secretary of Commerce for Intellectual Property 
and Director of the United States Patent and Trademark Office.
    (k) Paper as used in this chapter means a document that may exist in 
electronic form, or in physical form, and therefore does not necessarily 
imply physical sheets of paper.

(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; 65 
FR 54657, Sept. 8, 2000; 65 FR 57051, Sept. 20, 2000; 68 FR 14336, Mar. 
25, 2003; 68 FR 38624, June 30, 2003; 69 FR 49997, Aug. 12, 2004; 73 FR 
47685, Aug. 14, 2008]



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

    (a)(1) Any correspondence received by the U.S. Patent and Trademark 
Office (USPTO) that was delivered by the ``Express Mail Post Office to 
Addressee'' service of the United States Postal Service (USPS) will be 
considered filed with the USPTO on the date of deposit with the USPS.
    (2) The date of deposit with USPS is shown by the ``date in'' on the 
``Express Mail'' label or other official USPS notation. If the USPS 
deposit date cannot be determined, the correspondence will be accorded 
the USPTO 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 Director 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 Director 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;

[[Page 20]]

    (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 showing which establishes, to the 
satisfaction of the Director, 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 Director 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 Director, 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.
    (g) Any person who mails 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 has 
the correspondence returned by the USPS due to an interruption or 
emergency in ``Express Mail'' service, may petition the Director to 
consider such correspondence as filed on a particular date in the 
Office, provided that:
    (1) The petition is filed promptly after the person becomes aware of 
the return 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 the original correspondence or a copy of 
the original correspondence showing the number of the ``Express Mail'' 
mailing label thereon and a copy of the ``Express Mail'' mailing label 
showing the ``date-in''; and
    (4) The petition includes a statement which establishes, to the 
satisfaction of the Director, the original deposit of the correspondence 
and that the correspondence or copy of the correspondence is the 
original correspondence or a true copy of the correspondence originally 
deposited with the USPS on the requested filing date. The Office may 
require additional evidence to determine if the correspondence was 
returned by the USPS due to an interruption or emergency in ``Express 
Mail'' service.

[[Page 21]]

    (h) Any person who attempts to mail 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 has 
the correspondence refused by an employee of the USPS due to an 
interruption or emergency in ``Express Mail'' service, may petition the 
Director to consider such correspondence as filed on a particular date 
in the Office, provided that:
    (1) The petition is filed promptly after the person becomes aware of 
the refusal 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 
attempted mailing by ``Express Mail'';
    (3) The petition includes the original correspondence or a copy of 
the original correspondence showing the number of the ``Express Mail'' 
mailing label thereon; and
    (4) The petition includes a statement by the person who originally 
attempted to deposit the correspondence with the USPS which establishes, 
to the satisfaction of the Director, the original attempt to deposit the 
correspondence and that the correspondence or copy of the correspondence 
is the original correspondence or a true copy of the correspondence 
originally attempted to be deposited with the USPS on the requested 
filing date. The Office may require additional evidence to determine if 
the correspondence was refused by an employee of the USPS due to an 
interruption or emergency in ``Express Mail'' service.
    (i) Any person attempting to file correspondence under this section 
that was unable to be deposited with the USPS due to an interruption or 
emergency in ``Express Mail'' service which has been so designated by 
the Director, may petition the Director to consider such correspondence 
as filed on a particular date in the Office, provided that:
    (1) The petition is filed in a manner designated by the Director 
promptly after the person becomes aware of the designated interruption 
or emergency in ``Express Mail'' service;
    (2) The petition includes the original correspondence or a copy of 
the original correspondence; and
    (3) The petition includes a statement which establishes, to the 
satisfaction of the Director, that the correspondence would have been 
deposited with the USPS but for the designated interruption or emergency 
in ``Express Mail'' service, and that the correspondence or copy of the 
correspondence is the original correspondence or a true copy of the 
correspondence originally attempted to be deposited with the USPS on the 
requested filing date.

[61 FR 56447, Nov. 1, 1996 as amended at 62 FR 53181, Oct. 10, 1997; 67 
FR 36101, May 23, 2002; 68 FR 48288, Aug. 13, 2003; 69 FR 56536, Sept. 
21, 2004]

          Records and Files of the Patent and Trademark Office



Sec. 1.11  Files open to the public.

    (a) The specification, drawings, and all papers relating to the file 
of: A published application; a patent; or a statutory invention 
registration are open to inspection by the public, and copies may be 
obtained upon the payment of the fee set forth in Sec. 1.19(b)(2). If 
an application was published in redacted form pursuant to Sec. 1.217, 
the complete file wrapper and contents of the patent application will 
not be available if: The requirements of paragraphs (d)(1), (d)(2), and 
(d)(3) of Sec. 1.217 have been met in the application; and the 
application is still pending. See Sec. 2.27 of this title 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

[[Page 22]]

the attorney or agent of record, and examining group to which the 
reissue application is assigned.
    (c) All requests for reexamination for which all the requirements of 
Sec. 1.510 or Sec. 1.915 have been satisfied will be announced in the 
Official Gazette. Any reexaminations at the initiative of the Director 
pursuant to Sec. 1.520 will also be announced in the Official Gazette. 
The announcement shall include at least the date of the request, if any, 
the reexamination request control number or the Director 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) Except as prohibited in Sec. 41.6(b), the file of any 
interference is open to public inspection and copies of the file may be 
obtained upon payment of the fee therefor.

(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; 65 FR 57051, Sept. 20, 2000; 69 FR 49997, Aug. 12, 2004; 70 FR 
56126, Sept. 26, 2005; 71 FR 44223, Aug. 4, 2006]



Sec. 1.12  Assignment records open to public inspection.

    (a)(1) Separate assignment records are maintained in the United 
States 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 published patent applications, are open to public inspection at the 
United States Patent and Trademark Office, and copies of patent 
assignment records may be obtained upon request and payment of the fee 
set forth in Sec. 1.19 of this chapter. See Sec. 2.200 of this chapter 
regarding trademark assignment records.
    (2) All records of assignments of patents recorded before May 1, 
1957, 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, which is open to the public pursuant to 
Sec. 1.11 or for which copies or access may be supplied pursuant to 
Sec. 1.14, are available to the public. Copies of any assignment 
records, digests, and indexes that are not available to the public shall 
be obtainable only upon written authority of the applicant or 
applicant's assignee or patent attorney or patent 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 in this part.
    (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 including the fee set forth in 
Sec. 1.17(g); 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; 65 
FR 54657, Sept. 8, 2000; 65 FR 57051, Sept. 20, 2000; 68 FR 48288, Aug. 
13, 2003; 69 FR 29877, May 26, 2004; 69 FR 56536, Sept. 21, 2004]

[[Page 23]]



Sec. 1.13  Copies and certified copies.

    (a) Non-certified copies of patents, and patent application 
publications and of any records, books, papers, or drawings within the 
jurisdiction of the United States Patent and Trademark Office and open 
to the public, will be furnished by the United States 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 
appropriate fee. See Sec. 2.201 of this chapter regarding copies of 
trademark records.
    (b) Certified copies of patents, patent application publications, 
and trademark registrations and of any records, books, papers, or 
drawings within the jurisdiction of the United States Patent and 
Trademark Office and open to the public or persons entitled thereto will 
be authenticated by the seal of the United States Patent and Trademark 
Office and certified by the Director, or in his or her name, upon 
payment of the fee for the certified copy.

[68 FR 48288, Aug. 13, 2003, as amended at 68 FR 71006, Dec. 22, 2003]



Sec. 1.14  Patent applications preserved in confidence.

    (a) Confidentiality of patent application information. Patent 
applications that have not been published under 35 U.S.C. 122(b) are 
generally preserved in confidence pursuant to 35 U.S.C. 122(a). 
Information concerning the filing, pendency, or subject matter of an 
application for patent, including status information, and access to the 
application, will only be given to the public as set forth in Sec. 1.11 
or in this section.
    (1) Records associated with patent applications (see paragraph (g) 
for international applications) may be available in the following 
situations:
    (i) Patented applications and statutory invention registrations. The 
file of an application that has issued as a patent or published as a 
statutory invention registration is available to the public as set forth 
in Sec. 1.11(a). A copy of the patent application-as-filed, the file 
contents of the application, or a specific document in the file of such 
an application may be provided upon request and payment of the 
appropriate fee set forth in Sec. 1.19(b).
    (ii) Published abandoned applications. The file of an abandoned 
application that has been published as a patent application publication 
is available to the public as set forth in Sec. 1.11(a). A copy of the 
application-as-filed, the file contents of the published application, or 
a specific document in the file of the published application may be 
provided to any person upon request, and payment of the appropriate fee 
set forth in Sec. 1.19(b).
    (iii) Published pending applications. A copy of the application-as-
filed, the file contents of the application, or a specific document in 
the file of a pending application that has been published as a patent 
application publication may be provided to any person upon request, and 
payment of the appropriate fee set forth in Sec. 1.19(b). If a redacted 
copy of the application was used for the patent application publication, 
the copy of the specification, drawings, and papers may be limited to a 
redacted copy. The Office will not provide access to the paper file of a 
pending application that has been published, except as provided in 
paragraph (c) or (i) of this section.
    (iv) Unpublished abandoned applications (including provisional 
applications) that are identified or relied upon. The file contents of 
an unpublished, abandoned application may be made available to the 
public if the application is identified in a U.S. patent, a statutory 
invention registration, a U.S. patent application publication, or an 
international patent application publication of an international 
application that was published in accordance with PCT Article 21(2). An 
application is considered to have been identified in a document, such as 
a patent, when the application number or serial number and filing date, 
first named inventor, title and filing date or other application 
specific information are provided in the text of the patent, but not 
when the same identification is made in a paper in the file contents of 
the patent and is not included in the printed patent. Also, the file 
contents may be made available to the public, upon a written request, if 
benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 
120, 121, or 365 in an application that has issued as a U.S. patent, or 
has

[[Page 24]]

published as a statutory invention registration, a U.S. patent 
application publication, or an international patent application that was 
published in accordance with PCT Article 21(2). A copy of the 
application-as-filed, the file contents of the application, or a 
specific document in the file of the application may be provided to any 
person upon written request, and payment of the appropriate fee (Sec. 
1.19(b)).
    (v) Unpublished pending applications (including provisional 
applications) whose benefit is claimed. A copy of the file contents of 
an unpublished pending application may be provided to any person, upon 
written request and payment of the appropriate fee (Sec. 1.19(b)), if 
the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 
121, or 365 in an application that has issued as a U.S. patent, an 
application that has published as a statutory invention registration, a 
U.S. patent application publication, or an international patent 
application publication that was published in accordance with PCT 
Article 21(2). A copy of the application-as-filed, or a specific 
document in the file of the pending application may also be provided to 
any person upon written request, and payment of the appropriate fee 
(Sec. 1.19(b)). The Office will not provide access to the paper file of 
a pending application, except as provided in paragraph (c) or (i) of 
this section.
    (vi) Unpublished pending applications (including provisional 
applications) that are incorporated by reference or otherwise 
identified. A copy of the application as originally filed of an 
unpublished pending application may be provided to any person, upon 
written request and payment of the appropriate fee (Sec. 1.19(b)), if 
the application is incorporated by reference or otherwise identified in 
a U.S. patent, a statutory invention registration, a U.S. patent 
application publication, or an international patent application 
publication that was published in accordance with PCT Article 21(2). The 
Office will not provide access to the paper file of a pending 
application, except as provided in paragraph (c) or (i) of this section.
    (vii) When a petition for access or a power to inspect is required. 
Applications that were not published or patented, that are not the 
subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365 in 
an application that has issued as a U.S. patent, an application that has 
published as a statutory invention registration, a U.S. patent 
application publication, or an international patent application 
publication that was published in accordance with PCT Article 21(2), or 
are not identified in a U.S. patent, a statutory invention registration, 
a U.S. patent application publication, or an international patent 
application that was published in accordance with PCT Article 21(2), are 
not available to the public. If an application is identified in the file 
contents of another application, but not the published patent 
application or patent itself, a granted petition for access (see 
paragraph (i)), or a power to inspect (see paragraph (c)) is necessary 
to obtain the application, or a copy of the application.
    (2) Information concerning a patent application may be communicated 
to the public if the patent application is identified in a published 
patent document or in an application as set forth in paragraphs 
(a)(1)(i) through (a)(1)(vi) of this section. The information that may 
be communicated to the public (i.e., status information) includes:
    (i) Whether the application is pending, abandoned, or patented;
    (ii) Whether the application has been published under 35 U.S.C. 
122(b);
    (iii) The application ``numerical identifier'' which may be:
    (A) The eight-digit application number (the two-digit series code 
plus the six-digit serial number); or
    (B) The six-digit serial number plus any one of the filing date of 
the national application, the international filing date, or date of 
entry into the national stage; and
    (iv) Whether another application claims the benefit of the 
application (i.e., whether there are any applications that claim the 
benefit of the filing date under 35 U.S.C. 119(e), 120, 121 or 365 of 
the application), and if there are any such applications, the numerical 
identifier of the application, the specified relationship between the 
applications (e.g., continuation), whether the application is pending, 
abandoned or patented, and whether the application has been published 
under 35 U.S.C. 122(b).

[[Page 25]]

    (b) Electronic access to an application. Where a copy of the 
application file or access to the application may be made available 
pursuant to this section, the Office may at its discretion provide 
access to only an electronic copy of the specification, drawings, and 
file contents of the application.
    (c) Power to inspect a pending or abandoned application. Access to 
an application may be provided to any person if the application file is 
available, and the application contains written authority (e.g., a power 
to inspect) granting access to such person. The written authority must 
be signed by:
    (1) An applicant;
    (2) An attorney or agent of record;
    (3) An authorized official of an assignee of record (made of record 
pursuant to Sec. 3.71 of this chapter); or
    (4) A registered attorney or agent named in the papers accompanying 
the application papers filed under Sec. 1.53 or the national stage 
documents filed under Sec. 1.495, if an executed oath or declaration 
pursuant to Sec. 1.63 or Sec. 1.497 has not been filed.
    (d) Applications reported to Department of Energy. Applications for 
patents which appear to disclose, purport to disclose or do disclose 
inventions or discoveries relating to atomic energy are reported to the 
Department of Energy, which Department will be given access to the 
applications. Such reporting does not constitute a determination that 
the subject matter of each application so reported is in fact useful or 
is an invention or discovery, or that such application in fact discloses 
subject matter in categories specified by 42 U.S.C. 2181(c) and (d).
    (e) Decisions by the Director. Any decision by the Director that 
would not otherwise be open to public inspection may be published or 
made available for public inspection if:
    (1) The Director believes the decision involves an interpretation of 
patent laws or regulations that would be of precedential value; and
    (2) The applicant is given notice and an opportunity to object in 
writing within two months on the ground that the decision discloses a 
trade secret or other confidential information. Any objection must 
identify the deletions in the text of the decision considered necessary 
to protect the information, or explain why the entire decision must be 
withheld from the public to protect such information. An applicant or 
party will be given time, not less than twenty days, to request 
reconsideration and seek court review before any portions of a decision 
are made public under this paragraph over his or her objection.
    (f) Publication pursuant to Sec. 1.47. Information as to the filing 
of an application will be published in the Official Gazette in 
accordance with Sec. 1.47(c).
    (g) International applications. (1) Copies of international 
application files for international applications which designate the 
U.S. and which have been published in accordance with PCT Article 21(2), 
or copies of a document in such application files, will be furnished in 
accordance with PCT Articles 30 and 38 and PCT Rules 94.2 and 94.3, upon 
written request including a showing that the publication of the 
application has occurred and that the U.S. was designated, and upon 
payment of the appropriate fee (see Sec. 1.19(b)), if:
    (i) With respect to the Home Copy (the copy of the international 
application kept by the Office in its capacity as the Receiving Office, 
see PCT Article 12(1)), the international application was filed with the 
U.S. Receiving Office;
    (ii) With respect to the Search Copy (the copy of an international 
application kept by the Office in its capacity as the International 
Searching Authority, see PCT Article 12(1)), the U.S. acted as the 
International Searching Authority, except for the written opinion of the 
International Searching Authority which shall not be available until the 
expiration of thirty months from the priority date; or
    (iii) With respect to the Examination Copy (the copy of an 
international application kept by the Office in its capacity as the 
International Preliminary Examining Authority), the United States acted 
as the International Preliminary Examining Authority, an International 
Preliminary Examination Report has issued, and the United States was 
elected.
    (2) A copy of an English language translation of a publication of an 
international application which has been

[[Page 26]]

filed in the United States Patent and Trademark Office pursuant to 35 
U.S.C. 154(d)(4) will be furnished upon written request including a 
showing that the publication of the application in accordance with PCT 
Article 21(2) has occurred and that the U.S. was designated, and upon 
payment of the appropriate fee (Sec. 1.19(b)(4)).
    (3) Access to international application files for international 
applications which designate the U.S. and which have been published in 
accordance with PCT Article 21(2), or copies of a document in such 
application files, will be permitted in accordance with PCT Articles 30 
and 38 and PCT Rules 44ter.1, 94.2 and 94.3, upon written request 
including a showing that the publication of the application has occurred 
and that the U.S. was designated.
    (4) In accordance with PCT Article 30, copies of an international 
application-as-filed under paragraph (a) of this section will not be 
provided prior to the international publication of the application 
pursuant to PCT Article 21(2).
    (5) Access to international application files under paragraphs 
(a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will not be 
permitted with respect to the Examination Copy in accordance with PCT 
Article 38.
    (h) Access by a Foreign Intellectual Property Office. (1) Access to 
the application-as-filed may be provided to any foreign intellectual 
property office participating with the Office in a bilateral or 
multilateral priority document exchange agreement (participating foreign 
intellectual property office), if the application contains written 
authority granting such access. Written authority under this paragraph 
should be submitted prior to filing a subsequent foreign application 
with a participating intellectual property office in which priority is 
claimed to the patent application.
    (2) Written authority provided under paragraph (h)(1) of this 
section must include the title of the invention (Sec. 1.71(a)), comply 
with the requirements of paragraph (c) of this section, and be submitted 
on a separate document (Sec. 1.4(c)).
    (3) Written authority provided under paragraph (h)(1) of this 
section will be treated as authorizing the Office to provide to all 
participating foreign intellectual property offices indicated in the 
written authority in accordance with their respective agreements with 
the Office:
    (i) A copy of the application-as-filed; and
    (ii) A copy of the application-as-filed with respect to any 
application the filing date of which is claimed by the application in 
which written authority under paragraph (h)(1) of this section is filed.
    (i) Access or copies in other circumstances. The Office, either sua 
sponte or on petition, may also provide access or copies of all or part 
of an application if necessary to carry out an Act of Congress or if 
warranted by other special circumstances. Any petition by a member of 
the public seeking access to, or copies of, all or part of any pending 
or abandoned application preserved in confidence pursuant to paragraph 
(a) of this section, or any related papers, must include:
    (1) The fee set forth in Sec. 1.17(g); and
    (2) A showing that access to the application is necessary to carry 
out an Act of Congress or that special circumstances exist which warrant 
petitioner being granted access to all or part of the application.

[68 FR 38624, June 30, 2003, as amended at 68 FR 59886, Oct. 20, 2003; 
68 FR 67805, Dec. 4, 2003; 68 FR 71006, Dec. 22, 2003; 69 FR 49997, Aug. 
12, 2004; 69 FR 56536, Sept. 21, 2004; 72 FR 1667, Jan. 16, 2007]



Sec. 1.15  [Reserved]

                        Fees and Payment of Money

    Authority: Secs. 1.16 to 1.22 also issued under 35 U.S.C. 41, 111, 
119, 120, 132(b), 156, 157, 255, 302, and 311, and Public Laws 103-465, 
and 106-113.



Sec. 1.16  National application filing, search, and examination fees.

    (a) Basic fee for filing each application under 35 U.S.C. 111 for an 
original patent, except design, plant, or provisional applications:
    (1) For an application filed on or after December 8, 2004:

[[Page 27]]



By a small entity (Sec. 1.27(a)) if the application is          $82.00
 submitted in compliance with the Office electronic filing
 system (Sec. 1.27(b)(2))..................................
By a small entity (Sec. 1.27(a))...........................    $165.00
By other than a small entity.................................    $330.00
 

    (2) For an application filed before December 8, 2004:

By a small entity (Sec. 1.27(a))...........................    $425.00
By other than a small entity.................................    $850.00
 

    (b) Basic fee for filing each application for an original design 
patent:
    (1) For an application filed on or after December 8, 2004:

By a small entity (Sec. 1.27(a))...........................    $110.00
By other than a small entity.................................    $220.00
 

    (2) For an application filed before December 8, 2004:

By a small entity (Sec. 1.27(a))...........................    $190.00
By other than a small entity.................................    $380.00
 

    (c) Basic fee for filing each application for an original plant 
patent:
    (1) For an application filed on or after December 8, 2004:

By a small entity (Sec. 1.27(a))...........................    $110.00
By other than a small entity.................................    $220.00
 

    (2) For an application filed before December 8, 2004:

By a small entity (Sec. 1.27(a))...........................    $300.00
By other than a small entity.................................    $600.00
 

    (d) Basic fee for filing each provisional application:

By a small entity (Sec. 1.27(a))...........................    $110.00
By other than a small entity.................................    $220.00
 

    (e) Basic fee for filing each application for the reissue of a 
patent:
    (1) For an application filed on or after December 8, 2004:

By a small entity (Sec. 1.27(a))...........................    $165.00
By other than a small entity.................................    $330.00
 

    (2) For an application filed before December 8, 2004:

By a small entity (Sec. 1.27(a))...........................    $425.00
By other than a small entity.................................    $850.00
 

    (f) Surcharge for filing any of the basic filing fee, the search 
fee, the examination fee, or the oath or declaration on a date later 
than the filing date of the application, except provisional 
applications:
    By a small entity (Sec. 1.27(a))--$65.00
    By other than a small entity--$130.00
    (g) 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. 1.27(a))--$25.00.
    By other than a small entity--$50.00.
    (h) In addition to the basic filing fee in an application, other 
than a provisional application, for filing or later presentation at any 
other time of each claim in independent form in excess of 3:

By a small entity (Sec. 1.27(a))...........................    $110.00
By other than a small entity.................................    $220.00
 

    (i) In addition to the basic filing fee in an application, other 
than a provisional application, for filing or later presentation at any 
other time of each claim (whether dependent or independent) 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. 1.27(a))...........................     $26.00
By other than a small entity.................................     $52.00
 

    (j) In addition to the basic filing fee in an application, other 
than a provisional application, that contains, or is amended to contain, 
a multiple dependent claim, per application:

By a small entity (Sec. 1.27(a))...........................    $195.00
By other than a small entity.................................    $390.00
 

    (k) Search fee for each application filed under 35 U.S.C. 111 on or 
after December 8, 2004, for an original patent, except design, plant, or 
provisional applications:

By a small entity (Sec. 1.27(a))...........................    $270.00
By other than a small entity.................................    $540.00
 

    (l) Search fee for each application filed on or after December 8, 
2004, for an original design patent:

By a small entity (Sec. 1.27(a))...........................     $50.00
By other than a small entity.................................    $100.00
 

    (m) Search fee for each application filed on or after December 8, 
2004, for an original plant patent:

By a small entity (Sec. 1.27(a))...........................    $165.00
By other than a small entity.................................    $330.00
 

    (n) Search fee for each application filed on or after December 8, 
2004, for the reissue of a patent:

By a small entity (Sec. 1.27(a))...........................    $270.00
By other than a small entity.................................    $540.00
 


[[Page 28]]

    (o) Examination fee for each application filed under 35 U.S.C. 111 
on or after December 8, 2004, for an original patent, except design, 
plant, or provisional applications:

By a small entity (Sec. 1.27(a))...........................    $110.00
By other than a small entity.................................    $220.00
 

    (p) Examination fee for each application filed on or after December 
8, 2004, for an original design patent:

By a small entity (Sec. 1.27(a))...........................     $70.00
By other than a small entity.................................    $140.00
 

    (q) Examination fee for each application filed on or after December 
8, 2004, for an original plant patent:

By a small entity (Sec. 1.27(a))...........................     $85.00
By other than a small entity.................................    $170.00
 

    (r) Examination fee for each application filed on or after December 
8, 2004, for the reissue of a patent:

By a small entity (Sec. 1.27(a))...........................    $325.00
By other than a small entity.................................    $650.00
 

    (s) Application size fee for any application under 35 U.S.C. 111 
filed on or after December 8, 2004, the specification and drawings of 
which exceed 100 sheets of paper, for each additional 50 sheets or 
fraction thereof:

By a small entity (Sec. 1.27(a))...........................    $135.00
By other than a small entity.................................    $270.00
 

    Note to Sec. 1.16: See Sec. Sec. 1.445, 1.482 and 1.492 for 
international application filing and processing fees.

[70 FR 3887, Jan. 27, 2005, as amended at 70 FR 30365, May 26, 2005; 72 
FR 46901, Aug. 22, 2007; 73 FR 47540, Aug. 14, 2008]



Sec. 1.17  Patent application and reexamination processing fees.

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

By a small entity (Sec. 1.27(a)).........................       $65.00
By other than a small entity...............................      $130.00
 

    (2) For reply within second month:

By a small entity (Sec. 1.27(a)).........................      $245.00
By other than a small entity...............................      $490.00
 

    (3) For reply within third month:

By a small entity (Sec. 1.27(a)).........................      $555.00
By other than a small entity...............................    $1,110.00
 

    (4) For reply within fourth month:

By a small entity (Sec. 1.27(a)).........................      $865.00
By other than a small entity...............................    $1,730.00
 

    (5) For reply within fifth month:

By a small entity (Sec. 1.27(a)).........................    $1,175.00
By other than a small entity...............................    $2,350.00
 

    (b) For fees in proceedings before the Board of Patent Appeals and 
Interferences, see Sec. 41.20 of this title.
    (c)-(d) [Reserved]
    (e) To request continued examination pursuant to Sec. 1.114:

By a small entity (Sec. 1.27(a)).........................      $405.00
By other than a small entity...............................      $810.00
 

    (f) For filing a petition under one of the following sections which 
refers to this paragraph: $400.00
    Sec. 1.36(a)--for revocation of a power of attorney by fewer than 
all of the applicants.
    Sec. 1.53(e)--to accord a filing date.
    Sec. 1.57(a)--to accord a filing date.
    Sec. 1.78(d)(1)(vi)--for a continuing application not provided for 
in Sec. Sec. 1.78(d)(1)(i) through (d)(1)(v).
    Sec. 1.114(g)--for a request for continued examination not provided 
for in Sec. 1.114(f).
    Sec. 1.182--for decision on a question not specifically provided 
for.
    Sec. 1.183--to suspend the rules.
    Sec. 1.378(e)--for reconsideration of decision on petition refusing 
to accept delayed payment of maintenance fee in an expired patent.
    Sec. 1.741(b)--to accord a filing date to an application under 
Sec. 1.740 for extension of a patent term.
    (g) For filing a petition under one of the following sections which 
refers to this paragraph: $200.00
    Sec. 1.12--for access to an assignment record.
    Sec. 1.14--for access to an application.
    Sec. 1.47--for filing by other than all the inventors or a person 
not the inventor.
    Sec. 1.59--for expungement of information.
    Sec. 1.103(a)--to suspend action in an application.
    Sec. 1.136(b)--for review of a request for extension of time when 
the provisions of Sec. 1.136(a) are not available.
    Sec. 1.295--for review of refusal to publish a statutory invention 
registration.

[[Page 29]]

    Sec. 1.296--to withdraw a request for publication of a statutory 
invention registration filed on or after the date the notice of intent 
to publish issued.
    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. 1.550(c)--for patent owner requests for extension of time in 
ex parte reexamination proceedings.
    Sec. 1.956--for patent owner requests for extension of time in 
inter partes reexamination proceedings.
    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.
    (h) For filing a petition under one of the following sections which 
refers to this paragraph: $130.00.
    Sec. 1.19(g)--to request documents in a form other than that 
provided in this part.
    Sec. 1.84--for accepting color drawings or photographs.
    Sec. 1.91--for entry of a model or exhibit.
    Sec. 1.102(d)--to make an application special.
    Sec. 1.138(c)--to expressly abandon an application to avoid 
publication.
    Sec. 1.313--to withdraw an application from issue.
    Sec. 1.314--to defer issuance of a patent.
    (i) Processing fee for taking action under one of the following 
sections which refers to this

paragraph...............................$130.00.
    Sec. 1.28(c)(3)--for processing a non-itemized fee deficiency based 
on an error in small entity status.
    Sec. 1.41--for supplying 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. 1.48--for correcting inventorship, except in provisional 
applications.
    Sec. 1.52(d)--for processing a nonprovisional application filed 
with a specification in a language other than English.
    Sec. 1.53(b)(3)--to convert a provisional application filed under 
Sec. 1.53(c) into a nonprovisional application under Sec. 1.53(b).
    Sec. 1.55--for entry of late priority papers.
    Sec. 1.71(g)(2)--for processing a belated amendment under Sec. 
1.71(g).
    Sec. 1.99(e)--for processing a belated submission under Sec. 1.99.
    Sec. 1.103(b)--for requesting limited suspension of action, 
continued prosecution application for a design patent (Sec. 1.53(d)).
    Sec. 1.103(c)--for requesting limited suspension of action, request 
for continued examination (Sec. 1.114).
    Sec. 1.103(d)--for requesting deferred examination of an 
application.
    Sec. 1.217--for processing a redacted copy of a paper submitted in 
the file of an application in which a redacted copy was submitted for 
the patent application publication.
    Sec. 1.221--for requesting voluntary publication or republication 
of an application.
    Sec. 1.291(c)(5)--for processing a second or subsequent protest by 
the same real party in interest.
    Sec. 1.497(d)--for filing an oath or declaration pursuant to 35 
U.S.C. 371(c)(4) naming an inventive entity different from the inventive 
entity set forth in the international stage.
    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 filing a request for expedited examination under Sec. 
1.155(a)--$900.00.
    (l) For filing a petition for the revival of an unavoidably 
abandoned application under 35 U.S.C. 111, 133, 364, or 371, for the 
unavoidably delayed payment of the issue fee under 35 U.S.C. 151, or for 
the revival of an unavoidably terminated reexamination proceeding under 
35 U.S.C. 133 (Sec. 1.137(a)):

By a small entity (Sec. 1.27(a)).........................      $270.00
By other than a small entity...............................      $540.00
 

    (m) For filing a petition for the revival of an unintentionally 
abandoned application, for the unintentionally delayed payment of the 
fee for issuing a patent, or for the revival of an unintentionally 
terminated reexamination proceeding under 35 U.S.C. 41(a)(7) (Sec. 
1.137(b)):

By a small entity (Sec. 1.27(a)).........................      $810.00

[[Page 30]]

 
By other than a small entity...............................    $1,620.00
 

    (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 an information disclosure statement under Sec. 1.97(c) or 
(d) or a submission under Sec. 1.99: $180.00.
    (q) Processing fee for taking action under one of the following 
sections 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(c)(2)--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. 1.27(a))...........................    $405.00
By other than a small entity.................................    $810.00
 

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

By a small entity (Sec. 1.27(a))...........................    $405.00
By other than a small entity.................................    $810.00
 

    (t) For the acceptance of an unintentionally delayed claim for 
priority under 35 U.S.C. 119, 120, 121, or 365(a) or (c) (Sec. Sec. 
1.55 and 1.78) or for filing a request for the restoration of the right 
of priority under Sec. 1.452--1,410.00.

[56 FR 65152, Dec. 13, 1991]

    Editorial Note: For Federal Register citations affecting Sec. 1.17, 
see the List of CFR Sections Affected, which appears in the Finding Aids 
section of the printed volume and on GPO Access.



Sec. 1.18  Patent post allowance (including issue) fees.

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

By a small entity (Sec. 1.27(a)).........................      $755.00
By other than a small entity...............................    $1,510.00
 

    (b) Issue fee for issuing an original design patent:

By a small entity (Sec. 1.27(a)).........................      $430.00
By other than a small entity...............................      $860.00
 

    (c) Issue fee for issuing an original plant patent:

By a small entity (Sec. 1.27(a)).........................      $595.00
By other than a small entity...............................    $1,190.00
 

    (d)

Publication fee............................................     $300.00.
 

    (e) For filing an application for patent term adjustment under Sec. 
1.705: $200.00.
    (f) For filing a request for reinstatement of all or part of the 
term reduced pursuant to Sec. 1.704(b) in an application for patent 
term adjustment under Sec. 1.705: $400.00.

[65 FR 49195, Aug. 11, 2000, as amended at 65 FR 56391, Sept. 18, 2000; 
65 FR 57053, Sept. 20, 2000; 65 FR 78960, Dec. 18, 2000; 68 FR 41534, 
July 14, 2003; 69 FR 52606, Aug. 27, 2004; 70 FR 3888, Jan. 27, 2005; 72 
FR 46902, Aug. 22, 2007; 73 FR 47541, Aug. 14, 2008]



Sec. 1.19  Document supply fees.

    The United States Patent and Trademark Office will supply copies of 
the following patent-related documents upon payment of the fees 
indicated. Paper copies will be in black and white unless the original 
document is in color, a color copy is requested and the fee for a color 
copy is paid.
    (a) Uncertified copies of patent application publications and 
patents:

[[Page 31]]



(1) Printed copy of the paper portion of a patent application
 publication or patent, including a design patent, statutory
 invention registration, or defensive publication document.
 Service includes preparation of copies by the Office within
 two to three business days and delivery by United States
 Postal Service; and preparation of copies by the Office
 within one business day of receipt and delivery to an Office
 Box or by electronic means (e.g., facsimile, electronic
 mail)--$3.00................................................
(2) Printed copy of a plant patent in color:.................    $15.00.
(3) Color copy of a patent (other than a plant patent) or        $25.00.
 statutory invention registration containing a color drawing.
 

    (b) Copies of Office documents to be provided in paper, or in 
electronic form, as determined by the Director (for other patent-related 
materials see Sec. 1.21(k)):
    (1) Copy of a patent application as filed, or a patent-related file 
wrapper and contents, stored in paper in a paper file wrapper, in an 
image format in an image file wrapper, or if color documents, stored in 
paper in an Artifact Folder:
    (i) If provided on paper:
    (A) Application as filed: $20.00.
    (B) File wrapper and contents of 400 or fewer pages: $200.00.
    (C) Additional fee for each additional 100 pages or portion thereof 
of file wrapper and contents: $40.00.
    (D) Individual application documents, other than application as 
filed, per document: $25.00.
    (ii) If provided on compact disc or other physical electronic medium 
in a single order:
    (A) Application as filed: $20.00.
    (B) File wrapper and contents, first physical electronic medium: 
$55.00.
    (C) Additional fee for each continuing physical electronic medium in 
the single order of paragraph (b)(1)(ii)(B) of this section: $15.00.
    (iii) If provided electronically (e.g., by electronic transmission) 
other than on a physical electronic medium as specified in paragraph 
(b)(1)(ii) of this section:
    (A) Application as filed: $20.00.
    (B) File wrapper and contents: $55.00.
    (iv) If provided to a foreign intellectual property office pursuant 
to a priority document exchange agreement (see Sec. 1.14(h)(1)) ...... 
0.00.
    (2) Copy of patent-related file wrapper contents that were submitted 
and are stored on compact disc or other electronic form (e.g., compact 
discs stored in an Artifact Folder), other than as available in 
paragraph (b)(1) of this section:
    (i) If provided on compact disc or other physical electronic medium 
in a single order:
    (A) First physical electronic medium in a single order: $55.00.
    (B) Additional fee for each continuing physical electronic medium in 
the single order of paragraph (b)(2)(i) of this section: $15.00.
    (ii) If provided electronically other than on a physical electronic 
medium per order: $55.00.
    (3) Copy of Office records, except copies available under paragraph 
(b)(1) or (2) of 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) Petitions for documents in a form other than that provided by 
this part, or in a form other than that generally provided by the 
Director, will be decided in accordance with the merits of each 
situation. Any petition seeking a decision under this section must be 
accompanied by the petition fee set forth

[[Page 32]]

in Sec. 1.17(h) and, if the petition is granted, the documents will be 
provided at cost.
    (h) [Reserved]

[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; 64 FR 67486, Dec. 2, 1999; 65 FR 54658, Sept. 8, 2000; 65 
FR 57053, Sept. 20, 2000; 67 FR 70849, Nov. 27, 2002; 69 FR 56537, Sept. 
21, 2004; 72 FR 1668, Jan. 16, 2007]



Sec. 1.20  Post issuance fees.

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

(Sec. 1.323)--$100.00

    (b) Processing fee for correcting inventorship in a patent (Sec. 
1.324)--$130.00.
    (c) In reexamination proceedings
    (1) For filing a request for ex parte reexamination (Sec. 
1.510(a))--$2,520.00.
    (2) For filing a request for inter partes reexamination (Sec. 
1.915(a))--$8,800.00.
    (3) For filing with a request for reexamination or later 
presentation at any other time of each claim in independent form in 
excess of 3 and also in excess of the number of claims in independent 
form in the patent under reexamination:

By a small entity (Sec. 1.27(a))...........................    $110.00
By other than a small entity.................................    $220.00
 

    (4) For filing with a request for reexamination or later 
presentation at any other time of each claim (whether dependent or 
independent) in excess of 20 and also in excess of the number of claims 
in the patent under reexamination (note that Sec. 1.75(c) indicates how 
multiple dependent claims are considered for fee calculation purposes):

By a small entity (Sec. 1.27(a))...........................     $26.00
By other than a small entity.................................     $52.00
 

    (5) If the excess claims fees required by paragraphs (c)(3) and 
(c)(4) are not paid with the request for reexamination or on later 
presentation of the claims for which the excess claims fees are due, the 
fees required by paragraphs (c)(3) and (c)(4) must be paid or the claims 
canceled by amendment prior to the expiration of the time period set for 
reply by the Office in any notice of fee deficiency in order to avoid 
abandonment.
    (d) For filing each statutory disclaimer (Sec. 1.321):

By a small entity (Sec. 1.27(a)).........................       $70.00
By other than a small entity...............................      $140.00
 

    (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 being due by three years and 
six months after the original grant:

By a small entity (Sec. 1.27(a)).........................      $490.00
By other than a small entity...............................      $980.00
 

    (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 being due by seven years and 
six months after the original grant:

By a small entity (Sec. 1.27(a)).........................    $1,240.00
By other than a small entity...............................    $2,480.00
 

    (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 being due by eleven years 
and six months after the original grant:

By a small entity (Sec. 1.27(a)).........................    $2,055.00
By other than a small entity...............................    $4,110.00
 

    (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. 1.27(a)).........................       $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 Director to have been--
    (1) Unavoidable--$700.00
    (2) Unintentional--$1,640.00

[[Page 33]]

    (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; 64 FR 67777, Dec. 3, 1999; 65 FR 76772, Dec. 
7, 2000; 65 FR 78960, Dec. 18, 2000; 65 FR 80755, Dec. 22, 2000; 68 FR 
41534, July 14, 2003; 69 FR 52606, Aug. 27, 2004; 70 FR 3888, Jan. 27, 
2005; 72 FR 46902, Aug. 22, 2007; 73 FR 47541, Aug. 14, 2008]



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
    (A) For test administration by commercial entity--$200.00
    (B) For test administration by the USPTO--$450.00
    (2) On registration to practice or grant of limited recognition 
under Sec. 11.9(b) or (c)--$100.00
    (3) [Reserved]
    (4) For certificate of good standing as an attorney or agent--$10.00
    (i) Suitable for framing--$20.00
    (ii) [Reserved]
    (5) For review of decision:
    (i) By the Director of Enrollment and Discipline under Sec. 
11.2(c)--$130.00
    (ii) Of the Director of Enrollment and Discipline under Sec. 
11.2(d)--$130.00
    (6) [Reserved]
    (7) Annual practitioner maintenance fee for registered attorney or 
agent.
    (i) Active Status--$118.00.
    (ii) Voluntary Inactive Status--$25.00.
    (iii) Fee for requesting restoration to active status from voluntary 
inactive status--$50.00.
    (iv) Balance due upon restoration to active status from voluntary 
inactive status--$93.00.
    (8) Annual practitioner maintenance fee for individual granted 
limited recognition--$118.00.
    (9)(i) Delinquency fee--$50.00.
    (ii) Administrative reinstatement fee--$100.00.
    (10) On application by a person for recognition or registration 
after disbarment or suspension on ethical grounds, or resignation 
pending disciplinary proceedings in any other jurisdiction; on 
application by a person for recognition or registration who is asserting 
rehabilitation from prior conduct that resulted in an adverse decision 
in the Office regarding the person's moral character; and on application 
by a person for recognition or registration after being convicted of a 
felony or crime involving moral turpitude or breach of fiduciary duty; 
on petition for reinstatement by a person excluded or suspended on 
ethical grounds, or excluded on consent from practice before the 
Office.--$1,600.00
    (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) [Reserved]
    (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 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

[[Page 34]]

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 Director finds may be supplied, 
for which fees are not specified by statute or by this part, such 
charges as may be determined by the Director with respect to each such 
item or service--Actual Cost
    (l) [Reserved]
    (m) For processing each payment refused (including a check returned 
``unpaid'') or charged back by a financial institution--$50.00.
    (n) For handling an application in which proceedings are terminated 
pursuant to Sec. 1.53(e)--$130.00

[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; 65 FR 33455, May 24, 2000; 65 
FR 49195, Aug. 11, 2000; 66 FR 39450, July 31, 2001; 69 FR 35451, June 
24, 2004; 70 FR 30365, May 26, 2005; 71 FR 64639, Nov. 3, 2006; 73 FR 
67756, Nov. 17, 2008]



Sec. 1.22  Fees payable in advance.

    (a) Patent fees and charges payable to the United States 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 fees paid to the United States Patent and Trademark Office 
must 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. The Office may return fees that are not itemized as required 
by this paragraph. The provisions of Sec. 1.5(a) do not apply to the 
resubmission of fees returned pursuant to this paragraph.

[68 FR 48288, Aug. 13, 2003]



Sec. 1.23  Methods of payment.

    (a) All payments of money required for United States Patent and 
Trademark Office fees, including fees for the processing of 
international applications (Sec. 1.445), shall be made in U.S. dollars 
and in the form of a cashier's or certified check, Treasury note, 
national bank notes, or United States Postal Service money order. If 
sent in any other form, the Office may delay or cancel the credit until 
collection is made. Checks and money orders must be made payable to the 
Director of the United States Patent and Trademark Office. (Checks made 
payable to the Commissioner of Patents and Trademarks will continue to 
be accepted.) Payments from foreign countries must be payable and 
immediately negotiable in the United States for the full amount of the 
fee required. Money sent to the Office by mail will be at the risk of 
the sender, and letters containing money should be registered with the 
United States Postal Service.
    (b) Payments of money required for United States Patent and 
Trademark Office fees may also be made by credit card, except for 
replenishing a deposit account. Payment of a fee by credit card must 
specify the amount to be charged to the credit card and such other 
information as is necessary to process the charge, and is subject to 
collection of the fee. The Office will not accept a general 
authorization to charge fees to a credit card. If credit card 
information is provided on a form or document other than a form provided 
by the Office for the payment of fees by credit card, the Office will 
not be liable if the credit card number becomes public knowledge.

[65 FR 33455, May 24, 2000, as amended at 69 FR 43752, July 22, 2004]



Sec. 1.24  [Reserved]



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

[[Page 35]]

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 Sec. Sec. 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 a particular 
paper filed. An authorization to charge fees under Sec. 1.16 in an 
international application entering the national stage under 35 U.S.C. 
371 will be treated as an authorization to charge fees under Sec. 
1.492. An authorization to charge fees set forth in Sec. 1.18 to a 
deposit account is subject to the provisions of Sec. 1.311(b). An 
authorization to charge to a deposit account the fee for a request for 
reexamination pursuant to Sec. 1.510 or Sec. 1.913 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.
    (c) A deposit account holder may replenish the deposit account by 
submitting a payment to the United States Patent and Trademark Office. A 
payment to replenish a deposit account must be submitted by one of the 
methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of 
this section.
    (1) A payment to replenish a deposit account may be submitted by 
electronic funds transfer through the Federal Reserve Fedwire System, 
which requires that the following information be provided to the deposit 
account holder's bank or financial institution:
    (i) Name of the Bank, which is Treas NYC (Treasury New York City);
    (ii) Bank Routing Code, which is 021030004;
    (iii) United States Patent and Trademark Office account number with 
the Department of the Treasury, which is 13100001; and
    (iv) The deposit account holder's company name and deposit account 
number.
    (2) A payment to replenish a deposit account may be submitted by 
electronic funds transfer over the Office's Internet Web site 
(www.uspto.gov).
    (3) A payment to replenish a deposit account may be addressed to: 
Director of the United States Patent and Trademark Office, Attn: Deposit 
Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.

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

[49 FR 553, Jan. 4, 1984, as amended at 50 FR 31826, Aug. 6, 1985; 65 FR 
76772, Dec. 7, 2000; 67 FR 523, Jan. 4, 2002; 68 FR 14336, Mar. 25, 
2003; 69 FR 43752, July 22, 2004; 70 FR 56127, Sept. 26, 2005; 73 FR 
47541, Aug. 14, 2008]



Sec. 1.26  Refunds.

    (a) The Director may refund any fee paid by mistake or in excess of 
that required. Except as provided in Sec. 1.117 or Sec. 1.138(d), a 
change of purpose after the payment of a fee, such as when a party 
desires to withdraw a patent filing for which the fee was paid, 
including an application, an appeal, or a request for an oral hearing, 
will not entitle a party to a refund of such fee. The Office will not 
refund amounts of twenty-five dollars or less unless a refund is 
specifically requested, and will not notify the

[[Page 36]]

payor of such amounts. If a party paying a fee or requesting a refund 
does not provide the banking information necessary for making refunds by 
electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or 
instruct the Office that refunds are to be credited to a deposit 
account, the Director may require such information, or use the banking 
information on the payment instrument to make a refund. Any refund of a 
fee paid by credit card will be by a credit to the credit card account 
to which the fee was charged.
    (b) Any request for refund must be filed within two years from the 
date the fee was paid, except as otherwise provided in this paragraph, 
or in Sec. 1.28(a), Sec. 1.117(b), or Sec. 1.138(d). If the Office 
charges a deposit account by an amount other than an amount specifically 
indicated in an authorization (Sec. 1.25(b)), any request for refund 
based upon such charge must be filed within two years from the date of 
the deposit account statement indicating such charge, and include a copy 
of that deposit account statement. The time periods set forth in this 
paragraph are not extendable.
    (c) If the Director decides not to institute a reexamination 
proceeding, for ex parte reexaminations filed under Sec. 1.510, a 
refund of $1,690 will be made to the reexamination requester. For inter 
partes reexaminations filed under Sec. 1.913, a refund of $7,970 will 
be made to the reexamination requester. The reexamination requester 
should indicate the form in which any refund should be made (e.g., by 
check, electronic funds transfer, credit to a deposit account, etc.). 
Generally, reexamination refunds will be issued in the form that the 
original payment was provided.

(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; 65 FR 54659, Sept. 8, 2000; 65 FR 
76773, Dec. 7, 2000; 68 FR 48289, Aug. 13, 2003; 72 FR 46836, Aug. 21, 
2007]



Sec. 1.27  Definition of small entities and establishing status as a small
entity to permit payment of small entity fees; when a determination of entitlement 

          to small entity status and notification of loss of entitlement 
          to small entity status are required; fraud on the Office.

    (a) Definition of small entities. A small entity as used in this 
chapter means any party (person, small business concern, or nonprofit 
organization) under paragraphs (a)(1) through (a)(3) of this section.
    (1) Person. A person, as used in paragraph (c) of this section, 
means any inventor or other individual (e.g., an individual to whom an 
inventor has transferred some rights in the invention) who has not 
assigned, granted, conveyed, or licensed, and is under no obligation 
under contract or law to assign, grant, convey, or license, any rights 
in the invention. An inventor or other individual who has transferred 
some rights in the invention to one or more parties, or is under an 
obligation to transfer some rights in the invention to one or more 
parties, can also qualify for small entity status if all the parties who 
have had rights in the invention transferred to them also qualify for 
small entity status either as a person, small business concern, or 
nonprofit organization under this section.
    (2) Small business concern. A small business concern, as used in 
paragraph (c) of this section, means any business concern that:
    (i) Has not assigned, granted, conveyed, or licensed, and is under 
no obligation under contract or law to assign, grant, convey, or 
license, any rights in the invention to any person, concern, or 
organization which would not qualify for small entity status as a 
person, small business concern, or nonprofit organization; and
    (ii) Meets the size standards set forth in 13 CFR 121.801 through 
121.805 to be eligible for reduced patent fees. Questions related to 
standards for a small business concern may be directed to: Small 
Business Administration, Size Standards Staff, 409 Third Street, SW., 
Washington, DC 20416.
    (3) Nonprofit Organization. A nonprofit organization, as used in 
paragraph (c) of this section, means any nonprofit organization that:

[[Page 37]]

    (i) Has not assigned, granted, conveyed, or licensed, and is under 
no obligation under contract or law to assign, grant, convey, or 
license, any rights in the invention to any person, concern, or 
organization which would not qualify as a person, small business 
concern, or a nonprofit organization; and
    (ii) Is either:
    (A) A university or other institution of higher education located in 
any country;
    (B) An organization of the type described in section 501(c)(3) of 
the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from 
taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 
501(a));
    (C) 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
    (D) Any nonprofit organization located in a foreign country which 
would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) 
of this section or (a)(3)(ii)(C) of this section if it were located in 
this country.
    (4) License to a Federal agency. (i) For persons under paragraph 
(a)(1) of this section, a license to the Government resulting from a 
rights determination under Executive Order 10096 does not constitute a 
license so as to prohibit claiming small entity status.
    (ii) For small business concerns and nonprofit organizations under 
paragraphs (a)(2) and (a)(3) of this section, 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 for the purposes of 
paragraphs (a)(2)(i) and (a)(3)(i) of this section.
    (5) Security Interest. A security interest does not involve an 
obligation to transfer rights in the invention for the purposes of 
paragraphs (a)(1) through (a)(3) of this section unless the security 
interest is defaulted upon.
    (b) Establishment of small entity status permits payment of reduced 
fees. (1) A small entity, as defined in paragraph (a) of this section, 
who has properly asserted entitlement to small entity status pursuant to 
paragraph (c) of this section will be accorded small entity status by 
the Office in the particular application or patent in which entitlement 
to small entity status was asserted. Establishment of small entity 
status allows the payment of certain reduced patent fees pursuant to 35 
U.S.C. 41(h)(1).
    (2) Submission of an original utility application in compliance with 
the Office electronic filing system by an applicant who has properly 
asserted entitlement to small entity status pursuant to paragraph (c) of 
this section in that application allows the payment of a reduced filing 
fee pursuant to 35 U.S.C. 41(h)(3).
    (c) Assertion of small entity status. Any party (person, small 
business concern or nonprofit organization) should make a determination, 
pursuant to paragraph (f) of this section, of entitlement to be accorded 
small entity status based on the definitions set forth in paragraph (a) 
of this section, and must, in order to establish small entity status for 
the purpose of paying small entity fees, actually make an assertion of 
entitlement to small entity status, in the manner set forth in 
paragraphs (c)(1) or (c)(3) of this section, in the application or 
patent in which such small entity fees are to be paid.
    (1) Assertion by writing. Small entity status may be established by 
a written assertion of entitlement to small entity status. A written 
assertion must:
    (i) Be clearly identifiable;
    (ii) Be signed (see paragraph (c)(2) of this section); and
    (iii) Convey the concept of entitlement to small entity status, such 
as by stating that applicant is a small entity, or that small entity 
status is entitled to be asserted for the application or patent. While 
no specific words or wording are required to assert small entity status, 
the intent to assert small entity status must be clearly indicated in 
order to comply with the assertion requirement.
    (2) Parties who can sign and file the written assertion. The written 
assertion can be signed by:
    (i) One of the parties identified in Sec. 1.33(b) (e.g., an 
attorney or agent registered with the Office), Sec. 3.73(b) of this 
chapter notwithstanding, who can also file the written assertion;
    (ii) At least one of the individuals identified as an inventor (even 
though

[[Page 38]]

a Sec. 1.63 executed oath or declaration has not been submitted), 
notwithstanding Sec. 1.33(b)(4), who can also file the written 
assertion pursuant to the exception under Sec. 1.33(b) of this part; or
    (iii) An assignee of an undivided part interest, notwithstanding 
Sec. Sec. 1.33(b)(3) and 3.73(b) of this chapter, but the partial 
assignee cannot file the assertion without resort to a party identified 
under Sec. 1.33(b) of this part.
    (3) Assertion by payment of the small entity basic filing or basic 
national fee. The payment, by any party, of the exact amount of one of 
the small entity basic filing fees set forth in Sec. Sec. 1.16(a), 
1.16(b), 1.16(c), 1.16(d), 1.16(e), or the small entity basic national 
fee set forth in Sec. 1.492(a), will be treated as a written assertion 
of entitlement to small entity status even if the type of basic filing 
or basic national fee is inadvertently selected in error.
    (i) If the Office accords small entity status based on payment of a 
small entity basic filing or basic national fee under paragraph (c)(3) 
of this section that is not applicable to that application, any balance 
of the small entity fee that is applicable to that application will be 
due along with the appropriate surcharge set forth in Sec. 1.16(f), or 
Sec. 1.16(g).
    (ii) The payment of any small entity fee other than those set forth 
in paragraph (c)(3) of this section (whether in the exact fee amount or 
not) will not be treated as a written assertion of entitlement to small 
entity status and will not be sufficient to establish small entity 
status in an application or a patent.
    (4) Assertion required in related, continuing, and reissue 
applications. Status as a small entity must be specifically established 
by an assertion in each related, continuing and reissue application in 
which status is appropriate and desired. Status as a small entity in one 
application or patent does not affect the status of any other 
application or patent, regardless of the relationship of the 
applications or patents. The refiling of an application under Sec. 1.53 
as a continuation, divisional, or continuation-in-part application 
(including a continued prosecution application under Sec. 1.53(d)), or 
the filing of a reissue application, requires a new assertion as to 
continued entitlement to small entity status for the continuing or 
reissue application.
    (d) When small entity fees can be paid. Any fee, other than the 
small entity basic filing fees and the small entity national fees of 
paragraph (c)(3) of this section, can be paid in the small entity amount 
only if it is submitted with, or subsequent to, the submission of a 
written assertion of entitlement to small entity status, except when 
refunds are permitted by Sec. 1.28(a).
    (e) Only one assertion required. (1) An assertion of small entity 
status need only be filed once in an application or patent. Small entity 
status, once established, remains in effect until changed pursuant to 
paragraph (g)(1) of this section. Where an assignment of rights or an 
obligation to assign rights to other parties who are small entities 
occurs subsequent to an assertion of small entity status, a second 
assertion is not required.
    (2) Once small entity status is withdrawn pursuant to paragraph 
(g)(2) of this section, a new written assertion is required to again 
obtain small entity status.
    (f) Assertion requires a determination of entitlement to pay small 
entity fees. Prior to submitting an assertion of entitlement to small 
entity status in an application, including a related, continuing, or 
reissue application, a determination of such entitlement should be made 
pursuant to the requirements of paragraph (a) of this section. It should 
be determined that all parties holding rights in the invention qualify 
for small entity status. The Office will generally not question any 
assertion of small entity status that is made in accordance with the 
requirements of this section, but note paragraph (h) of this section.
    (g)(1) New determination of entitlement to small entity status is 
needed when issue and maintenance fees are due. 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.
    (2) Notification of loss of entitlement to small entity status is 
required when issue

[[Page 39]]

and maintenance fees are due. Notification of a 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 as 
defined in paragraph (a) of this section is no longer appropriate. The 
notification that small entity status is no longer appropriate must be 
signed by a party identified in Sec. 1.33(b). Payment of a fee in other 
than the small entity amount is not sufficient notification that small 
entity status is no longer appropriate.
    (h) Fraud attempted or practiced on the Office. (1) Any attempt to 
fraudulently establish status as a small entity, or 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, establishing status as a 
small entity, or paying fees as a small entity, shall be considered as a 
fraud practiced or attempted on the Office.

[65 FR 54659, Sept. 8, 2000, as amended at 69 FR 56538, Sept. 21, 2004; 
70 FR 3889, Jan. 27, 2005]



Sec. 1.28  Refunds when small entity status is later established; how 
errors in small entity status are excused.

    (a) Refunds based on later establishment of small entity status. A 
refund pursuant to Sec. 1.26, 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 an assertion under 
Sec. 1.27(c) and a request for a refund of the excess amount are filed 
within three months of the date of the timely payment of the full fee. 
The three-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 three months of 
the date of payment of, the full fee.
    (b) Date of payment. (1) The three-month period for requesting a 
refund, pursuant to paragraph (a) of this section, starts on the date 
that a full fee has been paid;
    (2) The date when a deficiency payment is paid in full determines 
the amount of deficiency that is due, pursuant to paragraph (c) of this 
section.
    (c) How errors in small entity status are excused. 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 loss of 
entitlement to small entity status as required by Sec. 1.27(g)(2), the 
error will be excused upon: compliance with the separate submission and 
itemization requirements of paragraphs (c)(1) and (c)(2) of this 
section, and the deficiency payment requirement of paragraph (c)(2) of 
this section:
    (1) Separate submission required for each application or patent. Any 
paper submitted under this paragraph must be limited to the deficiency 
payment (all fees paid in error), required by paragraph (c)(2) of this 
section, for one application or one patent. Where more than one 
application or patent is involved, separate submissions of deficiency 
payments (e.g., checks) and itemizations are required for each 
application or patent. See Sec. 1.4(b).
    (2) Payment of deficiency owed. The deficiency owed, resulting from 
the previous erroneous payment of small entity fees, must be paid.
    (i) Calculation of the deficiency owed. The deficiency owed for each 
previous fee erroneously paid as a small entity is the difference 
between the current fee amount (for other than a small entity) on the 
date the deficiency is paid in full and the amount of the previous 
erroneous (small entity) fee payment. The total deficiency payment owed 
is the sum of the individual deficiency owed amounts for each fee amount 
previously erroneously paid as a small entity. Where a fee paid in error 
as a small entity was subject to a fee decrease between the time the fee 
was paid in error and the time the deficiency is paid in full, the 
deficiency owed is equal to the amount (previously) paid in error;
    (ii) Itemization of the deficiency payment. An itemization of the 
total deficiency payment is required. The itemization must include the 
following information:

[[Page 40]]

    (A) Each particular type of fee that was erroneously paid as a small 
entity, (e.g., basic statutory filing fee, two-month extension of time 
fee) along with the current fee amount for a non-small entity;
    (B) The small entity fee actually paid, and when. This will permit 
the Office to differentiate, for example, between two one-month 
extension of time fees erroneously paid as a small entity but on 
different dates;
    (C) The deficiency owed amount (for each fee erroneously paid); and
    (D) The total deficiency payment owed, which is the sum or total of 
the individual deficiency owed amounts set forth in paragraph 
(c)(2)(ii)(C) of this section.
    (3) Failure to comply with requirements. If the requirements of 
paragraphs (c)(1) and (c)(2) of this section are not complied with, such 
failure will either: be treated as an authorization for the Office to 
process the deficiency payment and charge the processing fee set forth 
in Sec. 1.17(i), or result in a requirement for compliance within a 
one-month non-extendable time period under Sec. 1.136(a) to avoid the 
return of the fee deficiency paper, at the option of the Office.
    (d) Payment of deficiency operates as notification of loss of 
status. Any deficiency payment (based on a previous erroneous payment of 
a small entity fee) submitted under paragraph (c) of this section will 
be treated under Sec. 1.27(g)(2) as a notification of a loss of 
entitlement to small entity status.

[65 FR 54661, Sept. 8, 2000]



                Subpart B_National Processing Provisions

     Prosecution of Application and Appointment of Attorney or Agent



Sec. 1.31  Applicant may be represented by one or more patent practitioners 
or joint inventors.

    An applicant for patent may file and prosecute his or her own case, 
or he or she may give a power of attorney so as to be represented by one 
or more patent practitioners or joint inventors. The United States 
Patent and Trademark Office cannot aid in the selection of a patent 
practitioner.

[70 FR 56127, Sept. 26, 2005]



Sec. 1.32  Power of attorney.

    (a) Definitions. (1) Patent practitioner means a registered patent 
attorney or registered patent agent under Sec. 11.6.
    (2) Power of attorney means a written document by which a principal 
authorizes one or more patent practitioners or joint inventors to act on 
his or her behalf.
    (3) Principal means either an applicant for patent (Sec. 1.41(b)) 
or an assignee of entire interest of the applicant for patent or in a 
reexamination proceeding, the assignee of the entirety of ownership of a 
patent. The principal executes a power of attorney designating one or 
more patent practitioners or joint inventors to act on his or her 
behalf.
    (4) Revocation means the cancellation by the principal of the 
authority previously given to a patent practitioner or joint inventor to 
act on his or her behalf.
    (5) Customer Number means a number that may be used to:
    (i) Designate the correspondence address of a patent application or 
patent such that the correspondence address for the patent application, 
patent or other patent proceeding would be the address associated with 
the Customer Number;
    (ii) Designate the fee address (Sec. 1.363) of a patent such that 
the fee address for the patent would be the address associated with the 
Customer Number; and
    (iii) Submit a list of patent practitioners such that those patent 
practitioners associated with the Customer Number would have power of 
attorney.
    (b) A power of attorney must:
    (1) Be in writing;
    (2) Name one or more representatives in compliance with (c) of this 
section;
    (3) Give the representative power to act on behalf of the principal; 
and
    (4) Be signed by the applicant for patent (Sec. 1.41(b)) or the 
assignee of the entire interest of the applicant.
    (c) A power of attorney may only name as representative:
    (1) One or more joint inventors (Sec. 1.45);

[[Page 41]]

    (2) Those registered patent practitioners associated with a Customer 
Number;
    (3) Ten or fewer patent practitioners, stating the name and 
registration number of each patent practitioner. Except as provided in 
paragraph (c)(1) or (c)(2) of this section, the Office will not 
recognize more than ten patent practitioners as being of record in an 
application or patent. If a power of attorney names more than ten patent 
practitioners, such power of attorney must be accompanied by a separate 
paper indicating which ten patent practitioners named in the power of 
attorney are to be recognized by the Office as being of record in the 
application or patent to which the power of attorney is directed.

[69 FR 29877, May 26, 2004, as amended at 70 FR 56127, Sept. 26, 2005]



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

    (a) Correspondence address and daytime telephone number. When filing 
an application, a correspondence address must be set forth in either an 
application data sheet (Sec. 1.76), or elsewhere, in a clearly 
identifiable manner, in any paper submitted with an application filing. 
If no correspondence address is specified, the Office may treat the 
mailing address of the first named inventor (if provided, see Sec. Sec. 
1.76(b)(1) and 1.63(c)(2)) as the correspondence address. The Office 
will direct, or otherwise make available, all notices, official letters, 
and other communications relating to the application to the person 
associated with the correspondence address. For correspondence submitted 
via the Office's electronic filing system, however, an electronic 
acknowledgment receipt will be sent to the submitter. The Office will 
generally not engage in double correspondence with an applicant and a 
patent practitioner, or with more than one patent practitioner except as 
deemed necessary by the Director. If more than one correspondence 
address is specified in a single document, the Office will select one of 
the specified addresses for use as the correspondence address and, if 
given, will select the address associated with a Customer Number over a 
typed correspondence address. For the party to whom correspondence is to 
be addressed, a daytime telephone number should be supplied in a clearly 
identifiable manner and may be changed by any party who may change the 
correspondence address. The correspondence address may be changed as 
follows:
    (1) Prior to filing of Sec. 1.63 oath or declaration by any of the 
inventors. If a Sec. 1.63 oath or declaration has not been filed by any 
of the inventors, the correspondence address may be changed by the party 
who filed the application. If the application was filed by a patent 
practitioner, any other patent practitioner named in the transmittal 
papers may also change the correspondence address. Thus, the 
inventor(s), any patent practitioner named in the transmittal papers 
accompanying the original application, or a party that will be the 
assignee who filed the application, may change the correspondence 
address in that application under this paragraph.
    (2) Where a Sec. 1.63 oath or declaration has been filed by any of 
the inventors. If a Sec. 1.63 oath or declaration has been filed, or is 
filed concurrent with the filing of an application, by any of the 
inventors, the correspondence address may be changed by the parties set 
forth in paragraph (b) of this section, except for paragraph (b)(2).
    (b) Amendments and other papers. Amendments and other papers, except 
for written assertions pursuant to Sec. 1.27(c)(2)(ii) of this part, 
filed in the application must be signed by:
    (1) A patent practitioner of record appointed in compliance with 
Sec. 1.32(b);
    (2) A patent practitioner not of record who acts in a representative 
capacity under the provisions of Sec. 1.34;
    (3) An assignee as provided for under Sec. 3.71(b) of this chapter; 
or
    (4) All of the applicants (Sec. 1.41(b)) for patent, unless there 
is an assignee of the entire interest and such assignee has taken action 
in the application in accordance with Sec. 3.71 of this chapter.
    (c) All notices, official letters, and other communications for the 
patent owner or owners in a reexamination proceeding will be directed to 
the correspondence address. Amendments and other papers filed in a 
reexamination

[[Page 42]]

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. 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.
    (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.
    (e) A change of address filed in a patent application or patent does 
not change the address for a patent practitioner in the roster of patent 
attorneys and agents. See Sec. 11.11 of this title.

[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; 65 FR 54661, Sept. 8, 2000; 69 FR 29877, May 26, 2004; 69 FR 
35452, June 24, 2004; 70 FR 3889, Jan. 27, 2005; 70 FR 56127, Sept. 26, 
2005; 72 FR 2776, Jan. 23, 2007; 72 FR 18904, Apr. 16, 2007]



Sec. 1.34  Acting in a representative capacity.

    When a patent practitioner acting in a representative capacity 
appears in person or signs a paper in practice before the United States 
Patent and Trademark Office in a patent case, his or her personal 
appearance or signature shall constitute a representation to the United 
States Patent and Trademark Office that under the provisions of this 
subchapter and the law, he or she is authorized to represent the 
particular party on whose behalf he or she acts. In filing such a paper, 
the patent practitioner must set forth his or her registration number, 
his or her name and signature. Further proof of authority to act in a 
representative capacity may be required.

[70 FR 56127, Sept. 26, 2005]



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

    (a) A power of attorney, pursuant to Sec. 1.32(b), may be revoked 
at any stage in the proceedings of a case by an applicant for patent 
(Sec. 1.41(b)) or an assignee of the entire interest of the applicant, 
or the owner of the entire interest of a patent. A power of attorney to 
the patent practitioners associated with a Customer Number will be 
treated as a request to revoke any powers of attorney previously given. 
Fewer than all of the applicants (or fewer than all of the assignees of 
the entire interest of the applicant or, in a reexamination proceeding, 
fewer than all the owners of the entire interest of a patent) may revoke 
the power of attorney only upon a showing of sufficient cause, and 
payment of the petition fee set forth in Sec. 1.17(f). A patent 
practitioner will be notified of the revocation of the power of 
attorney. Where power of attorney is given to the patent practitioners 
associated with a Customer Number (Sec. 1.32(c)(2)), the practitioners 
so appointed will also be notified of the revocation of the power of 
attorney when the power of attorney to all of the practitioners 
associated with the Customer Number is revoked. The notice of revocation 
will be mailed to the correspondence address for the application (Sec. 
1.33) in effect before the revocation. An assignment will not of itself 
operate as a revocation of a power previously given, but the assignee of 
the entire interest of the applicant may revoke previous powers of 
attorney and give another power of attorney of the assignee's own 
selection as provided in Sec. 1.32(b).
    (b) A registered patent attorney or patent agent who has been given 
a power of attorney pursuant to Sec. 1.32(b) may withdraw as attorney 
or agent of record upon application to and approval by the Director. The 
applicant or patent owner will be notified of the withdrawal of the 
registered patent attorney or patent agent. Where power of attorney is 
given to the patent practitioners associated with a Customer Number, a 
request to delete all of the patent practitioners associated with the 
Customer Number may not be granted if an applicant has given power

[[Page 43]]

of attorney to the patent practitioners associated with the Customer 
Number in an application that has an Office action to which a reply is 
due, but insufficient time remains for the applicant to file a reply. 
See Sec. 41.5 of this title for withdrawal during proceedings before 
the Board of Patent Appeals and Interferences.

[69 FR 49997, Aug. 12, 2004, as amended at 70 FR 56128, Sept. 26, 2005]

                       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. Sec. 1.53(d)(4) and 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 applicant files a paper, including the processing fee 
set forth in Sec. 1.17(i), 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 applicant files a paper including the 
processing fee set forth in Sec. 1.17(q), 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, 
residence, and citizenship of each person believed to be an actual 
inventor should be provided when the application papers pursuant to 
Sec. 1.53(b) or Sec. 1.53(c) are filed.
    (4) The inventorship of an international application entering the 
national stage under 35 U.S.C. 371 is that inventorship set forth in the 
international application, which includes any change effected under PCT 
Rule 92bis. See Sec. 1.497(d) and (f) for filing an oath or declaration 
naming an inventive entity different from the inventive entity named in 
the international application, or if a change to the inventive entity 
has been effected under PCT Rule 92bis subsequent to the execution of 
any declaration filed under PCT Rule 4.17(iv) (Sec. 1.48(f)(1) does not 
apply to an international application entering the national stage under 
35 U.S.C. 371).
    (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 Sec. Sec. 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 physically or 
electronically deliver an application for patent to the Office 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; 65 FR 54662, Sept. 8, 2000; 67 FR 523, Jan. 4, 
2002]



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 legal representative upon proper 
intervention.

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

[48 FR 2709, Jan. 20, 1983]

[[Page 44]]



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  [Reserved]



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(g), and the last known address of the 
nonsigning inventor. The nonsigning inventor may subsequently join in 
the application by 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 
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(g), and the last known address of all of the 
inventors. An inventor may subsequently join in the application by 
filing an oath or declaration complying with Sec. 1.63.
    (c) The Office will send notice of the filing of the application to 
all inventors who have not joined in the application at the address(es) 
provided in the petition under this section, and publish notice of the 
filing of the application in the Official Gazette. The Office may 
dispense with this notice provision in a continuation or divisional 
application, if notice regarding the filing

[[Page 45]]

of the prior application was given to the nonsigning inventor(s).

[65 FR 54662, Sept. 8, 2000, as amended at 69 FR 56538, Sept. 21, 2004]



Sec. 1.48  Correction of inventorship in a patent application, other 
than a reissue application, pursuant to 35 U.S.C. 116.

    (a) Nonprovisional application after oath/declaration filed. If the 
inventive entity is set forth in error in an executed Sec. 1.63 oath or 
declaration in a nonprovisional 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 inventorship of the nonprovisional application 
may be amended to name only the actual inventor or inventors. Amendment 
of the inventorship requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) 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;
    (3) An oath or declaration by the actual inventor or inventors as 
required by Sec. 1.63 or as permitted by Sec. Sec. 1.42, 1.43 or Sec. 
1.47;
    (4) The processing fee set forth in Sec. 1.17(i); and
    (5) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b) of 
this chapter).
    (b) Nonprovisional application--fewer inventors due to amendment or 
cancellation of claims. If the correct inventors are named in a 
nonprovisional application, and the prosecution of the nonprovisional 
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 nonprovisional application, an 
amendment must be filed requesting deletion of the name or names of the 
person or persons who are not inventors of the invention being claimed. 
Amendment of the inventorship requires:
    (1) A request, signed by a party set forth in Sec. 1.33(b), to 
correct the inventorship that identifies the named inventor or inventors 
being deleted and acknowledges that the inventor's invention is no 
longer being claimed in the nonprovisional application; and
    (2) The processing fee set forth in Sec. 1.17(i).
    (c) Nonprovisional application--inventors added for claims to 
previously unclaimed subject matter. If a nonprovisional 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. 
Amendment of the inventorship requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) A statement from each person being added as an inventor that the 
addition is necessitated by amendment of the claims and that the 
inventorship error occurred without deceptive intention on his or her 
part;
    (3) An oath or declaration by the actual inventors as required by 
Sec. 1.63 or as permitted by Sec. Sec. 1.42, 1.43, or Sec. 1.47;
    (4) The processing fee set forth in Sec. 1.17(i); and
    (5) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b) of 
this chapter).
    (d) Provisional application--adding omitted inventors. 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. 
Amendment of the inventorship requires:
    (1) A request, signed by a party set forth in Sec. 1.33(b), to 
correct the inventorship that identifies the inventor or inventors being 
added and states that the inventorship error occurred without deceptive 
intention on the part of the omitted inventor or inventors; and

[[Page 46]]

    (2) The processing fee set forth in Sec. 1.17(q).
    (e) Provisional application--deleting the name or names of the 
inventor or inventors. 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. Amendment of the 
inventorship requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) 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;
    (3) The processing fee set forth in Sec. 1.17(q); 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) of 
this chapter).
    (f)(1) Nonprovisional application--filing executed oath/declaration 
corrects inventorship. 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 by any of the 
inventors, the first submission of an executed oath or declaration under 
Sec. 1.63 by any of the inventors during the pendency of the 
application will act to correct the earlier identification of 
inventorship. See Sec. Sec. 1.41(a)(4) and 1.497(d) and (f) for 
submission of an executed oath or declaration to enter the national 
stage under 35 U.S.C. 371 naming an inventive entity different from the 
inventive entity set forth in the international stage.
    (2) Provisional application--filing cover sheet corrects 
inventorship. 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) Additional information may be required. The Office may require 
such other information as may be deemed appropriate under the particular 
circumstances surrounding the correction of inventorship.
    (h) Reissue applications not covered. The provisions of this section 
do not apply to reissue applications. See Sec. Sec. 1.171 and 1.175 for 
correction of inventorship in a patent via a reissue application.
    (i) Correction of inventorship in patent. See Sec. 1.324 for 
correction of inventorship in a patent.
    (j) Correction of inventorship in a contested case before the Board 
of Patent Appeals and Interferences. In a contested case under part 41, 
subpart D, of this title, a request for correction of an application 
must be in the form of a motion under Sec. 41.121(a)(2) of this title 
and must comply with the requirements of this section.

[65 FR 54663, Sept. 8, 2000, as amended at 67 FR 523, Jan. 4, 2002; 69 
FR 49998, Aug. 12, 2004]

                             The Application



Sec. 1.51  General requisites of an application.

    (a) Applications for patents must be made to the Director of the 
United States Patent and Trademark Office.
    (b) A complete application filed under Sec. 1.53(b) or Sec. 
1.53(d) comprises:
    (1) A specification as prescribed by 35 U.S.C. 112, including a 
claim or claims, see Sec. Sec. 1.71 to 1.77;
    (2) An oath or declaration, see Sec. Sec. 1.63 and 1.68;
    (3) Drawings, when necessary, see Sec. Sec. 1.81 to 1.85; and
    (4) The prescribed filing fee, search fee, examination fee, and 
application size 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),

[[Page 47]]

    (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 Sec. Sec. 1.81 to 1.85; and
    (4) The prescribed filing fee and application size 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, as amended at 65 FR 54664, Sept. 8, 2000; 
68 FR 14336, Mar. 25, 2003; 70 FR 3889, Jan. 27, 2005]



Sec. 1.52  Language, paper, writing, margins, compact disc specifications.

    (a) Papers that are to become a part of the permanent United States 
Patent and Trademark Office records in the file of a patent application 
or a reexamination proceeding. (1) All papers, other than drawings, that 
are submitted on paper or by facsimile transmission, and are to become a 
part of the permanent United States Patent and Trademark Office records 
in the file of a patent application or reexamination proceeding, must be 
on sheets of paper that are the same size, not permanently bound 
together, and:
    (i) Flexible, strong, smooth, non-shiny, durable, and white;
    (ii) 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), with each sheet including 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);
    (iii) Written on only one side in portrait orientation;
    (iv) Plainly and legibly written either by a typewriter or machine 
printer in permanent dark ink or its equivalent; and
    (v) 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 capture by use of digital imaging and optical character 
recognition.
    (2) All papers that are submitted on paper or by facsimile 
transmission and are to become a part of the permanent records of the 
United States Patent and Trademark Office should have no holes in the 
sheets as submitted.
    (3) The provisions of this paragraph and paragraph (b) of this 
section do not apply to the pre-printed information on paper forms 
provided by the Office, or to the copy of the patent submitted on paper 
in double column format as the specification in a reissue application or 
request for reexamination.
    (4) See Sec. 1.58 for chemical and mathematical formulae and 
tables, and Sec. 1.84 for drawings.
    (5) Papers that are submitted electronically to the Office must be 
formatted and transmitted in compliance with the Office's electronic 
filing system requirements.
    (b) The application (specification, including the claims, drawings, 
and oath or declaration) or reexamination proceeding and any amendments 
or corrections to the application or reexamination proceeding. (1) The 
application or proceeding and any amendments or corrections to the 
application (including any translation submitted pursuant to paragraph 
(d) of this section) or proceeding, except as provided for in Sec. 1.69 
and paragraph (d) of this section, must:
    (i) Comply with the requirements of paragraph (a) of this section; 
and
    (ii) Be in the English language or be accompanied by a translation 
of the application and a translation of any corrections or amendments 
into the English language together with a statement that the translation 
is accurate.
    (2) The specification (including the abstract and claims) for other 
than reissue applications and reexamination proceedings, and any 
amendments for applications (including reissue applications) and 
reexamination proceedings to the specification, except as provided for 
in Sec. Sec. 1.821 through 1.825, must have:

[[Page 48]]

    (i) Lines that are 1\1/2\ or double spaced;
    (ii) Text written in a nonscript type font (e.g., Arial, Times 
Roman, or Courier, preferably a font size of 12) lettering style having 
capital letters which should be at least 0.3175 cm. (0.125 inch) high, 
but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size 
of 6); and
    (iii) Only a single column of text.
    (3) The claim or claims must commence on a separate physical sheet 
or electronic page (Sec. 1.75(h)).
    (4) The abstract must commence on a separate physical sheet or 
electronic page or be submitted as the first page of the patent in a 
reissue application or reexamination proceeding (Sec. 1.72(b)).
    (5) Other than in a reissue application or reexamination proceeding, 
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.
    (6) Other than in a reissue application or reexamination proceeding, 
the paragraphs of the specification, other than in the claims or 
abstract, may be numbered at the time the application is filed, and 
should be individually and consecutively numbered using Arabic numerals, 
so as to unambiguously identify each paragraph. The number should 
consist of at least four numerals enclosed in square brackets, including 
leading zeros (e.g., [0001]). The numbers and enclosing brackets should 
appear to the right of the left margin as the first item in each 
paragraph, before the first word of the paragraph, and should be 
highlighted in bold. A gap, equivalent to approximately four spaces, 
should follow the number. Nontext elements (e.g., tables, mathematical 
or chemical formulae, chemical structures, and sequence data) are 
considered part of the numbered paragraph around or above the elements, 
and should not be independently numbered. If a nontext element extends 
to the left margin, it should not be numbered as a separate and 
independent paragraph. A list is also treated as part of the paragraph 
around or above the list, and should not be independently numbered. 
Paragraph or section headers (titles), whether abutting the left margin 
or centered on the page, are not considered paragraphs and should not be 
numbered.
    (c)(1) Any interlineation, erasure, cancellation or other alteration 
of the application papers filed must be made 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. In either situation, a substitute 
specification (Sec. 1.125) is required if the application papers do not 
comply with paragraphs (a) and (b) of this section.
    (2) 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.
    (3) Notwithstanding the provisions of this paragraph, if an oath or 
declaration is a copy of the oath or declaration from a prior 
application, the application for which such copy is submitted may 
contain alterations that do not introduce matter that would have been 
new matter in the prior application.
    (d) A nonprovisional or provisional application may be filed in a 
language other than English.
    (1) Nonprovisional application. If a nonprovisional application is 
filed in a language other than English, an English language translation 
of the non-English language application, a statement that the 
translation is accurate, and the processing fee set forth in Sec. 
1.17(i) are required. If these items are not filed with the application, 
applicant will be notified and given a period of time within which they 
must be filed in order to avoid abandonment.
    (2) Provisional application. If a provisional application is filed 
in a language other than English and the benefit of such provisional 
application is claimed in a nonprovisional application, an English 
language translation of the non-English language provisional application 
will be required in the provisional application. See Sec. 1.78(b).

[[Page 49]]

    (e) Electronic documents that are to become part of the permanent 
United States Patent and Trademark Office records in the file of a 
patent application or reexamination proceeding. (1) The following 
documents may be submitted to the Office on a compact disc in compliance 
with this paragraph:
    (i) A computer program listing (see Sec. 1.96);
    (ii) A ``Sequence Listing'' (submitted under Sec. 1.821(c)); or
    (iii) Any individual table (see Sec. 1.58) if the table is more 
than 50 pages in length, or if the total number of pages of all the 
tables in an application exceeds 100 pages in length, where a table page 
is a page printed on paper in conformance with paragraph (b) of this 
section and Sec. 1.58(c).
    (2) A compact disc as used in this part means a Compact Disc-Read 
Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance 
with this paragraph. A CD-ROM is a ``read-only'' medium on which the 
data is pressed into the disc so that it cannot be changed or erased. A 
CD-R is a ``write once'' medium on which once the data is recorded, it 
is permanent and cannot be changed or erased.
    (3)(i) Each compact disc must conform to the International Standards 
Organization (ISO) 9660 standard, and the contents of each compact disc 
must be in compliance with the American Standard Code for Information 
Interchange (ASCII).
    (ii) Each compact disc must be enclosed in a hard compact disc case 
within an unsealed padded and protective mailing envelope and 
accompanied by a transmittal letter on paper in accordance with 
paragraph (a) of this section. The transmittal letter must list for each 
compact disc the machine format (e.g., IBM-PC, Macintosh), the operating 
system compatibility (e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list 
of files contained on the compact disc including their names, sizes in 
bytes, and dates of creation, plus any other special information that is 
necessary to identify, maintain, and interpret (e.g., tables in 
landscape orientation should be identified as landscape orientation or 
be identified when inquired about) the information on the compact disc. 
Compact discs submitted to the Office will not be returned to the 
applicant.
    (4) Any compact disc must be submitted in duplicate unless it 
contains only the ``Sequence Listing'' in computer readable form 
required by Sec. 1.821(e). The compact disc and duplicate copy must be 
labeled ``Copy 1'' and ``Copy 2,'' respectively. The transmittal letter 
which accompanies the compact disc must include a statement that the two 
compact discs are identical. In the event that the two compact discs are 
not identical, the Office will use the compact disc labeled ``Copy 1'' 
for further processing. Any amendment to the information on a compact 
disc must be by way of a replacement compact disc in compliance with 
this paragraph containing the substitute information, and must be 
accompanied by a statement that the replacement compact disc contains no 
new matter. The compact disc and copy must be labeled ``COPY 1 
REPLACEMENT MM/DD/YYYY'' (with the month, day and year of creation 
indicated), and ``COPY 2 REPLACEMENT MM/DD/YYYY,'' respectively.
    (5) The specification must contain an incorporation-by-reference of 
the material on the compact disc in a separate paragraph (Sec. 
1.77(b)(5)), identifying each compact disc by the names of the files 
contained on each of the compact discs, their date of creation and their 
sizes in bytes. The Office may require applicant to amend the 
specification to include in the paper portion any part of the 
specification previously submitted on compact disc.
    (6) A compact disc must also be labeled with the following 
information:
    (i) The name of each inventor (if known);
    (ii) Title of the invention;
    (iii) The docket number, or application number if known, used by the 
person filing the application to identify the application; and
    (iv) A creation date of the compact disc.
    (v) If multiple compact discs are submitted, the label shall 
indicate their order (e.g. ``1 of X'').
    (vi) An indication that the disk is ``Copy 1'' or ``Copy 2'' of the 
submission. See paragraph (b)(4) of this section.

[[Page 50]]

    (7) If a file is unreadable on both copies of the disc, the 
unreadable file will be treated as not having been submitted. A file is 
unreadable if, for example, it is of a format that does not comply with 
the requirements of paragraph (e)(3) of this section, it is corrupted by 
a computer virus, or it is written onto a defective compact disc.
    (f)(1) Any sequence listing in an electronic medium in compliance 
with Sec. Sec. 1.52(e) and 1.821(c) or (e), and any computer program 
listing filed in an electronic medium in compliance with Sec. Sec. 
1.52(e) and 1.96, will be excluded when determining the application size 
fee required by Sec. 1.16(s) or Sec. 1.492(j). For purposes of 
determining the application size fee required by Sec. 1.16(s) or Sec. 
1.492(j), for an application the specification and drawings of which, 
excluding any sequence listing in compliance with Sec. 1.821(c) or (e), 
and any computer program listing filed in an electronic medium in 
compliance with Sec. Sec. 1.52(e) and 1.96, are submitted in whole or 
in part on an electronic medium other than the Office electronic filing 
system, each three kilobytes of content submitted on an electronic 
medium shall be counted as a sheet of paper.
    (2) Except as otherwise provided in this paragraph, the paper size 
equivalent of the specification and drawings of an application submitted 
via the Office electronic filing system will be considered to be 
seventy-five percent of the number of sheets of paper present in the 
specification and drawings of the application when entered into the 
Office file wrapper after being rendered by the Office electronic filing 
system for purposes of determining the application size fee required by 
Sec. 1.16(s). Any sequence listing in compliance with Sec. 1.821(c) or 
(e), and any computer program listing in compliance with Sec. 1.96, 
submitted via the Office electronic filing system will be excluded when 
determining the application size fee required by Sec. 1.16(s) if the 
listing is submitted in ASCII text as part of an associated file.

(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; 65 FR 
54664, Sept. 8, 2000; 65 FR 57053, Sept. 20, 2000; 68 FR 38627, June 30, 
2003; 69 FR 56538, Sept. 21, 2004; 70 FR 3889, Jan. 27, 2005; 70 FR 
30365, May 26, 2005; 70 FR 54266, Sept. 14, 2005; 70 FR 56128, Sept. 26, 
2005; 72 FR 46836, Aug. 21, 2007]



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 its filing date. A continuing 
application, which may be a continuation, divisional, or continuation-
in-part application, may be filed under this section if the conditions 
specified in 35 U.S.C. 120, 121, or 365(c) and Sec. 1.78 are met.
    (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 paragraph (b) or (d) of this section. A 
continuation or divisional application naming an inventor not named in 
the prior application must be filed under paragraph (b) of this section. 
See Sec. 1.78(a)(2) for the definition of a divisional application and 
Sec. 1.78(a)(3) for the definition of a continuation application.
    (2) A continuation-in-part application must be filed under paragraph 
(b) of this section. See Sec. 1.78(a)(4) for the

[[Page 51]]

definition of a continuation-in-part application.
    (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), which may be an application data sheet 
(Sec. 1.76), 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. The grant of such a request for conversion will not 
entitle applicant to a refund of the fees that were properly paid in the 
application filed under paragraph (b) of this section. Such a request 
for conversion must be accompanied by the processing fee set forth in 
Sec. 1.17(q) and be filed prior to the earliest of:
    (i) Abandonment of the application filed under paragraph (b) of this 
section;
    (ii) Payment of the issue fee on the application filed under 
paragraph (b) of this section;
    (iii) Expiration of twelve months after the filing date of the 
application filed under paragraph (b) of this section; or
    (iv) The filing of a request for a statutory invention registration 
under Sec. 1.293 in the application filed under paragraph (b) of this 
section.
    (3) A provisional application filed under paragraph (c) of this 
section may be converted to a nonprovisional application filed under 
paragraph (b) of this section and accorded the original filing date of 
the provisional application. The conversion of a provisional application 
to a nonprovisional application will not result in either the refund of 
any fee properly paid in the provisional application or the application 
of any such fee to the filing fee, or any other fee, for the 
nonprovisional application. Conversion of a provisional application to a 
nonprovisional application under this paragraph will result in the term 
of any patent to issue from the application being measured from at least 
the filing date of the provisional application for which conversion is 
requested. Thus, applicants should consider avoiding this adverse patent 
term impact by filing a nonprovisional application claiming the benefit 
of the provisional application under 35 U.S.C. 119(e) (rather than 
converting the provisional application into a nonprovisional application 
pursuant to this paragraph). A request to convert a provisional 
application to a nonprovisional application must be accompanied by the 
fee set forth in Sec. 1.17(i) and an amendment including at least one 
claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the 
provisional application under paragraph (c) of this section otherwise 
contains at least one claim as prescribed by the second paragraph of 35 
U.S.C. 112. The nonprovisional application resulting from conversion of 
a provisional application must also include the filing fee, search fee, 
and examination fee for a nonprovisional application, an oath or 
declaration by the applicant pursuant to Sec. Sec. 1.63, 1.162, or 
1.175, and the surcharge required by Sec. 1.16(f) if either the basic 
filing fee for a nonprovisional application or the oath or declaration 
was not present on the filing date accorded the resulting nonprovisional 
application (i.e., the filing date of the original provisional 
application). A request to convert a provisional application to a 
nonprovisional application must also be filed prior to the earliest of:
    (i) Abandonment of the provisional application filed under paragraph 
(c) of this section; or
    (ii) Expiration of twelve months after the filing date of the 
provisional application filed under paragraph (c) of this section.
    (4) A provisional application is not entitled to the right of 
priority under

[[Page 52]]

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 35 U.S.C. 119(e) or Sec. 
1.78 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 Sec. Sec. 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 application is for a design patent;
    (ii) The prior nonprovisional application is a design application 
that is complete as defined by Sec. 1.51(b); and
    (iii) 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(c) 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:
    (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, search fee, and examination fee for a continued 
prosecution application filed under this paragraph are the basic filing 
fee as set forth in Sec. 1.16(b), the search fee as set forth in Sec. 
1.16(l), and the examination fee as set forth in Sec. 1.16(p).
    (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 correction of inventorship 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

[[Page 53]]

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) See Sec. 1.103(b) for requesting a limited suspension of action 
in an application filed under this paragraph.
    (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 been 
provided, and given a period of time within which to correct the filing 
error. If, however, a request for an application under paragraph (d) of 
this section does not meet the requirements of that paragraph because 
the application in which the request was filed is not a design 
application, and if the application in which the request was filed was 
itself filed on or after June 8, 1995, the request for an application 
under paragraph (d) of this section will be treated as a request for 
continued examination under Sec. 1.114.
    (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 accompanied by the fee set 
forth in Sec. 1.17(f). 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 or reissue) application. (1) If an 
application which has been accorded a filing date pursuant to paragraph 
(b) or (d) of this section does not include the basic filing fee, the 
search fee, or the examination fee, or if an application which has been 
accorded a filing date pursuant to paragraph (b) of this section does 
not include an oath or declaration by the applicant pursuant to 
Sec. Sec. 1.63, 1.162 or Sec. 1.175, and applicant has provided a 
correspondence address (Sec. 1.33(a)), applicant will be notified and 
given a period of time within which to pay the basic filing fee, search 
fee, and examination fee, file an oath or declaration in an application 
under paragraph (b) of this section, and pay the surcharge if required 
by Sec. 1.16(f) to avoid abandonment.
    (2) If an application which has been accorded a filing date pursuant 
to paragraph (b) of this section does not include the basic filing fee, 
the search fee, the examination fee, or an oath or declaration by the 
applicant pursuant to Sec. Sec. 1.63, 1.162 or Sec. 1.175, and 
applicant has not provided a correspondence address (Sec. 1.33(a)), 
applicant has two months from the filing date of the application within 
which to pay the basic filing fee, search fee, and examination fee, file 
an oath or declaration, and pay the surcharge if required by Sec. 
1.16(f) to avoid abandonment.
    (3) If the excess claims fees required by Sec. Sec. 1.16(h) and (i) 
and multiple dependent claim fee required by Sec. 1.16(j) are not paid 
on filing or on later presentation of the claims for which the excess 
claims or multiple dependent claim fees are due, the fees required by

[[Page 54]]

Sec. Sec. 1.16(h), (i), and (j) must be paid or the claims canceled by 
amendment prior to the expiration of the time period set for reply by 
the Office in any notice of fee deficiency. If the application size fee 
required by Sec. 1.16(s) (if any) is not paid on filing or on later 
presentation of the amendment necessitating a fee or additional fee 
under Sec. 1.16(s), the fee required by Sec. 1.16(s) must be paid 
prior to the expiration of the time period set for reply by the Office 
in any notice of fee deficiency in order to avoid abandonment.
    (4) This paragraph applies to continuation or divisional 
applications under paragraphs (b) or (d) of this section and to 
continuation-in-part applications under paragraph (b) of this section. 
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 under paragraph (b) of this section.
    (5) If applicant does not pay the basic filing fee during the 
pendency of the application, the Office may dispose of the application.
    (g) Completion of application subsequent to filing--Provisional 
application. (1) If a provisional application which has been accorded a 
filing date pursuant to paragraph (c) of this section does not include 
the cover sheet required by Sec. 1.51(c)(1) or the basic filing fee 
(Sec. 1.16(d)), and applicant has provided a correspondence address 
(Sec. 1.33(a)), applicant will be notified and given a period of time 
within which to pay the basic filing fee, file a cover sheet (Sec. 
1.51(c)(1)), and pay the surcharge required by Sec. 1.16(g) to avoid 
abandonment.
    (2) If a provisional application which has been accorded a filing 
date pursuant to paragraph (c) of this section does not include the 
cover sheet required by Sec. 1.51(c)(1) or the basic filing fee (Sec. 
1.16(d)), and applicant has not provided a correspondence address (Sec. 
1.33(a)), applicant has two months from the filing date of the 
application within which to pay the basic filing fee, file a cover sheet 
(Sec. 1.51(c)(1)), and pay the surcharge required by Sec. 1.16(g) to 
avoid abandonment.
    (3) If the application size fee required by Sec. 1.16(s) (if any) 
is not paid on filing, the fee required by Sec. 1.16(s) must be paid 
prior to the expiration of the time period set for reply by the Office 
in any notice of fee deficiency in order to avoid abandonment.
    (4) If applicant does not pay the basic filing fee during the 
pendency of the application, the Office may dispose 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 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; 65 
FR 14871, Mar. 20, 2000; 65 FR 50104, Aug. 16, 2000; 65 FR 54665, Sept. 
8, 2000; 65 FR 78960, Dec. 18, 2000; 68 FR 14336, Mar. 25, 2003; 68 FR 
32380, May 30, 2003; 69 FR 29878, May 26, 2004; 69 FR 56539, Sept. 21, 
2004; 70 FR 3890, Jan. 27, 2005; 70 FR 30365, May 26, 2005; 72 FR 46836, 
Aug. 21, 2007]



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]

[[Page 55]]



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 (f), 
172, and 365(a) and (b).
    (1)(i) In an original application filed under 35 U.S.C. 111(a), the 
claim for priority must be presented during the pendency of the 
application, and within the later of four months from the actual filing 
date of the application or sixteen months from the filing date of the 
prior foreign application. This time period is not extendable. The claim 
must identify the foreign application for which priority is claimed, as 
well as any foreign application for the same subject matter and having a 
filing date before that of the application for which priority is 
claimed, by specifying the application number, country (or intellectual 
property authority), day, month, and year of its filing. The time 
periods in this paragraph do not apply in an application under 35 U.S.C. 
111(a) if the application is:
    (A) A design application; or
    (B) An application filed before November 29, 2000.
    (ii) In an application that entered the national stage from an 
international application after compliance with 35 U.S.C. 371, the claim 
for priority must be made during the pendency of the application and 
within the time limit set forth in the PCT and the Regulations under the 
PCT.
    (2) The claim for priority and the certified copy of the foreign 
application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any 
event, be filed 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 the processing fee set 
forth in Sec. 1.17(i), but the patent will not include the priority 
claim unless corrected by a certificate of correction under 35 U.S.C. 
255 and Sec. 1.323.
    (3) The Office may require that the claim for priority and the 
certified copy of the foreign application be filed earlier than provided 
in paragraphs (a)(1) or (a)(2) of this section:
    (i) When the application becomes involved in an interference (see 
Sec. 41.202 of this title),
    (ii) When necessary to overcome the date of a reference relied upon 
by the examiner, or
    (iii) When deemed necessary by the examiner.
    (4)(i) An English language translation of a non-English language 
foreign application is not required except:
    (A) When the application is involved in an interference (see Sec. 
41.202 of this title),
    (B) When necessary to overcome the date of a reference relied upon 
by the examiner, or
    (C) When specifically required by the examiner.
    (ii) If an English language translation is required, it 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.
    (c) Unless such claim is accepted in accordance with the provisions 
of this paragraph, any claim for priority under 35 U.S.C. 119(a)-(d) or 
365(a) not presented within the time period provided by paragraph (a) of 
this section is considered to have been waived. If a claim for priority 
under 35 U.S.C. 119(a)-(d) or 365(a) is presented after the time period

[[Page 56]]

provided by paragraph (a) of this section, the claim may be accepted if 
the claim identifying the prior foreign application by specifying its 
application number, country (or intellectual property authority), and 
the day, month, and year of its filing was unintentionally delayed. A 
petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-
(d) or 365(a) must be accompanied by:
    (1) The claim under 35 U.S.C. 119(a)-(d) or 365(a) and this section 
to the prior foreign application, unless previously submitted;
    (2) The surcharge set forth in Sec. 1.17(t); and
    (3) A statement that the entire delay between the date the claim was 
due under paragraph (a)(1) of this section and the date the claim was 
filed was unintentional. The Director may require additional information 
where there is a question whether the delay was unintentional.
    (d)(1) The requirement in this section for the certified copy of the 
foreign application will be considered satisfied if:
    (i) The applicant files a request, in a separate document, that the 
Office obtain a copy of the foreign application from a foreign 
intellectual property office participating with the Office in a 
bilateral or multilateral priority document exchange agreement 
(participating foreign intellectual property office (see Sec. 
1.14(h)(1));
    (ii) The foreign application is identified in the oath or 
declaration (Sec. 1.63(c)) or an application data sheet (Sec. 
1.76(a)(6)); and
    (iii) The copy of the foreign application is received by the Office 
within the period set forth in paragraph (a) of this section. Such a 
request should be made within the later of four months from the filing 
date of the application or sixteen months from the filing date of the 
foreign application.
    (2) If the foreign application was filed at a foreign intellectual 
property office that is not participating with the Office in a priority 
document exchange agreement, but a copy of the foreign application was 
filed in an application subsequently filed in a participating foreign 
intellectual property office, the request under paragraph (d)(1)(i) of 
this section must identify the participating foreign intellectual 
property office and the application number of the subsequent application 
in which a copy of the foreign application was filed.

[60 FR 20224, Apr. 25, 1995, as amended at 62 FR 53188, Oct. 10, 1997; 
65 FR 57053, Sept. 20, 2000; 65 FR 66502, Nov. 6, 2000; 66 FR 67094, 
Dec. 28, 2001; 69 FR 49998, Aug. 12, 2004; 72 FR 1668, Jan. 16, 2007]



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 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 
Sec. Sec. 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:

[[Page 57]]

    (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.
    (e) In any continuation-in-part application, the duty under this 
section includes the duty to disclose to the Office all information 
known to the person to be material to patentability, as defined in 
paragraph (b) of this section, 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.

[57 FR 2034, Jan. 17, 1992, as amended at 65 FR 54666, Sept. 8, 2000]



Sec. 1.57  Incorporation by reference.

    (a) Subject to the conditions and requirements of this paragraph, if 
all or a portion of the specification or drawing(s) is inadvertently 
omitted from an application, but the application contains a claim under 
Sec. 1.55 for priority of a prior-filed foreign application, or a claim 
under Sec. 1.78 for the benefit of a prior-filed provisional, 
nonprovisional, or international application, that was present on the 
filing date of the application, and the inadvertently omitted portion of 
the specification or drawing(s) is completely contained in the prior-
filed application, the claim under Sec. 1.55 or Sec. 1.78 shall also 
be considered an incorporation by reference of the prior-filed 
application as to the inadvertently omitted portion of the specification 
or drawing(s).
    (1) The application must be amended to include the inadvertently 
omitted portion of the specification or drawing(s) within any time 
period set by the Office, but in no case later than the close of 
prosecution as defined by Sec. 1.114(b), or abandonment of the 
application, whichever occurs earlier. The applicant is also required 
to:
    (i) Supply a copy of the prior-filed application, except where the 
prior-filed application is an application filed under 35 U.S.C. 111;
    (ii) Supply an English language translation of any prior-filed 
application that is in a language other than English; and
    (iii) Identify where the inadvertently omitted portion of the 
specification or drawings can be found in the prior-filed application.
    (2) Any amendment to an international application pursuant to this 
paragraph shall be effective only as to

[[Page 58]]

the United States, and shall have no effect on the international filing 
date of the application. In addition, no request under this section to 
add the inadvertently omitted portion of the specification or drawings 
in an international application designating the United States will be 
acted upon by the Office prior to the entry and commencement of the 
national stage (Sec. 1.491) or the filing of an application under 35 
U.S.C. 111(a) which claims benefit of the international application. Any 
omitted portion of the international application which applicant desires 
to be effective as to all designated States, subject to PCT Rule 
20.8(b), must be submitted in accordance with PCT Rule 20.
    (3) If an application is not otherwise entitled to a filing date 
under Sec. 1.53(b), the amendment must be by way of a petition pursuant 
to this paragraph accompanied by the fee set forth in Sec. 1.17(f).
    (b) Except as provided in paragraph (a) of this section, an 
incorporation by reference must be set forth in the specification and 
must:
    (1) Express a clear intent to incorporate by reference by using the 
root words ``incorporat(e)'' and ``reference'' (e.g., ``incorporate by 
reference''); and
    (2) Clearly identify the referenced patent, application, or 
publication.
    (c) ``Essential material'' may be incorporated by reference, but 
only by way of an incorporation by reference to a U.S. patent or U.S. 
patent application publication, which patent or patent application 
publication does not itself incorporate such essential material by 
reference. ``Essential material'' is material that is necessary to:
    (1) Provide a written description of the claimed invention, and of 
the manner and process of making and using it, in such full, clear, 
concise, and exact terms as to enable any person skilled in the art to 
which it pertains, or with which it is most nearly connected, to make 
and use the same, and set forth the best mode contemplated by the 
inventor of carrying out the invention as required by the first 
paragraph of 35 U.S.C. 112;
    (2) Describe the claimed invention in terms that particularly point 
out and distinctly claim the invention as required by the second 
paragraph of 35 U.S.C. 112; or
    (3) Describe the structure, material, or acts that correspond to a 
claimed means or step for performing a specified function as required by 
the sixth paragraph of 35 U.S.C. 112.
    (d) Other material (``Nonessential material'') may be incorporated 
by reference to U.S. patents, U.S. patent application publications, 
foreign patents, foreign published applications, prior and concurrently 
filed commonly owned U.S. applications, or non-patent publications. An 
incorporation by reference by hyperlink or other form of browser 
executable code is not permitted.
    (e) The examiner may require the applicant to supply a copy of the 
material incorporated by reference. If the Office requires the applicant 
to supply a copy of material incorporated by reference, the material 
must be accompanied by a statement that the copy supplied consists of 
the same material incorporated by reference in the referencing 
application.
    (f) Any insertion of material incorporated by reference into the 
specification or drawings of an application must be by way of an 
amendment to the specification or drawings. Such an amendment must be 
accompanied by a statement that the material being inserted is the 
material previously incorporated by reference and that the amendment 
contains no new matter.
    (g) An incorporation of material by reference that does not comply 
with paragraphs (b), (c), or (d) of this section is not effective to 
incorporate such material unless corrected within any time period set by 
the Office, but in no case later than the close of prosecution as 
defined by Sec. 1.114(b), or abandonment of the application, whichever 
occurs earlier. In addition:
    (1) A correction to comply with paragraph (b)(1) of this section is 
permitted only if the application as filed clearly conveys an intent to 
incorporate the material by reference. A mere reference to material does 
not convey an intent to incorporate the material by reference.

[[Page 59]]

    (2) A correction to comply with paragraph (b)(2) of this section is 
only permitted for material that was sufficiently described to uniquely 
identify the document.

[69 FR 56539, Sept. 21, 2004, as amended at 72 FR 51563, Sept. 10, 2007]



Sec. 1.58  Chemical and mathematical formulae and tables.

    (a) The specification, including the claims, may contain chemical 
and mathematical formulae, but shall not contain drawings or flow 
diagrams. The description portion of the specification may contain 
tables, but the same tables may only be included in both the drawings 
and description portion of the specification if the application was 
filed under 35 U.S.C. 371. Claims may contain tables either if necessary 
to conform to 35 U.S.C. 112 or if otherwise found to be desirable.
    (b) Tables that are submitted in electronic form (Sec. Sec. 1.96(c) 
and 1.821(c)) must maintain the spatial relationships (e.g., alignment 
of columns and rows) of the table elements when displayed so as to 
visually preserve the relational information they convey. Chemical and 
mathematical formulae must be encoded to maintain the proper positioning 
of their characters when displayed in order to preserve their intended 
meaning.
    (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 font or lettering style having capital 
letters which should be at least 0.422 cm. (0.166 inch) high (e.g., 
preferably Arial, Times Roman, or Courier with a font size of 12), but 
may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 
6). 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.

[69 FR 56540, Sept. 21, 2004]



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

    (a)(1) Information in an application will not be expunged, except as 
provided in paragraph (b) of this section or Sec. 41.7(a) of this 
title.
    (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 Sec. Sec. 1.63 and 1.175) will not be expunged from 
the application file.
    (b) An applicant may request that the Office expunge information, 
other than what is excluded by paragraph (a)(2) of this section, by 
filing a petition under this paragraph. Any petition to expunge 
information from an application must include the fee set forth in Sec. 
1.17(g) and establish to the satisfaction of the Director that the 
expungement of the information is appropriate in which case a notice 
granting the petition for expungement will be provided.
    (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. Sec. 1.53(e), (f) and 
(g)). The Office cannot provide or certify copies of an application that 
has been disposed of.

[68 FR 38628, June 30, 2003, as amended at 69 FR 49999, Aug. 12, 2004; 
69 FR 56540, Sept. 21, 2004]



Sec. Sec. 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 
a nonprovisional application must:
    (1) Be executed, i.e., signed, in accordance with either Sec. 1.66 
or Sec. 1.68. There is no minimum age for a person to be qualified to 
sign, but the person must be competent to sign, i.e., understand the 
document that the person is signing;

[[Page 60]]

    (2) 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;
    (3) Identify the country of citizenship of each inventor; and
    (4) State 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) In addition to meeting the requirements of paragraph (a) of this 
section, the oath or declaration must also:
    (1) Identify the application to which it is directed;
    (2) State that the person making the oath or declaration has 
reviewed and understands the contents of the application, including the 
claims, as amended by any amendment specifically referred to in the oath 
or declaration; and
    (3) 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.
    (c) Unless such information is supplied on an application data sheet 
in accordance with Sec. 1.76, the oath or declaration must also 
identify:
    (1) The mailing address, and the residence if an inventor lives at a 
location which is different from where the inventor customarily receives 
mail, of each inventor; and
    (2) Any foreign application for patent (or inventor's certificate) 
for which a claim for priority is made pursuant to Sec. 1.55, 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;
    (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 correspondence address was 
changed during the prosecution of the prior application, the change in 
power of attorney or correspondence address must be

[[Page 61]]

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 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.

(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; 65 FR 54667, Sept. 8, 2000; 69 FR 56540, Sept. 21, 2004]



Sec. 1.64  Person making oath or declaration.

    (a) The oath or declaration (Sec. 1.63), including any supplemental 
oath or declaration (Sec. 1.67), must be made by all of the actual 
inventors except as provided for in Sec. Sec. 1.42, 1.43, 1.47, or 
Sec. 1.67.
    (b) If the person making the oath or declaration or any supplemental 
oath or declaration is not the inventor (Sec. Sec. 1.42, 1.43, 1.47, or 
Sec. 1.67), 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. If the person signing the oath 
or declaration is the legal representative of a deceased inventor, the 
oath or declaration shall also state that the person is a legal 
representative and the citizenship, residence, and mailing address of 
the legal representative.

[65 FR 54667, Sept. 8, 2000]



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 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) The Office may require, or inventors and applicants may submit, 
a supplemental oath or declaration meeting the requirements of Sec. 
1.63 or Sec. 1.162 to correct any deficiencies or inaccuracies present 
in the earlier filed oath or declaration.

[[Page 62]]

    (1) Deficiencies or inaccuracies relating to all the inventors or 
applicants (Sec. Sec. 1.42, 1.43, or Sec. 1.47) may be corrected with 
a supplemental oath or declaration signed by all the inventors or 
applicants.
    (2) Deficiencies or inaccuracies relating to fewer than all of the 
inventor(s) or applicant(s) (Sec. Sec. 1.42, 1.43 or Sec. 1.47) may be 
corrected with a supplemental oath or declaration identifying the entire 
inventive entity but signed only by the inventor(s) or applicant(s) to 
whom the error or deficiency relates.
    (3) Deficiencies or inaccuracies due to the failure to meet the 
requirements of Sec. 1.63(c) (e.g., to correct the omission of a 
mailing address of an inventor) in an oath or declaration may be 
corrected with an application data sheet in accordance with Sec. 1.76.
    (4) Submission of a supplemental oath or declaration or an 
application data sheet (Sec. 1.76), as opposed to who must sign the 
supplemental oath or declaration or an application data sheet, is 
governed by Sec. 1.33(a)(2) and paragraph (b) of this section.
    (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) [Reserved]

(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; 65 FR 54667, Sept. 
8, 2000]



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]



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 in a form provided by the Patent and Trademark Office or 
in accordance with PCT Rule 4.17(iv), 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; 69 FR 56540, Sept. 21, 2004; 70 FR 3890, Jan. 
27, 2005]



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

[[Page 63]]

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, ``(copyright) 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.

    (f) The specification must commence on a separate sheet. Each sheet 
including part of the specification may not include other parts of the 
application or other information. The claim(s), abstract and sequence 
listing (if any) should not be included on a sheet including any other 
part of the application.
    (g)(1) The specification may disclose or be amended to disclose the 
names of the parties to a joint research agreement (35 U.S.C. 
103(c)(2)(C)).
    (2) An amendment under paragraph (g)(1) of this section must be 
accompanied by the processing fee set forth in Sec. 1.17(i) if not 
filed within one of the following time periods:
    (i) Within three months of the filing date of a national 
application;
    (ii) Within three months of the date of entry of the national stage 
as set forth in Sec. 1.491 in an international application;
    (iii) Before the mailing of a first Office action on the merits; or
    (iv) Before the mailing of a first Office action after the filing of 
a request for continued examination under Sec. 1.114.
    (3) If an amendment under paragraph (g)(1) of this section is filed 
after the date the issue fee is paid, the patent as issued may not 
necessarily include the names of the parties to the joint research 
agreement. If the patent as issued does not include the names of the 
parties to the joint research agreement, the patent must be corrected to 
include the names of the parties to the joint research agreement by a 
certificate of correction under 35 U.S.C. 255 and Sec. 1.323 for the 
amendment to be effective.

[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 47808, Nov. 28, 1988; 
58 FR 38723, July 20, 1993; 68 FR 38628, June 30, 2003; 70 FR 1823, Jan. 
11, 2005; 70 FR 54266, Sept. 14, 2005]

[[Page 64]]



Sec. 1.72  Title and abstract.

    (a) The title of the invention may not exceed 500 characters in 
length and must be as short and specific as possible. Characters that 
cannot be captured and recorded in the Office's automated information 
systems may not be reflected in the Office's records in such systems or 
in documents created by the Office. Unless the title is supplied in an 
application data sheet (Sec. 1.76), the title of the invention should 
appear as a heading on the first page of the specification.
    (b) A brief abstract of the technical disclosure in the 
specification must commence on a separate sheet, preferably following 
the claims, under the heading ``Abstract'' or ``Abstract of the 
Disclosure.'' The sheet or sheets presenting the abstract may not 
include other parts of the application or other material. The abstract 
in an application filed under 35 U.S.C. 111 may not exceed 150 words in 
length. The purpose of the abstract is to enable the United States 
Patent and Trademark Office and the public generally to determine 
quickly from a cursory inspection the nature and gist of the technical 
disclosure.

[65 FR 54667, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000; 
68 FR 38628, June 30, 2003]



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. One or more 
claims may be presented in dependent form, referring back to and further 
limiting another claim or claims in the same application. A dependent 
claim must contain a reference to a claim previously set forth in the 
same application, incorporate by reference all the limitations of the 
previous claim to which such dependent claim refers, and specify a 
further limitation of the subject matter of the previous claim.
    (1) An applicant must file an examination support document in 
compliance with Sec. 1.265 that covers each claim (whether in 
independent or dependent form) before the issuance of a first Office 
action on the merits of the application if the application contains or 
is amended to contain more than five independent claims or more than 
twenty-five total claims. An application may not contain or be amended 
to contain more than five independent claims or more than twenty-five 
total claims if an examination support document in compliance with Sec. 
1.265 has not been filed before the issuance of a first Office action on 
the merits of the application.
    (2) A claim that refers to another claim but does not incorporate by 
reference all of the limitations of the claim to which such claim refers 
will be treated as an independent claim for fee calculation purposes 
under Sec. 1.16 (or Sec. 1.492) and for purposes of paragraph (b) of 
this section. A claim that refers to a claim of a different statutory 
class of invention will also be treated as an independent claim for fee 
calculation purposes under Sec. 1.16 (or Sec. 1.492) and for purposes 
of paragraph (b) of this section.
    (3) The applicant will be notified if the application contains or is 
amended to contain more than five independent claims or more than 
twenty-five total claims but the applicant has not complied with the 
requirements set forth

[[Page 65]]

in paragraph (b)(1) or (b)(4) of this section. If the non-compliance 
appears to have been inadvertent, the notice will set a two-month time 
period that is not extendable under Sec. 1.136(a) within which, to 
avoid abandonment of the application, the applicant must comply with the 
requirements set forth in paragraph (b) of this section.
    (4) If a nonprovisional application contains at least one claim that 
is patentably indistinct from at least one claim in one or more other 
pending nonprovisional applications, and if such one or more other 
nonprovisional applications and the first nonprovisional application are 
owned by the same person, or are subject to an obligation of assignment 
to the same person, the Office will treat the claims (whether in 
independent or dependent form) in the first nonprovisional application 
and in each of such other pending nonprovisional applications as present 
in each of the nonprovisional applications for purposes of paragraph (b) 
of this section.
    (5) Claims withdrawn from consideration under Sec. Sec. 1.141 
through 1.146 or Sec. 1.499 as drawn to a non-elected invention or 
inventions will not, unless they are reinstated or rejoined, be taken 
into account in determining whether an application exceeds the five 
independent claim and twenty-five total claim threshold set forth in 
paragraphs (b)(1), (b)(3), and (b)(4) of this section.
    (c) 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 (or Sec. 1.492) and for purposes of paragraph (b) of 
this section, a multiple dependent claim will be considered to be that 
number of claims to which direct reference is made therein. For fee 
calculation purposes under Sec. 1.16 (or Sec. 1.492) and for purposes 
of paragraph (b) of this section, 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 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(j). 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 Sec. Sec. 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 physical sheet 
or electronic page. Any sheet including a claim or portion of a claim 
may not contain any other parts of the application or other material.
    (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; 68 FR 38628, June 30, 2003; 70 FR 
3891, Jan. 27, 2005; 72 FR 46836, Aug. 21, 2007]

[[Page 66]]



Sec. 1.76  Application data sheet.

    (a) Application data sheet. An application data sheet is a sheet or 
sheets, that may be voluntarily submitted in either provisional or 
nonprovisional applications, which contains bibliographic data, arranged 
in a format specified by the Office. An application data sheet must be 
titled ``Application Data Sheet'' and must contain all of the section 
headings listed in paragraph (b) of this section, with any appropriate 
data for each section heading. If an application data sheet is provided, 
the application data sheet is part of the provisional or nonprovisional 
application for which it has been submitted.
    (b) Bibliographic data. Bibliographic data as used in paragraph (a) 
of this section includes:
    (1) Applicant information. This information includes the name, 
residence, mailing address, and citizenship of each applicant (Sec. 
1.41(b)). The name of each applicant must include the family name, and 
at least one given name without abbreviation together with any other 
given name or initial. If the applicant is not an inventor, this 
information also includes the applicant's authority (Sec. Sec. 1.42, 
1.43, and 1.47) to apply for the patent on behalf of the inventor.
    (2) Correspondence information. This information includes the 
correspondence address, which may be indicated by reference to a 
customer number, to which correspondence is to be directed (see Sec. 
1.33(a)).
    (3) Application information. This information includes the title of 
the invention, a suggested classification, by class and subclass, the 
Technology Center to which the subject matter of the invention is 
assigned, the total number of drawing sheets, a suggested drawing figure 
for publication (in a nonprovisional application), any docket number 
assigned to the application, the type of application (e.g., utility, 
plant, design, reissue, provisional), whether the application discloses 
any significant part of the subject matter of an application under a 
secrecy order pursuant to Sec. 5.2 of this chapter (see Sec. 5.2(c)), 
and, for plant applications, the Latin name of the genus and species of 
the plant claimed, as well as the variety denomination. The suggested 
classification and Technology Center information should be supplied for 
provisional applications whether or not claims are present. If claims 
are not present in a provisional application, the suggested 
classification and Technology Center should be based upon the 
disclosure.
    (4) Representative information. This information includes the 
registration number of each practitioner having a power of attorney in 
the application (preferably by reference to a customer number). 
Providing this information in the application data sheet does not 
constitute a power of attorney in the application (see Sec. 1.32).
    (5) Domestic priority information. This information includes the 
application number, the filing date, and relationship of each 
application for which a benefit is claimed under 35 U.S.C. 120, 121, or 
365(c). This information includes the application number and the filing 
date of each application for which a benefit is claimed under 35 U.S.C. 
119(e). Providing this information in the application data sheet also 
constitutes the specific reference required by 35 U.S.C. 119(e) or 120, 
and Sec. 1.78(b)(3) or Sec. 1.78(d)(3), and need not otherwise be made 
part of the specification.
    (6) Foreign priority information. This information includes the 
application number, country, and filing date of each foreign application 
for which priority is claimed, as well as any foreign application having 
a filing date before that of the application for which priority is 
claimed. Providing this information in the application data sheet 
constitutes the claim for priority as required by 35 U.S.C. 119(b) and 
Sec. 1.55(a).
    (7) Assignee information. This information includes the name (either 
person or juristic entity) and address of the assignee of the entire 
right, title, and interest in an application. Providing this information 
in the application data sheet does not substitute for compliance with 
any requirement of part 3 of this chapter to have an assignment recorded 
by the Office.
    (c) Supplemental application data sheets. Supplemental application 
data sheets:
    (1) May be subsequently supplied prior to payment of the issue fee 
either

[[Page 67]]

to correct or update information in a previously submitted application 
data sheet, or an oath or declaration under Sec. 1.63 or Sec. 1.67, 
except that inventorship changes are governed by Sec. 1.48, 
correspondence changes are governed by Sec. 1.33(a), and citizenship 
changes are governed by Sec. 1.63 or Sec. 1.67; and
    (2) Must be titled ``Supplemental Application Data Sheet,'' include 
all of the section headings listed in paragraph (b) of this section, 
include all appropriate data for each section heading, and must identify 
the information that is being changed, preferably with underlining for 
insertions, and strike-through or brackets for text removed.
    (d) Inconsistencies between application data sheet and other 
documents. For inconsistencies between information that is supplied by 
both an application data sheet under this section and other documents.
    (1) The latest submitted information will govern notwithstanding 
whether supplied by an application data sheet, an amendment to the 
specification, a designation of a correspondence address, or by a Sec. 
1.63 or Sec. 1.67 oath or declaration, except as provided by paragraph 
(d)(3) of this section;
    (2) The information in the application data sheet will govern when 
the inconsistent information is supplied at the same time by an 
amendment to the specification, a designation of correspondence address, 
or a Sec. 1.63 or Sec. 1.67 oath or declaration, except as provided by 
paragraph (d)(3) of this section;
    (3) The oath or declaration under Sec. 1.63 or Sec. 1.67 governs 
inconsistencies with the application data sheet in the naming of 
inventors (Sec. 1.41(a)(1)) and setting forth their citizenship (35 
U.S.C. 115);
    (4) The Office will capture bibliographic information from the 
application data sheet (notwithstanding whether an oath or declaration 
governs the information). Thus, the Office shall generally, for example, 
not look to an oath or declaration under Sec. 1.63 to see if the 
bibliographic information contained therein is consistent with the 
bibliographic information captured from an application data sheet 
(whether the oath or declaration is submitted prior to or subsequent to 
the application data sheet). Captured bibliographic information derived 
from an application data sheet containing errors may be corrected if 
applicant submits a request therefor and a supplemental application data 
sheet.

[65 FR 54668, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000; 
69 FR 56540, Sept. 21, 2004; 70 FR 54266, Sept. 14, 2005;; 72 FR 46837, 
Aug. 21, 2007]



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) Application data sheet (see Sec. 1.76).
    (4) Specification.
    (5) Drawings.
    (6) Executed oath or declaration.
    (b) The specification should include the following sections in 
order:
    (1) Title of the invention, which may be accompanied by an 
introductory portion stating the name, citizenship, and residence of the 
applicant (unless included in the application data sheet).
    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or development.
    (4) The names of the parties to a joint research agreement.
    (5) Reference to a ``Sequence Listing,'' a table, or a computer 
program listing appendix submitted on a compact disc and an 
incorporation-by-reference of the material on the compact disc (see 
Sec. 1.52(e)(5)). The total number of compact discs including 
duplicates and the files on each compact disc shall be specified.
    (6) Background of the invention.
    (7) Brief summary of the invention.
    (8) Brief description of the several views of the drawing.
    (9) Detailed description of the invention.
    (10) A claim or claims.
    (11) Abstract of the disclosure.
    (12) ``Sequence Listing,'' if on paper (see Sec. Sec. 1.821 through 
1.825).
    (c) The text of the specification sections defined in paragraphs 
(b)(1) through (b)(12) of this section, if applicable, should be 
preceded by a section

[[Page 68]]

heading in uppercase and without underlining or bold type.

[65 FR 54668, Sept. 8, 2000, as amended at 70 FR 1823, Jan. 11, 2005]



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

    (a) Definitions--(1) Continuing application. A continuing 
application is a nonprovisional application or an international 
application designating the United States of America that claims the 
benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed 
nonprovisional application or international application designating the 
United States of America. An application that does not claim the benefit 
under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application is not 
a continuing application even if the application claims the benefit 
under 35 U.S.C. 119(e) of a provisional application, claims priority 
under 35 U.S.C. 119(a)-(d) or 365(b) to a foreign application, or claims 
priority under 35 U.S.C. 365(a) or (b) to an international application 
designating at least one country other than the United States of 
America.
    (2) Divisional application. A divisional application is a continuing 
application as defined in paragraph (a)(1) of this section that 
discloses and claims only an invention or inventions that were disclosed 
and claimed in a prior-filed application, but were subject to a 
requirement to comply with the requirement of unity of invention under 
PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121 in the 
prior-filed application, and were not elected for examination and were 
not examined in any prior-filed application.
    (3) Continuation application. A continuation application is a 
continuing application as defined in paragraph (a)(1) of this section 
that discloses and claims only an invention or inventions that were 
disclosed in the prior-filed application.
    (4) Continuation-in-part application. A continuation-in-part 
application is a continuing application as defined in paragraph (a)(1) 
of this section that discloses subject matter that was not disclosed in 
the prior-filed application.
    (b) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed 
provisional application. A nonprovisional application, other than for a 
design patent, or an international application designating the United 
States of America may claim the benefit of one or more prior-filed 
provisional applications under the conditions set forth in 35 U.S.C. 
119(e) and paragraph (b) of this section.
    (1) The nonprovisional application or international application 
designating the United States of America must be filed not later than 
twelve months after the date on which the provisional application was 
filed. This twelve-month period is subject to 35 U.S.C. 21(b) and Sec. 
1.7(a).
    (2) Each prior-filed provisional application must name as an 
inventor at least one inventor named in the later-filed application. In 
addition, each prior-filed provisional application must be entitled to a 
filing date as set forth in Sec. 1.53(c) and the basic filing fee set 
forth in Sec. 1.16(d) must have been paid for such provisional 
application within the time period set forth in Sec. 1.53(g).
    (3) Any nonprovisional application or international application 
designating the United States of America that claims the benefit of one 
or more prior-filed provisional applications must contain or be amended 
to contain a reference to each such prior-filed provisional application, 
identifying it by the provisional application number (consisting of 
series code and serial number). If the later-filed application is a 
nonprovisional application, the reference required by this paragraph 
must be included in an application data sheet (Sec. 1.76), or the 
specification must contain or be amended to contain such reference in 
the first sentence(s) following the title.
    (4) The reference required by paragraph (b)(3) of this section must 
be submitted during the pendency of the later-filed application. If the 
later-filed application is an application filed under 35 U.S.C. 111(a), 
this reference must also be submitted within the later of four months 
from the actual filing date of the later-filed application or sixteen 
months from the filing date of the prior-filed provisional application. 
If the later-filed application is a nonprovisional application which 
entered the national stage from an international application after 
compliance

[[Page 69]]

with 35 U.S.C. 371, this reference must also be submitted within the 
later of four months from the date on which the national stage commenced 
under 35 U.S.C. 371(b) or (f) in the later-filed international 
application or sixteen months from the filing date of the prior-filed 
provisional application. Except as provided in paragraph (c) of this 
section, failure to timely submit the reference is considered a waiver 
of any benefit under 35 U.S.C. 119(e) of the prior-filed provisional 
application. The time periods in this paragraph do not apply if the 
later-filed application is:
    (i) An application filed under 35 U.S.C. 111(a) before November 29, 
2000; or
    (ii) An international application filed under 35 U.S.C. 363 before 
November 29, 2000.
    (5) If the prior-filed provisional application was filed in a 
language other than English and both an English-language translation of 
the prior-filed provisional application and a statement that the 
translation is accurate were not previously filed in the prior-filed 
provisional application, applicant will be notified and given a period 
of time within which to file the translation and the statement in the 
prior-filed provisional application. If the notice is mailed in a 
pending nonprovisional application, a timely reply to such a notice must 
include the filing in the nonprovisional application of either a 
confirmation that the translation and statement were filed in the 
provisional application, or an amendment or supplemental application 
data sheet withdrawing the benefit claim, or the nonprovisional 
application will be abandoned. The translation and statement may be 
filed in the provisional application, even if the provisional 
application has become abandoned.
    (c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a 
prior-filed provisional application. If the reference required by 35 
U.S.C. 119(e) and paragraph (b)(3) of this section is presented in a 
nonprovisional application after the time period provided by paragraph 
(b)(4) of this section, the claim under 35 U.S.C. 119(e) for the benefit 
of a prior-filed provisional application may be accepted if submitted 
during the pendency of the later-filed application and if the reference 
identifying the prior-filed application by provisional application 
number was unintentionally delayed. A petition to accept an 
unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of 
a prior-filed provisional application must be accompanied by:
    (1) The reference required by 35 U.S.C. 119(e) and paragraph (b)(3) 
of this section to the prior-filed provisional application, unless 
previously submitted;
    (2) The surcharge set forth in Sec. 1.17(t); and
    (3) A statement that the entire delay between the date the claim was 
due under paragraph (b)(4) of this section and the date the claim was 
filed was unintentional. The Director may require additional information 
where there is a question whether the delay was unintentional.
    (d) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a 
prior-filed nonprovisional or international application. A 
nonprovisional application (including an international application that 
has entered the national stage after compliance with 35 U.S.C. 371) may 
claim the benefit of one or more prior-filed copending nonprovisional 
applications or international applications designating the United States 
of America under the conditions set forth in 35 U.S.C. 120 and paragraph 
(d) of this section.
    (1) A nonprovisional application that claims the benefit of one or 
more prior-filed copending nonprovisional applications or international 
applications designating the United States of America must satisfy the 
conditions set forth in at least one of paragraphs (d)(1)(i) through 
(d)(1)(vi) of this section. The Office will refuse to enter, or will 
delete if present, any specific reference to a prior-filed application 
that is not permitted by at least one of paragraphs (d)(1)(i) through 
(d)(1)(vi) of this section. The Office's entry of, or failure to delete, 
a specific reference to a prior-filed application that is not permitted 
by at least one of paragraphs (d)(1)(i) through (d)(1)(vi) of this 
section does not constitute a waiver of the provisions of paragraph 
(d)(1) of this section.
    (i)(A) The nonprovisional application is either a continuation 
application as

[[Page 70]]

defined in paragraph (a)(3) of this section or a continuation-in-part 
application as defined in paragraph (a)(4) of this section that claims 
the benefit under 35 U.S.C. 120, 121, or 365(c) of no more than two 
prior-filed applications; and
    (B) Any application whose benefit is claimed under 35 U.S.C. 120, 
121, or 365(c) in such nonprovisional application has its benefit 
claimed in no more than one other nonprovisional application, not 
including any nonprovisional application that satisfies the conditions 
set forth in paragraph (d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this 
section.
    (ii)(A) The nonprovisional application is a divisional application 
as defined in paragraph (a)(2) of this section that claims the benefit 
under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application that 
was subject to a requirement to comply with the requirement of unity of 
invention under PCT Rule 13 or a requirement for restriction under 35 
U.S.C. 121; and
    (B) The divisional application contains only claims directed to an 
invention or inventions that were identified in such requirement to 
comply with the requirement of unity of invention or requirement for 
restriction but were not elected for examination and were not examined 
in the prior-filed application or in any other nonprovisional 
application, except for a nonprovisional application that claims the 
benefit under 35 U.S.C. 120, 121, or 365(c) of such divisional 
application and satisfies the conditions set forth in paragraph 
(d)(1)(iii) or (d)(1)(vi) of this section.
    (iii)(A) The nonprovisional application is a continuation 
application as defined in paragraph (a)(3) of this section that claims 
the benefit under 35 U.S.C. 120, 121, or 365(c) of a divisional 
application that satisfies the conditions set forth in paragraph 
(d)(1)(ii) of this section;
    (B) The nonprovisional application discloses and claims only an 
invention or inventions that were disclosed and claimed in such 
divisional application;
    (C) The nonprovisional application claims the benefit under 35 
U.S.C. 120, 121, or 365(c) of only the divisional application, any 
application to which such divisional application claims benefit under 35 
U.S.C. 120, 121, or 365(c) in compliance with the conditions set forth 
in paragraph (d)(1)(ii) of this section, and no more than one 
intervening prior-filed nonprovisional application; and
    (D) The divisional application whose benefit is claimed under 35 
U.S.C. 120, 121, or 365(c) in such nonprovisional application has its 
benefit claimed in no more than one other nonprovisional application, 
not including any other divisional application that satisfies the 
conditions set forth in paragraph (d)(1)(ii) or any nonprovisional 
application that claims the benefit under 35 U.S.C. 120 or 365(c) of 
such other divisional application and satisfies the conditions set forth 
in paragraph (d)(1)(iii) or (d)(1)(vi) of this section.
    (iv)(A) The nonprovisional application claims benefit under 35 
U.S.C. 120 or 365(c) of a prior-filed international application 
designating the United States of America, and a Demand has not been 
filed and the basic national fee (Sec. 1.492(a)) has not been paid in 
the prior-filed international application and the prior-filed 
international application does not claim the benefit of any other 
nonprovisional application or international application designating the 
United States of America;
    (B) The nonprovisional application is either a continuation 
application as defined in paragraph (a)(3) of this section or a 
continuation-in-part application as defined in paragraph (a)(4) of this 
section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of 
no more than three prior-filed applications; and
    (C) Any application whose benefit is claimed under 35 U.S.C. 120, 
121, or 365(c) in such nonprovisional application has its benefit 
claimed in no more than two other nonprovisional applications, not 
including any nonprovisional application that satisfies the conditions 
set forth in paragraph (d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this 
section.
    (v)(A) The nonprovisional application claims benefit under 35 U.S.C. 
120 or 365(c) of a prior-filed nonprovisional application filed under 35 
U.S.C. 111(a), and such nonprovisional application became abandoned due 
to the failure to timely reply to an Office notice issued under Sec. 
1.53(f) and does not claim the

[[Page 71]]

benefit of any other nonprovisional application or international 
application designating the United States of America;
    (B) The nonprovisional application is either a continuation 
application as defined in paragraph (a)(3) of this section or a 
continuation-in-part application as defined in paragraph (a)(4) of this 
section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of 
no more than three prior-filed applications; and
    (C) Any application whose benefit is claimed under 35 U.S.C. 120, 
121, or 365(c) in such nonprovisional application has its benefit 
claimed in no more than two other nonprovisional applications, not 
including any nonprovisional application that satisfies the conditions 
set forth in paragraph (d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this 
section.
    (vi) The nonprovisional application is a continuing application as 
defined in paragraph (a)(1) of this section that claims the benefit 
under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application, is 
filed to obtain consideration of an amendment, argument, or evidence 
that could not have been submitted during the prosecution of the prior-
filed application, and does not satisfy the conditions set forth in any 
of paragraphs (d)(1)(i) through (d)(1)(v) of this section. A petition 
must be filed in such nonprovisional application that is accompanied by 
the fee set forth in Sec. 1.17(f) and a showing that the amendment, 
argument, or evidence sought to be entered could not have been submitted 
during the prosecution of the prior-filed application. If the continuing 
application is an application filed under 35 U.S.C. 111(a), this 
petition must be submitted within four months from the actual filing 
date of the continuing application. If the continuing application is a 
nonprovisional application which entered the national stage from an 
international application after compliance with 35 U.S.C. 371, this 
petition must be submitted within four months from the date on which the 
national stage commenced under 35 U.S.C. 371(b) or (f) in the 
international application.
    (2) Each prior-filed application must name as an inventor at least 
one inventor named in the later-filed application. In addition, each 
prior-filed application must either 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) A nonprovisional application under 35 U.S.C. 111(a) that is 
entitled to a filing date as set forth in Sec. 1.53(b) or Sec. 1.53(d) 
for which the basic filing fee set forth in Sec. 1.16 has been paid 
within the pendency of the application.
    (3) Except for a continued prosecution application filed under Sec. 
1.53(d), any nonprovisional application, or international application 
designating the United States of America, that claims the benefit of one 
or more prior-filed nonprovisional applications or international 
applications designating the United States of America must contain or be 
amended to contain a reference to each such prior-filed application, 
identifying it by application number (consisting of the series code and 
serial number) or international application number and international 
filing date. The reference must also identify the relationship of the 
applications (i.e., whether the later-filed application is a 
continuation, divisional, or continuation-in-part of the prior-filed 
nonprovisional application or international application). If an 
application is identified as a continuation-in-part application, the 
applicant must identify the claim or claims in the continuation-in-part 
application for which the subject matter is disclosed in the manner 
provided by the first paragraph of 35 U.S.C. 112 in the prior-filed 
application. If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be included 
in an application data sheet (Sec. 1.76), or the specification must 
contain or be amended to contain such reference in the first sentence(s) 
following the title.
    (4) The reference required by 35 U.S.C. 120 and paragraph (d)(3) of 
this section must be submitted during the pendency of the later-filed 
application. If the later-filed application is an application filed 
under 35 U.S.C. 111(a), this reference must also be submitted within the 
later of four months from the actual filing date of the later-filed 
application or sixteen months from the

[[Page 72]]

filing date of the prior-filed application. If the later-filed 
application is a nonprovisional application which entered the national 
stage from an international application after compliance with 35 U.S.C. 
371, this reference must also be submitted within the later of four 
months from the date on which the national stage commenced under 35 
U.S.C. 371(b) or (f) in the later-filed international application or 
sixteen months from the filing date of the prior-filed application. 
Except as provided in paragraph (e) of this section, failure to timely 
submit the reference required by 35 U.S.C. 120 and paragraph (d)(3) of 
this section is considered a waiver of any benefit under 35 U.S.C. 120, 
121, or 365(c) to the prior-filed application. The time periods in this 
paragraph do not apply if the later-filed application is:
    (i) An application for a design patent;
    (ii) An application filed under 35 U.S.C. 111(a) before November 29, 
2000; or
    (iii) An international application filed under 35 U.S.C. 363 before 
November 29, 2000.
    (5) 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-filed application. The identification of an application by 
application number under this section is the identification of every 
application assigned that application number necessary for a specific 
reference required by 35 U.S.C. 120 to every such application assigned 
that application number.
    (6) Cross-references to other related applications may be made when 
appropriate. Cross-references to applications for which a benefit is not 
claimed under title 35, United States Code, must be located in a 
paragraph that is separate from the paragraph containing the references 
to applications for which a benefit is claimed under 35 U.S.C. 119(e), 
120, 121, or 365(c) that is required by 35 U.S.C. 119(e) or 120 and this 
section.
    (e) Delayed claims under 35 U.S.C. 120, 121, or 365(c) for the 
benefit of a prior-filed nonprovisional application or international 
application. If the reference required by 35 U.S.C. 120 and paragraph 
(d)(3) of this section is presented after the time period provided by 
paragraph (d)(4) of this section, the claim under 35 U.S.C. 120, 121, or 
365(c) for the benefit of a prior-filed copending nonprovisional 
application or international application designating the United States 
of America may be accepted if the reference identifying the prior-filed 
application by application number or international application number 
and international filing date was unintentionally delayed. A petition to 
accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or 
365(c) for the benefit of a prior-filed application must be accompanied 
by:
    (1) The reference required by 35 U.S.C. 120 and paragraph (d)(3) of 
this section to the prior-filed application, unless previously 
submitted;
    (2) The surcharge set forth in Sec. 1.17(t); and
    (3) A statement that the entire delay between the date the claim was 
due under paragraph (d)(4) of this section and the date the claim was 
filed was unintentional. The Director may require additional information 
where there is a question whether the delay was unintentional.
    (f) Applications and patents naming at least one inventor in common. 
(1)(i) The applicant in a nonprovisional application that has not been 
allowed (Sec. 1.311) must identify by application number (i.e., series 
code and serial number) and patent number (if applicable) each other 
pending or patented nonprovisional application, in a separate paper, for 
which the following conditions are met:
    (A) The nonprovisional application has a filing date that is the 
same as or within two months of the filing date of the other pending or 
patented nonprovisional application, taking into account any filing date 
for which a benefit is sought under title 35, United States Code;
    (B) The nonprovisional application names at least one inventor in 
common with the other pending or patented nonprovisional application; 
and
    (C) The nonprovisional application is owned by the same person, or 
subject to an obligation of assignment to the same person, as the other 
pending or patented nonprovisional application.

[[Page 73]]

    (ii) The identification of such one or more other pending or 
patented nonprovisional applications if required by paragraph (f)(1)(i) 
of this section must be submitted within the later of:
    (A) Four months from the actual filing date in a nonprovisional 
application filed under 35 U.S.C. 111(a);
    (B) Four months from the date on which the national stage commenced 
under 35 U.S.C. 371(b) or (f) in a nonprovisional application entering 
the national stage from an international application under 35 U.S.C. 
371; or
    (C) Two months from the mailing date of the initial filing receipt 
in such other nonprovisional application for which identification is 
required by paragraph (f)(1)(i) of this section.
    (2)(i) A rebuttable presumption shall exist that a nonprovisional 
application contains at least one claim that is not patentably distinct 
from at least one of the claims in another pending or patented 
nonprovisional application if the following conditions are met:
    (A) The nonprovisional application has a filing date that is the 
same as the filing date of the other pending or patented nonprovisional 
application, taking into account any filing date for which a benefit is 
sought under title 35, United States Code;
    (B) The nonprovisional application names at least one inventor in 
common with the other pending or patented nonprovisional application;
    (C) The nonprovisional application is owned by the same person, or 
subject to an obligation of assignment to the same person, as the other 
pending or patented nonprovisional application; and
    (D) The nonprovisional application and the other pending or patented 
nonprovisional application contain substantial overlapping disclosure. 
Substantial overlapping disclosure exists if the other pending or 
patented nonprovisional application has written description support 
under the first paragraph of 35 U.S.C. 112 for at least one claim in the 
nonprovisional application.
    (ii) If the conditions specified in paragraph (f)(2)(i) of this 
section exist, the applicant in the nonprovisional application must, 
unless the nonprovisional application has been allowed (Sec. 1.311), 
take one of the following actions within the time period specified in 
paragraph (f)(2)(iii) of this section:
    (A) Rebut this presumption by explaining how the application 
contains only claims that are patentably distinct from the claims in 
each of such other pending nonprovisional applications or patents; or
    (B) Submit a terminal disclaimer in accordance with Sec. 1.321(c). 
In addition, where one or more other pending nonprovisional applications 
have been identified, the applicant must explain why there are two or 
more pending nonprovisional applications naming at least one inventor in 
common and owned by the same person, or subject to an obligation of 
assignment to the same person, which contain patentably indistinct 
claims.
    (iii) If the conditions specified in paragraph (f)(2)(i) of this 
section exist, the applicant in the nonprovisional application must, 
unless the nonprovisional application has been allowed (Sec. 1.311), 
take one of the actions specified in paragraph (f)(2)(ii) of this 
section within the later of:
    (A) Four months from the actual filing date of a nonprovisional 
application filed under 35 U.S.C. 111(a);
    (B) Four months from the date on which the national stage commenced 
under 35 U.S.C. 371(b) or (f) in a nonprovisional application entering 
the national stage from an international application under 35 U.S.C. 
371;
    (C) The date on which a claim that is not patentably distinct from 
at least one of the claims in the one or more other pending or patented 
nonprovisional applications is presented; or
    (D) Two months from the mailing date of the initial filing receipt 
in the one or more other pending or patented nonprovisional 
applications.
    (3) In the absence of good and sufficient reason for there being two 
or more pending nonprovisional applications owned by the same person, or 
subject to an obligation of assignment to the same person, which contain 
patentably indistinct claims, the Office may require elimination of the 
patentably indistinct claims from all but one of the applications.
    (g) Applications or patents under reexamination naming different 
inventors and

[[Page 74]]

containing patentably indistinct claims. If an application or a patent 
under reexamination and at least one other application naming different 
inventors are owned by the same party and contain patentably indistinct 
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 Office 
may require the assignee 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.
    (h) Parties to a joint research agreement. If an application 
discloses or is amended to disclose the names of parties to a joint 
research agreement under 35 U.S.C. 103(c)(2)(C), the parties to the 
joint research agreement are considered to be the same person for 
purposes of this section. If the application is amended to disclose the 
names of parties to a joint research agreement, the identification of 
such one or more other nonprovisional applications as required by 
paragraph (f)(1) of this section must be submitted with such amendment 
unless such identification is or has been submitted within the four-
month period specified in paragraph (f)(1) of this section.
    (i) Time periods not extendable: The time periods set forth in this 
section are not extendable.

[72 FR 46837, Aug. 21, 2007]



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).
    (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). In addition, tables and sequence listings that are 
included in the specification are, except for applications filed under 
35 U.S.C. 371, not permitted to be included in the drawings.

[[Page 75]]

    (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; 69 FR 56541, Sept. 21, 2004]



Sec. 1.84  Standards for drawings.

    (a) Drawings. There are two acceptable categories for presenting 
drawings in utility and design 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 or design patent application or the subject 
matter of a statutory invention registration. The color drawings must be 
of sufficient quality such that all details in the drawings are 
reproducible in black and white in the printed patent. Color drawings 
are not permitted in international applications (see PCT Rule 11.13), or 
in an application, or copy thereof, submitted under the Office 
electronic filing system. The Office will accept color drawings in 
utility or design 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(h);
    (ii) Three (3) sets of color drawings; and
    (iii) An amendment to the specification to insert (unless the 
specification contains or has been previously amended to contain) the 
following language as the first paragraph of the brief description of 
the drawings:

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

    (b) Photographs.--(1) Black and white. Photographs, including 
photocopies of photographs, are not ordinarily permitted in utility and 
design patent applications. The Office will accept photographs in 
utility and design patent applications, however, if photographs are the 
only practicable medium for illustrating the claimed invention. For 
example, photographs or photomicrographs of: electrophoresis gels, blots 
(e.g., immunological, western, Southern, and northern), autoradiographs, 
cell cultures (stained and unstained), histological tissue cross 
sections (stained and unstained), animals, plants, in vivo imaging, thin 
layer chromatography plates, crystalline structures, and, in a design 
patent application, ornamental effects, are acceptable. If the subject 
matter of the application admits of illustration by a drawing, the 
examiner may require a drawing in place of the photograph. The 
photographs must be of sufficient quality so that all details in the 
photographs are reproducible in the printed patent.
    (2) Color photographs. Color photographs will be accepted in utility 
and design patent applications if the conditions for accepting color 
drawings and black and white photographs have been satisfied. See 
paragraphs (a)(2) and (b)(1) of this section.
    (c) Identification of drawings. Identifying indicia should be 
provided, and if provided, should include the title of the invention, 
inventor's name, and application number, or docket number (if any) if an 
application number has not been assigned to the application. If this 
information is provided, it must be placed on the front of each sheet 
within the top margin. Each drawing sheet submitted after the filing 
date of an application must be identified as either

[[Page 76]]

``Replacement Sheet'' or ``New Sheet'' pursuant to Sec. 1.121(d). If a 
marked-up copy of any amended drawing figure including annotations 
indicating the changes made is filed, such marked-up copy must be 
clearly labeled as ``Annotated Sheet'' pursuant to Sec. 1.121(d)(1).
    (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 reasonably free from cracks, creases, and folds. Only 
one side of the sheet may be used for the drawing. Each sheet must be 
reasonably free from erasures and must be free from alterations, 
overwritings, and interlineations. Photographs must be developed on 
paper meeting the sheet-size requirements of paragraph (f) of this 
section and the margin requirements of paragraph (g) of this section. 
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 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

[[Page 77]]

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) Front page view. The drawing must contain as many views as 
necessary to show the invention. One of the views should be suitable for 
inclusion on the front page of the patent application publication and 
patent as the illustration of the invention. Views must not be connected 
by projection lines and must not contain center lines. Applicant may 
suggest a single view (by figure number) for inclusion on the front page 
of the patent application publication and patent.
    (k) Scale. 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. 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.
    (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

[[Page 78]]

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 subject to 
approval by the Office, or may be required by the examiner where 
necessary for understanding of the drawing. 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.
    (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

[[Page 79]]

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, 
``(copyright) 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.
    (x) Holes. No holes should be made by applicant in the drawing 
sheets.
    (y) Types of drawings. See Sec. 1.152 for design drawings, Sec. 
1.165 for plant drawings, and Sec. 1.173(a)(2) 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; 65 FR 
54669, Sept. 8, 2000; 65 FR 57055, Sept. 20, 2000; 69 FR 56541, Sept. 
21, 2004; 70 FR 3891, Jan. 27, 2005]



Sec. 1.85  Corrections to drawings.

    (a) A utility or plant application will not be placed on the files 
for examination until objections to the drawings have been corrected. 
Except as provided in Sec. 1.215(c), any patent application publication 
will not include drawings filed after the application has been placed on 
the files for examination. Unless applicant is otherwise notified in an 
Office action, objections to the drawings in a utility or plant 
application will not be held in abeyance, and a request to hold 
objections to the drawings in abeyance will not be considered a bona 
fide attempt to advance the application to final action

[[Page 80]]

(Sec. 1.135(c)). If a drawing in a design application meets the 
requirements of Sec. 1.84(e), (f), and (g) and is suitable for 
reproduction, but is not otherwise in compliance with Sec. 1.84, the 
drawing may be admitted for examination.
    (b) The Office will not release drawings for purposes of correction. 
If corrections are necessary, new corrected drawings must be submitted 
within the time set by the Office.
    (c) If a corrected drawing is required or if a drawing does not 
comply with Sec. 1.84 at the time an application is allowed, the Office 
may notify the applicant and set a three-month period of time from the 
mail date of the notice of allowability within which the applicant must 
file a corrected drawing in compliance with Sec. 1.84 to avoid 
abandonment. This time period is not extendable under Sec. 1.136(a) or 
Sec. 1.136(b).

[65 FR 54670, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000; 
69 FR 56541, Sept. 21, 2004]



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 fee set forth in Sec. 1.17(h); 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.
    (c) Unless the model or exhibit substantially conforms to the 
requirements of Sec. 1.52 or Sec. 1.84 under paragraph (a)(1) of this 
section, it must be accompanied by photographs that show multiple views 
of the material features of the model or exhibit and that substantially 
conform to the requirements of Sec. 1.84.

[62 FR 53190, Oct. 10, 1997, as amended at 65 FR 54670, Sept. 8, 2000; 
69 FR 56541, Sept. 21, 2004]



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.

    (a) Models, exhibits, or specimens may be returned to the applicant 
if no longer necessary for the conduct of business before the Office. 
When applicant is notified that a model, exhibit, or specimen is no 
longer necessary for the conduct of business before the Office and will 
be returned, applicant must arrange for the return of the model, 
exhibit, or specimen at the applicant's expense. The Office will dispose 
of perishables without notice to applicant unless applicant notifies the 
Office upon submission of the model, exhibit or specimen that a return 
is desired and makes arrangements for its return promptly upon 
notification by the Office that the model, exhibit or specimen is no 
longer necessary for the conduct of business before the Office.
    (b) Applicant is responsible for retaining the actual model, 
exhibit, or specimen for the enforceable life of any patent resulting 
from the application. The provisions of this paragraph do not apply to a 
model or exhibit that substantially conforms to the requirements of 
Sec. 1.52 or Sec. 1.84, where the model or exhibit has been described 
by photographs that substantially conform to Sec. 1.84, or where the 
model, exhibit or specimen is perishable.
    (c) Where applicant is notified, pursuant to paragraph (a) of this 
section, of the need to arrange for return of a model, exhibit or 
specimen, applicant must arrange for the return within the

[[Page 81]]

period set in such notice, to avoid disposal of the model, exhibit or 
specimen by the Office. Extensions of time are available under Sec. 
1.136, except in the case of perishables. Failure to establish that the 
return of the item has been arranged for within the period set or 
failure to have the item removed from Office storage within a reasonable 
amount of time notwithstanding any arrangement for return, will permit 
the Office to dispose of the model, exhibit or specimen.

[69 FR 56542, Sept. 21, 2004]



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 the Office specially authorized by the Director.



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 in 300 lines or fewer, with each line of 72 
characters or fewer, it may 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.
    (ii) Any listing having more than 60 lines of code that is submitted 
as part of the specification must be positioned at the end of the 
description but before the claims. Any amendment must be made by way of 
submission of a substitute sheet.
    (c) As an appendix which will not be printed: Any computer program 
listing may, and any computer program listing having over 300 lines (up 
to 72 characters per line) must, be submitted on a compact disc in 
compliance with Sec. 1.52(e). A compact disc containing such a computer 
program listing is to be referred to as a ``computer program listing 
appendix.'' The ``computer program listing appendix'' will not be part 
of the printed patent. The specification must include a reference to the 
``computer program listing appendix'' at the location indicated in Sec. 
1.77(b)(5).
    (1) Multiple computer program listings for a single application may 
be placed on a single compact disc. Multiple compact discs may be 
submitted for a single application if necessary. A separate compact disc 
is required for each application containing a computer program listing 
that must be submitted on a ``computer program listing appendix.''
    (2) The ``computer program listing appendix'' must be submitted on a 
compact disc that complies with Sec. 1.52(e) and the following 
specifications (no other format shall be allowed):
    (i) Computer Compatibility: IBM PC/XT/AT, or compatibles, or Apple 
Macintosh;
    (ii) Operating System Compatibility: MS-DOS, MS-Windows, Unix, or 
Macintosh;
    (iii) Line Terminator: ASCII Carriage Return plus ASCII Line Feed;
    (iv) Control Codes: the data must not be dependent on control 
characters or codes which are not defined in the ASCII character set; 
and
    (v) Compression: uncompressed data.

[61 FR 42804, Aug. 19, 1996, as amended at 65 FR 54670, Sept. 8, 2000; 
70 FR 54266, Sept. 14, 2005]

[[Page 82]]

                    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, the information disclosure statement must satisfy one of 
paragraphs (b), (c), or (d) of this section.
    (b) An information disclosure statement shall be considered by the 
Office if filed by the applicant within any one of the following time 
periods:
    (1) Within three months of the filing date of a national application 
other than a continued prosecution application under Sec. 1.53(d);
    (2) Within three months of the date of entry of the national stage 
as set forth in Sec. 1.491 in an international application;
    (3) Before the mailing of a first Office action on the merits; or
    (4) Before the mailing of a first Office action after the filing of 
a request for continued examination under Sec. 1.114.
    (c) An information disclosure statement shall be considered by the 
Office if filed after the period specified in paragraph (b) of this 
section, provided that the information disclosure statement is filed 
before the mailing date of any of a final action under Sec. 1.113, a 
notice of allowance under Sec. 1.311, or an action that otherwise 
closes prosecution in the application, and it is accompanied by one of:
    (1) The statement 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) The statement specified in paragraph (e) of this section; and
    (2) The fee set forth in Sec. 1.17(p).
    (e) A statement under this section must state either:
    (1) That each item of information contained in the information 
disclosure statement was first cited in any 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 certification 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.
    (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) If an information disclosure statement does not comply with 
either this section or Sec. 1.98, it 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; 65 FR 14872, Mar. 20, 2000; 65 FR 54670, Sept. 8, 2000]



Sec. 1.98  Content of information disclosure statement.

    (a) Any information disclosure statement filed under Sec. 1.97 
shall include the items listed in paragraphs (a)(1), (a)(2) and (a)(3) 
of this section.
    (1) A list of all patents, publications, applications, or other 
information submitted for consideration by the Office. U.S. patents and 
U.S. patent application publications must be listed in a

[[Page 83]]

section separately from citations of other documents. Each page of the 
list must include:
    (i) The application number of the application in which the 
information disclosure statement is being submitted;
    (ii) A column that provides a space, next to each document to be 
considered, for the examiner's initials; and
    (iii) A heading that clearly indicates that the list is an 
information disclosure statement.
    (2) A legible copy of:
    (i) Each foreign patent;
    (ii) Each publication or that portion which caused it to be listed, 
other than U.S. patents and U.S. patent application publications unless 
required by the Office;
    (iii) For each cited pending unpublished U.S. application, the 
application specification including the claims, and any drawing of the 
application, or that portion of the application which caused it to be 
listed including any claims directed to that portion; and
    (iv) All other information or that portion which caused it to be 
listed.
    (3)(i) 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 
applicant's specification or incorporated therein.
    (ii) A copy of the translation 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).
    (b)(1) Each U.S. patent listed in an information disclosure 
statement must be identified by inventor, patent number, and issue date.
    (2) Each U.S. patent application publication listed in an 
information disclosure statement shall be identified by applicant, 
patent application publication number, and publication date.
    (3) Each U.S. application listed in an information disclosure 
statement must be identified by the inventor, application number, and 
filing date.
    (4) Each foreign patent or published foreign patent application 
listed in an information disclosure statement must 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.
    (5) Each publication listed in an information disclosure statement 
must be identified by publisher, 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 as specified in 
paragraph (a) of this section may be submitted without copies of the 
other patents or publications, provided that it is stated that these 
other patents or publications are cumulative.
    (d) A copy of any patent, publication, pending U.S. application or 
other information, as specified in paragraph (a) of this section, listed 
in an information disclosure statement is required to be provided, even 
if the patent, publication, pending U.S. application or other 
information was previously submitted to, or cited by, the Office in an 
earlier application, unless:
    (1) The earlier application is properly identified in the 
information disclosure statement and is relied on for an earlier 
effective filing date under 35 U.S.C. 120; and
    (2) The information disclosure statement submitted in the earlier 
application complies with paragraphs (a) through (c) of this section.

[65 FR 54671, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000; 
68 FR 38628, June 30, 2003; 69 FR 56542, Sept. 21, 2004]



Sec. 1.99  Third-party submission in published application.

    (a) A submission by a member of the public of patents or 
publications relevant to a pending published application may be entered 
in the application file if the submission complies with the requirements 
of this section and the application is still pending when the submission 
and application file are brought before the examiner.

[[Page 84]]

    (b) A submission under this section must identify the application to 
which it is directed by application number and include:
    (1) The fee set forth in Sec. 1.17(p);
    (2) A list of the patents or publications submitted for 
consideration by the Office, including the date of publication of each 
patent or publication;
    (3) A copy of each listed patent or publication in written form or 
at least the pertinent portions; and
    (4) An English language translation of all the necessary and 
pertinent parts of any non-English language patent or publication in 
written form relied upon.
    (c) The submission under this section must be served upon the 
applicant in accordance with Sec. 1.248.
    (d) A submission under this section shall not include any 
explanation of the patents or publications, or any other information. 
The Office will not enter such explanation or information if included in 
a submission under this section. A submission under this section is also 
limited to ten total patents or publications.
    (e) A submission under this section must be filed within two months 
from the date of publication of the application (Sec. 1.215(a)) or 
prior to the mailing of a notice of allowance (Sec. 1.311), whichever 
is earlier. Any submission under this section not filed within this 
period is permitted only when the patents or publications could not have 
been submitted to the Office earlier, and must also be accompanied by 
the processing fee set forth in Sec. 1.17(i). A submission by a member 
of the public to a pending published application that does not comply 
with the requirements of this section will not be entered.
    (f) A member of the public may include a self-addressed postcard 
with a submission to receive an acknowledgment by the Office that the 
submission has been received. A member of the public filing a submission 
under this section will not receive any communications from the Office 
relating to the submission other than the return of a self-addressed 
postcard. In the absence of a request by the Office, an applicant has no 
duty to, and need not, reply to a submission under this section.

[65 FR 57056, Sept. 20, 2000; 65 FR 66502, Nov. 6, 2000, as amended at 
68 FR 38628, June 30, 2003]

                       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 
Director 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 which, in the 
opinion of the Director, 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:
    (1) The applicant's age or health; or
    (2) That the invention will materially:
    (i) Enhance the quality of the environment;
    (ii) Contribute to the development or conservation of energy 
resources; or
    (iii) Contribute to countering terrorism.
    (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 fee set forth in Sec. 1.17(h).

(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; 65 FR 54671, Sept. 8, 2000; 69 FR 56542, Sept. 21, 2004]

[[Page 85]]



Sec. 1.103  Suspension of action by the Office.

    (a) Suspension for cause. On request of the applicant, the Office 
may grant a suspension of action by the Office under this paragraph for 
good and sufficient cause. The Office will not suspend action if a reply 
by applicant to an Office action is outstanding. Any petition for 
suspension of action under this paragraph must specify a period of 
suspension not exceeding six months. Any petition for suspension of 
action under this paragraph must also include:
    (1) A showing of good and sufficient cause for suspension of action; 
and
    (2) The fee set forth in Sec. 1.17(g), unless such cause is the 
fault of the Office.
    (b) Limited suspension of action in a continued prosecution 
application (CPA) filed under Sec. 1.53(d). On request of the 
applicant, the Office may grant a suspension of action by the Office 
under this paragraph in a continued prosecution application filed under 
Sec. 1.53(d) for a period not exceeding three months. Any request for 
suspension of action under this paragraph must be filed with the request 
for an application filed under Sec. 1.53(d), specify the period of 
suspension, and include the processing fee set forth in Sec. 1.17(i).
    (c) Limited suspension of action after a request for continued 
examination (RCE) under Sec. 1.114. On request of the applicant, the 
Office may grant a suspension of action by the Office under this 
paragraph after the filing of a request for continued examination in 
compliance with Sec. 1.114 for a period not exceeding three months. Any 
request for suspension of action under this paragraph must be filed with 
the request for continued examination under Sec. 1.114, specify the 
period of suspension, and include the processing fee set forth in Sec. 
1.17(i).
    (d) Deferral of examination. On request of the applicant, the Office 
may grant a deferral of examination under the conditions specified in 
this paragraph for a period not extending beyond three years from the 
earliest filing date for which a benefit is claimed under title 35, 
United States Code. A request for deferral of examination under this 
paragraph must include the publication fee set forth in Sec. 1.18(d) 
and the processing fee set forth in Sec. 1.17(i). A request for 
deferral of examination under this paragraph will not be granted unless:
    (1) The application is an original utility or plant application 
filed under Sec. 1.53(b) or resulting from entry of an international 
application into the national stage after compliance with Sec. 1.495;
    (2) The applicant has not filed a nonpublication request under Sec. 
1.213(a), or has filed a request under Sec. 1.213(b) to rescind a 
previously filed nonpublication request;
    (3) The application is in condition for publication as provided in 
Sec. 1.211(c); and
    (4) The Office has not issued either an Office action under 35 
U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
    (e) Notice of suspension on initiative of the Office. The Office 
will notify applicant if the Office suspends action by the Office on an 
application on its own initiative.
    (f) Suspension of action for public safety or defense. The Office 
may suspend action by the Office by order of the Director if the 
following conditions are met:
    (1) The application is owned by the United States;
    (2) Publication of the invention may be detrimental to the public 
safety or defense; and
    (3) The appropriate department or agency requests such suspension.
    (g) Statutory invention registration. The Office will suspend action 
by the Office for the entire pendency of an application if the Office 
has accepted a request to publish a statutory invention registration in 
the application, except for purposes relating to patent interference 
proceedings under part 41, subpart D, of this title.

[65 FR 50104, Aug. 16, 2000, as amended at 65 FR 57056, Sept. 20, 2000; 
67 FR 523, Jan. 4, 2002; 69 FR 49999, Aug. 12, 2004; 69 FR 56542, Sept. 
21, 2004]



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

[[Page 86]]

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, rules, and other requirements, 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 in an Office action 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.
    (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.
    (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(e), (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 subject to an obligation of 
assignment to the same person at the time the claimed invention was 
made.
    (i) Subject matter developed by another person and a claimed 
invention shall be deemed to have been commonly owned by the same 
person, or subject to an obligation of assignment to the same person in 
any application and in any patent granted on or after December 10, 2004, 
if:
    (A) The claimed invention and the subject matter was made by or on 
behalf of parties to a joint research agreement that was in effect on or 
before the date the claimed invention was made;
    (B) The claimed invention was made as a result of activities 
undertaken within the scope of the joint research agreement; and
    (C) The application for patent for the claimed invention discloses 
or is amended to disclose the names of the parties to the joint research 
agreement.
    (ii) For purposes of paragraph (c)(4)(i) of this section, the term 
``joint research agreement'' means a written contract, grant, or 
cooperative agreement entered into by two or more persons or entities 
for the performance of experimental, developmental, or research work in 
the field of the claimed invention.
    (iii) To overcome a rejection under 35 U.S.C. 103(a) based upon 
subject matter which qualifies as prior art under only

[[Page 87]]

one or more of 35 U.S.C. 102(e), (f) or (g) via 35 U.S.C. 103(c)(2), the 
applicant must provide a statement to the effect that the prior art and 
the claimed invention were made by or on the behalf of parties to a 
joint research agreement, within the meaning of 35 U.S.C. 103(c)(3) and 
paragraph (c)(4)(ii) of this section, that was in effect on or before 
the date the claimed invention was made, and that the claimed invention 
was made as a result of activities undertaken within the scope of the 
joint research agreement.
    (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 will 
be stated. If domestic patent application publications are cited by the 
examiner, their publication number, publication date, and the names of 
the applicants will be stated. If foreign published applications or 
patents are cited, their nationality or country, numbers and dates, and 
the names of the patentees will be stated, and such other data will 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 will 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, will be given.
    (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 by the examiner to respond to any statement commenting 
on reasons for allowance does not give rise to any implication.

[62 FR 53191, Oct. 10, 1997, as amended at 65 FR 14872, Mar. 20, 2000; 
65 FR 54671, Sept. 8, 2000; 65 FR 57056, Sept. 20, 2000; 70 FR 1823, 
Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 72 FR 46841, Aug. 21, 2007]



Sec. 1.105  Requirements for information.

    (a)(1) In the course of examining or treating a matter in a pending 
or abandoned application filed under 35 U.S.C. 111 or 371 (including a 
reissue application), in a patent, or in a reexamination proceeding, the 
examiner or other Office employee may require the submission, from 
individuals identified under Sec. 1.56(c), or any assignee, of such 
information as may be reasonably necessary to properly examine or treat 
the matter, for example:
    (i) Commercial databases: The existence of any particularly relevant 
commercial database known to any of the inventors that could be searched 
for a particular aspect of the invention.

[[Page 88]]

    (ii) Search: Whether a search of the prior art was made, and if so, 
what was searched.
    (iii) Related information: A copy of any non-patent literature, 
published application, or patent (U.S. or foreign), by any of the 
inventors, that relates to the claimed invention.
    (iv) Information used to draft application: A copy of any non-patent 
literature, published application, or patent (U.S. or foreign) that was 
used to draft the application.
    (v) Information used in invention process: A copy of any non-patent 
literature, published application, or patent (U.S. or foreign) that was 
used in the invention process, such as by designing around or providing 
a solution to accomplish an invention result.
    (vi) Improvements: Where the claimed invention is an improvement, 
identification of what is being improved.
    (vii) In use: Identification of any use of the claimed invention 
known to any of the inventors at the time the application was filed 
notwithstanding the date of the use.
    (viii) Technical information known to applicant. Technical 
information known to applicant concerning the related art, the 
disclosure, the claimed subject matter, other factual information 
pertinent to patentability, or concerning the accuracy of the examiner's 
stated interpretation of such items.
    (ix) Support in the specification: Where (by page and line or 
paragraph number) in the specification of the application, or any 
application the benefit of whose filing date is sought under title 35, 
United States Code, there is written description support for the 
invention as defined in the claims (whether in independent or dependent 
form), and of the manner and process of making and using it, in such 
full, clear, concise, and exact terms as to enable any person skilled in 
the art to which it pertains, or with which it is most nearly connected, 
to make and use the invention, under the first paragraph of 35 U.S.C. 
112.
    (2) Where an assignee has asserted its right to prosecute pursuant 
to Sec. 3.71(a) of this chapter, matters such as paragraphs (a)(1)(i), 
(iii), and (vii) of this section may also be applied to such assignee.
    (3) Requirements for factual information known to applicant may be 
presented in any appropriate manner, for example:
    (i) A requirement for factual information;
    (ii) Interrogatories in the form of specific questions seeking 
applicant's factual knowledge; or
    (iii) Stipulations as to facts with which the applicant may agree or 
disagree.
    (4) Any reply to a requirement for information pursuant to this 
section that states either that the information required to be submitted 
is unknown to or is not readily available to the party or parties from 
which it was requested may be accepted as a complete reply.
    (b) The requirement for information of paragraph (a)(1) of this 
section may be included in an Office action, or sent separately.
    (c) A reply, or a failure to reply, to a requirement for information 
under this section will be governed by Sec. Sec. 1.135 and 1.136.

[65 FR 54671, Sept. 8, 2000, as amended at 69 FR 56542, Sept. 21, 2004; 
72 FR 46841, Aug. 21, 2007]



Sec. Sec. 1.106-1.109  [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 Office may require an applicant, patentee, or owner to identify the 
inventive entity of the subject matter of each claim in the application 
or patent when necessary for purposes of an Office proceeding. 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 Sec. Sec. 1.78 
and 1.130.

[72 FR 46841, Aug. 21, 2007]

              Action by Applicant and Further Consideration

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

[[Page 89]]



Sec. 1.111  Reply by applicant or patent owner to a non-final Office action.

    (a)(1) If the Office action after the first examination (Sec. 
1.104) is 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 and request reconsideration or further 
examination, with or without amendment. See Sec. Sec. 1.135 and 1.136 
for time for reply to avoid abandonment.
    (2) Supplemental replies. (i) A reply that is supplemental to a 
reply that is in compliance with Sec. 1.111(b) will not be entered as a 
matter of right except as provided in paragraph (a)(2)(ii) of this 
section. The Office may enter a supplemental reply if the supplemental 
reply is clearly limited to:
    (A) Cancellation of a claim(s);
    (B) Adoption of the examiner suggestion(s);
    (C) Placement of the application in condition for allowance;
    (D) Reply to an Office requirement made after the first reply was 
filed;
    (E) Correction of informalities (e.g., typographical errors); or
    (F) Simplification of issues for appeal.
    (ii) A supplemental reply will be entered if the supplemental reply 
is filed within the period during which action by the Office is 
suspended under Sec. 1.103(a) or (c).
    (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 reply to a rejection of claims in an application 
or patent under 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. The applicant or patent owner 
must also show how the amendments avoid such references or objections.

[46 FR 29182, May 29, 1981, as amended at 62 FR 53192, Oct. 10, 1997; 65 
FR 54672, Sept. 8, 2000; 69 FR 56542, Sept. 21, 2004; 70 FR 3891, Jan. 
27, 2005]



Sec. 1.112  Reconsideration before final action.

    After reply by applicant or patent owner (Sec. 1.111 or Sec. 
1.945) to a non-final action and any comments by an inter partes 
reexamination requester (Sec. 1.947), the application or the patent 
under reexamination will be reconsidered and again examined. The 
applicant, or in the case of a reexamination proceeding the patent owner 
and any third party requester, will be notified if claims are rejected, 
objections or requirements made, or decisions favorable to patentability 
are made, in the same manner as after the first examination (Sec. 
1.104). Applicant or patent owner may reply to such Office action in the 
same manner provided in Sec. 1.111 or Sec. 1.945, with or without 
amendment, unless such Office action indicates that it is made final 
(Sec. 1.113) or an appeal (Sec. 41.31 of this title) has been taken 
(Sec. 1.116), or in an inter partes reexamination, that it is an action 
closing prosecution (Sec. 1.949) or a right of appeal notice (Sec. 
1.953).

[69 FR 49999, Aug. 12, 2004]



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 for ex parte reexaminations

[[Page 90]]

filed under Sec. 1.510, patent owner's reply is limited to appeal in 
the case of rejection of any claim (Sec. 41.31 of this title), or to 
amendment as specified in Sec. 1.114 or Sec. 1.116. Petition may be 
taken to the Director 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 comply with Sec. 1.114 or paragraph (c) of 
this section. For final actions in an inter partes reexamination filed 
under Sec. 1.913, see Sec. 1.953.
    (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.
    (c) 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.

[65 FR 14872, Mar. 20, 2000, as amended at 65 FR 76773, Dec. 7, 2000; 69 
FR 49999, Aug. 12, 2004]



Sec. 1.114  Request for continued examination.

    (a) If prosecution in an application is closed, an applicant may, 
subject to the conditions of this section, file a request for continued 
examination of the application accompanied by a submission, the fee set 
forth in Sec. 1.17(e), and if required, a petition under paragraph (g) 
of this section accompanied by the fee set forth in Sec. 1.17(f), prior 
to the earliest of:
    (1) Payment of the issue fee, unless a petition under Sec. 1.313 is 
granted;
    (2) Abandonment of the application; or
    (3) The filing of a notice of appeal to the U.S. Court of Appeals 
for the Federal Circuit under 35 U.S.C. 141, or the commencement of a 
civil action under 35 U.S.C. 145 or 146, unless the appeal or civil 
action is terminated.
    (b) Prosecution in an application is closed as used in this section 
means that the application is under appeal, or that the last Office 
action is a final action (Sec. 1.113), a notice of allowance (Sec. 
1.311), or an action that otherwise closes prosecution in the 
application.
    (c) A submission as used in this section includes, but is not 
limited to, an information disclosure statement, an amendment to the 
written description, claims, or drawings, new arguments, or new evidence 
in support of patentability. If reply to an Office action under 35 
U.S.C. 132 is outstanding, the submission must meet the reply 
requirements of Sec. 1.111.
    (d) If an applicant files a request for continued examination under 
this section after appeal, but prior to a decision on the appeal, the 
request for continued examination will also be treated as a request to 
withdraw the appeal and to reopen prosecution of the application before 
the examiner. An appeal brief (Sec. 41.37 of this title), a reply brief 
(Sec. 41.41 of this title), or related papers will not be considered a 
submission under this section.
    (e) The provisions of this section do not apply to:
    (1) A provisional application;
    (2) An application for a utility or plant patent filed under 35 
U.S.C. 111(a) before June 8, 1995;
    (3) An international application filed under 35 U.S.C. 363 before 
June 8, 1995;
    (4) An application for a design patent; or
    (5) A patent under reexamination.
    (f) An applicant may file a request for continued examination under 
this section in an application without a petition under paragraph (g) of 
this section if the conditions set forth in at least one of paragraphs 
(f)(1), (f)(2), or (f)(3) of this section are satisfied:
    (1) A request for continued examination under this section has not 
previously been filed in any of:
    (i) The application;
    (ii) Any application whose benefit is claimed under 35 U.S.C. 120, 
121, or 365(c) in such application; and
    (iii) Any application that claims the benefit under 35 U.S.C. 120, 
121, or 365(c) of such application, not including any nonprovisional 
application that satisfies the conditions set forth in Sec. 
1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).
    (2) The application is a divisional application that satisfies the 
conditions set forth in Sec. 1.78(d)(1)(ii), and a request for 
continued examination under this section has not previously been filed 
in any of:

[[Page 91]]

    (i) The divisional application; and
    (ii) Any application that claims the benefit under 35 U.S.C. 120, 
121, or 365(c) of such divisional application, not including any 
nonprovisional application that satisfies the conditions set forth in 
Sec. 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).
    (3) The application is a continuation application that claims the 
benefit under 35 U.S.C. 120, 121, or 365(c) of a divisional application 
and satisfies the conditions set forth in Sec. 1.78(d)(1)(iii), and a 
request for continued examination under this section has not been filed 
in any of:
    (i) The continuation application;
    (ii) The divisional application; and
    (iii) Any other application that claims the benefit under 35 U.S.C. 
120, 121, or 365(c) of such divisional application, not including any 
nonprovisional application that satisfies the conditions set forth in 
Sec. 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).
    (g) A request for continued examination must include a petition 
accompanied by the fee set forth in Sec. 1.17(f) and a showing that the 
amendment, argument, or evidence sought to be entered could not have 
been submitted prior to the close of prosecution in the application, 
except as otherwise provided in paragraph (f) of this section.
    (h) The filing of an improper request for continued examination, 
including a request for continued examination with a petition under 
paragraph (g) of this section that is not grantable, will not stay any 
period for reply that may be running against the application, nor act as 
a stay of other proceedings.

[65 FR 50104, Aug. 16, 2000, as amended at 69 FR 49999, Aug. 12, 2004; 
72 FR 46841, Aug. 21, 2007]

                               Amendments

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



Sec. 1.115  Preliminary amendments.

    (a) A preliminary amendment is an amendment that is received in the 
Office (Sec. 1.6) on or before the mail date of the first Office action 
under Sec. 1.104. The patent application publication may include 
preliminary amendments (Sec. 1.215(a)).
    (1) A preliminary amendment that is present on the filing date of an 
application is part of the original disclosure of the application.
    (2) A preliminary amendment filed after the filing date of the 
application is not part of the original disclosure of the application.
    (b) A preliminary amendment in compliance with Sec. 1.121 will be 
entered unless disapproved by the Director.
    (1) A preliminary amendment seeking cancellation of all the claims 
without presenting any new or substitute claims will be disapproved.
    (2) A preliminary amendment may be disapproved if the preliminary 
amendment unduly interferes with the preparation of a first Office 
action in an application. Factors that will be considered in 
disapproving a preliminary amendment include:
    (i) The state of preparation of a first Office action as of the date 
of receipt (Sec. 1.6) of the preliminary amendment by the Office; and
    (ii) The nature of any changes to the specification or claims that 
would result from entry of the preliminary amendment.
    (3) A preliminary amendment will not be disapproved under (b)(2) of 
this section if it is filed no later than:
    (i) Three months from the filing date of an application under Sec. 
1.53(b);
    (ii) The filing date of a continued prosecution application under 
Sec. 1.53(d); or
    (iii) Three months from the date the national stage is entered as 
set forth in Sec. 1.491 in an international application.
    (4) The time periods specified in paragraph (b)(3) of this section 
are not extendable.

[69 FR 56543, Sept. 21, 2004]



Sec. 1.116  Amendments and affidavits or other evidence after final 
action and prior to appeal.

    (a) An amendment after final action must comply with Sec. 1.114 or 
this section.
    (b) After a final rejection or other final action (Sec. 1.113) in 
an application or in an ex parte reexamination filed under Sec. 1.510, 
or an action closing prosecution (Sec. 1.949) in an inter partes 
reexamination filed under Sec. 1.913, but before

[[Page 92]]

or on the same date of filing an appeal (Sec. 41.31 or Sec. 41.61 of 
this title):
    (1) An amendment may be made canceling claims or complying with any 
requirement of form expressly set forth in a previous Office action;
    (2) An amendment presenting rejected claims in better form for 
consideration on appeal may be admitted; or
    (3) An amendment touching the merits of the application or patent 
under reexamination may be admitted upon a showing of good and 
sufficient reasons why the amendment is necessary and was not earlier 
presented.
    (c) The admission of, or refusal to admit, any amendment after a 
final rejection, a final action, an action closing prosecution, or any 
related proceedings will not operate to relieve the application or 
reexamination proceeding from its condition as subject to appeal or to 
save the application from abandonment under Sec. 1.135, or the 
reexamination prosecution from termination under Sec. 1.550(d) or Sec. 
1.957(b) or limitation of further prosecution under Sec. 1.957(c).
    (d)(1) Notwithstanding the provisions of paragraph (b) of this 
section, no amendment other than canceling claims, where such 
cancellation does not affect the scope of any other pending claim in the 
proceeding, can be made in an inter partes reexamination proceeding 
after the right of appeal notice under Sec. 1.953 except as provided in 
Sec. 1.981 or as permitted by Sec. 41.77(b)(1) of this title.
    (2) Notwithstanding the provisions of paragraph (b) of this section, 
an amendment made after a final rejection or other final action (Sec. 
1.113) in an ex parte reexamination filed under Sec. 1.510, or an 
action closing prosecution (Sec. 1.949) in an inter partes 
reexamination filed under Sec. 1.913 may not cancel claims where such 
cancellation affects the scope of any other pending claim in the 
reexamination proceeding except as provided in Sec. 1.981 or as 
permitted by Sec. 41.77(b)(1) of this title.
    (e) An affidavit or other evidence submitted after a final rejection 
or other final action (Sec. 1.113) in an application or in an ex parte 
reexamination filed under Sec. 1.510, or an action closing prosecution 
(Sec. 1.949) in an inter partes reexamination filed under Sec. 1.913 
but before or on the same date of filing an appeal (Sec. 41.31 or Sec. 
41.61 of this title), may be admitted upon a showing of good and 
sufficient reasons why the affidavit or other evidence is necessary and 
was not earlier presented.
    (f) Notwithstanding the provisions of paragraph (e) of this section, 
no affidavit or other evidence can be made in an inter partes 
reexamination proceeding after the right of appeal notice under Sec. 
1.953 except as provided in Sec. 1.981 or as permitted by Sec. 
41.77(b)(1) of this title.
    (g) After decision on appeal, amendments, affidavits and other 
evidence can only be made as provided in Sec. Sec. 1.198 and 1.981, or 
to carry into effect a recommendation under Sec. 41.50(c) of this 
title.

[69 FR 49999, Aug. 12, 2004]



Sec. 1.117  Refund due to cancellation of claim.

    (a) If an amendment canceling a claim is filed before an examination 
on the merits has been made of the application, the applicant may 
request a refund of any fee under Sec. 1.16(h), (i), or (j) or under 
Sec. 1.492(d), (e), or (f) paid on or after December 8, 2004, for such 
claim. If an amendment adding one or more claims is also filed before 
the application has been taken up for examination on the merits, the 
Office may apply any refund under Sec. 1.117 to any excess claims fees 
due as a result of such an amendment. The date indicated on any 
certificate of mailing or transmission under Sec. 1.8 will not be taken 
into account in determining whether an amendment canceling a claim was 
filed before an examination on the merits has been made of the 
application.
    (b) If a request for refund under this section is not filed within 
two months from the date on which the claim was canceled, the Office may 
retain the excess claims fee paid in the application. This two-month 
period is not extendable. If an amendment canceling a claim is not filed 
before an examination on the merits has been made of the application, 
the Office will not refund any part of the excess claims fee paid in the 
application except as provided in Sec. 1.26.

[72 FR 46841, Aug. 21, 2007]

[[Page 93]]



Sec. Sec. 1.118-1.119  [Reserved]



Sec. 1.121  Manner of making amendments in applications.

    (a) Amendments in applications, other than reissue applications. 
Amendments in applications, other than reissue applications, are made by 
filing a paper, in compliance with Sec. 1.52, directing that specified 
amendments be made.
    (b) Specification. Amendments to the specification, other than the 
claims, computer listings (Sec. 1.96) and sequence listings (Sec. 
1.825), must be made by adding, deleting or replacing a paragraph, by 
replacing a section, or by a substitute specification, in the manner 
specified in this section.
    (1) Amendment to delete, replace, or add a paragraph. Amendments to 
the specification, including amendment to a section heading or the title 
of the invention which are considered for amendment purposes to be an 
amendment of a paragraph, must be made by submitting:
    (i) An instruction, which unambiguously identifies the location, to 
delete one or more paragraphs of the specification, replace a paragraph 
with one or more replacement paragraphs, or add one or more paragraphs;
    (ii) The full text of any replacement paragraph with markings to 
show all the changes relative to the previous version of the paragraph. 
The text of any added subject matter must be shown by underlining the 
added text. The text of any deleted matter must be shown by strike-
through except that double brackets placed before and after the deleted 
characters may be used to show deletion of five or fewer consecutive 
characters. The text of any deleted subject matter must be shown by 
being placed within double brackets if strike-through cannot be easily 
perceived;
    (iii) The full text of any added paragraphs without any underlining; 
and
    (iv) The text of a paragraph to be deleted must not be presented 
with strike-through or placed within double brackets. The instruction to 
delete may identify a paragraph by its paragraph number or include a few 
words from the beginning, and end, of the paragraph, if needed for 
paragraph identification purposes.
    (2) Amendment by replacement section. If the sections of the 
specification contain section headings as provided in Sec. 1.77(b), 
Sec. 1.154(b), or Sec. 1.163(c), amendments to the specification, 
other than the claims, may be made by submitting:
    (i) A reference to the section heading along with an instruction, 
which unambiguously identifies the location, to delete that section of 
the specification and to replace such deleted section with a replacement 
section; and
    (ii) A replacement section with markings to show all changes 
relative to the previous version of the section. The text of any added 
subject matter must be shown by underlining the added text. The text of 
any deleted matter must be shown by strike-through except that double 
brackets placed before and after the deleted characters may be used to 
show deletion of five or fewer consecutive characters. The text of any 
deleted subject matter must be shown by being placed within double 
brackets if strike-through cannot be easily perceived.
    (3) Amendment by substitute specification. The specification, other 
than the claims, may also be amended by submitting:
    (i) An instruction to replace the specification; and
    (ii) A substitute specification in compliance with Sec. Sec. 
1.125(b) and (c).
    (4) Reinstatement of previously deleted paragraph or section. A 
previously deleted paragraph or section may be reinstated only by a 
subsequent amendment adding the previously deleted paragraph or section.
    (5) Presentation in subsequent amendment document. Once a paragraph 
or section is amended in a first amendment document, the paragraph or 
section shall not be re-presented in a subsequent amendment document 
unless it is amended again or a substitute specification is provided.
    (c) Claims. Amendments to a claim must be made by rewriting the 
entire claim with all changes (e.g., additions and deletions) as 
indicated in this subsection, except when the claim is being canceled. 
Each amendment document that includes a change to an existing claim, 
cancellation of an existing claim or addition of a new claim, must

[[Page 94]]

include a complete listing of all claims ever presented, including the 
text of all pending and withdrawn claims, in the application. The claim 
listing, including the text of the claims, in the amendment document 
will serve to replace all prior versions of the claims, in the 
application. In the claim listing, the status of every claim must be 
indicated after its claim number by using one of the following 
identifiers in a parenthetical expression: (Original), (Currently 
amended), (Canceled), (Withdrawn), (Previously presented), (New), and 
(Not entered).
    (1) Claim listing. All of the claims presented in a claim listing 
shall be presented in ascending numerical order. Consecutive claims 
having the same status of ``canceled'' or ``not entered'' may be 
aggregated into one statement (e.g., Claims 1-5 (canceled)). The claim 
listing shall commence on a separate sheet of the amendment document and 
the sheet(s) that contain the text of any part of the claims shall not 
contain any other part of the amendment.
    (2) When claim text with markings is required. All claims being 
currently amended in an amendment paper shall be presented in the claim 
listing, indicate a status of ``currently amended,'' and be submitted 
with markings to indicate the changes that have been made relative to 
the immediate prior version of the claims. The text of any added subject 
matter must be shown by underlining the added text. The text of any 
deleted matter must be shown by strike-through except that double 
brackets placed before and after the deleted characters may be used to 
show deletion of five or fewer consecutive characters. The text of any 
deleted subject matter must be shown by being placed within double 
brackets if strike-through cannot be easily perceived. Only claims 
having the status of ``currently amended,'' or ``withdrawn'' if also 
being amended, shall include markings. If a withdrawn claim is currently 
amended, its status in the claim listing may be identified as 
``withdrawn--currently amended.''
    (3) When claim text in clean version is required. The text of all 
pending claims not being currently amended shall be presented in the 
claim listing in clean version, i.e., without any markings in the 
presentation of text. The presentation of a clean version of any claim 
having the status of ``original,'' ``withdrawn'' or ``previously 
presented'' will constitute an assertion that it has not been changed 
relative to the immediate prior version, except to omit markings that 
may have been present in the immediate prior version of the claims of 
the status of ``withdrawn'' or ``previously presented.'' Any claim added 
by amendment must be indicated with the status of ``new'' and presented 
in clean version, i.e., without any underlining.
    (4) When claim text shall not be presented; canceling a claim. (i) 
No claim text shall be presented for any claim in the claim listing with 
the status of ``canceled'' or ``not entered.''
    (ii) Cancellation of a claim shall be effected by an instruction to 
cancel a particular claim number. Identifying the status of a claim in 
the claim listing as ``canceled'' will constitute an instruction to 
cancel the claim.
    (5) Reinstatement of previously canceled claim. A claim which was 
previously canceled may be reinstated only by adding the claim as a 
``new'' claim with a new claim number.
    (d) Drawings: One or more application drawings shall be amended in 
the following manner: Any changes to an application drawing must be in 
compliance with Sec. 1.84 and must be submitted on a replacement sheet 
of drawings which shall be an attachment to the amendment document and, 
in the top margin, labeled ``Replacement Sheet.'' Any replacement sheet 
of drawings shall include all of the figures appearing on the immediate 
prior version of the sheet, even if only one figure is amended. Any new 
sheet of drawings containing an additional figure must be labeled in the 
top margin as ``New Sheet.'' All changes to the drawings shall be 
explained, in detail, in either the drawing amendment or remarks section 
of the amendment paper.
    (1) A marked-up copy of any amended drawing figure, including 
annotations indicating the changes made, may be included. The marked-up 
copy must be clearly labeled as ``Annotated Sheet'' and must be 
presented in the amendment or remarks section that explains the change 
to the drawings.

[[Page 95]]

    (2) A marked-up copy of any amended drawing figure, including 
annotations indicating the changes made, must be provided when required 
by the examiner.
    (e) Disclosure consistency. 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.
    (f) No new matter. No amendment may introduce new matter into the 
disclosure of an application.
    (g) Exception for examiner's amendments. Changes to the 
specification, including the claims, of an application made by the 
Office in an examiner's amendment may be made by specific instructions 
to insert or delete subject matter set forth in the examiner's amendment 
by identifying the precise point in the specification or the claim(s) 
where the insertion or deletion is to be made. Compliance with 
paragraphs (b)(1), (b)(2), or (c) of this section is not required.
    (h) Amendment sections. Each section of an amendment document (e.g., 
amendment to the claims, amendment to the specification, replacement 
drawings, and remarks) must begin on a separate sheet.
    (i) Amendments in reissue applications. Any amendment to the 
description and claims in reissue applications must be made in 
accordance with Sec. 1.173.
    (j) 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.
    (k) Amendments in provisional applications. Amendments in 
provisional applications are not usually made. If an amendment is made 
to a provisional application, however, it must comply with the 
provisions of this section. Any amendments to a provisional application 
shall be placed in the provisional application file but may not be 
entered.

[68 FR 38628, June 30, 2003, as amended at 69 FR 56543, Sept. 21, 2004]



Sec. Sec. 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) Subject to Sec. 1.312, a substitute specification, excluding 
the claims, may be filed at any point up to payment of the issue fee if 
it is accompanied by a statement that the substitute specification 
includes no new matter.
    (c) A substitute specification submitted under this section must be 
submitted with markings showing all the changes relative to the 
immediate prior version of the specification of record. The text of any 
added subject matter must be shown by underlining the added text. The 
text of any deleted matter must be shown by strike-through except that 
double brackets placed before and after the deleted characters may be 
used to show deletion of five or fewer consecutive characters. The text 
of any deleted subject matter must be shown by being placed within 
double brackets if strike-through cannot be easily perceived. An 
accompanying clean version (without markings) must also be supplied. 
Numbering the paragraphs of the specification of record is not 
considered a change that must be shown pursuant to this paragraph.
    (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, as amended at 65 FR 54673, Sept. 8, 2000; 
68 FR 38630, June 30, 2003]



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

[[Page 96]]

(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]



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 Director 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

[[Page 97]]

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 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
or published application as prior art.

    (a) When any claim of an application or a patent under reexamination 
is rejected under 35 U.S.C. 103 on a U.S. patent or U.S. patent 
application publication 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 or published 
application 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 or patent 
application publication as prior art. The patent or patent application 
publication 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 patent or published application 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) [Reserved]

[61 FR 42805, Aug. 19, 1996, as amended at 65 FR 57056, Sept. 20, 2000; 
70 FR 1824, Jan. 11, 2005]



Sec. 1.131  Affidavit or declaration of prior invention.

    (a) When any claim of an application or a patent under reexamination 
is rejected, the inventor of the subject matter of the rejected claim, 
the owner of the patent under reexamination, or the party qualified 
under Sec. Sec. 1.42, 1.43, or 1.47, may submit an appropriate oath or 
declaration to establish invention of the subject matter of the rejected 
claim prior to the effective date of the reference or activity on which 
the rejection is based. The effective date of a U.S. patent, U.S. patent 
application publication, or international application publication under 
PCT Article 21(2) is the earlier of its publication date or date that it 
is effective as a reference under 35 U.S.C. 102(e). Prior invention may 
not be established under this section in any country other than the 
United States, a NAFTA country, or a WTO member country. Prior invention 
may not be established under this section before December 8, 1993, in a 
NAFTA country other than the United States, or before January 1, 1996, 
in a WTO member country other than a NAFTA country. Prior invention may 
not be established under this section if either:
    (1) The rejection is based upon a U.S. patent or U.S. patent 
application publication of a pending or patented application to another 
or others which claims the same patentable invention as defined in Sec. 
41.203(a) of this title, in which case an applicant may suggest an 
interference pursuant to Sec. 41.202(a) of this title; or
    (2) The rejection is based upon a statutory bar.
    (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 records, or photocopies thereof, must

[[Page 98]]

accompany and form part of the affidavit or declaration or their absence 
must be satisfactorily explained.

[53 FR 23734, June 23, 1988, as amended at 60 FR 21044, May 1, 1995; 61 
FR 42806, Aug. 19, 1996; 65 FR 54673, Sept. 8, 2000; 65 FR 57057, Sept. 
20, 2000; 69 FR 49999, Aug. 12, 2004; 69 FR 56543, Sept. 21, 2004]



Sec. 1.132  Affidavits or declarations traversing rejections or objections.

    When any claim of an application or a patent under reexamination is 
rejected or objected to, any evidence submitted to traverse the 
rejection or objection on a basis not otherwise provided for must be by 
way of an oath or declaration under this section.

[65 FR 57057, Sept. 20, 2000]

                               Interviews



Sec. 1.133  Interviews.

    (a)(1) Interviews with examiners concerning applications and other 
matters pending before the Office must be conducted on Office premises 
and 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 Director.
    (2) An interview for the discussion of the patentability of a 
pending application will not occur before the first Office action, 
unless the application is a continuing or substitute application or the 
examiner determines that such an interview would advance prosecution of 
the application.
    (3) The examiner may require that an interview be scheduled 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 Sec. Sec. 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; 
65 FR 54674, Sept. 8, 2000; 70 FR 56128, Sept. 26, 2005]

         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 99]]

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 to a notice requiring compliance with Sec. 
1.75(b) or Sec. 1.265;
    (iii) The reply is a reply brief submitted pursuant to Sec. 41.41 
of this title;
    (iv) The reply is a request for an oral hearing submitted pursuant 
to Sec. 41.47(a) of this title;
    (v) The reply is to a decision by the Board of Patent Appeals and 
Interferences pursuant to Sec. 1.304 or to Sec. 41.50 or Sec. 41.52 
of this title; or
    (vi) The application is involved in a contested case (Sec. 
41.101(a) of this title).
    (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. 1.304 for 
extensions 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 
extensions of time in ex parte reexamination proceedings, Sec. 1.956 
for extensions of time in inter partes reexamination proceedings; and 
Sec. Sec. 41.4(a) and 41.121(a)(3) of this title for extensions of time 
in contested cases before the Board of Patent Appeals and Interferences.
    (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 affect 
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 extensions 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 extensions of time in ex parte reexamination 
proceedings; Sec. 1.956 for extensions of time in inter partes 
reexamination proceedings; and Sec. Sec. 41.4(a) and 41.121(a)(3) of 
this title for extensions of time in contested cases before the Board of 
Patent Appeals and Interferences. Any request under this section must be 
accompanied by the petition fee set forth in Sec. 1.17(g).
    (c) If an applicant is notified in a ``Notice of Allowability'' that 
an application is otherwise in condition for allowance, the following 
time periods are not extendable if set in the ``Notice of Allowability'' 
or in an Office action having a mail date on or after the mail date of 
the ``Notice of Allowability'':
    (1) The period for submitting an oath or declaration in compliance 
with Sec. 1.63;
    (2) The period for submitting formal drawings set under Sec. 
1.85(c); and
    (3) The period for making a deposit set under Sec. 1.809(c).

[62 FR 53194, Oct. 10, 1997, as amended at 65 FR 54674, Sept. 8, 2000; 
65 FR 76773, Dec. 7, 2000; 66 FR 21092, Apr. 27, 2001; 69 FR 50000, Aug. 
12, 2004; 69 FR 56543, Sept. 21, 2004; 70 FR 3891, Jan. 27, 2005; 72 FR 
46842, Aug. 21, 2007]

[[Page 100]]



Sec. 1.137  Revival of abandoned application, terminated or limited 
reexamination prosecution, or lapsed patent.

    (a) Unavoidable. If the delay in reply by applicant or patent owner 
was unavoidable, a petition may be filed pursuant to this paragraph to 
revive an abandoned application, a reexamination prosecution terminated 
under Sec. 1.550(d) or Sec. 1.957(b) or limited under Sec. 1.957(c), 
or a lapsed patent. A grantable petition pursuant to this paragraph must 
be accompanied by:
    (1) The reply required to the outstanding Office action or notice, 
unless previously filed;
    (2) The petition fee as set forth in Sec. 1.17(l);
    (3) A showing to the satisfaction of the Director 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 (d) of this section.
    (b) Unintentional. If the delay in reply by applicant or patent 
owner was unintentional, a petition may be filed pursuant to this 
paragraph to revive an abandoned application, a reexamination 
prosecution terminated under Sec. 1.550(d) or Sec. 1.957(b) or limited 
under Sec. 1.957(c), or a lapsed patent. A grantable petition pursuant 
to this paragraph must be accompanied by:
    (1) The reply required to the outstanding Office action or notice, 
unless previously filed;
    (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 Director 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 (d) of this section.
    (c) Reply. In a nonprovisional application abandoned for failure to 
prosecute, the required reply may be met by the filing of a continuing 
application. In a nonprovisional utility or plant application filed on 
or after June 8, 1995, and abandoned for failure to prosecute, the 
required reply may also be met by the filing of a request for continued 
examination in compliance with Sec. 1.114. In an application or patent, 
abandoned or lapsed for failure to pay the issue fee or any portion 
thereof, the required reply must include payment of the issue fee or any 
outstanding balance. In an application, abandoned for failure to pay the 
publication fee, the required reply must include payment of the 
publication fee.
    (d) Terminal disclaimer. (1) Any petition to revive pursuant to this 
section in a design application 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 petition to revive 
pursuant to this section in either a utility or plant application filed 
before June 8, 1995, 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 lesser of:
    (i) The period of abandonment of the application; or
    (ii) The period extending beyond twenty years from the date on which 
the application for the patent was filed in the United States or, if the 
application contains a specific reference to an earlier filed 
application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on 
which the earliest such application was filed.
    (2) Any terminal disclaimer pursuant to paragraph (d)(1) of this 
section must also apply to any patent granted on a continuing utility or 
plant application filed before June 8, 1995, or a continuing design 
application, that contains a specific reference under 35 U.S.C. 120, 
121, or 365(c) to the application for which revival is sought.
    (3) The provisions of paragraph (d)(1) of this section do not apply 
to applications for which revival is sought solely for purposes of 
copendency with a utility or plant application filed on or after June 8, 
1995, to lapsed patents, to reissue applications, or to reexamination 
proceedings.

[[Page 101]]

    (e) Request for reconsideration. Any request for reconsideration or 
review of a decision refusing to revive an abandoned application, a 
terminated or limited reexamination prosecution, 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:
    (1) The provisions of Sec. 1.136 for an abandoned application or 
lapsed patent;
    (2) The provisions of Sec. 1.550(c) for a terminated ex parte 
reexamination prosecution, where the ex parte reexamination was filed 
under Sec. 1.510; or
    (3) The provisions of Sec. 1.956 for a terminated inter partes 
reexamination prosecution or an inter partes reexamination limited as to 
further prosecution, where the inter partes reexamination was filed 
under Sec. 1.913.
    (f) Abandonment for failure to notify the Office of a foreign 
filing: A nonprovisional application abandoned pursuant to 35 U.S.C. 
122(b)(2)(B)(iii) for failure to timely notify the Office of the filing 
of an application in a foreign country or under a multinational treaty 
that requires publication of applications eighteen months after filing, 
may be revived only pursuant to paragraph (b) of this section. The reply 
requirement of paragraph (c) of this section is met by the notification 
of such filing in a foreign country or under a multinational treaty, but 
the filing of a petition under this section will not operate to stay any 
period for reply that may be running against the application.
    (g) Provisional applications. A provisional application, abandoned 
for failure to timely respond to an Office requirement, may be revived 
pursuant to this section. Subject to the provisions of 35 U.S.C. 
119(e)(3) and Sec. 1.7(b), a provisional application will not be 
regarded as pending after twelve months from its filing date under any 
circumstances.

[65 FR 57057, Sept. 20, 2000, as amended at 69 FR 56543, Sept. 21, 2004; 
72 FR 18904, Apr. 16, 2007]



Sec. 1.138  Express abandonment.

    (a) An application may be expressly abandoned by filing a written 
declaration of abandonment identifying the application in the United 
States Patent and Trademark Office. Express abandonment of the 
application may not be recognized by the Office before the date of issue 
or publication unless it is actually received by appropriate officials 
in time to act.
    (b) A written declaration of abandonment must be signed by a party 
authorized under Sec. 1.33(b)(1), (b)(3), or (b)(4) to sign a paper in 
the application, except as otherwise provided in this paragraph. A 
registered attorney or agent, not of record, who acts in a 
representative capacity under the provisions of Sec. 1.34(a) when 
filing a continuing application, may expressly abandon the prior 
application as of the filing date granted to the continuing application.
    (c) An applicant seeking to abandon an application to avoid 
publication of the application (see Sec. 1.211(a)(1)) must submit a 
declaration of express abandonment by way of a petition under this 
paragraph including the fee set forth in Sec. 1.17(h) in sufficient 
time to permit the appropriate officials to recognize the abandonment 
and remove the application from the publication process. Applicants 
should expect that the petition will not be granted and the application 
will be published in regular course unless such declaration of express 
abandonment and petition are received by the appropriate officials more 
than four weeks prior to the projected date of publication.
    (d) An applicant seeking to abandon an application filed under 35 
U.S.C. 111(a) and Sec. 1.53(b) on or after December 8, 2004, to obtain 
a refund of the search fee and excess claims fee paid in the 
application, must submit a declaration of express abandonment by way of 
a petition under this paragraph before an examination has been made of 
the application. The date indicated on any certificate of mailing or 
transmission under Sec. 1.8 will not be taken into account in 
determining whether a petition under Sec. 1.138(d) was filed before an 
examination has been made of the application. If a request for refund of 
the search fee and excess claims fee paid in

[[Page 102]]

the application is not filed with the declaration of express abandonment 
under this paragraph or within two months from the date on which the 
declaration of express abandonment under this paragraph was filed, the 
Office may retain the entire search fee and excess claims fee paid in 
the application. This two-month period is not extendable. If a petition 
and declaration of express abandonment under this paragraph are not 
filed before an examination has been made of the application, the Office 
will not refund any part of the search fee and excess claims fee paid in 
the application except as provided in Sec. 1.26.

[65 FR 54674, Sept. 8, 2000, as amended at 65 FR 57058, Sept. 20, 2000; 
71 FR 12284, Mar. 10, 2006]



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 
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 may 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.
    (c) If two or more independent and distinct inventions are claimed 
in a single application, the applicant may file a suggested requirement 
for restriction under this paragraph. Any suggested requirement for 
restriction must be filed prior to the earlier of the first Office 
action on the merits or an Office action that contains a requirement to 
comply with the requirement of unity of invention under PCT Rule 13 or a 
requirement for restriction under 35 U.S.C. 121 in the application. Any 
suggested requirement for restriction must also be accompanied by an 
election without traverse of an invention to which there are no more 
than five independent claims and no more than twenty-five total claims, 
and must identify the claims to the elected invention. If the suggested 
requirement for restriction is accepted, the applicant will be notified 
in an Office action that will contain a requirement for restriction 
under paragraph (a) of this section. Any claim to the non-elected 
invention or inventions, if not canceled, is by the election withdrawn 
from further consideration.

[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53195, Oct. 10, 1997; 
72 FR 46842, Aug. 21, 2007]

[[Page 103]]



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 Director 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 the merits on an application, the 
applicant presents claims directed to an invention distinct from and 
independent of the invention previously claimed, the applicant may be 
required to restrict the claims to the invention previously claimed if 
the amendment is entered, subject to reconsideration and review as 
provided in Sec. Sec. 1.143 and 1.144.

[72 FR 46842, Aug. 21, 2007]



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]

                             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.

    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. 
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 that 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. 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 not disclose environmental structure but must 
be limited to the design claimed for the article.

[65 FR 54674, Sept. 8, 2000]



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

[[Page 104]]

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 in a design application.

    (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) Application data sheet (see Sec. 1.76).
    (4) Specification.
    (5) Drawings or photographs.
    (6) Executed oath or declaration (see Sec. 1.153(b)).
    (b) The specification should include the following sections in 
order:
    (1) Preamble, stating the 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.
    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or development.
    (4) Description of the figure or figures of the drawing.
    (5) Feature description.
    (6) A single claim.
    (c) The text of the specification sections defined in paragraph (b) 
of this section, if applicable, should be preceded by a section heading 
in uppercase letters without underlining or bold type.

[65 FR 54674, Sept. 8, 2000]



Sec. 1.155  Expedited examination of design applications.

    (a) The applicant may request that the Office expedite the 
examination of a design application. To qualify for expedited 
examination:
    (1) The application must include drawings in compliance with Sec. 
1.84;
    (2) The applicant must have conducted a preexamination search; and
    (3) The applicant must file a request for expedited examination 
including:
    (i) The fee set forth in Sec. 1.17(k); and
    (ii) A statement that a preexamination search was conducted. The 
statement must also indicate the field of search and include an 
information disclosure statement in compliance with Sec. 1.98.
    (b) The Office will not examine an application that is not in 
condition for examination (e.g., missing basic filing fee) even if the 
applicant files a request for expedited examination under this section.

[65 FR 54674, Sept. 8, 2000]

                              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 Sec. Sec. 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 in 
a plant application.

    (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

[[Page 105]]

reproduced. For a newly found plant, the specification must particularly 
point out the location and character of the area where the plant was 
discovered.
    (b) The elements of the plant application, if applicable, should 
appear in the following order:
    (1) Plant application transmittal form.
    (2) Fee transmittal form.
    (3) Application data sheet (see Sec. 1.76).
    (4) Specification.
    (5) Drawings (in duplicate).
    (6) Executed oath or declaration (Sec. 1.162).
    (c) The specification should include the following sections in 
order:
    (1) Title of the invention, which may include an introductory 
portion stating the name, citizenship, and residence of the applicant.
    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or development.
    (4) Latin name of the genus and species of the plant claimed.
    (5) Variety denomination.
    (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.
    (d) The text of the specification or sections defined in paragraph 
(c) of this section, if applicable, should be preceded by a section 
heading in upper case, without underlining or bold type.

[65 FR 54675, Sept. 8, 2000]



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)



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 drawings may be in color. The drawing must be in color if 
color is a distinguishing characteristic of the new variety. Two copies 
of color drawings or photographs must be submitted.

[58 FR 38726, July 20, 1993, as amended at 65 FR 57058, Sept. 20, 2000; 
69 FR 56543, Sept. 21, 2004]



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 
Sec. Sec. 1.42, 1.43, 1.47), and must be accompanied by the written 
consent of all assignees, if any, owning

[[Page 106]]

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  Reissue specification, drawings, and amendments.

    (a) Contents of a reissue application. An application for reissue 
must contain the entire specification, including the claims, and the 
drawings of the patent. No new matter shall be introduced into the 
application. 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.
    (1) Specification, including claims. The entire specification, 
including the claims, of the patent for which reissue is requested must 
be furnished in the form of a copy of the printed patent, in double 
column format, each page on only one side of a single sheet of paper. If 
an amendment of the reissue application is to be included, it must be 
made pursuant to paragraph (b) of this section. The formal requirements 
for papers making up the reissue application other than those set forth 
in this section are set out in Sec. 1.52. Additionally, a copy of any 
disclaimer (Sec. 1.321), certificate of correction (Sec. Sec. 1.322 
through 1.324), or reexamination certificate (Sec. 1.570) issued in the 
patent must be included. (See also Sec. 1.178).
    (2) Drawings. Applicant must submit a clean copy of each drawing 
sheet of the printed patent at the time the reissue application is 
filed. If such copy complies with Sec. 1.84, no further drawings will 
be required. Where a drawing of the reissue application is to include 
any changes relative to the patent being reissued, the changes to the 
drawing must be made in accordance with paragraph (b)(3) of this 
section. The Office will not transfer the drawings from the patent file 
to the reissue application.
    (b) Making amendments in a reissue application. An amendment in a 
reissue application is made either by physically incorporating the 
changes into the specification when the application is filed, or by a 
separate amendment paper. If amendment is made by incorporation, 
markings pursuant to paragraph (d) of this section must be used. If 
amendment is made by an amendment paper, the paper must direct that 
specified changes be made, as follows:
    (1) Specification other than the claims. Changes to the 
specification, other than to the claims, must be made by submission of 
the entire text of an added or rewritten paragraph, including markings 
pursuant to paragraph (d) 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. The precise point in the 
specification must be identified where any added or rewritten paragraph 
is located. This paragraph applies whether the amendment is submitted on 
paper or compact disc (see Sec. Sec. 1.52(e)(1) and 1.821(c), but not 
for discs submitted under Sec. 1.821(e)).
    (2) Claims. An amendment paper must include the entire text of each 
claim being changed by such amendment paper and of each claim being 
added by such amendment paper. For any claim changed by the amendment 
paper, a parenthetical expression ``amended,'' ``twice amended,'' etc., 
should follow the claim number. Each changed patent claim and each added 
claim must include markings pursuant to paragraph (d) of this section, 
except that a patent claim or added claim should be canceled by a 
statement canceling the claim without presentation of the text of the 
claim.
    (3) Drawings. One or more patent drawings shall be amended in the 
following manner: Any changes to a patent drawing must be submitted as a 
replacement sheet of drawings which

[[Page 107]]

shall be an attachment to the amendment document. Any replacement sheet 
of drawings must be in compliance with Sec. 1.84 and shall include all 
of the figures appearing on the original version of the sheet, even if 
only one figure is amended. Amended figures must be identified as 
``Amended,'' and any added figure must be identified as ``New.'' In the 
event that a figure is canceled, the figure must be surrounded by 
brackets and identified as ``Canceled.'' All changes to the drawing(s) 
shall be explained, in detail, beginning on a separate sheet 
accompanying the papers including the amendment to the drawings.
    (i) A marked-up copy of any amended drawing figure, including 
annotations indicating the changes made, may be included. The marked-up 
copy must be clearly labeled as ``Annotated Marked-up Drawings'' and 
must be presented in the amendment or remarks section that explains the 
change to the drawings.
    (ii) A marked-up copy of any amended drawing figure, including 
annotations indicating the changes made, must be provided when required 
by the examiner.
    (c) Status of claims and support for claim changes. Whenever there 
is an amendment to the claims pursuant to paragraph (b) of this section, 
there must also be supplied, on pages separate from the pages containing 
the changes, the status (i.e., pending or canceled), as of the date of 
the amendment, of all patent claims and of all added claims, and an 
explanation of the support in the disclosure of the patent for the 
changes made to the claims.
    (d) Changes shown by markings. Any changes relative to the patent 
being reissued which are made to the specification, including the 
claims, upon filing, or by an amendment paper in the reissue 
application, must include the following markings:
    (1) The matter to be omitted by reissue must be enclosed in 
brackets; and
    (2) The matter to be added by reissue must be underlined, except for 
amendments submitted on compact discs (Sec. Sec. 1.96 and 1.821(c)). 
Matter added by reissue on compact discs must be preceded with 
``'' and end with ``'' to properly identify 
the material being added.
    (e) Numbering of patent claims preserved. Patent claims may not be 
renumbered. The numbering of any claim added in the reissue application 
must follow the number of the highest numbered patent claim.
    (f) Amendment of disclosure may be required. 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.
    (g) Amendments made relative to the patent. All amendments must be 
made relative to the patent specification, including the claims, and 
drawings, which are in effect as of the date of filing of the reissue 
application.

[65 FR 54675, Sept. 8, 2000, as amended at 68 FR 38630, June 30, 2003; 
69 FR 56543, Sept. 21, 2004]



Sec. 1.174  [Reserved]



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:

[[Page 108]]

    (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).
    (e) The filing of any continuing reissue application which does not 
replace its parent reissue application must include an oath or 
declaration which, pursuant to paragraph (a)(1) of this section, 
identifies at least one error in the original patent which has not been 
corrected by the parent reissue application or an earlier reissue 
application. All other requirements relating to oaths or declarations 
must also be met.

[62 FR 53196, Oct. 10, 1997, as amended at 69 FR 56544, Sept. 21, 2004]



Sec. 1.176  Examination of reissue.

    (a) A reissue application will be examined in the same manner as a 
non-reissue, non-provisional application, and will be subject to all the 
requirements of the rules related to non-reissue applications. 
Applications for reissue will be acted on by the examiner in advance of 
other applications.
    (b) Restriction between subject matter of the original patent claims 
and previously unclaimed subject matter may be required (restriction 
involving only subject matter of the original patent claims will not be 
required). If restriction is required, the subject matter of the 
original patent claims will be held to be constructively elected unless 
a disclaimer of all the patent claims is filed in the reissue 
application, which disclaimer cannot be withdrawn by applicant.

[65 FR 54676, Sept. 8, 2000]



Sec. 1.177  Issuance of multiple reissue patents.

    (a) The Office may reissue a patent as multiple reissue patents. If 
applicant files more than one application for the reissue of a single 
patent, each such application must contain or be amended to contain in 
the first sentence of the specification a notice stating that more than 
one reissue application has been filed and identifying each of the 
reissue applications by relationship, application number and filing 
date. The Office may correct by certificate of correction under Sec. 
1.322 any reissue patent resulting from an application to which this 
paragraph applies that does not contain the required notice.
    (b) If applicant files more than one application for the reissue of 
a single patent, each claim of the patent being reissued must be 
presented in each of the reissue applications as an amended, unamended, 
or canceled (shown in brackets) claim, with each such claim bearing the 
same number as in the patent being reissued. The same claim of the 
patent being reissued may not be presented in its original unamended 
form for examination in more than one of such multiple reissue 
applications. The numbering of any added claims in any of the multiple 
reissue applications must follow the number of the highest numbered 
original patent claim.
    (c) If any one of the several reissue applications by itself fails 
to correct an error in the original patent as required by 35 U.S.C. 251 
but is otherwise in condition for allowance, the Office may suspend 
action in the allowable application until all issues are resolved as to 
at least one of the remaining reissue applications. The Office may also 
merge two or more of the multiple reissue applications into a single 
reissue application. No reissue application containing only unamended 
patent claims and not correcting an error in

[[Page 109]]

the original patent will be passed to issue by itself.

[65 FR 54676, Sept. 8, 2000]



Sec. 1.178  Original patent; continuing duty of applicant.

    (a) The application for reissue of a patent shall constitute an 
offer to surrender that patent, and the surrender shall take effect upon 
reissue of the patent. Until a reissue application is granted, the 
original patent shall remain in effect.
    (b) In any reissue application before the Office, the applicant must 
call to the attention of the Office any prior or concurrent proceedings 
in which the patent (for which reissue is requested) is or was involved, 
such as interferences, reissues, reexaminations, or litigations and the 
results of such proceedings (see also Sec. 1.173(a)(1)).

[65 FR 54676, Sept. 8, 2000, as amended at 69 FR 56544, Sept. 21, 2004]



Sec. 1.179  [Reserved]

                  Petitions and Action by the Director

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



Sec. 1.181  Petition to the Director.

    (a) Petition may be taken to the Director:
    (1) From any action or requirement of any examiner in the ex parte 
prosecution of an application, or in the ex parte or inter partes 
prosecution of a reexamination proceeding 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 Director; and
    (3) To invoke the supervisory authority of the Director in 
appropriate circumstances. For petitions involving action of the Board 
of Patent Appeals and Interferences, see Sec. 41.3 of this title.
    (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, or in the ex 
parte or inter partes prosecution of a reexamination proceeding, 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 Director to furnish a written statement, within a 
specified time, setting forth the reasons for his or her decision upon 
the matters averred in the petition, supplying a copy to the petitioner.
    (d) Where a fee is required for a petition to the Director 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 Director.
    (f) The mere filing of a petition will not stay any period for reply 
that may be running against the application, nor act as a stay of other 
proceedings. Any petition under this part not filed within two months of 
the mailing date of the action or notice from which relief is requested 
may be dismissed as untimely, except as otherwise provided. This two-
month period is not extendable.
    (g) The Director 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; 65 FR 54676, 
Sept. 8, 2000; 65 FR 76774, Dec. 7, 2000; 69 FR 50000, Aug. 12, 2004]



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 Director, subject to such 
other requirements as may be imposed, and such decision will be 
communicated to the interested parties

[[Page 110]]

in writing. Any petition seeking a decision under this section must be 
accompanied by the petition fee set forth in Sec. 1.17(f).

[69 FR 56544, Sept. 21, 2004]



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 Director or the 
Director's designee, 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(f).

[69 FR 56544, Sept. 21, 2004]



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.

    Appeals to the Board of Patent Appeals and Interferences under 35 
U.S.C. 134(a) and (b) are conducted according to part 41 of this title.

[69 FR 50000, Aug. 12, 2004]



Sec. Sec. 1.192-1.196  [Reserved]



Sec. 1.197  Return of jurisdiction from the Board of Patent Appeals
and Interferences; termination of proceedings.

    (a) Return of jurisdiction from the Board of Patent Appeals and 
Interferences. Jurisdiction over an application or patent under ex parte 
reexamination proceeding passes to the examiner after a decision by the 
Board of Patent Appeals and Interferences upon transmittal of the file 
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 or patent under ex parte reexamination 
proceeding may require, to carry into effect the decision of the Board 
of Patent Appeals and Interferences.
    (b) Termination of proceedings. (1) Proceedings on an application 
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:
    (i) Where claims stand allowed in an application; or
    (ii) Where the nature of the decision requires further action by the 
examiner.
    (2) The date of termination of proceedings on an application is the 
date on which the appeal is dismissed or the date on which the time for 
appeal to the U.S. Court of Appeals for the Federal Circuit or review by 
civil action (Sec. 1.304) expires in the absence of further appeal or 
review. If an appeal to the U.S. Court of Appeals for the Federal 
Circuit or a civil action has been filed, proceedings on an application 
are considered terminated when the appeal or civil action is terminated. 
A civil action is terminated when the time to appeal the judgment 
expires. An appeal to the U.S. Court of Appeals for the Federal Circuit, 
whether from a decision of the Board or a judgment in a civil action, is 
terminated when the mandate is issued by the Court.

[69 FR 50000, Aug. 12, 2004]



Sec. 1.198  Reopening after a final decision of the Board of Patent
Appeals and Interferences.

    When a decision by the Board of Patent Appeals and Interferences on 
appeal has become final for judicial review, prosecution of the 
proceeding before the primary examiner will not be reopened or 
reconsidered by the primary examiner except under the provisions of 
Sec. 1.114 or Sec. 41.50 of this title without the written authority 
of the Director, and then only for the consideration of matters not 
already adjudicated, sufficient cause being shown.

[69 FR 50000, Aug. 12, 2004]

                       Publication of Applications

    Source: 65 FR 57058, Sept. 20, 2000, unless otherwise noted.



Sec. 1.211  Publication of applications.

    (a) Each U.S. national application for patent filed in the Office 
under 35

[[Page 111]]

U.S.C. 111(a) and each international application in compliance with 35 
U.S.C. 371 will be published promptly after the expiration of a period 
of eighteen months from the earliest filing date for which a benefit is 
sought under title 35, United States Code, unless:
    (1) The application is recognized by the Office as no longer 
pending;
    (2) The application is national security classified (see Sec. 
5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under 
national security review;
    (3) The application has issued as a patent in sufficient time to be 
removed from the publication process; or
    (4) The application was filed with a nonpublication request in 
compliance with Sec. 1.213(a).
    (b) Provisional applications under 35 U.S.C. 111(b) shall not be 
published, and design applications under 35 U.S.C. chapter 16 and 
reissue applications under 35 U.S.C. chapter 25 shall not be published 
under this section.
    (c) An application filed under 35 U.S.C. 111(a) will not be 
published until it includes the basic filing fee (Sec. 1.16(a) or 
1.16(c)), any English translation required by Sec. 1.52(d), and an 
executed oath or declaration under Sec. 1.63. The Office may delay 
publishing any application until it includes any application size fee 
required by the Office under Sec. 1.16(s) or Sec. 1.492(j), a 
specification having papers in compliance with Sec. 1.52 and an 
abstract (Sec. 1.72(b)), drawings in compliance with Sec. 1.84, and a 
sequence listing in compliance with Sec. Sec. 1.821 through 1.825 (if 
applicable), and until any petition under Sec. 1.47 is granted.
    (d) The Office may refuse to publish an application, or to include a 
portion of an application in the patent application publication (Sec. 
1.215), if publication of the application or portion thereof would 
violate Federal or state law, or if the application or portion thereof 
contains offensive or disparaging material.
    (e) The publication fee set forth in Sec. 1.18(d) must be paid in 
each application published under this section before the patent will be 
granted. If an application is subject to publication under this section, 
the sum specified in the notice of allowance under Sec. 1.311 will also 
include the publication fee which must be paid within three months from 
the date of mailing of the notice of allowance to avoid abandonment of 
the application. This three-month period is not extendable. If the 
application is not published under this section, the publication fee (if 
paid) will be refunded.

[65 FR 57058, Sept. 20, 2000, as amended at 70 FR 3891, Jan. 27, 2005]



Sec. 1.213  Nonpublication request.

    (a) If the invention disclosed in an application has not been and 
will not be the subject of an application filed in another country, or 
under a multilateral international agreement, that requires publication 
of applications eighteen months after filing, the application will not 
be published under 35 U.S.C. 122(b) and Sec. 1.211 provided:
    (1) A request (nonpublication request) is submitted with the 
application upon filing;
    (2) The request states in a conspicuous manner that the application 
is not to be published under 35 U.S.C. 122(b);
    (3) The request contains a certification that the invention 
disclosed in the application has not been and will not be the subject of 
an application filed in another country, or under a multilateral 
international agreement, that requires publication at eighteen months 
after filing; and
    (4) The request is signed in compliance with Sec. 1.33(b).
    (b) The applicant may rescind a nonpublication request at any time. 
A request to rescind a nonpublication request under paragraph (a) of 
this section must:
    (1) Identify the application to which it is directed;
    (2) State in a conspicuous manner that the request that the 
application is not to be published under 35 U.S.C. 122(b) is rescinded; 
and
    (3) Be signed in compliance with Sec. 1.33(b).
    (c) If an applicant who has submitted a nonpublication request under 
paragraph (a) of this section subsequently files an application directed 
to the invention disclosed in the application in which the 
nonpublication request was submitted in another country, or under

[[Page 112]]

a multilateral international agreement, that requires publication of 
applications eighteen months after filing, the applicant must notify the 
Office of such filing within forty-five days after the date of the 
filing of such foreign or international application. The failure to 
timely notify the Office of the filing of such foreign or international 
application shall result in abandonment of the application in which the 
nonpublication request was submitted (35 U.S.C. 122(b)(2)(B)(iii)).



Sec. 1.215  Patent application publication.

    (a) The publication of an application under 35 U.S.C. 122(b) shall 
include a patent application publication. The date of publication shall 
be indicated on the patent application publication. The patent 
application publication will be based upon the specification and 
drawings deposited on the filing date of the application, as well as the 
executed oath or declaration submitted to complete the application. The 
patent application publication may also be based upon amendments to the 
specification (other than the abstract or the claims) that are reflected 
in a substitute specification under Sec. 1.125(b), amendments to the 
abstract under Sec. 1.121(b), amendments to the claims that are 
reflected in a complete claim listing under Sec. 1.121(c), and 
amendments to the drawings under Sec. 1.121(d), provided that such 
substitute specification or amendment is submitted in sufficient time to 
be entered into the Office file wrapper of the application before 
technical preparations for publication of the application have begun. 
Technical preparations for publication of an application generally begin 
four months prior to the projected date of publication. The patent 
application publication of an application that has entered the national 
stage under 35 U.S.C. 371 may also include amendments made during the 
international stage. See paragraph (c) of this section for publication 
of an application based upon a copy of the application submitted via the 
Office electronic filing system.
    (b) If applicant wants the patent application publication to include 
assignee information, the applicant must include the assignee 
information on the application transmittal sheet or the application data 
sheet (Sec. 1.76). Assignee information may not be included on the 
patent application publication unless this information is provided on 
the application transmittal sheet or application data sheet included 
with the application on filing. Providing this information on the 
application transmittal sheet or the application data sheet does not 
substitute for compliance with any requirement of part 3 of this chapter 
to have an assignment recorded by the Office.
    (c) At applicant's option, the patent application publication will 
be based upon the copy of the application (specification, drawings, and 
oath or declaration) as amended, provided that applicant supplies such a 
copy in compliance with the Office electronic filing system requirements 
within one month of the mailing date of the first Office communication 
that includes a confirmation number for the application, or fourteen 
months of the earliest filing date for which a benefit is sought under 
title 35, United States Code, whichever is later.
    (d) If the copy of the application submitted pursuant to paragraph 
(c) of this section does not comply with the Office electronic filing 
system requirements, the Office will publish the application as provided 
in paragraph (a) of this section. If, however, the Office has not 
started the publication process, the Office may use an untimely filed 
copy of the application supplied by the applicant under paragraph (c) of 
this section in creating the patent application publication.

[65 FR 57058, Sept. 20, 2000, as amended at 69 FR 56544, Sept. 21, 2004]



Sec. 1.217  Publication of a redacted copy of an application.

    (a) If an applicant has filed applications in one or more foreign 
countries, directly or through a multilateral international agreement, 
and such foreign-filed applications or the description of the invention 
in such foreign-filed applications is less extensive than the 
application or description of the invention in the application filed in 
the Office, the applicant may submit a redacted copy of the application 
filed in the Office for publication, eliminating

[[Page 113]]

any part or description of the invention that is not also contained in 
any of the corresponding applications filed in a foreign country. The 
Office will publish the application as provided in Sec. 1.215(a) unless 
the applicant files a redacted copy of the application in compliance 
with this section within sixteen months after the earliest filing date 
for which a benefit is sought under title 35, United States Code.
    (b) The redacted copy of the application must be submitted in 
compliance with the Office electronic filing system requirements. The 
title of the invention in the redacted copy of the application must 
correspond to the title of the application at the time the redacted copy 
of the application is submitted to the Office. If the redacted copy of 
the application does not comply with the Office electronic filing system 
requirements, the Office will publish the application as provided in 
Sec. 1.215(a).
    (c) The applicant must also concurrently submit in paper (Sec. 
1.52(a)) to be filed in the application:
    (1) A certified copy of each foreign-filed application that 
corresponds to the application for which a redacted copy is submitted;
    (2) A translation of each such foreign-filed application that is in 
a language other than English, and a statement that the translation is 
accurate;
    (3) A marked-up copy of the application showing the redactions in 
brackets; and
    (4) A certification that the redacted copy of the application 
eliminates only the part or description of the invention that is not 
contained in any application filed in a foreign country, directly or 
through a multilateral international agreement, that corresponds to the 
application filed in the Office.
    (d) The Office will provide a copy of the complete file wrapper and 
contents of an application for which a redacted copy was submitted under 
this section to any person upon written request pursuant to Sec. 
1.14(c)(2), unless applicant complies with the requirements of 
paragraphs (d)(1), (d)(2), and (d)(3) of this section.
    (1) Applicant must accompany the submission required by paragraph 
(c) of this section with the following:
    (i) A copy of any Office correspondence previously received by 
applicant including any desired redactions, and a second copy of all 
Office correspondence previously received by applicant showing the 
redacted material in brackets; and
    (ii) A copy of each submission previously filed by the applicant 
including any desired redactions, and a second copy of each submission 
previously filed by the applicant showing the redacted material in 
brackets.
    (2) In addition to providing the submission required by paragraphs 
(c) and (d)(1) of this section, applicant must:
    (i) Within one month of the date of mailing of any correspondence 
from the Office, file a copy of such Office correspondence including any 
desired redactions, and a second copy of such Office correspondence 
showing the redacted material in brackets; and
    (ii) With each submission by the applicant, include a copy of such 
submission including any desired redactions, and a second copy of such 
submission showing the redacted material in brackets.
    (3) Each submission under paragraph (d)(1) or (d)(2) of this 
paragraph must also be accompanied by the processing fee set forth in 
Sec. 1.17(i) and a certification that the redactions are limited to the 
elimination of material that is relevant only to the part or description 
of the invention that was not contained in the redacted copy of the 
application submitted for publication.
    (e) The provisions of Sec. 1.8 do not apply to the time periods set 
forth in this section.



Sec. 1.219  Early publication.

    Applications that will be published under Sec. 1.211 may be 
published earlier than as set forth in Sec. 1.211(a) at the request of 
the applicant. Any request for early publication must be accompanied by 
the publication fee set forth in Sec. 1.18(d). If the applicant does 
not submit a copy of the application in compliance with the Office 
electronic filing system requirements pursuant to Sec. 1.215(c), the 
Office will publish the application as provided in Sec. 1.215(a). No 
consideration will be given to requests for publication on a certain 
date, and

[[Page 114]]

such requests will be treated as a request for publication as soon as 
possible.



Sec. 1.221  Voluntary publication or republication of patent application
publication.

    (a) Any request for publication of an application filed before, but 
pending on, November 29, 2000, and any request for republication of an 
application previously published under Sec. 1.211, must include a copy 
of the application in compliance with the Office electronic filing 
system requirements and be accompanied by the publication fee set forth 
in Sec. 1.18(d) and the processing fee set forth in Sec. 1.17(i). If 
the request does not comply with the requirements of this paragraph or 
the copy of the application does not comply with the Office electronic 
filing system requirements, the Office will not publish the application 
and will refund the publication fee.
    (b) The Office will grant a request for a corrected or revised 
patent application publication other than as provided in paragraph (a) 
of this section only when the Office makes a material mistake which is 
apparent from Office records. Any request for a corrected or revised 
patent application publication other than as provided in paragraph (a) 
of this section must be filed within two months from the date of the 
patent application publication. This period is not extendable.

                        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 Director 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 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. 41.106(e) of this title for service of papers in 
contested cases before the Board of Patent Appeals and Interferences.

[46 FR 29184, May 29, 1981, as amended at 49 FR 48454, Dec. 12, 1984; 69 
FR 50000, Aug. 12, 2004; 69 FR 58260, Sept. 30, 2004]



Sec. 1.251  Unlocatable file.

    (a) In the event that the Office cannot locate the file of an 
application, patent, or other patent-related proceeding after a 
reasonable search, the Office will notify the applicant or patentee and 
set a time period within which the applicant or patentee must comply 
with the notice in accordance with one of paragraphs (a)(1), (a)(2), or 
(a)(3) of this section.
    (1) Applicant or patentee may comply with a notice under this 
section by providing:
    (i) A copy of the applicant's or patentee's record (if any) of all 
of the correspondence between the Office and the applicant or patentee 
for such application, patent, or other proceeding (except for U.S. 
patent documents);
    (ii) A list of such correspondence; and
    (iii) A statement that the copy is a complete and accurate copy of 
the applicant's or patentee's record of all of the correspondence 
between the Office

[[Page 115]]

and the applicant or patentee for such application, patent, or other 
proceeding (except for U.S. patent documents), and whether applicant or 
patentee is aware of any correspondence between the Office and the 
applicant or patentee for such application, patent, or other proceeding 
that is not among applicant's or patentee's records.
    (2) Applicant or patentee may comply with a notice under this 
section by:
    (i) Producing the applicant's or patentee's record (if any) of all 
of the correspondence between the Office and the applicant or patentee 
for such application, patent, or other proceeding for the Office to copy 
(except for U.S. patent documents); and
    (ii) Providing a statement that the papers produced by applicant or 
patentee are applicant's or patentee's complete record of all of the 
correspondence between the Office and the applicant or patentee for such 
application, patent, or other proceeding (except for U.S. patent 
documents), and whether applicant or patentee is aware of any 
correspondence between the Office and the applicant or patentee for such 
application, patent, or other proceeding that is not among applicant's 
or patentee's records.
    (3) If applicant or patentee does not possess any record of the 
correspondence between the Office and the applicant or patentee for such 
application, patent, or other proceeding, applicant or patentee must 
comply with a notice under this section by providing a statement that 
applicant or patentee does not possess any record of the correspondence 
between the Office and the applicant or patentee for such application, 
patent, or other proceeding.
    (b) With regard to a pending application, failure to comply with one 
of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time 
period set in the notice will result in abandonment of the application.

[65 FR 69451, Nov. 17, 2000]



Sec. 1.265  Examination support document.

    (a) An examination support document as used in this part means a 
document that includes the following:
    (1) A statement that a preexamination search in compliance with 
paragraph (b) of this section was conducted, including an identification 
of the field of search by United States class and subclass and the date 
of the search, where applicable, and, for database searches, the search 
logic or chemical structure or sequence used as a query, the name of the 
file or files searched and the database service, and the date of the 
search;
    (2) A listing of the reference or references deemed most closely 
related to the subject matter of each of the claims (whether in 
independent or dependent form) in compliance with paragraph (c) of this 
section;
    (3) For each reference cited, an identification of all of the 
limitations of each of the claims (whether in independent or dependent 
form) that are disclosed by the reference;
    (4) A detailed explanation particularly pointing out how each of the 
independent claims is patentable over the cited references; and
    (5) A showing of where each limitation of each of the claims 
(whether in independent or dependent form) finds support under the first 
paragraph of 35 U.S.C. 112 in the written description of the 
specification. If the application claims the benefit of one or more 
applications under title 35, United States Code, the showing must also 
include where each limitation of each of the claims finds support under 
the first paragraph of 35 U.S.C. 112 in each such priority or benefit 
application in which such support exists.
    (b) The preexamination search referred to in paragraph (a)(1) of 
this section must involve U.S. patents and patent application 
publications, foreign patent documents, and non-patent literature, 
unless the applicant justifies with reasonable certainty that no 
references more pertinent than those already identified are likely to be 
found in the eliminated source and includes such a justification with 
the statement required by paragraph (a)(1) of this section. The 
preexamination search referred to in paragraph (a)(1) of this section 
must be directed to the claimed invention and encompass all of the 
limitations of each of the claims (whether in independent or dependent 
form), giving the claims the broadest reasonable interpretation.

[[Page 116]]

    (c) The listing of references required under paragraph (a)(2) of 
this section as part of an examination support document must include a 
list identifying each of the cited references in compliance with 
paragraphs (c)(1) and (c)(2) of this section, a copy of each reference 
if required by paragraph (c)(3) of this section, and each English 
language translation if required by paragraph (c)(4) of this section.
    (1) The list of cited references must itemize U.S. patents and U.S. 
patent application publications (including international applications 
designating the U.S.) in a section separate from the list of other 
references. Each page of the list of the cited references must include:
    (i) The application number, if known, of the application in which 
the examination support document is being filed;
    (ii) A column that provides a space next to each cited reference for 
the examiner's initials; and
    (iii) A heading that clearly indicates that the list is part of an 
examination support document listing of references.
    (2) The list of cited references must identify each cited reference 
as follows:
    (i) Each U.S. patent must be identified by first named patentee, 
patent number, and issue date.
    (ii) Each U.S. patent application publication must be identified by 
applicant, patent application publication number, and publication date.
    (iii) Each U.S. application must be identified by the applicant, 
application number, and filing date.
    (iv) Each foreign patent or published foreign patent application 
must 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.
    (v) Each publication must be identified by publisher (e.g., name of 
journal), author (if any), title, relevant pages of the publication, 
date, and place of publication.
    (3) The listing of references required under paragraph (a)(2) of 
this section must also be accompanied by a legible copy of each cited 
reference, except for references that are U.S. patents or U.S. patent 
application publications.
    (4) If a non-English language document is being cited in the listing 
of references required under paragraph (a)(2) of this section as part of 
an examination support document, any existing English language 
translation of the non-English language document must also be submitted 
if the translation is within the possession, custody, or control of, or 
is readily available to any individual identified in Sec. 1.56(c).
    (d) If an information disclosure statement is filed in an 
application in which an examination support document is required and has 
been filed, the applicant must also file a supplemental examination 
support document addressing the reference or references in the manner 
required under paragraphs (a)(3) and (a)(4) of this section unless the 
information disclosure statement cites only references that are less 
closely related to the subject matter of one or more claims (whether in 
independent or dependent form) than the references cited in the 
examination support document listing of references under paragraph 
(a)(2) of this section.
    (e) If an examination support document is required, but the 
examination support document or preexamination search is deemed to be 
insufficient, or the claims have been amended such that the examination 
support document no longer covers each of the claims, applicant will be 
notified and given a two-month time period that is not extendable under 
Sec. 1.136(a) within which, to avoid abandonment of the application, 
the applicant must:
    (1) File a corrected or supplemental examination support document in 
compliance with this section that covers each of the claims (whether in 
independent or dependent form); or
    (2) Amend the application such that it contains no more than five 
independent claims and no more than twenty-five total claims.
    (f) An examination support document, or a corrected or supplemental 
examination support document, is not required to comply with the 
requirements set forth in paragraph (a)(3) of this section if the 
examination support

[[Page 117]]

document is accompanied by a certification that any rights in the 
application have not been assigned, granted, conveyed, or licensed, and 
there is no obligation under contract or law to assign, grant, convey, 
or license any rights in the application, other than a security interest 
that has not been defaulted upon, to any entity other than:
    (1) A business or other concern:
    (i) Whose number of employees, including affiliates, does not exceed 
500 persons; and
    (ii) Which has not assigned, granted, conveyed, or licensed (and is 
under no obligation to do so) any rights in the invention to any person 
who made it and could not be classified as an independent inventor, or 
to any concern which would not qualify as a non-profit organization or a 
small business concern under paragraph (f)(1)(i) of this section.
    (2) A not-for-profit enterprise which is independently owned and 
operated and is not dominant in its field; or
    (3) A government of a city, county, town, township, village, school 
district, or special district, with a population of less than fifty 
thousand.

[72 FR 46842, Aug. 21, 2007]

                   Protests and Public Use Proceedings



Sec. 1.291  Protests by the public against pending applications.

    (a) A protest may be filed by a member of the public against a 
pending application, and it will be matched with the application file if 
it adequately identifies the patent application. A protest submitted 
within the time frame of paragraph (b) of this section, which is not 
matched, or not matched in a timely manner to permit review by the 
examiner during prosecution, due to inadequate identification, may not 
be entered and may be returned to the protestor where practical, or, if 
return is not practical, discarded.
    (b) The protest will be entered into the record of the application 
if, in addition to complying with paragraph (c) of this section, the 
protest has been served upon the applicant in accordance with Sec. 
1.248, or filed with the Office in duplicate in the event service is not 
possible; and, except for paragraph (b)(1) of this section, the protest 
was filed prior to the date the application was published under Sec. 
1.211, or a notice of allowance under Sec. 1.311 was mailed, whichever 
occurs first.
    (1) If a protest is accompanied by the written consent of the 
applicant, the protest will be considered if the protest is matched with 
the application in time to permit review during prosecution.
    (2) A statement must accompany a protest that it is the first 
protest submitted in the application by the real party in interest who 
is submitting the protest; or the protest must comply with paragraph 
(c)(5) of this section. This section does not apply to the first protest 
filed in an application.
    (c) In addition to compliance with paragraphs (a) and (b) of this 
section, a protest must include:
    (1) A listing of the patents, publications, or other information 
relied upon;
    (2) A concise explanation of the relevance of each item listed 
pursuant to paragraph (c)(1) of this section;
    (3) A copy of each listed patent, publication, or other item of 
information in written form, or at least the pertinent portions thereof;
    (4) An English language translation of all the necessary and 
pertinent parts of any non-English language patent, publication, or 
other item of information relied upon; and
    (5) If it is a second or subsequent protest by the same real party 
in interest, an explanation as to why the issue(s) raised in the second 
or subsequent protest are significantly different than those raised 
earlier and why the significantly different issue(s) were not presented 
earlier, and a processing fee under Sec. 1.17(i) must be submitted.
    (d) A member of the public filing a protest in an application under 
this section will not receive any communication 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. The limited involvement of the member of the public filing a 
protest pursuant to this section ends with the filing of the protest, 
and no further submission on behalf of the protestor will be considered, 
unless the

[[Page 118]]

submission is made pursuant to paragraph (c)(5) of this section.
    (e) Where a protest raising inequitable conduct issues satisfies the 
provisions of this section for entry, it will be entered into the 
application file, generally without comment on the inequitable conduct 
issues raised in it.
    (f) In the absence of a request by the Office, an applicant has no 
duty to, and need not, reply to a protest.
    (g) Protests that fail to comply with paragraphs (b) or (c) of this 
section may not be entered, and if not entered, will be returned to the 
protestor, or discarded, at the option of the Office.

[69 FR 56544, Sept. 21, 2004]



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 Director to determine whether a public use proceeding 
should be instituted. If instituted, the Director 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 part 41, subpart D, of this title. 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 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 date the application was 
published or the mailing of a notice of allowance under Sec. 1.311, 
whichever occurs first.
    (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 motion under Sec. 41.121(a)(1) of this title.

(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; 65 FR 57060, Sept. 20, 2000; 69 FR 50000, Aug. 
12, 2004]



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.

[[Page 119]]

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 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 
Director accompanied by the fee set forth in Sec. 1.17(g) 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. 41.31 of this title. 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, as amended at 69 FR 50001, Aug. 12, 2004; 69 
FR 56545, Sept. 21, 2004]



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 on which 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

[[Page 120]]

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 on which the notice of intent to publish issued 
pursuant to Sec. 1.294(c) must be in the form of a petition accompanied 
by the fee set forth in Sec. 1.17(g).

[69 FR 56545, Sept. 21, 2004]



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 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 any ex parte 
reexamination proceeding filed under Sec. 1.510, 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: In the U. S. Patent and Trademark Office, file a written 
notice of appeal directed to the Director (see Sec. Sec. 1.302 and 
1.304); and 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. For appeals by 
patent owners and third party requesters in inter partes reexamination 
proceedings filed under Sec. 1.913, Sec. 1.983 is controlling.

[68 FR 71006, Dec. 22, 2003]



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 Director 
within the time specified in Sec. 1.304.
    (b) In interferences, the notice must be served as provided in Sec. 
41.106(e) of this title.
    (c) In ex parte reexamination proceedings, the notice must be served 
as provided in Sec. 1.550(f).
    (d) In inter partes reexamination proceedings, the notice must be 
served as provided in Sec. 1.903.
    (e) Notices of appeal directed to the Director shall be mailed to or 
served by hand on the General Counsel as provided in Sec. 104.2.

[68 FR 71006, Dec. 22, 2003, as amended at 69 FR 50001, Aug. 12, 2004; 
69 FR 58260, Sept. 30, 2004]



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

    (a) Any applicant, or any owner of a patent involved in an ex parte 
reexamination proceeding filed before November 29, 1999, 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, 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 an ex parte reexamination proceeding filed before November 
29, 1999, has taken an appeal to the U.S. Court of Appeals for the 
Federal Circuit, he or she thereby

[[Page 121]]

waives his or her right to proceed under 35 U.S.C. 145.
    (c) A notice of election under 35 U.S.C. 141 to have all further 
proceedings on review conducted as provided in 35 U.S.C. 146 must be 
filed with the Office of the Solicitor and served as provided in Sec. 
41.106(e) of this title.
    (d) For an ex parte reexamination proceeding filed on or after 
November 29, 1999, and for any inter partes reexamination proceeding, no 
remedy by civil action under 35 U.S.C. 145 is available.

(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; 65 FR 76774, Dec. 7, 2000; 68 FR 71007, Dec. 
22, 2003; 69 FR 50001, Aug. 12, 2004; 69 FR 58260, Sept. 30, 2004]



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. 41.52(a), Sec. 41.79(a), or Sec. 41.127(d) of this title, 
the time for filing an appeal or commencing a civil action shall expire 
two months after action on the request. In contested cases before the 
Board of Patent Appeals and Interferences, the time for filing a cross-
appeal or cross-action expires:
    (i) Fourteen 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 Sec. 1.136, Sec. 1.550(c), or Sec. 1.956, or of 
Sec. 41.4 of this title.
    (3) The Director 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 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; 65 FR 76774, Dec. 7, 2000; 68 FR 71007, Dec. 
22, 2003; 69 FR 50001, Aug. 12, 2004]

                      Allowance and Issue of Patent



Sec. 1.311  Notice of allowance.

    (a) If, on examination, it appears that the applicant is entitled to 
a patent under the law, a notice of allowance will be sent to the 
applicant at the correspondence address indicated in Sec. 1.33. The 
notice of allowance shall specify a sum constituting the issue fee which 
must be paid within three months from the date of mailing of the notice 
of allowance to avoid abandonment of the application. The sum specified 
in the notice of allowance may also include the publication fee, in 
which case the issue fee and publication fee (Sec. 1.211(e)) must both 
be paid within three months from the date of mailing of the notice of 
allowance to avoid abandonment of the application. This three-month 
period is not extendable.
    (b) An authorization to charge the issue fee or other post-allowance 
fees set forth in Sec. 1.18 to a deposit account

[[Page 122]]

may be filed in an individual application only after mailing of the 
notice of allowance. The submission of either of the following after the 
mailing of a notice of allowance will operate as a request to charge the 
correct issue fee or any publication fee due to any deposit account 
identified in a previously filed authorization to charge such fees:
    (1) An incorrect issue fee or publication fee; or
    (2) A fee transmittal form (or letter) for payment of issue fee or 
publication fee.

[65 FR 57060, Sept. 20, 2000, as amended at 66 FR 67096, Dec. 28, 2001; 
69 FR 56545, Sept. 21, 2004]



Sec. 1.312  Amendments after allowance.

    No amendment may be made as a matter of right in an application 
after the mailing of the notice of allowance. Any amendment filed 
pursuant to this section must be filed before or with the payment of the 
issue fee, and may be entered on the recommendation of the primary 
examiner, approved by the Director, without withdrawing the application 
from issue.

[65 FR 14873, Mar. 20, 2000]



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. To 
request that the Office withdraw an application from issue, applicant 
must file a petition under this section including the fee set forth in 
Sec. 1.17(h) and a showing of good and sufficient reasons why 
withdrawal of the application from issue is necessary. A petition under 
this section is not required if a request for continued examination 
under Sec. 1.114 is filed prior to payment of the issue fee. If the 
Office withdraws the application from issue, the Office will issue a new 
notice of allowance if the Office again allows the application.
    (b) Once the issue fee has been paid, the Office will not withdraw 
the application from issue at its own initiative 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; or
    (4) For interference.
    (c) Once the issue fee has been paid, the application will not be 
withdrawn from issue upon petition by the applicant for any reason 
except:
    (1) Unpatentability of one of more claims, which petition must be 
accompanied by an unequivocal statement that one or more claims are 
unpatentable, an amendment to such claim or claims, and an explanation 
as to how the amendment causes such claim or claims to be patentable;
    (2) Consideration of a request for continued examination in 
compliance with Sec. 1.114; or
    (3) Express abandonment of the application. Such express abandonment 
may be in favor of a continuing application.
    (d) A petition under this section will not be effective to withdraw 
the application from issue unless it is actually received and granted by 
the appropriate officials before the date of issue. Withdrawal of an 
application from issue after payment of the issue fee may not be 
effective to avoid publication of application information.

[65 FR 14873, Mar. 20, 2000, as amended at 65 FR 50105, Aug. 16, 2000]



Sec. 1.314  Issuance of patent.

    If applicant timely pays the issue fee, the Office will issue the 
patent in regular course unless the application is withdrawn from issue 
(Sec. 1.313) or the Office defers issuance of the patent. To request 
that the Office defer issuance of a patent, applicant must file a 
petition under this section including the fee set forth in Sec. 1.17(h) 
and a showing of good and sufficient reasons why it is necessary to 
defer issuance of the patent.

[65 FR 54677, Sept. 8, 2000]



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]

[[Page 123]]



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).
    (c) A terminal disclaimer, when filed to obviate judicially created 
double patenting in a patent application or in a reexamination 
proceeding except as provided for in paragraph (d) of this section, 
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 
judicially created double patenting.
    (d) A terminal disclaimer, when filed in a patent application or in 
a reexamination proceeding to obviate double patenting based upon a 
patent or application that is not commonly owned but was disqualified 
under 35 U.S.C. 103(c) as resulting from activities undertaken within 
the scope of a joint research agreement, must:

[[Page 124]]

    (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 be signed in accordance with paragraph 
(a)(1) of this section if filed in a reexamination proceeding; and
    (3) Include a provision waiving the right to separately enforce any 
patent granted on that application or any patent subject to the 
reexamination proceeding and the patent or any patent granted on the 
application which formed the basis for the double patenting, and 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 and the patent, or any patent granted on the 
application, which formed the basis for the double patenting are not 
separately enforced.

[58 FR 54510, Oct. 22, 1993, as amended at 61 FR 42807, Aug. 19, 1996; 
70 FR 1824, Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005]

                     Correction of Errors in Patent



Sec. 1.322  Certificate of correction of Office mistake.

    (a)(1) The Director may issue a certificate of correction pursuant 
to 35 U.S.C. 254 to correct a mistake in a patent, incurred through the 
fault of the Office, which mistake is clearly disclosed in the records 
of the Office:
    (i) At the request of the patentee or the patentee's assignee;
    (ii) Acting sua sponte for mistakes that the Office discovers; or
    (iii) Acting on information about a mistake supplied by a third 
party.
    (2)(i) There is no obligation on the Office to act on or respond to 
a submission of information or request to issue a certificate of 
correction by a third party under paragraph (a)(1)(iii) of this section.
    (ii) Papers submitted by a third party under this section will not 
be made of record in the file that they relate to nor be retained by the 
Office.
    (3) If the request relates to a patent involved in an interference, 
the request must comply with the requirements of this section and be 
accompanied by a motion under Sec. 41.121(a)(2) or Sec. 41.121(a)(3) 
of this title.
    (4) The Office will not issue a certificate of correction under this 
section without first notifying the patentee (including any assignee of 
record) at the correspondence address of record as specified in Sec. 
1.33(a) and affording the patentee or an assignee an opportunity to be 
heard.
    (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 
Director 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; 
65 FR 54677, Sept. 8, 2000; 69 FR 50001, Aug. 12, 2004]



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

    The Office may issue a certificate of correction under the 
conditions specified in 35 U.S.C. 255 at the request of the patentee or 
the patentee's assignee, upon payment of the fee set forth in Sec. 
1.20(a). If the request relates to a patent involved in an interference, 
the request must comply with the requirements of this section and be 
accompanied by a motion under Sec. 41.121(a)(2) or Sec. 41.121(a)(3) 
of this title.

[69 FR 50001, Aug. 12, 2004]



Sec. 1.324  Correction of inventorship in patent, pursuant to 35 U.S.C. 256.

    (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 Director, pursuant to 35 U.S.C. 256, may, on application 
of all the parties and assignees, 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. 
41.121(a)(2) or Sec. 41.121(a)(3) of this title.

[[Page 125]]

    (b) Any request to correct inventorship of a patent pursuant to 
paragraph (a) of this section must be accompanied by:
    (1) Where one or more persons are being added, a statement from each 
person who is being added 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 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).
    (c) For correction of inventorship in an application, see Sec. Sec. 
1.48 and 1.497.
    (d) In a contested case before the Board of Patent Appeals and 
Interferences under part 41, subpart D, of this title, a request for 
correction of a patent must be in the form of a motion under Sec. 
41.121(a)(2) or Sec. 41.121(a)(3) of this title.

[62 FR 53199, Oct. 10, 1997, as amended at 65 FR 54677, Sept. 8, 2000; 
69 FR 50001, Aug. 12, 2004; 69 FR 56545, Sept. 21, 2004; 70 FR 3891, 
Jan. 27, 2005]



Sec. 1.325  Other mistakes not corrected.

    Mistakes other than those provided for in Sec. Sec. 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. 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 Sec. Sec. 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

[[Page 126]]

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.
    (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 Sec. Sec. 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

[[Page 127]]

    (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.
    (c) A fee address must be an address associated with a Customer 
Number.

[49 FR 34725, Aug. 31, 1984, as amended at 69 FR 29878, May 26, 2004]



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 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 
Director 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 patent number, and the application number of the United 
States application for the patent on which the maintenance fee is being 
paid. If the payment includes identification of only the patent number 
(i.e., does not identify the application number of the United States 
application for the patent on which the maintenance fee is being paid), 
the Office may apply the payment to the patent identified by patent 
number in the payment or may return the payment.
    (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.

[[Page 128]]

    (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. 1.27(g).
    (g) Maintenance fees and surcharges relating thereto will not be 
refunded except in accordance with Sec. Sec. 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; 65 FR 54677, Sept. 8, 2000; 65 FR 78960, 
Dec. 18, 2000]



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 Director to 
accept and record the maintenance fee.
    (b) Any petition under this section must be filed within two 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(g). 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 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; 
69 FR 56545, Sept. 21, 2004]



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

    (a) The Director 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 
Director 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 Director 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

[[Page 129]]

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(f). 
After the decision on the petition for reconsideration, no further 
reconsideration or review of the matter will be undertaken by the 
Director. 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; 69 FR 56545, Sept. 
21, 2004]



              Subpart C_International Processing Provisions

    Authority: Secs. 1.401 to 1.499 also issued under 35 U.S.C. 41 and 
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.
    (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

[[Page 130]]

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 Director, in accordance with the 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-type search reports (PCT Art. 
15, 17 and 18, and PCT Rules 25, 33 to 45 and 47), and issuing 
declarations that no international search report will be established 
(PCT Article 17(2)(a));
    (4) Preparing written opinions of the International Searching 
Authority in accordance with PCT Rule 43bis (when necessary); and
    (5) Transmitting the international search report and the written 
opinion of the International Searching Authority to the applicant and 
the International Bureau.

[43 FR 20466, May 11, 1978, as amended at 68 FR 59886, Oct. 20, 2003]



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

[[Page 131]]

    (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 Director, 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. 1.417  Submission of translation of international publication.

    The submission of an English language translation of the publication 
of an international application pursuant to 35 U.S.C. 154(d)(4) must 
clearly identify the international application to which it pertains 
(Sec. 1.5(a)) and be clearly identified as a submission pursuant to 35 
U.S.C. 154(d)(4). Otherwise, the submission will be treated as a filing 
under 35 U.S.C. 111(a). Such submissions should be marked ``Mail Stop 
PCT.''

[68 FR 71007, Dec. 22, 2003]



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 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

[[Page 132]]

required by Sec. 1.445(a)(4), 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, for the purposes 
of the designation of the United States, an international application 
must be filed, and will be accepted by the Patent and Trademark Office 
for the national stage only if filed, by the inventor or as provided in 
Sec. Sec. 1.422 or 1.423. Joint inventors must jointly apply for an 
international application.
    (c) For the purposes of designations other than the United States, 
international applications may be filed by the assignee or owner.
    (d) A registered attorney or agent of the applicant may sign the 
international application Request and file the international application 
for the applicant. A separate power of attorney from each applicant may 
be required.
    (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) Requests for changes in the indications concerning the 
applicant, agent, or common representative of an international 
application shall be made in accordance with PCT Rule 92bis and may be 
required to be signed by all applicants.
    (g) Requests for withdrawals of the international application, 
designations, priority claims, the Demand, or elections shall be made in 
accordance with PCT Rule 90bis and must be signed by all applicants. A 
separate power of attorney from the applicants will be required for the 
purposes of any request for a withdrawal in accordance with PCT Rule 
90bis which is not signed by all applicants. The submission of a 
separate power of attorney may be excused upon the request of another 
applicant where one or more inventors cannot be found or reached after 
diligent effort. Such a request must be accompanied by a statement 
explaining to the satisfaction of the Director the lack of the signature 
concerned.

[43 FR 20466, May 11, 1978, as amended at 53 FR 47810, Nov. 28, 1988; 60 
FR 21440, May 2, 1995; 68 FR 59887, Oct. 20, 2003; 68 FR 67805, Dec. 4, 
2003]



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.

                      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);

[[Page 133]]

    (iii) The name of the applicant, as prescribed (note Sec. Sec. 
1.421-1.423);
    (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 international filing 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 
international filing, transmittal, and search fee payable is the 
international filing, transmittal, and search fee in effect on the 
receipt date of the international application.
    (1) If the international filing, 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 which 
imposes a late payment fee, applicant will be notified and given one 
month within which to pay the deficient fees plus the late payment fee. 
Subject to paragraph (c)(2) of this section, the late payment fee will 
be equal to the greater of:
    (i) Fifty percent of the amount of the deficient fees; or
    (ii) An amount equal to the transmittal fee;
    (2) The late payment fee shall not exceed an amount equal to fifty 
percent of the international filing fee not taking into account any fee 
for each sheet of the international application in excess of thirty 
sheets (PCT Rule 16bis).
    (3) The one-month time limit set pursuant to paragraph (c) of this 
section to pay deficient fees may not be extended.
    (d) If the payment needed to cover the transmittal fee, the 
international filing fee, the search fee, and the 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; 68 FR 59887, Oct. 20, 2003; 68 FR 67805, Dec. 4, 2003]



Sec. 1.432  Designation of States by filing an international application.

    The filing of an international application request shall constitute:
    (a) The designation of all Contracting States that are bound by the 
Treaty on the international filing date;
    (b) An indication that the international application is, in respect 
of each designated State to which PCT Article 43 or 44 applies, for the 
grant of every kind of protection which is available by way of the 
designation of that State; and
    (c) An indication that the international application is, in respect 
of each designated State to which PCT Article 45(1) applies, for the 
grant of a regional patent and also, unless PCT Article 45(2) applies, a 
national patent.

[68 FR 59887, Oct. 20, 2003]



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 (21.0x29.7 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 United 
States Patent and Trademark Office. Letters requesting printed forms 
should be marked ``Mail Stop 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) For the purposes of the designation of the United States of 
America, an international application shall include:

[[Page 134]]

    (1) The name of the inventor; and
    (2) A reference to any prior-filed national application or 
international application designating the United States of America, if 
the benefit of the filing date for the prior-filed application is to be 
claimed.
    (e) An international application may also include in the Request a 
declaration of the inventors as provided for in PCT Rule 4.17(iv).

[43 FR 20466, May 11, 1978, as amended at 58 FR 4345, Jan. 14, 1993; 66 
FR 16006, Mar. 22, 2001; 66 FR 67096, Dec. 28, 2001; 68 FR 14337, Mar. 
25, 2003; 68 FR 59887, Oct. 20, 2003]



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) Drawings are required when they are necessary for the 
understanding of the invention (PCT Art. 7).
    (b) The physical requirements for drawings are set forth in PCT Rule 
11 and shall be adhered to.

[72 FR 51563, Sept. 10, 2007]



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 Director 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)..........$2,080.00
    (3) A supplemental search fee when required, per additional 
invention..........$2,080.00
    (4) 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 international filing fee shall be as prescribed in PCT Rule 
15.

[68 FR 59888, Oct. 20, 2003, as amended at 70 FR 3891, Jan. 27, 2005; 72 
FR 51563, Sept. 10, 2007; 73 FR 66759, Nov. 12, 2008]



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, may be refunded. A mere change of purpose 
after the payment of a fee will not entitle a party to a refund of such 
fee. The Office will not refund amounts of twenty-five dollars or less 
unless a refund is specifically requested and will not notify the payor 
of such amounts. If the payor or party requesting a refund does not 
provide the banking information necessary for making refunds by 
electronic funds transfer, the Office may use the banking information 
provided on the payment instrument to make any refund by electronic 
funds transfer.
    (b) Any request for refund under paragraph (a) of this section must 
be filed within two years from the date the fee was paid. If the Office 
charges a deposit account by an amount other

[[Page 135]]

than an amount specifically indicated in an authorization under Sec. 
1.25(b), any request for refund based upon such charge must be filed 
within two years from the date of the deposit account statement 
indicating such charge and include a copy of that deposit account 
statement. The time periods set forth in this paragraph are not 
extendable.
    (c) Refund of the supplemental search fees will be made if such 
refund is determined to be warranted by the Director or the Director'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; 65 FR 54677, Sept. 8, 
2000]

                                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.
    (b) Whenever the priority of an earlier United States national 
application or international application filed with the United States 
Receiving Office is claimed in an international application, the 
applicant may request in the Request or 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 United 
States Receiving Office not later than 16 months after the priority 
date, that the United States Patent and Trademark Office prepare a 
certified copy of the prior application for transmittal to the 
International Bureau (PCT Article 8 and PCT Rule 17). The fee for 
preparing a certified copy is set forth 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; 66 FR 16006, Mar. 22, 2001]



Sec. 1.452  Restoration of right of priority.

    (a) If the international application has an international filing 
date which is later than the expiration of the priority period as 
defined by PCT Rule 2.4 but within two months from the expiration of the 
priority period, the right of priority in the international application 
may be restored upon request if the delay in filing the international 
application within the priority period was unintentional.
    (b) A request to restore the right of priority in an international 
application under paragraph (a) of this section must be filed not later 
than two months from the expiration of the priority period and must 
include:
    (1) A notice under PCT Rule 26bis.1(a) adding the priority claim, if 
the priority claim in respect of the earlier application is not 
contained in the international application;

[[Page 136]]

    (2) The fee set forth in Sec. 1.17(t); and
    (3) A statement that the delay in filing the international 
application within the priority period was unintentional. The Director 
may require additional information where there is a question whether the 
delay was unintentional.
    (c) If the applicant makes a request for early publication under PCT 
Article 21(2)(b), any requirement under paragraph (b) of this section 
filed after the technical preparations for international publication 
have been completed by the International Bureau shall be considered as 
not having been submitted in time.
    (d) Restoration of a right of priority to a prior application by the 
United States Receiving Office under this section, or by any other 
Receiving Office under the provisions of PCT Rule 26bis.3, will not 
entitle applicants to a right of priority in any application which has 
entered the national stage under 35 U.S.C. 371, or in any application 
filed under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120 
and 365(c) to an international application in which the right to 
priority has been restored.

[72 FR 51563, Sept. 10, 2007]

                             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 United States 
Patent and Trademark Office or by an applicant appointed as a common 
representative (PCT Art. 49, Rules 4.8 and 90 and Sec. 11.9). 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 
applicant, in the Demand form, signed by applicant, 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; 68 FR 59888, Oct. 20, 2003; 69 FR 35452, June 
24, 2004]

                       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 137]]

                                 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 under PCT Rule 
26bis.1(a), or a priority claim is added under PCT Rule 26bis.1(a), 
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 filing date of the earliest 
remaining priority claim under PCT Article 8 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; 72 
FR 51564, Sept. 10, 2007]



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.
    (c) Corrections or additions to the Request of any declarations 
under PCT Rule 4.17 should be submitted to the International Bureau as 
prescribed by PCT Rule 26ter.

[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998; 66 
FR 16006, Mar. 22, 2001]



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

[[Page 138]]

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 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 Director or the Director'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

[[Page 139]]

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 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 within the applicable time limit set forth 
in PCT Rule 57.3.
    (b) The Demand shall be made on a standardized form (PCT Rule 53). 
Copies of the printed Demand forms are available from the United States 
Patent and Trademark Office. Letters requesting printed Demand forms 
should be marked ``Mail Stop PCT.''
    (c) 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).
    (d) The filing of a Demand shall constitute the election of all 
Contracting States which are designated and are bound by Chapter II of 
the Treaty on the international filing date (PCT Rule 53.7).
    (e) Any Demand filed after the expiration of the applicable time 
limit set forth in PCT Rule 54bis.1(a) shall be considered as if it had 
not been submitted (PCT Rule 54bis.1(b)).

[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; 67 FR 523, Jan. 4, 
2002; 68 FR 14337, Mar. 25, 2003; 68 FR 59888, Oct. 20, 2003]



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 payment.
    (1) If the handling and preliminary examination 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, as amended at 68 FR 59888, Oct. 20, 2003]



Sec. 1.482  International preliminary examination fees.

    (a) The following fees and charges for international preliminary 
examination are established by the Director under the authority of 35 
U.S.C. 376:
    (1) The following preliminary examination fee is due on filing the 
Demand:
    (i) If 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--
$600.00
    (ii) If the International Searching Authority for the international 
application was an authority other than the United States Patent and 
Trademark Office--$750.00
    (2) An additional preliminary examination fee when required, per 
additional invention--$600.00

[[Page 140]]

    (b) The handling fee is due on filing the Demand and shall be as 
prescribed in PCT Rule 57.

[68 FR 59888, Oct. 20, 2003]



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 in accordance 
with PCT Rule 69.1.
    (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) The written opinion established by the International Searching 
Authority under PCT Rule 43bis.1 shall be considered to be a written 
opinion of the United States International Preliminary Examining 
Authority for the purposes of paragraph (d) of this section.
    (f) The International Preliminary Examining Authority may establish 
further written opinions under paragraph (d) of this section.
    (g) If no written opinion under paragraph (d) of this section is 
necessary, or if no further written opinion under paragraph (f) of this 
section is to be established, 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.
    (h) An applicant will be permitted a personal or telephone interview 
with the examiner, which may be requested after the filing of a Demand, 
and must be conducted during the period between the establishment of the 
written opinion and the establishment of the international preliminary 
examination report. 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 or, if not filed by applicant be made of record in the file by 
the examiner.
    (i) If the application whose priority is claimed in the 
international application is in a language other than English, the 
United States International Preliminary Examining Authority may, where 
the validity of the priority claim is relevant for the formulation of 
the opinion referred to in Article 33(1), invite the applicant to 
furnish an English translation of the priority document within two 
months from the date of the invitation. If the translation is not 
furnished within that time limit, the international preliminary report 
may be established as if the priority had not been claimed.

[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; 66 FR 16006, Mar. 
22, 2001; 68 FR 59888, Oct. 20, 2003]



Sec. 1.485  Amendments by applicant during international preliminary examination.

    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 be made in accordance with PCT Rule 66.8.

[74 FR 31373, July 1, 2009]



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.

[[Page 141]]

    (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 Director or the Director'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  National stage commencement and entry.

    (a) Subject to 35 U.S.C. 371(f), the national stage shall commence 
with the expiration of the applicable time limit under PCT Article 22 
(1) or (2), or under PCT Article 39(1)(a).
    (b) An international application enters the national stage when the 
applicant has filed the documents and fees required by 35 U.S.C. 371(c) 
within the period set in Sec. 1.495.

[67 FR 523, Jan. 4, 2002]



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 for an international application entering 
the national stage under 35 U.S.C. 371 if the

[[Page 142]]

basic national fee was not paid before December 8, 2004:

By a small entity (Sec. 1.27(a))...........................    $165.00
By other than a small entity.................................    $330.00
 

    (b) Search fee for an international application entering the 
national stage under 35 U.S.C. 371 if the basic national fee was not 
paid before December 8, 2004:
    (1) If an international preliminary examination report on the 
international application prepared by the United States International 
Preliminary Examining Authority or a written opinion on the 
international application prepared by the United States International 
Searching Authority 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 of the claims presented 
in the application entering the national stage:

By a small entity (Sec. 1.27(a))...........................      $0.00
By other than a small entity.................................      $0.00
 

    (2) If the 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. 1.27(a))..........................      $50.00
By other than a small entity................................     $100.00
 

    (3) If an international search report on the international 
application has been prepared by an International Searching Authority 
other than the United States International Searching Authority and is 
provided, or has been previously communicated by the International 
Bureau, to the Office:

By a small entity (Sec. 1.27(a))...........................    $215.00
By other than a small entity.................................    $430.00
 

    (4) In all situations not provided for in paragraphs (b)(1), (b)(2), 
or (b)(3) of this section:

By a small entity (Sec. 1.27(a))...........................    $270.00
By other than a small entity.................................    $540.00
 

    (c) The examination fee for an international application entering 
the national stage under 35 U.S.C. 371 if the basic national fee was not 
paid before December 8, 2004:
    (1) If an international preliminary examination report on the 
international application prepared by the United States International 
Preliminary Examining Authority or a written opinion on the 
international application prepared by the United States International 
Searching Authority 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 of the claims presented 
in the application entering the national stage:

By a small entity (Sec. 1.27(a))...........................      $0.00
By other than a small entity.................................      $0.00
 

    (2) In all situations not provided for in paragraph (c)(1) of this 
section:

By a small entity (Sec. 1.27(a))...........................    $110.00
By other than a small entity.................................    $220.00
 

    (d) In addition to the basic national fee, for filing or on later 
presentation at any other time of each claim in independent form in 
excess of 3:

By a small entity (Sec. 1.27(a))...........................    $110.00
By other than a small entity.................................    $220.00
 

    (e) In addition to the basic national fee, for filing or on later 
presentation at any other time of each claim (whether dependent or 
independent) 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. 1.27(a))...........................     $26.00
By other than a small entity.................................     $52.00
 

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

By a small entity (Sec. 1.27(a))...........................    $195.00
By other than a small entity.................................    $390.00
 

    (g) If the excess claims fees required by paragraphs (d) and (e) of 
this section and multiple dependent claim fee required by paragraph (f) 
of this section are not paid with the basic national fee or on later 
presentation of the claims for which the excess claims or multiple 
dependent claim fees are due, the fees required by paragraphs (d), (e), 
and (f) of this section must be paid or the claims canceled by amendment 
prior to the expiration of the time period set for reply by the Office 
in any notice of fee deficiency in order to avoid abandonment.

[[Page 143]]

    (h) Surcharge for filing any of the search fee, the examination fee, 
or the oath or declaration after the date of the commencement of the 
national stage (Sec. 1.491(a)) pursuant to Sec. 1.495(c):
    By a small entity (Sec. 1.27(a))--$65.00
    By other than a small entity--$130.00
    (i) For filing an English translation of an international 
application or of any annexes to an international preliminary 
examination report later than thirty months after the priority date 
(Sec. Sec. 1.495(c) and (e))--$130.00.
    (j) Application size fee for any international application for which 
the basic national fee was not paid before December 8, 2004, the 
specification and drawings of which exceed 100 sheets of paper, for each 
additional 50 sheets or fraction thereof:

By a small entity (Sec. 1.27(a))...........................    $135.00
By other than a small entity.................................    $270.00
 


[70 FR 3892, Jan. 27, 2005, as amended at 70 FR 5054, Feb. 1, 2005; 70 
FR 30365, May 26, 2005; 70 FR 35378, June 20, 2005; 72 FR 46902, Aug. 
22, 2007; 73 FR 55055, Sept. 28, 2007; 73 FR 47541, Aug. 14, 2008]



Sec. 1.495  Entering the national stage in the United States of America.

    (a) The applicant in an international application 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. The thirty-month time period set forth in paragraphs (b), (c), 
(d), (e) and (h) of this section may not be extended. 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 thirty 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)).
    (c)(1) If applicant complies with paragraph (b) of this section 
before expiration of thirty months from the priority date, the Office 
will notify the applicant if he or she has omitted any of:
    (i) A translation of the international application, as filed, into 
the English language, if it was originally filed in another language and 
if any English language translation of the publication of the 
international application previously submitted under 35 U.S.C. 154(d) 
(Sec. 1.417) is not also a translation of the international application 
as filed (35 U.S.C. 371(c)(2));
    (ii) The oath or declaration of the inventor (35 U.S.C. 371(c)(4) 
and Sec. 1.497), if a declaration of inventorship in compliance with 
Sec. 1.497 has not been previously submitted in the international 
application under PCT Rule 4.17(iv) within the time limits provided for 
in PCT Rule 26ter.1;
    (iii) The search fee set forth in Sec. 1.492(b);
    (iv) The examination fee set forth in Sec. 1.492(c); and
    (v) Any application size fee required by Sec. 1.492(j).
    (2) A notice under paragraph (c)(1) of this section will set a 
period of time within which applicant must provide any omitted 
translation, oath or declaration of the inventor, search fee set forth 
in Sec. 1.492(b), examination fee set forth in Sec. 1.492(c), and any 
application size fee required by Sec. 1.492(j) in order to avoid 
abandonment of the application.
    (3) The payment of the processing fee set forth in Sec. 1.492(i) is 
required for acceptance of an English translation later than the 
expiration of thirty months after the priority date. The payment of the 
surcharge set forth in Sec. 1.492(h) is required for acceptance of any 
of the search fee, the examination fee, or the oath or declaration of 
the inventor after the date of the commencement of the national stage 
(Sec. 1.491(a)).
    (4) 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

[[Page 144]]

a translation of those amendments into English, if they were made in 
another language, must be furnished not later than the expiration of 
thirty months from the priority date. Amendments under PCT Article 19 
which are not received by the expiration of thirty months from the 
priority date will be considered to be canceled.
    (e) A translation into English of any annexes to an international 
preliminary examination report (if applicable), if the annexes were made 
in another language, must be furnished not later than the expiration of 
thirty months from the priority date. Translations of the annexes which 
are not received by the expiration of thirty 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 canceled.
    (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 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. If the documents and fees contain 
conflicting indications as between an application under 35 U.S.C. 111 
and a submission to enter the national stage under 35 U.S.C. 371, the 
documents and fees will be treated as a submission to enter the national 
stage under 35 U.S.C. 371.
    (h) An international application becomes abandoned as to the United 
States thirty months from the priority date if the requirements of 
paragraph (b) of this section have not been complied with within thirty 
months from the priority date. If the requirements of paragraph (b) of 
this section are complied with within thirty months from the priority 
date but either of any required translation of the international 
application as filed 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; 65 FR 57060, Sept. 20, 2000; 67 FR 523, Jan. 4, 
2002; 68 FR 71007, Dec. 22, 2003; 70 FR 3892, Jan. 27, 2005; 70 FR 
30365, May 26, 2005; 72 FR 46843, Aug. 21, 2007]



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) National stage applications having paid therein the search fee 
as set forth in Sec. 1.492(b)(1) and the examination fee as set forth 
in Sec. 1.492(c)(1) 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 will be advanced out of turn for examination.

[52 FR 20051, May 28, 1987, as amended at 70 FR 5055, Feb. 1, 2005; 70 
FR 35378, June 20, 2005]



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 Sec. 1.495, 
and a declaration in compliance with this section has not been 
previously submitted in the international application under PCT Rule 
4.17(iv) within the time limits provided for in PCT Rule 26ter.1, he or 
she must file an oath or declaration that:
    (1) Is executed in accordance with either Sec. Sec. 1.66 or 1.68;
    (2) Identifies the application 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

[[Page 145]]

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 Sec. Sec. 1.42, 1.43 or 1.47.
    (2) If the person making the oath or declaration or any supplemental 
oath or declaration is not the inventor (Sec. Sec. 1.42, 1.43, or Sec. 
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 would have been required to state. If the person 
signing the oath or declaration is the legal representative of a 
deceased inventor, the oath or declaration shall also state that the 
person is a legal representative and the citizenship, residence and 
mailing address of the legal representative.
    (c) Subject to paragraph (f) of this section, 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 Sec. 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 or an application data 
sheet will be required in accordance with Sec. 1.67.
    (d) If the oath or declaration filed pursuant to 35 U.S.C. 371(c)(4) 
and this section names an inventive entity different from the inventive 
entity set forth in the international application, or if a change to the 
inventive entity has been effected under PCT Rule 92bis subsequent to 
the execution of any oath or declaration which was filed in the 
application under PCT Rule 4.17(iv) or this section and the inventive 
entity thus changed is different from the inventive entity identified in 
any such oath or declaration, applicant must submit:
    (1) A statement from each person being added as an inventor and from 
each person being deleted as an inventor that any error in inventorship 
in the international application occurred without deceptive intention on 
his or her part;
    (2) The processing fee set forth in Sec. 1.17(i);
    (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) of 
this chapter); and
    (4) Any new oath or declaration required by paragraph (f) of this 
section.
    (e) The Office may require such other information as may be deemed 
appropriate under the particular circumstances surrounding the 
correction of inventorship.
    (f) A new oath or declaration in accordance with this section must 
be filed to satisfy 35 U.S.C. 371(c)(4) if the declaration was filed 
under PCT Rule 4.17(iv), and:
    (1) There was a change in the international filing date pursuant to 
PCT Rule 20.5(c) after the declaration was executed; or
    (2) A change in the inventive entity was effected under PCT Rule 
92bis after the declaration was executed and no declaration which sets 
forth and is executed by the inventive entity as so changed has been 
filed in the application.
    (g) If a priority claim has been corrected or added pursuant to PCT 
Rule 26bis during the international stage after the declaration of 
inventorship was executed in the international application under PCT 
Rule 4.17(iv), applicant will be required to submit either a new oath or 
declaration or an application data sheet as set forth in Sec. 1.76 
correctly identifying the application upon which priority is claimed.

[61 FR 42807, Aug. 19, 1996, as amended at 65 FR 54677, Sept. 8, 2000; 
66 FR 16006, Mar. 22, 2001; 66 FR 28054, May 22, 2001; 67 FR 524, Jan. 
4, 2002; 67 FR 6075, Feb. 8, 2002; 72 FR 51564, Sept. 10, 2007; 72 FR 
57863, Oct. 11, 2007]



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

[[Page 146]]

examiner. Review of any such requirement is provided under Sec. Sec. 
1.143 and 1.144.

[58 FR 4347, Jan. 14, 1993]



               Subpart D_Ex Parte 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 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 the 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. Such 
citations shall be entered in the patent file except as set forth in 
Sec. Sec. 1.502 and 1.902.
    (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.

[46 FR 29185, May 29, 1981, as amended at 65 FR 76774, Dec. 7, 2000]



Sec. 1.502  Processing of prior art citations during an ex parte reexamination
proceeding.

    Citations by the patent owner under Sec. 1.555 and by an ex parte 
reexamination requester under either Sec. 1.510 or Sec. 1.535 will be 
entered in the reexamination 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 an ex parte reexamination requester under either Sec. 
1.510 or Sec. 1.535, will be delayed until the reexamination proceeding 
has been concluded by the issuance and publication of a reexamination 
certificate. See Sec. 1.902 for processing of prior art citations in 
patent and reexamination files during an inter partes reexamination 
proceeding filed under Sec. 1.913.

[72 FR 18905, Apr. 16, 2007]

                   Request for Ex Parte Reexamination



Sec. 1.510  Request for ex parte reexamination.

    (a) Any person may, at any time during the period of enforceability 
of a patent, file a request for an ex parte reexamination by the 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)(1).
    (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) A copy of the entire patent including the front face, drawings, 
and specification/claims (in double column format) for which 
reexamination is requested, and a copy of any disclaimer, certificate of 
correction, or reexamination certificate issued in the patent. All 
copies must have each page plainly written on only one side of a sheet 
of paper.

[[Page 147]]

    (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 ex parte 
reexamination required by paragraph (a) of this section and meet all the 
requirements by paragraph (b) of this section, then the person 
identified as requesting reexamination will be so notified and will 
generally be given an opportunity to complete the request within a 
specified time. Failure to comply with the notice will result in the ex 
parte reexamination request not being granted a filing date, and will 
result in placement of the request in the patent file as a citation if 
it complies with the requirements of Sec. 1.501.
    (d) The filing date of the request for ex parte reexamination is the 
date on which the request satisfies all the requirements of this 
section.
    (e) A request filed by the patent owner may include a proposed 
amendment in accordance with Sec. 1.530.
    (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.

(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; 65 FR 54678, Sept. 8, 2000; 65 FR 76775, Dec 
7, 2000; 71 FR 9262, Feb. 23, 2006; 71 FR 44223, Aug. 4, 2006; 72 FR 
18905, Apr. 16, 2007]



Sec. 1.515  Determination of the request for ex parte reexamination.

    (a) Within three months following the filing date of a request for 
an ex parte 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, will become a part of 
the official file of the patent, and will be 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 ex parte 
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 Director 
under Sec. 1.181 within one month of the mailing date of the examiner's 
determination refusing ex parte 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.

[65 FR 76775, Dec. 7, 2000]



Sec. 1.520  Ex parte reexamination at the initiative of the Director.

    The Director, 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 Director or which have been brought to the 
Director's attention, even though no request for reexamination has been 
filed in accordance with Sec. 1.510 or Sec. 1.913. The Director may 
initiate ex parte reexamination without a request for reexamination 
pursuant to Sec. 1.510 or Sec. 1.913. Normally requests from outside 
the Office that the Director undertake reexamination on his own 
initiative will not be considered. Any determination to initiate ex 
parte reexamination under this section will become a part of the 
official file of the patent and will be mailed to the patent owner at 
the address as provided for in Sec. 1.33(c).

[65 FR 76775, Dec. 7, 2000]

                         Ex Parte Reexamination



Sec. 1.525  Order for ex parte reexamination.

    (a) If a substantial new question of patentability is found pursuant 
to

[[Page 148]]

Sec. 1.515 or Sec. 1.520, the determination will include an order for 
ex parte reexamination of the patent for resolution of the question. If 
the order for ex parte reexamination resulted from a petition pursuant 
to Sec. 1.515(c), the ex parte reexamination will ordinarily be 
conducted by an examiner other than the examiner responsible for the 
initial determination under Sec. 1.515(a).
    (b) The notice published in the Official Gazette under Sec. 1.11(c) 
will be considered to be constructive notice and ex parte reexamination 
will proceed.

[65 FR 76775, Dec. 7, 2000]



Sec. 1.530  Statement by patent owner in ex parte reexamination; amendment
by patent owner in ex parte or inter partes reexamination; inventorship 

change in ex parte or inter partes reexamination.

    (a) Except as provided in Sec. 1.510(e), no statement or other 
response by the patent owner in an ex parte reexamination proceeding 
shall be filed prior to the determinations made in accordance with Sec. 
1.515 or Sec. 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, and it will be returned or discarded (at the 
Office's option).
    (b) The order for ex parte 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. Where the reexamination request was filed by a 
third party requester, any statement filed by the patent owner must be 
served upon the ex parte reexamination requester in accordance with 
Sec. 1.248.
    (d) Making amendments in a reexamination proceeding. A proposed 
amendment in an ex parte or an inter partes reexamination proceeding is 
made by filing a paper directing that proposed specified changes be made 
to the patent specification, including the claims, or to the drawings. 
An amendment paper directing that proposed specified changes be made in 
a reexamination proceeding may be submitted as an accompaniment to a 
request filed by the patent owner in accordance with Sec. 1.510(e), as 
part of a patent owner statement in accordance with paragraph (b) of 
this section, or, where permitted, during the prosecution of the 
reexamination proceeding pursuant to Sec. 1.550(a) or Sec. 1.937.
    (1) Specification other than the claims. Changes to the 
specification, other than to the claims, must be made by submission of 
the entire text of an added or rewritten paragraph including markings 
pursuant to paragraph (f) 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. The precise point in the 
specification must be identified where any added or rewritten paragraph 
is located. This paragraph applies whether the amendment is submitted on 
paper or compact disc (see Sec. Sec. 1.96 and 1.825).
    (2) Claims. An amendment paper must include the entire text of each 
patent claim which is being proposed to be changed by such amendment 
paper and of each new claim being proposed to be added by such amendment 
paper. For any claim changed by the amendment paper, a parenthetical 
expression ``amended,'' ``twice amended,'' etc., should follow the claim 
number. Each patent claim proposed to be changed and each proposed added 
claim must include markings pursuant to paragraph (f) of this section, 
except that a patent claim or proposed added claim should be canceled by 
a statement canceling the claim, without presentation of the text of the 
claim.
    (3) Drawings. Any change to the patent drawings must be submitted as 
a sketch on a separate paper showing the proposed changes in red for 
approval by the examiner. Upon approval of the changes by the examiner, 
only new sheets of drawings including the changes and in compliance with 
Sec. 1.84 must be filed. Amended figures must be identified as 
``Amended,'' and any added figure must be identified as

[[Page 149]]

``New.'' In the event a figure is canceled, the figure must be 
surrounded by brackets and identified as ``Canceled.''
    (4) The formal requirements for papers making up the reexamination 
proceeding other than those set forth in this section are set out in 
Sec. 1.52.
    (e) Status of claims and support for claim changes. Whenever there 
is an amendment to the claims pursuant to paragraph (d) of this section, 
there must also be supplied, on pages separate from the pages containing 
the changes, the status (i.e., pending or canceled), as of the date of 
the amendment, of all patent claims and of all added claims, and an 
explanation of the support in the disclosure of the patent for the 
changes to the claims made by the amendment paper.
    (f) Changes shown by markings. Any changes relative to the patent 
being reexamined which are made to the specification, including the 
claims, must include the following markings:
    (1) The matter to be omitted by the reexamination proceeding must be 
enclosed in brackets; and
    (2) The matter to be added by the reexamination proceeding must be 
underlined.
    (g) Numbering of patent claims preserved. Patent claims may not be 
renumbered. The numbering of any claims added in the reexamination 
proceeding must follow the number of the highest numbered patent claim.
    (h) Amendment of disclosure may be required. 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.
    (i) Amendments made relative to patent. All amendments must be made 
relative to the patent specification, including the claims, and 
drawings, which are in effect as of the date of filing the request for 
reexamination.
    (j) No enlargement of claim scope. 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, 
other than the cancellation of claims, will be incorporated into the 
patent by a certificate issued after the expiration of the patent.
    (k) Amendments not effective until certificate. Although the Office 
actions will treat proposed amendments as though they have been entered, 
the proposed amendments will not be effective until the reexamination 
certificate is issued and published.
    (l) Correction of inventorship in an ex parte or inter partes 
reexamination proceeding.  (1) When it appears in a patent being 
reexamined that the correct inventor or inventors were not named through 
error without deceptive intention on the part of the actual inventor or 
inventors, the Director may, on petition of all the parties set forth in 
Sec. 1.324(b)(1)-(3), including the assignees, and satisfactory proof 
of the facts and payment of the fee set forth in Sec. 1.20(b), or on 
order of a court before which such matter is called in question, include 
in the reexamination certificate to be issued under Sec. 1.570 or Sec. 
1.997 an amendment naming only the actual inventor or inventors. The 
petition must be submitted as part of the reexamination proceeding and 
must satisfy the requirements of Sec. 1.324.
    (2) Notwithstanding paragraph (l)(1) of this section, if a petition 
to correct inventorship satisfying the requirements of Sec. 1.324 is 
filed in a reexamination proceeding, and the reexamination proceeding is 
concluded other than by a reexamination certificate under Sec. 1.570 or 
Sec. 1.997, a certificate of correction indicating the change of 
inventorship stated in the petition will be issued upon request by the 
patentee.

[46 FR 29185, May 29, 1981, as amended at 62 FR 53200, Oct. 10, 1997; 65 
FR 54678, Sept. 8, 2000; 65 FR 76775, Dec. 7, 2000; 72 FR 18905, Apr. 
16, 2007]



Sec. 1.535  Reply by third party requester in ex parte reexamination.

    A reply to the patent owner's statement under Sec. 1.530 may be 
filed by the ex parte reexamination requester within two months from the 
date of service of the patent owner's statement. Any reply by the ex 
parte 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

[[Page 150]]

from the ex parte reexamination requester will be considered.

[65 FR 76776, Dec. 7, 2000]



Sec. 1.540  Consideration of responses in ex parte reexamination.

    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 ex parte reexamination requester pursuant to Sec. 1.535 
will be considered prior to examination.

[65 FR 76776, Dec. 7, 2000]



Sec. 1.550  Conduct of ex parte reexamination proceedings.

    (a) All ex parte 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 ex parte 
reexamination order and expiration of the time for submitting any 
responses, the examination will be conducted in accordance with 
Sec. Sec. 1.104 through 1.116 and will result in the issuance of an ex 
parte reexamination certificate under Sec. 1.570.
    (b) The patent owner in an ex parte reexamination proceeding will be 
given at least thirty days to respond to any Office action. In response 
to any rejection, such response may include further statements and/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 an ex parte 
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 a request effect any extension. 
Any request for such extension must be accompanied by the petition fee 
set forth in Sec. 1.17(g). 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 or any written statement of an interview 
required under Sec. 1.560(b), the prosecution in the ex parte 
reexamination proceeding will be a terminated prosecution, and the 
Director will proceed to issue and publish a certificate concluding the 
reexamination proceeding under Sec. 1.570 in accordance with the last 
action of the Office.
    (e) If a response by the patent owner is not timely filed in the 
Office,
    (1) The delay in filing such response may be excused if it is shown 
to the satisfaction of the Director that the delay was unavoidable; a 
petition to accept an unavoidably delayed response must be filed in 
compliance with Sec. 1.137(a); or
    (2) The response may nevertheless be accepted if the delay was 
unintentional; a petition to accept an unintentionally delayed response 
must be filed in compliance with Sec. 1.137(b).
    (f) The reexamination requester will be sent copies of Office 
actions issued during the ex parte reexamination proceeding. After 
filing of a request for ex parte 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.
    (g) The active participation of the ex parte 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:
    (1) in accordance with Sec. 1.510 or Sec. 1.535; or
    (2) entered in the patent file prior to the date of the order for ex 
parte reexamination pursuant to Sec. 1.525.
    (h) Submissions by third parties, filed after the date of the order 
for ex parte reexamination pursuant to Sec. 1.525,

[[Page 151]]

must meet the requirements of and will be treated in accordance with 
Sec. 1.501(a).

[65 FR 76776, Dec. 7, 2000, as amended at 69 FR 56545, Sept. 21, 2004; 
72 FR 18905, Apr. 16, 2007]



Sec. 1.552  Scope of reexamination in ex parte reexamination proceedings.

    (a) Claims in an ex parte reexamination proceeding will be examined 
on the basis of patents or printed publications and, with respect to 
subject matter added or deleted in the reexamination proceeding, on the 
basis of the requirements of 35 U.S.C. 112.
    (b) Claims in an ex parte reexamination proceeding will not be 
permitted to enlarge the scope of the claims of the patent.
    (c) Issues other than those indicated in paragraphs (a) and (b) of 
this section will not be resolved in a reexamination proceeding. If such 
issues are raised by the patent owner or third party requester during a 
reexamination proceeding, the existence of such issues will be noted by 
the examiner in the next Office action, in which case the patent owner 
may consider the advisability of filing a reissue application to have 
such issues considered and resolved.

[65 FR 76776, Dec. 7, 2000]



Sec. 1.555  Information material to patentability in ex parte reexamination 
and inter partes 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 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.

[[Page 152]]


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 raised by the patent owner or the third party requester 
during a reexamination proceeding, they will be noted as unresolved 
questions in accordance with Sec. 1.552(c).

[57 FR 2036, Jan 17, 1992, as amended at 65 FR 76776, Dec. 7, 2000]



Sec. 1.560  Interviews in ex parte reexamination proceedings.

    (a) Interviews in ex parte reexamination proceedings pending before 
the Office between examiners and the owners of such patents or their 
attorneys or agents of record must be conducted 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 Director. Interviews for the discussion of the 
patentability of claims in patents involved in ex parte reexamination 
proceedings will not be conducted prior to the first official action. 
Interviews should be arranged 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 in an ex 
parte reexamination proceeding, 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 the necessity 
for response to Office actions as specified in Sec. 1.111. Patent 
owner's response to an outstanding Office action after the interview 
does not remove the necessity for filing the written statement. The 
written statement must be filed as a separate part of a response to an 
Office action outstanding at the time of the interview, or as a separate 
paper within one month from the date of the interview, whichever is 
later.

[65 FR 76777, Dec. 7, 2000]



Sec. 1.565  Concurrent office proceedings which include an ex parte 
reexamination proceeding.

    (a) In an ex parte reexamination proceeding before the Office, the 
patent owner must inform the Office of any prior or concurrent 
proceedings in which the patent is or was involved such as 
interferences, reissues, ex parte reexaminations, inter partes 
reexaminations, or litigation and the results of such proceedings. See 
Sec. 1.985 for notification of prior or concurrent proceedings in an 
inter partes reexamination proceeding.
    (b) If a patent in the process of ex parte reexamination is or 
becomes involved in litigation, the Director shall determine whether or 
not to suspend the reexamination. See Sec. 1.987 for inter partes 
reexamination proceedings.
    (c) If ex parte reexamination is ordered while a prior ex parte 
reexamination proceeding is pending and prosecution in the prior ex 
parte reexamination proceeding has not been terminated, the ex parte 
reexamination proceedings will usually be merged and result in the 
issuance and publication of a single certificate under Sec. 1.570. For 
merger of inter partes reexamination proceedings, see Sec. 1.989(a). 
For merger of ex parte reexamination and inter partes reexamination 
proceedings, see Sec. 1.989(b).
    (d) If a reissue application and an ex parte reexamination 
proceeding on which an order pursuant to Sec. 1.525 has been mailed are 
pending concurrently on a patent, a decision will usually be made to 
merge the two proceedings or to suspend one of the two proceedings. 
Where merger of a reissue application and an ex parte reexamination 
proceeding is ordered, the merged examination will be conducted in 
accordance with Sec. Sec. 1.171 through 1.179, and the patent owner 
will be required to place and maintain the same claims in the

[[Page 153]]

reissue application and the ex parte reexamination proceeding during the 
pendency of the merged proceeding. The examiner's actions and responses 
by the patent owner in a merged proceeding will apply to both the 
reissue application and the ex parte reexamination proceeding and will 
be physically entered into both files. Any ex parte reexamination 
proceeding merged with a reissue application shall be concluded by the 
grant of the reissued patent. For merger of a reissue application and an 
inter partes reexamination, see Sec. 1.991.
    (e) If a patent in the process of ex parte reexamination is or 
becomes involved in an interference, the Director may suspend the 
reexamination or the interference. The Director will not consider a 
request to suspend an interference unless a motion (Sec. 41.121(a)(3) 
of this title) to suspend the interference has been presented to, and 
denied by, an administrative patent judge, and the request is filed 
within ten (10) days of a decision by an administrative patent judge 
denying the motion for suspension or such other time as the 
administrative patent judge may set. For concurrent inter partes 
reexamination and interference of a patent, see Sec. 1.993.

[65 FR 76776, Dec. 7, 2000, as amended at 69 FR 50001, Aug. 12, 2004; 72 
FR 18905, Apr. 16, 2007]

                   Ex Parte Reexamination Certificate



Sec. 1.570  Issuance and publication of ex parte reexamination certificate 
concludes ex parte reexamination proceeding.

    (a) To conclude an ex parte reexamination proceeding, the Director 
will issue and publish an ex parte reexamination certificate in 
accordance with 35 U.S.C. 307 setting forth the results of the ex parte 
reexamination proceeding and the content of the patent following the ex 
parte reexamination proceeding.
    (b) An ex parte reexamination certificate will be issued and 
published in each patent in which an ex parte reexamination proceeding 
has been ordered under Sec. 1.525 and has not been merged with any 
inter partes reexamination proceeding pursuant to Sec. 1.989(a). Any 
statutory disclaimer filed by the patent owner will be made part of the 
ex parte reexamination certificate.
    (c) The ex parte reexamination 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 ex parte reexamination certificate will also be 
mailed to the requester of the ex parte reexamination proceeding.
    (d) If an ex parte reexamination certificate has been issued and 
published which cancels all of the claims of the patent, no further 
Office proceedings will be conducted with that patent or any reissue 
applications or any reexamination requests relating thereto.
    (e) If the ex parte reexamination proceeding is terminated by the 
grant of a reissued patent as provided in Sec. 1.565(d), the reissued 
patent will constitute the ex parte reexamination certificate required 
by this section and 35 U.S.C. 307.
    (f) A notice of the issuance of each ex parte reexamination 
certificate under this section will be published in the Official Gazette 
on its date of issuance.

[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18905, Apr. 16, 2007]

Subpart E [Reserved]



            Subpart F_Adjustment and Extension of Patent Term

    Authority: 35 U.S.C. 2(b)(2), 154, and 156.

    Source: 52 FR 9394, Mar. 24, 1987, unless otherwise noted.

           Adjustment of Patent Term Due to Examination Delay



Sec. 1.701  Extension of patent term due to examination delay under the 
Uruguay Round Agreements Act (original applications, other than designs,

filed on or after June 8, 1995, and before May 29, 2000).

    (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

[[Page 154]]

to a decision in the review 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. If an 
application is remanded by a panel of the Board of Patent Appeals and 
Interferences and the remand is the last action by a panel of the Board 
of Patent Appeals and Interferences prior to the mailing of a notice of 
allowance under 35 U.S.C. 151 in the application, the remand shall be 
considered a decision in the review reversing an adverse determination 
of patentability as that phrase is used in 35 U.S.C. 154(b)(2) as 
amended by section 532(a) of the Uruguay Round Agreements Act, Public 
Law 103-465, 108 Stat. 4809, 4983-85 (1994), and a final decision in 
favor of the applicant under paragraph (c)(3) of this section. A remand 
by a panel of the Board of Patent Appeals and Interferences shall not be 
considered a decision in the review reversing an adverse determination 
of patentability as provided in this paragraph if there is filed a 
request for continued examination under 35 U.S.C. 132(b) that was not 
first preceded by the mailing, after such remand, of at least one of an 
action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
    (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. 41.39 of this title 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 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 Director, during which the applicant

[[Page 155]]

for patent did not act with due diligence. In determining the due 
diligence of an applicant, the Director 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.
    (e) The provisions of this section apply only to original patents, 
except for design patents, issued on applications filed on or after June 
8, 1995, and before May 29, 2000.

[60 FR 20228, Apr. 25, 1995, as amended at 65 FR 56391, Sept. 18, 2000; 
69 FR 21710, Apr. 22, 2004; 69 FR 50001, Aug. 12, 2004]



Sec. 1.702  Grounds for adjustment of patent term due to examination delay 
under the Patent Term Guarantee Act of 1999 (original applications, other than 

          designs, filed on or after May 29, 2000).

    (a) Failure to take certain actions within specified time frames. 
Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term 
of an original patent shall be adjusted if the issuance of the patent 
was delayed due to the failure of the Office to:
    (1) Mail at least one of a notification under 35 U.S.C. 132 or a 
notice of allowance under 35 U.S.C. 151 not later than fourteen months 
after the date on which the application was filed under 35 U.S.C. 111(a) 
or fulfilled the requirements of 35 U.S.C. 371 in an international 
application;
    (2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken 
under 35 U.S.C. 134 not later than four months after the date on which 
the reply was filed or the appeal was taken;
    (3) Act on an application not later than four months after the date 
of a decision by the Board of Patent Appeals and Interferences under 35 
U.S.C. 134 or 135 or a decision by a Federal court under 35 U.S.C. 141, 
145, or 146 where at least one allowable claim remains in the 
application; or
    (4) Issue a patent not later than four months after the date on 
which the issue fee was paid under 35 U.S.C. 151 and all outstanding 
requirements were satisfied.
    (b) Failure to issue a patent within three years of the actual 
filing date of the application. Subject to the provisions of 35 U.S.C. 
154(b) and this subpart, the term of an original patent shall be 
adjusted if the issuance of the patent was delayed due to the failure of 
the Office to issue a patent within three years after the date on which 
the application was filed under 35 U.S.C. 111(a) or the national stage 
commenced under 35 U.S.C. 371(b) or (f) in an international application, 
but not including:
    (1) Any time consumed by continued examination of the application 
under 35 U.S.C. 132(b);
    (2) Any time consumed by an interference proceeding under 35 U.S.C. 
135(a);
    (3) Any time consumed by the imposition of a secrecy order under 35 
U.S.C. 181;
    (4) Any time consumed by review by the Board of Patent Appeals and 
Interferences or a Federal court; or
    (5) Any delay in the processing of the application by the Office 
that was requested by the applicant.
    (c) Delays caused by interference proceedings. Subject to the 
provisions of 35 U.S.C. 154(b) and this subpart, the term of an original 
patent shall be adjusted if the issuance of the patent was delayed due 
to interference proceedings under 35 U.S.C. 135(a).
    (d) Delays caused by secrecy order. Subject to the provisions of 35 
U.S.C. 154(b) and this subpart, the term of an original patent shall be 
adjusted if the issuance of the patent was delayed due to the 
application being placed under a secrecy order under 35 U.S.C. 181.
    (e) Delays caused by successful appellate review. Subject to the 
provisions of 35 U.S.C. 154(b) and this subpart, the term of an original 
patent shall be adjusted if the issuance of the patent was delayed due 
to review by the Board of Patent Appeals and Interferences under 35 
U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145, if the 
patent was issued under a decision in the review reversing an adverse 
determination of patentability. If an application is remanded by a panel 
of the Board of Patent Appeals and Interferences and the remand is the 
last action by a panel of the Board of Patent Appeals and Interferences 
prior to the mailing

[[Page 156]]

of a notice of allowance under 35 U.S.C. 151 in the application, the 
remand shall be considered a decision by the Board of Patent Appeals and 
Interferences as that phrase is used in 35 U.S.C. 154(b)(1)(A)(iii), a 
decision in the review reversing an adverse determination of 
patentability as that phrase is used in 35 U.S.C. 154(b)(1)(C)(iii), and 
a final decision in favor of the applicant under Sec. 1.703(e). A 
remand by a panel of the Board of Patent Appeals and Interferences shall 
not be considered a decision in the review reversing an adverse 
determination of patentability as provided in this paragraph if there is 
filed a request for continued examination under 35 U.S.C. 132(b) that 
was not first preceded by the mailing, after such remand, of at least 
one of an action under 35 U.S.C. 132 or a notice of allowance under 35 
U.S.C. 151.
    (f) The provisions of this section and Sec. Sec. 1.703 through 
1.705 apply only to original applications, except applications for a 
design patent, filed on or after May 29, 2000, and patents issued on 
such applications.

[65 FR 56391, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004]



Sec. 1.703  Period of adjustment of patent term due to examination delay.

    (a) The period of adjustment under Sec. 1.702(a) is the sum of the 
following periods:
    (1) The number of days, if any, in the period beginning on the day 
after the date that is fourteen months after the date on which the 
application was filed under 35 U.S.C. 111(a) or fulfilled the 
requirements of 35 U.S.C. 371 and ending on the date of mailing of 
either an action under 35 U.S.C. 132, or a notice of allowance under 35 
U.S.C. 151, whichever occurs first;
    (2) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date a reply under Sec. 
1.111 was filed and ending on the date of mailing of either an action 
under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, 
whichever occurs first;
    (3) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date a reply in compliance 
with Sec. 1.113(c) was filed and ending on the date of mailing of 
either an action under 35 U.S.C. 132, or a notice of allowance under 35 
U.S.C. 151, whichever occurs first;
    (4) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date an appeal brief in 
compliance with Sec. 41.37 of this title was filed and ending on the 
date of mailing of any of an examiner's answer under Sec. 41.39 of this 
title, an action under 35 U.S.C. 132, or a notice of allowance under 35 
U.S.C. 151, whichever occurs first;
    (5) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date of a final decision 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 or 
146 where at least one allowable claim remains in the application and 
ending on the date of mailing of either an action under 35 U.S.C. 132 or 
a notice of allowance under 35 U.S.C. 151, whichever occurs first; and
    (6) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date the issue fee was paid 
and all outstanding requirements were satisfied and ending on the date a 
patent was issued.
    (b) The period of adjustment under Sec. 1.702(b) is the number of 
days, if any, in the period beginning on the day after the date that is 
three years after the date on which the application was filed under 35 
U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or 
(f) in an international application and ending on the date a patent was 
issued, but not including the sum of the following periods:
    (1) The number of days, if any, in the period beginning on the date 
on which a request for continued examination of the application under 35 
U.S.C. 132(b) was filed and ending on the date the patent was issued;
    (2)(i) The number of days, if any, in the period beginning on the 
date an 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

[[Page 157]]

    (ii) The number of days, if any, in the period beginning on the date 
prosecution in the application was suspended by the 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;
    (3)(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. 41.39 of this title in 
the application under secrecy order and ending on the date the secrecy 
order 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 was 
removed; and
    (iv) The number of days, if any, in the period beginning on the date 
of notification under Sec. 5.3(c) of this chapter and ending on the 
date of mailing of the notice of allowance under 35 U.S.C. 151; and,
    (4) The number of days, if any, in the period beginning on the date 
on which a notice of appeal to the Board of Patent Appeals and 
Interferences was filed under 35 U.S.C. 134 and Sec. 41.31 of this 
title and ending on the date of the last decision 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, or on the date of 
mailing of either an action under 35 U.S.C. 132, or a notice of 
allowance under 35 U.S.C. 151, whichever occurs first, if the appeal did 
not result in a decision by the Board of Patent Appeals and 
Interferences.
    (c) The period of adjustment under Sec. 1.702(c) is the sum of the 
following periods, to the extent that the periods are not overlapping:
    (1) The number of days, if any, in the period beginning on the date 
an 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
    (2) The number of days, if any, in the period beginning on the date 
prosecution in the application was suspended by the 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.
    (d) The period of adjustment under Sec. 1.702(d) is the sum of the 
following periods, to the extent that the periods are not overlapping:
    (1) The number of days, if any, the application was maintained in a 
sealed condition under 35 U.S.C. 181;
    (2) The number of days, if any, in the period beginning on the date 
of mailing of an examiner's answer under Sec. 41.39 of this title in 
the application under secrecy order and ending on the date the secrecy 
order was removed;
    (3) 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 was removed; 
and
    (4) The number of days, if any, in the period beginning on the date 
of notification under Sec. 5.3(c) of this chapter and ending on the 
date of mailing of the notice of allowance under 35 U.S.C. 151.
    (e) The period of adjustment under Sec. 1.702(e) is the sum of the 
number of days, if any, in the period beginning on the date on which a 
notice of appeal to the Board of Patent Appeals and Interferences was 
filed under 35 U.S.C. 134 and Sec. 41.31 of this title 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.
    (f) The adjustment will run from the expiration date of the patent 
as set forth in 35 U.S.C. 154(a)(2). To the extent that periods of delay 
attributable to the grounds specified in Sec. 1.702 overlap, the period 
of adjustment granted under this section shall not exceed the actual 
number of days the issuance of the patent was delayed. The term of a 
patent entitled to adjustment under Sec. 1.702 and this section shall 
be adjusted for the sum of the periods calculated under paragraphs (a) 
through (e) of this section, to the extent that such periods are not 
overlapping, less the sum of the periods calculated under Sec. 1.704. 
The date indicated on any certificate of mailing or transmission under 
Sec. 1.8

[[Page 158]]

shall not be taken into account in this calculation.
    (g) No patent, the term of which has been disclaimed beyond a 
specified date, shall be adjusted under Sec. 1.702 and this section 
beyond the expiration date specified in the disclaimer.

[65 FR 56392, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 
69 FR 50001, Aug. 12, 2004]



Sec. 1.704  Reduction of period of adjustment of patent term.

    (a) The period of adjustment of the term of a patent under 
Sec. Sec. 1.703(a) through (e) shall be reduced by a period equal to 
the period of time during which the applicant failed to engage in 
reasonable efforts to conclude prosecution (processing or examination) 
of the application.
    (b) With respect to the grounds for adjustment set forth in 
Sec. Sec. 1.702(a) through (e), and in particular the ground of 
adjustment set forth in Sec. 1.702(b), an applicant shall be deemed to 
have failed to engage in reasonable efforts to conclude processing or 
examination of an application for the cumulative total of any periods of 
time in excess of three months that are taken to reply to any notice or 
action by the Office making any rejection, objection, argument, or other 
request, measuring such three-month period from the date the notice or 
action was mailed or given to the applicant, in which case the period of 
adjustment set forth in Sec. 1.703 shall be reduced by the number of 
days, if any, beginning on the day after the date that is three months 
after the date of mailing or transmission of the Office communication 
notifying the applicant of the rejection, objection, argument, or other 
request and ending on the date the reply was filed. The period, or 
shortened statutory period, for reply that is set in the Office action 
or notice has no effect on the three-month period set forth in this 
paragraph.
    (c) Circumstances that constitute a failure of the applicant to 
engage in reasonable efforts to conclude processing or examination of an 
application also include the following circumstances, which will result 
in the following reduction of the period of adjustment set forth in 
Sec. 1.703 to the extent that the periods are not overlapping:
    (1) Suspension of action under Sec. 1.103 at the applicant's 
request, in which case the period of adjustment set forth in Sec. 1.703 
shall be reduced by the number of days, if any, beginning on the date a 
request for suspension of action under Sec. 1.103 was filed and ending 
on the date of the termination of the suspension;
    (2) Deferral of issuance of a patent under Sec. 1.314, in which 
case the period of adjustment set forth in Sec. 1.703 shall be reduced 
by the number of days, if any, beginning on the date a request for 
deferral of issuance of a patent under Sec. 1.314 was filed and ending 
on the date the patent was issued;
    (3) Abandonment of the application or late payment of the issue fee, 
in which case the period of adjustment set forth in Sec. 1.703 shall be 
reduced by the number of days, if any, beginning on the date of 
abandonment or the date after the date the issue fee was due and ending 
on the earlier of:
    (i) The date of mailing of the decision reviving the application or 
accepting late payment of the issue fee; or
    (ii) The date that is four months after the date the grantable 
petition to revive the application or accept late payment of the issue 
fee was filed;
    (4) Failure to file a petition to withdraw the holding of 
abandonment or to revive an application within two months from the 
mailing date of a notice of abandonment, in which case the period of 
adjustment set forth in Sec. 1.703 shall be reduced by the number of 
days, if any, beginning on the day after the date two months from the 
mailing date of a notice of abandonment and ending on the date a 
petition to withdraw the holding of abandonment or to revive the 
application was filed;
    (5) Conversion of a provisional application under 35 U.S.C. 111(b) 
to a nonprovisional application under 35 U.S.C. 111(a) pursuant to 35 
U.S.C. 111(b)(5), in which case the period of adjustment set forth in 
Sec. 1.703 shall be reduced by the number of days, if any, beginning on 
the date the application was filed under 35 U.S.C. 111(b) and ending on 
the date a request in compliance with Sec. 1.53(c)(3) to convert the 
provisional

[[Page 159]]

application into a nonprovisional application was filed;
    (6) Submission of a preliminary amendment or other preliminary paper 
less than one month before the mailing of an Office action under 35 
U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the 
mailing of a supplemental Office action or notice of allowance, in which 
case the period of adjustment set forth in Sec. 1.703 shall be reduced 
by the lesser of:
    (i) The number of days, if any, beginning on the day after the 
mailing date of the original Office action or notice of allowance and 
ending on the date of mailing of the supplemental Office action or 
notice of allowance; or
    (ii) Four months;
    (7) Submission of a reply having an omission (Sec. 1.135(c)), in 
which case the period of adjustment set forth in Sec. 1.703 shall be 
reduced by the number of days, if any, beginning on the day after the 
date the reply having an omission was filed and ending on the date that 
the reply or other paper correcting the omission was filed;
    (8) Submission of a supplemental reply or other paper, other than a 
supplemental reply or other paper expressly requested by the examiner, 
after a reply has been filed, in which case the period of adjustment set 
forth in Sec. 1.703 shall be reduced by the number of days, if any, 
beginning on the day after the date the initial reply was filed and 
ending on the date that the supplemental reply or other such paper was 
filed;
    (9) Submission of an amendment or other paper after a decision by 
the Board of Patent Appeals and Interferences, other than a decision 
designated as containing a new ground of rejection under Sec. 41.50(b) 
of this title or statement under Sec. 41.50(c) of this title, or a 
decision by a Federal court, less than one month before the mailing of 
an Office action under 35 U.S.C. 132 or notice of allowance under 35 
U.S.C. 151 that requires the mailing of a supplemental Office action or 
supplemental notice of allowance, in which case the period of adjustment 
set forth in Sec. 1.703 shall be reduced by the lesser of:
    (i) The number of days, if any, beginning on the day after the 
mailing date of the original Office action or notice of allowance and 
ending on the mailing date of the supplemental Office action or notice 
of allowance; or
    (ii) Four months;
    (10) Submission of an amendment under Sec. 1.312 or other paper 
after a notice of allowance has been given or mailed, in which case the 
period of adjustment set forth in Sec. 1.703 shall be reduced by the 
lesser of:
    (i) The number of days, if any, beginning on the date the amendment 
under Sec. 1.312 or other paper was filed and ending on the mailing 
date of the Office action or notice in response to the amendment under 
Sec. 1.312 or such other paper; or
    (ii) Four months; and
    (11) Failure to comply with Sec. 1.75(b), in which case the period 
of adjustment set forth in Sec. 1.703 shall be reduced by the number of 
days, if any, beginning on the day after the date that is the later of 
the filing date of the amendment resulting in the non-compliance with 
Sec. 1.75(b), or four months from the filing date of the application in 
an application under 35 U.S.C. 111(a) or from the date on which the 
national stage commenced under 35 U.S.C. 371(b) or (f) in an application 
which entered the national stage from an international application after 
compliance with 35 U.S.C. 371, and ending on the date that an 
examination support document in compliance with Sec. 1.265, an election 
in reply to a requirement under Sec. 1.142(a), 1.146 or 1.499 resulting 
in compliance with Sec. 1.75(b), an amendment resulting in compliance 
with Sec. 1.75(b), or a suggested restriction requirement in compliance 
with Sec. 1.142(c), was filed;
    (12) Further prosecution via a continuing application, in which case 
the period of adjustment set forth in Sec. 1.703 shall not include any 
period that is prior to the actual filing date of the application that 
resulted in the patent.
    (d) A paper containing only an information disclosure statement in 
compliance with Sec. Sec. 1.97 and 1.98 will not be considered a 
failure to engage in reasonable efforts to conclude prosecution 
(processing or examination) of the application under paragraphs (c)(6), 
(c)(8), (c)(9), or (c)(10) of this section if it is accompanied by a 
statement that each item of information contained in the information 
disclosure statement was

[[Page 160]]

first cited in any communication from a foreign patent office in a 
counterpart application and that this communication was not received by 
any individual designated in Sec. 1.56(c) more than thirty days prior 
to the filing of the information disclosure statement. This thirty-day 
period is not extendable.
    (e) Submission of an application for patent term adjustment under 
Sec. 1.705(b) (with or without request under Sec. 1.705(c) for 
reinstatement of reduced patent term adjustment) will not be considered 
a failure to engage in reasonable efforts to conclude prosecution 
(processing or examination) of the application under paragraph (c)(10) 
of this section.

[65 FR 56393, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 
69 FR 50002, Aug. 12, 2004; 72 FR 46843, Aug. 21, 2007]



Sec. 1.705  Patent term adjustment determination.

    (a) The notice of allowance will include notification of any patent 
term adjustment under 35 U.S.C. 154(b).
    (b) Any request for reconsideration of the patent term adjustment 
indicated in the notice of allowance, except as provided in paragraph 
(d) of this section, and any request for reinstatement of all or part of 
the term reduced pursuant to Sec. 1.704(b) must be by way of an 
application for patent term adjustment. An application for patent term 
adjustment under this section must be filed no later than the payment of 
the issue fee but may not be filed earlier than the date of mailing of 
the notice of allowance. An application for patent term adjustment under 
this section must be accompanied by:
    (1) The fee set forth in Sec. 1.18(e); and
    (2) A statement of the facts involved, specifying:
    (i) The correct patent term adjustment and the basis or bases under 
Sec. 1.702 for the adjustment;
    (ii) The relevant dates as specified in Sec. Sec. 1.703(a) through 
(e) for which an adjustment is sought and the adjustment as specified in 
Sec. 1.703(f) to which the patent is entitled;
    (iii) Whether the patent is subject to a terminal disclaimer and any 
expiration date specified in the terminal disclaimer; and
    (iv)(A) Any circumstances during the prosecution of the application 
resulting in the patent that constitute a failure to engage in 
reasonable efforts to conclude processing or examination of such 
application as set forth in Sec. 1.704; or
    (B) That there were no circumstances constituting a failure to 
engage in reasonable efforts to conclude processing or examination of 
such application as set forth in Sec. 1.704.
    (c) Any application for patent term adjustment under this section 
that requests reinstatement of all or part of the period of adjustment 
reduced pursuant to Sec. 1.704(b) for failing to reply to a rejection, 
objection, argument, or other request within three months of the date of 
mailing of the Office communication notifying the applicant of the 
rejection, objection, argument, or other request must also be 
accompanied by:
    (1) The fee set forth in Sec. 1.18(f); and
    (2) A showing to the satisfaction of the Director that, in spite of 
all due care, the applicant was unable to reply to the rejection, 
objection, argument, or other request within three months of the date of 
mailing of the Office communication notifying the applicant of the 
rejection, objection, argument, or other request. The Office shall not 
grant any request for reinstatement for more than three additional 
months for each reply beyond three months from the date of mailing of 
the Office communication notifying the applicant of the rejection, 
objection, argument, or other request.
    (d) If there is a revision to the patent term adjustment indicated 
in the notice of allowance, the patent will indicate the revised patent 
term adjustment. If the patent indicates or should have indicated a 
revised patent term adjustment, any request for reconsideration of the 
patent term adjustment indicated in the patent must be filed within two 
months of the date the patent issued and must comply with the 
requirements of paragraphs (b)(1) and (b)(2) of this section. Any 
request for reconsideration under this section that raises issues that 
were raised, or could have been raised, in an application for

[[Page 161]]

patent term adjustment under paragraph (b) of this section shall be 
dismissed as untimely as to those issues.
    (e) The periods set forth in this section are not extendable.
    (f) No submission or petition on behalf of a third party concerning 
patent term adjustment under 35 U.S.C. 154(b) will be considered by the 
Office. Any such submission or petition will be returned to the third 
party, or otherwise disposed of, at the convenience of the Office.

[65 FR 56394, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004]

            Extension of Patent Term Due to Regulatory Review



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 extensions issued pursuant to Sec. Sec. 1.701, 1.760, or 
Sec. 1.790;
    (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 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.

[[Page 162]]

    (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, including any interim extension issued 
pursuant to Sec. 1.790, 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; 65 
FR 54679, Sept. 8, 2000]



Sec. 1.730  Applicant for extension of patent term; signature requirements.

    (a) 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.
    (b) If the application is submitted by the patent owner, the 
application must be signed either by:
    (1) The patent owner in compliance with Sec. 3.73(b) of this 
chapter; or
    (2) A registered practitioner on behalf of the patent owner.
    (c) If the application is submitted on behalf of the patent owner by 
an agent of the patent owner (e.g., a licensee of the patent owner), the 
application must be signed by a registered practitioner on behalf of the 
agent. The Office may require proof that the agent is authorized to act 
on behalf of the patent owner.
    (d) If the application is signed by a registered practitioner, the 
Office may require proof that the practitioner is authorized to act on 
behalf of the patent owner or agent of the patent owner.

[65 FR 54679, Sept. 8, 2000]



Sec. 1.740  Formal requirements for application for extension of patent
term; correction of informalities.

    (a) An application for extension of patent term must be made in 
writing to the Director. A formal application for the extension of 
patent term must 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;

[[Page 163]]

    (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;
    (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 at least one such patent claim reads on:
    (i) The approved product, if the listed claims include any claim to 
the approved product;
    (ii) The method of using the approved product, if the listed claims 
include any claim to the method of using the approved product; and
    (iii) The method of manufacturing the approved product, if the 
listed claims include any claim to the method of 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:
    (A) The effective date of the investigational new drug (IND) 
application and the IND number;
    (B) 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
    (C) The date on which the NDA was approved or the Product License 
issued;
    (ii) For a patent claiming a new animal drug:
    (A) The date a major health or environmental effects test on the 
drug was initiated, and any available substantiation of that 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;
    (B) The date on which a new animal drug application (NADA) was 
initially submitted and the NADA number; and
    (C) The date on which the NADA was approved;
    (iii) For a patent claiming a veterinary biological product:
    (A) The date the authority to prepare an experimental biological 
product under the Virus-Serum-Toxin Act became effective;
    (B) The date an application for a license was submitted under the 
Virus-Serum-Toxin Act; and
    (C) The date the license issued;
    (iv) For a patent claiming a food or color additive:
    (A) The date a major health or environmental effects test on the 
additive was initiated and any available substantiation of that date;
    (B) 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
    (C) The date on which the FDA published a Federal Register notice 
listing the additive for use;
    (v) For a patent claiming a medical device:
    (A) 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;
    (B) 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; and
    (C) 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

[[Page 164]]

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 Director of the United States Patent and Trademark Office 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)); and
    (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.
    (b) The application under this section must be accompanied by two 
additional copies of such application (for a total of three copies).
    (c) If an application for extension of patent term is informal under 
this section, the Office will so notify the applicant. The applicant has 
two months from the mail date of the notice, or such time as is set in 
the notice, within which to correct the informality. Unless the notice 
indicates otherwise, this time period may be extended under the 
provisions of Sec. 1.136.

[54 FR 9394, Mar. 24, 1987, as amended at 54 FR 30380, July 20, 1989; 56 
FR 65155, Dec. 13, 1991; 65 FR 54679, Sept. 8, 2000; 68 FR 14337, Mar. 
25, 2003]



Sec. 1.741  Complete application given a filing date; petition procedure.

    (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 Office or 
filed pursuant to the procedures set forth in Sec. 1.8 or Sec. 1.10. A 
complete application must 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 Director to determine under 
subsections (a) and (b) of 35 U.S.C. 156 the eligibility of a patent for 
extension, and the rights that will be derived from the extension, and 
information to enable the Director 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 an application for extension of patent term is incomplete 
under this section, the Office will so notify the applicant. If 
applicant requests review of a notice that an application is incomplete, 
or review of the filing date accorded an application under this section, 
applicant must file a petition pursuant to this paragraph accompanied by 
the fee set forth in Sec. 1.17(f) within two months of the mail date of 
the notice that the application is incomplete, or the notice according 
the filing date complained of. Unless the notice indicates otherwise, 
this time period may be extended under the provisions of Sec. 1.136.

[52 FR 9394, Mar. 24, 1987, as amended at 59 FR 54503, Oct. 22, 1993; 61 
FR 64028, Dec. 3, 1996; 65 FR 54680, Sept. 8, 2000; 69 FR 56546, Sept. 
21, 2004]



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 Director 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

[[Page 165]]

officials and may be made at any time before the certificate of 
extension is issued. The Director 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, 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 
Director 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 Official Gazette of the United States 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 for extension to which the applicant would be 
eligible.

[65 FR 54680, Sept. 8, 2000]



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

[[Page 166]]

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 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:

[[Page 167]]

    (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 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

[[Page 168]]

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, 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

[[Page 169]]

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
    (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.

[[Page 170]]



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).
    (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

[[Page 171]]

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]



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

[[Page 172]]

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]



Sec. 1.780  Certificate or order 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 an order granting 
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 or 
order 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 or order of extension will be published in the 
Official Gazette of the United States Patent and Trademark Office. 
Notification of the issuance of the order granting an 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 United States Patent and Trademark Office and in the 
Federal Register. No certificate of, or order granting, an 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 or order will issue.

[65 FR 54680, Sept. 8, 2000]



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

[[Page 173]]

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 
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 Sec. Sec. 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 Sec. Sec. 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

[[Page 174]]

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 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 Director 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 Director 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 Director 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 Director 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 Director 
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

[[Page 175]]

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 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

[[Page 176]]

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 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 Director 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:

[[Page 177]]

    (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 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 reply to a 
rejection under paragraph (a) of this section by--
    (1) In the case of an applicant for patent, either making an 
acceptable original, replacement, or supplemental deposit, or assuring 
the Office in writing that an acceptable deposit will be made; 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 nonresponsive. 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, applicant 
will be notified and given a period of time within which the deposit 
must be made in order to avoid abandonment. This time period is not 
extendable under Sec. 1.136(a) or (b) if set forth in a ``Notice of 
Allowability'' or in an Office action having a mail date on or after the 
mail date of a ``Notice of Allowability'' (see Sec. 1.136(c)).
    (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.
    (e) Any amendment required by paragraphs (d)(1), (d)(2) or (d)(4) of 
this section must be filed before or with the payment of the issue fee 
(see Sec. 1.312).

[54 FR 34880, Aug. 22, 1989, as amended at 66 FR 21092, Apr. 27, 2001]

    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 Sec. Sec. 
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

[[Page 178]]

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 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 may also be inspected at the National Archives and 
Records Administration (NARA). For information on the availability of 
this material at NARA, call 202-741-6030, or go to: http://
www.archives.gov/federal--register/code--of--federal--regulations/ibr--
locations.html. 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 Sec. Sec. 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 or compact disc copy (see Sec. 1.52(e)) disclosing 
the nucleotide and/or amino acid sequences and associated information 
using the symbols and format in accordance with the requirements of 
Sec. Sec. 1.822 and 1.823. This paper or compact disc copy is referred 
to elsewhere in this subpart as the ``Sequence Listing.'' Each sequence 
disclosed must appear separately in the ``Sequence Listing.'' Each 
sequence set forth in the ``Sequence Listing'' must be assigned a 
separate sequence identifier. The sequence identifiers must begin with 1 
and increase sequentially by integers. If no sequence is present for a 
sequence identifier, the code ``000'' must be used in place of the 
sequence. The response for the numeric identifier <160 must 
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,

[[Page 179]]

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 (CRF) 
in accordance with the requirements of Sec. 1.824. The computer 
readable form must be a copy of the ``Sequence Listing'' and may not be 
retained as a part of the patent application file. If the computer 
readable form of a new application is to be identical with the computer 
readable form of another application of the applicant on file in the 
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 this subpart. 
The new application must 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 or compact disc 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 or compact disc copy required by 
paragraph (c) of this section and the computer readable form required by 
paragraph (e) of this section, a statement that the ``Sequence Listing'' 
content of the paper or compact disc copy and the computer readable copy 
are the same must be submitted with the computer readable form, e.g., a 
statement that ``the sequence listing information recorded in computer 
readable form is identical to the written (on paper or compact disc) 
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, as amended at 65 FR 54680, Sept. 8, 2000; 69 
FR 18803, Apr. 9, 2004; 70 FR 10489, Mar. 4, 2005]



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

[[Page 180]]

World Intellectual Property Organization; 34 chemin des Colombettes; 
1211 Geneva 20 Switzerland. Copies may also be inspected at the National 
Archives and Records Administration (NARA). For information on the 
availability of this material at NARA, call 202-741-6030, or go to: 
http://www.archives.gov/federal--register/code--of--federal--
regulations/ibr--locations.html. 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 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

[[Page 181]]

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 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, as amended at 69 FR 18803, Apr. 9, 2004; 70 
FR 10489, Mar. 4, 2005]



Sec. 1.823  Requirements for nucleotide and/or amino acid sequences as
part of the application.

    (a)(1) If the ``Sequence Listing'' required by Sec. 1.821(c) is 
submitted on paper: The ``Sequence Listing,'' setting forth the 
nucleotide and/or amino acid sequence and associated information in 
accordance with paragraph (b) of this section, must begin on a new page 
and must be titled ``Sequence Listing.'' The pages of the ``Sequence 
Listing'' preferably should be numbered independently of the numbering 
of the remainder of the application. Each page of the ``Sequence 
Listing'' shall contain no more than 66 lines and each line shall 
contain no more than 72 characters. The sheet or sheets presenting a 
sequence listing may not include material other than part of the 
sequence listing. A fixed-width font should be used exclusively 
throughout the ``Sequence Listing.''
    (2) If the ``Sequence Listing'' required by Sec. 1.821(c) is 
submitted on compact disc: The ``Sequence Listing'' must be submitted on 
a compact disc in compliance with Sec. 1.52(e). The compact disc may 
also contain table information if the application contains table 
information that may be submitted on a compact disc (Sec. 
1.52(e)(1)(iii)). The specification must contain an incorporation-by-
reference of the Sequence Listing as required by Sec. 1.52(e)(5). The 
presentation of the ``Sequence Listing'' and other materials on compact 
disc under Sec. 1.821(c) does not substitute for the Computer Readable 
Form that must be submitted on disk, compact disc, or tape in accordance 
with Sec. 1.824.
    (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.

[[Page 182]]

 
<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.
<220..........  Feature.................  Leave blank after <220. <221-223       conditions: if ``n,''
                                                      provide for a description of   ``Xaa,'' or a modified or
                                                      points of biological           unusual L-amino acid or
                                                      significance in the            modified base was used in a
                                                      sequence..                     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.
<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.

[[Page 183]]

 
<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, as amended at 65 FR 54681, Sept. 8, 2000; 68 
FR 38630, June 30, 2003]



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 requirements:
    (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 requirements 
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.
    (5) Page numbering must not appear within the computer readable form 
version of the ``Sequence Listing'' file.
    (6) All computer readable forms must 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 number and filing date, if known. 
If multiple diskettes are submitted, the diskette labels must indicate 
their order (e.g. ``1 of X'').
    (b) Computer readable form submissions must meet these format 
requirements:
    (1) Computer Compatibility: IBM PC/XT/AT or Apple Macintosh;
    (2) Operating System Compatibility: MS-DOS, MS-Windows, Unix or 
Macintosh;
    (3) Line Terminator: ASCII Carriage Return plus ASCII Line Feed; and
    (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) Compact disc: 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.

[65 FR 54681, Sept. 8, 2000]



Sec. 1.825  Amendments to or replacement of sequence listing and computer
readable copy thereof.

    (a) Any amendment to a paper copy of the ``Sequence Listing'' (Sec. 
1.821(c)) must be made by the submission of substitute sheets and 
include a statement that the substitute sheets include no new matter. 
Any amendment to a compact disc copy of the ``Sequence Listing'' (Sec. 
1.821(c)) must be made by the submission of a replacement compact disc 
(2 copies) in compliance with Sec. 1.52(e). Amendments must also be 
accompanied by a statement that indicates support for the amendment in 
the application, as filed, and a statement

[[Page 184]]

that the replacement compact disc includes no new matter.
    (b) Any amendment to the paper or compact disc 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 Director, 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, as amended at 65 FR 54681, Sept. 8, 2000]

[[Page 185]]



     Sec. Appendix A to Subpart G to Part 1--Sample Sequence Listing
[GRAPHIC] [TIFF OMITTED] TR01JN98.006


[[Page 186]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.007


[[Page 187]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.008


[[Page 188]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.009

[GRAPHIC] [TIFF OMITTED] TR01JN98.010


[63 FR 29639, June 1, 1998]

[[Page 189]]



  Subpart H_Inter Partes Reexamination of Patents That Issued From an 
Original Application Filed in the United States on or After November 29, 
                                  1999

    Source: 65 FR 76777, Dec. 7, 2000, unless otherwise noted.

                           Prior Art Citations



Sec. 1.902  Processing of prior art citations during an inter partes 
reexamination proceeding.

    Citations by the patent owner in accordance with Sec. 1.933 and by 
an inter partes reexamination third party requester under Sec. 1.915 or 
Sec. 1.948 will be entered in the inter partes reexamination file. The 
entry in the patent file of other citations submitted after the date of 
an order for reexamination pursuant to Sec. 1.931 by persons other than 
the patent owner, or the third party requester under either Sec. 1.913 
or Sec. 1.948, will be delayed until the inter partes reexamination 
proceeding has been concluded by the issuance and publication of a 
reexamination certificate. See Sec. 1.502 for processing of prior art 
citations in patent and reexamination files during an ex parte 
reexamination proceeding filed under Sec. 1.510.

[72 FR 18906, Apr. 16, 2007]

         Requirements for Inter Partes Reexamination Proceedings



Sec. 1.903  Service of papers on parties in inter partes reexamination.

    The patent owner and the third party requester will be sent copies 
of Office actions issued during the inter partes reexamination 
proceeding. After filing of a request for inter partes reexamination by 
a third party requester, any document filed by either the patent owner 
or the third party requester must be served on every other party in the 
reexamination proceeding in the manner provided in Sec. 1.248. Any 
document must reflect service or the document may be refused 
consideration by the Office. The failure of the patent owner or the 
third party requester to serve documents may result in their being 
refused consideration.



Sec. 1.904  Notice of inter partes reexamination in Official Gazette.

    A notice of the filing of an inter partes reexamination request will 
be published in the Official Gazette. The notice published in the 
Official Gazette under Sec. 1.11(c) will be considered to be 
constructive notice of the inter partes reexamination proceeding and 
inter partes reexamination will proceed.



Sec. 1.905  Submission of papers by the public in inter partes reexamination.

    Unless specifically provided for, no submissions on behalf of any 
third parties other than third party requesters as defined in 35 U.S.C. 
100(e) will be considered unless such submissions are in accordance with 
Sec. 1.915 or entered in the patent file prior to the date of the order 
for reexamination pursuant to Sec. 1.931. Submissions by third parties, 
other than third party requesters, filed after the date of the order for 
reexamination pursuant to Sec. 1.931, must meet the requirements of 
Sec. 1.501 and will be treated in accordance with Sec. 1.902. 
Submissions which do not meet the requirements of Sec. 1.501 will be 
returned.



Sec. 1.906  Scope of reexamination in inter partes reexamination proceeding.

    (a) Claims in an inter partes reexamination proceeding will be 
examined on the basis of patents or printed publications and, with 
respect to subject matter added or deleted in the reexamination 
proceeding, on the basis of the requirements of 35 U.S.C. 112.
    (b) Claims in an inter partes reexamination proceeding will not be 
permitted to enlarge the scope of the claims of the patent.
    (c) Issues other than those indicated in paragraphs (a) and (b) of 
this section will not be resolved in an inter partes reexamination 
proceeding. If such issues are raised by the patent owner or the third 
party requester during a reexamination proceeding, the existence of such 
issues will be noted by the examiner in the next Office action, in which 
case the patent owner may desire to consider the advisability of filing 
a reissue application to have such issues considered and resolved.

[[Page 190]]



Sec. 1.907  Inter partes reexamination prohibited.

    (a) Once an order to reexamine has been issued under Sec. 1.931, 
neither the third party requester, nor its privies, may file a 
subsequent request for inter partes reexamination of the patent until an 
inter partes reexamination certificate is issued under Sec. 1.997, 
unless authorized by the Director.
    (b) Once a final decision has been entered against a party in a 
civil action arising in whole or in part under 28 U.S.C. 1338 that the 
party has not sustained its burden of proving invalidity of any patent 
claim-in-suit, then neither that party nor its privies may thereafter 
request inter partes reexamination of any such patent claim on the basis 
of issues which that party, or its privies, raised or could have raised 
in such civil action, and an inter partes reexamination requested by 
that party, or its privies, on the basis of such issues may not 
thereafter be maintained by the Office.
    (c) If a final decision in an inter partes reexamination proceeding 
instituted by a third party requester is favorable to patentability of 
any original, proposed amended, or new claims of the patent, then 
neither that party nor its privies may thereafter request inter partes 
reexamination of any such patent claims on the basis of issues which 
that party, or its privies, raised or could have raised in such inter 
partes reexamination proceeding.



Sec. 1.913  Persons eligible to file request for inter partes reexamination.

    Except as provided for in Sec. 1.907, any person other than the 
patent owner or its privies may, at any time during the period of 
enforceability of a patent which issued from an original application 
filed in the United States on or after November 29, 1999, file a request 
for inter partes reexamination by the Office of any claim of the patent 
on the basis of prior art patents or printed publications cited under 
Sec. 1.501.

[68 FR 71007, Dec. 22, 2003]



Sec. 1.915  Content of request for inter partes reexamination.

    (a) The request must be accompanied by the fee for requesting inter 
partes reexamination set forth in Sec. 1.20(c)(2).
    (b) A request for inter partes reexamination must include the 
following parts:
    (1) An identification of the patent by patent number and every claim 
for which reexamination is requested.
    (2) A citation of the patents and printed publications which are 
presented to provide a substantial new question of patentability.
    (3) A statement pointing out each substantial new question of 
patentability based on the cited patents and printed publications, and a 
detailed explanation of the pertinency and manner of applying the 
patents and printed publications to every claim for which reexamination 
is requested.
    (4) A copy of every patent or printed publication relied upon or 
referred to in paragraphs (b)(1) through (3) of this section, 
accompanied by an English language translation of all the necessary and 
pertinent parts of any non-English language document.
    (5) A copy of the entire patent including the front face, drawings, 
and specification/claims (in double column format) for which 
reexamination is requested, and a copy of any disclaimer, certificate of 
correction, or reexamination certificate issued in the patent. All 
copies must have each page plainly written on only one side of a sheet 
of paper.
    (6) A certification by the third party requester that a copy of the 
request has been served in its entirety on the patent owner at the 
address 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 
of the request must be supplied to the Office.
    (7) A certification by the third party requester that the estoppel 
provisions of Sec. 1.907 do not prohibit the inter partes 
reexamination.
    (8) A statement identifying the real party in interest to the extent 
necessary for a subsequent person filing an inter partes reexamination 
request to determine whether that person is a privy.

[[Page 191]]

    (c) If an inter partes 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.
    (d) If the inter partes request does not include the fee for 
requesting inter partes reexamination required by paragraph (a) of this 
section and meet all the requirements of paragraph (b) of this section, 
then the person identified as requesting inter partes reexamination will 
be so notified and will generally be given an opportunity to complete 
the request within a specified time. Failure to comply with the notice 
will result in the inter partes reexamination request not being granted 
a filing date, and will result in placement of the request in the patent 
file as a citation if it complies with the requirements of Sec. 1.501.

[65 FR 76777, Dec. 7, 2000, as amended at 71 FR 9262, Feb. 23, 2006; 71 
FR 44223, Aug. 4, 2006; 72 FR 18906, Apr. 16, 2007]



Sec. 1.919  Filing date of request for inter partes reexamination.

    (a) The filing date of a request for inter partes reexamination is 
the date on which the request satisfies all the requirements for the 
request set forth in Sec. 1.915.
    (b) If the request is not granted a filing date, the request will be 
placed in the patent file as a citation of prior art if it complies with 
the requirements of Sec. 1.501.

[65 FR 76777, Dec. 7, 2000, as amended at 71 FR 9262, Feb. 23, 2006]



Sec. 1.923  Examiner's determination on the request for inter partes reexamination.

    Within three months following the filing date of a request for inter 
partes reexamination under Sec. 1.915, the 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 citation. The examiner's determination will be based 
on the claims in effect at the time of the determination, will become a 
part of the official file of the patent, and will be mailed to the 
patent owner at the address as provided for in Sec. 1.33(c) and to the 
third party requester. If the examiner determines that no substantial 
new question of patentability is present, the examiner shall refuse the 
request and shall not order inter partes reexamination.

[72 FR 18906, Apr. 16, 2007]



Sec. 1.925  Partial refund if request for inter partes reexamination
is not ordered.

    Where inter partes reexamination is not ordered, a refund of a 
portion of the fee for requesting inter partes reexamination will be 
made to the requester in accordance with Sec. 1.26(c).



Sec. 1.927  Petition to review refusal to order inter partes reexamination.

    The third party requester may seek review by a petition to the 
Director underSec. 1.181 within one month of the mailing date of the 
examiner's determination refusing to order inter partes 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.

                  Inter Partes Reexamination of Patents



Sec. 1.931  Order for inter partes reexamination.

    (a) If a substantial new question of patentability is found, the 
determination will include an order for inter partes reexamination of 
the patent for resolution of the question.
    (b) If the order for inter partes reexamination resulted from a 
petition pursuant to Sec. 1.927, the inter partes reexamination will 
ordinarily be conducted by an examiner other than the examiner 
responsible for the initial determination under Sec. 1.923.

          Information Disclosure in Inter Partes Reexamination



Sec. 1.933  Patent owner duty of disclosure in inter partes 
reexamination proceedings.

    (a) Each individual associated with the patent owner in an inter 
partes reexamination proceeding has a duty of

[[Page 192]]

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 in a reexamination proceeding as set forth in 
Sec. 1.555(a) and (b). The duty to disclose all information known to be 
material to patentability in an inter partes reexamination proceeding is 
deemed to be satisfied by filing a paper in compliance with the 
requirements set forth in Sec. 1.555(a) and (b).
    (b) 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 raised by the patent owner or the third party requester 
during a reexamination proceeding, they will be noted as unresolved 
questions in accordance with Sec. 1.906(c).

   Office Actions and Responses (Before the Examiner) in Inter Partes 
                              Reexamination



Sec. 1.935  Initial Office action usually accompanies order for inter
partes reexamination.

    The order for inter partes reexamination will usually be accompanied 
by the initial Office action on the merits of the reexamination.



Sec. 1.937  Conduct of inter partes reexamination.

    (a) All inter partes reexamination proceedings, including any 
appeals to the Board of Patent Appeals and Interferences, will be 
conducted with special dispatch within the Office, unless the Director 
makes a determination that there is good cause for suspending the 
reexamination proceeding.
    (b) The inter partes reexamination proceeding will be conducted in 
accordance with Sec. Sec. 1.104 through 1.116, the sections governing 
the application examination process, and will result in the issuance of 
an inter partes reexamination certificate under Sec. 1.997, except as 
otherwise provided.
    (c) All communications between the Office and the parties to the 
inter partes reexamination which are directed to the merits of the 
proceeding must be in writing and filed with the Office for entry into 
the record of the proceeding.



Sec. 1.939  Unauthorized papers in inter partes reexamination.

    (a) If an unauthorized paper is filed by any party at any time 
during the inter partes reexamination proceeding it will not be 
considered and may be returned.
    (b) Unless otherwise authorized, no paper shall be filed prior to 
the initial Office action on the merits of the inter partes 
reexamination.



Sec. 1.941  Amendments by patent owner in inter partes reexamination.

    Amendments by patent owner in inter partes reexamination proceedings 
are made by filing a paper in compliance with Sec. Sec. 1.530(d)-(k) 
and 1.943.



Sec. 1.943  Requirements of responses, written comments, and briefs in 
inter partes reexamination.

    (a) The form of responses, written comments, briefs, appendices, and 
other papers must be in accordance with the requirements of Sec. 1.52.
    (b) Responses by the patent owner and written comments by the third 
party requester shall not exceed 50 pages in length, excluding 
amendments, appendices of claims, and reference materials such as prior 
art references.
    (c) Appellant's briefs filed by the patent owner and the third party 
requester shall not exceed thirty pages or 14,000 words in length, 
excluding appendices of claims and reference materials such as prior art 
references. All other briefs filed by any party shall not exceed fifteen 
pages in length or 7,000 words. If the page limit for any brief is 
exceeded, a certificate is required stating the number of words 
contained in the brief.



Sec. 1.945  Response to Office action by patent owner in inter partes
reexamination.

    (a) The patent owner will be given at least thirty days to file a 
response to any Office action on the merits of the inter partes 
reexamination.
    (b) Any supplemental response to the Office action will be entered 
only

[[Page 193]]

where the supplemental response is accompanied by a showing of 
sufficient cause why the supplemental response should be entered. The 
showing of sufficient cause must include:
    (1) An explanation of how the requirements of Sec. 1.111(a)(2)(i) 
are satisfied;
    (2) An explanation of why the supplemental response was not 
presented together with the original response to the Office action; and
    (3) A compelling reason to enter the supplemental response.

[72 FR 18906, Apr. 16, 2007]



Sec. 1.947  Comments by third party requester to patent owner's response 
in inter partes reexamination.

    Each time the patent owner files a response to an Office action on 
the merits pursuant to Sec. 1.945, a third party requester may once 
file written comments within a period of 30 days from the date of 
service of the patent owner's response. These comments shall be limited 
to issues raised by the Office action or the patent owner's response. 
The time for submitting comments by the third party requester may not be 
extended. For the purpose of filing the written comments by the third 
party requester, the comments will be considered as having been received 
in the Office as of the date of deposit specified in the certificate 
under Sec. 1.8.



Sec. 1.948  Limitations on submission of prior art by third party requester
following the order for inter partes reexamination.

    (a) After the inter partes reexamination order, the third party 
requester may only cite additional prior art as defined under Sec. 
1.501 if it is filed as part of a comments submission under Sec. 1.947 
or Sec. 1.951(b) and is limited to prior art:
    (1) which is necessary to rebut a finding of fact by the examiner;
    (2) which is necessary to rebut a response of the patent owner; or
    (3) which for the first time became known or available to the third 
party requester after the filing of the request for inter partes 
reexamination proceeding. Prior art submitted under paragraph (a)(3) of 
this section must be accompanied by a statement as to when the prior art 
first became known or available to the third party requester and must 
include a discussion of the pertinency of each reference to the 
patentability of at least one claim.
    (b) [Reserved]



Sec. 1.949  Examiner's Office action closing prosecution in inter partes
reexamination.

    Upon consideration of the issues a second or subsequent time, or 
upon a determination of patentability of all claims, the examiner shall 
issue an Office action treating all claims present in the inter partes 
reexamination, which may be an action closing prosecution. The Office 
action shall set forth all rejections and determinations not to make a 
proposed rejection, and the grounds therefor. An Office action will not 
usually close prosecution if it includes a new ground of rejection which 
was not previously addressed by the patent owner, unless the new ground 
was necessitated by an amendment.



Sec. 1.951  Options after Office action closing prosecution in inter partes 
reexamination.

    (a) After an Office action closing prosecution in an inter partes 
reexamination, the patent owner may once file comments limited to the 
issues raised in the Office action closing prosecution. The comments can 
include a proposed amendment to the claims, which amendment will be 
subject to the criteria of Sec. 1.116 as to whether or not it shall be 
admitted. The comments must be filed within the time set for response in 
the Office action closing prosecution.
    (b) When the patent owner does file comments, a third party 
requester may once file comments responsive to the patent owner's 
comments within 30 days from the date of service of patent owner's 
comments on the third party requester.



Sec. 1.953  Examiner's Right of Appeal Notice in inter partes reexamination.

    (a) Upon considering the comments of the patent owner and the third 
party requester subsequent to the Office action closing prosecution in 
an inter partes reexamination, or upon expiration of the time for 
submitting such comments, the examiner shall issue a

[[Page 194]]

Right of Appeal Notice, unless the examiner reopens prosecution and 
issues another Office action on the merits.
    (b) Expedited Right of Appeal Notice: At any time after the patent 
owner's response to the initial Office action on the merits in an inter 
partes reexamination, the patent owner and all third party requesters 
may stipulate that the issues are appropriate for a final action, which 
would include a final rejection and/or a final determination favorable 
to patentability, and may request the issuance of a Right of Appeal 
Notice. The request must have the concurrence of the patent owner and 
all third party requesters present in the proceeding and must identify 
all of the appealable issues and the positions of the patent owner and 
all third party requesters on those issues. If the examiner determines 
that no other issues are present or should be raised, a Right of Appeal 
Notice limited to the identified issues shall be issued.
    (c) The Right of Appeal Notice shall be a final action, which 
comprises a final rejection setting forth each ground of rejection and/
or final decision favorable to patentability including each 
determination not to make a proposed rejection, an identification of the 
status of each claim, and the reasons for decisions favorable to 
patentability and/or the grounds of rejection for each claim. No 
amendment can be made in response to the Right of Appeal Notice. The 
Right of Appeal Notice shall set a one-month time period for either 
party to appeal. If no notice of appeal is filed, prosecution in the 
inter partes reexamination proceeding will be terminated, and the 
Director will proceed to issue and publish a certificate under Sec. 
1.997 in accordance with the Right of Appeal Notice.

[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18906, Apr. 16, 2007]

           Interviews Prohibited in Inter Partes Reexamination



Sec. 1.955  Interviews prohibited in inter partes reexamination proceedings.

    There will be no interviews in an inter partes reexamination 
proceeding which discuss the merits of the proceeding.

   Extensions of Time, Terminating of Reexamination Prosecution, and 
            Petitions To Revive in Inter Partes Reexamination



Sec. 1.956  Patent owner extensions of time in inter partes reexamination.

    The time for taking any action by a patent owner in an inter partes 
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 a request effect any extension. 
Any request for such extension must be accompanied by the petition fee 
set forth in Sec. 1.17(g). 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.

[69 FR 56546, Sept. 21, 2004]



Sec. 1.957  Failure to file a timely, appropriate or complete response or 
comment in inter partes reexamination.

    (a) If the third party requester files an untimely or inappropriate 
comment, notice of appeal or brief in an inter partes reexamination, the 
paper will be refused consideration.
    (b) If no claims are found patentable, and the patent owner fails to 
file a timely and appropriate response in an inter partes reexamination 
proceeding, the prosecution in the reexamination proceeding will be a 
terminated prosecution and the Director will proceed to issue and 
publish a certificate concluding the reexamination proceeding under 
Sec. 1.997 in accordance with the last action of the Office.
    (c) If claims are found patentable and the patent owner fails to 
file a timely and appropriate response to any Office action in an inter 
partes reexamination proceeding, further prosecution will be limited to 
the claims found patentable at the time of the failure to respond, and 
to any claims added thereafter which do not expand the scope of the 
claims which were found patentable at that time.
    (d) When action by the patent owner is a bona fide attempt to 
respond and to advance the prosecution and is substantially a complete 
response to the Office action, but consideration of

[[Page 195]]

some matter or compliance with some requirement has been inadvertently 
omitted, an opportunity to explain and supply the omission may be given.

[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18906, Apr. 16, 2007]



Sec. 1.958  Petition to revive inter partes reexamination prosecution 
terminated for lack of patent owner response.

    (a) If a response by the patent owner is not timely filed in the 
Office, the delay in filing such response may be excused if it is shown 
to the satisfaction of the Director that the delay was unavoidable. A 
grantable petition to accept an unavoidably delayed response must be 
filed in compliance with Sec. 1.137(a).
    (b) Any response by the patent owner not timely filed in the Office 
may be accepted if the delay was unintentional. A grantable petition to 
accept an unintentionally delayed response must be filed in compliance 
with Sec. 1.137(b).

Appeal to the Board of Patent Appeals and Interferences in Inter Partes 
                              Reexamination



Sec. 1.959  Appeal in inter partes reexamination.

    Appeals to the Board of Patent Appeals and Interferences under 35 
U.S.C. 134(c) are conducted according to part 41 of this title.

[69 FR 50002, Aug. 12, 2004]



Sec. Sec. 1.961-1.977  [Reserved]



Sec. 1.979  Return of Jurisdiction from the Board of Patent Appeals and 
Interferences; termination of appeal proceedings.

    (a) Jurisdiction over an inter partes reexamination proceeding 
passes to the examiner after a decision by the Board of Patent Appeals 
and Interferences upon transmittal of the file to the examiner, subject 
to each appellant's right of appeal or other review, for such further 
action as the condition of the inter partes reexamination proceeding may 
require, to carry into effect the decision of the Board of Patent 
Appeals and Interferences.
    (b) Upon judgment in the appeal before the Board of Patent Appeals 
and Interferences, if no further appeal has been taken (Sec. 1.983), 
the prosecution in the inter partes reexamination proceeding will be 
terminated and the Director will issue and publish a certificate under 
Sec. 1.997 concluding the proceeding. If an appeal to the U.S. Court of 
Appeals for the Federal Circuit has been filed, that appeal is 
considered terminated when the mandate is issued by the Court.

[69 FR 50002, Aug. 12, 2004, as amended at 72 FR 18907, Apr. 16, 2007]



Sec. 1.981  Reopening after a final decision of the Board of Patent Appeals
and Interferences.

    When a decision by the Board of Patent Appeals and Interferences on 
appeal has become final for judicial review, prosecution of the inter 
partes reexamination proceeding will not be reopened or reconsidered by 
the primary examiner except under the provisions of Sec. 41.77 of this 
title without the written authority of the Director, and then only for 
the consideration of matters not already adjudicated, sufficient cause 
being shown.

[69 FR 50002, Aug. 12, 2004]

Appeal to the United States Court of Appeals for the Federal Circuit in 
                       Inter Partes Reexamination



Sec. 1.983  Appeal to the United States Court of Appeals for the Federal
Circuit in inter partes reexamination.

    (a) The patent owner or third party requester in an inter partes 
reexamination proceeding who is a party to an appeal to the Board of 
Patent Appeals and Interferences and who is dissatisfied with the 
decision of the Board of Patent Appeals and Interferences may, subject 
to Sec. 41.81, appeal to the U.S. Court of Appeals for the Federal 
Circuit and may be a party to any appeal thereto taken from a 
reexamination decision of the Board of Patent Appeals and Interferences.
    (b) The appellant must take the following steps in such an appeal:
    (1) In the U.S. Patent and Trademark Office, timely file a written 
notice of

[[Page 196]]

appeal directed to the Director in accordance with Sec. Sec. 1.302 and 
1.304;
    (2) In the U.S. Court of Appeals for the Federal Circuit, file a 
copy of the notice of appeal and pay the fee, as provided for in the 
rules of the U.S. Court of Appeals for the Federal Circuit; and
    (3) Serve a copy of the notice of appeal on every other party in the 
reexamination proceeding in the manner provided in Sec. 1.248.
    (c) If the patent owner has filed a notice of appeal to the U.S. 
Court of Appeals for the Federal Circuit, the third party requester may 
cross appeal to the U.S. Court of Appeals for the Federal Circuit if 
also dissatisfied with the decision of the Board of Patent Appeals and 
Interferences.
    (d) If the third party requester has filed a notice of appeal to the 
U.S. Court of Appeals for the Federal Circuit, the patent owner may 
cross appeal to the U.S. Court of Appeals for the Federal Circuit if 
also dissatisfied with the decision of the Board of Patent Appeals and 
Interferences.
    (e) A party electing to participate in an appellant's appeal must, 
within fourteen days of service of the appellant's notice of appeal 
under paragraph (b) of this section, or notice of cross appeal under 
paragraphs (c) or (d) of this section, take the following steps:
    (1) In the U.S. Patent and Trademark Office, timely file a written 
notice directed to the Director electing to participate in the 
appellant's appeal to the U.S. Court of Appeals for the Federal Circuit 
by mail to, or hand service on, the General Counsel as provided in Sec. 
104.2;
    (2) In the U.S. Court of Appeals for the Federal Circuit, file a 
copy of the notice electing to participate in accordance with the rules 
of the U.S. Court of Appeals for the Federal Circuit; and
    (3) Serve a copy of the notice electing to participate on every 
other party in the reexamination proceeding in the manner provided in 
Sec. 1.248.
    (f) Notwithstanding any provision of the rules, in any reexamination 
proceeding commenced prior to November 2, 2002, the third party 
requester is precluded from appealing and cross appealing any decision 
of the Board of Patent Appeals and Interferences to the U.S. Court of 
Appeals for the Federal Circuit, and the third party requester is 
precluded from participating in any appeal taken by the patent owner to 
the U.S. Court of Appeals for the Federal Circuit.

[68 FR 71008, Dec. 22, 2003, as amended at 72 FR 18907, Apr. 16, 2007]

      Concurrent Proceedings Involving Same Patent in Inter Partes 
                              Reexamination



Sec. 1.985  Notification of prior or concurrent proceedings in inter
partes reexamination.

    (a) In any inter partes reexamination proceeding, the patent owner 
shall call the attention of the Office to any prior or concurrent 
proceedings in which the patent is or was involved, including but not 
limited to interference, reissue, reexamination, or litigation and the 
results of such proceedings.
    (b) Notwithstanding any provision of the rules, any person at any 
time may file a paper in an inter partes reexamination proceeding 
notifying the Office of a prior or concurrent proceedings in which the 
same patent is or was involved, including but not limited to 
interference, reissue, reexamination, or litigation and the results of 
such proceedings. Such paper must be limited to merely providing notice 
of the other proceeding without discussion of issues of the current 
inter partes reexamination proceeding. Any paper not so limited will be 
returned to the sender.



Sec. 1.987  Suspension of inter partes reexamination proceeding due to 
litigation.

    If a patent in the process of inter partes reexamination is or 
becomes involved in litigation, the Director shall determine whether or 
not to suspend the inter partes reexamination proceeding.



Sec. 1.989  Merger of concurrent reexamination proceedings.

    (a) If any reexamination is ordered while a prior inter partes 
reexamination proceeding is pending for the same patent and prosecution 
in the prior inter partes reexamination proceeding has not been 
terminated, a decision may be made to merge the two proceedings or

[[Page 197]]

to suspend one of the two proceedings. Where merger is ordered, the 
merged examination will normally result in the issuance and publication 
of a single reexamination certificate under Sec. 1.997.
    (b) An inter partes reexamination proceeding filed under Sec. 1.913 
which is merged with an ex parte reexamination proceeding filed under 
Sec. 1.510 will result in the merged proceeding being governed by 
Sec. Sec. 1.902 through 1.997, except that the rights of any third 
party requester of the ex parte reexamination shall be governed by 
Sec. Sec. 1.510 through 1.560.

[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18907, Apr. 16, 2007]



Sec. 1.991  Merger of concurrent reissue application and inter partes 
reexamination proceeding.

    If a reissue application and an inter partes reexamination 
proceeding on which an order pursuant to Sec. 1.931 has been mailed are 
pending concurrently on a patent, a decision may be made to merge the 
two proceedings or to suspend one of the two proceedings. Where merger 
of a reissue application and an inter partes reexamination proceeding is 
ordered, the merged proceeding will be conducted in accordance with 
Sec. Sec. 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 
inter partes reexamination proceeding during the pendency of the merged 
proceeding. In a merged proceeding the third party requester may 
participate to the extent provided under Sec. Sec. 1.902 through 1.997 
and 41.60 through 41.81, except that such participation shall be limited 
to issues within the scope of inter partes reexamination. The examiner's 
actions and any responses by the patent owner or third party requester 
in a merged proceeding will apply to both the reissue application and 
the inter partes reexamination proceeding and be physically entered into 
both files. Any inter partes reexamination proceeding merged with a 
reissue application shall be concluded by the grant of the reissued 
patent.

[72 FR 18907, Apr. 16, 2007]



Sec. 1.993  Suspension of concurrent interference and inter partes 
reexamination proceeding.

    If a patent in the process of inter partes reexamination is or 
becomes involved in an interference, the Director may suspend the inter 
partes reexamination or the interference. The Director will not consider 
a request to suspend an interference unless a motion under Sec. 
41.121(a)(3) of this title to suspend the interference has been 
presented to, and denied by, an administrative patent judge and the 
request is filed within ten (10) days of a decision by an administrative 
patent judge denying the motion for suspension or such other time as the 
administrative patent judge may set.

[69 FR 50002, Aug. 12, 2004]



Sec. 1.995  Third party requester's participation rights preserved in
merged proceeding.

    When a third party requester is involved in one or more proceedings, 
including an inter partes reexamination proceeding, the merger of such 
proceedings will be accomplished so as to preserve the third party 
requester's right to participate to the extent specifically provided for 
in these regulations. In merged proceedings involving different 
requesters, any paper filed by one party in the merged proceeding shall 
be served on all other parties of the merged proceeding.

         Reexamination Certificate in Inter Partes Reexamination



Sec. 1.997  Issuance and publication of inter partes reexamination 
certificate concludes inter partes reexamination proceeding.

    (a) To conclude an inter partes reexamination proceeding, the 
Director will issue and publish an inter partes reexamination 
certificate in accordance with 35 U.S.C. 316 setting forth the results 
of the inter partes reexamination proceeding and the content of the 
patent following the inter partes reexamination proceeding.
    (b) A certificate will be issued and published in each patent in 
which an inter partes reexamination proceeding has been ordered under 
Sec. 1.931. Any

[[Page 198]]

statutory disclaimer filed by the patent owner will be made part of the 
certificate.
    (c) The certificate will be sent to the patent owner at the address 
as provided for in Sec. 1.33(c). A copy of the certificate will also be 
sent to the third party requester of the inter partes reexamination 
proceeding.
    (d) If a certificate has been issued and published which cancels all 
of the claims of the patent, no further Office proceedings will be 
conducted with that patent or any reissue applications or any 
reexamination requests relating thereto.
    (e) If the inter partes reexamination proceeding is terminated by 
the grant of a reissued patent as provided in Sec. 1.991, the reissued 
patent will constitute the reexamination certificate required by this 
section and 35 U.S.C. 316.
    (f) A notice of the issuance of each certificate under this section 
will be published in the Official Gazette.

[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18907, Apr. 16, 2007]



PART 2_RULES OF PRACTICE IN TRADEMARK CASES--Table of Contents




    Editorial Note: Part 2 is placed in the separate grouping of parts 
pertaining to trademarks regulations.



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 an allegation of 
          use.

                       Requirements for Recording

3.21 Identification of patents and patent applications.
3.24 Requirements for documents and cover sheets relating to patents and 
          patent applications.
3.25 Recording requirements for trademark applications and 
          registrations.
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. 2(b)(2).

    Source: 57 FR 29642, July 6, 1992, unless otherwise noted.

    Editorial Note: Nomenclature changes to part 3 appear at 68 FR 
14337, Mar. 25, 2003.



Sec. 3.1  Definitions.

    For purposes of this part, the following definitions shall apply:
    Application means a national application for patent, an 
international patent application that designates the United States of 
America, or an application to register a trademark under section 1 or 44 
of the Trademark Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless otherwise 
indicated.
    Assignment means a transfer by a party of all or part of its right, 
title and interest in a patent, patent application, 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 United States Patent and Trademark Office.
    Recorded document means a document which has been recorded in the 
Office pursuant to Sec. 3.11.

[[Page 199]]

    Registration means a trademark registration issued by the Office.

[69 FR 29878, May 26, 2004]

                    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 Sec. Sec. 3.28 
and 3.31, will be recorded in the Office. Other documents, accompanied 
by completed cover sheets as specified in Sec. Sec. 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 Director.
    (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 Director 
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.
    (c) A joint research agreement or an excerpt of a joint research 
agreement will also be recorded as provided in this part.

[62 FR 53202, Oct. 10, 1997, as amended at 70 FR 1824, Jan. 11, 2005; 70 
FR 54267, Sept. 14, 2005]



Sec. 3.16  Assignability of trademarks prior to filing of an allegation of use.

    Before an allegation of use under either 15 U.S.C. 1051(c) or 15 
U.S.C. 1051(d) is filed, an applicant may only assign an application to 
register a mark under 15 U.S.C. 1051(b) to a successor to the 
applicant's business, or portion of the business to which the mark 
pertains, if that business is ongoing and existing.

[64 FR 48926, Sept. 8, 1999]

                       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 the name of each inventor and 
the 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 
the name of each inventor and the title of the invention so that there 
can be no mistake as to the provisional application intended.

[69 FR 29878, May 26, 2004]



Sec. 3.24  Requirements for documents and cover sheets relating to 
patents and patent applications.

    (a) For electronic submissions: Either a copy of the original 
document or an extract of the original document may be submitted for 
recording. All documents must be submitted as digitized images in Tagged 
Image File Format (TIFF) or another form as prescribed by the Director. 
When printed to a paper size of either 21.6 by 27.9 cm (8\1/2\ by 11 
inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible 
and a 2.5 cm (one-inch) margin must be present on all sides.
    (b) For paper or facsimile submissions: Either a copy of the 
original document or an extract of the original document must be 
submitted for recording. Only one side of each page may be used. The 
paper size must be either 21.6 by 27.9

[[Page 200]]

cm (8\1/2\ by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either 
case, a 2.5 cm (one-inch) margin must be present on all sides. For paper 
submissions, the paper used should be flexible, strong white, non-shiny, 
and durable. The Office will not return recorded documents, so original 
documents must not be submitted for recording.

[69 FR 29879, May 26, 2004]



Sec. 3.25  Recording requirements for trademark applications and registrations.

    (a) Documents affecting title. To record documents affecting title 
to a trademark application or registration, a legible cover sheet (see 
Sec. 3.31) and one of the following must be submitted:
    (1) A copy of the original document;
    (2) A copy of an extract from the document evidencing the effect on 
title; or
    (3) A statement signed by both the party conveying the interest and 
the party receiving the interest explaining how the conveyance affects 
title.
    (b) Name changes. Only a legible cover sheet is required (See Sec. 
3.31).
    (c) All documents. (1) For electronic submissions: All documents 
must be submitted as digitized images in Tagged Image File Format (TIFF) 
or another form as prescribed by the Director. When printed to a paper 
size of either 21.6 by 27.9 cm (8\1/2\ by 11 inches) or 21.0 by 29.7 cm 
(DIN size A4), a 2.5 cm (one-inch) margin must be present on all sides.
    (2) For paper or facsimile submissions: All documents should be 
submitted on white and non-shiny paper that is either 8\1/2\ by 11 
inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-
inch (2.5 cm) margin on all sides in either case. Only one side of each 
page may be used. The Office will not return recorded documents, so 
original documents should not be submitted for recording.

[69 FR 29879, May 26, 2004]



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.

    Documents and cover sheets submitted by mail for recordation should 
be addressed to Mail Stop Assignment Recordation Services, Director of 
the United States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, Virginia 22313-1450, unless they are filed together with new 
applications.

[69 FR 29879, May 26, 2004]



Sec. 3.28  Requests for recording.

    Each document submitted to the Office for recording must include a 
single 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, then separate 
patent and trademark cover sheets, each accompanied by a copy of the 
document to be recorded, must be submitted. If a document to be recorded 
is not accompanied by a completed cover sheet, the document and the 
incomplete cover sheet will be returned pursuant to Sec. 3.51 for 
proper completion, in which case the document and a completed cover 
sheet should be resubmitted.

[70 FR 56128, Sept. 26, 2005]

                        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;
    (4) Identification of the interests involved:
    (i) For trademark assignments and trademark name changes: Each 
trademark registration number and each trademark application number, if 
known, against which the Office is to record the document. If the 
trademark application number is not known, a

[[Page 201]]

copy of the application or a reproduction of the trademark must be 
submitted, along with an estimate of the date that the Office received 
the application; or
    (ii) For any other document affecting title to a trademark or patent 
application, registration or patent: Each trademark or patent 
application number or each trademark registration number or patent 
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 date the document was executed;
    (7) The signature of the party submitting the document. For an 
assignment document or name change filed electronically, the person who 
signs the cover sheet must either:
    (i) Place a symbol comprised of letters, numbers, and/or punctuation 
marks between forward slash marks (e.g. /Thomas O'Malley III/) in the 
signature block on the electronic submission; or
    (ii) Sign the cover sheet using some other form of electronic 
signature specified by the Director.
    (8) For trademark assignments, the entity and citizenship of the 
party receiving the interest. In addition, if the party receiving the 
interest is a domestic partnership or domestic joint venture, the cover 
sheet must set forth the names, legal entities, and national citizenship 
(or the state or country of organization) of all general partners or 
active members that compose the partnership or joint venture.
    (b) A cover sheet should not refer to both patents and trademarks, 
since any information, including information about pending patent 
applications, submitted with a request for recordation of a document 
against a trademark application or trademark registration will become 
public record upon recordation.
    (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 relates to a Government interest; and
    (2) Indicate, if applicable, that the document to be recorded is not 
a document affecting title (see Sec. 3.41(b)).
    (d) Each trademark cover sheet required by Sec. 3.28 seeking to 
record a document against a trademark application or registration should 
include, in addition to the serial number or registration number of the 
trademark, identification of the trademark or a description of the 
trademark, against which the Office is to record the document.
    (e) Each patent or trademark cover sheet required by Sec. 3.28 
should contain the number of applications, patents or registrations 
identified in the cover sheet and the total fee.
    (f) Each trademark cover sheet should include the citizenship of the 
party conveying the interest.
    (g) The cover sheet required by Sec. 3.28 seeking to record a joint 
research agreement or an excerpt of a joint research agreement as 
provided by Sec. 3.11(c) must:
    (1) Identify the document as a ``joint research agreement'' (in the 
space provided for the description of the interest conveyed or 
transaction to be recorded if using an Office-provided form);
    (2) Indicate the name of the owner of the application or patent (in 
the space provided for the name and address of the party receiving the 
interest if using an Office-provided form);
    (3) Indicate the name of each other party to the joint research 
agreement party (in the space provided for the name of the party 
conveying the interest if using an Office-provided form); and
    (4) Indicate the date the joint research agreement was executed.

[57 FR 29642, July 6, 1992, as amended at 62 FR 53202, Oct. 10, 1997; 64 
FR 48927, Sept. 8, 1999; 67 FR 79523, Dec. 30, 2002; 69 FR 29879, May 
26, 2004; 70 FR 1824, Jan. 11, 2005; 70 FR 56128, Sept. 26, 2005; 73 FR 
67775, Nov. 17, 2008]



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

[[Page 202]]

    (2) A corrected cover sheet is filed for recordation.
    (b) The corrected cover sheet must be accompanied by a copy of the 
document originally submitted for recording and by the recording fee as 
set forth in Sec. 3.41.

[69 FR 29879, May 26, 2004]

                                  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 either: Faxed or electronically 
submitted as prescribed by the Director, or mailed to the Office in 
compliance with Sec. 3.27.

[63 FR 52159, Sept. 30, 1998, as amended at 69 FR 29879, May 26, 2004]

                      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 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.

[[Page 203]]

    (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 Director. 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 patent, patent application, trademark 
application or trademark registration is not domiciled in the United 
States, the assignee may designate a domestic representative in a 
document filed in the United States Patent and Trademark Office. The 
designation should 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.

[67 FR 79522, Dec. 30, 2002]

                        Action Taken by Assignee



Sec. 3.71  Prosecution by assignee.

    (a) Patents--conducting of prosecution. One or more assignees as 
defined in paragraph (b) of this section may, after becoming of record 
pursuant to paragraph (c) of this section, conduct prosecution of a 
national patent application or a reexamination proceeding to the 
exclusion of either the inventive entity, or the assignee(s) previously 
entitled to conduct prosecution.
    (b) Patents--Assignee(s) who can prosecute. The assignee(s) who may 
conduct either the prosecution of a national application for patent or a 
reexamination proceeding are:
    (1) A single assignee. An assignee of the entire right, title and 
interest in the application or patent being reexamined who is of record, 
or
    (2) Partial assignee(s) together or with inventor(s). All partial 
assignees, or all partial assignees and inventors who have not assigned 
their right, title and interest in the application or patent being 
reexamined, who together own the entire right, title and interest in the 
application or patent being reexamined. A partial assignee is any 
assignee of record having less than the entire right, title and interest 
in the application or patent being reexamined.
    (c) Patents--Becoming of record. An assignee becomes of record 
either in a national patent application or a reexamination proceeding by 
filing a statement in compliance with Sec. 3.73(b) that is signed by a 
party who is authorized to act on behalf of the assignee.
    (d) Trademarks. The assignee of a trademark application or 
registration may prosecute a trademark application, submit documents to 
maintain a trademark registration, or file papers against a third party 
in reliance on the assignee's trademark application or registration, to 
the exclusion of the original applicant or previous assignee. The 
assignee must establish ownership in compliance with Sec. 3.73(b).

[65 FR 54682, Sept. 8, 2000]



Sec. 3.73  Establishing right of assignee to take action.

    (a) The inventor is presumed to be the owner of a patent 
application, and any patent that may issue therefrom, unless there is an 
assignment. The original applicant is presumed to be the owner of a 
trademark application or registration, unless there is an assignment.
    (b)(1) In order to request or take action in a patent or trademark 
matter, the assignee must establish its ownership of the patent or 
trademark property of paragraph (a) of this section to

[[Page 204]]

the satisfaction of the Director. The establishment of ownership by the 
assignee may be combined with the paper that requests or takes the 
action. Ownership is established by submitting to the Office a signed 
statement identifying the assignee, accompanied by either:
    (i) Documentary evidence of a chain of title from the original owner 
to the assignee (e.g., copy of an executed assignment). For trademark 
matters only, the documents submitted to establish ownership may be 
required to be recorded pursuant to Sec. 3.11 in the assignment records 
of the Office as a condition to permitting the assignee to take action 
in a matter pending before the Office. For patent matters only, the 
submission of the documentary evidence must be accompanied by a 
statement affirming that the documentary evidence of the chain of title 
from the original owner to the assignee was or concurrently is being 
submitted for recordation pursuant to Sec. 3.11; or
    (ii) A statement specifying where documentary evidence of a chain of 
title from the original owner to the assignee is recorded in the 
assignment records of the Office (e.g., reel and frame number).
    (2) The submission establishing ownership must show that the person 
signing the submission is a person authorized to act on behalf of the 
assignee by:
    (i) Including a statement that the person signing the submission is 
authorized to act on behalf of the assignee; or
    (ii) Being signed by a person having apparent authority to sign on 
behalf of the assignee, e.g., an officer of the assignee.
    (c) For patent matters only:
    (1) Establishment of ownership by the assignee must be submitted 
prior to, or at the same time as, the paper requesting or taking action 
is submitted.
    (2) If the submission under this section is by an assignee of less 
than the entire right, title and interest, such assignee must indicate 
the extent (by percentage) of its ownership interest, or the Office may 
refuse to accept the submission as an establishment of ownership.

[65 FR 54682, Sept. 8, 2000, as amended at 70 FR 56128, Sept. 26, 2005]

                          Issuance to Assignee



Sec. 3.81  Issue of patent to assignee.

    (a) With payment of the issue fee: An application may issue in the 
name of the assignee consistent with the application's assignment where 
a request for such issuance is submitted with payment of the issue fee, 
provided the assignment has been previously recorded in the Office. If 
the assignment has not been previously recorded, the request must state 
that the document has been filed for recordation as set forth in Sec. 
3.11.
    (b) After payment of the issue fee: Any request for issuance of an 
application in the name of the assignee submitted after the date of 
payment of the issue fee, and any request for a patent to be corrected 
to state the name of the assignee, must state that the assignment was 
submitted for recordation as set forth in Sec. 3.11 before issuance of 
the patent, and must include a request for a certificate of correction 
under Sec. 1.323 of this chapter (accompanied by the fee set forth in 
Sec. 1.20(a)) and the processing fee set forth in Sec. 1.17(i) of this 
chapter.
    (c) Partial assignees. (1) If one or more assignee, together with 
one or more inventor, holds the entire right, title, and interest in the 
application, the patent may issue in the names of the assignee and the 
inventor.
    (2) If multiple assignees hold the entire right, title, and interest 
to the exclusion of all the inventors, the patent may issue in the names 
of the multiple assignees.

[69 FR 29879, May 26, 2004]



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

[[Page 205]]

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_COMPLAINTS REGARDING INVENTION PROMOTERS--Table of Contents




Sec.
4.1 Complaints regarding invention promoters.
4.2 Definitions.
4.3 Submitting complaints.
4.4 Invention promoter reply.
4.5 Notice by publication.
4.6 Attorneys and Agents.

    Authority: 35 U.S.C. 2(b)(2) and 297.

    Source: 65 FR 3129, Jan. 20, 2000, unless otherwise noted.



Sec. 4.1  Complaints regarding invention promoters.

    These regulations govern the Patent and Trademark Office's (Office) 
responsibilities under the Inventors' Rights Act of 1999, which can be 
found in the U.S. Code at 35 U.S.C. 297. The Act requires the Office to 
provide a forum for the publication of complaints concerning invention 
promoters. The Office will not conduct any independent investigation of 
the invention promoter. Although the Act provides additional civil 
remedies for persons injured by invention promoters, those remedies must 
be pursued by the injured party without the involvement of the Office.



Sec. 4.2  Definitions.

    (a) Invention Promoter means any person, firm, partnership, 
corporation, or other entity who offers to perform or performs invention 
promotion services for, or on behalf of, a customer, and who holds 
itself out through advertising in any mass media as providing such 
services, but does not include--
    (1) Any department or agency of the Federal Government or of a State 
or local government;
    (2) Any nonprofit, charitable, scientific, or educational 
organization qualified under applicable State law or described under 
section 170(b)(1)(A) of the Internal Revenue Code of 1986;
    (3) Any person or entity involved in the evaluation to determine 
commercial potential of, or offering to license or sell, a utility 
patent or a previously filed nonprovisional utility patent application;
    (4) Any party participating in a transaction involving the sale of 
the stock or assets of a business; or
    (5) Any party who directly engages in the business of retail sales 
of products or the distribution of products.
    (b) Customer means any individual who enters into a contract with an 
invention promoter for invention promotion services.
    (c) Contract for Invention Promotion Services means a contract by 
which an invention promoter undertakes invention promotion services for 
a customer.
    (d) Invention Promotion Services means the procurement or attempted 
procurement for a customer of a firm, corporation, or other entity to 
develop and market products or services that include the invention of 
the customer.



Sec. 4.3  Submitting complaints.

    (a) A person may submit a complaint concerning an invention promoter 
with the Office. A person submitting a complaint should understand that 
the complaint may be forwarded to the invention promoter and may become 
publicly available. The Office will not accept any complaint that 
requests that it be kept confidential.
    (b) A complaint must be clearly marked, or otherwise identified, as 
a complaint under these rules. The complaint must include:
    (1) The name and address of the complainant;
    (2) The name and address of the invention promoter;
    (3) The name of the customer;
    (4) The invention promotion services offered or performed by the 
invention promoter;
    (5) The name of the mass media in which the invention promoter 
advertised providing such services;
    (6) An explanation of the relationship between the customer and the 
invention promoter; and
    (7) A signature of the complainant.

[[Page 206]]

    (c) The complaint should fairly summarize the action of the 
invention promoter about which the person complains. Additionally, the 
complaint should include names and addresses of persons believed to be 
associated with the invention promoter. Complaints, and any replies, 
must be addressed to: Mail Stop 24, Commissioner for Patents, P.O. Box 
1450, Alexandria, Virginia 22313-1450.
    (d) Complaints that do not provide the information requested in 
paragraphs (b) and (c) of this section will be returned. If 
complainant's address is not provided, the complaint will be destroyed.
    (e) No originals of documents should be included with the complaint.
    (f) A complaint can be withdrawn by the complainant or the named 
customer at any time prior to its publication.

[65 FR 3129, Jan. 20, 2000, as amended at 68 FR 14338, Mar. 25, 2003]



Sec. 4.4  Invention promoter reply.

    (a) If a submission appears to meet the requirements of a complaint, 
the invention promoter named in the complaint will be notified of the 
complaint and given 30 days to respond. The invention promoter's 
response will be made available to the public along with the complaint. 
If the invention promoter fails to reply within the 30-day time period 
set by the Office, the complaint will be made available to the public. 
Replies sent after the complaint is made available to the public will 
also be published.
    (b) A response must be clearly marked, or otherwise identified, as a 
response by an invention promoter. The response must contain:
    (1) The name and address of the invention promoter;
    (2) A reference to a complaint forwarded to the invention promoter 
or a complaint previously published;
    (3) The name of the individual signing the response; and
    (4) The title or authority of the individual signing the response.



Sec. 4.5  Notice by publication.

    If the copy of the complaint that is mailed to the invention 
promoter is returned undelivered, then the USPTO will primarily publish 
a Notice of Complaint Received on the USPTO's Internet home page at 
http://www.uspto.gov. Only where the USPTO's Web site is unavailable for 
publication will the USPTO publish the Notice of Complaint in the 
Official Gazette and/or the Federal Register. The invention promoter 
will be given 30 days from such notice to submit a reply to the Notice 
of Complaint. If the USPTO does not receive a reply from the invention 
promoter within 30 days, the complaint alone will become publicly 
available.

[68 FR 9553, Feb. 28, 2003]



Sec. 4.6  Attorneys and Agents.

    Complaints against registered patent attorneys and agents will not 
be treated under this section, unless a complaint fairly demonstrates 
that invention promotion services are involved. Persons having 
complaints about registered patent attorneys or agents should contact 
the Office of Enrollment and Discipline at Mail Stop OED, Director of 
the United States Patent and Trademark Office, PO Box 1450, Alexandria, 
Virginia 22313-1450, and the attorney discipline section of the 
attorney's state licensing bar if an attorney is involved.

[68 FR 14338, Mar. 25, 2003]



PART 5_SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND 
FILE APPLICATIONS IN FOREIGN COUNTRIES--Table of Contents




                             Secrecy Orders

Sec.
5.1 Applications and correspondence involving national security.
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.

[[Page 207]]

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. 2(b)(2), 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 amended, 22 U.S.C. 2571 et seq.; 
the Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011 et seq.; 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 Director (15 CFR 
734.3(b)(1)(v), 22 CFR 125.04, and 10 CFR 810.7), as well as the Export 
Administration Act of 1979, 50 U.S.C. app. 2401 et seq.; the 
International Emergency Economic Powers Act, 50 U.S.C. 1701 et seq.; 
E.O. 12938, 59 FR 59099, 3 CFR, 1994 Comp., p. 950; E.O. 13222, 66 FR 
44025, 3 CFR, 2001 Comp., p. 783; Notice of August 2, 2005, 70 FR 45273 
(August 5, 2005).

    Source: 24 FR 10381, Dec. 22, 1959, unless otherwise noted.

    Editorial Note: Nomenclature changes to part 5 appear at 68 FR 
14338, Mar. 25, 2003.

                             Secrecy Orders



Sec. 5.1  Applications and correspondence involving national security.

    (a) All correspondence in connection with this part, including 
petitions, should be addressed to: Mail Stop L&R, Commissioner for 
Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
    (b) Application as used in this part includes provisional 
applications filed under 35 U.S.C. 111(b) (Sec. 1.9(a)(2) of this 
chapter), nonprovisional applications filed under 35 U.S.C. 111(a) or 
entering the national stage from an international application after 
compliance with 35 U.S.C. 371 (Sec. 1.9(a)(3)), or international 
applications filed under the Patent Cooperation Treaty prior to entering 
the national stage of processing (Sec. 1.9(b)).
    (c) Patent applications and documents relating thereto that are 
national security classified (see Sec. 1.9(i) of this chapter) and 
contain authorized national security markings (e.g., ``Confidential,'' 
``Secret'' or ``Top Secret'') are accepted by the Office. National 
security classified documents filed in the Office must be either hand-
carried to Licensing and Review or mailed to the Office in compliance 
with paragraph (a) of this section.
    (d) The applicant in a national security classified patent 
application must obtain a secrecy order pursuant to Sec. 5.2(a). If a 
national security classified patent application is filed without a 
notification pursuant to Sec. 5.2(a), the Office will set a time period 
within which either the application must be declassified, or the 
application must be placed under a secrecy order pursuant to Sec. 
5.2(a), or the applicant must submit evidence of a good faith effort to 
obtain a secrecy order pursuant to Sec. 5.2(a) from the relevant 
department or agency in order to prevent abandonment of the application. 
If evidence of a good faith effort to obtain a secrecy order pursuant to 
Sec. 5.2(a) from the relevant department or agency is submitted by the 
applicant within the time period set by the Office, but the application 
has not been declassified or placed under a secrecy order pursuant to 
Sec. 5.2(a), the Office will again set a time period within which 
either the application must be declassified, or the application must be 
placed under a secrecy order pursuant to Sec. 5.2(a), or the applicant 
must submit evidence of a good faith effort to again obtain a secrecy 
order pursuant to Sec. 5.2(a) from the relevant department or agency in 
order to prevent abandonment of the application.
    (e) An application will not be published under Sec. 1.211 of this 
chapter or allowed under Sec. 1.311 of this chapter if publication or 
disclosure of the application would be detrimental to national security. 
An application under national security review will not be published at 
least until six months from its filing date or three months from the 
date the application was referred to a defense agency, whichever is 
later. A national security classified patent application will not be 
published under Sec. 1.211 of this chapter or allowed under Sec. 1.311 
of this chapter until the application is declassified and any secrecy 
order under Sec. 5.2(a) has been rescinded.

[[Page 208]]

    (f) Applications on inventions made outside the United States and on 
inventions in which a U.S. Government defense agency has a property 
interest will not be made available to defense agencies.

[65 FR 54682, Sept. 8, 2000, as amended at 65 FR 57060, Sept. 20, 2000; 
68 FR 14338, Mar. 25, 2003; 69 FR 29880, May 26, 2004]



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 for Patents.
    (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.
    (c) An application disclosing any significant part of the subject 
matter of an application under a secrecy order pursuant to paragraph (a) 
of this section also falls within the scope of such secrecy order. Any 
such application that is pending before the Office must be promptly 
brought to the attention of Licensing and Review, unless such 
application is itself under a secrecy order pursuant to paragraph (a) of 
this section. Any subsequently filed application containing any 
significant part of the subject matter of an application under a secrecy 
order pursuant to paragraph (a) of this section must either be hand-
carried to Licensing and Review or mailed to the Office in compliance 
with Sec. 5.1(a).

[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53203, Oct. 10, 1997; 
65 FR 54683, Sept. 8, 2000]



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 for Patents will not 
be set for hearing until the secrecy order is removed.
    (b) An interference will not be declared involving a national 
application under secrecy order. An applicant whose application is under 
secrecy order may suggest an interference (Sec. 41.202(a) of this 
title), but the Office will not act on the request while the application 
remains under a secrecy order.
    (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; 69 FR 50002, Aug. 12, 2004]



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

[[Page 209]]

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 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]



Sec. Sec. 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 for Patents 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 for Patents referred to in 
paragraph (a) would also authorize the export of technical data abroad 
for purposes relating to the preparation, filing

[[Page 210]]

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 parts 730-774 (Regulations of the Bureau of 
Industry and Security, Department of Commerce) and 10 CFR part 810 
(Foreign Atomic Energy Programs of the Department of Energy).
    (c) Where technical data in the form of a patent application, or in 
any form, are 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 for Patents 
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 730-774 (Bureau of Industry and 
Security Regulations, 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 734 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; 70 FR 56129, Sept. 26, 2005]



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) A petition for license must include the fee set forth in Sec. 
1.17(g) of this chapter, the petitioner's address, and full instructions 
for delivery of the requested license when it is to be delivered to 
other than the petitioner. The petition should be presented in letter 
form.

(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; 65 FR 54683, Sept. 8, 2000; 69 FR 56546, Sept. 
21, 2004]

[[Page 211]]



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]



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 Sec. Sec. 
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

[[Page 212]]

    (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.
    (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(g) of this chapter), 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; 69 FR 56546, Sept. 21, 2004]



Sec. Sec. 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

[[Page 213]]

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 for Patents 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 from the 
Commissioner for Patents is required by the provisions of Sec. Sec. 
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 734.3(b)(1)(v)) 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 (Sec. Sec. 5.11 through 
5.25) of the U.S. 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 734.10(a)).

[70 FR 56129, Sept. 26, 2005]



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 (Sec. Sec. 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(g) of this chapter).
    (b) The explanation in paragraph (a) of this section 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.
    (c) 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

[[Page 214]]

the date of the denial. If the petition for a retroactive license is 
denied with respect to the invention of a pending 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; 69 FR 56546, Sept. 21, 2004]

                                 General



Sec. Sec. 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 the separate grouping of parts 
pertaining to trademarks regulations.



PART 7_RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING
TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF 

MARKS--Table of Contents




    Editorial Note: Part 7 is placed in the separate grouping of parts 
pertaining to trademarks regulations.

[[Page 215]]

                    INDEX I_RULES RELATING TO PATENTS

  Editorial Note: This listing is provided for informational purposes 
only. It is compiled and kept current by the Department of Commerce.

                                                                    Sec.

                                 A

Abandoned applications:
Abandonment by failure to prosecute................................1.135
Abandonment during interference.............................41.127(b)(1)
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(a)
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....................................................41.33(d)
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 216]]

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
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................................41.50(b)
After final action..........................................1.116, 41.33
After final action (transitional procedures).......................1.129
After notice of allowance..........................................1.312
By patent owner....................................................1.530
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..............................41.121, 41.208
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 applications in interference...........................41.121, 41.208
To correct inaccuracies or prolixity...............................1.121
To correspond to original drawing or specification.................1.121
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..........................................41.54
Affidavits after appeal.........................................41.33(d)
Brief..............................................................41.37
Decision by Board...............................................41.50(b)
Examiner's answer..................................................41.39
Fees...............................................................41.20
Hearing of.........................................................41.47
New grounds for rejecting a claim...............................41.50(b)
Notice of appeal...................................................41.31
Rehearing..........................................................41.52
Reopening after decision...........................................1.198
Reply brief........................................................41.41
Statement of grounds for rejecting, by Board of Patent Appeals and 
Interferences......................................................41.50
Appeal to Court of Appeals for the Federal Circuit:

[[Page 217]]

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
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)

[[Page 218]]

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.......................................41.126
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.....................................41.9
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
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)

[[Page 219]]

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
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:
In petitions to Commissioner.......................................1.181
On appeal to Board of Patent Appeals and Interferences.............41.37
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
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

[[Page 220]]

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.........................41.31(a)
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 finally 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)
Addresses for non-trademark correspondence...........................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
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

[[Page 221]]

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......................................................41.50
Action following decision..........................................41.54
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............................41.157(e)
Formalities to be observed in preparing...........................41.157
Person before whom taken..........................................41.157
Description of invention. (See Specification)
Design Patent Applications:
Arrangement of specification.......................................1.154
Claim..............................................................1.153
Drawing............................................................1.152
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............................................41.127(b)
Fee..............................................................1.20(d)
Requirements of....................................................1.321
Terminal...........................................................1.321
Disclosure, amendments to not permitted............................1.121
Disclosure document fee..........................................1.21(c)

[[Page 222]]

Discovery in interferences........................................41.150
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
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

[[Page 223]]

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..................................................41.39
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
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):

[[Page 224]]

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............................................41.4
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
Filing in Post Office....................................1.8(a)(2), 1.10
Filing of interference settlement agreements......................41.205
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.......................................41.156, 41.157
Foreign mask work protection....................................Part 150
Evaluation of request..............................................150.4
Definition.........................................................150.1

[[Page 225]]

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..............41.47
Fee for appeal hearing.............................................41.20
In disciplinary proceedings.......................................10.144
Of motions in interferences.......................................41.124
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, Priority Statement in 
interferences, Testimony in interferences):
Abandonment of the contest.....................................41.127(b)
Access to applications............................................41.109
Action by examiner after interference.............................41.127
Addition of new party by judge....................................41.203
Amendment during..........................................41.121, 41.208
Appeal to the Court of Appeals for the Federal Circuit......1.301, 1.302
Applicant requests................................................41.202
Arbitration.......................................................41.126
Burden of proof................................................41.121(b)
Civil action.......................................................1.303
Concession of priority.........................................41.127(b)
Correspondence.....................................................41.10
Decision on motions...............................................41.125
Declaration of interference.......................................41.203
Definition................................................41.100, 41.201
Disclaimer to avoid interference...............................41.127(b)

[[Page 226]]

Discovery.........................................................41.150
Extensions of time..................................................41.4
Identifying claim from patent.....................................41.202
In what cases declared............................................41.203
Inspection of cases of opposing parties...........................41.109
Interference with a patent........................................41.202
Judgment..........................................................41.127
Junior party fails to overcome filing date of senior party........41.204
Jurisdiction of interference......................................41.103
Manner of service of papers.......................................41.106
Motions...........................................41.121, 41.155, 41.208
Notice and access to applications of opposing parties.............41.109
Notice of basis for relief................................41.120, 41.204
Notice of reexamination, reissue, protest or litigation.............41.8
Notice to file civil action........................................1.303
Oral argument.....................................................41.124
Ownership of applications or patents involved.....................41.206
Petitions...........................................................41.3
Preparation for...................................................41.202
Priority statement................................................41.204
Prosecution by assignee.............................................41.9
Recommendation by Board of Patent Appeals and Interferences.......41.127
Record and exhibits.......................................41.106, 41.154
Records of, when open to public...............................1.11, 41.6
Reissue filed by patentee during..................................41.203
Request by applicant..............................................41.202
Return of unauthorized papers.....................................41.128
Review of decision by civil action.................................1.303
Same party........................................................41.206
Sanctions for failure to comply with rules or order...............41.128
Sanctions for taking and maintaining a frivolous position.........41.128
Secrecy order cases...............................................5.3(b)
Service of papers.................................................41.106
Statement of, from examiner to Board..............................41.202
Status of claims of defeated applicant after interference.........41.127
Statutory disclaimer by patentee during........................41.127(b)
Suggestion of claims for interference.............................41.202
Suspension of ex parte prosecution................................41.103
Testimony copies..................................................41.157
Time period for completion........................................41.200
Times for discovery and taking testimony..........41.150, 41.156, 41.157
Translation of document in foreign language.......................41.154
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)

[[Page 227]]

                                 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
After notice of allowance..........................................1.312
Of involved files in contested case...............................41.103

                                 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)

                                 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................................................41.154
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...........................41.121, 41.155, 41.208
To take testimony in foreign country......................41.156, 41.157

[[Page 228]]

                                 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...........................................41.101, 41.203
Of oral hearings on appeals before Board of Patent Appeals and 
Interference.......................................................41.47
Of rejection of an application..................................1.104(a)
Nucleotide and/or Amino Acid Sequences:
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)

[[Page 229]]

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.............................................41.101
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:
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

[[Page 230]]

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.........................41.101, 41.203
Patents (see also Allowance and issue of Patent):
Available for license or sale, publication of notice.............1.21(i)
Certified copies of.................................................1.13
Correction of errors in.......................1.171, 1.322, 1.323, 1.324
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....................................................41.3
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
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

[[Page 231]]

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)
Priority statement in interferences:
Contents of.......................................................41.204
Correction of statement on motion.................................41.120
Effect of statement...............................................41.204
Failure to file...................................................41.204
In case of motion to amend interference...........................41.208
May be amended if defective.......................................41.120
Reliance on prior application.....................................41.204
Requirement for...................................................41.204
Service on opposing parties.......................................41.204
When opened to inspection.........................................41.204
Preserved in confidence, applications.........................1.12, 1.14
Exceptions (status, access or copies available).....................1.14
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)

[[Page 232]]

Records of the Patent and Trademark Office.....................1.11-1.15
Records used as evidence in interference..........................41.153
Reexamination:
Amendments, manner of making....................................1.121(c)
Announcement in Official Gazette.................................1.11(c)
Appeal to Board......................................1.191, 41.31, 41.61
Appeal to Court of Appeals for the Federal Circuit.................1.301
Certificate........................................................1.570
Civil action.......................................................1.303
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 
                                                                   41.52
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.................................41.202, 41.203
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

[[Page 233]]

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
Rejection:
After two rejections appeal may be taken from examiner to Board of 
Appeals.....................................................1.191, 41.31
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........................................................41.41
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..............................................41.157
In contested cases................................................41.101
Of appeal to the Court of Appeals for the Federal Circuit..........1.301
Service of papers..................................................1.248

[[Page 234]]

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:
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)

[[Page 235]]

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
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............41.103
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..........................................41.4
Assignment of times for taking....................................41.157
Certification and filing by officer...............................41.157
Copies of.........................................................41.157
Depositions must be filed.........................................41.157
Discovery.........................................................41.150
Effect of errors and irregularities in deposition.........41.155, 41.157
Evidence must comply with rules...................................41.152
Examination of witnesses..........................................41.157
Form of deposition................................................41.157
Formal objections to......................................41.155, 41.157
Formalities in preparing depositions..............................41.157
In foreign countries......................................41.156, 41.157
Manner of taking testimony of witnesses...........................41.157
Notice of examination of witnesses................................41.157
Objections noted in depositions...........................41.155, 41.157
Objections to formal matters..............................41.155, 41.157
Official records and printed publications.................41.153, 41.154
Officer's certificate.............................................41.157
Persons before whom depositions may be taken......................41.157
Service of notice.................................................41.157
Stipulations or agreements concerning.............................41.157
Taken by depositions..............................................41.157

[[Page 236]]

Time for taking...................................................41.157
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 237]]









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




    Editorial Note: Part 1 is placed in the separate grouping of parts 
pertaining to patents regulations.



TRADEMARKS--Table of Contents






PART 2_RULES OF PRACTICE IN TRADEMARK CASES--Table of Contents




Sec.
2.1 [Reserved]
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; withdrawal.

                              Declarations

2.20 Declarations in lieu of oaths.

                      Application for Registration

2.21 Requirements for receiving a filing date.
2.22 Filing requirements for a TEAS Plus application.
2.23 Additional requirements for TEAS Plus application.
2.24 Designation of domestic representative by foreign applicant.
2.25 Documents not returnable.
2.27 Pending trademark application index; access to applications.

                         The Written Application

2.31 [Reserved]
2.32 Requirements for a complete application.
2.33 Verified statement.
2.34 Bases for filing.
2.35 Adding, deleting, or substituting bases.
2.36 Identification of prior registrations.
2.37 Description of mark.
2.38 Use by predecessor or by related companies.
2.39 [Reserved]
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.
2.48 Office does not issue duplicate registrations.

                                 Drawing

2.51 Drawing required.
2.52 Types of drawings and format for drawings.
2.53 Requirements for drawings filed through the TEAS.
2.54 Requirements for drawings submitted on paper.

                                Specimens

2.56 Specimens.
2.57-2.58 [Reserved]
2.59 Filing substitute specimen(s).

           Examination of Application and Action by Applicants

2.61 Action by examiner.
2.62 Procedure for filing 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 and signature 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 classes.
2.87 Dividing an application.

[[Page 238]]

                        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.
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 to parties 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 to parties 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 Form of submissions to the Trademark Trial and Appeal Board.
2.127 Motions.
2.128 Briefs at final hearing.
2.129 Oral argument; reconsideration.
2.130 New matter suggested by the trademark examining attorney.
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 action of trademark examining attorney.
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 Director

2.146 Petitions to the Director.
2.147 [Reserved]
2.148 Director may suspend certain rules.

                               Certificate

2.151 Certificate.

             Publication of Marks Registered Under 1905 Act

2.153 Publication requirements.
2.154 Publication inOfficial 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

2.160 Affidavit or declaration of continued use or excusable nonuse 
          required to avoid cancellation of registration.
2.161 Requirements for a complete affidavit or declaration of continued 
          use or excusable nonuse.
2.162 Notice to registrant.
2.163 Acknowledgment of receipt of affidavit or declaration.
2.164 Correcting deficiencies in affidavit or declaration.
2.165 Petition to Director to review refusal.
2.166 Affidavit of continued use or excusable nonuse combined with 
          renewal application.

                Affidavit or Declaration Under Section 15

2.167 Affidavit or declaration under section 15.
2.168 Affidavit or declaration under section 15 combined with affidavit 
          or declaration under section 8, or with renewal application.

                 Correction, Disclaimer, Surrender, Etc.

2.171 New certificate on change of ownership.
2.172 Surrender for cancellation.
2.173 Amendment of registration.

[[Page 239]]

2.174 Correction of Office mistake.
2.175 Correction of mistake by owner.
2.176 Consideration of above matters.

                            Term and Renewal

2.181 Term of original registrations and renewals.
2.182 Time for filing renewal application.
2.183 Requirements for a complete renewal application.
2.184 Refusal of renewal.
2.185 Correcting deficiencies in renewal application.
2.186 Petition to Director to review refusal of renewal.
2.187 [Reserved]

        General Information and Correspondence in Trademark Cases

2.188-2.189 [Reserved]
2.190 Addresses for trademark correspondence with the United States 
          Patent and Trademark Office.
2.191 Business to be transacted in writing.
2.192 Business to be conducted with decorum and courtesy.
2.193 Trademark correspondence and signature requirements.
2.194 Identification of trademark application or registration.
2.195 Receipt of trademark correspondence.
2.196 Times for taking action: Expiration on Saturday, Sunday or Federal 
          holiday.
2.197 Certificate of mailing or transmission.
2.198 Filing of correspondence by ``Express Mail.''

     Trademark Records and Files of the Patent and Trademark Office

2.200 Assignment records open to public inspection.
2.201 Copies and certified copies.

              Fees and Payment of Money in Trademark Cases

2.206 Trademark fees payable in advance.
2.207 Methods of payment.
2.208 Deposit accounts.
2.209 Refunds.

    Authority: 15 U.S.C. 1123; 35 U.S.C. 2, unless otherwise noted.

    Source: 30 FR 13193, Oct. 16, 1965, unless otherwise noted.

    Editorial Note: Nomenclature changes to part 2 appear at 68 FR 
14337, Mar. 25, 2003.



Sec. 2.1  [Reserved]



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.
    (c) Director as used in this chapter, except for part 10 and part 
11, means the Under Secretary of Commerce for Intellectual Property and 
Director of the United States Patent and Trademark Office.
    (d) Federal holiday within the District of Columbia means any day, 
except Saturdays and Sundays, when the United States Patent and 
Trademark Office is officially closed for business for the entire day.
    (e) The term Office means the United States Patent and Trademark 
Office.
    (f) The acronym TEAS means the Trademark Electronic Application 
System, available online at http://www.uspto.gov.
    (g) The acronym ESTTA means the Electronic System for Trademark 
Trials and Appeals, available at www.uspto.gov.
    (h) The term international application means an application for 
international registration that is filed under the Protocol Relating to 
the Madrid Agreement Concerning the International Registration of Marks.

[54 FR 37588, Sept. 11, 1989, as amended at 68 FR 48289, Aug. 13, 2003; 
68 FR 55762, Sept. 26, 2003; 73 FR 47685, Aug. 14, 2008]



Sec. 2.6  Trademark fees.

    The Patent and Trademark Office requires the following fees and 
charges:
    (a) Trademark process fees.

(1) Application filing fees.
(i) For filing an application on paper, per class................$375.00
(ii) For filing an application through TEAS, per class...........$325.00
(iii) For filing a TEAS Plus application under Sec. 2.22, per class 
                                                                 $275.00
(iv) Additional processing fee under Sec. Sec. 2.22(b) and 2.23(b), per 
class.............................................................$50.00
(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....................................$150.00
(5) For filing an application for renewal of a registration, per class

[[Page 240]]

.................................................................$400.00
(6) Additional fee for filing a renewal application during the grace 
period, 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 
registrant--$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 
                                                                 $200.00
(14) Additional fee for filing a section 8 affidavit during the grace 
period, per class................................................$100.00
(15) For petitions to the Director...............................$100.00
(16) For filing a petition to cancel, per class..................$300.00
(17) For filing a notice of opposition, per class................$300.00
(18) For ex parte appeal to the Trademark Trial and Appeal Board, per 
class............................................................$100.00
(19) Dividing an application, per new application created........$100.00
(20) For correcting a deficiency in a section 8 affidavit........$100.00
(21) For correcting a deficiency in a renewal application........$100.00

    (b) Trademark service fees.

(1) For printed copy of registered mark, copy only. Service includes 
preparation of copies by the Office within two to three business days 
and delivery by United States Postal Service; and preparation of copies 
by the Office within one business day of receipt and delivery to an 
Office Box or by electronic means (e.g., facsimile, electronic mail)--
$3.00
(2) Certified or uncertified copy of trademark application as filed 
processed within seven calendar days--$15.00
(3) Certified or uncertified copy of a trademark-related official 
record--$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 document 
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 X-Search capabilities, prorated for 
the actual time used. The Director may waive the payment by an 
individual for access to X-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.............................$0.25
(10) Labor charges for services, per hour or fraction thereof.....$40.00
(11) For items and services that the Director finds may be supplied, for 
which fees are not specified by statute or by this part, such charges as 
may be determined by the Director with respect to each such item or 
service......................................................Actual Cost
(12) For processing each payment refused (including a check returned 
``unpaid'') or charged back by a financial institution............$50.00
(13) Deposit accounts:
(i) For establishing a deposit account............................$10.00
(ii) Service charge for each month when the balance at the end of the 
month is below $1,000.............................................$25.00

[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; 64 FR 48918, Sept. 8, 1999; 64 FR 
67486, Dec. 2, 1999; 64 FR 67777, Dec. 3, 1999; 67 FR 79522, Dec. 30, 
2002; 67 FR 70850, Nov. 27, 2002; 68 FR 48289, Aug. 13, 2003; 70 FR 
2953, Jan. 19, 2005; 70 FR 38773, July 6, 2005; 73 FR 67767, Nov. 17, 
2008]



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.

[[Page 241]]



Sec. 2.11  Applicants may be represented by an attorney.

    Representation before the Office is governed by Sec. 11.14 of this 
chapter. The Office cannot aid in the selection of an attorney.

[73 FR 47685, Aug. 14, 2008]



Sec. Sec. 2.12-2.16  [Reserved]



Sec. 2.17  Recognition for representation.

    (a) When an attorney as defined in Sec. 11.1 of this chapter acting 
in a representative capacity appears in person or signs a document in 
practice before the United States Patent and Trademark Office in a 
trademark case, his or her personal appearance or signature shall 
constitute a representation to the United States Patent and Trademark 
Office that, under the provisions of Sec. 11.14 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, as specified in Sec. 11.14(b) of this 
chapter, will be allowed to take action of any kind with respect to an 
application, registration or proceeding, a written authorization from 
the applicant, registrant, party to the proceeding, or other person 
entitled to prosecute such application or proceeding must be filed.
    (c) To be recognized as a representative, an attorney as defined in 
Sec. 11.1 of this chapter may file a power of attorney, appear in 
person, or sign a document on behalf of an applicant or registrant that 
is filed with the Office in a trademark case.
    (d) A party may file a power of attorney that relates to more than 
one trademark application or registration, or to all existing and future 
applications and registrations of that party. A party relying on such a 
power of attorney must:
    (1) Include a copy of the previously filed power of attorney; or
    (2) Refer to the power of attorney, specifying the filing date of 
the previously filed power of attorney; the application serial number 
(if known), registration number, or inter partes proceeding number for 
which the original power of attorney was filed; and the name of the 
party who signed the power of attorney; or, if the application serial 
number is not known, submit a copy of the application or a copy of the 
mark, and specify the filing date.

[30 FR 13193, Oct. 16, 1965, as amended at 50 FR 5171, Feb. 6, 1985; 64 
FR 48918, Sept. 8, 1999; 68 FR 55762, Sept. 26, 2003; 73 FR 47685, Aug. 
14, 2008]



Sec. 2.18  Correspondence, with whom held.

    (a) If an attorney transmits documents, or a written power of 
attorney is filed, the Office will send correspondence to the attorney 
transmitting the documents, or to the attorney designated in the power 
of attorney, provided that the attorney is an attorney as defined in 
Sec. 11.1 of this chapter.
    (b) The Office will not undertake double correspondence. If two or 
more attorneys appear or sign a document, the Office's reply will be 
sent to the address already established in the record until the 
applicant, registrant or party, or its duly appointed attorney, requests 
in writing that correspondence be sent to another address.
    (c) If an application, registration or proceeding is not being 
prosecuted by an attorney but a domestic representative has been 
appointed, the Office will send correspondence to the domestic 
representative, unless the applicant, registrant or party designates in 
writing another correspondence address.
    (d) If the application, registration or proceeding is not being 
prosecuted by an attorney and no domestic representative has been 
appointed, the Office will send correspondence directly to the 
applicant, registrant or party, unless the applicant, registrant or 
party designates in writing another correspondence address.

[68 FR 55762, Sept. 26, 2003, as amended at 73 FR 47685, Aug. 14, 2008]



Sec. 2.19  Revocation of power of attorney; withdrawal.

    (a) Authority to represent an applicant, registrant or a party to a 
proceeding may be revoked at any stage in the proceedings of a case upon 
written notification to the Director; and when it is revoked, the Office 
will communicate directly with the applicant, registrant or party to the 
proceeding, or

[[Page 242]]

with the new attorney or domestic representative if one has been 
appointed. The Office will notify the person affected of the revocation 
of his or her authorization.
    (b) If the requirements of Sec. 10.40 of this chapter are met, an 
attorney authorized under Sec. 11.14 to represent an applicant, 
registrant or party in a trademark case may withdraw upon application to 
and approval by the Director.

[68 FR 55762, Sept. 26, 2003, as amended at 73 FR 47685, Aug. 14, 2008]

                              Declarations



Sec. 2.20  Declarations in lieu of oaths.

    Instead of an oath, affidavit, verification, or sworn statement, the 
language of 28 U.S.C. 1746, or the following language, may be used:

The undersigned being warned that willful false statements and the like 
are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, 
and that such willful false statements and the like may jeopardize the 
validity of the application or document or any registration resulting 
therefrom, declares that all statements made of his/her own knowledge 
are true; and all statements made on information and belief are believed 
to be true.

[64 FR 48918, Sept. 8, 1999]

                      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) The Office will grant a filing date to an application under 
section 1 or section 44 of the Act that is in the English language and 
contains all of the following:
    (1) The name of the applicant;
    (2) A name and address for correspondence;
    (3) A clear drawing of the mark;
    (4) A listing of the goods or services; and
    (5) The filing fee for at least one class of goods or services, 
required by Sec. 2.6.
    (b) If the applicant does not submit all the elements required in 
paragraph (a) of this section, the Office will deny a filing date and 
issue a notice explaining why the filing date was denied.

[64 FR 48918, Sept. 8, 1999, as amended at 68 FR 55762, Sept. 26, 2003; 
73 FR 67767, Nov. 17, 2008]



Sec. 2.22  Filing requirements for a TEAS Plus application.

    (a) A trademark/service mark application for registration on the 
Principal Register under section 1 and/or section 44 of the Act will be 
entitled to a reduced filing fee under Sec. 2.6(a)(1)(iii) if it is 
filed through TEAS and includes:
    (1) The applicant's name and address;
    (2) The applicant's legal entity;
    (3) The citizenship of an individual applicant, or the state or 
country of incorporation or organization of a juristic applicant;
    (4) If the applicant is a partnership, the names and citizenship of 
the applicant's general partners;
    (5) A name and address for correspondence;
    (6) An e-mail address for correspondence, and an authorization for 
the Office to send correspondence concerning the application to the 
applicant or applicant's attorney by e-mail;
    (7) One or more bases for filing that satisfy all the requirements 
of Sec. 2.34. If more than one basis is set forth, the applicant must 
comply with the requirements of Sec. 2.34 for each asserted basis;
    (8) Correctly classified goods and/or services, with an 
identification of goods and/or services from the Office's Acceptable 
Identification of Goods and Services Manual, available through the TEAS 
Plus form and at http://www.uspto.gov. In an application based on 
section 44 of the Act, the scope of the goods and/or services covered by 
the section 44 basis may not exceed the scope of the goods and/or 
services in the foreign application or registration;
    (9) If the application contains goods and/or services in more than 
one class, compliance with Sec. 2.86;
    (10) A filing fee for each class of goods and/or services, as 
required by Sec. 2.6(a)(1)(iii);
    (11) A verified statement that meets the requirements of Sec. 2.33, 
dated and signed by a person properly authorized to sign on behalf of 
the applicant pursuant to Sec. 2.33(a);

[[Page 243]]

    (12) A clear drawing of the mark. If the applicant does not claim 
standard characters, the applicant must attach a digitized image of the 
mark in .jpg format. If the mark includes color, the drawing must show 
the mark in color;
    (13) If the mark is in standard characters, a mark comprised of only 
characters in the Office's standard character set, currently available 
at http://www.uspto.gov, typed in the appropriate field of the TEAS Plus 
form;
    (14) If the mark includes color, a statement naming the color(s) and 
describing where the color(s) appears on the mark, and a claim that the 
color(s) is a feature of the mark;
    (15) If the mark is not in standard characters, a description of the 
mark;
    (16) If the mark includes non-English wording, an English 
translation of that wording;
    (17) If the mark includes non-Latin characters, a transliteration of 
those characters;
    (18) If the mark includes an individual's name or portrait, either 
(i) a statement that identifies the living individual whose name or 
likeness the mark comprises and written consent of the individual, or 
(ii) a statement that the name or portrait does not identify a living 
individual (see section 2(c) of the Act);
    (19) If the applicant owns one or more registrations for the same 
mark, a claim of ownership of the registration(s) identified by the 
registration number(s), pursuant to Sec. 2.36; and
    (20) If the application is a concurrent use application, compliance 
with Sec. 2.42.
    (b) If an application does not meet the requirements of paragraph 
(a) of this section at the time of filing, the applicant must pay the 
fee required by Sec. 2.6(a)(1)(iv). The application will retain its 
original filing date, provided that when filed, the application met the 
filing date requirements of Sec. 2.21.
    (c) The following types of applications cannot be filed as TEAS Plus 
applications under paragraph (a) of this section:
    (1) Applications for certification marks (see Sec. 2.45);
    (2) Applications for collective marks (see Sec. 2.44);
    (3) Applications for collective membership marks (see Sec. 2.44); 
and
    (4) Applications for registration on the Supplemental Register (see 
Sec. 2.47).

[70 FR 38773, July 6, 2005]



Sec. 2.23  Additional requirements for TEAS Plus application.

    (a) In addition to the filing requirements under Sec. 2.22(a), the 
applicant must:
    (1) File the following communications through TEAS:
    (i) Responses to Office actions (except notices of appeal under 
section 20 of the Trademark Act);
    (ii) Requests to change the correspondence address and owner's 
address;
    (iii) Appointment and/or revocation of power of attorney;
    (iv) Appointment and/or revocation of domestic representative;
    (v) Preliminary amendments;
    (vi) Amendments to allege use under section 1(c) of the Act or 
statements of use under section 1(d) of the Act;
    (vii) Request(s) for extensions of time to file a statement of use 
under section 1(d) of the Act; and
    (viii) Request(s) to delete a section 1(b) basis.
    (2) Maintain a valid e-mail correspondence address, and continue to 
receive communications from the Office by electronic mail.
    (b) If an application does not meet the requirements of paragraph 
(a) of this section, the applicant must pay the fee required by Sec. 
2.6(a)(1)(iv).

[70 FR 38773, July 6, 2005, as amended at 73 FR 67768, Nov. 17, 2008]



Sec. 2.24  Designation of domestic representative by foreign applicant.

    If an applicant is not domiciled in the United States, the applicant 
may designate by a document filed in the United States 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 the applicant does not file a document 
designating the name and address of a person resident in the United 
States on whom may be served notices or process in proceedings affecting 
the mark, or if the last person designated cannot be found at the 
address given in the designation, then notices or process in

[[Page 244]]

proceedings affecting the mark may be served on the Director. 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. 11.14 of this subchapter and authorized under 
Sec. 2.17(b).

[73 FR 47685, Aug. 14, 2008]



Sec. 2.25  Documents not returnable.

    Except as provided in Sec. 2.27(e), documents filed in the Office 
by the applicant or registrant become part of the official record and 
will not be returned or removed.

[73 FR 67768, Nov. 17, 2008]



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 Director 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, the 
official records of applications and all proceedings relating thereto 
are available for public inspection and copies of the documents may be 
furnished upon payment of the fee required by Sec. 2.6.
    (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; 73 FR 67768, Nov. 17, 2008]

                         The Written Application



Sec. 2.31  [Reserved]



Sec. 2.32  Requirements for a complete application.

    (a) The application must be in English and include the following:
    (1) A request for registration;
    (2) The name of the applicant(s);
    (3)(i) The citizenship of the applicant(s); or
    (ii) If the applicant is a corporation, association, partnership or 
other juristic person, the jurisdiction (usually state or nation) under 
the laws of which the applicant is organized; and
    (iii) If the applicant is a domestic partnership, the names and 
citizenship of the general partners;
    (iv) If the applicant is a domestic joint venture, the names and 
citizenship of the active members of the joint venture;
    (4) The address of the applicant;
    (5) One or more bases, as required by Sec. 2.34(a);
    (6) A list of the particular goods or services on or in connection 
with which the applicant uses or intends to use the mark. In a United 
States application filed under section 44 of the Act, the scope of the 
goods and/or services covered by the section 44 basis may not exceed the 
scope of the goods and/or services in the foreign application or 
registration;
    (7) The international class of goods or services, if known. See 
Sec. 6.1 of this chapter for a list of the international classes of 
goods and services.
    (8) If the mark is not in standard characters, a description of the 
mark;
    (9) If the mark includes non-English wording, an English translation 
of that wording; and
    (10) If the mark includes non-Latin characters, a transliteration of 
those characters, and either a translation of the transliterated term in 
English, or a statement that the transliterated term has no meaning in 
English.

[[Page 245]]

    (b) The application must include a verified statement that meets the 
requirements of Sec. 2.33.
    (c) The application must include a drawing that meets the 
requirements of Sec. Sec. 2.51 and 2.52.
    (d) The application must include fee required by Sec. 2.6 for each 
class of goods or services.
    (e) For the requirements for a multiple class application, see Sec. 
2.86.

[64 FR 48918, Sept. 8, 1999, as amended at 73 FR 13784, Mar. 14, 2008; 
73 FR 67768, Nov. 17, 2008]



Sec. 2.33  Verified statement.

    (a) The application must include a statement that is signed and 
verified (sworn to) or supported by a declaration under Sec. 2.20 by a 
person properly authorized to sign on behalf of the applicant. A person 
who is properly authorized to sign on behalf of the applicant is:
    (1) A person with legal authority to bind the applicant; or
    (2) A person with firsthand knowledge of the facts and actual or 
implied authority to act on behalf of the applicant; or
    (3) An attorney as defined in Sec. 11.1 of this chapter who has an 
actual or implied written or verbal power of attorney from the 
applicant.
    (b)(1) In an application under section 1(a) of the Act, the verified 
statement must allege:

    That the applicant believes it is the owner of the mark; that the 
mark is in use in commerce; that to the best of the declarant's 
knowledge and belief, no other person has the right to use the 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 the other person, to 
cause confusion or mistake, or to deceive; that the specimen shows the 
mark as used on or in connection with the goods or services; and that 
the facts set forth in the application are true.

    (2) In an application under section 1(b) or section 44 of the Act, 
the verified statement must allege:

That the applicant has a bona fide intention to use the mark shown in 
the accompanying drawing in commerce on or in connection with the 
specified goods or services; that the applicant believes it is entitled 
to use the mark in commerce; that to the best of the declarant's 
knowledge and belief, no other person has the right to use the 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 the other person, to 
cause confusion or mistake, or to deceive; and that the facts set forth 
in the application are true.

    (c) If the verified statement is not filed within a reasonable time 
after it is signed, the Office may require the applicant to submit a 
substitute verification or declaration under Sec. 2.20 of the 
applicant's continued use or bona fide intention to use the mark in 
commerce.
    (d) Where an electronically transmitted filing is permitted, the 
person who signs the verified statement must either:
    (1) Place a symbol comprised of numbers and/or letters between two 
forward slash marks in the signature block on the electronic submission; 
or
    (2) Sign the verified statement using some other form of electronic 
signature specified by the Director.
    (e) In an application under section 66(a) of the Act, the verified 
statement is part of the international registration on file at the 
International Bureau. The verified statement must allege that:
    (1) The applicant/holder has a bona fide intention to use the mark 
in commerce that the United States Congress can regulate on or in 
connection with the goods/services identified in the international 
application/subsequent designation;
    (2) The signatory is properly authorized to execute this declaration 
on behalf of the applicant/holder;
    (3) The signatory believes the applicant/holder to be entitled to 
use the mark in commerce that the United States Congress can regulate on 
or in connection with the goods/services identified in the international 
application/registration; and
    (4) To the best of his/her knowledge and belief, no other person, 
firm, corporation, association, or other legal entity has the right to 
use the mark in commerce that the United States Congress can regulate, 
either in the identical form thereof or in such near resemblance thereto 
as to be likely, when used on or in connection with the goods/services 
of such other person, firm, corporation, association, or other

[[Page 246]]

legal entity, to cause confusion, or to cause mistake, or to deceive.

[64 FR 48918, Sept. 8, 1999, as amended at 67 FR 79522, Dec. 30, 2002; 
68 FR 55762, Sept. 26, 2003; 73 FR 47685, Aug. 14, 2008; 73 FR 67768, 
Nov. 17, 2008]



Sec. 2.34  Bases for filing.

    (a) The application must include one or more of the following five 
filing bases:
    (1) Use in commerce under section 1(a) of the Act. The requirements 
for an application based on section 1(a) of the Act are:
    (i) The trademark owner's verified statement that the mark is in use 
in commerce on or in connection with the goods or services listed in the 
application. If the verification is not filed with the initial 
application, the verified statement must also allege that the mark was 
in use in commerce on or in connection with the goods or services listed 
in the application as of the application filing date;
    (ii) The date of the applicant's first use of the mark anywhere on 
or in connection with the goods or services;
    (iii) The date of the applicant's first use of the mark in commerce 
as a trademark or service mark; and
    (iv) One specimen showing how the applicant actually uses the mark 
in commerce.
    (v) If more than one item of goods or services is specified in the 
application, the dates of use required in paragraphs (ii) and (iii) of 
this section need be for only one of the items specified in each class, 
provided that the particular item to which the dates apply is 
designated.
    (2) Intent-to-use under section 1(b) of the Act. In an application 
under section 1(b) of the Act, the applicant must verify that it has a 
bona fide intention to use the mark in commerce on or in connection with 
the goods or services listed in the application. If the verification is 
not filed with the initial application, the verified statement must also 
allege that the applicant had a bona fide intention to use the mark in 
commerce on or in connection with the goods or services listed in the 
application as of the filing date of the application.
    (3) Registration of a mark in a foreign applicant's country of 
origin under section 44(e) of the Act. The requirements for an 
application under section 44(e) of the Act are:
    (i) The applicant's verified statement that it has a bona fide 
intention to use the mark in commerce on or in connection with the goods 
or services listed in the application. If the verification is not filed 
with the initial application, the verified statement must also allege 
that the applicant had a bona fide intention to use the mark in commerce 
on or in connection with the goods or services listed in the application 
as of the filing date of the application.
    (ii) A true copy, a photocopy, a certification, or a certified copy 
of a registration in the applicant's country of origin showing that the 
mark has been registered in that country, and that the registration is 
in full force and effect. The certification or copy of the foreign 
registration must show the name of the owner, the mark, and the goods or 
services for which the mark is registered. If the foreign registration 
is not in the English language, the applicant must submit a translation.
    (iii) If the record indicates that the foreign registration will 
expire before the United States registration will issue, the applicant 
must submit a true copy, a photocopy, a certification, or a certified 
copy from the country of origin to establish that the foreign 
registration has been renewed and will be in force at the time the 
United States registration will issue. If the foreign registration is 
not in the English language, the applicant must submit a translation.
    (4) Claim of priority, based upon an earlier-filed foreign 
application, under section 44(d) of the Act. The requirements for an 
application under section 44(d) of the Act are:
    (i) A claim of priority, filed within six months of the filing date 
of the foreign application. Before publication or registration on the 
Supplemental Register, the applicant must either:
    (A) Specify the filing date, serial number and country of the first 
regularly filed foreign application; or
    (B) State that the application is based upon a subsequent regularly 
filed application in the same foreign country, and that any prior-filed 
application has been withdrawn, abandoned or

[[Page 247]]

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.
    (ii) Include the applicant's verified statement that it has a bona 
fide intention to use the mark in commerce on or in connection with the 
goods or services listed in the application. If the verification is not 
filed with the initial application, the verified statement must also 
allege that the applicant had a bona fide intention to use the mark in 
commerce on or in connection with the goods or services listed in the 
application as of the filing date of the application.
    (iii) Before the application can be approved for publication, or for 
registration on the Supplemental Register, the applicant must establish 
a basis under section 1(a), section 1(b) or section 44(e) of the Act.
    (5) Extension of protection of an international registration under 
section 66(a) of the Act. In an application under section 66(a) of the 
Act, the international application or subsequent designation requesting 
an extension of protection to the United States must contain a signed 
declaration that meets the requirements of Sec. 2.33.
    (b)(1) In an application under section 1 or section 44 of the Act, 
an applicant may claim more than one basis, provided the applicant 
satisfies all requirements for the bases claimed. However, the applicant 
may not claim both sections 1(a) and 1(b) for the identical goods or 
services in the same application.
    (2) In an application under section 1 or section 44 of the Act, if 
an applicant claims more than one basis, the applicant must list each 
basis, followed by the goods or services to which that basis applies. If 
some or all of the goods or services are covered by more than one basis, 
this must be stated.
    (3) A basis under section 66(a) of the Act cannot be combined with 
any other basis.
    (c) The word ``commerce'' means commerce that Congress may lawfully 
regulate, as specified in section 45 of the Act.

[64 FR 48919, Sept. 8, 1999, as amended at 67 FR 79522, Dec. 30, 2002; 
68 FR 55763, Sept. 26, 2003; 73 FR 67768, Nov. 17, 2008]



Sec. 2.35  Adding, deleting, or substituting bases.

    (a) In an application under section 66(a) of the Act, an applicant 
may not add, substitute or delete a basis, unless the applicant meets 
the requirements for transformation under section 70(c) of the Act and 
Sec. 7.31 of this chapter.
    (b) In an application under section 1 or section 44 of the Act:
    (1) Before publication for opposition, an applicant may add or 
substitute a basis, if the applicant meets all requirements for the new 
basis, as stated in Sec. 2.34. The applicant may delete a basis at any 
time.
    (2) After publication, an applicant may add or substitute a basis in 
an application that is not the subject of an inter partes proceeding 
before the Trademark Trial and Appeal Board, but only with the express 
permission of the Director, after consideration on petition. 
Republication will be required. The amendment of an application that is 
the subject of an inter partes proceeding before the Board is governed 
by Sec. 2.133(a).
    (3) When an applicant substitutes one basis for another, the Office 
will presume that there was a continuing valid basis, unless there is 
contradictory evidence in the record, and the application will retain 
the original filing date, including a priority filing date under section 
44(d), if appropriate.
    (4) If an applicant properly claims a section 44(d) basis in 
addition to another basis, the applicant will retain the priority filing 
date under section 44(d) no matter which basis the applicant perfects.
    (5) The applicant may add or substitute a section 44(d) basis only 
within the six-month priority period following the filing date of the 
foreign application.
    (6) When the applicant adds or substitutes a basis, the applicant 
must list each basis, followed by the goods or services to which that 
basis applies.
    (7) When the applicant deletes a basis, the applicant must also 
delete

[[Page 248]]

any goods or services covered solely by the deleted basis.
    (8) Once an applicant claims a section 1(b) basis as to any or all 
of the goods or services, the applicant may not amend the application to 
seek registration under section 1(a) of the Act for those goods or 
services unless the applicant files an allegation of use under section 
1(c) or section 1(d) of the Act.

[68 FR 55763, Sept. 26, 2003]



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  Description of mark.

    A description of the mark must be included if the mark is not in 
standard characters. In an application where the mark is in standard 
characters, a description may be included and must be included if 
required by the trademark examining attorney.

[73 FR 13784, Mar. 14, 2008]



Sec. 2.38  Use by predecessor or by related companies.

    (a) If the first use of the mark was by a predecessor in title or by 
a related company (sections 5 and 45 of the Act), and the use inures to 
the benefit of the applicant, the dates of first use (Sec. Sec. 
2.34(a)(1) (ii) and (iii)) may be asserted with a statement that first 
use was by the predecessor in title or by the related company, as 
appropriate.
    (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; 
64 FR 48920, Sept. 8, 1999]



Sec. 2.39  [Reserved]



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 or services.
    (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, as amended at 73 FR 67768, Nov. 17, 2008]



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

[[Page 249]]

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, 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), section 44 or section 66(a) of the Act, the application shall 
specify and contain all applicable elements required by the preceding 
sections for trademarks, but shall also 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, as amended at 73 FR 67769, Nov. 17, 2008]



Sec. 2.45  Certification mark.

    (a) In an application to register a certification mark under section 
1(a) of the Act, the application shall include all applicable elements 
required by the preceding sections for trademarks. In addition, the 
application must: Specify the conditions under which the certification 
mark is used; allege that the applicant exercises legitimate control 
over the use of the mark; allege that the applicant is not engaged in 
the production or marketing of the goods or services to which the mark 
is applied; and include a copy of the standards that determine whether 
others may use the certification mark on their goods and/or in 
connection with their services.
    (b) In an application to register a certification mark under section 
1(b), section 44 or section 66(a) of the Act, the application shall 
include all applicable elements required by the preceding sections for 
trademarks. In addition, the application must: specify the conditions 
under which the certification mark is intended to be used; allege that 
the applicant intends to exercise legitimate control over the use of the 
mark; and allege that the applicant will not engage in the production or 
marketing of the goods or services to which the mark is applied. When 
the applicant files an allegation of use under Sec. 2.76 or Sec. 2.88, 
the applicant must submit a copy of the standards that determine whether 
others may use the certification mark on their goods and/or in 
connection with their services.

[64 FR 48920, Sept. 8, 1999, as amended at 73 FR 67769, Nov. 17, 2008]



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 use in commerce.
    (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) An application under section 66(a) of the Act is not eligible 
for registration on the Supplemental Register.

[[Page 250]]

    (d) 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.
    (e) 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, as amended at 68 FR 55763, Sept. 26, 2003; 
73 FR 67769, Nov. 17, 2008]



Sec. 2.48  Office does not issue duplicate registrations.

    If two applications on the same register would result in 
registrations that are exact duplicates, the Office will permit only one 
application to mature into registration, and will refuse registration in 
the other application.

[73 FR 67769, Nov. 17, 2008]

                                 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) In an application under section 1(a) of the Act, the drawing of 
the mark must be a substantially exact representation of the mark as 
used on or in connection with the goods and/or services.
    (b) In an application under section 1(b) of the Act, the drawing of 
the mark must be a substantially exact representation of the mark as 
intended to be used on or in connection with the goods and/or 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 mark must be a substantially exact representation of the 
mark as used on or in connection with the goods and/or services.
    (c) In an application under section 44 of the Act, the drawing of 
the mark must 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 applicant's country of origin.
    (d) In an application under section 66(a) of the Act, the drawing of 
the mark must be a substantially exact representation of the mark as it 
appears in the international registration.

[68 FR 55763, Sept. 26, 2003]



Sec. 2.52  Types of drawings and format for drawings.

    A drawing depicts the mark sought to be registered. The drawing must 
show only one mark. The applicant must include a clear drawing of the 
mark when the application is filed. There are two types of drawings:
    (a) Standard character (typed) drawing. Applicants who seek to 
register words, letters, numbers, or any combination thereof without 
claim to any particular font style, size, or color must submit a 
standard character drawing that shows the mark in black on a white 
background. An applicant may submit a standard character drawing if:
    (1) The application includes a statement that the mark is in 
standard characters and no claim is made to any particular font style, 
size, or color;
    (2) The mark does not include a design element;
    (3) All letters and words in the mark are depicted in Latin 
characters;
    (4) All numerals in the mark are depicted in Roman or Arabic 
numerals; and
    (5) The mark includes only common punctuation or diacritical marks.
    (b) Special form drawing. Applicants who seek to register a mark 
that includes a two or three-dimensional design; color; and/or words, 
letters, or numbers or the combination thereof in a particular font 
style or size must submit a special form drawing. The drawing should 
show the mark in black on a white background, unless the mark includes 
color.
    (1) Marks that include color. If the mark includes color, the 
drawing must show the mark in color, and the applicant must name the 
color(s), describe where the color(s) appear on the mark, and submit a 
claim that the color(s) is a feature of the mark.
    (2) Three dimensional marks. If the mark has three-dimensional 
features,

[[Page 251]]

the drawing must depict a single rendition of the mark, and the 
applicant must indicate that the mark is three-dimensional.
    (3) Motion marks. If the mark has motion, the drawing may depict a 
single point in the movement, or the drawing may depict up to five 
freeze frames showing various points in the movement, whichever best 
depicts the commercial impression of the mark. The applicant must also 
describe the mark.
    (4) Broken lines to show placement. If necessary to adequately 
depict the commercial impression of the mark, the applicant may be 
required to submit a drawing that shows the placement of the mark by 
surrounding the mark with a proportionately accurate broken-line 
representation of the particular goods, packaging, or advertising on 
which the mark appears. The applicant must also use broken lines to show 
any other matter not claimed as part of the mark. For any drawing using 
broken lines to indicate placement of the mark, or matter not claimed as 
part of the mark, the applicant must describe the mark and explain the 
purpose of the broken lines.
    (5) Description of mark. A description of the mark must be included.
    (c) TEAS drawings. A drawing filed through TEAS must meet the 
requirements of Sec. 2.53.
    (d) Paper drawings. A paper drawing must meet the requirements of 
Sec. 2.54.
    (e) Sound, scent, and non-visual marks. An applicant is not required 
to submit a drawing if the mark consists only of a sound, a scent, or 
other completely non-visual matter. For these types of marks, the 
applicant must submit a detailed description of the mark.

[68 FR 55763, Sept. 26, 2003, as amended at 73 FR 13784, Mar. 14, 2008; 
73 FR 67769, Nov. 17, 2008]



Sec. 2.53  Requirements for drawings filed through the TEAS.

    The drawing must meet the requirements of Sec. 2.52. In addition, 
in a TEAS submission, the drawing must meet the following requirements:
    (a) Standard character drawings. If an applicant seeks registration 
of a standard character mark, the applicant must enter the mark in the 
appropriate field on the TEAS form, and check the box to claim that the 
mark consists of standard characters.
    (b) Special form drawings: If an applicant is filing a special form 
drawing, the applicant must attach a digitized image of the mark to the 
TEAS submission that meets the requirements of paragraph (c) of this 
section.
    (c) Requirements for digitized image: The image must be in .jpg 
format and scanned at no less than 300 dots per inch and no more than 
350 dots per inch with a length and width of no less than 250 pixels and 
no more than 944 pixels. All lines must be clean, sharp and solid, not 
fine or crowded, and produce a high quality image when copied.

[68 FR 55764, Sept. 26, 2003, as amended at 70 FR 38774, July 6, 2005; 
73 FR 67769, Nov. 17, 2008]



Sec. 2.54  Requirements for drawings submitted on paper.

    The drawing must meet the requirements of Sec. 2.52. In addition, 
in a paper submission, the drawing should:
    (a) Be on non-shiny white paper that is separate from the 
application;
    (b) Be on paper that is 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 
11 to 11.69 inches (27.9 to 29.7 cm.) long. One of the shorter sides of 
the sheet should be regarded as its top edge. The image must be no 
larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide;
    (c) Include the caption ``DRAWING PAGE'' at the top of the drawing 
beginning one inch (2.5 cm.) from the top edge; and
    (d) Depict the mark in black ink, or in color if color is claimed as 
a feature of the mark.
    (e) Drawings must be typed or made with a pen or by a process that 
will provide high definition when copied. A photolithographic, printer's 
proof copy, or other high quality reproduction of the mark may be used. 
All lines must be clean, sharp and solid, and must not be fine or 
crowded.

[68 FR 55764, Sept. 26, 2003]



Sec. 2.56  Specimens.

    (a) 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 one specimen showing the mark as used on or

[[Page 252]]

in connection with the goods, or in the sale or advertising of the 
services in commerce.
    (b)(1) A trademark specimen is a label, tag, or container for the 
goods, or a display associated with the goods. The Office may accept 
another document related to the goods or the sale of the goods when it 
is impracticable to place the mark on the goods, packaging for the 
goods, or displays associated with the goods.
    (2) A service mark specimen must show the mark as actually used in 
the sale or advertising of the services.
    (3) A collective trademark or collective service mark specimen must 
show how a member uses the mark on the member's goods or in the sale or 
advertising of the member's services.
    (4) A collective membership mark specimen must show use by members 
to indicate membership in the collective organization.
    (5) A certification mark specimen must show how a person other than 
the owner uses the mark to certify regional or other origin, material, 
mode of manufacture, quality, accuracy, or other characteristics of that 
person's goods or services; or that members of a union or other 
organization performed the work or labor on the goods or services.
    (c) A photocopy or other reproduction of a specimen of the mark as 
actually used on or in connection with the goods, or in the sale or 
advertising of the services, is acceptable. However, a photocopy of the 
drawing required by Sec. 2.51 is not a proper specimen.
    (d)(1) The specimen should be flat, and not larger than 8\1/2\ 
inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. If a specimen of 
this size is not available, the applicant may substitute a suitable 
photograph or other facsimile.
    (2) If the applicant files a specimen exceeding these size 
requirements (a ``bulky specimen''), the Office will create a digital 
facsimile of the specimen that meets the requirements of the rule (i.e., 
is flat and no larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches 
(29.7 cm.) long) and put it in the record. The Office may destroy the 
original bulky specimen.
    (3) In the absence of non-bulky alternatives, the Office may accept 
an audio or video cassette tape recording, CD-ROM, or other appropriate 
medium.
    (4) For a TEAS submission, the specimen must be a digitized image in 
.jpg or .pdf format.

[64 FR 48921, Sept. 8, 1999, as amended at 68 FR 55764, Sept. 26, 2003; 
73 FR 67769, Nov. 17, 2008]



Sec. Sec. 2.57-2.58  [Reserved]



Sec. 2.59  Filing substitute specimen(s).

    (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. The 
applicant must verify by an affidavit or declaration under Sec. 2.20 
that the substitute specimens were in use in commerce at least as early 
as the filing date of the application. Verification is not required if 
the specimen is a duplicate or facsimile of a specimen 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. If the applicant submits substitute 
specimen(s), the applicant must:
    (1) For an amendment to allege use under Sec. 2.76, verify by 
affidavit or declaration under Sec. 2.20 that the applicant used the 
substitute specimen(s) in commerce prior to filing the amendment to 
allege use.
    (2) For a statement of use under Sec. 2.88, verify by affidavit or 
declaration under Sec. 2.20 that the applicant used the substitute 
specimen(s) in commerce either prior to filing the statement of use or 
prior to the expiration of the deadline for filing the statement of use.

[64 FR 48921, Sept. 8, 1999]

           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.

[[Page 253]]



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  Procedure for filing response.

    (a) Deadline. The applicant's response to an Office action must be 
received within six months from the date of issuance.
    (b) Signature. The applicant, someone with legal authority to bind 
the applicant (e.g., a corporate officer or general partner of a 
partnership), or a practitioner who meets the requirements of Sec. 
11.14 of this chapter must sign the response.

[73 FR 67769, Nov. 17, 2008]



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 Director for relief from a 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 Director (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 Director. 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 Director 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 
Director 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 
Director, 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 an amendment to allege use 
does not extend the deadline for filing a response to an outstanding 
Office action, appeal to the Trademark Trial and Appeal Board, or 
petition to the Director.
    (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

[[Page 254]]

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; 
73 FR 67769, Nov. 17, 2008]



Sec. 2.65  Abandonment.

    (a) If an applicant fails to respond, or to respond completely, 
within six months after the date an action is issued, the application 
shall be deemed abandoned unless the refusal or requirement is expressly 
limited to only certain goods and/or services. If the refusal or 
requirement is expressly limited to only certain goods and/or services, 
the application will be abandoned only as to those particular goods and/
or services. A timely petition to the Director pursuant to Sec. Sec. 
2.63(b) and 2.146 or notice of appeal to the Trademark Trial and Appeal 
Board pursuant to Sec. 2.142, if appropriate, is a response that 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; 
68 FR 55764, Sept. 26, 2003; 73 FR 67769, Nov. 17, 2008]



Sec. 2.66  Revival of abandoned applications.

    (a) The applicant may file a petition to revive an application 
abandoned because the applicant did not timely respond to an Office 
action or notice of allowance, if the delay was unintentional. The 
applicant must file the petition:
    (1) Within two months of the date of issuance of the notice of 
abandonment; or
    (2) Within two months of actual knowledge of the abandonment, if the 
applicant did not receive the notice of abandonment, and the applicant 
was diligent in checking the status of the application every six months 
in accordance with Sec. 2.146(i).
    (b) The requirements for filing a petition to revive an application 
abandoned because the applicant did not timely respond to an Office 
action are:
    (1) The petition fee required by Sec. 2.6;
    (2) A statement, signed by someone with firsthand knowledge of the 
facts, that the delay in filing the response on or before the due date 
was unintentional; and
    (3) Unless the applicant alleges that it did not receive the Office 
action, the proposed response.
    (c) The requirements for filing a petition to revive an application 
abandoned because the applicant did not timely respond to a notice of 
allowance are:
    (1) The petition fee required by Sec. 2.6;
    (2) A statement, signed by someone with firsthand knowledge of the 
facts, that the delay in filing the statement of use (or request for 
extension of time to file a statement of use) on or before the due date 
was unintentional;
    (3) Unless the applicant alleges that it did not receive the notice 
of allowance and requests cancellation of the notice of allowance, the 
required fees for the number of requests for extensions of time to file 
a statement of use that the applicant should have filed under Sec. 2.89 
if the application had never been abandoned;
    (4) Unless the applicant alleges that it did not receive the notice 
of allowance and requests cancellation of the notice of allowance, 
either a statement of use under Sec. 2.88 or a request for an extension 
of time to file a statement of use under Sec. 2.89; and
    (5) Unless a statement of use is filed with or before the petition, 
or the applicant alleges that it did not receive the notice of allowance 
and requests

[[Page 255]]

cancellation of the notice of allowance, the applicant must file any 
further requests for extensions of time to file a statement of use under 
Sec. 2.89 that become due while the petition is pending, or file a 
statement of use under Sec. 2.88.
    (d) In an application under section 1(b) of the Act, the Director 
will not grant the petition if this would permit the filing of a 
statement of use more than 36 months after the date of issuance of the 
notice of allowance under section 13(b)(2) of the Act.
    (e) The Director will grant the petition to revive if the applicant 
complies with the requirements listed above and establishes that the 
delay in responding was unintentional.
    (f) If the Director denies a petition, the applicant may request 
reconsideration, if the applicant:
    (1) Files the request within two months of the date of issuance of 
the decision denying the petition; and
    (2) Pays a second petition fee under Sec. 2.6.

[64 FR 48921, Sept. 8, 1999, as amended at 68 FR 55764, Sept. 26, 2003; 
73 FR 67769, Nov. 17, 2008]



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 Director.

[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.

    The applicant may amend the application during the course of 
examination, when required by the Office or for other reasons.
    (a) The applicant may amend the application to clarify or limit, but 
not to broaden, the identification of goods and/or services.
    (b)(1) If the declaration or verification of an application under 
Sec. 2.33 is unsigned or signed by the wrong party, the applicant may 
submit a substitute verification or declaration under Sec. 2.20.
    (2) If the declaration or verification of a statement of use under 
Sec. 2.88, or a request for extension of time to file a statement of 
use under Sec. 2.89, is unsigned or signed by the wrong party, the 
applicant must submit a substitute verification before the expiration of 
the statutory deadline for filing the statement of use.

[[Page 256]]

    (c) The applicant may amend the dates of use, provided that the 
applicant supports the amendment with an affidavit or declaration under 
Sec. 2.20, except that the following amendments are not permitted:
    (1) In an application under section 1(a) of the Act, the applicant 
may not amend the application to specify a date of use that is 
subsequent to the filing date of the application;
    (2) In an application under section 1(b) of the Act, after filing a 
statement of use under Sec. 2.88, the applicant may not amend the 
statement of use to specify a date of use that is subsequent to the 
expiration of the deadline for filing the statement of use.
    (d) The applicant may amend the application to correct the name of 
the applicant, if there is a mistake in the manner in which the name of 
the applicant is set out in the application. The amendment must be 
supported by an affidavit or declaration under Sec. 2.20, signed by the 
applicant. However, the application cannot be amended to set forth a 
different entity as the applicant. An application filed in the name of 
an entity that did not own the mark as of the filing date of the 
application is void.

[64 FR 48922, Sept. 8, 1999]



Sec. 2.72  Amendments to description or drawing of the mark.

    (a) In an application based on use in commerce under section 1(a) of 
the Act, the applicant may amend the description or drawing of the mark 
only if:
    (1) The specimens originally filed, or substitute specimens filed 
under Sec. 2.59(a), support the proposed amendment; and
    (2) The proposed amendment does not materially alter the mark. The 
Office will determine whether a proposed amendment materially alters a 
mark by comparing the proposed amendment with the description or drawing 
of the mark filed with the original application.
    (b) In an application based on a bona fide intention to use a mark 
in commerce under section 1(b) of the Act, the applicant may amend the 
description or drawing of the mark only if:
    (1) The specimens filed with an amendment to allege use or statement 
of use, or substitute specimens filed under Sec. 2.59(b), support the 
proposed amendment; and
    (2) The proposed amendment does not materially alter the mark. The 
Office will determine whether a proposed amendment materially alters a 
mark by comparing the proposed amendment with the description or drawing 
of the mark filed with the original application.
    (c) In an application based on a claim of priority under section 
44(d) of the Act, or on a mark duly registered in the country of origin 
of the foreign applicant under section 44(e) of the Act, the applicant 
may amend the description or drawing of the mark only if:
    (1) The description or drawing of the mark in the foreign 
registration certificate supports the amendment; and
    (2) The proposed amendment does not materially alter the mark. The 
Office will determine whether a proposed amendment materially alters a 
mark by comparing the proposed amendment with the description or drawing 
of the mark filed with the original application.

[64 FR 48922, Sept. 8, 1999]



Sec. 2.73  Amendment to recite concurrent use.

    An application that includes section 1(a) of the Trademark Act as a 
filing basis, or for which an acceptable allegation of use under Sec. 
2.76 or Sec. 2.88 has been filed, may be amended to an application for 
concurrent use registration, provided that the application as amended 
meets the requirements of Sec. 2.42. The trademark examining attorney 
will determine whether the application, as amended, is acceptable.

[73 FR 67770, Nov. 17, 2008]



Sec. 2.74  Form and signature of amendment.

    (a) Form of Amendment. Amendments should be set forth clearly and 
completely. Applicant should either set forth the entire wording, 
including the proposed changes, or, if it would be more efficient, 
indicate which words should be added and which words

[[Page 257]]

should be deleted. The examining attorney may require the applicant to 
rewrite the entire amendment, if necessary for clarification of the 
record.
    (b) Signature. The applicant, someone with legal authority to bind 
the applicant (e.g., a corporate officer or general partner of a 
partnership), or a practitioner who meets the requirements of Sec. 
11.14 must sign the request for amendment. If the amendment requires 
verification, the verification must be sworn to or supported by a 
declaration under Sec. 2.20 by a person properly authorized to sign on 
behalf of the applicant (Sec. 2.33(a)).

[73 FR 67770, Nov. 17, 2008]



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.
    (c) In an application under section 66(a) of the Act, the applicant 
may not amend the application to the Supplemental Register.

[54 FR 37593, Sept. 11, 1989, as amended at 68 FR 55765, Sept. 26, 2003]



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 statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person properly authorized to 
sign on behalf of the applicant (see Sec. 2.33(a)) that:
    (i) The applicant believes it is the owner of the mark; and
    (ii) 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, 
and those goods or services specified in the application on or in 
connection with which the applicant uses the mark in commerce.
    (2) One specimen of the mark as actually used in commerce. See Sec. 
2.56 for the requirements for specimens; and
    (3) The fee per class required by 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 ``Allegation of Use'' should appear at the top of the 
document.
    (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) One specimen or facsimile of the mark as used in commerce; and
    (3) A statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person properly authorized to 
sign on behalf of

[[Page 258]]

the applicant 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 Sec. Sec. 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 Sec. Sec. 
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.
    (i) If the applicant does not file the amendment to allege use 
within a reasonable time after it is signed, the Office may require a 
substitute verification or declaration under Sec. 2.20 stating that the 
mark is still in use in commerce.
    (j) For the requirements for a multiple class application, see Sec. 
2.86.

[54 FR 37593, Sept. 11, 1989, as amended at 63 FR 48097, Sept. 9, 1998; 
64 FR 48922, Sept. 8, 1999; 64 FR 51245, Sept. 22, 1999; 73 FR 67770, 
Nov. 17, 2008]



Sec. 2.77  Amendments between notice of allowance and statement of use.

    (a) The only amendments that can be entered in an application 
between the issuance of the notice of allowance and the submission of a 
statement of use are:
    (1) The deletion of specified goods or services from the 
identification of goods/services;
    (2) The deletion of a basis in a multiple-basis application; and
    (3) A change of attorney or change of address.
    (b) Other amendments filed during this period will be placed in the 
application file and considered when the statement of use is examined.

[73 FR 67770, Nov. 17, 2008]

                    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 and/or 
services, and the issue date of the

[[Page 259]]

notice of allowance. Thereafter, the applicant must submit a statement 
of use as provided in Sec. 2.88.

[54 FR 37594, Sept. 11, 1989, as amended at 73 FR 67770, Nov. 17, 2008]



Sec. 2.82  Marks on Supplemental Register published only upon registration.

    In the case of an application for registration on the Supplemental 
Register 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 trademark examining attorney 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), 44 or 
66(a) of the Act, the trademark examining attorney may, with the 
permission of the Director, exercise jurisdiction over the application. 
After publication of an application under section 1(b) of the Act, the 
trademark examining attorney 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 trademark 
examining attorney may, with the permission of the Director, exercise 
jurisdiction over the application.
    (b) After publication, but before the certificate of registration is 
issued in an application under section 1(a), 44, or 66(a) of the Act, or 
before the notice of allowance is issued in an application under section 
1(b) of the Act, an application that 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 Director to 
restore jurisdiction over the application to the trademark examining 
attorney for consideration of the amendment and further examination. The 
amendment of an application that is the subject of an inter partes 
proceeding before the Trademark Trial and Appeal Board is governed by 
Sec. 2.133.

[68 FR 55765, Sept. 26, 2003, as amended at 73 FR 67770, Nov. 17, 2008]

                             Classification



Sec. 2.85  Classification schedules.

    (a) International classification system. Section 6.1 of this chapter 
sets forth the international system of classification for goods and 
services, which applies for all statutory purposes to:
    (1) Applications filed in the Office on or after September 1, 1973, 
and resulting registrations; and
    (2) Registrations resulting from applications filed on or before 
August 31, 1973, that have been amended to adopt international 
classification pursuant to Sec. 2.85(e)(3).
    (b) Prior United States classification system. Section 6.2 of this 
chapter sets forth the prior United States system of

[[Page 260]]

classification for goods and services, which applies for all statutory 
purposes to registrations resulting from applications filed on or before 
August 31, 1973, unless:
    (1) The registration has been amended to adopt international 
classification pursuant to Sec. 2.85(e)(3); or
    (2) The registration was issued under a classification system prior 
to that set forth in Sec. 6.2.
    (c) Certification marks and collective membership marks. Sections 
6.3 and 6.4 specify the system of classification which applies to 
certification marks and collective membership marks in applications 
based on sections 1 and 44 of the Act, and to registrations resulting 
from applications based on sections 1 and 44. These sections do not 
apply to applications under section 66(a) or to registered extensions of 
protection.
    (d) Section 66(a) applications and registered extensions of 
protection. In an application under section 66(a) of the Act or 
registered extension of protection, the classification cannot be changed 
from the classification assigned by the International Bureau of the 
World Intellectual Property Organization, unless the International 
Bureau corrects the classification. Classes cannot be added, and goods 
or services cannot be transferred from one class to another in a 
multiple-class application.
    (e) Changes to Nice Agreement. The international classification 
system changes periodically, pursuant to the Nice Agreement Concerning 
the International Classification of Goods and Services for the Purposes 
of the Registration of Marks. These changes are listed in the 
International Classification of Goods and Services for the Purposes of 
the Registration of Marks, which is published by the World Intellectual 
Property Organization.
    (1) If international classification changes pursuant to the Nice 
Agreement, the new classification applies only to applications filed on 
or after the effective date of the change.
    (2) In a section 1 or section 44 application filed before the 
effective date of a change to the Nice Agreement, the applicant may 
amend the application to comply with the requirements of the current 
edition. The applicant must comply with the current edition for all 
goods or services identified in the application. The applicant must pay 
the fees for any added class(es).
    (3) In a registration resulting from a section 1 or section 44 
application that was filed before the effective date of a change to the 
Nice Agreement, the owner may amend the registration to comply with the 
requirements of the current edition. The owner must reclassify all goods 
or services identified in the registration to the current edition. The 
owner must pay the fee required by Sec. 2.6 for amendments under 
section 7 of the Act. The owner may reclassify registrations from 
multiple United States classes (Sec. 2.85(b)) into a single 
international classification, where appropriate.
    (f) Classification schedules shall not limit or extend the 
applicant's rights, except that in a section 66(a) application, the 
scope of the identification of goods or services for purposes of 
permissible amendments (see Sec. 2.71(a)) is limited by the class, 
pursuant to Sec. 2.85(d).

[73 FR 67770, Nov. 17, 2008]



Sec. 2.86  Application may include multiple classes.

    (a) In a single application, an applicant may apply to register the 
same mark for goods and/or services in multiple classes. The applicant 
must:
    (1) Specifically identify the goods or services in each class;
    (2) Submit an application filing fee for each class, as set forth in 
Sec. 2.6(a)(1); and
    (3) Include either dates of use (see Sec. Sec. 2.34(a)(1)(ii) and 
(iii)) and one specimen for each class, or a statement of a bona fide 
intention to use the mark in commerce on or in connection with all the 
goods or services specified in each class. The applicant may not claim 
both use in commerce and a bona fide intention to use the mark in 
commerce for the identical goods or services in one application.
    (b) An amendment to allege use under Sec. 2.76 or a statement of 
use under Sec. 2.88 must include, for each class, the required fee, 
dates of use, and one specimen. The applicant may not file the amendment 
to allege use or statement of use until the applicant has used the

[[Page 261]]

mark on all the goods or services, unless the applicant files a request 
to divide. See Sec. 2.87 for information regarding requests to divide.
    (c) The Office will issue a single certificate of registration for 
the mark, unless the applicant files a request to divide. See Sec. 2.87 
for information regarding requests to divide.

[64 FR 48923, Sept. 8, 1999, as amended at 70 FR 2953, Jan. 19, 2005; 73 
FR 67771, Nov. 17, 2008]



Sec. 2.87  Dividing an application.

    (a) Application may be divided. An application may be 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) Fee. In the case of a request to divide out one or more entire 
classes from an application, only the fee for dividing an application as 
set forth in Sec. 2.6(a)(19) 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, the applicant must submit the application filing fee as set forth 
in Sec. 2.6(a)(1) for each new separate application to be created by 
the division, in addition to the fee for dividing an application.
    (c) Time for filing. (1) A request to divide an application may be 
filed at any time between the application filing date and the date on 
which 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.
    (2) In an application under section 1(b) of the Act, a request to 
divide may also 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 on which 
the trademark examining attorney approves the mark for registration.
    (3) In a multiple-basis application, a request to divide out goods 
or services having a particular basis may also be filed 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.
    (d) Form. A request to divide an application should be made in a 
separate document 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 document.
    (e) Outstanding time periods apply to newly created applications. 
Any time period for action by the applicant which is outstanding in the 
original application at the time of the division will apply to each 
separate new application created by the division, except as follows:
    (1) If an Office action pertaining to less than all the classes in a 
multiple-class application is outstanding, and the applicant files a 
request to divide out the goods, services, and/or class(es) to which the 
Office action does not pertain before the response deadline, a response 
to the Office action is not due in the new (child) application(s) 
created by the division of the application;
    (2) If an Office action pertaining to less than all the bases in a 
multiple-basis application is outstanding, and the applicant files a 
request to divide out the goods/services having the basis or bases to 
which the Office action does not pertain before the response deadline, a 
response to the Office action is not due in the new (child) 
application(s) created by the division of the application; or
    (3) In a multiple-basis application in which a notice of allowance 
has issued, if the applicant files a request to divide out the goods/
services having the basis or bases to which the notice of allowance does 
not pertain before the deadline for filing the statement of use, the new 
(child) applications created by the division are not affected by the 
notice of allowance.
    (f) Signature. The request to divide must be signed by the 
applicant, someone with legal authority to bind the applicant (e.g., a 
corporate officer or general partner of a partnership), or a 
practitioner who meets the requirements of Sec. 11.14.
    (g) Section 66(a) applications--change of ownership with respect to 
some but not all of the goods or services. (1) When the

[[Page 262]]

International Bureau of the World Intellectual Property Organization 
notifies the Office that an international registration has been divided 
as the result of a change of ownership with respect to some but not all 
of the goods or services, the Office will construe the International 
Bureau's notice as a request to divide. The Office will record the 
partial change of ownership in the Assignment Services Branch, and 
divide out the assigned goods/services from the original (parent) 
application. The Office will create a new (child) application serial 
number, and enter the information about the new application in its 
automated records.
    (2) To obtain a certificate of registration in the name of the new 
owner for the goods/services that have been divided out, the new owner 
must pay the fee(s) for the request to divide, as required by Sec. 2.6 
and paragraph (b) of this section. The examining attorney will issue an 
Office action in the child application requiring the new owner to pay 
the required fee(s). If the owner of the child application fails to 
respond, the child application will be abandoned. It is not necessary 
for the new owner to file a separate request to divide.
    (3) The Office will not divide a section 66(a) application based 
upon a change of ownership unless the International Bureau notifies the 
Office that the international registration has been divided.

[73 FR 67771, Nov. 17, 2008]

                        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 statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person properly authorized to 
sign on behalf of the applicant (see Sec. 2.33(a)) that:
    (i) The applicant believes it is the owner of the mark; and
    (ii) 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 
on or in connection with the goods or services identified in the notice 
of allowance, and setting forth or incorporating by reference those 
goods/services identified in the notice of allowance on or in connection 
with which the mark is in use in commerce. Where an applicant claims 
section 1(a) of the Act for some goods/services in a class and section 
1(b) of the Act for other goods/services in the same class, the 
statement of use must include dates for the section 1(b) of the Act 
goods/services;
    (2) One specimen of the mark as actually used in commerce. See Sec. 
2.56 for the requirements for specimens; and
    (3) The fee per class required by Sec. 2.6. The applicant must pay 
a filing fee sufficient to cover at least one class within the statutory 
time for filing the statement of use, or the application will be 
abandoned. If the applicant submits a fee insufficient to cover all the 
classes in a multiple-class application, the applicant must specify the 
classes to be abandoned. If the applicant submits a fee sufficient to 
pay for at least one class, but insufficient to cover all the classes, 
and the applicant has not specified the class(es) to be abandoned, the 
Office will issue a notice granting the applicant additional time to 
submit the fee(s) for the remaining class(es), or specify the class(es) 
to be abandoned. If the applicant does not submit the required fee(s) or 
specify the class(es) to be abandoned within the set time period, the 
Office will apply the fees paid, beginning with the lowest numbered 
class(es), in ascending order. The Office will delete the goods/services 
in the remaining class(es) not covered by the fees submitted.
    (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

[[Page 263]]

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 ``Allegation of Use'' should appear at the top of the 
first page of the document.
    (e) The Office will review a timely filed statement of use to 
determine whether it meets the following minimum requirements:
    (1) The fee for at least a single class, required by Sec. 2.6;
    (2) One specimen of the mark as used in commerce;
    (3) A statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person properly authorized to 
sign on behalf of the applicant that the mark is in use in commerce. If 
the verification or declaration is unsigned or signed by the wrong 
party, the applicant must submit a substitute verification on or before 
the statutory deadline for filing the statement of use.
    (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 Sec. Sec. 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 Sec. Sec. 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.
    (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 Office will delete the omitted goods/services from 
the application. The applicant may not thereafter reinsert these goods/
services.
    (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(a).
    (j) The statement of use may be accompanied by a separate request to 
amend the drawing in the application, in accordance with Sec. Sec. 2.51 
and 2.72.
    (k) If the statement of use is not filed within a reasonable time 
after the date it is signed, the Office may require a substitute 
verification or declaration under Sec. 2.20 stating that the mark is 
still in use in commerce.
    (l) For the requirements for a multiple class application, see Sec. 
2.86.

[54 FR 37595, Sept. 11, 1989, as amended at 64 FR 48923, Sept. 8, 1999; 
64 FR 51245, Sept. 22, 1999; 68 FR 55765, Sept. 26, 2003; 73 FR 67771, 
Nov. 17, 2008]



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 by Sec. 2.88. The extension request must 
be filed within

[[Page 264]]

six months of the date of issuance of the notice of allowance under 
section 13(b)(2) of the Act and must include the following:
    (1) A written request for an extension of time to file the statement 
of use;
    (2) The fee per class required by Sec. 2.6. The applicant must pay 
a filing fee sufficient to cover at least one class within the statutory 
time for filing the extension request, or the request will be denied. If 
the applicant timely submits a fee sufficient to pay for at least one 
class, but insufficient to cover all the classes, and the applicant has 
not specified the class(es) to which the fee applies, the Office will 
issue a notice granting the applicant additional time to submit the 
fee(s) for the remaining classes, or specify the class(es) to be 
abandoned. If the applicant does not submit the required fee(s) or 
specify the class(es) to be abandoned within the set time period, the 
Office will apply the fees paid, beginning with the lowest numbered 
class(es), in ascending order. The Office will delete the goods/services 
in the remaining classes not covered by the fees submitted; and
    (3) A statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person properly authorized to 
sign on behalf of the applicant (see Sec. 2.33(a)) that the applicant 
still has a bona fide intention to use the mark in commerce, specifying 
the relevant goods or services. If the verification is unsigned or 
signed by the wrong party, the applicant must submit a substitute 
verification within six months of the date of issuance of the notice of 
allowance.
    (b) Before the expiration of the previously granted extension of 
time, the applicant may request further six month extensions of time to 
file the statement of use by submitting the following:
    (1) A written request for an extension of time to file the statement 
of use;
    (2) The fee per class required by Sec. 2.6. The applicant must pay 
a filing fee sufficient to cover at least one class within the statutory 
time for filing the extension request, or the request will be denied. If 
the applicant submits a fee insufficient to cover all the classes in a 
multiple-class application, the applicant must specify the classes to be 
abandoned. If the applicant submits a fee sufficient to pay for at least 
one class, but insufficient to cover all the classes, and the applicant 
has not specified the class(es) to which the fee applies, the Office 
will issue a notice granting the applicant additional time to submit the 
fee(s) for the remaining classes, or specify the class(es) to be 
abandoned. If the applicant does not submit the required fee(s) or 
specify the class(es) to be abandoned within the set time period, the 
Office will apply the fees, beginning with the lowest numbered 
class(es), in ascending order. The Office will delete the remaining 
goods/services not covered by the fees submitted;
    (3) A statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person properly authorized to 
sign on behalf of the applicant (see Sec. 2.33(a)) that the applicant 
still has a bona fide intention to use the mark in commerce, specifying 
the relevant goods or services. If the verification is unsigned or 
signed by the wrong party, the applicant must submit a substitute 
verification before the expiration of the previously granted extension; 
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 of good cause must include a statement of the 
applicant's ongoing efforts to make use of the mark in commerce on or in 
connection with each of the relevant goods or services. Those efforts 
may include product or service research or development, market research, 
manufacturing activities, promotional activities, steps to acquire 
distributors, steps to obtain governmental approval, or other similar 
activities. In the alternative, the applicant must submit a satisfactory 
explanation for the failure to make efforts to use the mark in commerce.
    (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

[[Page 265]]

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 Director in 
accordance with Sec. 2.66 or Sec. 2.146. A petition from the denial of 
an extension request must be filed within two months of the date of 
issuance of the denial of the request. If the petition is granted, the 
term of the requested six-month extension that was the subject of the 
petition will run from the date of expiration of the previously existing 
six-month period for filing a statement of use.
    (h) If the extension request is not filed within a reasonable time 
after it is signed, the Office may require a substitute verification or 
declaration under Sec. 2.20 stating that the applicant still has a bona 
fide intention to use the mark in commerce.

[54 FR 37595, Sept. 11, 1989, as amended at 64 FR 48923, Sept. 8, 1999; 
64 FR 51245, Sept. 22, 1999; 73 FR 67772, Nov. 17, 2008]

              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 
Director. Interferences will be declared by the Director only upon a 
showing of extraordinary circumstances which would result in a party 
being unduly prejudiced without 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

[[Page 266]]

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 Director 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 theOfficial Gazette for opposition.

[54 FR 34897, Aug. 22, 1989]



Sec. 2.93  Institution of interference.

    An interference is instituted by the issuance 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.

[73 FR 67772, Nov. 17, 2008]



Sec. Sec. 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 
Director 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) If it appears that the applicant is entitled to have the mark 
registered, subject to a concurrent use proceeding, the mark will be 
published in the Official Gazette as provided by Sec. 2.80.
    (c) If no opposition is filed, or if all oppositions that are filed 
are dismissed or withdrawn, the Trademark Trial and Appeal Board will 
send a notification to the applicant for concurrent use registration 
(plaintiff) and to each applicant, registrant or user specified as a 
concurrent user in the application (defendants). The notification for 
each defendant shall state the name and address of the plaintiff and of 
the plaintiff's attorney or other authorized representative, if any, 
together with the serial number and filing date of the application. If a 
party has provided the Office with an e-mail address, the notification 
may be transmitted via e-mail.
    (d)(1) Within ten days from the date of the Board's notification, 
the applicant for concurrent use registration

[[Page 267]]

must serve copies of its application, specimens and drawing on each 
applicant, registrant or user specified as a concurrent user in the 
application for registration, as directed by the Board. If any service 
copy is returned to the concurrent use applicant as undeliverable, the 
concurrent use applicant must notify the Board within ten days of 
receipt of the returned copy.
    (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 issuance 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 
issuance 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 Director 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 under section 1(b) 
of the Act of 1946 are subject to concurrent use registration 
proceedings only after the applicant files an acceptable allegation of 
use under Sec. 2.76 or Sec. 2.88. Applications based solely on section 
44 or section 66(a) of the Act are not subject to concurrent use 
registration proceedings.
    (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; 72 FR 42258, Aug. 1, 2007; 73 FR 
67772, Nov. 17, 2008]

                               Opposition

    Authority: Secs. 2.101 to 2.106 also issued under secs. 13, 17, 60 
Stat. 433, 434; 15 U.S.C. 1063, 1067.

[[Page 268]]



Sec. 2.101  Filing an opposition.

    (a) An opposition proceeding is commenced by filing in the Office a 
timely notice of opposition with the required fee. The notice must 
include proof of service on the applicant, or its attorney or domestic 
representative of record, at the correspondence address of record in the 
Office, as detailed in Sec. Sec. 2.101(b) and 2.119.
    (b) Any person who believes that he, she or it would be damaged by 
the registration of a mark on the Principal Register may file an 
opposition addressed to the Trademark Trial and Appeal Board and must 
serve a copy of the opposition, including any exhibits, on the attorney 
of record for the applicant or, if there is no attorney, on the 
applicant or on the applicant's domestic representative, if one has been 
appointed, at the correspondence address of record in the Office. The 
opposer must include with the opposition proof of service pursuant to 
Sec. 2.119 at the correspondence address of record in the Office. If 
any service copy of the opposition is returned to the opposer as 
undeliverable, the opposer must notify the Board within ten days of 
receipt of the returned copy. The opposition need not be verified, but 
must be signed by the opposer or the opposer's attorney, as specified in 
Sec. 11.1 of this chapter, or other authorized representative, as 
specified in Sec. 11.14(b) of this chapter. Electronic signatures 
pursuant to Sec. 2.193(c)(1)(iii) are required for oppositions filed 
through ESTTA under paragraphs (b)(1) or (2) of this section.
    (1) An opposition to an application based on section 1 or 44 of the 
Act must be filed either on paper or through ESTTA.
    (2) An opposition to an application based on section 66(a) of the 
Act must be filed through ESTTA.
    (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).
    (2) An otherwise timely opposition will not be accepted via ESTTA 
unless the opposition is accompanied by a fee that is sufficient to pay 
in full for each named party opposer to oppose the registration of a 
mark in each class specified in the opposition.
    (3) If an otherwise timely opposition is submitted on paper, the 
following is applicable if less than all required fees are submitted:
    (i) If the opposition is accompanied by no fee or a fee insufficient 
to pay for one person to oppose the registration of a mark in at least 
one class, the opposition will be refused.
    (ii) If the opposition is accompanied by fees sufficient to pay for 
one person to oppose registration in at least one class, but fees are 
insufficient to oppose registration in all the classes in the 
application, and the particular class or classes against which the 
opposition is filed is not specified, the opposition will be presumed to 
be against the class or classes in ascending numerical order, including 
only the number of classes in the application for which sufficient fees 
have been submitted.
    (iii) If persons are joined as party opposers, each must submit a 
fee for each class for which opposition is sought. If 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 first-
named party will be presumed to be the party opposer. Additional parties 
will be deemed to be party opposers only 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 a multiple class 
application, the fees submitted are insufficient, and no specification 
of opposers and classes is made at the time the party is joined, 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. Any excess will be applied on 
behalf of the second-named party to the opposition against the classes 
in the application in ascending numerical order.
    (4) The filing date of an opposition is the date of receipt in the 
Office of the notice of opposition, with proof of service on the 
applicant, or its attorney or

[[Page 269]]

domestic representative of record, if one has been appointed, at the 
correspondence address of record in the Office, and the required fee, 
unless the notice is filed in accordance with Sec. 2.198.

[68 FR 55765, Sept. 26, 2003, as amended at 72 FR 42258, Aug. 1, 2007; 
73 FR 47685, Aug. 14, 2008]



Sec. 2.102  Extension of time for filing an opposition.

    (a) Any person who believes that he, she or it would be damaged by 
the registration of a mark on the Principal Register may file in the 
Office a written request, addressed to the Trademark Trial and Appeal 
Board, to extend the time for filing an opposition. The written request 
need not be verified, but must be signed by the potential opposer or by 
the potential opposer's attorney, as specified in Sec. 11.1 of this 
chapter, or authorized representative, as specified in Sec. 11.14(b) of 
this chapter. Electronic signatures pursuant to Sec. 2.193(c)(1)(iii) 
are required for electronically filed extension requests.
    (1) A written request to extend the time for filing an opposition to 
an application filed under section 1 or 44 of the Act must be filed 
either on paper or through ESTTA.
    (2) A written request to extend the time for filing an opposition to 
an application filed under section 66(a) of the Act must be filed 
through ESTTA.
    (b) A 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 in the name of 
the person to whom the extension was granted. 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 time for filing an opposition shall not be extended beyond 
180 days from the date of publication. Any request to extend the time 
for filing an opposition must be filed before thirty days have expired 
from the date of publication or before the expiration of a previously 
granted extension of time, as appropriate. Requests to extend the time 
for filing an opposition must be filed as follows:
    (1) A person may file a first request for either a thirty-day 
extension of time, which will be granted upon request, or a ninety-day 
extension of time, which will be granted only for good cause shown.
    (2) If a person was granted a thirty-day extension of time, that 
person may file a request for an additional sixty-day extension of time, 
which will be granted only for good cause shown.
    (3) After receiving one or two extensions of time totaling ninety 
days, a person may file one final request for an extension of time for 
an additional sixty days. The Board will grant this request only upon 
written consent or stipulation signed by the applicant or its authorized 
representative, or 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 a showing of 
extraordinary circumstances. No further extensions of time to file an 
opposition will be granted under any circumstances.

[68 FR 55765, Sept. 26, 2003, as amended at 73 FR 47685, Aug. 14, 2008]



Sec. 2.104  Contents of opposition.

    (a) The opposition must set forth a short and plain statement 
showing why the opposer believes he, she or it would be damaged by the 
registration of the opposed mark and state the grounds for 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, as amended at 68 FR 55766, Sept. 26, 2003]



Sec. 2.105  Notification to parties of opposition proceeding(s).

    (a) When an opposition in proper form (see Sec. Sec. 2.101 and 
2.104), with proof of service in accordance with Sec. 2.101(b), has 
been filed and the correct fee has

[[Page 270]]

been submitted, the Trademark Trial and Appeal Board shall prepare a 
notification, 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. If a party has provided the Office with 
an e-mail address, the notification may be transmitted via e-mail.
    (b) The Board shall forward a copy of the notification to opposer, 
as follows:
    (1) If the opposition is transmitted by an attorney, or a written 
power of attorney is filed, the Board will send the notification to the 
attorney transmitting the opposition or to the attorney designated in 
the power of attorney, provided that the person is an ``attorney'' as 
defined in Sec. 11.1 of this chapter.
    (2) If opposer is not represented by an attorney in the opposition, 
but opposer has appointed a domestic representative, the Board will send 
the notification to the domestic representative, unless opposer 
designates in writing another correspondence address.
    (3) If opposer is not represented by an attorney in the opposition, 
and no domestic representative has been appointed, the Board will send 
the notification directly to opposer, unless opposer designates in 
writing another correspondence address.
    (c) The Board shall forward a copy of the notification to applicant, 
as follows:
    (1) If the opposed application contains a clear indication that the 
application is being prosecuted by an attorney, as defined in Sec. 11.1 
of this chapter, the Board shall send the documents described in this 
section to applicant's attorney.
    (2) If the opposed application is not being prosecuted by an 
attorney but a domestic representative has been appointed, the Board 
will send the documents described in this section to the domestic 
representative, unless applicant designates in writing another 
correspondence address.
    (3) If the opposed application is not being prosecuted by an 
attorney, and no domestic representative has been appointed, the Board 
will send the documents described in this section directly to applicant, 
unless applicant designates in writing another correspondence address.

[68 FR 55766, Sept. 26, 2003, as amended at 72 FR 42258, Aug. 1, 2007; 
73 FR 47685, Aug. 14, 2008]



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 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.

[[Page 271]]

    (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 Sec. Sec. 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.

    (a) Pleadings in an opposition proceeding against an application 
filed under section 1 or 44 of the Act may be amended in the same manner 
and to the same extent as in a civil action in a United States district 
court, except that, after the close of the time period for filing an 
opposition including any extension of time for filing an opposition, an 
opposition may not be amended to add to the goods or services opposed.
    (b) Pleadings in an opposition proceeding against an application 
filed under section 66(a) of the Act may be amended in the same manner 
and to the same extent as in a civil action in a United States district 
court, except that, once filed, the opposition may not be amended to add 
to the grounds for opposition or to add to the goods or services subject 
to opposition.

[68 FR 55766, Sept. 26, 2003]

                              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 filing in the Office a 
timely petition for cancellation with the required fee. The petition 
must include proof of service on the owner of record for the 
registration, or the owner's domestic representative of record, at the 
correspondence address of record in the Office, as detailed in 
Sec. Sec. 2.111(b) and 2.119.
    (b) Any person who believes that he, she or it is or will be damaged 
by a registration may file a petition, addressed to the Trademark Trial 
and Appeal Board, for cancellation of the registration in whole or in 
part. Petitioner must serve a copy of the petition, including any 
exhibits, on the owner of record for the registration, or on the owner's 
domestic representative of record, if one has been appointed, at the 
correspondence address of record in the Office. The petitioner must 
include with the petition for cancellation proof of service, pursuant to 
Sec. 2.119, on the owner of record, or on the owner's domestic 
representative of record, if one has been appointed, at the 
correspondence address of record in the Office. If any service copy of 
the petition for cancellation is returned to the petitioner as 
undeliverable, the petitioner must notify the Board within ten days of 
receipt of the returned copy. The petition for cancellation need not be 
verified, but must be signed by the petitioner or the petitioner's 
attorney, as specified in Sec. 11.1 of this chapter, or other 
authorized representative, as specified in Sec. 11.14(b) of this 
chapter. Electronic signatures pursuant to Sec. 2.193(c)(1)(iii) are 
required for petitions submitted electronically via ESTTA. The petition 
for cancellation 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

[[Page 272]]

petition for cancellation 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 for cancellation must be accompanied by the 
required fee for each party joined as petitioner for each class in the 
registration for which cancellation is sought (see Sec. 2.6).
    (2) An otherwise timely petition for cancellation will not be 
accepted via ESTTA unless the petition for cancellation is accompanied 
by a fee that is sufficient to pay in full for each named party 
petitioner to petition for cancellation of the registration of a mark in 
each class specified in the petition for cancellation.
    (3) If an otherwise timely petition for cancellation is submitted on 
paper, the following is applicable if less than all required fees are 
submitted:
    (i) If the petition for cancellation is accompanied by no fee or a 
fee insufficient to pay for one person to petition for cancellation 
against at least one class in the registration, the petition for 
cancellation will be refused.
    (ii) If the petition for cancellation is accompanied by fees 
sufficient to pay for one person to petition for cancellation against at 
least one class in the registration, but fees are insufficient for a 
petition for cancellation against all the classes in the registration, 
and the particular class or classes against which the petition for 
cancellation is filed is not specified, the petition for cancellation 
will be presumed to be against the class or classes in ascending 
numerical order, including only the number of classes in the 
registration for which sufficient fees have been submitted.
    (iii) 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 sufficient to pay for one person to petition for 
cancellation of the registration in at least one class but are 
insufficient for each named party petitioner, the first-named party will 
be presumed to be the party petitioner. Additional parties will be 
deemed to be party petitioners only 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 multiple class 
registration, the fees submitted are insufficient, and no specification 
of parties and classes is made at the time the party is joined, 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. Any excess will be applied on behalf of the 
second-named party to the cancellation against the classes in the 
registration in ascending numerical order.
    (4) The filing date of a petition for cancellation is the date of 
receipt in the Office of the petition for cancellation, with proof of 
service on the owner of record, or on the owner's domestic 
representative, if one has been appointed, at the correspondence address 
of record in the Office, and with the required fee, unless the petition 
is filed in accordance with Sec. 2.198.

[68 FR 55766, Sept. 26, 2003, as amended at 72 FR 42258, Aug. 1, 2007; 
73 FR 47686, Aug. 14, 2008]



Sec. 2.112  Contents of petition for cancellation.

    (a) The petition for cancellation must set forth a short and plain 
statement showing why the petitioner believes he, she or it is or will 
be damaged by the registration, state the ground for cancellation, and 
indicate, to the best of petitioner's knowledge, the name and address of 
the current owner of the registration.
    (b) When appropriate, petitions for cancellation of different 
registrations owned by the same party may be joined in a consolidated 
petition for cancellation. The required fee must be included for each 
party joined as a petitioner for each class sought to be cancelled in 
each registration against which the petition for cancellation is filed.

[68 FR 55767, Sept. 26, 2003]



Sec. 2.113  Notification to parties of cancellation proceeding.

    (a) When a petition for cancellation in proper form (see Sec. Sec. 
2.111 and 2.112), with proof of service in accordance with Sec. 
2.111(b), has been filed and the correct fee has been submitted, the 
Trademark Trial and Appeal Board

[[Page 273]]

shall prepare a notification which shall identify the title and number 
of the proceeding and the registration(s) 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. If a party has 
provided the Office with an e-mail address, the notification may be 
transmitted via e-mail.
    (b) The Board shall forward a copy of the notification to 
petitioner, as follows:
    (1) If the petition for cancellation is transmitted by an attorney, 
or a written power of attorney is filed, the Board will send the 
notification to the attorney transmitting the petition for cancellation 
or to the attorney designated in the power of attorney, provided that 
person is an ``attorney'' as defined in Sec. 11.1 of this chapter.
    (2) If petitioner is not represented by an attorney in the 
cancellation proceeding, but petitioner has appointed a domestic 
representative, the Board will send the notification to the domestic 
representative, unless petitioner designates in writing another 
correspondence address.
    (3) If petitioner is not represented by an attorney in the 
cancellation proceeding, and no domestic representative has been 
appointed, the Board will send the notification directly to petitioner, 
unless petitioner designates in writing another correspondence address.
    (c) The Board shall forward a copy of the notification to the 
respondent (see Sec. 2.118). The respondent shall be the party shown by 
the records of the Office to be the current owner of the registration(s) 
sought to be cancelled, except that the Board, in its discretion, may 
join or substitute as respondent a party who makes a showing of a 
current ownership interest in such registration(s).
    (d) When the party alleged by the petitioner, pursuant to Sec. 
2.112(a), as the current owner of the registration(s) is not the record 
owner, a courtesy copy of the petition for cancellation shall be 
forwarded with a copy of the notification to the alleged current owner. 
The alleged current owner may file a motion to be joined or substituted 
as respondent.

[68 FR 55767, Sept. 26, 2003, as amended at 72 FR 42259, Aug. 1, 2007; 
73 FR 47686, Aug. 14, 2008]



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.

[[Page 274]]

    (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 Sec. Sec. 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.



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.
    (g) The Trademark Trial and Appeal Board's standard protective order 
is applicable during disclosure, discovery and at trial in all 
opposition, cancellation, interference and concurrent use registration 
proceedings, unless the parties, by stipulation approved by the Board, 
agree to an alternative order, or a motion by a party to use an 
alternative order is granted by the Board. The standard protective order 
is available at the Office's Web site, or upon request, a copy will be 
provided. No material disclosed or produced by a party, presented at 
trial, or filed with the Board, including motions or briefs which 
discuss such material, shall be treated as confidential or shielded from 
public view unless designated as protected under the Board's standard 
protective order, or under an alternative order stipulated to by the 
parties and approved by the Board, or under an order submitted by motion 
of a party granted by the Board.

[30 FR 13193, Oct. 16, 1965. Redesignated and amended at 37 FR 7606, 
Apr. 18, 1972; 48 FR 23136, May 23, 1983; 72 FR 42259, Aug. 1, 2007]



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,

[[Page 275]]

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 a notice sent by the Office to any registrant or applicant is 
returned to the Office undelivered, additional notice may be given by 
publication in the Official Gazette for the period of time prescribed by 
the Director.

[72 FR 42259, Aug. 1, 2007]



Sec. 2.119  Service and signing of papers.

    (a) Every paper filed in the United States Patent and Trademark 
Office in inter partes cases, including notices of appeal, must be 
served upon the other parties. 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 by first-class mail, 
which may also be certified or registered;
    (5) Transmission by overnight courier.

Whenever it shall be satisfactorily shown to the Director 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.
    (6) Electronic transmission when mutually agreed upon by the 
parties.
    (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 may designate by 
document filed in the United States 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. If the party has appointed 
a domestic representative, official communications of the United States 
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. 11.14(c) of 
this subchapter. If the party has not appointed a domestic 
representative and the proceeding is not being prosecuted by an attorney 
at law or other qualified person, the Office will send correspondence 
directly to the party, unless the party designates in writing another 
address to which correspondence is to be sent. The

[[Page 276]]

mere designation of a domestic representative does not authorize the 
person designated to prosecute the proceeding unless qualified under 
Sec. 11.14(a), or qualified under Sec. 11.14(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; 67 FR 79523, Dec. 30, 2002; 72 FR 42259, Aug. 1, 2007; 73 FR 
47686, Aug. 14, 2008]



Sec. 2.120  Discovery.

    (a) In general. (1) Wherever appropriate, the provisions of the 
Federal Rules of Civil Procedure relating to disclosure and discovery 
shall apply in opposition, cancellation, interference and concurrent use 
registration proceedings except as otherwise provided in this section. 
The provisions of Federal Rule of Civil Procedure 26 relating to 
required disclosures, the conference of the parties to discuss 
settlement and to develop a disclosure and discovery plan, the scope, 
timing and sequence of discovery, protective orders, signing of 
disclosures and discovery responses, and supplementation of disclosures 
and discovery responses, are applicable to Board proceedings in modified 
form, as noted in these rules and as may be detailed in any order 
instituting an inter partes proceeding or subsequent scheduling order. 
The Board will specify the deadline for a discovery conference, the 
opening and closing dates for the taking of discovery, and the deadlines 
within the discovery period for making initial disclosures and expert 
disclosure. The trial order setting these deadlines and dates will be 
included with the notice of institution of the proceeding.
    (2) The discovery conference shall occur no later than the opening 
of the discovery period, and the parties must discuss the subjects set 
forth in Federal Rule of Civil Procedure 26(f) and any subjects set 
forth in the Board's institution order. A Board Interlocutory Attorney 
or Administrative Trademark Judge will participate in the conference 
upon request of any party made after answer but no later than ten days 
prior to the deadline for the conference. The participating attorney or 
judge may expand or reduce the number or nature of subjects to be 
discussed in the conference as may be deemed appropriate. The discovery 
period will be set for a period of 180 days. Initial disclosures must be 
made no later than thirty days after the opening of the discovery 
period. Disclosure of expert testimony must occur in the manner and 
sequence provided in Federal Rule of Civil Procedure 26(a)(2), unless 
alternate directions have been provided by the Board in an institution 
order or any subsequent order resetting disclosure, discovery or trial 
dates. If the expert is retained after the deadline for disclosure of 
expert testimony, the party must promptly file a motion for leave to use 
expert testimony. Upon disclosure by any party of plans to use expert 
testimony, whether before or after the deadline for disclosing expert 
testimony, the Board may issue an order regarding expert discovery and/
or set a deadline for any other party to disclose plans to use a 
rebuttal expert. 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. 
Disclosure deadlines and obligations may be modified upon written 
stipulation of the parties approved by the Board, or upon motion granted 
by the Board, or by order of the Board. If a stipulation or motion for 
modification is denied, disclosure deadlines may remain as originally 
set or reset and obligations may remain unaltered. The parties are not 
required to prepare or transmit to the Board a written report outlining 
their discovery conference discussions, unless the parties have agreed 
to alter disclosure or discovery obligations set forth by these rules or 
applicable Federal

[[Page 277]]

Rules of Civil Procedure, or unless directed to file such a report by a 
participating Board Interlocutory Attorney or Administrative Trademark 
Judge.
    (3) A party must make its initial disclosures prior to seeking 
discovery, absent modification of this requirement by a stipulation of 
the parties approved by the Board, or a motion granted by the Board, or 
by order of the Board. 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 thirty 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 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, approved by the Board. A motion for 
leave to serve additional interrogatories must be

[[Page 278]]

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 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 the 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 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 disclosure or discovery. (1) If a 
party fails to make required initial disclosures or expert testimony 
disclosure, or 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 entitled to disclosure or seeking discovery may file a motion 
to compel disclosure, a designation, or attendance at a deposition, or 
an answer, or production and an opportunity to inspect and copy. A 
motion to compel initial disclosures or expert testimony disclosure must 
be filed prior to the close of the discovery period. A motion to compel 
discovery must be filed prior to the commencement of the first testimony 
period as originally set or as reset. A motion to compel discovery 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. A 
motion to compel initial disclosures, expert testimony disclosure, or 
discovery 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 but the parties 
were unable to resolve their differences. 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 initial 
disclosures, expert testimony disclosure, or discovery, the case will be 
suspended by the Board with respect to all matters not germane to the 
motion. After the motion is filed and served, no party should file any 
paper that is not germane to the motion, except as otherwise specified 
in the Board's suspension order. Nor may any party serve any additional 
discovery until the period of suspension is lifted or expires by or 
under order of the Board. The filing of a motion to compel any 
disclosure or discovery shall not toll the time for a party to comply 
with any disclosure requirement or 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 obligated 
to make initial disclosures or expert testimony disclosure or from whom 
discovery is sought, and for good cause, the Trademark Trial and Appeal 
Board may make any order which justice requires

[[Page 279]]

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 comply with disclosure obligations or provide or 
permit discovery.
    (g) Sanctions. (1) If a party fails to participate in the required 
discovery conference, or if a party fails to comply with an order of the 
Trademark Trial and Appeal Board relating to disclosure or discovery, 
including a protective order, the Board may make any appropriate order, 
including those 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 expenses to any party. The Board may impose against a party any of 
the sanctions provided in Rule 37(b)(2) 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. A motion for sanctions against a party for its 
failure to participate in the required discovery conference must be 
filed prior to the deadline for any party to make initial disclosures.
    (2) If a party fails to make required initial disclosures or expert 
testimony disclosure, and such party or the party's attorney or other 
authorized representative informs the party or parties entitled to 
receive disclosures that required disclosures will not be made, the 
Board may make any appropriate order, as specified in paragraph (g)(1) 
of this section. 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 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 for an admission, the case will be 
suspended by the Board with respect to all matters not germane to the 
motion. After filing and service of the motion, no party should file any 
paper that is not germane to the motion, except as otherwise specified 
in the Board's suspension order. Nor may any party thereafter serve any 
additional discovery until the period of suspension is lifted or expires 
by or under order of the Board. 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 comply with any disclosure requirement 
or to respond to any outstanding discovery requests or to appear for any 
noticed discovery deposition.
    (i) Telephone and pretrial conferences. (1) Whenever it appears to 
the Trademark Trial and Appeal Board that a stipulation or motion filed 
in an inter partes proceeding is of such nature

[[Page 280]]

that its approval or resolution by correspondence is not practical, the 
Board may, upon its own initiative or upon request made by one or both 
of the parties, address the stipulation or 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 likely be facilitated by a conference in person of the 
parties or their attorneys with an Administrative Trademark Judge or an 
Interlocutory Attorney 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 disclosure, discovery or pretrial conference.
    (j) Use of discovery deposition, answer to interrogatory, admission 
or written disclosure. (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 
after the circumstances claimed to justify use of the deposition became 
known.
    (3)(i) A discovery deposition, an answer to an interrogatory, an 
admission to a request for admission, or a written disclosure (but not a 
disclosed document), 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), or a copy of the written disclosure, 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 that 
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 that has obtained documents from another party through 
disclosure or 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

[[Page 281]]

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) Written disclosures, an answer to an interrogatory, or an 
admission to a request for admission, may be submitted and made part of 
the record only by the receiving or inquiring party except that, if 
fewer than all of the written disclosures, answers to interrogatories, 
or fewer than all of the admissions, are offered in evidence by the 
receiving or inquiring party, the disclosing or responding party may 
introduce under a notice of reliance any other written disclosures, 
answers to interrogatories, or any other admissions, which should in 
fairness be considered so as to make not misleading what was offered by 
the receiving or inquiring party. The notice of reliance filed by the 
disclosing or responding party must be supported by a written statement 
explaining why the disclosing or responding party needs to rely upon 
each of the additional written disclosures or discovery responses listed 
in the disclosing or responding party's notice, and absent such 
statement the Board, in its discretion, may refuse to consider the 
additional written disclosures or responses.
    (6) Paragraph (j) of this section will not be interpreted to 
preclude reading or use of written disclosures or documents, 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 written disclosure, 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) Written disclosures or disclosed documents, requests for 
discovery, responses thereto, and materials or depositions obtained 
through the disclosure or discovery process should not be filed with the 
Board, except when submitted with a motion relating to disclosure or 
discovery, or in support of or in response to a motion for summary 
judgment, or under a notice of reliance, when permitted, during a 
party's testimony period.

[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; 72 FR 
42259, Aug. 1, 2007]



Sec. 2.121  Assignment of times for taking testimony.

    (a) The Trademark Trial and Appeal Board will issue a trial order 
setting a deadline for each party's required pretrial disclosures and 
assigning to each party its time for taking testimony. No testimony 
shall be taken except during the times assigned, unless by stipulation 
of the parties approved by the Board, or upon motion granted by the 
Board, or by order of the Board. The deadlines for pretrial disclosures 
and the 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 any pretrial disclosure 
deadline and/or testimony period is denied, the pretrial disclosure 
deadline or testimony period and any subsequent remaining periods may 
remain as set. The resetting of the closing date for discovery will 
result in the rescheduling of pretrial disclosure deadlines and 
testimony periods without action by any party.
    (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

[[Page 282]]

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 a deadline for 
pretrial disclosures and subsequent testimony periods or to the 
rescheduling of the closing date for discovery and the rescheduling of 
subsequent deadlines for pretrial disclosures and 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, shall be submitted 
to the Board.
    (e) A party need not disclose, prior to its testimony period, any 
notices of reliance it intends to file during its testimony period. 
However, no later than fifteen days prior to the opening of each 
testimony period, or on such alternate schedule as may be provided by 
order of the Board, the party scheduled to present evidence must 
disclose the name and, if not previously provided, the telephone number 
and address of each witness from whom it intends to take testimony, or 
may take testimony if the need arises, general identifying information 
about the witness, such as relationship to any party, including job 
title if employed by a party, or, if neither a party nor related to a 
party, occupation and job title, a general summary or list of subjects 
on which the witness is expected to testify, and a general summary or 
list of the types of documents and things which may be introduced as 
exhibits during the testimony of the witness. Pretrial disclosure of a 
witness under this subsection does not substitute for issuance of a 
proper notice of examination under Sec. 2.123(c) or Sec. 2.124(b). If 
a party does not plan to take testimony from any witnesses, it must so 
state in its pretrial disclosure. When a party fails to make required 
pretrial disclosures, any adverse party or parties may have remedy by 
way of a motion to the Board to delay or reset any subsequent pretrial 
disclosure deadlines and/or testimony periods.

[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; 68 FR 55767, Sept. 
26, 2003; 72 FR 42262, Aug. 1, 2007]



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

[[Page 283]]

to whose pleading the exhibit is attached unless identified and 
introduced 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 an 
original or photocopy of the registration prepared and issued by the 
United States Patent and Trademark Office showing both the current 
status of and current title to the registration, or by a current 
printout of information from the electronic database records of the 
USPTO showing the current status and title of 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; 72 FR 42262, Aug. 
1, 2007]



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

[[Page 284]]

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 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 pretrial disclosures or the notice of examination of 
witnesses served pursuant to paragraph (c) of this section are 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, to preserve the objection, 
shall move to strike the testimony from the record, which motion will be 
decided on the basis of all the relevant circumstances. A motion to 
strike the testimony of a witness for lack of proper or adequate 
pretrial disclosure may seek exclusion of the entire testimony, when 
there was no pretrial disclosure, or may seek exclusion of that portion 
of the testimony that was not adequately disclosed in accordance with 
Sec. 2.121(e). 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

[[Page 285]]

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;
    (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 promptly forward the package to 
the address set out in Sec. 2.190. 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. A deposition must be in 
written form. The questions propounded to each witness must be 
consecutively numbered unless the pages have numbered lines. 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

[[Page 286]]

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; 68 FR 14337, Mar. 25, 2003; 68 FR 
48289, Aug. 13, 2003; 68 FR 55767, Sept. 26, 2003; 72 FR 42262, Aug. 1, 
2007]



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

[[Page 287]]

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 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  Form of submissions to the Trademark Trial and Appeal Board.

    (a) Submissions may be made to the Trademark Trial and Appeal Board 
on paper where Board practice or the rules in this part permit. A paper 
submission, including exhibits and depositions, must meet the following 
requirements:
    (1) A paper submission must be printed in at least 11-point type and 
double-spaced, with text on one side only of each sheet;
    (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) 
wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs 
or other such devices extending beyond the edges of the paper;
    (3) If a paper submission contains dividers, the dividers must not 
have any extruding tabs or other devices, and must be on the same size 
and weight paper as the submission;
    (4) A paper submission must not be stapled or bound;
    (5) All pages of a paper submission must be numbered and exhibits 
shall be

[[Page 288]]

identified in the manner prescribed in Sec. 2.123(g)(2);
    (6) Exhibits pertaining to a paper submission must be filed on paper 
and comply with the requirements for a paper submission.
    (b) Submissions may be made to the Trademark Trial and Appeal Board 
electronically via the Internet where the rules in this part or Board 
practice permit, according to the parameters established by the Board 
and published on the Web site of the Office. Text in an electronic 
submission must be in at least 11-point type and double-spaced. Exhibits 
pertaining to an electronic submission must be made electronically as an 
attachment to the submission.
    (c) To be handled as confidential, submissions to the Trademark 
Trial and Appeal Board that are confidential in whole or part pursuant 
to Sec. 2.125(e) must be submitted under a separate cover. Both the 
submission and its cover must be marked confidential and must identify 
the case number and the parties. A copy of the submission with the 
confidential portions redacted must be submitted.

[68 FR 55767, Sept. 26, 2003, as amended at 72 FR 42262, Aug. 1, 2007]



Sec. 2.127  Motions.

    (a) Every motion must be submitted in written form and must meet the 
requirements prescribed in Sec. 2.126. It 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 remains as specified under this 
section, unless otherwise ordered. Except as provided in paragraph 
(e)(1) of this section, a reply brief, if filed, shall be filed within 
fifteen 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. The 
Board will consider no further papers in support of or in opposition to 
a motion. Neither the brief in support of a motion nor the brief in 
response to a motion shall exceed twenty-five pages in length in its 
entirety, including table of contents, index of cases, description of 
the record, statement of the issues, recitation of the facts, argument, 
and summary. A reply brief shall not exceed ten pages in length in its 
entirety. Exhibits submitted in support of or in opposition to a motion 
are not considered 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 
Administrative Trademark Judge of the Trademark Trial and Appeal Board 
or by an Interlocutory Attorney 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 party may not file a motion for summary judgment until the 
party has made its initial disclosures, except for a motion asserting 
claim or issue preclusion or lack of jurisdiction by the Trademark Trial 
and Appeal Board.

[[Page 289]]

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 thirty 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 thirty 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. 
A reply brief, if filed, shall be filed within fifteen 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. The Board will consider no 
further papers in support of or in opposition to a motion for summary 
judgment.
    (2) For purposes of summary judgment only, the Board will consider 
any of the following, if a copy is provided with the party's brief on 
the summary judgment motion: written disclosures or disclosed documents, 
a discovery deposition or any part thereof with any exhibit to the part 
that is filed, an interrogatory and answer thereto with any exhibit made 
part of the answer, a request for production and the documents or things 
produced in response thereto, or a 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; 68 FR 55768, Sept. 
26, 2003; 72 FR 42262, Aug. 1, 2007]



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 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 must be submitted in written form and must meet the 
requirements prescribed in Sec. 2.126. Each brief shall contain an 
alphabetical index of cited cases. 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 the facts, argument, and summary; and a reply brief shall 
not exceed twenty-five pages in its entirety.

[48 FR 23140, May 23, 1983; 48 FR 27226, June 14, 1983, as amended at 54 
FR 34900, Aug. 22, 1989; 68 FR 55768, Sept. 26, 2003]

[[Page 290]]



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 
Administrative Trademark Judges 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; 72 FR 42263, Aug. 
1, 2007]



Sec. 2.130  New matter suggested by the trademark examining attorney.

    If, while an inter partes proceeding involving an application under 
section 1 or 44 of the Act is pending, facts appear which, in the 
opinion of the trademark examining attorney, render the mark in the 
application unregistrable, the facts should be called to the attention 
of the Trademark Trial and Appeal Board. The Board may suspend the 
proceeding and refer the application to the trademark examining attorney 
for an ex parte determination of the question of registrability. A copy 
of the trademark examining attorney's final action will be furnished to 
the parties to the inter partes proceeding following the final 
determination of registrability by the trademark examining attorney or 
the Board on appeal. The Board will consider the application for such 
further inter partes action as may be appropriate.

[68 FR 55768, Sept. 26, 2003]



Sec. 2.131  Remand after decision in inter partes proceeding.

    If, during an inter partes proceeding involving an application under 
section 1 or 44 of the Act, facts are disclosed which appear to render 
the mark 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 remand 
the application to the trademark examining attorney for reexamination in 
the event the applicant ultimately prevails in the inter partes 
proceeding. Upon remand, the trademark examining attorney shall 
reexamine the application in light of the reference by the Board. If, 
upon reexamination, the trademark examining attorney finally refuses 
registration to the applicant, an appeal may be taken as provided by 
Sec. Sec. 2.141 and 2.142.

[68 FR 55768, Sept. 26, 2003]

[[Page 291]]



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 subject to an opposition may not be amended in 
substance nor may a registration subject to a cancellation 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 
upon motion granted by the Board.
    (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 application or registration, the Board 
will allow the party time in which to file a motion that the application 
or registration be amended to conform to the findings of the 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, as amended at 72 FR 42263, Aug. 1, 2007]



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

[[Page 292]]

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 action of trademark examining attorney.

    (a) An applicant may, upon final refusal by the trademark examining 
attorney, 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, within six months of the date of issuance of the final action. 
A second refusal on the same grounds may be considered as final by the 
applicant for purpose of appeal.
    (b) The applicant must pay an appeal fee for each class from which 
the appeal is taken. If the applicant does not pay an appeal fee for at 
least one class of goods or services before expiration of the six-month 
statutory filing period, the application will be abandoned. In a 
multiple-class application, if an appeal fee is submitted for fewer than 
all classes, the applicant must specify the class(es) in which the 
appeal is taken. If the applicant timely submits a fee sufficient to pay 
for an appeal in at least one class, but insufficient to cover all the 
classes, and the applicant has not specified the class(es) to which the 
fee applies, the Board will issue a written notice setting a time limit 
in which the applicant may either pay the additional fees or specify the 
class(es) being appealed. If the applicant does not submit the required 
fee or specify the class(es) being appealed within the set time period, 
the Board will apply the fee(s) to the class(es) in ascending order, 
beginning with the lowest numbered class.

[73 FR 67772, Nov. 17, 2008]



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 the final refusal or the date 
of the action from which the appeal is taken. An appeal is taken by 
filing a notice of appeal in written form, as prescribed in Sec. 2.126, 
and paying the appeal fee.
    (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.

[[Page 293]]

    (2) Briefs must be submitted in written form and must meet the 
requirements prescribed in Sec. 2.126. Each brief shall contain an 
alphabetical index of cited cases. Without prior leave of the Trademark 
Trial and Appeal Board, a brief shall not exceed twenty-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 the 
facts, argument, and summary.
    (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 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 
Administrative Trademark Judges 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 the appellant's 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 Sec. Sec. 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 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

[[Page 294]]

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 
Sec. Sec. 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 Director, but a petition to 
the Director 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; 68 
FR 55768, Sept. 26, 2003; 72 FR 42263, Aug. 1, 2007]



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 Director (Sec. Sec. 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 Director (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 Director, 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) Notices of appeal directed to the Director shall be mailed to or 
served by hand on the General Counsel, according to part 104 of this 
chapter, with a duplicate copy mailed or served by hand on the Trademark 
Trial and Appeal Board.
    (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 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 Office, addressed to the

[[Page 295]]

Office of the General Counsel, according to part 104 of this chapter, 
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) In order to avoid premature termination of a proceeding, a party 
who commences a civil action, pursuant to section 21(b) of the Act, must 
file written notice thereof at the Trademark Trial and Appeal Board.
    (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 Director, 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 Director, 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 Director 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; 68 FR 14337, Mar. 25, 2003; 68 FR 55769, Sept. 26, 2003]

                  Petitions and Action by the Director



Sec. 2.146  Petitions to the Director.

    (a) Petition may be taken to the Director:
    (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 Director;
    (3) To invoke the supervisory authority of the Director in 
appropriate circumstances;
    (4) In any case not specifically defined and provided for by this 
part of 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,

[[Page 296]]

3, 4, 5, 6 and 23 of the Act of 1946, are not considered to be 
appropriate subject matter for petitions to the Director.
    (c) Every petition to the Director must include a statement of the 
facts relevant to the petition, the points to be reviewed, the action or 
relief requested, and the fee required by Sec. 2.6. Any brief in 
support of the petition should be embodied in or accompany the petition. 
The petitioner, someone with legal authority to bind the petitioner 
(e.g., a corporate officer or general partner of a partnership), or a 
practitioner who meets the requirements of Sec. 11.14 of this chapter 
must sign the petition. When facts are to be proved on petition, the 
petitioner must submit proof in the form of affidavits or declarations 
in accordance with Sec. 2.20, signed by someone with firsthand 
knowledge of the facts to be proved, and any exhibits.
    (d) A petition must be filed within two months of the date of 
issuance of the action from which relief is requested, unless a 
different deadline is specified elsewhere in this chapter.
    (e)(1) A petition from the grant or denial of a request for an 
extension of time to file a notice of opposition must be filed within 
fifteen days from the date of issuance of the grant or denial of the 
request. A petition from the grant of a request must 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 must be served on the attorney or other authorized 
representative of the applicant, if any, or on the applicant. Proof of 
service of the petition must be made as provided by Sec. 2.119. 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 must serve a copy of the response on the petitioner, with proof of 
service as provided by Sec. 2.119. No further document relating to the 
petition may be filed.
    (2) A petition from an interlocutory order of the Trademark Trial 
and Appeal Board must be filed within thirty days after the date of 
issuance of the order from which relief is requested. Any brief in 
response to the petition must be filed, with any supporting exhibits, 
within fifteen days from the date of service of the petition. Petitions 
and responses to petitions, and any documents accompanying a petition or 
response under this subsection must be served on every adverse party 
pursuant to Sec. 2.119.
    (f) An oral hearing will not be held on a petition except when 
considered necessary by the Director.
    (g) The mere filing of a petition to the Director 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 Sec. Sec. 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 Director.
    (i) Where a petitioner seeks to reactivate an application or 
registration that was abandoned, cancelled or expired because documents 
were lost or mishandled, the Director may deny the petition if the 
petitioner was not diligent in checking the status of the application or 
registration. To be considered diligent, a petitioner must:
    (1) During the pendency of an application, check the status of the 
application every six months between the filing date of the application 
and issuance of a registration;
    (2) After registration, check the status of the registration every 
six months from the filing of an affidavit of use or excusable nonuse 
under section 8 or 71 of the Act, or a renewal application under section 
9 of the Act, until the petitioner receives notice that the affidavit or 
renewal application has been accepted; and
    (3) If the status check reveals that the Office has not received a 
document filed by the petitioner, or that the Office has issued an 
action or notice that the petitioner has not received, the petitioner 
must promptly request corrective action.
    (j) If the Director denies a petition, the petitioner may request 
reconsideration, if the petitioner:

[[Page 297]]

    (1) Files the request within two months of the date of issuance of 
the decision denying the petition; and
    (2) Pays a second petition fee under Sec. 2.6.

[48 FR 23142, May 23, 1983; 48 FR 27226, June 14, 1983, as amended at 63 
FR 48100, Sept. 9, 1998; 64 FR 48924, Sept. 8, 1999; 68 FR 55769, Sept. 
26, 2003; 73 FR 67773, Nov. 17, 2008]



Sec. 2.147  [Reserved]



Sec. 2.148  Director 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 
Director.

                               Certificate



Sec. 2.151  Certificate.

    When the Office determines that a mark is registrable, the Office 
will issue a certificate stating that the applicant is entitled to 
registration on the Principal Register or on the Supplemental Register. 
The certificate will state the application filing date, the act under 
which the mark is registered, the date of issue, and the number of the 
registration. A reproduction of the mark and pertinent data from the 
application will be sent with the certificate. A notice of the 
requirements of sections 8 and 71 of the Act will accompany the 
certificate.

[68 FR 55769, Sept. 26, 2003]

             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.

    The owner 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 or services in the registration on 
or in connection with which said mark is in use in commerce, and stating 
that the owner claims the benefits of the Trademark Act of 1946. The 
affidavit or declaration must be signed by a person properly authorized 
to sign on behalf of the owner (Sec. 2.161(b)).

[73 FR 67773, Nov. 17, 2008]



Sec. 2.154  Publication inOfficial 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.

    The Office will send the registrant a notice of publication of the 
mark and of the requirement for filing the affidavit or declaration 
required by section 8 of the Act.

[64 FR 48924, Sept. 8, 1999]



Sec. 2.156  Not subject to opposition; subject to cancellation.

    The published mark is not subject to opposition, but is subject to 
petitions to cancel as specified in Sec. 2.111 and to cancellation for 
failure to file the affidavit or declaration required by section 8 of 
the Act.

[64 FR 48924, Sept. 8, 1999]

           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

    Authority: Secs. 2.161 to 2.165 also issued under sec. 8, 60 Stat. 
431; 15 U.S.C. 1058.

[[Page 298]]



Sec. 2.160  Affidavit or declaration of continued use or excusable nonuse
required to avoid cancellation of registration.

    (a) During the following time periods, the owner of the registration 
must file an affidavit or declaration of continued use or excusable 
nonuse, or the registration will be cancelled:
    (1)(i) For registrations issued under the Trademark Act of 1946, on 
or after the fifth anniversary and no later than the sixth anniversary 
after the date of registration; or
    (ii) For registrations issued under prior Acts, on or after the 
fifth anniversary and no later than the sixth anniversary after the date 
of publication under section 12(c) of the Act; and
    (2) For all registrations, within the year before the end of every 
ten-year period after the date of registration.
    (3) The affidavit or declaration may be filed within a grace period 
of six months after the end of the deadline set forth in paragraphs 
(a)(1) and (a)(2) of this section, with payment of the grace period 
surcharge required by section 8(c)(1) of the Act and Sec. 2.6.
    (b) For the requirements for the affidavit or declaration, see Sec. 
2.161.

[64 FR 48924, Sept. 8, 1999]



Sec. 2.161  Requirements for a complete affidavit or declaration of 
continued use or excusable nonuse.

    A complete affidavit or declaration under section 8 of the Act must:
    (a) Be filed by the owner within the period set forth in Sec. 
2.160(a);
    (b) Include a statement that is signed and verified (sworn to) or 
supported by a declaration under Sec. 2.20 by a person properly 
authorized to sign on behalf of the owner, attesting to the continued 
use or excusable nonuse of the mark within the period set forth in 
section 8 of the Act. The verified statement must be executed on or 
after the beginning of the filing period specified in Sec. 2.160(a). A 
person who is properly authorized to sign on behalf of the owner is:
    (1) A person with legal authority to bind the owner; or
    (2) A person with firsthand knowledge of the facts and actual or 
implied authority to act on behalf of the owner; or
    (3) An attorney as defined in Sec. 11.1 of this chapter who has an 
actual or implied written or verbal power of attorney from the owner.
    (c) Include the registration number;
    (d)(1) Include the fee required by Sec. 2.6 for each class of goods 
or services that the affidavit or declaration covers;
    (2) If the affidavit or declaration is filed during the grace period 
under section 8(c)(1) of the Act, include the late fee per class 
required by Sec. 2.6;
    (3) If at least one fee is submitted for a multi-class registration, 
but the class(es) to which the fee(s) should be applied are not 
specified, the Office will issue a notice requiring either the 
submission of additional fee(s) or an indication of the class(es) to 
which the original fee(s) should be applied. Additional fee(s) may be 
submitted if the requirements of Sec. 2.164 are met. If the required 
fee(s) are not submitted and the class(es) to which the original fee(s) 
should be applied are not specified, the Office will presume that the 
fee(s) cover the classes in ascending order, beginning with the lowest 
numbered class;
    (e)(1) Specify the goods or services for which the mark is in use in 
commerce, and/or the goods or services for which excusable nonuse is 
claimed under Sec. 2.161(f)(2);
    (2) If the affidavit or declaration covers less than all the goods 
or services, or less than all the classes in the registration, specify 
the goods or services being deleted from the registration;
    (f)(1) State that the registered mark is in use in commerce on or in 
connection with the goods or services in the registration; or
    (2) If the registered mark is not in use in commerce on or in 
connection with all the goods or services in the registration, set forth 
the date when use of the mark in commerce stopped and the approximate 
date when use is expected to resume; and recite facts to show that 
nonuse as to those goods or services is due to special circumstances 
that excuse the nonuse and is not due to an intention to abandon the 
mark;
    (g) Include a specimen showing current use of the mark for each 
class of goods or services, unless excusable nonuse is claimed under 
Sec. 2.161(f)(2). The specimen must:

[[Page 299]]

    (1) Show the mark as actually used on or in connection with the 
goods or in the sale or advertising of the services. A photocopy or 
other reproduction of the specimen showing the mark as actually used is 
acceptable. However, a photocopy that merely reproduces the registration 
certificate is not a proper specimen;
    (2) Be flat and no larger than 8.5 inches (21.6 cm.) wide by 11.69 
inches (29.7 cm.) long. If a specimen exceeds these size requirements (a 
``bulky specimen''), the Office will create a facsimile of the specimen 
that meets the requirements of the rule (i.e., is flat and no larger 
than 8.5 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long) and put 
it in the record. In the absence of non-bulky alternatives, the Office 
may accept an audio or video cassette tape recording, CD-ROM, or a 
specimen in another appropriate medium.
    (3) Be a digitized image in .jpg or .pdf format, if transmitted 
through TEAS.

[64 FR 48924, Sept. 8, 1999, as amended at 67 FR 79522, Dec. 30, 2002; 
68 FR 55769, Sept. 26, 2003; 73 FR 47686, Aug. 14, 2008; 73 FR 67773, 
Nov. 17, 2008]



Sec. 2.162  Notice to registrant.

    When a certificate of registration is originally issued, the Office 
includes a notice of the requirement for filing the affidavit or 
declaration of use or excusable nonuse under section 8 of the Act. 
However the affidavit or declaration must be filed within the time 
period required by section 8 of the Act even if this notice is not 
received.

[64 FR 48925, Sept. 8, 1999]



Sec. 2.163  Acknowledgment of receipt of affidavit or declaration.

    The Office will issue a notice as to whether an affidavit or 
declaration is acceptable, or the reasons for refusal.
    (a) If the owner of the registration filed the affidavit or 
declaration within the time periods set forth in section 8 of the Act, 
deficiencies may be corrected if the requirements of Sec. 2.164 are 
met.
    (b) A response to the refusal must be filed within six months of the 
date of issuance of the Office action, or before the end of the filing 
period set forth in section 8(a) or section 8(b) of the Act, whichever 
is later. The response must be signed by the owner, someone with legal 
authority to bind the owner (e.g., a corporate officer or general 
partner of a partnership), or a practitioner qualified to practice under 
Sec. 11.14 of this chapter.
    (c) If no response is filed within this time period, the 
registration will be cancelled, unless time remains in the grace period 
under section 8(c)(1) of the Act. If time remains in the grace period, 
the owner may file a complete new affidavit.

[64 FR 48925, Sept. 8, 1999, as amended at 73 FR 67773, Nov. 17, 2008]



Sec. 2.164  Correcting deficiencies in affidavit or declaration.

    (a) If the owner of the registration files an affidavit or 
declaration within the time periods set forth in section 8 of the Act, 
deficiencies may be corrected, as follows:
    (1) Correcting deficiencies in affidavits or declarations timely 
filed within the periods set forth in sections 8(a) and 8(b) of the Act. 
If the owner timely files the affidavit or declaration within the 
relevant filing period set forth in section 8(a) or section 8(b) of the 
Act, deficiencies may be corrected before the end of this filing period 
without paying a deficiency surcharge. Deficiencies may be corrected 
after the end of this filing period with payment of the deficiency 
surcharge required by section 8(c)(2) of the Act and Sec. 2.6.
    (2) Correcting deficiencies in affidavits or declarations filed 
during the grace period. If the affidavit or declaration is filed during 
the six-month grace period provided by section 8(c)(1) of the Act, 
deficiencies may be corrected before the expiration of the grace period 
without paying a deficiency surcharge. Deficiencies may be corrected 
after the expiration of the grace period with payment of the deficiency 
surcharge required by section 8(c)(2) of the Act and Sec. 2.6.
    (b) If the affidavit or declaration is not filed within the time 
periods set forth in section 8 of the Act, or if it is filed within that 
period by someone other than the owner, the registration will be 
cancelled. These deficiencies cannot be cured.

[64 FR 48925, Sept. 8, 1999]

[[Page 300]]



Sec. 2.165  Petition to Director to review refusal.

    (a) A response to the examiner's initial refusal to accept an 
affidavit or declaration is required before filing a petition to the 
Director, unless the examiner directs otherwise. See Sec. 2.163(b) for 
the deadline for responding to an examiner's Office action.
    (b) If the examiner maintains the refusal of the affidavit or 
declaration, the owner may file a petition to the Director to review the 
action. The petition must be filed within six months of the date of 
issuance of the action maintaining the refusal, or the Office will 
cancel the registration and issue a notice of the cancellation.
    (c) A decision by the Director is necessary before filing an appeal 
or commencing a civil action in any court.

[64 FR 48925, Sept. 8, 1999, as amended at 73 FR 67773, Nov. 17, 2008]



Sec. 2.166  Affidavit of continued use or excusable nonuse combined with
renewal application.

    An affidavit or declaration under section 8 of the Act and a renewal 
application under section 9 of the Act may be combined into a single 
document, provided that the document meets the requirements of both 
sections 8 and 9 of the Act.

[64 FR 48925, Sept. 8, 1999]

                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 verified (sworn to) or supported by a declaration under Sec. 
2.20, signed by the owner of the registration or a person properly 
authorized to sign on behalf of the owner (Sec. 2.161(b));
    (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 after the date of registration or date of 
publication under section 12(c) of the Act, and is still in use in 
commerce;
    (d) Specify that there has been no final decision adverse to the 
owner's claim of ownership of such mark for such goods or services, or 
to the owner'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 Office will issue a notice acknowledging receipt of 
the affidavit or declaration.

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 
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; 
64 FR 48925, Sept. 8, 1999; 73 FR 67773, Nov. 17, 2008]



Sec. 2.168  Affidavit or declaration under section 15 combined with
affidavit or declaration under section 8, or with renewal application.

    (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, 
if the affidavit or declaration meets the requirements of both sections 
8 and 15.

[[Page 301]]

    (b) The affidavit or declaration filed under section 15 of the Act 
may be combined with an application for renewal of a registration under 
section 9 of the Act, if the requirements of both sections 9 and 15 are 
met.

[64 FR 48925, Sept. 8, 1999]

                 Correction, Disclaimer, Surrender, Etc.



Sec. 2.171  New certificate on change of ownership.

    (a) Full change of ownership. If the ownership of a registered mark 
changes, the new owner may request that a new certificate of 
registration be issued in the name of the new owner. The assignment or 
other document changing title must be recorded in the Office. The 
request for the new certificate must include the fee required by Sec. 
2.6(a)(8) and be signed by the owner of the registration, someone with 
legal authority to bind the owner (e.g., a corporate officer or general 
partner of a partnership), or a practitioner qualified to practice under 
Sec. 11.14 of this chapter. In a registered extension of protection, 
the assignment must be recorded with the International Bureau of the 
World Intellectual Property Organization before it can be recorded in 
the Office (see Sec. 7.22).
    (b) Partial change of ownership. (1) In a registration resulting 
from an application based on section 1 or 44 of the Act, if ownership of 
a registration has changed with respect to some but not all of the goods 
and/or services, the owner(s) may file a request that the registration 
be divided into two or more separate registrations. The assignment or 
other document changing title must be recorded in the Office. The 
request to divide must include the fee required by Sec. 2.6(a)(8) for 
each new registration created by the division, and be signed by the 
owner of the registration, someone with legal authority to bind the 
owner (e.g., a corporate officer or general partner of a partnership), 
or a practitioner qualified to practice under Sec. 11.14 of this 
chapter.
    (2)(i) When the International Bureau of the World Intellectual 
Property Organization notifies the Office that an international 
registration has been divided as the result of a change of ownership 
with respect to some but not all of the goods or services, the Office 
will construe the International Bureau's notice as a request to divide. 
The Office will record the partial change of ownership in the Assignment 
Services Branch, and divide out the assigned goods/services from the 
registered extension of protection (parent registration), issue an 
updated certificate for the parent registration, and publish notice of 
the parent registration in the Official Gazette.
    (ii) The Office will create a new registration number for the child 
registration, and enter the information about the new registration in 
its automated records. The Office will notify the new owner that the new 
owner must pay the fee required by Sec. 2.6 to obtain a new 
registration certificate for the child registration. It is not necessary 
for the new owner to file a separate request to divide.
    (iii) The Office will not divide a registered extension of 
protection unless the International Bureau notifies the Office that the 
international registration has been divided.

[73 FR 67774, Nov. 17, 2008]



Sec. 2.172  Surrender for cancellation.

    Upon application by the registrant, the Director may permit any 
registration to be surrendered for cancellation. An application for 
surrender must be signed by the registrant. When there is more than one 
class in a registration, one or more entire class(es) but less than the 
total number of classes may be surrendered. 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).

[69 FR 51364, Aug. 19, 2004]



Sec. 2.173  Amendment of registration.

    (a) Form of amendment. The owner of a registration may apply to 
amend a registration or to disclaim part of the mark in the 
registration. The owner must submit a written request specifying the 
amendment or disclaimer. If the registration is involved in an inter 
partes proceeding before the Trademark Trial and Appeal Board, the 
request must be filed by appropriate motion to the Board.

[[Page 302]]

    (b) Requirements for request. A request for amendment or disclaimer 
must:
    (1) Include the fee required by Sec. 2.6;
    (2) Be signed by the owner of the registration, someone with legal 
authority to bind the owner (e.g., a corporate officer or general 
partner of a partnership), or a practitioner who meets the requirements 
of Sec. 11.14, and verified or supported by a declaration under Sec. 
2.20; and
    (3) If the amendment involves a change in the mark: a new specimen 
showing the mark as used on or in connection with the goods or services; 
an affidavit or declaration under Sec. 2.20 stating that the specimen 
was in use in commerce at least as early as the filing date of the 
amendment; and a new drawing of the amended mark.
    (c) Registration must still contain registrable matter. The 
registration as amended must still contain registrable matter, and the 
mark as amended must be registrable as a whole.
    (d) Amendment may not materially alter the mark. An amendment or 
disclaimer must not materially alter the character of the mark.
    (e) Amendment of identification of goods. No amendment in the 
identification of goods or services in a registration will be permitted 
except to restrict the identification or to change it in ways that would 
not require republication of the mark.
    (f) Conforming amendments may be required. If the registration 
includes a disclaimer, description of the mark, or other miscellaneous 
statement, any request to amend the registration must include a request 
to make any necessary conforming amendments to the disclaimer, 
description, or other statement.
    (g) Elimination of disclaimer. No amendment seeking the elimination 
of a disclaimer will be permitted, unless deletion of the disclaimed 
portion of the mark is also sought.

[73 FR 67774, Nov. 17, 2008]



Sec. 2.174  Correction of Office mistake.

    Whenever Office records clearly disclose a material mistake in a 
registration, incurred through the fault of the Office, the Office will 
issue a certificate of correction stating the fact and nature of the 
mistake, signed by the Director or by an employee designated by the 
Director, without charge. Thereafter, the corrected certificate shall 
have the same effect as if it had been originally issued in the 
corrected form. In the discretion of the Director, the Office may issue 
a new certificate of registration without charge.

[73 FR 67774, Nov. 17, 2008]



Sec. 2.175  Correction of mistake by owner.

    (a) Whenever a mistake has been made in a registration and a showing 
has been made that the mistake occurred in good faith through the fault 
of the owner, the Director may issue a certificate of correction. In the 
discretion of the Director, the Office may issue a new certificate upon 
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) An application for such action must:
    (1) Include the following:
    (i) Specification of the mistake for which correction is sought;
    (ii) Description of the manner in which it arose; and
    (iii) A showing that it occurred in good faith;
    (2) Be signed by the owner of the registration, someone with legal 
authority to bind the owner (e.g., a corporate officer or general 
partner of a partnership), or a practitioner who meets the requirements 
of Sec. 11.14 of this chapter, and verified or include a declaration in 
accordance with Sec. 2.20; and
    (3) Be accompanied by the required fee.

(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; 69 
FR 51364, Aug. 19, 2004; 73 FR 67774, Nov. 17, 2008]



Sec. 2.176  Consideration of above matters.

    The matters in Sec. Sec. 2.171 to 2.175 will be considered in the 
first instance by the Post Registration examiners, except for requests 
to amend registrations involved in inter partes proceedings before the 
Trademark Trial and Appeal Board, as specified in Sec. 2.173(a), which 
shall be considered by the Board. If an

[[Page 303]]

action of the examiner is adverse, the owner of the registration may 
petition the Director to review the action under Sec. 2.146. If the 
owner does not respond to an adverse action of the examiner within six 
months of the date of issuance, the matter will be considered abandoned.

[73 FR 67774, Nov. 17, 2008]

                            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) Subject to the provisions of section 8 of the Act requiring 
an affidavit or declaration of continued use or excusable nonuse, 
registrations issued or renewed 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 the date of renewal, and 
may be further renewed for periods of ten years, unless previously 
cancelled or surrendered.
    (2) Subject to the provisions of section 8 of the Act requiring an 
affidavit or declaration of continued use or excusable nonuse, 
registrations issued or renewed 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 the date of renewal, and 
may be further renewed for periods of ten years, 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 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; 
64 FR 48926, Sept. 8, 1999]



Sec. 2.182  Time for filing renewal application.

    An application for renewal must be filed within one year before the 
expiration date of the registration, or within the six-month grace 
period after the expiration date of the registration. If no renewal 
application is filed within this period, the registration will expire.

[64 FR 48926, Sept. 8, 1999]



Sec. 2.183  Requirements for a complete renewal application.

    A complete renewal application must include:
    (a) A request for renewal of the registration, signed by the 
registrant or the registrant's representative;
    (b) The fee required by Sec. 2.6 for each class;
    (c) The additional fee required by Sec. 2.6 for each class if the 
renewal application is filed during the six-month grace period set forth 
in section 9(a) of the Act;
    (d) If the renewal application covers less than all the goods or 
services in the registration, a list of the particular goods or services 
to be renewed.
    (e) If at least one fee is submitted for a multi-class registration, 
but the class(es) to which the fee(s) should be applied are not 
specified, the Office will issue a notice requiring either the 
submission of additional fee(s) or an indication of the class(es) to 
which the original fee(s) should be applied. Additional fee(s) may be 
submitted if the requirements of Sec. 2.185 are met. If the required 
fee(s) are not submitted and the class(es) to which the original fee(s) 
should be applied are not specified, the Office will presume that the 
fee(s) cover the classes in ascending order, beginning with the lowest 
numbered class.
    (f) Renewals of registrations issued under a prior classification 
system will be processed on the basis of that system, unless the 
registration has been amended to adopt international classification 
pursuant to Sec. 2.85(e)(3).

[64 FR 48926, Sept. 8, 1999, as amended at 67 FR 79523, Dec. 30, 2002; 
73 FR 67775, Nov. 17, 2008]

[[Page 304]]



Sec. 2.184  Refusal of renewal.

    (a) If the renewal application is not acceptable, the Office will 
issue a notice stating the reason(s) for refusal.
    (b)(1) The registrant must file a response to the refusal of renewal 
within six months of the date of issuance of the Office action, or 
before the expiration date of the registration, whichever is later. If 
no response is filed within this time period, the registration will 
expire, unless time remains in the grace period under section 9(a) of 
the Act. If time remains in the grace period, the registrant may file a 
complete new renewal application.
    (2) The registrant, someone with legal authority to bind the 
registrant (e.g., a corporate officer or general partner of a 
partnership), or a practitioner who meets the requirements of Sec. 
11.14 must sign the response.
    (c) If the renewal application is not filed within the time periods 
set forth in section 9(a) of the Act, the registration will expire.

[64 FR 48926, Sept. 8, 1999, as amended at 73 FR 67775, Nov. 17, 2008]



Sec. 2.185  Correcting deficiencies in renewal application.

    (a) If the renewal application is filed within the time periods set 
forth in section 9(a) of the Act, deficiencies may be corrected, as 
follows:
    (1) Correcting deficiencies in renewal applications filed within one 
year before the expiration date of the registration. If the renewal 
application is filed within one year before the expiration date of the 
registration, deficiencies may be corrected before the expiration date 
of the registration without paying a deficiency surcharge. Deficiencies 
may be corrected after the expiration date of the registration with 
payment of the deficiency surcharge required by section 9(a) of the Act 
and Sec. 2.6.
    (2) Correcting deficiencies in renewal applications filed during the 
grace period. If the renewal application is filed during the six-month 
grace period, deficiencies may be corrected before the expiration of the 
grace period without paying a deficiency surcharge. Deficiencies may be 
corrected after the expiration of the grace period with payment of the 
deficiency surcharge required by section 9(a) of the Act and Sec. 2.6.
    (b) If the renewal application is not filed within the time periods 
set forth in section 9(a) of the Act, the registration will expire. This 
deficiency cannot be cured.

[64 FR 48926, Sept. 8, 1999]



Sec. 2.186  Petition to Director to review refusal of renewal.

    (a) A response to the examiner's initial refusal of the renewal 
application is required before filing a petition to the Director, unless 
the examiner directs otherwise. See Sec. 2.184(b) for the deadline for 
responding to an examiner's Office action.
    (b) If the examiner maintains the refusal of the renewal 
application, a petition to the Director to review the refusal may be 
filed. The petition must be filed within six months of the date of 
issuance of the Office action maintaining the refusal, or the renewal 
application will be abandoned and the registration will expire.
    (c) A decision by the Director is necessary before filing an appeal 
or commencing a civil action in any court.

[64 FR 48926, Sept. 8, 1999, as amended at 73 FR 67775, Nov. 17, 2008]

        General Information and Correspondence in Trademark Cases

    Source: 68 FR 48289, Aug. 13, 2003, unless otherwise noted.



Sec. Sec. 2.188-2.189  [Reserved]



Sec. 2.190  Addresses for trademark correspondence with the
United States Patent and Trademark Office.

    (a) Trademark correspondence. In general. All trademark-related 
documents filed on paper, except documents sent to the Assignment 
Services Division for recordation; requests for copies of trademark 
documents; and certain documents filed under the Madrid Protocol as 
specified in paragraph (e) of this section, should be addressed to: 
Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451. 
All trademark-related documents may be delivered by hand, during the 
hours the Office is open to receive correspondence, to the Trademark 
Assistance Center,

[[Page 305]]

James Madison Building--East Wing, Concourse Level, 600 Dulany Street, 
Alexandria, Virginia 22314.
    (b) Electronic trademark documents. An applicant may transmit a 
trademark document through TEAS, at http://www.uspto.gov.
    (c) Trademark assignments. Requests to record documents in the 
Assignment Services Division may be filed through the Office's web site, 
at http://www.uspto.gov. Paper documents and cover sheets to be recorded 
in the Assignment Services Division should be addressed to: Mail Stop 
Assignment Recordation Services, Director of the United States Patent 
and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. 
See Sec. 3.27 of this chapter.
    (d) Requests for copies of trademark documents. Copies of trademark 
documents can be ordered through the Office's web site at www.uspto.gov. 
Paper requests for certified or uncertified copies of trademark 
documents should be addressed to: Mail Stop Document Services, Director 
of the United States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, Virginia 22313-1450.
    (e) Certain Documents Relating to International Applications and 
Registrations. International applications under Sec. 7.11, subsequent 
designations under Sec. 7.21, responses to notices of irregularity 
under Sec. 7.14, requests to record changes in the International 
Register under Sec. 7.23 and Sec. 7.24, requests to note replacements 
under Sec. 7.28, requests for transformation under Sec. 7.31, and 
petitions to the Director to review an action of the Office's Madrid 
Processing Unit, when filed by mail, must be mailed to: Madrid 
Processing Unit, 600 Dulany Street, MDE-7B87, Alexandria, VA 22314-5793.

[68 FR 48289, Aug. 13, 2003, as amended at 69 FR 57184, Sept. 24, 2004; 
69 FR 63321, Nov. 1, 2004; 72 FR 18908, Apr. 16, 2007]



Sec. 2.191  Business to be transacted in writing.

    All business with the Office should be transacted in writing. The 
personal appearance of applicants or their representatives at the Office 
is unnecessary. The action of the Office will be based exclusively on 
the written record. No attention will be paid to any alleged oral 
promise, stipulation, or understanding in relation to which there is 
disagreement or doubt. The Office encourages parties to file documents 
through TEAS wherever possible.



Sec. 2.192  Business to be conducted with decorum and courtesy.

    Trademark applicants, registrants, and parties to proceedings before 
the Trademark Trial and Appeal Board and their attorneys or agents are 
required to conduct their business with decorum and courtesy. Documents 
presented in violation of this requirement will be submitted to the 
Director and will be returned by the Director's direct order. Complaints 
against trademark examining attorneys and other employees must be made 
in correspondence separate from other documents.



Sec. 2.193  Trademark correspondence and signature requirements.

    (a) Since each file must be complete in itself, a separate copy of 
every document to be filed in a trademark application, trademark 
registration file, or proceeding before the Trademark Trial and Appeal 
Board must be furnished for each file to which the document pertains, 
even though the contents of the documents filed in two or more files may 
be identical. Parties should not file duplicate copies of 
correspondence, unless the Office requires the filing of duplicate 
copies. The Office may dispose of duplicate copies of correspondence.
    (b) Since different matters may be considered by different branches 
or sections of the Office, each distinct subject, inquiry or order must 
be contained in a separate document to avoid confusion and delay in 
answering correspondence dealing with different subjects.
    (c)(1) Each piece of correspondence that requires a person's 
signature, must:
    (i) Be an original, that is, have an original signature personally 
signed in permanent ink by that person; or
    (ii) Be a copy, such as a photocopy or facsimile transmission (Sec. 
2.195(c)), of an original. In the event that a copy of the original is 
filed, the original should be retained as evidence of authenticity.

[[Page 306]]

If a question of authenticity arises, the Office may require submission 
of the original; or
    (iii) Where an electronically transmitted trademark filing is 
permitted or required, the person who signs the filing must either:
    (A) Place a symbol comprised of numbers and/or letters between two 
forward slash marks in the signature block on the electronic submission; 
or
    (B) Sign the verified statement using some other form of electronic 
signature specified by the Director.
    (2) The presentation to the Office (whether by signing, filing, 
submitting, or later advocating) of any document by a party, whether a 
practitioner or non-practitioner, constitutes a certification under 
Sec. 11.18(b) of this chapter. Violations of Sec. 11.18(b)(2) of this 
chapter by a party, whether a practitioner or non-practitioner, may 
result in the imposition of sanctions under Sec. 11.18(c) of this 
chapter. Any practitioner violating Sec. 11.18(b) may also be subject 
to disciplinary action. See Sec. Sec. 11.18(d) and 11.23(c)(15).
    (d) 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.

[68 FR 48289, Aug. 13, 2003, as amended at 73 FR 47686, Aug. 14, 2008]



Sec. 2.194  Identification of trademark application or registration.

    (a) No correspondence relating to a trademark application should be 
filed prior to receipt of the application serial number.
    (b) (1) A letter about a trademark application should identify the 
serial number, the name of the applicant, and the mark.
    (2) A letter about a registered trademark should identify the 
registration number, the name of the registrant, and the mark.



Sec. 2.195  Receipt of trademark correspondence.

    (a) Date of receipt and Express Mail date of deposit. Trademark 
correspondence received in the Office is given a filing date as of the 
date of receipt except as follows:
    (1) The 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 electronically under 
paragraph (a)(2) of this section or transmitted by facsimile under 
paragraph (a)(3) of this section, no correspondence is received in the 
Office on Saturdays, Sundays, or Federal holidays within the District of 
Columbia.
    (2) Trademark-related correspondence transmitted electronically will 
be given a filing date as of the date on which the Office receives the 
transmission.
    (3) Correspondence transmitted by facsimile will be given a filing 
date as of the date on which the complete transmission is received in 
the Office unless that date is a Saturday, Sunday, or Federal holiday 
within the District of Columbia, in which case the filing date will be 
the next succeeding day that is not a Saturday, Sunday, or Federal 
holiday within the District of Columbia.
    (4) Correspondence filed in accordance with Sec. 2.198 will be 
given a filing date as of the date of deposit as ``Express Mail'' with 
the United States Postal Service.
    (b) Correspondence delivered by hand. Correspondence may be 
delivered by hand during hours the Office is open to receive 
correspondence.
    (c) Facsimile transmission. Except in the cases enumerated in 
paragraph (d) of this section, 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 Office, unless that date is 
a Saturday, Sunday, or Federal holiday within the District of Columbia. 
See Sec. 2.196. To facilitate proper processing, each transmission 
session should be limited to correspondence to be filed in a single 
application, registration or proceeding before the Office. The 
application serial number, registration number, or proceeding number 
should be entered as a part of the sender's identification on a 
facsimile cover sheet.

[[Page 307]]

    (d) Facsimile transmissions are not permitted and if submitted, will 
not be accorded a date of receipt, in the following situations:
    (1) Applications for registration of marks;
    (2) Drawings submitted under Sec. 2.51, Sec. 2.52, Sec. 2.72, or 
Sec. 2.173;
    (3) Correspondence to be filed with the Trademark Trial and Appeal 
Board, except notices of ex parte appeal;
    (4) Requests for cancellation or amendment of a registration under 
section 7(e) of the Trademark Act; and certificates of registration 
surrendered for cancellation or amendment under section 7(e) of the 
Trademark Act; and
    (5) Madrid-related correspondence submitted under Sec. 7.11, Sec. 
7.21, Sec. 7.14, Sec. 7.23, Sec. 7.24, or Sec. 7.31 of this title.
    (e) Interruptions in U.S. Postal Service. (1) If the Director 
designates a postal service interruption or emergency within the meaning 
of 35 U.S.C. 21(a), any person attempting to file correspondence by 
``Express Mail Post Office to Addressee'' service who was unable to 
deposit the correspondence with the United States Postal Service due to 
the interruption or emergency may petition the Director to consider such 
correspondence as filed on a particular date in the Office.
    (2) The petition must:
    (i) Be filed promptly after the ending of the designated 
interruption or emergency;
    (ii) Include the original correspondence or a copy of the original 
correspondence; and
    (iii) Include a statement that the correspondence would have been 
deposited with the United States Postal Service on the requested filing 
date but for the designated interruption or emergency in ''Express 
Mail'' service; and that the correspondence attached to the petition is 
the original correspondence or a true copy of the correspondence 
originally attempted to be deposited as Express Mail on the requested 
filing date.
    (3) Paragraphs (e)(1) and (e)(2) of this section do not apply to 
correspondence that is excluded from the Express Mail procedure pursuant 
to Sec. 2.198(a)(1).

[68 FR 48289, Aug. 13, 2003, as amended at 69 FR 57185, Sept. 24, 2004; 
73 FR 67775, Nov. 17, 2008]



Sec. 2.196  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 regulation under this part for taking any action or paying 
any fee in the Office falls on a Saturday, Sunday, or Federal holiday 
within the District of Columbia, the action may be taken, or the fee 
paid, on the next succeeding day that is not a Saturday, Sunday, or a 
Federal holiday.



Sec. 2.197  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 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. 2.190 and deposited with the U.S. 
Postal Service with sufficient postage as first class mail; or
    (B) Transmitted by facsimile to the Office in accordance with Sec. 
2.195(c); 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 a 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:
    (i) Applications for the registration of marks under 15 U.S.C. 1051 
or 1126; and
    (ii) Madrid-related correspondence filed under Sec. 7.11, Sec. 
7.21, Sec. 7.14, Sec. 7.23, Sec. 7.24 or Sec. 7.31 of this title.
    (b) In the event that correspondence is considered timely filed by 
being mailed or transmitted in accordance with paragraph (a) of this 
section, but

[[Page 308]]

not received in the Office, and an application is abandoned, a 
registration is cancelled or expired, or a 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 within two months 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 that attests on a personal knowledge basis 
or to the satisfaction of the Director 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 whether 
the correspondence was timely filed.

[68 FR 48289, Aug. 13, 2003, as amended at 69 FR 57185, Sept. 24, 2004]



Sec. 2.198  Filing of correspondence by ``Express Mail.''

    (a)(1) Except for documents listed in paragraphs (a)(1)(i) through 
(vii) of this section, any correspondence received by the Office that 
was delivered by the ``Express Mail Post Office to Addressee'' service 
of the United States Postal Service (USPS) will be considered filed with 
the Office on the date of deposit with the USPS. The Express Mail 
procedure does not apply to:
    (i) Applications for registration of marks;
    (ii) Amendments to allege use under section 1(c) of the Act;
    (iii) Statements of use under section 1(d) of the Act;
    (iv) Requests for extension of time to file a statement of use under 
section 1(d) of the Act;
    (v) Affidavits of continued use under section 8 of the Act;
    (vi) Renewal requests under section 9 of the Act; and
    (vii) Requests to change or correct addresses.
    (2) The date of deposit with USPS is shown by the ``date in'' on the 
``Express Mail'' label or other official USPS notation. If the USPS 
deposit date cannot be determined, the correspondence will be accorded 
the date of receipt in the Office as the filing date.
    (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 Director 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 within two months 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; 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

[[Page 309]]

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 Director 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 within two months 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 paper(s) or fee(s) prior to the original mailing; and
    (3) The petition includes a showing that establishes, to the 
satisfaction of the Director, that the correspondence was deposited in 
the ``Express Mail Post Office to Addressee'' service prior to the last 
scheduled pickup on the requested filing date. Any showing pursuant to 
this paragraph must be corroborated by evidence from the USPS or 
evidence that came into being within one business day after the deposit 
of the correspondence in the ``Express Mail Post Office to Addressee'' 
service of the USPS.
    (e) If correspondence is properly addressed to the Office pursuant 
to Sec. 2.190 and deposited with sufficient postage in the ``Express 
Mail Post Office to Addressee'' service of the USPS, but not received by 
the Office, the party who mailed the correspondence may petition the 
Director to consider such correspondence filed in the Office on the USPS 
deposit date, provided that:
    (1) The petition is filed within two months 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) prior to the original mailing;
    (3) The petition includes a copy of the originally deposited 
paper(s) or fee(s) 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 correspondence was deposited in the ``Express Mail 
Post Office to Addressee'' service prior to the last scheduled pickup on 
the requested filing date; and
    (4) The petition includes a statement that establishes, to the 
satisfaction of the Director, 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 whether 
the correspondence was deposited as ``Express Mail'' with the USPS on 
the date in question.

[68 FR 48289, Aug. 13, 2003; 68 FR 56557, Oct. 1, 2003]

     Trademark Records and Files of the Patent and Trademark Office

    Source: 68 FR 48292, Aug. 13, 2003, unless otherwise noted.



Sec. 2.200  Assignment records open to public inspection.

    (a)(1) Separate assignment records are maintained in the Office for 
patents and trademarks. The assignment records relating to trademark 
applications and registrations (for assignments recorded on or after 
January 1, 1955) are open to public inspection at the Office, and copies 
of those assignment records may be obtained upon request and payment of 
the fee set forth in Sec. 2.6 of this chapter.
    (2) 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

[[Page 310]]

inspection. Certified and uncertified copies of those assignment records 
are provided by NARA upon request and payment of the fees required by 
NARA.
    (b) 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. 2.6(b)(10) will be 
made for the time consumed in making a search for such assignment.



Sec. 2.201  Copies and certified copies.

    (a) Non-certified copies of trademark registrations and of any 
trademark records or trademark documents within the jurisdiction of the 
Office and open to the public, will be furnished by the Office to any 
person entitled thereto, upon payment of the appropriate fee required by 
Sec. 2.6.
    (b) Certified copies of trademark registrations and of any trademark 
records or trademark documents within the jurisdiction of the Office and 
open to the public will be authenticated by the seal of the Office and 
certified by the Director, or in his or her name attested by an officer 
of the Office authorized by the Director, upon payment of the fee 
required by Sec. 2.6.

              Fees and Payment of Money in Trademark Cases

    Source: 68 FR 48292, Aug. 13, 2003, unless otherwise noted.



Sec. 2.206  Trademark fees payable in advance.

    (a) Trademark fees and charges payable to the 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.
    (b) All fees paid to the Office must be itemized in each individual 
trademark application or registration file, or trademark proceeding, so 
that the purpose for which the fees are paid is clear. The Office may 
return fees that are not itemized as required by this paragraph.



Sec. 2.207  Methods of payment.

    (a) All payments of money required in trademark cases, including 
fees for the processing of international trademark applications and 
registrations that are paid through the Office, shall be made in U.S. 
dollars and in the form of a cashier's or certified check, Treasury 
note, national bank note, or United States Postal Service money order. 
If sent in any other form, the Office may delay or cancel the credit 
until collection is made. Checks and money orders must be made payable 
to the Director of the United States Patent and Trademark Office. 
(Checks made payable to the Commissioner of Patents and Trademarks will 
continue to be accepted.) Payments from foreign countries must be 
payable and immediately negotiable in the United States for the full 
amount of the fee required. Money sent to the Office by mail will be at 
the risk of the sender, and letters containing money should be 
registered with the United States Postal Service.
    (b) Payments of money required for trademark fees may also be made 
by credit card, except for replenishing a deposit account. Payment of a 
fee by credit card must specify the amount to be charged to the credit 
card and such other information as is necessary to process the charge, 
and is subject to collection of the fee. The Office will not accept a 
general authorization to charge fees to a credit card. If credit card 
information is provided on a form or document other than a form provided 
by the Office for the payment of fees by credit card, the Office will 
not be liable if the credit card number becomes public knowledge.

[68 FR 48292, Aug. 13, 2003, as amended at 69 FR 43752, July 22, 2004]



Sec. 2.208  Deposit accounts.

    (a) For the convenience of attorneys, and the general public in 
paying any fees due, in ordering copies of records, or services offered 
by the Office, deposit accounts may be established in the Office upon 
payment of the fee for establishing a deposit account (Sec. 
2.6(b)(13)). A minimum deposit of $1,000 is required for paying any fees 
due or in ordering any services offered by the Office. The Office will 
issue a

[[Page 311]]

deposit account statement at the end of each month. 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, 
copies, or services requested must always be on deposit. Charges to 
accounts with insufficient funds will not be accepted. A service charge 
(Sec. 2.6(b)(13)) will be assessed for each month that the balance at 
the end of the month is below $1,000.
    (b) A general authorization to charge all fees, or only certain fees 
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 document filed. 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.
    (c) A deposit account holder may replenish the deposit account by 
submitting a payment to the Office. A payment to replenish a deposit 
account must be submitted by one of the methods set forth in paragraphs 
(c)(1), (c)(2), (c)(3), or (c)(4) of this section.
    (1) A payment to replenish a deposit account may be submitted by 
electronic funds transfer through the Federal Reserve Fedwire System, 
which requires that the following information be provided to the deposit 
account holder's bank or financial institution:
    (i) Name of the Bank, which is Treas NYC (Treasury New York City);
    (ii) Bank Routing Code, which is 021030004;
    (iii) United States Patent and Trademark Office account number with 
the Department of the Treasury, which is 13100001; and
    (iv) The deposit account holder's company name and deposit account 
number.
    (2) A payment to replenish a deposit account may be submitted by 
electronic funds transfer over the Office's Internet Web site 
(www.uspto.gov).
    (3) A payment to replenish a deposit account may be addressed to: 
Director of the United States Patent and Trademark Office, Attn: Deposit 
Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.

[68 FR 48292, Aug. 13, 2003, as amended at 69 FR 43752, July 22, 2004; 
70 FR 56128, Sept. 26, 2005; 73 FR 67775, Nov. 17, 2008]



Sec. 2.209  Refunds.

    (a) The Director may refund any fee paid by mistake or in excess of 
that required. A change of purpose after the payment of a fee, such as 
when a party desires to withdraw a trademark application, appeal or 
other trademark filing for which a fee was paid, will not entitle a 
party to a refund of such fee. The Office will not refund amounts of 
twenty-five dollars or less unless a refund is specifically requested, 
and will not notify the payor of such amounts. If a party paying a fee 
or requesting a refund does not provide the banking information 
necessary for making refunds by electronic funds transfer (31 U.S.C. 
3332 and 31 CFR part 208), or instruct the Office that refunds are to be 
credited to a deposit account, the Director may require such 
information, or use the banking information on the payment instrument to 
make a refund. Any refund of a fee paid by credit card will be by a 
credit to the credit card account to which the fee was charged.
    (b) Any request for refund must be filed within two years from the 
date the fee was paid, except as otherwise provided in this paragraph. 
If the Office charges a deposit account by an amount other than an 
amount specifically indicated in an authorization (Sec. 2.208(b)), any 
request for refund based upon such charge must be filed within two years 
from the date of the deposit account statement indicating such charge, 
and include a copy of that deposit account statement. The time periods 
set forth in this paragraph are not extendable.



PART 3_ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE--Table of Contents




    Editorial Note: Part 3 pertaining to both patents and trademarks is 
placed in the grouping pertaining to patents regulations.

[[Page 312]]



PART 4_COMPLAINTS REGARDING INVENTION PROMOTERS--Table of Contents




    Editorial Note: Part 4 is placed in the separate grouping of parts 
pertaining to patents regulations.



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 the separate grouping of parts 
pertaining to patents regulations.



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. Chemicals used in industry, science and photography, as well as 
in agriculture, horticulture and forestry; unprocessed artificial 
resins, unprocessed plastics; manures; fire extinguishing compositions; 
tempering and soldering preparations; chemical substances for preserving 
foodstuffs; tanning substances; adhesives used in industry.
    2. Paints, varnishes, lacquers; preservatives against rust and 
against deterioration of wood; colorants; mordants; raw natural resins; 
metals in foil and powder form for painters, decorators, printers and 
artists.
    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; lubricants; dust absorbing, wetting 
and binding compositions; fuels (including motor spirit) and 
illuminants; candles and wicks for lighting.
    5. Pharmaceutical and veterinary preparations; sanitary preparations 
for medical purposes; dietetic substances adapted for medical use, food 
for babies; plasters, materials for dressings; material for stopping 
teeth, dental wax; disinfectants; preparations for destroying vermin; 
fungicides, herbicides.
    6. Common metals and their alloys; metal building materials; 
transportable buildings of metal; materials of metal for railway tracks; 
non-electric cables and wires of common metal; ironmongery, small items 
of metal hardware; pipes and tubes of metal; safes; goods of common 
metal not included in other classes; ores.
    7. Machines and machine tools; motors and engines (except for land 
vehicles); machine coupling and transmission components (except for land 
vehicles); agricultural implements other than hand-operated; incubators 
for eggs.
    8. Hand tools and implements (hand-operated); cutlery; side arms; 
razors.
    9. Scientific, nautical, surveying, photographic, cinematographic, 
optical, weighing, measuring, signalling, checking (supervision), life-
saving and teaching apparatus and instruments; apparatus and instruments 
for conducting, switching, transforming, accumulating, regulating or 
controlling electricity; apparatus for recording, transmission or 
reproduction of sound or images; magnetic data carriers, recording 
discs; automatic vending machines and mechanisms for coin-operated 
apparatus; cash registers, calculating machines, data processing 
equipment and computers; fire-extinguishing apparatus.
    10. Surgical, medical, dental and veterinary apparatus and 
instruments, artificial limbs, eyes and teeth; orthopedic articles; 
suture materials.
    11. Apparatus 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; explosives; fireworks.
    14. Precious metals and their alloys and goods in precious metals or 
coated therewith, not included in other classes; jewellery, precious 
stones; horological and chronometric instruments.
    15. Musical instruments.
    16. Paper, cardboard and goods made from these materials, not 
included in other classes; printed matter; bookbinding material; 
photographs; stationery; adhesives for stationery or household purposes; 
artists' materials; paint brushes; typewriters and office requisites 
(except furniture); instructional and teaching material (except 
apparatus); plastic materials for packaging (not included in other 
classes); printers' type; printing blocks.
    17. Rubber, gutta-percha, gum, asbestos, mica and goods made from 
these materials and not included in other classes; plastics in

[[Page 313]]

extruded form for use in manufacture; packing, stopping and insulating 
materials; flexible pipes, not of metal.
    18. Leather and imitations of leather, and goods made of these 
materials and not included in other classes; animal skins, hides; trunks 
and travelling bags; umbrellas, parasols and walking sticks; whips, 
harness and saddlery.
    19. Building materials (non-metallic); non-metallic rigid pipes for 
building; asphalt, pitch and bitumen; non-metallic transportable 
buildings; monuments, not of metal.
    20. Furniture, mirrors, picture frames; goods (not included in other 
classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, 
whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for 
all these materials, or of plastics.
    21. Household or kitchen utensils and containers; combs and sponges; 
brushes (except paint brushes); brush-making materials; articles for 
cleaning purposes; steelwool; unworked or semi-worked glass (except 
glass used in building); glassware, porcelain and earthenware not 
included in other classes.
    22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks 
and bags (not included in other classes); padding and stuffing materials 
(except of rubber or plastics); raw fibrous textile materials.
    23. Yarns and threads, for textile use.
    24. Textiles and textile goods, not included in other classes; bed 
and table covers.
    25. Clothing, footwear, headgear.
    26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, 
pins and needles; artificial flowers.
    27. Carpets, rugs, mats and matting, linoleum and other materials 
for covering existing floors; wall hangings (non-textile).
    28. Games and playthings; gymnastic and sporting articles not 
included in other classes; decorations for Christmas trees.
    29. Meat, fish, poultry and game; meat extracts; preserved, frozen, 
dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, 
milk and milk products; edible oils and fats.
    30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial 
coffee; flour and preparations made from cereals, bread, pastry and 
confectionery, ices; honey, treacle; yeast, baking-powder; salt, 
mustard; vinegar, sauces (condiments); spices; ice.
    31. Agricultural, horticultural and forestry products and grains not 
included in other classes; live animals; fresh fruits and vegetables; 
seeds, natural plants and flowers; foodstuffs for animals, malt.
    32. Beers; mineral and aerated waters and other non-alcoholic 
drinks; fruit drinks and fruit juices; syrups and other preparations for 
making beverages.
    33. Alcoholic beverages (except beers).
    34. Tobacco; smokers' articles; matches.

                                Services

    35. Advertising; business management; business administration; 
office functions.
    36. Insurance; financial affairs; monetary affairs; real estate 
affairs.
    37. Building construction; repair; installation services.
    38. Telecommunications.
    39. Transport; packaging and storage of goods; travel arrangement.
    40. Treatment of materials.
    41. Education; providing of training; entertainment; sporting and 
cultural activities.
    42. Scientific and technological services and research and design 
relating thereto; industrial analysis and research services; design and 
development of computer hardware and software.
    43. Services for providing food and drink; temporary accommodation.
    44. Medical services; veterinary services; hygienic and beauty care 
for human beings or animals; agriculture, horticulture and forestry 
services.
    45. Legal services; security services for the protection of property 
and individuals; personal and social services rendered by others to meet 
the needs of individuals.

[72 FR 28611, May 22, 2007]



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.
   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.

[[Page 314]]

 
   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 applications for registration of certification marks based on 
sections 1 and 44 of the Trademark Act and registrations resulting from 
such applications, goods and services are classified in two classes as 
follows:
    A. Goods.
    B. Services.

[73 FR 67775, Nov. 15, 2008]



Sec. 6.4  Schedule for collective membership marks.

    All collective membership marks in applications based on sections 1 
and 44 of the Trademark Act and registrations resulting from such 
applications are classified as follows:

------------------------------------------------------------------------
              Class                                Title
------------------------------------------------------------------------
200..............................  Collective Membership.
------------------------------------------------------------------------


[73 FR 67775, Nov. 17, 2008]



PART 7_RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING 
TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF 

MARKS--Table of Contents




                      Subpart A_General Information

Sec.
7.1 Definitions of terms as used in this part.
7.2 [Reserved]
7.3 Correspondence must be in English.
7.4 Receipt of correspondence.
7.5 [Reserved]
7.6 Schedule of U.S. process fees.
7.7 Payments of fees to International Bureau.

 Subpart B_International Application Originating From the United States

7.11 Requirements for international application originating from the 
          United States.
7.12 Claim of color.
7.13 Certification of international application.
7.14 Correcting irregularities in international application.

      Subpart C_Subsequent Designation Submitted Through the Office

7.21 Subsequent designation.

        Subpart D_Recording Changes to International Registration

7.22 Recording changes to international registration.
7.23 Requests for recording assignments at the International Bureau.
7.24 Requests to record security interest or othe r restriction of 
          holder's rights of disposal or release of such restriction 
          submitted through the Office.

         Subpart E_Extension of Protection to the United States

7.25 Sections of part 2 applicable to extension of protection.
7.26 Filing date of extension of protection for purposes of examination 
          in the Office.
7.27 Priority claim of extension of protection for purposes of 
          examination in the Office.
7.28 Replacement of U.S. registration by registered extension of 
          protection.
7.29 Effect of replacement on U.S. registration.
7.30 Effect of cancellation or expiration of international registration.

[[Page 315]]

7.31 Requirements for transformation of an extension of protection to 
          the United States into a U.S. application.

    Subpart F_Affidavit Under Section 71 of the Act for Extension of 
                     Protection to the United States

7.36 Affidavit or declaration of use in commerce or excusable nonuse 
          required to avoid cancellation of an extension of protection 
          to the United States.
7.37 Requirements for a complete affidavit or declaration of use in 
          commerce or excusable nonuse.
7.38 Notice to holder of extension of protection.
7.39 Acknowledgment of receipt of affidavit or declaration of use in 
          commerce or excusable nonuse.
7.40 Petition to Director to review refusal.

    Subpart G_Renewal of International Registration and Extension of 
                               Protection

7.41 Renewal of international registration and extension of protection.

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless othe rwise noted.

    Source: 68 FR 55769, Sept. 26, 2003, unless otherwise noted.



                      Subpart A_General Information



Sec. 7.1  Definitions of terms as used in this part.

    (a) the Act means the Trademark Act of 1946, 60 Stat. 427, as 
amended, codified in 15 U.S.C. 1051 et seq.
    (b) Subsequent designation means a request for extension of 
protection of an international registration to a Contracting Party made 
after the International Bureau registers the mark.
    (c) The acronym TEAS means the Trademark Electronic Application 
System available on-line through the Office's Web site at: 
www.uspto.gov.
    (d) The term Office means the United States Patent and Trademark 
Office.
    (e) All references to sections in this part refer to 37 Code of 
Federal Regulations, except as otherwise stated.



Sec. 7.2  [Reserved]



Sec. 7.3  Correspondence must be in English.

    International applications and registrations, requests for extension 
of protection and all other related correspondence with the Office must 
be in English. The Office will not process correspondence that is in a 
language other than English.



Sec. 7.4  Receipt of correspondence.

    (a) Correspondence Filed Through TEAS. Correspondence relating to 
international applications and registrations and requests for extension 
of protection submitted through TEAS will be accorded the date and time 
on which the complete transmission is received in the Office based on 
Eastern Time. Eastern Time means eastern standard time or eastern 
daylight time, as appropriate.
    (b) Correspondence Filed By Mail. International applications under 
Sec. 7.11, subsequent designations under Sec. 7.21, responses to 
notices of irregularity under Sec. 7.14, requests to record changes in 
the International Register under Sec. 7.23 and Sec. 7.24, requests to 
note replacement under Sec. 7.28, requests for transformation under 
Sec. 7.31, and petitions to the Director to review an action of the 
Office's Madrid Processing Unit, when filed by mail, must be addressed 
to: Madrid Processing Unit, 600 Dulany Street, MDE-7B87, Alexandria, VA 
22314-5793.
    (1) International applications under Sec. 7.11, subsequent 
designations under Sec. 7.21, requests to record changes in the 
International Register under Sec. 7.23 and Sec. 7.24, and petitions to 
the Director to review an action of the Office's Madrid Processing Unit, 
when filed by mail, will be accorded the date of receipt in the Office, 
unless they are sent by Express Mail pursuant to Sec. 2.198 of this 
title, in which case they will be accorded the date of deposit with the 
United States Postal Service.
    (2) Responses to notices of irregularity under Sec. 7.14, requests 
to note replacement under Sec. 7.28, and requests for transformation 
under Sec. 7.31, when filed by mail, will be accorded the date of 
receipt in the Office.
    (c) Hand-Delivered Correspondence. International applications under 
Sec. 7.11, subsequent designations under Sec. 7.21, responses to 
notices of irregularity under Sec. 7.14, requests to record changes in 
the International Register under Sec. Sec. 7.23 and 7.24, requests to 
note replacement under Sec. 7.28, requests for

[[Page 316]]

transformation under Sec. 7.31, and petitions to the Director to review 
an action of the Office's Madrid Processing Unit, may be delivered by 
hand during the hours the Office is open to receive correspondence. 
Madrid-related hand-delivered correspondence must be delivered to the 
Trademark Assistance Center, James Madison Building--East Wing, 
Concourse Level, 600 Dulany Street, Alexandria, VA 22314, Attention: 
MPU.
    (d) Facsimile Transmission Not Permitted. The following documents 
may not be sent by facsimile transmission, and will not be accorded a 
date of receipt if sent by facsimile transmission:
    (1) International applications under Sec. 7.11;
    (2) Subsequent designations under Sec. 7.21;
    (3) Responses to notices of irregularity under Sec. 7.14;
    (4) Requests to record changes of ownership under Sec. 7.23;
    (5) Requests to record restrictions of the holder's right of 
disposal, or the release of such restrictions, under Sec. 7.24; and
    (6) Requests for transformation under Sec. 7.31.
    (e) Certificate of Mailing or Transmission Procedure Does Not Apply. 
The certificate of mailing or transmission procedure provided in Sec. 
2.197 does not apply to the documents specified in paragraph (d) of this 
section.

[69 FR 57185, Sept. 24, 2004, as amended at 69 FR 63321, Nov. 1, 2004; 
72 FR 18908, Apr. 16, 2007]



Sec. 7.5  [Reserved]



Sec. 7.6  Schedule of U.S. process fees.

    (a) The Office requires the following process fees:
    (1) For certifying an international application based on a single 
basic application or registration, per class--$100.00
    (2) For certifying an international application based on more than 
one basic application or registration, per class--$150.00
    (3) For transmitting a subsequent designation under Sec. 7.21--
$100.00
    (4) For transmitting a request to record an assignment or 
restriction, or release of a restriction, under Sec. 7.23 or Sec. 
7.24--$100.00
    (5) For filing a notice of replacement under Sec. 7.28, per class--
$100.00
    (6) For filing an affidavit under Sec. 71 of the Act, per class--
$100.00
    (7) Surcharge for filing an affidavit under Sec. 71 of the Act 
during the grace period, per class--$100.00
    (b) The fees required in paragraph (a) of this section must be paid 
in U.S. dollars at the time of submission of the requested action. See 
Sec. 2.207 of this chapter for acceptable forms of payment and Sec. 
2.208 of this chapter for payments using a deposit account established 
in the Office.



Sec. 7.7  Payments of fees to International Bureau.

    (a) For documents filed through TEAS, the following fees may be paid 
either directly to the International Bureau or through the Office:
    (1) International application fees;
    (2) Subsequent designation fees; and
    (3) Recording fee for an assignment of an international registration 
under Sec. 7.23.
    (b) The fees in paragraph (a) of this section may be paid as 
follows:
    (1)(i) Directly to the International Bureau by debit to a current 
account with the International Bureau. In this case, an applicant or 
holder's submission to the Office must include the International Bureau 
account number; or
    (ii) Directly to the International Bureau using any other acceptable 
method of payment. In this case, an applicant or holder's submission to 
the Office must include the International Bureau receipt number for 
payment of the fees; or
    (2) Through the Office. Fees paid through the Office must be paid in 
U.S. dollars at the time of submission. See Sec. 2.207 of this chapter 
for acceptable forms of payment and Sec. 2.208 of this chapter for 
payments using a deposit account established in the Office.
    (c) All fees for paper filings must be paid directly to the 
International Bureau.
    (d) The International Bureau fee calculator may be viewed on the Web 
site

[[Page 317]]

of the World Intellectual Property Organization, currently available at: 
http://www.wipo.int/madrid/en/.

[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57185, Sept. 24, 2004]



 Subpart B_International Application Originating From the United States



Sec. 7.11  Requirements for international application originating from the United States.

    (a) The Office will grant a date of receipt to an international 
application That is either filed through TEAS, or typed on the official 
paper form issued by the International Bureau. The international 
application must include all of the following:
    (1) The filing date and serial number of the basic application and/
or the registration date and registration number of the basic 
registration;
    (2) The name and entity of the international applicant that is 
identical to the name and entity of the applicant or registrant in the 
basic application or basic registration, and the applicant's current 
address;
    (3) A reproduction of the mark that is the same as the mark in the 
basic application and/or registration and that meets the requirements of 
Sec. 2.52 of this title.
    (i) If the mark in the basic application and/or registration is 
depicted in black and white and the basic application or registration 
does not include a color claim, the reproduction of the mark in the 
international application must be black and white.
    (ii) If the mark in the basic application or registration is 
depicted in black and white and includes a color claim, the 
international application must include both a black and white 
reproduction of the mark and a color reproduction of the mark.
    (iii) If the mark in the basic application and/or registration is 
depicted in color, the reproduction of the mark in the international 
application must be in color.
    (iv) If the international application is filed on paper, the mark 
must be no more than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide, 
and must appear in the box designated by the International Bureau on the 
International Bureau's official form;
    (4) A color claim as set out in Sec. 7.12, if appropriate;
    (5) A description of the mark that is the same as the description of 
the mark in the basic application or registration, as appropriate;
    (6) An indication of the type of mark if the mark in the basic 
application and/or registration is a three-dimensional mark, a sound 
mark, a collective mark or a certification mark;
    (7) A list of the goods and/or services that is identical to or 
narrower than the list of goods and/or services in each claimed basic 
application or registration and classified according to the Nice 
Agreement Concerning the International Classification of Goods and 
Services for the Purposes of the Registration of Marks;
    (8) A list of the designated Contracting Parties. If the goods and/
or services in the international application are not the same for each 
designated Contracting Party, the application must list the goods and/or 
services in the international application that pertain to each 
designated Contracting Party;
    (9) The certification fee required by Sec. 7.6;
    (10) If the application is filed through TEAS, the international 
application fees for all classes, and the fees for all designated 
Contracting Parties identified in the international application (see 
Sec. 7.7);
    (11) A statement that the applicant is entitled to file an 
international application in the Office, specifying that applicant: is a 
national of the United States; has a domicile in the United States; or 
has a real and effective industrial or commercial establishment in the 
United States. Where an applicant's address is not in the United States, 
the applicant must provide the address of its U.S. domicile or 
establishment; and
    (12) If the international application is filed through TEAS, an e-
mail address for receipt of correspondence from the Office.

[[Page 318]]

    (b) For requirements for certification, see Sec. 7.13.

[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57185, Sept. 24, 2004; 
73 FR 67775, Nov. 17, 2008]



Sec. 7.12  Claim of color.

    (a) If color is claimed as a feature of the mark in the basic 
application and/or registration, the international application must 
include a statement that color is claimed as a feature of the mark and 
set forth the same name(s) of the color(s) claimed in the basic 
application and/or registration.
    (b) If color is not claimed as a feature of the mark in the basic 
application and/or registration, color may not be claimed as a feature 
of the mark in the international application.



Sec. 7.13  Certification of international application.

    (a) When an international application contains all the elements set 
forth in Sec. 7.11(a), the Office will certify to the International 
Bureau that the information contained in the international application 
corresponds to the information contained in the basic application(s) 
and/or basic registration(s) at the time of certification, and will then 
forward the international application to the International Bureau.
    (b) When an international application does not meet the requirements 
of Sec. 7.11(a), the Office will not certify or forward the 
international application. If the international applicant paid the 
international application fees (see Sec. 7.7) through the Office, the 
Office will refund the international fees. The Office will not refund 
the certification fee.



Sec. 7.14  Correcting irregularities in international application.

    (a) Response period. Upon receipt of a notice of irregularities in 
an international application from the International Bureau, the 
applicant must respond to the International Bureau within the period set 
forth in the notice.
    (b) Classification and Identification of Goods and Services. 
Responses to International Bureau notices of irregularities in the 
classification or identification of goods or services in an 
international application must be submitted through the Office for 
forwarding to the International Bureau. The Office will review an 
applicant's response to a notice of irregularities in the identification 
of goods or services to ensure that the response does not identify goods 
or services that are broader than the scope of the goods or services in 
the basic application or registration.
    (c) Fees. If the International Bureau notice of irregularities 
requires the payment of fees, the fees for correcting irregularities in 
the international application must be paid directly to the International 
Bureau.
    (d) Other Irregularities Requiring Response from Applicant. Except 
for responses to irregularities mentioned in paragraph (b) of this 
section and payment of fees for correcting irregularities mentioned in 
paragraph (c) of this section, all other responses may be submitted 
through the Office in accordance with Sec. 7.14(e), or filed directly 
at the International Bureau. The Office will forward timely responses to 
the International Bureau, but will not review the responses or respond 
to any irregularities on behalf of the international applicant.
    (e) Procedure for response. To be considered timely, a response must 
be received by the International Bureau before the end of the response 
period set forth in the International Bureau's notice. Receipt in the 
Office does not fulfill this requirement. Any response submitted through 
the Office for forwarding to the International Bureau should be 
submitted as soon as possible, but at least one month before the end of 
the response period in the International Bureau's notice. The Office 
will not process any response received in the Office after the 
International Bureau's response deadline.

[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004; 
73 FR 67776, Nov. 17, 2008]



      Subpart C_Subsequent Designation Submitted Through the Office



Sec. 7.21  Subsequent designation.

    (a) A subsequent designation may be filed directly with the 
International

[[Page 319]]

Bureau, or, if it meets the requirements of paragraph (b) of this 
section, submitted through the Office.
    (b) The Office will grant a date of receipt to a subsequent 
designation that is either filed through TEAS, or typed on the official 
paper form issued by the International Bureau. The subsequent 
designation must contain all of the following:
    (1) The international registration number;
    (2) The serial number of the U.S. application or registration number 
of the U.S. registration that formed the basis of the international 
registration;
    (3) The name and address of the holder of the international 
registration;
    (4) A statement that the holder is entitled to file a subsequent 
designation in the Office, specifying that holder: Is a national of the 
United States; has a domicile in the United States; or has a real and 
effective industrial or commercial establishment in the United States. 
Where a holder's address is not in the United States, the holder must 
provide the address of its U.S. domicile or establishment;
    (5) A list of goods and/or services that is identical to or narrower 
than the list of goods and/or services in the international 
registration;
    (6) A list of the designated Contracting Parties. If the goods and/
or services in the subsequent designation are not the same for each 
designated Contracting Party, the holder must list the goods and/or 
services covered by the subsequent designation that pertain to each 
designated Contracting Party;
    (7) The U.S. transmittal fee required by Sec. 7.6;
    (8) If the subsequent designation is filed through TEAS, the 
subsequent designation fees (see Sec. 7.7); and
    (9) If the subsequent designation is filed through TEAS, an e-mail 
address for receipt of correspondence from the Office.
    (c) If the subsequent designation is accorded a date of receipt, the 
Office will then forward the subsequent designation to the International 
Bureau.
    (d) If the subsequent designation fails to contain all the elements 
set forth in paragraph (b) of this section, the Office will not forward 
the subsequent designation to the International Bureau. The Office will 
notify the holder of the reason(s). If the holder paid the subsequent 
designation fees (see Sec. 7.7) through the Office, the Office will 
refund the subsequent designation fees. The Office will not refund the 
transmittal fee.
    (e) Correspondence to correct any irregularities in a subsequent 
designation must be made directly with the International Bureau.

[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004]



        Subpart D_Recording Changes to International Registration



Sec. 7.22  Recording changes to international registration.

    Except as provided in Sec. Sec. 7.23 and 7.24, requests to record 
changes to an international registration must be filed with the 
International Bureau. If a request to record an assignment or 
restriction of a holder's right of disposal of an international 
registration or the release of such a restriction meets the requirements 
of Sec. 7.23 or 7.24, the Office will forward the request to the 
International Bureau. Section 10 of the Act and part 3 of this chapter 
are not applicable to assignments or restrictions of international 
registrations.



Sec. 7.23  Requests for recording assignments at the International Bureau.

    A request to record an assignment of an international registration 
may be submitted through the Office for forwarding to the International 
Bureau only if the assignee cannot obtain the assignor's signature for 
the request to record the assignment.
    (a) A request to record an assignment submitted through the Office 
must include all of the following:
    (1) The international registration number;
    (2) The name and address of the holder of the international 
registration;
    (3) The name and address of the assignee of the international 
registration;
    (4) A statement that the assignee: Is a national of the United 
States; has a domicile in the United States; or has a real and effective 
industrial or commercial establishment in the United

[[Page 320]]

States. Where an assignee's address is not in the United States, the 
assignee must provide the address of its U.S. domicile or establishment;
    (5) A statement that the assignee could not obtain the assignor's 
signature for the request to record the assignment;
    (6) An indication that the assignment applies to the designation to 
the United States;
    (7) A statement that the assignment applies to all the goods and/or 
services in the international registration, or if less, a list of the 
goods and/or services in the international registration that have been 
assigned that pertain to the designation to the United States; and
    (8) The U.S. transmittal fee required by Sec. 7.6.
    (b) If a request to record an assignment contains all the elements 
set forth in paragraph (a) of this section, the Office will forward the 
request to the International Bureau. Forwarding the request to the 
International Bureau is not a determination by the Office of the 
validity of the assignment or the effect that the assignment has on the 
title of the international registration.
    (c) If the request fails to contain all the elements set forth in 
paragraph (a) of this section, the Office will not forward the request 
to the International Bureau. The Office will notify the assignee(s) of 
the reason(s). If the assignee paid the fees to record the assignment 
(see Sec. 7.7) through the Office, the Office will refund the recording 
fee. The Office will not refund the transmittal fee.
    (d) Correspondence to correct any irregularities in a request to 
record an assignment must be made directly with the International 
Bureau.

[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004]



Sec. 7.24  Requests to record security interest or other restriction of
holder's rights of disposal or release of such restriction submitted

through the Office.

    (a) A party who obtained a security interest or other restriction of 
a holder's right to dispose of an international registration, or the 
release of such a restriction, may submit a request to record the 
restriction or release through the Office for forwarding to the 
International Bureau only if:
    (1) The restriction or release:
    (i) Is the result of a court order; or
    (ii) Is the result of an agreement between the holder of the 
international registration and the party restricting the holder's right 
of disposal, and the signature of the holder cannot be obtained for the 
request to record the restriction or release;
    (2) The party who obtained the restriction is a national of, is 
domiciled in, or has a real and effective industrial or commercial 
establishment in the United States; and
    (3) The restriction or release applies to the holder's right to 
dispose of the international registration in the United States.
    (b) A request to record a restriction or the release of a 
restriction must be submitted by the party who obtained the restriction 
of the holder's right of disposal and include all the following:
    (1) The international registration number;
    (2) The name and address of the holder of the international 
registration;
    (3) The name and address of the party who obtained the restriction;
    (4) A statement that the party who submitted the request: Is a 
national of the United States; has a domicile in the United States; or 
has a real and effective industrial or commercial establishment in the 
United States. Where a party's address is not in the United States, the 
party must provide the address of its U.S. domicile or establishment;
    (5) (i) A statement that the restriction is the result of a court 
order, or
    (ii) Where the restriction is the result of an agreement between the 
holder of the international registration and the party restricting the 
holder's right of disposal, a statement that the signature of the holder 
of the international registration could not be obtained for the request 
to record the restriction or release of the restriction;
    (6) A summary of the main facts concerning the restriction;
    (7) An indication that the restriction, or the release of the 
restriction, of the

[[Page 321]]

holder's right of disposal of the international registration applies to 
the designation to the United States; and
    (8) The U.S. transmittal fee required by Sec. 7.6.
    (c) If a request to record a restriction, or the release of a 
restriction, contains all the elements set forth in paragraph (b) of 
this section, the Office will forward the request to the International 
Bureau. Forwarding the request to the International Bureau is not a 
determination by the Office of the validity of the restriction, or its 
release, or the effect that the restriction has on the holder's right to 
dispose of the international registration.
    (d) If the request fails to contain all the elements set forth in 
paragraph (b) of this section, the Office will not forward the request. 
The Office will notify the party who submitted the request of the 
reason(s). The Office will not refund the transmittal fee.
    (e) Correspondence to correct any irregularities in a request to 
record a restriction of a holder's right to dispose of an international 
registration or the release of such a restriction must be made directly 
with the International Bureau.



         Subpart E_Extension of Protection to the United States



Sec. 7.25  Sections of part 2 applicable to extension of protection.

    (a) Except for Sec. Sec. 2.22-2.23, 2.130-2.131, 2,160-2.166, 
2.168, 2.173, and 2.181-2.186, all sections in parts 2, 10, and 11 of 
this chapter shall apply to an extension of protection of an 
international registration to the United States, including sections 
related to proceedings before the Trademark Trial and Appeal Board, 
unless otherwise stated.
    (b) The Office will refer to a request for an extension of 
protection to the United States as an application under section 66(a) of 
the Act, and references to applications and registrations in part 2 of 
this chapter include extensions of protection to the United States.
    (c) Upon registration in the United States under section 69 of the 
Act, an extension of protection to the United States is referred to as a 
registration, a registered extension of protection, or a section 66(a) 
registration.

[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004; 
70 FR 38774, July 6, 2005; 73 FR 47686, Aug. 14, 2008; 73 FR 67776, Nov. 
17, 2008]



Sec. 7.26  Filing date of extension of protection for purposes of
examination in the Office.

    (a) If a request for extension of protection of an international 
registration to the United States is made in an international 
application and the request includes a declaration of a bona fide 
intention to use the mark in commerce as set out in Sec. 2.33(e) of 
this chapter, the filing date of the extension of protection to the 
United States is the international registration date.
    (b) If a request for extension of protection of an international 
registration to the United States is made in a subsequent designation 
and the request includes a declaration of a bona fide intention to use 
the mark in commerce as set out in Sec. 2.33(e), the filing date of the 
extension of protection to the United States is the date that the 
International Bureau records the subsequent designation.



Sec. 7.27  Priority claim of extension of protection for purposes of 
examination in the Office.

    An extension of protection of an international registration to the 
United States is entitled to a claim of priority under section 67 of the 
Act if:
    (a) The request for extension of protection contains a claim of 
priority;
    (b) The request for extension of protection specifies the filing 
date, serial number and the country of the application that forms the 
basis for the claim of priority; and
    (c) The date of the international registration or the date of 
recording of the subsequent designation at the International Bureau of 
the request for extension of protection to the United States is not 
later than six months after the filing date of the application that 
forms the basis for the claim of priority.

[[Page 322]]



Sec. 7.28  Replacement of U.S. registration by registered extension 
of protection.

    (a) A registered extension of protection affords the same rights as 
those afforded to a previously issued U.S. registration if:
    (1) Both registrations are owned by the same person and identify the 
same mark; and
    (2) All the goods and/or services listed in the U.S. registration 
are also listed in the registered extension of protection.
    (b) The holder of an international registration with a registered 
extension of protection to the United States that meets the requirements 
of paragraph (a) of this section may file a request to note replacement 
of the U.S. registration with the extension of protection. If the 
request contains all of the following, the Office will take note of the 
replacement in its automated records:
    (1) The serial number or registration number of the extension of 
protection;
    (2) The registration number of the replaced U.S. registration; and
    (3) The fee required by Sec. 7.6.
    (c) If the request to note replacement is denied, the Office will 
notify the holder of the reason(s) for refusal.



Sec. 7.29  Effect of replacement on U.S. registration.

    A U.S. registration that has been replaced by a registered extension 
of protection under section 74 of the Act and Sec. 7.28 will remain in 
force, unless cancelled, expired or surrendered, as long as:
    (a) The owner of the replaced U.S. registration continues to file 
affidavits or declarations of use in commerce or excusable nonuse under 
section 8 of the Act; and
    (b) The replaced U.S. registration is renewed under section 9 of the 
Act.



Sec. 7.30  Effect of cancellation or expiration of international registration.

    When the International Bureau notifies the Office of the 
cancellation or expiration of an international registration, in whole or 
in part, the Office shall cancel, in whole or in part, the corresponding 
pending or registered extension of protection to the United States. The 
date of cancellation of an extension of protection or relevant part 
shall be the date of cancellation or expiration of the corresponding 
international registration or relevant part.



Sec. 7.31  Requirements for transformation of an extension of protection 
to the United States into a U.S. application.

    If the International Bureau cancels an international registration in 
whole or in part, under Article 6(4) of the Madrid Protocol, the holder 
of that international registration may file a request to transform the 
corresponding pending or registered extension of protection to the 
United States into an application under section 1 or 44 of the Act.
    (a) The holder of the international registration must file a request 
for transformation within three months of the date of cancellation of 
the international registration and include:
    (1) The serial number or registration number of the extension of 
protection to the United States;
    (2) The name and address of the holder of the international 
registration;
    (3) The application filing fee for at least one class of goods or 
services required by Sec. 2.6(a)(1) of this chapter; and
    (4) An e-mail address for receipt of correspondence from the Office.
    (b) If the request for transformation contains all the elements set 
forth in paragraph (a) of this section, the extension of protection 
shall be transformed into an application under section 1 and/or 44 of 
the Act and accorded the same filing date and the same priority that was 
accorded to the extension of protection.
    (c) The application under section 1 and/or 44 of the Act that 
results from a transformed extension of protection will be examined 
under part 2 of this chapter.
    (d) A request for transformation that fails to contain all the 
elements set forth in paragraph (a) of this section will not be 
accepted.

[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004]

[[Page 323]]



    Subpart F_Affidavit Under Section 71 of the Act for Extension of 
                     Protection to the United States



Sec. 7.36  Affidavit or declaration of use in commerce or excusable nonuse
required to avoid cancellation of an extension of protection to the United States.

    (a) Subject to the provisions of section 71 of the Act, a registered 
extension of protection shall remain in force for the term of the 
international registration upon which it is based unless the 
international registration expires or is cancelled under section 70 of 
the Act due to cancellation of the international registration by the 
International Bureau.
    (b) During the following time periods, the holder of an 
international registration must file an affidavit or declaration of use 
or excusable nonuse, or the registered extension of protection will be 
cancelled under section 71 of the Act:
    (1) On or after the fifth anniversary and no later than the sixth 
anniversary after the date of registration in the United States; and
    (2) Within the six-month period preceding the end of each ten-year 
period after the date of registration in the United States, or the 
three-month grace period immediately following, with payment of the 
grace period surcharge required by section 71(a)(2)(B) of the Act and 
Sec. 7.6.



Sec. 7.37  Requirements for a complete affidavit or declaration of use in
commerce or excusable nonuse.

    A complete affidavit or declaration under section 71 of the Act 
must:
    (a) Be filed by the holder of the international registration within 
the period set forth in Sec. 7.36(b);
    (b) Include a statement that is signed and verified (sworn to) or 
supported by a declaration under Sec. 2.20 of this chapter by a person 
properly authorized to sign on behalf of the holder, attesting to the 
use in commerce or excusable nonuse of the mark within the period set 
forth in section 71 of the Act. The verified statement must be executed 
on or after the beginning of the filing period specified in Sec. 
7.36(b). A person who is properly authorized to sign on behalf of the 
holder is:
    (1) A person with legal authority to bind the holder; or
    (2) A person with firsthand knowledge of the facts and actual or 
implied authority to act on behalf of the holder; or
    (3) An attorney as defined in Sec. 11.1 of this chapter who has an 
actual written or verbal power of attorney or an implied power of 
attorney from the holder.
    (c) Include the U.S. registration number;
    (d)(1) Include the fee required by Sec. 7.6 for each class of goods 
or services that the affidavit or declaration covers;
    (2) If the affidavit or declaration is filed during the grace period 
under section 71(a)(2)(B) of the Act, include the grace period surcharge 
per class required by Sec. 7.6;
    (3) If at least one fee is submitted for a multi-class registration, 
but the class(es) to which the fee(s) should be applied are not 
specified, the Office will issue a notice requiring either the 
submission of additional fee(s) or an indication of the class(es) to 
which the original fee(s) should be applied. If the required fee(s) are 
not submitted within the time period set out in the Office action and 
the class(es) to which the original fee(s) should be applied are not 
specified, the Office will presume that the fee(s) cover the classes in 
ascending order, beginning with the lowest numbered class;
    (e)(1) Specify the goods or services for which the mark is in use in 
commerce, and/or the goods or services for which excusable nonuse is 
claimed under Sec. 7.37(f)(2);
    (2) Specify the goods or services being deleted from the 
registration, if the affidavit or declaration covers less than all the 
goods or services or less than all the classes in the registration;
    (f)(1) State that the registered mark is in use in commerce on or in 
connection with the goods or services in the registration; or
    (2) If the registered mark is not in use in commerce on or in 
connection with all the goods or services in the registration, set forth 
the date when use of the mark in commerce stopped and the approximate 
date when use is

[[Page 324]]

expected to resume and recite facts to show that nonuse as to those 
goods or services is due to special circumstances that excuse the nonuse 
and is not due to an intention to abandon the mark; and
    (g) Include a specimen showing current use of the mark for each 
class of goods or services, unless excusable nonuse is claimed under 
Sec. 7.37(f)(2). The specimen must meet the requirements of Sec. 2.56 
of this chapter.

[68 FR 55769, Sept. 26, 2003, as amended at 73 FR 47686, Aug. 14, 2008]



Sec. 7.38  Notice to holder of extension of protection.

    The registration certificate for an extension of protection to the 
United States includes a notice of the requirement for filing the 
affidavit or declaration of use or excusable nonuse under section 71 of 
the Act. However, the affidavit or declaration must be filed within the 
time period required by section 71 of the Act regardless of whether this 
notice is received.



Sec. 7.39  Acknowledgment of receipt of affidavit or declaration of 
use in commerce or excusable nonuse.

    (a) The Office will issue a notice that states an affidavit or 
declaration of use in commerce or excusable nonuse is acceptable or if 
the affidavit or declaration is refused, an Office action that states 
the reason(s) for refusal.
    (b) A response to a refusal under paragraph (a) of this section must 
be filed within six months of the date of issuance of the Office action, 
or before the end of the filing period set forth in section 71(a) of the 
Act, whichever is later. The Office will cancel the extension of 
protection if no response is filed within this time period.

[68 FR 55769, Sept. 26, 2003, as amended at 73 FR 67776, Nov. 17, 2008]



Sec. 7.40  Petition to Director to review refusal.

    (a) A response to the examiner's initial refusal to accept an 
affidavit or declaration is required before filing a petition to the 
Director, unless the examiner directs otherwise. See Sec. 7.39(b) for 
the deadline for responding to an examiner's Office action.
    (b) If the examiner maintains the refusal of the affidavit or 
declaration, the holder may file a petition to the Director to review 
the examiner's action. The petition must be filed within six months of 
the date of issuance of the action maintaining the refusal, or the 
Office will cancel the registration.
    (c) A decision by the Director is necessary before filing an appeal 
or commencing a civil action in any court.

[68 FR 55769, Sept. 26, 2003, as amended at 73 FR 67776, Nov. 17, 2008]



    Subpart G_Renewal of International Registration and Extension of 
                               Protection



Sec. 7.41  Renewal of international registration and extension of protection.

    (a) Any request to renew an international registration and its 
extension of protection to the United States must be made at the 
International Bureau in accordance with Article 7 of the Madrid 
Protocol.
    (b) A request to renew an international registration or extension of 
protection to the United States submitted through the Office will not be 
processed.
      

[[Page 325]]

                  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. 
This index is updated as of July 1, 2009.

                                                                 Section

                                 A

Abandonment of application or mark:
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)
Revival of abandoned application....................................2.66
Acceptance of affidavit under sec. 8...............................2.163
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..............................................2.200
To decisions of Director and the Trademark Trial and Appeal Board 
                                                                 2.27(c)
To materials filed under seal pursuant to a protective order....2.27(e); 
                                                                2.126(d)
To pending trademark application index...........................2.27(a)
Acknowledgment of receipt of affidavit or declaration:
Filed under sec. 8.................................................2.163
Filed under sec. 71.................................................7.39
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 U.S. Patent and Trademark Office 
                                                                   2.190
Admissions, request for (discovery):
Motion to determine sufficiency of response.......................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)
For incontestability under sec. 15.................................2.167
Of use in commerce or excusable nonuse under sec. 8............2.160-166
Of use in commerce or excusable nonuse under sec. 71...........7.36-7.40
Reconsideration of, under sec. 8.........................2.163(b), 2.165
Reconsideration of, under sec. 71..........................7.39(b), 7.40
To avoid cancellation of registration under sec. 8...........2.160-2.161
To avoid cancellation of registration under sec. 71............7.36-7.40
Agent. (See Attorneys and other representatives)
Allegations in application or registration not evidence on behalf 
of applicant or registrant in inter partes proceeding........2.122(b)(2)

[[Page 326]]

Allowance, notice of.......................................2.81(b), 2.88
Amendment of application:
After final action...............................................2.64(b)
After publication.......................................2.35(b), 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
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
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(b)(1)
Correction of deficiency in......................................2.76(g)
Fee for filing.......................................................2.6
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 Director..........................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)
In multiple class applications..................................2.141(b)
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)

[[Page 327]]

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, 2.34(a)(3) and (4)
May be represented by an attorney...................................2.11
Name of....................................................2.21, 2.32(c)
Signature and oath or declaration...................................2.33
Application for registration...................................2.21-2.47
Access to pending applications......................................2.27
Amendment of. See Amendment of application.
Basis for filing..............................................2.34, 2.35
Certification mark..................................................2.45
Collective mark.....................................................2.44
Color claim in................................................2.52(b)(1)
Concurrent use..........................................2.42, 2.73, 2.99
Conflicting marks, co-pending applications for......................2.83
Description of mark.................................................2.37
Different classes may be combined...................................2.86
Dividing of applications............................................2.87
Drawing required....................................................2.51
Extension of protection of international registration to United 
States.........................................................7.25-7.41
Filing-date requirements............................................2.21
Form of application............................................2.32-2.47
For international registration. See International registration, 
application for
Must be in English...............................................2.32(a)
Principal Register..................................................2.46
Priority claim based on foreign application.............2.34(a)(4), 7.27
Prior registrations should be identified............................2.36
Requirements for drawings...............................2.52, 2.53, 2.54
Requirements for written application..........................2.32, 2.34
Service mark........................................................2.43
Signature of...............................................2.32(b), 2.33
Specimens filed with..........................................2.56, 2.59
Supplemental Register...............................................2.47
Verification of............................................2.32(b), 2.33
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, 7.23
Cover sheet required to record................................3.31, 3.41
Effect of recording.................................................3.54
Electronically-filed requests to record...........3.25(c)(1), 3.31(a)(7)
Extension of protection of international registration to U.S., 
assignment of.................................................7.22, 7.23
Original documents should not be submitted for recordation.........3.25, 
                                                                 3.34(b)
Recording in U.S. Patent and Trademark Office of assignments or 
other instruments relating to such marks............................3.11
Recording of changes to International registrations or 
applications not applicable.........................................7.22
Records open to public inspection........................2.200, 2.201(b)
Requirements for recording...............................3.25-3.31, 3.41
Assignment of trial dates in inter partes proceedings....2.120(a), 2.121
Consolidated proceedings.....................................2.121(b)(2)

[[Page 328]]

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)
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........2.200(a)(2)

                                 B

Basis for filing an application...............................2.34, 2.35
Bona fide intention to use.................2.34(a)(2)(i), 2.34(a)(3)(i), 
                                       2.34(a)(4)(i), 2.89(a)(3), (b)(3)
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 Director...................................2.146(c), (e)
Burden of proof in an interference..................................2.96
Business with U.S. Patent and Trademark Office to be conducted 
with decorum and courtesy..........................................2.192
Business with U.S. Patent and Trademark Office transacted in 
writing............................................................2.191

                                 C

Cancellation of registrations (See also International Registration, 
cancellation of):
By cancellation proceeding--pleadings and procedure................2.111
(See also Petition for Cancellation)....................................
By registrant...............................................2.134, 2.172
For failure to file affidavit or declaration of use under sec. 8 
                                                             2.160-2.166
For failure to file affidavit or declaration of use under sec. 71 
                                                               7.36-7.40
During cancellation proceeding..................................2.134(b)
Cases not specifically defined in rules, petition to the Director 
                                                             2.146(a)(4)
Certificate of correction of registration...................2.174, 2.175
Certificate of mailing by first class mail.........................2.197
Certificate of registration:
As evidence in inter partes proceeding................2.122(b), (d), (e)
Contents...........................................................2.151
In Registered extension of protection of international 
registration to United States.......................................7.28
Issuance of new certificate to assignee............................2.171
When and how issued....................................2.81, 2.82, 2.151
Certificate of transmission........................................2.197
Certification mark......................................2.45, 2.56(a)(5)
Certification of international application..........................7.13
Certified copies of registrations and records......................2.201
Citizenship of applicant......................................2.32(a)(3)
Civil action:
From decision of Director.......................................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)

[[Page 329]]

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 Director 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), 2.120(a)
Claim of benefits of Act of 1946 for marks registered under prior 
Acts.........................................................2.153-2.156
Classification of goods and services................................2.85
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, 2.56(a)(3)
Color claim:
In application for registration in United States..............2.52(b)(1)
In application for international registration...........7.11(a)(4), 7.12
Combined applications...............................................2.86
Combined inter partes proceedings:
Cancellation....................................................2.112(b)
Opposition......................................................2.104(b)
Commencement of cancellation....................................2.111(a)
Commencement of opposition......................................2.101(a)
Communication with attorney or other representative.................2.18
Complaints against U.S. Patent and Trademark Office employees......2.192
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, 2.75(c)
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(b)
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)
Request to divide application during concurrent use proceeding 
                                                              2.87(c)(1)
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)
Confidential matters.........................2.27(e), 2.125(e), 2.126(d)
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

[[Page 330]]

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.
Copies of registrations and records...........................2.6, 2.201
Correction of informalities by amendment............................2.71
Correction of mistake in certificate of registration:
Mistake by U.S. Patent and Trademark Office........................2.174
Mistake by registrant..............................................2.175
Mistake in international registration...............................7.22
Correspondence, addresses for.................................2.190, 7.4
Correspondence, with whom held......................2.18, 2.24, 2.119(d)
Counterclaim in opposition and cancellation.....2.106(b)(2), 2.114(b)(2)
Court determination as basis for concurrent use registration.....2.99(f)
Courtesy and decorum in dealing with U.S. Patent and Trademark 
Office.............................................................2.192
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(c)
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)......2.34(a)(1)(i) and (ii)
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)
Delay in responding to official action..............................2.66
Deposit accounts for paying fees...................................2.208
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)

[[Page 331]]

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......................2.37, 2.52(b)(5)
Amendment to........................................................2.72
Designation of representative by foreign applicant, registrant, or 
party:
Application.........................................................2.24
Assignment..........................................................3.61
In inter partes proceeding......................................2.119(d)
Diligence, requirement for..........................2.66(a)(2), 2.146(i)
Director of United States Patent and Trademark Office:
May suspend certain rules.............................2.146(a)(5), 2.148
Petition to........................................................2.146
Disciplinary Proceedings...................................10.130-10.170
Disclaimer:
During inter partes cases..........................................2.133
In part, of registered mark........................................2.173
Disclosures:
Expert disclosures...........................................2.120(a)(2)
Failure to make.................................................2.120(e)
Filing with Board.......................................2.120(j)(5), (8)
Initial disclosures.....................................2.120(a)(2), (3)
Motion to compel................................................2.120(e)
Protective order................................................2.120(f)
Sanctions....................................................2.120(g)(2)
Discovery depositions. See Depositions, discovery, in inter partes 
cases.
Discovery procedure................................................2.120
Automatic disclosure and discovery provisions of Federal Rules of 
Civil Procedure applicable......................................2.120(a)
Discovery conference............................................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)
Proceeding suspended pending decision on motion to compel....2.120(e)(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)

[[Page 332]]

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
Dividing a registration.........................................2.171(b)
Domestic representative of foreign applicant, registrant, or party:
Application...................................................2.24, 2.37
Assignment..........................................................3.61
In inter partes proceeding......................................2.119(d)
Domicile of applicant.........................................2.32(a)(3)
Drawing........................................................2.51-2.54
Amendment to mark in................................................2.72
Color in.....................................................2.52(b)(1))
Drawings required...................................................2.51
Electronically-filed.......................................2.52(c), 2.53
Paper..............................................................Paper
Requirements for drawing.......................................2.52-2.54
Standard character drawing.......................................2.52(a)
Typed drawing. See Standard character drawing
Duplicate registrations, Office does not issue(pt2.48
Duration of registration:
Cancellation for failure to file affidavit or declaration of use 
under sec. 8.......................................................2.160
Cancellation for failure to file affidavit or declaration of use 
under sec. 71.......................................................7.36
Renewal................................................2.181-2.186, 7.41
Term of original registrations and renewals........................2.181

                                 E

Electronic filing with Trademark Trial and Appeal Board.........2.126(d)
Emergencies or interruptions in United States Postal Service....2.195(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)

[[Page 333]]

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...........2.198
Express surrender or cancellation of registration:
During inter partes proceeding.....................................2.134
Requirements for...................................................2.172
Extension of protection of international registration to United 
States.........................................................7.25-7.41
Affidavit of continued use or excusable nonuse required after 
registration...................................................7.36-7.40
Assignment of.......................................................7.23
Basis for registration...............................2.34(a)(5), 2.35(a)
Certificate of registration..................................2.151, 7.28
Definitions of terms.................................................7.1
Effect of cancellation or expiration of international registration
                                                                    7.30
Filing date.........................................................7.26
Not registrable on Supplemental Register................2.47(c), 2.75(c)
Part 2 rules applicable..........................................7.25(a)
Part 3 rules do not apply...........................................7.22
Priority claim......................................................7.27
Renewal.............................................................7.41
Registered extension of protection cannot be amended under Section 
7 of the Act.....................................................7.25(a)
Replacement of U.S. registration by...........................7.28, 7.29
Trademark Rules of Practice applicable to...........................7.25
Transformation to U.S. application.....................2.195(d)(5), 7.31
Extension of time for discovery and testimony...2.120(a), 2.121(a), (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
Good cause showing, when necessary.......................2.89(b)(4), (d)
Request filed with statement of use..............................2.89(e)

                                 F

Facsimile transmission, certificate of.....................2.197, 7.4(e)
Facsimile transmission of certain correspondence to U.S. Patent 
and Trademark Office.......................2.195(a)(3), (c), (d), 7.4(d)
Facsimiles as specimens..........................................2.56(c)
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)
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 U.S. Patent and Trademark 
Office records..................................................2.132(b)
Failure to respond to official action...............................2.65

[[Page 334]]

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...................................2.197
Fax transmission of certain correspondence to U.S. Patent and 
Trademark Office...................................2.195(a)(3), (c), (d)
Federal Rules of Civil Procedure......................2.116(a), 2.122(a)
Federal Rules of Evidence.......................................2.122(a)
Fees and charges..............................2.6, 2.206-2.209, 7.6, 7.7
For filing an application......................................2.6(a)(1)
For TEAS Plus application.....................2.6(a)(1)(iii), 2.21, 2.22
Payable to International Bureau......................................7.7
Fees, insufficient amount submitted:
For application...............................................2.21(a)(5)
For petition for cancellation...................................2.111(c)
For ex parte appeal.............................................2.141(b)
For opposition..................................................2.101(d)
For renewal application.................................2.183(b) and (f)
Fees, payment of.............................2.6, 2.206-2.207, 7.6, 7.79
To International Bureau..............................................7.7
Filing an amendment to allege use...................................2.76
Filing an extension of protection under 66(a).................2.34(a)(5)
Filing an opposition...............................................2.101
Filing and service of trial testimony..............................2.125
Filing by CD Rom................................................2.126(b)
Filing date, effective, after amendment of sec. l(b) application 
to Supplemental Register.........................................2.75(b)
Filing date of application....................................2.21, 7.26
Filing of confidential papers.........................2.125(e), 2.126(d)
Filing of papers electronically.................................2.126(c)
Filing of papers and fees by Express Mail..........................2.198
Filing petition for cancellation...................................2.111
Filing requests for extensions of time for filing statement of use
                                                                    2.89
Filing statement of use after notice of allowance...................2.88
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), 3.61
Foreign application, priority claim based on............2.34(a)(4), 7.27
Foreign registration:
Application based on, under sec. 44..................2.34(a)(3), 2.47(b)
Copy of.......................................................2.34(a)(2)
Necessary before publication..............................2.34(a)(3)(ii)
Form of amendment to application....................................2.74
Form of submissions to TTAB........................................2.126

                                 G

General information and correspondence..................2.190-2.198, 7.4
Goods and/or services identification of:
Additions not permitted..........................................2.71(a)
Amendment of.....................................................2.71(a)
Amendment of, filed with statement of use........................2.88(i)
In affidavit or declaration filed under sec. 8..................2.161(e)
In affidavit or declaration filed under sec. 71..................7.37(e)

[[Page 335]]

In international application..................................7.11(a)(7)
In written application........................................2.32(a)(6)
Multiple goods or services comprised in single class or multiple 
classes..................................2.32(a)(6), 2.34(a)(1)(v), 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(a)(3), (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 Director.........................................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.....................................................2.194
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
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..................................2.34, 2.37
Bona fide intention to use mark in commerce necessary......2.34(a)(2)(i)
Certification mark..................................................2.45
Collective mark.....................................................2.44
Dividing............................................................2.87
Drawing required...........................................2.32(c), 2.51
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....................2.32, 2.34(a)(2)
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), 2.75(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
Declared only on petition to Director............................2.91(a)
Institution of interference.........................................2.93
Issue...............................................................2.96

[[Page 336]]

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)
Request to divide application during interference.............2.87(c)(1)
International application......................................7.11-7.14
Address for mailing paper...............................2.190(a), 7.4(b)
Cannot be filed by fax...............................2.195(d)(5), 7.4(d)
Certificate of mailing or transmission does not apply........2.197(a)(2)
Certification of....................................................7.13
Claim of color in...................................................7.12
Correspondence, receipt of...........................................7.4
Definitions of terms.................................................7.1
Fees for........................................................7.6, 7.7
Hand delivery of..................................................7.4(c)
Irregularities in...........................2.195(d)(5), 7.4(b)(2), 7.14
Must be filed through TEAS or on International Bureau's form.....7.11(a)
Must be in English...................................................7.3
Requirements for....................................................7.11
Subsequent designation..............................................7.21
International Bureau......7.1, 7.11, 7.13, 7.14, 7.21, 7.22, 7.23, 7.24, 
                                      7.26, 7.27, 7.30, 7.31, 7.36, 7.41
Payment of fees to...................................................7.7
International register, recording changes in. See also 
International registration.....................................7.22-7.24
International registration......................................7.1-7.41
Application for. See International application.
Assignment of.......................................................7.23
Cancellation of...............................................7.30, 7.31
Correspondence must be in English....................................7.3
Definitions of terms.................................................7.1
Extension of protection to United States. See Extension of protection of 
international registration to United States
Priority claim......................................................7.27
Recording changes in..............................2.195(d)(5), 7.22-7.24
Renewal of..........................................................7.41
Replacement...................................................7.28, 7.29
Restriction on holder's right to dispose of.........................7.24
Subsequent designation..............................................7.21
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....2.195(e)

[[Page 337]]

Irregularities in application for international registration. (See 
International application, irregularities in)
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

Lawyers. (See Attorneys)
Letter, separate for each distinct subject of inquiry......2.193(a), (b)
Letters, address for mailing to U.S. Patent and Trademark Office 
                                                                   2.190

                                 M

Madrid Protocol. (See International registration, international 
application)
Mailing, certificate of............................................2.197
Mailing address for correspondence with U.S. Patent and Trademark 
Office.....................................................2.190, 7.4(b)
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
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 U.S. Patent and 
Trademark Office...................................................2.174
Money, payment of..................................2.206-2.209, 7.6, 7.7
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), (c)
To suspend.........................................................2.117

[[Page 338]]

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....................2.32(a)(6), 2.34(a)(1)(v)
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)
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 complaint in a court proceeding..................2.116(c)
Discovery..........................................................2.120
Documents not returnable............................................2.25
Extension of time for filing an opposition.........................2.102
Failure to timely answer........................................2.106(a)

[[Page 339]]

Filing an opposition...............................................2.101
Insufficient fees...............................................2.101(d)
Notification of opposition.........................................2.105
Procedure, inter partes......................................2.116-2.136
Request to divide application during opposition...............2.87(c)(1)
Suspension of proceedings..........................................2.117
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 Director.........................................2.146(f)
Oral promise, stipulation, or understanding........................2.191
Ownership, prior registrations, identification in application.......2.36

                                 P

Payment of money..............................2.6, 2.206-2.209, 7.6, 7.7
Pending application index...........................................2.27
Period for response to Office actions...............................2.62
Personal appearance unnecessary....................................2.191
Persons who may practice before the U.S. Patent and Trademark 
Office in trademark cases..........................................11.14
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)
Discovery..........................................................2.120
Failure to timely answer........................................2.114(a)
Filing petition for cancellation...................................2.111
Insufficient fees...............................................2.111(c)
Notification of cancellation proceeding............................2.113
Procedure, inter partes......................................2.116-2.136
Suspension of proceedings..........................................2.117
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 Director...........................................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)
Diligence, requirement for......................................2.146(i)
Extraordinary situation requiring suspension or waiver of 
requirement of rules.........................................2.146(a)(5)
Fee........................................................2.6, 2.146(c)
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)

[[Page 340]]

Invoke supervisory authority.................................2.146(a)(3)
Oral hearing on petition........................................2.146(f)
Reconsideration of decision on petition.........................2.146(j)
Reconsideration of refusal to accept sec. 8 affidavit or 
declaration.....................................................2.165(b)
Refusal of renewal of registration.................................2.186
Relief from repeated formal requirement of Examiner.............2.63(b), 
                                                             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........2.198
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 
                                                                2.195(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 U.S. Patent and Trademark Office, individuals 
entitled to........................................................11.14
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.............2.34(a)(4), 7.27
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...........................10.20-10.112
Proof of distinctiveness under sec. 2(f)............................2.41
Proof of service................................................2.119(a)
Protective order:
Access to materials filed under..................................2.27(e)
Form of filing materials under..................................2.126(d)
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, notice by, undelivered Office notices to registrant 
in inter partes proceeding.........................................2.118

                                 R

Rebuttal testimony...........................................(1)(b), (c)
Receipt of papers and fees..............................2.195-2.198, 7.4

[[Page 341]]

Recognition of attorneys or other authorized person..........2.17, 11.14
Reconsideration:
Of affidavit or declaration of use under sec. 8.......2.163(b), 2.165(a)
Of decision after final hearing in inter partes proceeding......2.129(c)
Of decision on ex parte appeal.....................................2.144
Of decision on petition to Director.............................2.146(j)
Of decision on petition to revive................................2.66(f)
Of final action..................................................2.64(b)
Of order or decision on interlocutory motion....................2.127(b)
Records of documents in Assignment Services Division of U.S. 
Patent and Trademark Office....................................3.11-3.56
Records and files of the U.S. Patent and Trademark Office....2.27, 2.200
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 U.S. Patent and Trademark Office...........2.209
Refusal of affidavit or declaration of use under sec. 8............2.163
Refusal of affidavit or declaration of use under sec. 71............7.39
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)
Registered extension of protection. (See Extension of protection of 
international registration to United States)
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 records open to public inspection...................2.27(d)
Registrations, printed copies available............................2.201
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................................2.181-2.186, 7.41
Application for renewal, requirements..............................2.183
Failure to renew registration involved in inter partes proceeding 
                                                                2.134(b)
Of international registration.......................................7.41
Period in which to file............................................2.182
Refusal of renewal..............................................2.184(a)
Review of Examiner's refusal by Director...........................2.186
Term of original registrations and renewals........................2.181
Replacement...................................................7.28, 7.29
Reply briefs in inter partes proceedings........................2.127(a)
Representation by attorney..........................................2.11
Representation of others before the U.S. Patent and Trademark 
Office.......................................................2.11, 11.14
Representative, domestic or U.S. (See Domestic representative)
Representation, recognition for..............................2.17, 11.14
Republication of marks registered under prior acts...........2.153-2.156
Request for admissions (discovery). (See Admissions, request for)
Request for Extension of protection of international registration to 
United States. (See Extension of protection of international 
registration to United States)

[[Page 342]]

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................................................2.201
Request for registration......................................2.32(a)(1)
Request to divide an application....................................2.87
Request to divide a registration................................2.171(b)
Requirements for receiving a filing date......................2.21, 7.26
Requirements for written application..........................2.32, 2.34
Registration of marks registered under prior acts..................2.158
Response to official action.........................................2.62
Restriction on holder's right to dispose of international 
registration........................................................7.24
Review by Director:
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
Of refusal of affidavit or declaration of use under sec. 71.........7.40
Of refusal of renewal application..................................2.186
Petitions to the Director..........................................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:
Suspension, petition to Director......................2.146(a)(5), 2.148
Waiver, petition to Director..........................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.................................................2.195, 2.196
Schedule of classes of goods and services..................2.85, 6.1-6.4
Schedule of time for discovery and trial periods.........2.120(a), 2.121
Sec. 2(f), proof of distinctiveness.................................2.41
Sec. 8 affidavit or declaration of use.......................2.160-2.166
Sec. 44, application based on:
Amendment to change application to different register............2.75(a)
Amendment to description or drawing in mark......................2.72(c)
Basis for filing..............................................2.34, 2.37
Certification mark...............................................2.45(b)
Collective mark..................................................2.44(b)
Drawing required.................................................2.32(c)
Filing-date requirements............................................2.21
Goods or services identified may not exceed scope of those in 
foreign application or registration...........................2.32(a)(6)
Priority claim................................................2.34(a)(4)
Requirements for drawings......................................2.52-2.54
Requirements for written application..........................2.33, 2.34

[[Page 343]]

Supplemental Register............................................2.47(b)
Sec. 71 affidavit or declaration of use........................7.36-7.40
Service charge for filing renewal application during grace period 
                                                              2.6, 2.185
Services marks......................................................2.43
Specimens or facsimiles..........................................2.56(c)
Service of copies of testimony.....................................2.125
Service and signing of papers......................................2.119
Signature and certificate of attorney..............................11.18
Signature of applicant..............................................2.33
Signature of electronically-filed document.....2.33(d), 2.193(c)(1)(iii)
Single certificate for one mark registered in a plurality of 
classes..........................................................2.86(c)
Specimens......................................................2.56-2.59
Electronically-filed.............................2.56(d)(4), 2.161(g)(3)
Facsimiles in lieu of specimens..................................2.56(c)
Not evidence in behalf of applicant or registrant in inter partes 
proceeding...................................................2.122(b)(2)
Of service mark...............................................2.56(a)(2)
Requirement of filing with affidavit or declaration of use under 
sec. 8..........................................................2.161(g)
Requirement of filing with affidavit or declaration of use under 
sec. 71..........................................................7.37(g)
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(b)(1)
Amendments to dates of use after filing.......................2.71(c)(2)
Extensions of time to file..........................................2.89
Fee for filing.......................................................2.6
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
Subsequent designation..............................................7.21
Address for mailing paper............................., 2.190(a), 7.4(b)
Cannot be filed by fax...............................2.195(d)(5), 7.4(d)
Certificate of mailing or transmission does not apply........2.197(a)(2)
Fees for.................................................7.7, 7.21(a)(8)
Must be filed through TEAS or on International Bureau's form.....7.21(b)
Substitute specimens, filing of.....................................2.59
Summary judgments in inter partes proceedings................2.127(e)(1)
Sunday, Saturday, or Federal holiday, time for taking action 
expiring on.................................................2.195, 2.196
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
Marks in request for extension of protection of international 
registration not registrable on.........................2.47(c), 2.75(c)

[[Page 344]]

Surrender of certificate of registration...........................2.172
During inter partes proceeding.....................................2.134
Suspension of action in application by U.S. Patent and Trademark 
Office..............................................................2.67
Suspension from practice before U.S. Patent and Trademark Office 
                                                            11.11; 11.25
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, Director.........................2.146(a)(5), 2.148

                                 T

TEAS.......2.2(f), 2.6(a)(1), 2.33(d), 2.52(c), 2.56(d)(4), 2.161(g)(3), 
                                                        2.193(c)(1)(iii)
Application filing fee.........................................2.6(a)(1)
Definition of.....................................................2.2(f)
 Drawing...................................................2.52(d), 2.53
Signature.........................................2.33(d), 2.193(c)(iii)
 Specimen........................................2.56(d)(4), 2.161(g)(3)
TEAS Plus.....................................2.6(a)(1)(iii), 2.22, 2.23
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 U.S. Patent and Trademark Office...........2.123(f), 2.124(f), 
                                                                2.125(c)
Inspection of deposition........................................2.123(i)
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....2.160, 7.36
For filing amendment to allege use...............................2.76(a)
For filing appeal to court or civil action......................2.145(d)
For filing briefs in inter partes proceedings......................2.127
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 U.S. Patent and Trademark Office action.............2.62
For taking discovery............................................2.120(a)
For taking testimony...............................................2.121

[[Page 345]]

Transformation.................2.195(d)(5), 2.197(a)(2), 7.4(b)(2), 7.31
Translation of assignment...........................................3.26
Transmission, certificate of.......................................2.197

                                 U

Undelivered Office notices, to registrant..........................2.118
Unprofessional conduct, attorneys...........................10.20-10.112
Unprovided for and extraordinary circumstances, petition to 
Director................................................2.146(a)(4), (5)
U.S. Court of Appeals for the Federal Circuit, appeal to...........2.145
Use:
Allegation of use in commerce...........................2.34, 2.76, 2.88
Amendment to allege use in commerce.................................2.76
Bona fide intention to use in commerce........................2.34, 2.89
By predecessor or by related companies..............................2.38
Dates of first use and first use in commerce....2.34(a)(1)(ii) and (iii)
Statement of use....................................................2.88
Use of discovery................................................2.120(j)

                                 V

Verification:
Declaration in lieu of oath or verification.........................2.20
Of application......................................................2.33
Of electronically-filed document...............2.33(d), 2.193(c)(1)(iii)
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
In support of amendments to descriptions or drawings of the mark 
                                                                    2.72
In support of amendments to dates of use.........................2.71(c)
In support of request for extension of time to file statement of 
use.................................................................2.89

                                 W

Waiver of rule, petition to Director..................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............................................2.32-2.47

[[Page 346]]









PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE--Table of Contents






PART 10_REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK 
OFFICE--Table of Contents




Sec.
10.1 Definitions.
10.2-10.10 [Reserved]
10.11 Removing names from the register.
10.12-10.19 [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.
10.113-10.170 [Reserved]

    Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 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 
Sec. Sec. 1.68 and 2.20 of this subchapter), or statutory declaration 
under 28 U.S.C. 1746.

[[Page 347]]

    (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 
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. Sec. 10.2-10.10  [Reserved]



Sec. 10.11  Removing names from the register.

    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 theOfficial 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.

[69 FR 35452, June 24, 2004]

[[Page 348]]



Sec. Sec. 10.12-10.19  [Reserved]

     Patent and Trademark Office Code of Professional Responsibility



Sec. 10.20  Canons and Disciplinary Rules.

    (a) Canons are set out in Sec. Sec. 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 Sec. Sec. 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 
United States or, in the case of a practitioner who resides in a foreign 
country or is registered under Sec. 11.6(c), by any duly constituted 
authority of:
    (i) A State,
    (ii) The United States, or
    (iii) The country in which the practitioner resides.

[[Page 349]]

    (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. 11.58.
    (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 Sec. 41.202(a)(1) of this title.
    (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) Except as permitted by Sec. 1.52(c) of this chapter, 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. 11.10(b).
    (14) Knowingly failing to advise the Director in writing of any 
change which would preclude continued registration under Sec. 11.6.
    (15) Signing a paper filed in the Office in violation of the 
provisions of Sec. 11.18 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 Sec. 11.22(b).
    (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 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

[[Page 350]]

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. 11.10(d).
    (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; 65 FR 54683, Sept. 8, 
2000; 69 FR 50003, Aug. 12, 2004; 73 FR 59514, Oct. 9, 2008]



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)



Sec. Sec. 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. 11.14(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.

[50 FR 5172, Feb. 6, 1985, as amended at 73 FR 59514, Oct. 9, 2008]



Sec. 10.32  Advertising.

    (a) Subject to Sec. 10.31, a practitioner may advertise services 
through public media, including a telephone directory, legal directory, 
newspaper, or other periodical, radio, or television, or through written 
communications not involving solicitation as defined by Sec. 10.33.

[[Page 351]]

    (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.



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

[[Page 352]]

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 
Sec. Sec. 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, 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;

[[Page 353]]

    (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.



Sec. Sec. 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.



Sec. Sec. 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.
    (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.

[[Page 354]]

    (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.



Sec. Sec. 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.



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

[[Page 355]]

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.



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.

[[Page 356]]

    (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.



Sec. Sec. 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.



Sec. Sec. 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 Sec. Sec. 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 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.

[[Page 357]]

    (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 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.

[[Page 358]]



Sec. Sec. 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.



Sec. Sec. 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.



Sec. 10.103  Practitioner candidate for judicial office.

    A practitioner who is a candidate for judicial office shall comply 
with applicable provisions of law.



Sec. Sec. 10.104-10.109  [Reserved]



Sec. 10.110  Canon 9.

    A practitioner should avoid even the appearance of professional 
impropriety.

[[Page 359]]



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. 11.6(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)

[50 FR 5172, Feb. 6, 1985, as amended at 70 FR 56129, Sept. 26, 2005]



Sec. Sec. 10.113-10.170  [Reserved]



PART 11_REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND
TRADEMARK OFFICE--Table of Contents




                      Subpart A_General Provisions

                           General Information

Sec.
11.1 Definitions.
11.2 Director of the Office of Enrollment and Discipline.
11.3 Suspension of rules.

           Subpart B_Recognition To Practice Before the USPTO

              Patents, Trademarks, and Other Non-Patent Law

11.4 [Reserved]
11.5 Register of attorneys and agents in patent matters; practice before 
          the Office.
11.6 Registration of attorneys and agents.
11.7 Requirements for registration.
11.8 Oath and registration fee.
11.9 Limited recognition in patent matters.
11.10 Restrictions on practice in patent matters.
11.11 Administrative suspension, inactivation, resignation, and 
          readmission.
11.12-11.13 [Reserved]
11.14 Individuals who may practice before the Office in trademark and 
          other non-patent matters.
11.15 Refusal to recognize a practitioner.
11.16-11.17 [Reserved]
11.18 Signature and certificate for correspondence filed in the Office.

  Subpart C_Investigations and Disciplinary Proceedings; Jurisdiction, 
               Sanctions, Investigations, and Proceedings

Sec.
11.19 Disciplinary jurisdiction; Jurisdiction to transfer to disability 
          inactive status.

[[Page 360]]

11.20 Disciplinary sanctions; Transfer to disability inactive status.
11.21 Warnings.
11.22 Investigations.
11.23 Committee on Discipline.
11.24 Reciprocal discipline.
11.25 Interim suspension and discipline based upon conviction of 
          committing a serious crime.
11.26 Settlement.
11.27 Exclusion on consent.
11.28 Incapacitated practitioners in a disciplinary proceeding.
11.29 Reciprocal transfer or initial transfer to disability inactive 
          status.
11.30-11.31 [Reserved]
11.32 Initiating a disciplinary proceeding.
11.33 [Reserved]
11.34 Complaint.
11.35 Service of complaint.
11.36 Answer to complaint.
11.37 [Reserved]
11.38 Contested case.
11.39 Hearing officer; appointment; responsibilities; review of 
          interlocutory orders; stays.
11.40 Representative for OED Director or respondent.
11.41 Filing of papers.
11.42 Service of papers.
11.43 Motions.
11.44 Hearings.
11.45 Amendment of pleadings.
11.46-11.48 [Reserved]
11.49 Burden of proof.
11.50 Evidence.
11.51 Depositions.
11.52 Discovery.
11.53 Proposed findings and conclusions; post-hearing memorandum.
11.54 Initial decision of hearing officer.
11.55 Appeal to the USPTO Director.
11.56 Decision of the USPTO Director.
11.57 Review of final decision of the USPTO Director.
11.58 Duties of disciplined or resigned practitioner.
11.59 Dissemination of disciplinary and other information.
11.60 Petition for reinstatement.
11.61 Savings clause.
11.62-11.99 [Reserved]

    Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32, 41.

    Source: 69 FR 35452, June 24, 2004, unless otherwise noted.



                      Subpart A_General Provisions

                           General Information



Sec. 11.1  Definitions.

    This part governs solely the practice of patent, trademark, and 
other law before the United States 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 
United States Patent and Trademark Office to accomplish its Federal 
objectives. Unless otherwise clear from the context, the following 
definitions apply to this part:
    Attorney or lawyer means an individual who is a member in good 
standing of the highest court of any State, including an individual who 
is in good standing of the highest court of one State and not under an 
order of any court or Federal agency suspending, enjoining, restraining, 
disbarring or otherwise restricting the attorney from practice before 
the bar of another State or Federal agency. A non-lawyer means a person 
who is not an attorney or lawyer.
    Belief or believes means that the person involved actually supposed 
the fact in question to be true. A person's belief may be inferred from 
circumstances.
    Conviction or convicted means any confession to a crime; a verdict 
or judgment finding a person guilty of a crime; any entered plea, 
including nolo contendre or Alford plea, to a crime; or receipt of 
deferred adjudication (whether judgment or sentence has been entered or 
not) for an accused or pled crime.
    Crime means any offense declared to be a felony or misdemeanor by 
Federal or State law in the jurisdiction where the act occurs.
    Data sheet means a form used to collect the name, address, and 
telephone information from individuals recognized to practice before the 
Office in patent matters.
    Disqualified means any action that prohibits a practitioner from 
participating in or appearing before the program or agency, regardless 
of how long the prohibition lasts or the specific terminology used.
    Federal agency means any authority of the executive branch of the 
Government of the United States.
    Federal program means any program established by an Act of Congress 
or administered by a Federal agency.
    Fiscal year means the time period from October 1st through the 
ensuing September 30th.

[[Page 361]]

    Fraud or fraudulent means conduct having a purpose to deceive and 
not merely negligent misrepresentation or failure to apprise another of 
relevant information.
    Good moral character and reputation means the possession of honesty 
and truthfulness, trustworthiness and reliability, and a professional 
commitment to the legal process and the administration of justice, as 
well as the condition of being regarded as possessing such qualities.
    Knowingly, known, or knows means actual knowledge of the fact in 
question. A person's knowledge may be inferred from circumstances.
    Mandatory Disciplinary Rule is a rule identified in Sec. 10.20(b) 
of this chapter as a Disciplinary Rule.
    Matter means any litigation, administrative proceeding, lobbying 
activity, application, claim, investigation, controversy, arrest, 
charge, accusation, contract, negotiation, estate or family relations 
practice issue, request for a ruling or other determination, or any 
other matter covered by the conflict of interest rules of the 
appropriate Government entity.
    OED means the Office of Enrollment and Discipline.
    OED Director means the Director of the Office of Enrollment and 
Discipline.
    OED Director's representatives means attorneys within the USPTO 
Office of General Counsel who act as representatives of the OED 
Director.
    Office means the United States Patent and Trademark Office.
    Practitioner means:
    (1) An attorney or agent registered to practice before the Office in 
patent matters,
    (2) An individual authorized under 5 U.S.C. 500(b) or otherwise as 
provided by Sec. 10.14(b), (c), and (e) of this subchapter, to practice 
before the Office in trademark matters or other non-patent matters, or
    (3) An individual authorized to practice before the Office in a 
patent case or matters under Sec. 11.9(a) or (b).
    Proceeding before the Office means an application for patent, an 
application for reissue, a reexamination, a protest, a public use 
matter, an inter partes patent matter, correction of a patent, 
correction of inventorship, an application to register a trademark, an 
inter partes trademark matter, an appeal, a petition, and any other 
matter that is pending before the Office.
    Reasonable or reasonably when used in relation to conduct by a 
practitioner means the conduct of a reasonably prudent and competent 
practitioner.
    Registration means registration to practice before the Office in 
patent proceedings.
    Roster means a list of individuals who have been registered as 
either a patent attorney or patent agent.
    Serious crime means:
    (1) Any criminal offense classified as a felony under the laws of 
the United States, any state or any foreign country where the crime 
occurred; or
    (2) Any crime a necessary element of which, as determined by the 
statutory or common law definition of such crime in the jurisdiction 
where the crime occurred, includes interference with the administration 
of justice, false swearing, misrepresentation, fraud, willful failure to 
file income tax returns, deceit, bribery, extortion, misappropriation, 
theft, or an attempt or a conspiracy or solicitation of another to 
commit a ``serious crime.''
    Significant evidence of rehabilitation means satisfactory evidence 
that is significantly more probable than not that there will be no 
recurrence in the foreseeable future of the practitioner's prior 
disability or addiction.
    State means any of the 50 states of the United States of America, 
the District of Columbia, and any Commonwealth or territory of the 
United States of America.
    Substantial when used in reference to degree or extent means a 
material matter of clear and weighty importance.
    Suspend or suspension means a temporary debarring from practice 
before the Office or other jurisdiction.
    United States means the United States of America, and the 
territories and possessions the United States of America.
    USPTO Director means the Director of the United States Patent and 
Trademark Office, or an employee of the Office delegated authority to 
act for the Director of the United States Patent

[[Page 362]]

and Trademark Office in matters arising under this part.

[69 FR 35452, June 24, 2004, as amended at 73 FR 47687, Aug. 14, 2008]



Sec. 11.2  Director of the Office of Enrollment and Discipline.

    (a) Appointment. The USPTO Director shall appoint a Director of the 
Office of Enrollment and Discipline (OED Director). In the event of a 
vacancy in the office of the OED Director, the USPTO Director may 
designate an employee of the Office to serve as acting OED Director. The 
OED Director shall be an active member in good standing of the bar of 
the highest court of a State.
    (b) Duties. The OED Director shall:
    (1) Supervise staff as may be necessary for the performance of the 
OED Director's duties.
    (2) Receive and act upon applications for registration, prepare and 
grade the examination provided for in Sec. 11.7(b), maintain the 
register provided for in Sec. 11.5, and perform such other duties in 
connection with enrollment and recognition of attorneys and agents as 
may be necessary.
    (3) Conduct investigations into the moral character and reputation 
of any individual seeking to be registered as an attorney or agent, or 
of any individual seeking limited recognition, deny registration or 
recognition of individuals failing to demonstrate possession of good 
moral character and reputation, and perform such other duties in 
connection with enrollment matters and investigations as may be 
necessary.
    (4) Conduct investigations of matters involving possible grounds for 
discipline of practitioners coming to the attention of the OED Director. 
Except in matters meriting summary dismissal, no disposition under Sec. 
11.22(h) shall be recommended or undertaken by the OED Director until 
the accused practitioner shall have been afforded an opportunity to 
respond to a reasonable inquiry by the OED Director.
    (5) With the consent of a panel of three members of the Committee on 
Discipline, initiate disciplinary proceedings under Sec. 11.32 and 
perform such other duties in connection with investigations and 
disciplinary proceedings as may be necessary.
    (6) Oversee the preliminary screening of information and close 
investigations as provided for in Sec. 11.22.
    (7) [Reserved]
    (c) Petition to OED Director regarding enrollment or recognition. 
Any petition from any action or requirement of the staff of OED 
reporting to the OED Director shall be taken to the OED Director 
accompanied by payment of the fee set forth in Sec. 1.21(a)(5)(i) of 
this chapter. Any such petition not filed within sixty days from the 
mailing date of the action or notice from which relief is requested will 
be dismissed as untimely. The filing of a petition will neither stay the 
period for taking other action which may be running, nor stay other 
proceedings. The petitioner may file a single request for 
reconsideration of a decision within thirty days of the date of the 
decision. Filing a request for reconsideration stays the period for 
seeking review of the OED Director's decision until a final decision on 
the request for reconsideration is issued. A final decision by the OED 
Director may be reviewed in accordance with the provisions of paragraph 
(d) of this section.
    (d) Review of OED Director's decision regarding enrollment or 
recognition. A party dissatisfied with a final decision of the OED 
Director regarding enrollment or recognition may seek review of the 
decision upon petition to the USPTO Director accompanied by payment of 
the fee set forth in Sec. 1.21(a)(5)(ii) of this chapter. Any such 
petition to the USPTO Director waives a right to seek reconsideration 
from the OED Director. Any petition not filed within thirty days after 
the final decision of the OED Director may be dismissed as untimely. 
Briefs or memoranda, if any, in support of the petition shall accompany 
the petition. The petition will be decided on the basis of the record 
made before the OED Director. The USPTO Director in deciding the 
petition will consider no new evidence. Copies of documents already of 
record before the OED Director shall not be submitted with the petition. 
An oral hearing will not be granted except when considered necessary by 
the USPTO Director. Any request for reconsideration of the decision of 
the USPTO Director may be dismissed as

[[Page 363]]

untimely if not filed within thirty days after the date of said 
decision.
    (e) Petition to USPTO Director in disciplinary matters. Petition may 
be taken to the USPTO Director to invoke the supervisory authority of 
the USPTO Director in appropriate circumstances in disciplinary matters. 
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 of the petition must accompany the 
petition. Where facts are to be proven, the proof in the form of 
affidavits or declarations (and exhibits, if any) must accompany the 
petition. The OED Director may be directed by the USPTO Director to file 
a reply to the petition, supplying a copy to the petitioner. An oral 
hearing will not be granted except when considered necessary by the 
USPTO Director. The mere filing of a petition will not stay an 
investigation, disciplinary proceeding or other proceedings. Any 
petition under this part not filed within thirty days of the mailing 
date of the action or notice from which relief is requested may be 
dismissed as untimely. Any request for reconsideration of the decision 
of the USPTO Director may be dismissed as untimely if not filed within 
thirty days after the date of said decision.

[69 FR 35452, June 24, 2004, as amended at 73 FR 47687, Aug. 14, 2008]



Sec. 11.3  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 statute may be suspended or waived by the USPTO Director or the 
designee of the USPTO Director, sua sponte, or on petition by any party, 
including the OED Director or the OED Director's representative, subject 
to such other requirements as may be imposed.
    (b) No petition under this section shall stay a disciplinary 
proceeding unless ordered by the USPTO Director or a hearing officer.

[73 FR 47688, Aug. 14, 2008]



           Subpart B_Recognition To Practice Before the USPTO

              Patents, Trademarks, and Other Non-Patent Law



Sec. 11.4  [Reserved]



Sec. 11.5  Register of attorneys and agents in patent matters; practice
before the Office.

    (a) 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 having prospective or immediate business before the 
Office in the preparation and prosecution of patent applications. 
Registration in the Office under the provisions of this part shall 
entitle the individuals so registered to practice before the Office only 
in patent matters.
    (b) Practice before the Office. Practice before the Office includes, 
but is not limited to, law-related service that comprehends any matter 
connected with the presentation to the Office or any of its officers or 
employees relating to a client's rights, privileges, duties, or 
responsibilities under the laws or regulations administered by the 
Office for the grant of a patent or registration of a trademark, or for 
enrollment or disciplinary matters. Such presentations include preparing 
necessary documents in contemplation of filing the documents with the 
Office, corresponding and communicating with the Office, and 
representing a client through documents or at interviews, hearings, and 
meetings, as well as communicating with and advising a client concerning 
matters pending or contemplated to be presented before the Office. 
Nothing in this section proscribes a practitioner from employing or 
retaining non-practitioner assistants under the supervision of the 
practitioner to assist the practitioner in matters pending or 
contemplated to be presented before the Office.
    (1) Practice before the Office in patent matters. Practice before 
the Office in patent matters includes, but is not limited to, preparing 
and prosecuting any patent application, consulting with or giving advice 
to a client in contemplation of filing a patent application or

[[Page 364]]

other document with the Office, drafting the specification or claims of 
a patent application; drafting an amendment or reply to a communication 
from the Office that may require written argument to establish the 
patentability of a claimed invention; drafting a reply to a 
communication from the Office regarding a patent application; and 
drafting a communication for a public use, interference, reexamination 
proceeding, petition, appeal to or any other proceeding before the Board 
of Patent Appeals and Interferences, or other proceeding. Registration 
to practice before the Office in patent cases sanctions the performance 
of those services which are reasonably necessary and incident to the 
preparation and prosecution of patent applications or other proceeding 
before the Office involving a patent application or patent in which the 
practitioner is authorized to participate. The services include:
    (i) Considering the advisability of relying upon alternative forms 
of protection which may be available under state law, and
    (ii) Drafting an assignment or causing an assignment to be executed 
for the patent owner in contemplation of filing or prosecution of a 
patent application for the patent owner, where the practitioner 
represents the patent owner after a patent issues in a proceeding before 
the Office, and when drafting the assignment the practitioner does no 
more than replicate the terms of a previously existing oral or written 
obligation of assignment from one person or party to another person or 
party.
    (2) Practice before the Office in trademark matters. Practice before 
the Office in trademark matters includes, but is not limited to, 
consulting with or giving advice to a client in contemplation of filing 
a trademark application or other document with the Office; preparing and 
prosecuting an application for trademark registration; preparing an 
amendment which may require written argument to establish the 
registrability of the mark; and conducting an opposition, cancellation, 
or concurrent use proceeding; or conducting an appeal to the Trademark 
Trial and Appeal Board.

[73 FR 47688, Aug. 14, 2008]



Sec. 11.6  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 that such registration 
is not inconsistent with the terms upon which the alien was admitted to, 
and resides in, the United States and further provided that 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. 11.9(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 that such registration is 
not inconsistent with the terms upon which the alien was admitted to, 
and resides in, the United States, and further provided that 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. 11.9(b).

[[Page 365]]

    (c) Foreigners. Any foreigner not a resident of the United States 
who shall file proof to the satisfaction of the OED 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. 11.7, 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 that the patent office of such country allows 
substantially reciprocal privileges to those admitted to practice before 
the Office. Registration as a patent agent under this paragraph shall 
continue only during the period that the conditions specified in this 
paragraph obtain. Upon notice by the patent office of such country that 
a patent agent registered under this section is no longer registered or 
no longer in good standing before the patent office of such country, and 
absent a showing of cause why his or her name should not be removed from 
the register, the OED Director shall promptly remove the name of the 
patent agent from the register and publish the fact of removal. Upon 
ceasing to reside in such country, the patent agent registered under 
this section is no longer qualified to be registered under this section, 
and the OED Director shall promptly remove the name of the patent agent 
from the register and publish the fact of removal.
    (d) Board of Patent Appeals and Interferences matters. For action by 
a person who is not registered in a proceeding before the Board of 
Patent Appeals and Interferences, see Sec. 41.5(a) of this title.

[69 FR 35452, June 24, 2004, as amended at 69 FR 50003, Aug. 12, 2004]



Sec. 11.7  Requirements for registration.

    (a) No individual will be registered to practice before the Office 
unless he or she has:
    (1) Applied to the USPTO Director in writing by completing an 
application for registration form supplied by the OED Director and 
furnishing all requested information and material; and
    (2) Established to the satisfaction of the OED Director that he or 
she:
    (i) Possesses good moral character and reputation;
    (ii) Possesses the legal, scientific, and technical qualifications 
necessary for him or her to render applicants valuable service; and
    (iii) Is competent to advise and assist patent applicants in the 
presentation and prosecution of their applications before the Office.
    (b)(1) To enable the OED Director to determine whether an individual 
has the qualifications specified in paragraph (a)(2) of this section, 
the individual shall:
    (i) File a complete application for registration each time admission 
to the registration examination is requested. A complete application for 
registration includes:
    (A) An application for registration form supplied by the OED 
Director wherein all requested information and supporting documents are 
furnished,
    (B) Payment of the fees required by Sec. 1.21(a)(1) of this 
subchapter,
    (C) Satisfactory proof of scientific and technical qualifications, 
and
    (D) For aliens, provide proof that recognition is not inconsistent 
with the terms of their visa or entry into the United States;
    (ii) Pass the registration examination, unless the taking and 
passing of the examination is waived as provided in paragraph (d) of 
this section. Unless examination is waived pursuant to paragraph (d) of 
this section, each individual seeking registration must take and pass 
the registration examination to enable the OED Director to determine 
whether the individual possesses the legal and competence qualifications 
specified in paragraphs (a)(2)(ii) and (a)(2)(iii) of this section. An 
individual failing the examination may, upon receipt of notice of 
failure from OED, reapply for admission to the examination. An 
individual failing the examination must wait thirty days after the date 
the individual last took the examination before retaking the 
examination. An individual reapplying shall:
    (A) File a completed application for registration form wherein all 
requested information and supporting documents are furnished,

[[Page 366]]

    (B) Pay the fees required by Sec. 1.21(a)(1) of this subchapter, 
and
    (C) For aliens, provide proof that recognition is not inconsistent 
with the terms of their visa or entry into the United States; and
    (iii) Provide satisfactory proof of possession of good moral 
character and reputation.
    (2) An individual failing to file a complete application for 
registration will not be admitted to the examination and will be 
notified of the incompleteness. Applications for registration that are 
incomplete as originally submitted will be considered only when they 
have been completed and received by OED, provided that this occurs 
within sixty days of the mailing date of the notice of incompleteness. 
Thereafter, a new and complete application for registration must be 
filed. Only an individual approved as satisfying the requirements of 
paragraphs (b)(1)(i)(A), (b)(1)(i)(B), (b)(1)(i)(C) and (b)(1)(i)(D) of 
this section may be admitted to the examination.
    (3) If an individual does not reapply until more than one year after 
the mailing date of a notice of failure, that individual must again 
comply with paragraph (b)(1)(i) of this section.
    (c) Each individual seeking registration is responsible for updating 
all information and answers submitted in or with the application for 
registration based upon anything occurring between the date the 
application for registration is signed by the individual, and the date 
he or she is registered or recognized to practice before the Office in 
patent matters. The update shall be filed within thirty days after the 
date of the occasion that necessitates the update.
    (d) Waiver of the Registration Examination for Former Office 
Employees--(1) Former patent examiners who by July 26, 2004, had not 
actively served four years in the patent examining corps, and were 
serving in the corps at the time of their separation. The OED Director 
may waive the taking of a registration examination in the case of any 
individual meeting the requirements of paragraph (b)(1)(i)(C) of this 
section who is a former patent examiner but by July 26, 2004, had not 
served four years in the patent examining corps, if the individual 
demonstrates that he or she:
    (i) Actively served in the patent examining corps of the Office and 
was serving in the corps at the time of separation from the Office;
    (ii) Received a certificate of legal competency and negotiation 
authority;
    (iii) After receiving the certificate of legal competency and 
negotiation authority, was rated at least fully successful in each 
quality performance element of his or her performance plan for the last 
two complete fiscal years as a patent examiner; and
    (iv) Was not under an oral or written warning regarding the quality 
performance elements at the time of separation from the patent examining 
corps.
    (2) Former patent examiners who on July 26, 2004, had actively 
served four years in the patent examining corps, and were serving in the 
corps at the time of their separation. The OED Director may waive the 
taking of a registration examination in the case of any individual 
meeting the requirements of paragraph (b)(1)(i)(C) of this section who 
is a former patent examiner and by July 26, 2004, had served four years 
in the patent examining corps, if the individual demonstrates that he or 
she:
    (i) Actively served for at least four years in the patent examining 
corps of the Office by July 26, 2004, and was serving in the corps at 
the time of separation from the Office;
    (ii) Was rated at least fully successful in each quality performance 
element of his or her performance plan for the last two complete fiscal 
years as a patent examiner in the Office; and
    (iii) Was not under an oral or written warning regarding the quality 
performance elements at the time of separation from the patent examining 
corps.
    (3) Certain former Office employees who were not serving in the 
patent examining corps upon their separation from the Office. The OED 
Director may waive the taking of a registration examination in the case 
of a former Office employee meeting the requirements of paragraph 
(b)(1)(i)(C) of this section who by petition demonstrates possession of 
the necessary legal qualifications to render

[[Page 367]]

to patent applicants and others valuable service and assistance in the 
preparation and prosecution of their applications or other business 
before the Office by showing that he or she has:
    (i) Exhibited comprehensive knowledge of patent law equivalent to 
that shown by passing the registration examination as a result of having 
been in a position of responsibility in the Office in which he or she:
    (A) Provided substantial guidance on patent examination policy, 
including the development of rule or procedure changes, patent 
examination guidelines, changes to the Manual of Patent Examining 
Procedure, development of training or testing materials for the patent 
examining corps, or development of materials for the registration 
examination or continuing legal education; or
    (B) Represented the Office in patent cases before Federal courts; 
and
    (ii) Was rated at least fully successful in each quality performance 
element of his or her performance plan for said position for the last 
two complete rating periods in the Office, and was not under an oral or 
written warning regarding such performance elements at the time of 
separation from the Office.
    (4) To be eligible for consideration for waiver, an individual 
formerly employed by the Office within the scope of one of paragraphs 
(d)(1), (d)(2) or (d)(3) of this section must file a complete 
application for registration and pay the fee required by Sec. 
1.21(a)(1)(i) of this subchapter within two years of the individual's 
date of separation from the Office. All other individuals formerly 
employed by the Office, including former examiners, filing an 
application for registration or fee more than two years after separation 
from the Office, are required to take and pass the registration 
examination. The individual or former examiner must pay the examination 
fee required by Sec. 1.21(a)(1)(ii) of this subchapter within thirty 
days after notice of non-waiver.
    (e) Examination results. Notification of the examination results is 
final. Within sixty days of the mailing date of a notice of failure, the 
individual is entitled to inspect, but not copy, the questions and 
answers he or she incorrectly answered. Review will be under 
supervision. No notes may be taken during such review. Substantive 
review of the answers or questions may not be pursued by petition for 
regrade. An individual who failed the examination has the right to 
retake the examination an unlimited number of times upon payment of the 
fees required by Sec. 1.21(a)(1)(i) and (ii) of this subchapter, and a 
fee charged by a commercial entity administering the examination.
    (f) Application for reciprocal recognition. An individual seeking 
reciprocal recognition under Sec. 11.6(c), in addition to satisfying 
the provisions of paragraphs (a) and (b) of this section, and the 
provisions of Sec. 11.8(c), shall pay the application fee required by 
Sec. 1.21(a)(1)(i) of this subchapter upon filing an application for 
registration.
    (g) Investigation of good moral character and reputation. (1) Every 
individual seeking recognition shall answer all questions in the 
application for registration and request(s) for comments issued by OED; 
disclose all relevant facts, dates and information; and provide verified 
copies of documents relevant to his or her good moral character and 
reputation. An individual who is an attorney shall submit a certified 
copy of each of his or her State bar applications and moral character 
determinations, if available.
    (2)(i) If the OED Director receives information from any source that 
reflects adversely on the good moral character or reputation of an 
individual seeking registration or recognition, the OED Director shall 
conduct an investigation into the good moral character and reputation of 
that individual. The investigation will be conducted after the 
individual has passed the registration examination, or after the 
registration examination has been waived for the individual, as 
applicable. An individual failing to timely answer questions or respond 
to an inquiry by OED shall be deemed to have withdrawn his or her 
application, and shall be required to reapply, pass the examination, and 
otherwise satisfy all the requirements of this section. No individual 
shall be certified for registration or recognition by the OED Director 
until, to the satisfaction of the

[[Page 368]]

OED Director, the individual demonstrates his or her possession of good 
moral character and reputation.
    (ii) The OED Director, in considering an application for 
registration by an attorney, may accept a State bar's character 
determination as meeting the requirements set forth in paragraph (g) of 
this section if, after review, the Office finds no substantial 
discrepancy between the information provided with his or her application 
for registration and the State bar application and moral character 
determination, provided that acceptance is not inconsistent with other 
rules and the requirements of 35 U.S.C. 2(b)(2)(D).
    (h) Good moral character and reputation. Evidence showing lack of 
good moral character and reputation may include, but is not limited to, 
conviction of a felony or a misdemeanor identified in paragraph (h)(1) 
of this section, drug or alcohol abuse; lack of candor; suspension or 
disbarment on ethical grounds from a State bar; and resignation from a 
State bar while under investigation.
    (1) Conviction of felony or misdemeanor. An individual who has been 
convicted of a felony or a misdemeanor involving moral turpitude, breach 
of trust, interference with the administration of justice, false 
swearing, misrepresentation, fraud, deceit, bribery, extortion, 
misappropriation, theft, or conspiracy to commit any felony or 
misdemeanor, is presumed not to be of good moral character and 
reputation in the absence of a pardon or a satisfactory showing of 
reform and rehabilitation, and shall file with his or her application 
for registration the fees required by Sec. 1.21(a)(1)(ii) and (a)(10) 
of this subchapter. The OED Director shall determine whether individuals 
convicted of said felony or misdemeanor provided satisfactory proof of 
reform and rehabilitation.
    (i) An individual who has been convicted of a felony or a 
misdemeanor identified in paragraph (h)(1) of this section shall not be 
eligible to apply for registration during the time of any sentence 
(including confinement or commitment to imprisonment), deferred 
adjudication, and period of probation or parole as a result of the 
conviction, and for a period of two years after the date of completion 
of the sentence, deferred adjudication, and period of probation or 
parole, whichever is later.
    (ii) The following presumptions apply to the determination of good 
moral character and reputation of an individual convicted of said felony 
or misdemeanor:
    (A) The court record or docket entry of conviction is conclusive 
evidence of guilt in the absence of a pardon or a satisfactory showing 
of reform or rehabilitation; and
    (B) An individual convicted of a felony or any misdemeanor 
identified in paragraph (h)(1) of this section is conclusively deemed 
not to have good moral character and reputation, and shall not be 
eligible to apply for registration for a period of two years after 
completion of the sentence, deferred adjudication, and period of 
probation or parole, whichever is later.
    (iii) The individual, upon applying for registration, shall provide 
satisfactory evidence that he or she is of good moral character and 
reputation.
    (iv) Upon proof that a conviction has been set aside or reversed, 
the individual shall be eligible to file a complete application for 
registration and the fee required by Sec. 1.21(a)(1)(ii) of this 
subchapter and, upon passing the registration examination, have the OED 
Director determine, in accordance with paragraph (h)(1) of this section, 
whether, absent the conviction, the individual possesses good moral 
character and reputation.
    (2) Good moral character and reputation involving drug or alcohol 
abuse. An individual's record is reviewed as a whole to see if there is 
a drug or alcohol abuse issue. An individual appearing to abuse drugs or 
alcohol may be asked to undergo an evaluation, at the individual's 
expense, by a qualified professional approved by the OED Director. In 
instances where, before an investigation commences, there is evidence of 
a present abuse or an individual has not established a record of 
recovery, the OED Director may request the individual to withdraw his or 
her application, and require the individual to satisfactorily 
demonstrate that he or she is complying with treatment and undergoing 
recovery.

[[Page 369]]

    (3) Moral character and reputation involving lack of candor. An 
individual's lack of candor in disclosing facts bearing on or relevant 
to issues concerning good moral character and reputation when completing 
the application or any time thereafter may be found to be cause to deny 
registration on moral character and reputation grounds.
    (4) Moral character and reputation involving suspension, disbarment, 
or resignation from a profession. (i) An individual who has been 
disbarred or suspended from practice of law or other profession, or has 
resigned in lieu of a disciplinary proceeding (excluded or disbarred on 
consent) shall be ineligible to apply for registration as follows:
    (A) An individual who has been disbarred from practice of law or 
other profession, or has resigned in lieu of a disciplinary proceeding 
(excluded or disbarred on consent) shall be ineligible to apply for 
registration for a period of five years from the date of disbarment or 
resignation.
    (B) An individual who has been suspended on ethical grounds from the 
practice of law or other profession shall be ineligible to apply for 
registration until expiration of the period of suspension.
    (C) An individual who was not only disbarred, suspended or resigned 
in lieu of a disciplinary proceeding, but also convicted in a court of a 
felony, or of a crime involving moral turpitude or breach of trust, 
shall be ineligible to apply for registration until the conditions in 
paragraphs (h)(1) and (h)(4) of this section are fully satisfied.
    (ii) An individual who has been disbarred or suspended, or who 
resigned in lieu of a disciplinary proceeding shall file an application 
for registration and the fees required by Sec. 1.21(a)(1)(ii) and 
(a)(10) of this subchapter; provide a full and complete copy of the 
proceedings that led to the disbarment, suspension, or resignation; and 
provide satisfactory proof that he or she possesses good moral character 
and reputation. The following presumptions shall govern the 
determination of good moral character and reputation of an individual 
who has been licensed to practice law or other profession in any 
jurisdiction and has been disbarred, suspended on ethical grounds, or 
allowed to resign in lieu of discipline, in that jurisdiction:
    (A) A copy of the record resulting in disbarment, suspension or 
resignation is prima facie evidence of the matters contained in the 
record, and the imposition of disbarment or suspension, or the 
acceptance of the resignation of the individual shall be deemed 
conclusive that the individual has committed professional misconduct.
    (B) The individual is ineligible for registration and is deemed not 
to have good moral character and reputation during the period of the 
imposed discipline.
    (iii) The only defenses available with regard to an underlying 
disciplinary matter resulting in disbarment, suspension on ethical 
grounds, or resignation in lieu of a disciplinary proceeding are set out 
below, and must be shown to the satisfaction of the OED Director:
    (A) The procedure in the disciplinary court was so lacking in notice 
or opportunity to be heard as to constitute a deprivation of due 
process;
    (B) There was such infirmity of proof establishing the misconduct as 
to give rise to the clear conviction that the Office could not, 
consistently with its duty, accept as final the conclusion on that 
subject; or
    (C) The finding of lack of good moral character and reputation by 
the Office would result in grave injustice.
    (i) Factors that may be taken into consideration when evaluating 
rehabilitation of an individual seeking a moral character and reputation 
determination. The factors enumerated below are guidelines to assist the 
OED Director in determining whether an individual has demonstrated 
rehabilitation from an act of misconduct or moral turpitude. The factors 
include:
    (1) The nature of the act of misconduct, including whether it 
involved moral turpitude, whether there were aggravating or mitigating 
circumstances, and whether the activity was an isolated event or part of 
a pattern;
    (2) The age and education of the individual at the time of the 
misconduct and the age and education of the individual at the present 
time;

[[Page 370]]

    (3) The length of time that has passed between the misconduct and 
the present, absent any involvement in any further acts of moral 
turpitude, the amount of time and the extent of rehabilitation being 
dependent upon the nature and seriousness of the act of misconduct under 
consideration;
    (4) Restitution by the individual to any person who suffered 
monetary losses through acts or omissions of the individual;
    (5) Expungement of a conviction;
    (6) Successful completion or early discharge from probation or 
parole;
    (7) Abstinence from the use of controlled substances or alcohol for 
not less than two years if the specific misconduct was attributable in 
part to the use of a controlled substance or alcohol, where abstinence 
may be demonstrated by, but is not necessarily limited to, enrolling in 
and complying with a self-help or professional treatment program;
    (8) If the specific misconduct was attributable in part to a 
medically recognized mental disease, disorder or illness, proof that the 
individual sought professional assistance, and complied with the 
treatment program prescribed by the professional, and submitted letters 
from the treating psychiatrist/psychologist verifying that the medically 
recognized mental disease, disorder or illness will not impede the 
individual's ability to competently practice before the Office;
    (9) Payment of the fine imposed in connection with any criminal 
conviction;
    (10) Correction of behavior responsible in some degree for the 
misconduct;
    (11) Significant and conscientious involvement in programs designed 
to provide social benefits or to ameliorate social problems; and
    (12) Change in attitude from that which existed at the time of the 
act of misconduct in question as evidenced by any or all of the 
following:
    (i) Statements of the individual;
    (ii) Statements from persons familiar with the individual's previous 
misconduct and with subsequent attitudes and behavioral patterns;
    (iii) Statements from probation or parole officers or law 
enforcement officials as to the individual's social adjustments; and
    (iv) Statements from persons competent to testify with regard to 
neuropsychiatry or emotional disturbances.
    (j) Notice to Show Cause. The OED Director shall inquire into the 
good moral character and reputation of an individual seeking 
registration, providing the individual with the opportunity to create a 
record on which a decision is made. If, following inquiry and 
consideration of the record, the OED Director is of the opinion that the 
individual seeking registration has not satisfactorily established that 
he or she possesses good moral character and reputation, the OED 
Director shall issue to the individual a notice to show cause why the 
individual's application for registration should not be denied.
    (1) The individual shall be given no less than ten days from the 
date of the notice to reply. The notice shall be given by certified mail 
at the address appearing on the application if the address is in the 
United States, and by any other reasonable means if the address is 
outside the United States.
    (2) Following receipt of the individual's response, or in the 
absence of a response, the OED Director shall consider the individual's 
response, if any, and the record, and determine whether, in the OED 
Director's opinion, the individual has sustained his or her burden of 
satisfactorily demonstrating that he or she possesses good moral 
character and reputation.
    (k) Reapplication for registration. An individual who has been 
refused registration for lack of good moral character or reputation may 
reapply for registration two years after the date of the decision, 
unless a shorter period is otherwise ordered by the USPTO Director. An 
individual, who has been notified that he or she is under investigation 
for good moral character and reputation may elect to withdraw his or her 
application for registration, and may reapply for registration two years 
after the date of withdrawal. Upon reapplication for registration, the 
individual shall pay the fees required by Sec. 1.21(a)(1)(ii) and 
(a)(10) of this subchapter, and has the burden of showing to the 
satisfaction of the OED Director

[[Page 371]]

his or her possession of good moral character and reputation as 
prescribed in paragraph (b) of this section. Upon reapplication for 
registration, the individual also shall complete successfully the 
examination prescribed in paragraph (b) of this section, even though the 
individual has previously passed a registration examination.



Sec. 11.8  Oath and registration fee.

    (a) After an individual passes the examination, or the examination 
is waived, the OED Director shall promptly publish a solicitation for 
information concerning the individual's good moral character and 
reputation. The solicitation shall include the individual's name, and 
business or communication postal address.
    (b) An individual shall not be registered as an attorney under Sec. 
11.6(a), registered as an agent under Sec. 11.6(b) or (c), or granted 
limited recognition under Sec. 11.9(b) unless within two years of the 
mailing date of a notice of passing registration examination or of 
waiver of the examination the individual files with the OED Director a 
completed Data Sheet, an oath or declaration prescribed by the USPTO 
Director, and the registration fee set forth in Sec. 1.21(a)(2) of this 
subchapter. An individual seeking registration as an attorney under 
Sec. 11.6(a) must provide a certificate of good standing of the bar of 
the highest court of a State that is no more than six months old.
    (c) An individual who does not comply with the requirements of 
paragraph (b) of this section within the two-year period will be 
required to retake the registration examination.
    (d) Annual practitioner maintenance fee. A registered patent 
attorney or agent shall annually pay to the USPTO Director a 
practitioner maintenance fee in the amount set forth in Sec. 1.21(a)(7) 
of this subchapter. Individuals granted limited recognition under 
paragraph (b) of Sec. 11.9 shall annually pay to the USPTO Director a 
practitioner maintenance fee in the amount set forth in Sec. 1.21(a)(8) 
of this subchapter. Adequate notice shall be published and sent to 
practitioners in advance of the due date for payment of the annual 
practitioner maintenance fee. Payment shall be for the fiscal year in 
which the annual practitioner maintenance fee is assessed. Payment shall 
be due by the last day of the payment period. Persons newly registered 
or granted limited recognition shall not be liable for the annual 
practitioner maintenance fee during the fiscal year in which they are 
first registered or granted limited recognition. Failure to comply with 
the provisions of this paragraph (d) shall require the OED Director to 
subject a practitioner to a delinquency fee penalty set forth in Sec. 
11.11(b)(1), and further financial penalties and administrative 
suspension as set forth in Sec. 11.11(b)(2) and (b)(3).

[69 FR 35452, June 24, 2004, as amended at 73 FR 67757, Nov. 17, 2008]



Sec. 11.9  Limited recognition in patent matters.

    (a) Any individual not registered under Sec. 11.6 may, upon a 
showing of circumstances which render it necessary or justifiable, and 
that the individual is of good moral character and reputation, be given 
limited recognition by the OED Director to prosecute as attorney or 
agent a specified patent application or specified patent applications. 
Limited recognition under this paragraph shall not extend further than 
the application or applications specified. Limited recognition shall not 
be granted while individuals who have passed the examination or for whom 
the examination has been waived are awaiting registration to practice 
before the Office in patent matters.
    (b) A nonimmigrant alien residing in the United States and 
fulfilling the provisions of Sec. 11.7(a) and (b) may be granted 
limited recognition if the nonimmigrant alien is authorized by the 
Bureau of Citizenship and Immigration Services to be employed or trained 
in the United States in the capacity of representing a patent applicant 
by presenting or prosecuting a patent application. Limited recognition 
shall be granted for a period consistent with the terms of authorized 
employment or training. Limited recognition shall not be granted or 
extended to a non-United States citizen residing abroad. If granted, 
limited recognition shall automatically expire upon the nonimmigrant

[[Page 372]]

alien's departure from the United States.
    (c) An individual not registered under Sec. 11.6 may, if appointed 
by an applicant, prosecute an international patent application only 
before the United States International Searching Authority and the 
United States International Preliminary Examining Authority, provided 
that the individual has the right to practice before the national office 
with which the international application is filed as provided in PCT 
Art. 49, Rule 90 and Sec. 1.455 of this subchapter, or before the 
International Bureau when the USPTO is acting as Receiving Office 
pursuant to PCT Rules 83.1 bis and 90.1.



Sec. 11.10  Restrictions on practice in patent matters.

    (a) Only practitioners who are registered under Sec. 11.6 or 
individuals given limited recognition under Sec. 11.9(a) or (b) are 
permitted to prosecute patent applications of others before the Office; 
or represent others in any proceedings before the Office.
    (b) Post employment agreement of former Office employee. No 
individual who has served in the patent examining corps or elsewhere in 
the Office may practice before the Office after termination of his or 
her service, unless he or she signs a written undertaking agreeing:
    (1) To not knowingly act as agent or attorney for, or otherwise 
represent, or assist in any manner the representation of, any other 
person:
    (i) Before the Office,
    (ii) In connection with any particular patent or patent application,
    (iii) In which said employee participated personally and 
substantially as an employee of the Office; and
    (2) To not knowingly act within two years after terminating 
employment by the Office as agent or attorney for, or otherwise 
represent, or assist in any manner the representation of any other 
person:
    (i) Before the Office,
    (ii) In connection with any particular patent or patent application,
    (iii) If such patent or patent application was pending under the 
employee's official responsibility as an officer or employee within a 
period of one year prior to the termination of such responsibility.
    (3) The words and phrases in paragraphs (b)(1) and (b)(2) of this 
section are construed as follows:
    (i) Represent and representation mean acting as patent attorney or 
patent agent or other representative in any appearance before the 
Office, or communicating with an employee of the Office with intent to 
influence.
    (ii) Assist in any manner means aid or help another person on a 
particular patent or patent application involving representation.
    (iii) Particular patent or patent application means any patent or 
patent application, including, but not limited to, a provisional, 
substitute, international, continuation, divisional, continuation-in-
part, or reissue patent application, as well as any protest, 
reexamination, petition, appeal, or interference based on the patent or 
patent application.
    (iv) Participate personally and substantially. (A) Basic 
requirements. The restrictions of Sec. 11.10(a)(1) apply only to those 
patents and patent applications in which a former Office employee had 
``personal and substantial participation,'' exercised ``through 
decision, approval, disapproval, recommendation, the rendering of 
advice, investigation or otherwise.'' To participate personally means 
directly, and includes the participation of a subordinate when actually 
directed by the former Office employee in the patent or patent 
application. Substantially means that the employee's involvement must be 
of significance to the matter, or form a basis for a reasonable 
appearance of such significance. It requires more than official 
responsibility, knowledge, perfunctory involvement, or involvement on an 
administrative or peripheral issue. A finding of substantiality should 
be based not only on the effort devoted to a patent or patent 
application, but also on the importance of the effort. While a series of 
peripheral involvements may be insubstantial, the single act of 
approving or participation in a critical step may be substantial. It is 
essential that the participation be related to a ``particular patent or 
patent application.'' (See paragraph (b)(3)(iii) of this section.)

[[Page 373]]

    (B) Participation on ancillary matters. An Office employee's 
participation on subjects not directly involving the substantive merits 
of a patent or patent application may not be ``substantial,'' even if it 
is time-consuming. An employee whose official responsibility is the 
review of a patent or patent application solely for compliance with 
administrative control or budgetary considerations and who reviews a 
particular patent or patent application for such a purpose should not be 
regarded as having participated substantially in the patent or patent 
application, except when such considerations also are the subject of the 
employee's proposed representation.
    (C) Role of official responsibility in determining substantial 
participation. Official responsibility is defined in paragraph (b)(3)(v) 
of this section. ``Personal and substantial participation'' is different 
from ``official responsibility.'' One's responsibility may, however, 
play a role in determining the ``substantiality'' of an Office 
employee's participation.
    (v) Official responsibility means the direct administrative or 
operating authority, whether intermediate or final, and either 
exercisable alone or with others, and either personally or through 
subordinates, to approve, disapprove, or otherwise direct Government 
actions.
    (A) Determining official responsibility. Ordinarily, those areas 
assigned by statute, regulation, Executive Order, job description, or 
delegation of authority determine the scope of an employee's ``official 
responsibility''. All particular matters under consideration in the 
Office are under the ``official responsibility'' of the Director of the 
Office, and each is under that of any intermediate supervisor having 
responsibility for an employee who actually participates in the patent 
or patent application within the scope of his or her duties. A patent 
examiner would have ``official responsibility'' for the patent 
applications assigned to him or her.
    (B) Ancillary matters and official responsibility. Administrative 
authority as used in paragraph (v) of this section means authority for 
planning, organizing and controlling a patent or patent application 
rather than authority to review or make decisions on ancillary aspects 
of a patent or patent application such as the regularity of budgeting 
procedures, public or community relations aspects, or equal employment 
opportunity considerations. Responsibility for such an ancillary 
consideration does not constitute official responsibility for the 
particular patent or patent application, except when such a 
consideration is also the subject of the employee's proposed 
representation.
    (C) Duty to inquire. In order for a former employee, e.g., former 
patent examiner, to be barred from representing or assisting in 
representing another as to a particular patent or patent application, he 
or she need not have known, while employed by the Office, that the 
patent or patent application was pending under his or her official 
responsibility. The former employee has a reasonable duty of inquiry to 
learn whether the patent or patent application had been under his or her 
official responsibility. Ordinarily, a former employee who is asked to 
represent another on a patent or patent application will become aware of 
facts sufficient to suggest the relationship of the prior matter to his 
or her former office, e.g., technology center, group or art unit. If so, 
he or she is under a duty to make further inquiry. It would be prudent 
for an employee to maintain a record of only patent application numbers 
of the applications actually acted upon by decision or recommendation, 
as well as those applications under the employee's official 
responsibility which he or she has not acted upon.
    (D) Self-disqualification. A former employee, e.g., former patent 
examiner, cannot avoid the restrictions of this section through self-
disqualification with respect to a patent or patent application for 
which he or she otherwise had official responsibility. However, an 
employee who through self-disqualification does not participate 
personally and substantially in a particular patent or patent 
application is not subject to the lifetime restriction of paragraph 
(b)(1) of this section.

[[Page 374]]

    (vi) Pending means that the matter was in fact referred to or under 
consideration by persons within the employee's area of official 
responsibility.
    (4) Measurement of the two-year restriction period. The two-year 
period under paragraph (b)(2) of this section is measured from the date 
when the employee's official responsibility in a particular area ends, 
not from the termination of service in the Office, unless the two occur 
simultaneously. The prohibition applies to all particular patents or 
patent applications subject to such official responsibility in the one-
year period before termination of such responsibility.
    (c) Former employees of the Office. This section imposes 
restrictions generally parallel to those imposed in 18 U.S.C. 207(a) and 
(b)(1). This section, however, does not interpret these statutory 
provisions or any other post-employment restrictions that may apply to 
former Office employees, and such former employees should not assume 
that conduct not prohibited by this section is otherwise permissible. 
Former employees of the Office, whether or not they are practitioners, 
are encouraged to contact the Department of Commerce for information 
concerning applicable post-employment restrictions.
    (d) An employee of the Office may not prosecute or aid in any manner 
in the prosecution of any patent application before the Office.
    (e) Practice before the Office by Government employees is subject to 
any applicable conflict of interest laws, regulations or codes of 
professional responsibility.



Sec. 11.11  Administrative suspension, inactivation, resignation, and readmission.

    (a) A registered attorney or agent must notify the OED Director of 
his or her postal address for his or her office, up to three e-mail 
addresses where he or she receives e-mail, and business telephone 
number, as well as every change to any of said addresses or telephone 
numbers within thirty days of the date of the change. A registered 
attorney or agent shall, in addition to any notice of change of address 
and telephone number filed in individual patent applications, separately 
file written notice of the change of address or telephone number to the 
OED Director. A registered practitioner who is an attorney in good 
standing with the bar of the highest court of one or more States shall 
provide the OED Director with the State bar identification number 
associated with each membership. The OED Director shall publish from the 
roster a list containing the name, postal business addresses, business 
telephone number, registration number, and registration status as an 
attorney or agent of each registered practitioner recognized to practice 
before the Office in patent cases.
    (b) Administrative suspension. (1) Whenever it appears that a 
registered patent attorney, a registered patent agent or a person 
granted limited recognition under Sec. 11.9(b) has failed to comply 
with Sec. 11.8(d), the OED Director shall publish and send a notice to 
the attorney, agent or person granted limited recognition advising of 
the noncompliance, the consequence of being administratively suspended 
under paragraph (b)(5) of this section if noncompliance is not timely 
remedied, and the requirements for reinstatement under paragraph (f) of 
this section. The notice shall be published and sent to the attorney, 
agent or person granted limited recognition by mail to the last postal 
address furnished under paragraph (a) of this section or by e-mail 
addressed to the last e-mail addresses furnished under paragraph (a) of 
this section. The notice shall demand compliance and payment of a 
delinquency fee set forth in Sec. 1.21(a)(9)(i) of this subchapter 
within sixty days after the date of such notice.
    (2) In the event a registered patent attorney, registered patent 
agent or person granted limited recognition fails to comply with the 
notice of paragraph (b)(1) of this section within the time allowed, the 
OED Director shall publish and send in the manner provided for in 
paragraph (b)(1) of this section to the attorney, agent, or person 
granted limited recognition a Rule to Show Cause why his or her 
registration or recognition should not be administratively suspended, 
and he or she no longer be permitted to practice before the Office in 
patent matters or in any way hold himself or herself out as

[[Page 375]]

being registered or authorized to practice before the Office in patent 
matters. The OED Director shall file a copy of the Rule to Show Cause 
with the USPTO Director.
    (3) Within 30 days of the OED Director's sending the Rule to Show 
Cause identified in Sec. 11.11(b)(2), the registered patent attorney, 
registered patent agent or person granted limited recognition may file a 
response to the Rule to Show Cause with the USPTO Director. The response 
must set forth the factual and legal bases why the person should not be 
administratively suspended. The registered patent attorney, registered 
patent agent or person granted limited recognition shall serve the OED 
Director with a copy of the response at the time it is filed with the 
USPTO Director. Within ten days of receiving a copy of the response, the 
OED Director may file a reply with the USPTO Director that includes 
documents demonstrating that the notice identified in Sec. 11.11(b)(1) 
was published and sent to the practitioner in accordance with Sec. 
11.11(b)(1). A copy of the reply by the OED Director shall be served on 
the registered patent attorney, registered patent agent or person 
granted limited recognition. When acting on the Rule to Show Cause, if 
the USPTO Director determines that there are no genuine issues of 
material fact regarding the Office's compliance with the notice 
requirements under this section or the failure of the person to pay the 
requisite fees, the USPTO Director shall enter an order administratively 
suspending the registered patent attorney, registered patent agent or 
person granted limited recognition. Otherwise, the USPTO Director shall 
enter an appropriate order dismissing the Rule to Show Cause. Nothing 
herein shall permit an administratively suspended registered patent 
attorney, registered patent agent or person granted limited recognition 
to seek a stay of the administrative suspension during the pendency of 
any review of the USPTO Director's final decision.
    (4) An administratively suspended attorney, agent or person granted 
limited recognition remains responsible for paying his or her annual 
practitioner maintenance fee required by Sec. 11.8(d).
    (5) An administratively suspended attorney, agent or person granted 
limited recognition is subject to investigation and discipline for his 
or her conduct prior to, during, or after the period he or she was 
administratively suspended.
    (6) An administratively suspended attorney, agent or person granted 
limited recognition is prohibited from practicing before the Office in 
patent cases while administratively suspended. An attorney, agent or 
person granted limited recognition who knows he or she has been 
administratively suspended under this section will be subject to 
discipline for failing to comply with the provisions of this paragraph.
    (c) Administrative inactivation. (1) Any registered practitioner who 
shall become employed by the Office shall comply with Sec. 10.40 of 
this subchapter for withdrawal from the applications, patents, and 
trademark matters wherein he or she represents an applicant or other 
person, and notify the OED Director in writing of said employment on the 
first day of said employment. The name of any registered practitioner 
employed by the Office shall be endorsed on the roster as 
administratively inactive. The practitioner shall not be responsible for 
payments of the annual practitioner maintenance fee each complete fiscal 
year while the practitioner is in administratively inactive status. Upon 
separation from the Office, the practitioner may request reactivation by 
completing and filing an application, Data Sheet, signing a written 
undertaking required by Sec. 11.10, and paying the fee set forth in 
Sec. 1.21(a)(1)(i) of this subchapter. Upon restoration to active 
status, the practitioner shall be responsible for paying the annual 
practitioner maintenance fee for the fiscal year in which the 
practitioner is restored to active status. An administratively inactive 
practitioner remains subject to the provisions of the Mandatory 
Disciplinary Rules identified in Sec. 10.20(b) of this subchapter, and 
to proceedings and sanctions under Sec. Sec. 11.19 through 11.58 for 
conduct that violates a provision of the Mandatory Disciplinary Rules 
identified in Sec. 10.20(b) of this subchapter prior to or during 
employment at the Office. If, within 30 days after separation from

[[Page 376]]

the Office, the practitioner does not request active status or another 
status, the practitioner will be endorsed on the roster as voluntarily 
inactive and be subject to the provisions of paragraph (d) of this 
section.
    (2) Any registered practitioner who is a judge of a court of record, 
full-time court commissioner, U.S. bankruptcy judge, U.S. magistrate 
judge, or a retired judge who is eligible for temporary judicial 
assignment and is not engaged in the practice of law may request, in 
writing, that his or her name be endorsed on the roster as 
administratively inactive. Upon acceptance of the request, the OED 
Director shall endorse the name of the practitioner as administratively 
inactive. The practitioner shall not be responsible for payment of the 
annual practitioner maintenance fee for each complete fiscal year the 
practitioner is in administratively inactive status. Following 
separation from the bench, the practitioner may request restoration to 
active status by completing and filing an application, Data Sheet, 
signing a written undertaking required by Sec. 11.10, and paying the 
fee set forth in Sec. 1.21(a)(1)(i) of this subchapter. Upon 
restoration to active status, the practitioner shall be responsible for 
paying the annual practitioner maintenance fee for the fiscal year in 
which the practitioner is restored to active status.
    (d) Voluntary inactivation. (1) Except as provided in paragraph 
(d)(4) of this section, any registered practitioner may voluntarily 
enter inactive status by filing a request, in writing, that his or her 
name be endorsed on the roster as voluntarily inactive. Upon acceptance 
of the request, the OED Director shall endorse the name as voluntarily 
inactive.
    (2) A registered practitioner in voluntary inactive status shall be 
responsible for payment of the annual practitioner maintenance fee for 
voluntary inactive status set forth in Sec. 1.21(a)(7)(ii) of this 
subchapter for each complete fiscal year the practitioner continues to 
be in voluntary inactive status.
    (3) A registered practitioner who seeks or enters into voluntary 
inactive status is subject to investigation and discipline for his or 
her conduct prior to, during, or after the period of his or her 
inactivation.
    (4) A registered practitioner who is in arrears in paying annual 
practitioner maintenance fees or under administrative suspension for 
annual practitioner maintenance fee delinquency is ineligible to seek or 
enter into voluntary inactive status.
    (5) A registered practitioner in voluntary inactive status is 
prohibited from practicing before the Office in patent cases while in 
voluntary inactive status. A practitioner in voluntary inactive status 
will be subject to discipline for failing to comply with the provisions 
of this paragraph. Upon acceptance of the request for voluntary inactive 
status, the practitioner must comply with the provisions of Sec. 10.40 
of this subchapter.
    (6) Any registered practitioner whose name has been endorsed as 
voluntarily inactive pursuant to paragraph (d)(1) of this section and is 
not under investigation, not subject to a disciplinary proceeding, and 
not in arrears for the annual practitioner maintenance fee for voluntary 
inactive status may be restored to active status on the register as may 
be appropriate provided that the practitioner files a written request 
for restoration, a completed application for registration on a form 
supplied by the OED Director furnishing all requested information and 
material, including information and material pertaining to the 
practitioner's moral character and reputation under Sec. 11.7(a)(2)(i) 
during the period of inactivation, a declaration or affidavit attesting 
to the fact that the practitioner has read the most recent revisions of 
the patent laws and the rules of practice before the Office, and pays 
the fees set forth in Sec. Sec. 1.21(a)(7)(iii) and (iv) of this 
subchapter.
    (e) Resignation. A registered practitioner or a practitioner 
recognized under Sec. 11.14(c), who is neither under investigation 
under Sec. 11.22 for a possible violation of the Mandatory Disciplinary 
Rules identified in Sec. 10.20(b) of Part 10 of this subchapter, 
subject to discipline under Sec. Sec. 11.24 or 11.25, nor a 
practitioner against whom no probable cause has been found by a panel of 
the Committee on Discipline under Sec. 11.23(b), may resign by 
notifying the

[[Page 377]]

OED Director in writing that he or she desires to resign. Upon 
acceptance in writing by the OED Director of such notice, that 
registered practitioner or practitioner under Sec. 11.14 shall no 
longer be eligible to practice before the Office but shall continue to 
file a change of address for five years thereafter in order that he or 
she may be located in the event information regarding the practitioner's 
conduct comes to the attention of the OED Director or any grievance is 
made about his or her conduct while he or she engaged in practice before 
the Office. The name of any registered practitioner whose resignation is 
accepted shall be removed from the register, endorsed as resigned, and 
notice thereof published in the Official Gazette. Upon acceptance of the 
resignation by the OED Director, the practitioner must comply with the 
provisions of Sec. 10.40 of this subchapter.
    (f) Administrative reinstatement. (1) Any registered practitioner 
who has been administratively suspended pursuant to paragraph (b) of 
this section, or who has resigned pursuant to paragraph (e) of this 
section, may be reinstated on the register provided the practitioner has 
applied for reinstatement on an application form supplied by the OED 
Director, demonstrated compliance with the provisions of Sec. Sec. 
11.7(a)(2)(i) and (iii), and paid the fees set forth in Sec. Sec. 
1.21(a)(7)(i), (a)(9)(i) and (a)(9)(ii) of this subchapter. Any person 
granted limited recognition who has been administratively suspended 
pursuant to paragraph (b) of this section may have their recognition 
reactivated provided the practitioner has applied for reinstatement on 
an application form supplied by the OED Director, demonstrated 
compliance with the provisions of Sec. Sec. 11.7(a)(2)(i) and (iii), 
and paid the fees set forth in Sec. Sec. 1.21(a)(8)(i), (a)(9)(i) and 
(a)(9)(ii) of this subchapter. A practitioner who has resigned or was 
administratively suspended for two or more years before the date the 
Office receives a completed application from the person who resigned or 
was administratively suspended must also pass the registration 
examination under Sec. 11.7(b)(1)(ii). Any reinstated practitioner is 
subject to investigation and discipline for his or her conduct that 
occurred prior to, during, or after the period of his or her 
administrative suspension or resignation.
    (2) Any registered practitioner whose registration has been 
administratively inactivated pursuant to paragraph (c) of this section 
may be reinstated to the register as may be appropriate provided within 
two years after his or her employment with the Office ceases or within 
two years after his or her employment in a judicial capacity ceases the 
following is filed with the OED Director: a request for reinstatement, a 
completed application for registration on a form supplied by the OED 
Director furnishing all requested information and material, and the fee 
set forth in Sec. 1.21(a)(9)(ii) of this subchapter. Any registered 
practitioner inactivated or reinstated is subject to investigation and 
discipline for his or her conduct before, during, or after the period of 
his or her inactivation.

[73 FR 67757, Nov. 17, 2008]



Sec. Sec. 11.12-11.13  [Reserved]



Sec. 11.14  Individuals who may practice before the Office in trademark
and other non-patent matters.

    (a) Attorneys. Any individual who is an attorney as defined in Sec. 
11.1 may represent others before the Office in trademark and other non-
patent matters. An attorney is not required to apply for registration or 
recognition to practice before the Office in trademark and other non-
patent matters. Registration as a patent practitioner does not itself 
entitle an individual to practice before the Office in trademark 
matters.
    (b) Non-lawyers. Individuals who are not attorneys are not 
recognized to practice before the Office in trademark and other non-
patent matters, except that individuals not attorneys who were 
recognized to practice before the Office in trademark matters under this 
chapter prior to January 1, 1957, will be recognized as agents to 
continue practice before the Office in trademark matters. Except as 
provided in the preceding sentence, registration as a patent agent does 
not itself entitle an individual to practice before the Office in 
trademark matters.
    (c) Foreigners. Any foreign attorney or agent not a resident of the 
United

[[Page 378]]

States who shall file a written application for reciprocal recognition 
under paragraph (f) of this section and prove to the satisfaction of the 
OED 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 and is possessed of good moral character and reputation, may 
be recognized for the limited purpose of representing parties located in 
such country before the Office in the presentation and prosecution of 
trademark matters, provided: the patent or trademark office of such 
country allows substantially reciprocal privileges to those permitted to 
practice in trademark matters before the 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 matters on behalf of a client. Any individual may appear in 
a trademark or other non-patent matter in his or her own behalf. Any 
individual may appear in a trademark matter for:
    (1) A firm of which he or she is a member,
    (2) A partnership of which he or she is a partner, or
    (3) A corporation or association of which he or she is an officer 
and which he or she is authorized to represent, if such firm, 
partnership, corporation, or association is a party to a trademark 
proceeding pending before the Office.
    (f) Application for reciprocal recognition. An individual seeking 
reciprocal recognition under paragraph (c) of this section, in addition 
to providing evidence satisfying the provisions of paragraph (c) of this 
section, shall apply in writing to the OED Director for reciprocal 
recognition, and shall pay the application fee required by Sec. 
1.21(a)(1)(i) of this subchapter.

[73 FR 47688, Aug. 14, 2008]



Sec. 11.15  Refusal to recognize a practitioner.

    Any practitioner authorized to appear before the Office may be 
suspended, excluded, or reprimanded in accordance with the provisions of 
this Part. Any practitioner who is suspended or excluded under this Part 
shall not be entitled to practice before the Office in patent, 
trademark, or other non-patent matters while suspended or excluded.

[73 FR 47688, Aug. 14, 2008]



Sec. Sec. 11.16-11.17  [Reserved]



Sec. 11.18  Signature and certificate for correspondence filed in the Office.

    (a) For all documents filed in the Office in patent, trademark, and 
other non-patent matters, and all documents filed with a hearing officer 
in a disciplinary proceeding, except for correspondence that is required 
to be signed by the applicant or party, each piece of correspondence 
filed by a practitioner in the Office must bear a signature, personally 
signed by such practitioner, in compliance with Sec. 1.4(d)(1) of this 
subchapter.
    (b) By presenting to the Office or hearing officer in a disciplinary 
proceeding (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 Office, 
knowingly and willfully falsifies, conceals, or covers up by any trick, 
scheme, or device a material fact, or knowingly and willfully makes any 
false, fictitious, or fraudulent statements or representations, or 
knowingly and willfully 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 any other applicable criminal statute, and

[[Page 379]]

violations of the provisions of this section may jeopardize the 
probative value of the paper; and
    (2) To the best of the party's knowledge, information and belief, 
formed after an inquiry reasonable under the circumstances,
    (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 any proceeding before the Office;
    (ii) The 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 any of paragraphs (b)(2)(i) through (iv) of this 
section are, after notice and reasonable opportunity to respond, subject 
to such sanctions or actions as deemed appropriate by the USPTO 
Director, which may include, but are not limited to, any combination 
of--
    (1) Striking the offending paper;
    (2) Referring a practitioner's conduct to the Director of Enrollment 
and Discipline for appropriate action;
    (3) Precluding a party or practitioner from submitting a paper, or 
presenting or contesting an issue;
    (4) Affecting the weight given to the offending paper; or
    (5) Terminating the proceedings in the Office.
    (d) Any practitioner violating the provisions of this section may 
also be subject to disciplinary action.

[73 FR 47689, Aug. 14, 2008]



  Subpart C_Investigations and Disciplinary Proceedings; Jurisdiction, 
               Sanctions, Investigations, and Proceedings

    Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.



Sec. 11.19  Disciplinary jurisdiction; Jurisdiction to transfer to 
disability inactive status.

    (a) All practitioners engaged in practice before the Office; all 
practitioners administratively suspended; all practitioners registered 
to practice before the Office in patent cases; all practitioners 
inactivated; all practitioners authorized under Sec. 11.6(d) to take 
testimony; and all practitioners transferred to disability inactive 
status, reprimanded, suspended, or excluded from the practice of law by 
a duly constituted authority, including by the USPTO Director, are 
subject to the disciplinary jurisdiction of the Office. Practitioners 
who have resigned shall also be subject to such jurisdiction with 
respect to conduct undertaken prior to the resignation and conduct in 
regard to any practice before the Office following the resignation.
    (b) Grounds for discipline; Grounds for transfer to disability 
inactive status. The following, whether done individually by a 
practitioner or in concert with any other person or persons and whether 
or not done in the course of providing legal services to a client, or in 
a matter pending before the Office, constitute grounds for discipline or 
grounds for transfer to disability inactive status.
    (1) Grounds for discipline include:
    (i) Conviction of a serious crime;
    (ii) Discipline on ethical grounds imposed in another jurisdiction 
or disciplinary disqualification from participating in or appearing 
before any Federal program or agency;
    (iii) Failure to comply with any order of a Court disciplining a 
practitioner, or any final decision of the USPTO Director in a 
disciplinary matter;
    (iv) Violation of a Mandatory Disciplinary Rule identified in Sec. 
10.20(b) of Part 10 of this Subchapter; or
    (v) Violation of the oath or declaration taken by the practitioner. 
See Sec. 11.8.

[[Page 380]]

    (2) Grounds for transfer to disability inactive status include:
    (i) Being transferred to disability inactive status in another 
jurisdiction;
    (ii) Being judicially declared incompetent, being judicially ordered 
to be involuntarily committed after a hearing on the grounds of 
insanity, incompetency or disability, or being placed by court order 
under guardianship or conservatorship; or
    (iii) Filing a motion requesting a disciplinary proceeding be held 
in abeyance because the practitioner is suffering from a disability or 
addiction that makes it impossible for the practitioner to adequately 
defend the charges in the disciplinary proceeding.
    (c) Petitions to disqualify a practitioner in ex parte or inter 
partes matters in the Office are not governed by Sec. Sec. 11.19 
through 11.60 and will be handled on a case-by-case basis under such 
conditions as the USPTO Director deems appropriate.
    (d) The OED Director may refer the existence of circumstances 
suggesting unauthorized practice of law to the authorities in the 
appropriate jurisdiction(s).



Sec. 11.20  Disciplinary sanctions; Transfer to disability inactive status.

    (a) Types of discipline. The USPTO Director, after notice and 
opportunity for a hearing, and where grounds for discipline exist, may 
impose on a practitioner the following types of discipline:
    (1) Exclusion from practice before the Office;
    (2) Suspension from practice before the Office for an appropriate 
period of time;
    (3) Reprimand or censure; or
    (4) Probation. Probation may be imposed in lieu of or in addition to 
any other disciplinary sanction. Any conditions of probation shall be 
stated in writing in the order imposing probation. The order shall also 
state whether, and to what extent, the practitioner shall be required to 
notify clients of the probation. The order shall establish procedures 
for the supervision of probation. Violation of any condition of 
probation shall be cause for the probation to be revoked, and the 
disciplinary sanction to be imposed for the remainder of the probation 
period. Revocation of probation shall occur only after an order to show 
cause why probation should not be revoked is resolved adversely to the 
practitioner.
    (b) Conditions imposed with discipline. When the USPTO Director 
imposes discipline, the practitioner may be required to make restitution 
either to persons financially injured by the practitioner's conduct or 
to an appropriate client's security trust fund, or both, as a condition 
of probation or of reinstatement. Such restitution shall be limited to 
the return of unearned practitioner fees or misappropriated client 
funds. Any other reasonable condition may also be imposed, including a 
requirement that the practitioner take and pass a professional 
responsibility examination.
    (c) Transfer to disability inactive status. The USPTO Director, 
after notice and opportunity for a hearing may, and where grounds exist 
to believe a practitioner has been transferred to disability inactive 
status in another jurisdiction, or has been judicially declared 
incompetent; judicially ordered to be involuntarily committed after a 
hearing on the grounds of incompetency or disability, or placed by court 
order under guardianship or conservatorship, transfer the practitioner 
to disability inactive status.



Sec. 11.21  Warnings.

    A warning is neither public nor a disciplinary sanction. The OED 
Director may conclude an investigation with the issuance of a warning. 
The warning shall contain a brief statement of facts and Mandatory 
Disciplinary Rules identified in Sec. 10.20(b) of Part 10 of this 
Subchapter relevant to the facts.



Sec. 11.22  Investigations.

    (a) The OED Director is authorized to investigate possible grounds 
for discipline. An investigation may be initiated when the OED Director 
receives a grievance, information or evidence from any source suggesting 
possible grounds for discipline. Neither unwillingness nor neglect by a 
grievant to prosecute a charge, nor settlement, compromise, or 
restitution with the grievant, shall in itself justify abatement of an 
investigation.

[[Page 381]]

    (b) Any person possessing information or evidence concerning 
possible grounds for discipline of a practitioner may report the 
information or evidence to the OED Director. The OED Director may 
request that the report be presented in the form of an affidavit or 
declaration.
    (c) Information or evidence coming from any source which presents or 
alleges facts suggesting possible grounds for discipline of a 
practitioner will be deemed a grievance.
    (d) Preliminary screening of information or evidence. The OED 
Director shall examine all information or evidence concerning possible 
grounds for discipline of a practitioner.
    (e) Notification of investigation. The OED Director shall notify the 
practitioner in writing of the initiation of an investigation into 
whether a practitioner has engaged in conduct constituting possible 
grounds for discipline.
    (f) Request for information and evidence by OED Director.
    (1) In the course of the investigation, the OED Director may request 
information and evidence regarding possible grounds for discipline of a 
practitioner from:
    (i) The grievant,
    (ii) The practitioner, or
    (iii) Any person who may reasonably be expected to provide 
information and evidence needed in connection with the grievance or 
investigation.
    (2) The OED Director may request information and evidence regarding 
possible grounds for discipline of a practitioner from a non-grieving 
client either after obtaining the consent of the practitioner or upon a 
finding by a Contact Member of the Committee on Discipline, appointed in 
accordance with Sec. 11.23(d), that good cause exists to believe that 
the possible ground for discipline alleged has occurred with respect to 
non-grieving clients. Neither a request for, nor disclosure of, such 
information shall constitute a violation of any of the Mandatory 
Disciplinary Rules identified in Sec. 10.20(b) of this subchapter.
    (g) Where the OED Director makes a request under paragraph (f)(2) of 
this section to a Contact Member of the Committee on Discipline, such 
Contact Member shall not, with respect to the practitioner connected to 
the OED Director's request, participate in the Committee on Discipline 
panel that renders a probable cause determination under paragraph (b)(1) 
of this section concerning such practitioner, and that forwards the 
probable cause finding and recommendation to the OED Director under 
paragraph (b)(2) of this section.
    (h) Disposition of investigation. Upon the conclusion of an 
investigation, the OED Director may:
    (1) Close the investigation without issuing a warning, or taking 
disciplinary action;
    (2) Issue a warning to the practitioner;
    (3) Institute formal charges upon the approval of the Committee on 
Discipline; or
    (4) Enter into a settlement agreement with the practitioner and 
submit the same for approval of the USPTO Director.
    (i) Closing investigation without issuing a warning or taking 
disciplinary action. The OED Director shall terminate an investigation 
and decline to refer a matter to the Committee on Discipline if the OED 
Director determines that:
    (1) The information or evidence is unfounded;
    (2) The information or evidence relates to matters not within the 
jurisdiction of the Office;
    (3) As a matter of law, the conduct about which information or 
evidence has been obtained does not constitute grounds for discipline, 
even if the conduct may involve a legal dispute; or
    (4) The available evidence is insufficient to conclude that there is 
probable cause to believe that grounds exist for discipline.



Sec. 11.23  Committee on Discipline.

    (a) The USPTO Director shall appoint a Committee on Discipline. The 
Committee on Discipline shall consist of at least three employees of the 
Office. None of the Committee members shall report directly or 
indirectly to the OED Director or any employee designated by the USPTO 
Director to decide disciplinary matters. Each Committee member shall be 
a member in good standing of the bar of the highest

[[Page 382]]

court of a State. The Committee members shall select a Chairperson from 
among themselves. Three Committee members will constitute a panel of the 
Committee.
    (b) Powers and duties of the Committee on Discipline. The Committee 
shall have the power and duty to:
    (1) Meet in panels at the request of the OED Director and, after 
reviewing evidence presented by the OED Director, by majority vote of 
the panel, determine whether there is probable cause to bring charges 
under Sec. 11.32 against a practitioner; and
    (2) Prepare and forward its own probable cause findings and 
recommendations to the OED Director.
    (c) No discovery shall be authorized of, and no member of the 
Committee on Discipline shall be required to testify about deliberations 
of, the Committee on Discipline or of any panel.
    (d) The Chairperson shall appoint the members of the panels and a 
Contact Member of the Committee on Discipline.



Sec. 11.24  Reciprocal discipline.

    (a) Notification of OED Director. Within thirty days of being 
publicly censured, publicly reprimanded, subjected to probation, 
disbarred or suspended by another jurisdiction, or being disciplinarily 
disqualified from participating in or appearing before any Federal 
program or agency, a practitioner subject to the disciplinary 
jurisdiction of the Office shall notify the OED Director in writing of 
the same. A practitioner is deemed to be disbarred if he or she is 
disbarred, excluded on consent, or has resigned in lieu of a 
disciplinary proceeding. Upon receiving notification from any source or 
otherwise learning that a practitioner subject to the disciplinary 
jurisdiction of the Office has been so publicly censured, publicly 
reprimanded, subjected to probation, disbarred, suspended or 
disciplinarily disqualified, the OED Director shall obtain a certified 
copy of the record or order regarding the public censure, public 
reprimand, probation, disbarment, suspension or disciplinary 
disqualification and file the same with the USPTO Director. The OED 
Director shall, in addition, without Committee on Discipline 
authorization, file with the USPTO Director a complaint complying with 
Sec. 11.34 against the practitioner predicated upon the public censure, 
public reprimand, probation, disbarment, suspension or disciplinary 
disqualification. The OED Director shall request the USPTO Director to 
issue a notice and order as set forth in paragraph (b) of this section.
    (b) Notification served on practitioner. Upon receipt of a certified 
copy of the record or order regarding the practitioner being so publicly 
censured, publicly reprimanded, subjected to probation, disbarred, 
suspended or disciplinarily disqualified together with the complaint, 
the USPTO Director shall issue a notice directed to the practitioner in 
accordance with Sec. 11.35 and to the OED Director containing:
    (1) A copy of the record or order regarding the public censure, 
public reprimand, probation, disbarment, suspension or disciplinary 
disqualification;
    (2) A copy of the complaint; and
    (3) An order directing the practitioner to file a response with the 
USPTO Director and the OED Director, within forty days of the date of 
the notice establishing a genuine issue of material fact predicated upon 
the grounds set forth in paragraphs (d)(1)(i) through (d)(1)(iv) of this 
section that the imposition of the identical public censure, public 
reprimand, probation, disbarment, suspension or disciplinary 
disqualification would be unwarranted and the reasons for that claim.
    (c) Effect of stay in another jurisdiction. In the event the public 
censure, public reprimand, probation, disbarment, suspension imposed by 
another jurisdiction or disciplinary disqualification imposed in the 
Federal program or agency has been stayed, any reciprocal discipline 
imposed by the USPTO may be deferred until the stay expires.
    (d) Hearing and discipline to be imposed. (1) The USPTO Director 
shall hear the matter on the documentary record unless the USPTO 
Director determines that an oral hearing is necessary. After expiration 
of the forty days from the date of the notice pursuant to provisions of 
paragraph (b) of this section, the USPTO Director shall consider any 
timely filed response and

[[Page 383]]

shall impose the identical public censure, public reprimand, probation, 
disbarment, suspension or disciplinary disqualification unless the 
practitioner clearly and convincingly demonstrates, and the USPTO 
Director finds there is a genuine issue of material fact that:
    (i) The procedure elsewhere was so lacking in notice or opportunity 
to be heard as to constitute a deprivation of due process;
    (ii) There was such infirmity of proof establishing the conduct as 
to give rise to the clear conviction that the Office could not, 
consistently with its duty, accept as final the conclusion on that 
subject;
    (iii) The imposition of the same public censure, public reprimand, 
probation, disbarment, suspension or disciplinary disqualification by 
the Office would result in grave injustice; or
    (iv) Any argument that the practitioner was not publicly censured, 
publicly reprimanded, placed on probation, disbarred, suspended or 
disciplinarily disqualified.
    (2) If the USPTO Director determines that there is no genuine issue 
of material fact, the USPTO Director shall enter an appropriate final 
order. If the USPTO Director is unable to make such determination 
because there is a genuine issue of material fact, the USPTO Director 
shall enter an appropriate order:
    (i) Referring the complaint to a hearing officer for a formal 
hearing and entry of an initial decision in accordance with the other 
rules in this part, and
    (ii) Directing the practitioner to file an answer to the complaint 
in accordance with Sec. 11.36.
    (e) Adjudication in another jurisdiction or Federal agency or 
program. In all other respects, a final adjudication in another 
jurisdiction or Federal agency or program that a practitioner, whether 
or not admitted in that jurisdiction, has been guilty of misconduct 
shall establish a prima facie case by clear and convincing evidence that 
the practitioner violated 37 CFR 10.23, as further identified under 37 
CFR 10.23(c)(5), (or any successor regulation identifying such public 
censure, public reprimand, probation, disbarment, suspension or 
disciplinary disqualification as a basis for a disciplinary proceeding 
in this Office).
    (f) Reciprocal discipline--action where practice has ceased. Upon 
request by the practitioner, reciprocal discipline may be imposed nunc 
pro tunc only if the practitioner promptly notified the OED Director of 
his or her censure, public reprimand, probation, disbarment, suspension 
or disciplinary disqualification in another jurisdiction, and 
establishes by clear and convincing evidence that the practitioner 
voluntarily ceased all activities related to practice before the Office 
and complied with all provisions of Sec. 11.58. The effective date of 
any public censure, public reprimand, probation, suspension, disbarment 
or disciplinary disqualification imposed nunc pro tunc shall be the date 
the practitioner voluntarily ceased all activities related to practice 
before the Office and complied with all provisions of Sec. 11.58.
    (g) Reinstatement following reciprocal discipline proceeding. A 
practitioner may petition for reinstatement under conditions set forth 
in Sec. 11.60 no sooner than completion of the period of reciprocal 
discipline imposed, and compliance with all provisions of Sec. 11.58.



Sec. 11.25  Interim suspension and discipline based upon conviction of
committing a serious crime.

    (a) Notification of OED Director. Upon being convicted of a crime in 
a court of the United States or any State, or violating a criminal law 
of a foreign country, a practitioner subject to the disciplinary 
jurisdiction of the Office shall notify the OED Director in writing of 
the same within thirty days from the date of such conviction. Upon being 
advised or learning that a practitioner subject to the disciplinary 
jurisdiction of the Office has been convicted of a crime, the OED 
Director shall make a preliminary determination whether the crime 
constitutes a serious crime warranting interim suspension. If the crime 
is a serious crime, the OED Director shall file with the USPTO Director 
proof of the conviction and request the USPTO Director to issue a notice 
and order set forth in paragraph (b)(2) of this section. The

[[Page 384]]

OED Director shall in addition, without Committee on Discipline 
authorization, file with the USPTO Director a complaint against the 
practitioner complying with Sec. 11.34 predicated upon the conviction 
of a serious crime. If the crime is not a serious crime, the OED 
Director shall process the matter in the same manner as any other 
information or evidence of a possible violation of a Mandatory 
Disciplinary Rule identified in Sec. 10.20(b) of this subchapter coming 
to the attention of the OED Director.
    (b) Interim suspension and referral for disciplinary proceeding. All 
proceedings under this section shall be handled as expeditiously as 
possible.
    (1) The USPTO Director has authority to place a practitioner on 
interim suspension after hearing the request for interim suspension on 
the documentary record.
    (2) Notification served on practitioner. Upon receipt of a certified 
copy of the court record, docket entry or judgment demonstrating that 
the practitioner has been so convicted together with the complaint, the 
USPTO Director shall forthwith issue a notice directed to the 
practitioner in accordance with Sec. Sec. 11.35(a), (b) or (c), and to 
the OED Director, containing:
    (i) A copy of the court record, docket entry, or judgment of 
conviction;
    (ii) A copy of the complaint; and
    (iii) An order directing the practitioner to file a response with 
the USPTO Director and the OED Director, within forty days of the date 
of the notice, establishing that there is a genuine issue of material 
fact that the crime did not constitute a serious crime, the practitioner 
is not the individual found guilty of the crime, or that the conviction 
was so lacking in notice or opportunity to be heard as to constitute a 
deprivation of due process.
    (3) Hearing and final order on request for interim suspension. The 
request for interim suspension shall be heard by the USPTO Director on 
the documentary record unless the USPTO Director determines that the 
practitioner's response establishes a genuine issue of material fact 
that: The crime did not constitute a serious crime, the practitioner is 
not the person who committed the crime, or that the conviction was so 
lacking in notice or opportunity to be heard as to constitute a 
deprivation of due process. If the USPTO Director determines that there 
is no genuine issue of material fact regarding the defenses set forth in 
the preceding sentence, the USPTO Director shall enter an appropriate 
final order regarding the OED Director's request for interim suspension 
regardless of the pendency of any criminal appeal. If the USPTO Director 
is unable to make such determination because there is a genuine issue of 
material fact, the USPTO Director shall enter a final order dismissing 
the request and enter a further order referring the complaint to a 
hearing officer for a hearing and entry of an initial decision in 
accordance with the other rules in this part and directing the 
practitioner to file an answer to the complaint in accordance with Sec. 
11.36.
    (4) Termination. The USPTO Director has authority to terminate an 
interim suspension. In the interest of justice, the USPTO Director may 
terminate an interim suspension at any time upon a showing of 
extraordinary circumstances, after affording the OED Director an 
opportunity to respond to the request to terminate interim suspension.
    (5) Referral for disciplinary proceeding. Upon entering a final 
order imposing interim suspension, the USPTO Director shall refer the 
complaint to a hearing officer to conduct a formal disciplinary 
proceeding. The formal disciplinary proceeding, however, shall be stayed 
by the hearing officer until all direct appeals from the conviction are 
concluded. Review of the initial decision of the hearing officer shall 
be pursuant to Sec. 11.55.
    (c) Proof of conviction and guilt--(1) Conviction in the United 
States. For purposes of a hearing for interim suspension and a hearing 
on the formal charges in a complaint filed as a consequence of the 
conviction, a certified copy of the court record, docket entry, or 
judgment of conviction in a court of the United States or any State 
shall establish a prima facie case by clear and convincing evidence that 
the practitioner was convicted of a serious crime and that the 
conviction was not lacking in notice or opportunity to be

[[Page 385]]

heard as to constitute a deprivation of due process.
    (2) Conviction in a foreign country. For purposes of a hearing for 
interim suspension and on the formal charges filed as a result of a 
finding of guilt, a certified copy of the court record, docket entry, or 
judgment of conviction in a court of a foreign country shall establish a 
prima facie case by clear and convincing evidence that the practitioner 
was convicted of a serious crime and that the conviction was not lacking 
in notice or opportunity to be heard as to constitute a deprivation of 
due process. However, nothing in this paragraph shall preclude the 
practitioner from demonstrating by clear and convincing evidence in any 
hearing on a request for interim suspension there is a genuine issue of 
material fact to be considered when determining if the elements of a 
serious crime were committed in violating the criminal law of the 
foreign country and whether a disciplinary sanction should be entered.
    (d) Crime determined not to be serious crime. If the USPTO Director 
determines that the crime is not a serious crime, the complaint shall be 
referred to the OED Director for investigation under Sec. 11.22 and 
processing as is appropriate.
    (e) Reinstatement--(1) Upon reversal or setting aside a finding of 
guilt or a conviction. If a practitioner suspended solely under the 
provisions of paragraph (b) of this section demonstrates that the 
underlying finding of guilt or conviction of serious crimes has been 
reversed or vacated, the order for interim suspension shall be vacated 
and the practitioner shall be placed on active status unless the finding 
of guilt was reversed or the conviction was set aside with respect to 
less than all serious crimes for which the practitioner was found guilty 
or convicted. The vacating of the interim suspension will not terminate 
any other disciplinary proceeding then pending against the practitioner, 
the disposition of which shall be determined by the hearing officer 
before whom the matter is pending, on the basis of all available 
evidence other than the finding of guilt or conviction.
    (2) Following conviction of a serious crime. Any practitioner 
convicted of a serious crime and disciplined in whole or in part in 
regard to that conviction, may petition for reinstatement under 
conditions set forth in Sec. 11.60 no sooner than five years after 
being discharged following completion of service of his or her sentence, 
or after completion of service under probation or parole, whichever is 
later.
    (f) Notice to clients and others of interim suspension. An interim 
suspension under this section shall constitute a suspension of the 
practitioner for the purpose of Sec. 11.58.



Sec. 11.26  Settlement.

    Before or after a complaint under Sec. 11.34 is filed, a settlement 
conference may occur between the OED Director and the practitioner. Any 
offers of compromise and any statements made during the course of 
settlement discussions shall not be admissible in subsequent 
proceedings. The OED Director may recommend to the USPTO Director any 
settlement terms deemed appropriate, including steps taken to correct or 
mitigate the matter forming the basis of the action, or to prevent 
recurrence of the same or similar conduct. A settlement agreement shall 
be effective only upon entry of a final decision by the USPTO Director.



Sec. 11.27  Exclusion on consent.

    (a) Required affidavit. The OED Director may confer with a 
practitioner concerning possible violations by the practitioner of the 
Rules of Professional Conduct whether or not a disciplinary proceeding 
has been instituted. A practitioner who is the subject of an 
investigation or a pending disciplinary proceeding based on allegations 
of grounds for discipline, and who desires to resign, may only do so by 
consenting to exclusion and delivering to the OED Director an affidavit 
declaring the consent of the practitioner to exclusion and stating:
    (1) That the practitioner's consent is freely and voluntarily 
rendered, that the practitioner is not being subjected to coercion or 
duress, and that the practitioner is fully aware of the implications of 
consenting to exclusion;

[[Page 386]]

    (2) That the practitioner is aware that there is currently pending 
an investigation into, or a proceeding involving allegations of 
misconduct, the nature of which shall be specifically set forth in the 
affidavit to the satisfaction of the OED Director;
    (3) That the practitioner acknowledges that, if and when he or she 
applies for reinstatement under Sec. 11.60, the OED Director will 
conclusively presume, for the limited purpose of determining the 
application for reinstatement, that:
    (i) The facts upon which the investigation or complaint is based are 
true, and
    (ii) The practitioner could not have successfully defended himself 
or herself against the allegations in the investigation or charges in 
the complaint.
    (b) Action by the USPTO Director. Upon receipt of the required 
affidavit, the OED Director shall file the affidavit and any related 
papers with the USPTO Director for review and approval. Upon such 
approval, the USPTO Director will enter an order excluding the 
practitioner on consent and providing other appropriate actions. Upon 
entry of the order, the excluded practitioner shall comply with the 
requirements set forth in Sec. 11.58.
    (c) When an affidavit under paragraph (a) of this section is 
received after a complaint under Sec. 11.34 has been filed, the OED 
Director shall notify the hearing officer. The hearing officer shall 
enter an order transferring the disciplinary proceeding to the USPTO 
Director, who may enter an order excluding the practitioner on consent.
    (d) Reinstatement. Any practitioner excluded on consent under this 
section may not petition for reinstatement for five years. A 
practitioner excluded on consent who intends to reapply for admission to 
practice before the Office must comply with the provisions of Sec. 
11.58, and apply for reinstatement in accordance with Sec. 11.60. 
Failure to comply with the provisions of Sec. 11.58 constitutes grounds 
for denying an application for reinstatement.



Sec. 11.28  Incapacitated practitioners in a disciplinary proceeding.

    (a) Holding in abeyance a disciplinary proceeding because of 
incapacitation due to a current disability or addiction--(1) 
Practitioner's motion. In the course of a disciplinary proceeding under 
Sec. 11.32, but before the date set by the hearing officer for a 
hearing, the practitioner may file a motion requesting the hearing 
officer to enter an order holding such proceeding in abeyance based on 
the contention that the practitioner is suffering from a disability or 
addiction that makes it impossible for the practitioner to adequately 
defend the charges in the disciplinary proceeding.
    (i) Content of practitioner's motion. The practitioner's motion 
shall, in addition to any other requirement of Sec. 11.43, include or 
have attached thereto:
    (A) A brief statement of all material facts;
    (B) Affidavits, medical reports, official records, or other 
documents and the opinion of at least one medical expert setting forth 
and establishing any of the material facts on which the practitioner is 
relying;
    (C) A statement that the practitioner acknowledges the alleged 
incapacity by reason of disability or addiction;
    (D) Written consent that the practitioner be transferred to 
disability inactive status if the motion is granted; and
    (E) A written agreement by the practitioner to not practice before 
the Office in patent, trademark or other non-patent cases while on 
disability inactive status.
    (ii) Response. The OED Director's response to any motion hereunder 
shall be served and filed within thirty days after service of the 
practitioner's motion unless such time is shortened or enlarged by the 
hearing officer for good cause shown, and shall set forth the following:
    (A) All objections, if any, to the actions requested in the motion;
    (B) An admission, denial or allegation of lack of knowledge with 
respect to each of the material facts in the practitioner's motion and 
accompanying documents; and
    (C) Affidavits, medical reports, official records, or other 
documents setting forth facts on which the OED Director intends to rely 
for purposes of disputing or denying any material fact set forth in the 
practitioner's papers.

[[Page 387]]

    (2) Disposition of practitioner's motion. The hearing officer shall 
decide the motion and any response thereto. The motion shall be granted 
upon a showing of good cause to believe the practitioner to be 
incapacitated as alleged. If the required showing is made, the hearing 
officer shall enter an order holding the disciplinary proceeding in 
abeyance. In the case of addiction to drugs or intoxicants, the order 
may provide that the practitioner will not be returned to active status 
absent satisfaction of specified conditions. Upon receipt of the order, 
the OED Director shall transfer the practitioner to disability inactive 
status, give notice to the practitioner, cause notice to be published, 
and give notice to appropriate authorities in the Office that the 
practitioner has been placed on disability inactive status. The 
practitioner shall comply with the provisions of Sec. 11.58, and shall 
not engage in practice before the Office in patent, trademark and other 
non-patent law until a determination is made of the practitioner's 
capability to resume practice before the Office in a proceeding under 
paragraph (c) or paragraph (d) of this section. A practitioner on 
disability inactive status must seek permission from the OED Director to 
engage in an activity authorized under Sec. 11.58(e). Permission will 
be granted only if the practitioner has complied with all the conditions 
of Sec. Sec. 11.58(a) through 11.58(d) applicable to disability 
inactive status. In the event that permission is granted, the 
practitioner shall fully comply with the provisions of Sec. 11.58(e).
    (b) Motion for reactivation. Any practitioner transferred to 
disability inactive status in a disciplinary proceeding may file with 
the hearing officer a motion for reactivation once a year beginning at 
any time not less than one year after the initial effective date of 
inactivation, or once during any shorter interval provided by the order 
issued pursuant to paragraph (a)(2) of this section or any modification 
thereof. If the motion is granted, the disciplinary proceeding shall 
resume under such schedule as may be established by the hearing officer.
    (c) Contents of motion for reactivation. A motion by the 
practitioner for reactivation alleging that a practitioner has recovered 
from a prior disability or addiction shall be accompanied by all 
available medical reports or similar documents relating thereto. The 
hearing officer may require the practitioner to present such other 
information as is necessary.
    (d) OED Director's motion to resume disciplinary proceeding held in 
abeyance. (1) The OED Director, having good cause to believe a 
practitioner is no longer incapacitated, may file a motion requesting 
the hearing officer to terminate a prior order holding in abeyance any 
pending proceeding because of the practitioner's disability or 
addiction. The hearing officer shall decide the matter presented by the 
OED Director's motion hereunder based on the affidavits and other 
admissible evidence attached to the OED Director's motion and the 
practitioner's response. The OED Director bears the burden of showing by 
clear and convincing evidence that the practitioner is able to defend 
himself or herself. If there is any genuine issue as to one or more 
material facts, the hearing officer will hold an evidentiary hearing.
    (2) The hearing officer, upon receipt of the OED Director's motion 
under paragraph (d)(1) of this section, may direct the practitioner to 
file a response. If the hearing officer requires the practitioner to 
file a response, the practitioner must present clear and convincing 
evidence that the prior self-alleged disability or addiction continues 
to make it impossible for the practitioner to defend himself or herself 
in the underlying proceeding being held in abeyance.
    (e) Action by the hearing officer. If, in deciding a motion under 
paragraph (b) or (d) of this section, the hearing officer determines 
that there is good cause to believe the practitioner is not 
incapacitated from defending himself or herself, or is not incapacitated 
from practicing before the Office, the hearing officer shall take such 
action as is deemed appropriate, including the entry of an order 
directing the reactivation of the practitioner and resumption of the 
disciplinary proceeding.

[[Page 388]]



Sec. 11.29  Reciprocal transfer or initial transfer to disability 
inactive status.

    (a) Notification of OED Director. (1) Transfer to disability 
inactive status in another jurisdiction as grounds for reciprocal 
transfer by the Office. Within thirty days of being transferred to 
disability inactive status in another jurisdiction, a practitioner 
subject to the disciplinary jurisdiction of the Office shall notify the 
OED Director in writing of the transfer. Upon notification from any 
source that a practitioner subject to the disciplinary jurisdiction of 
the Office has been transferred to disability inactive status in another 
jurisdiction, the OED Director shall obtain a certified copy of the 
order. The OED Director shall file with the USPTO Director:
    (i) The order;
    (ii) A request that the practitioner be transferred to disability 
inactive status, including the specific grounds therefor; and
    (iii) A request that the USPTO Director issue a notice and order as 
set forth in paragraph (b) of this section.
    (2) Involuntary commitment, adjudication of incompetency or court 
ordered placement under guardianship or conservatorship as grounds for 
initial transfer to disability inactive status. Within thirty days of 
being judicially declared incompetent, being judicially ordered to be 
involuntarily committed after a hearing on the grounds of incompetency 
or disability, or being placed by court order under guardianship or 
conservatorship in another jurisdiction, a practitioner subject to the 
disciplinary jurisdiction of the Office shall notify the OED Director in 
writing of such judicial action. Upon notification from any source that 
a practitioner subject to the disciplinary jurisdiction of the Office 
has been subject to such judicial action, the OED Director shall obtain 
a certified copy of the order. The OED Director shall file with the 
USPTO Director:
    (i) The order;
    (ii) A request that the practitioner be transferred to disability 
inactive status, including the specific grounds therefor; and
    (iii) A request that the USPTO Director issue a notice and order as 
set forth in paragraph (b) of this section.
    (b) Notice served on practitioner. Upon receipt of a certified copy 
of an order or declaration issued by another jurisdiction demonstrating 
that a practitioner subject to the disciplinary jurisdiction of the 
Office has been transferred to disability inactive status, judicially 
declared incompetent, judicially ordered to be involuntarily committed 
after a judicial hearing on the grounds of incompetency or disability, 
or placed by court order under guardianship or conservatorship, together 
with the OED Director's request, the USPTO Director shall issue a 
notice, comporting with Sec. 11.35, directed to the practitioner 
containing:
    (1) A copy of the order or declaration from the other jurisdiction,
    (2) A copy of the OED Director's request; and
    (3) An order directing the practitioner to file a response with the 
USPTO Director and the OED Director, within 30 days from the date of the 
notice, establishing a genuine issue of material fact supported by an 
affidavit and predicated upon the grounds set forth in Sec. 11.29(d) 
(1) through (4) that a transfer to disability inactive status would be 
unwarranted and the reasons therefor.
    (c) Effect of stay of transfer, judicially declared incompetence, 
judicially ordered involuntarily commitment on the grounds of 
incompetency or disability, or court-ordered placement under 
guardianship or conservatorship. In the event the transfer, judicially 
declared incompetence, judicially ordered involuntary commitment on the 
grounds of incompetency or disability, or court-ordered placement under 
guardianship or conservatorship in the other jurisdiction has been 
stayed there, any reciprocal transfer or transfer by the Office may be 
deferred until the stay expires.
    (d) Hearing and transfer to disability inactive status. The request 
for transfer to disability inactive status shall be heard by the USPTO 
Director on the documentary record unless the USPTO Director determines 
that there is a genuine issue of material fact, in which case the USPTO 
Director may deny the request. Upon the expiration of 30 days

[[Page 389]]

from the date of the notice pursuant to the provisions of paragraph (b) 
of this section, the USPTO Director shall consider any timely filed 
response and impose the identical transfer to disability inactive status 
based on the practitioner's transfer to disability status in another 
jurisdiction, or shall transfer the practitioner to disability inactive 
status based on judicially declared incompetence, judicially ordered 
involuntary commitment on the grounds of incompetency or disability, or 
court-ordered placement under guardianship or conservatorship, unless 
the practitioner demonstrates by clear and convincing evidence, or the 
USPTO Director finds there is a genuine issue of material fact by clear 
and convincing evidence that:
    (1) The procedure was so lacking in notice or opportunity to be 
heard as to constitute a deprivation of due process;
    (2) There was such infirmity of proof establishing the transfer to 
disability status, judicial declaration of incompetence, judicial order 
for involuntary commitment on the grounds of incompetency or disability, 
or placement by court order under guardianship or conservatorship that 
the USPTO Director could not, consistent with Office's duty, accept as 
final the conclusion on that subject;
    (3) The imposition of the same disability status or transfer to 
disability status by the USPTO Director would result in grave injustice; 
or
    (4) The practitioner is not the individual transferred to disability 
status, judicially declared incompetent, judicially ordered for 
involuntary commitment on the grounds of incompetency or disability, or 
placed by court order under guardianship or conservatorship.
    (5) If the USPTO Director determines that there is no genuine issue 
of material fact with regard to any of the elements of paragraphs (d)(1) 
through (4) of this section, the USPTO Director shall enter an 
appropriate final order. If the USPTO Director is unable to make that 
determination because there is a genuine issue of material fact, the 
USPTO Director shall enter an appropriate order dismissing the OED 
Director's request for such reason.
    (e) Adjudication in other jurisdiction. In all other aspects, a 
final adjudication in another jurisdiction that a practitioner be 
transferred to disability inactive status, is judicially declared 
incompetent, is judicially ordered to be involuntarily committed on the 
grounds of incompetency or disability, or is placed by court order under 
guardianship or conservatorship shall establish the disability for 
purposes of a reciprocal transfer to or transfer to disability status 
before the Office.
    (f) A practitioner who is transferred to disability inactive status 
under this section shall be deemed to have been refused recognition to 
practice before the Office for purposes of 35 U.S.C. 32.
    (g) Order imposing reciprocal transfer to disability inactive status 
or order imposing initial transfer to disability inactive status. An 
order by the USPTO Director imposing reciprocal transfer to disability 
inactive status, or transferring a practitioner to disability inactive 
status shall be effective immediately, and shall be for an indefinite 
period until further order of the USPTO Director. A copy of the order 
transferring a practitioner to disability inactive status shall be 
served upon the practitioner, the practitioner's guardian, and/or the 
director of the institution to which the practitioner has been committed 
in the manner the USPTO Director may direct. A practitioner reciprocally 
transferred or transferred to disability inactive status shall comply 
with the provisions of Sec. 11.58, and shall not engage in practice 
before the Office in patent, trademark and other non-patent law unless 
and until reinstated to active status.
    (h) Confidentiality of proceeding; Orders to be public--(1) 
Confidentiality of proceeding. All proceedings under this section 
involving allegations of disability of a practitioner shall be kept 
confidential until and unless the USPTO Director enters an order 
reciprocally transferring or transferring the practitioner to disability 
inactive status.
    (2) Orders to be public. The OED Director shall publicize any 
reciprocal transfer to disability inactive status or transfer to 
disability inactive status in the same manner as for the imposition of 
public discipline.

[[Page 390]]

    (i) Employment of practitioners on disability inactive status. A 
practitioner on disability inactive status must seek permission from the 
OED Director to engage in an activity authorized under Sec. 11.58(e). 
Permission will be granted only if the practitioner has complied with 
all the conditions of Sec. Sec. 11.58(a) through 11.58(d) applicable to 
disability inactive status. In the event that permission is granted, the 
practitioner shall fully comply with the provisions of Sec. 11.58(e).
    (j) Reinstatement from disability inactive status. (1) Generally. No 
practitioner reciprocally transferred or transferred to disability 
inactive status under this section may resume active status except by 
order of the OED Director.
    (2) Petition. A practitioner reciprocally transferred or transferred 
to disability inactive status shall be entitled to petition the OED 
Director for transfer to active status once a year, or at whatever 
shorter intervals the USPTO Director may direct in the order 
transferring or reciprocally transferring the practitioner to disability 
inactive status or any modification thereof.
    (3) Examination. Upon the filing of a petition for transfer to 
active status, the OED Director may take or direct whatever action is 
deemed necessary or proper to determine whether the incapacity has been 
removed, including a direction for an examination of the practitioner by 
qualified medical or psychological experts designated by the OED 
Director. The expense of the examination shall be paid and borne by the 
practitioner.
    (4) Required disclosure, waiver of privilege. With the filing of a 
petition for reinstatement to active status, the practitioner shall be 
required to disclose the name of each psychiatrist, psychologist, 
physician and hospital or other institution by whom or in which the 
practitioner has been examined or treated for the disability since the 
transfer to disability inactive status. The practitioner shall furnish 
to the OED Director written consent to the release of information and 
records relating to the incapacity if requested by the OED Director.
    (5) Learning in the law, examination. The OED Director may direct 
that the practitioner establish proof of competence and learning in law, 
which proof may include passing the registration examination.
    (6) Granting of petition for transfer to active status. The OED 
Director shall grant the petition for transfer to active status upon a 
showing by clear and convincing evidence that the incapacity has been 
removed.
    (7) Reinstatement in other jurisdiction. If a practitioner is 
reciprocally transferred to disability inactive status on the basis of a 
transfer to disability inactive status in another jurisdiction, the OED 
Director may dispense with further evidence that the disability has been 
removed and may immediately direct reinstatement to active status upon 
such terms as are deemed proper and advisable.
    (8) Judicial declaration of competency. If a practitioner is 
transferred to disability inactive status on the basis of a judicially 
declared incompetence, judicially ordered involuntary commitment on the 
grounds of incompetency or disability, or court-ordered placement under 
guardianship or conservatorship has been declared to be competent, the 
OED Director may dispense with further evidence that the incapacity to 
practice law has been removed and may immediately direct reinstatement 
to active status.



Sec. Sec. 11.30-11.31  [Reserved]



Sec. 11.32  Instituting a disciplinary proceeding.

    If after conducting an investigation under Sec. 11.22(a), the OED 
Director is of the opinion that grounds exist for discipline under 
Sec. Sec. 11.19(b)(3) through (5), the OED Director, after complying 
where necessary with the provisions of 5 U.S.C. 558(c), shall convene a 
meeting of a panel of the Committee on Discipline. The panel of the 
Committee on Discipline shall then determine as specified in Sec. 
11.23(b) whether a disciplinary proceeding shall be instituted. If the 
panel of the Committee on Discipline determines that probable cause 
exists to bring charges under

[[Page 391]]

Sec. Sec. 11.19(b)(3) through (5), the OED Director shall institute a 
disciplinary proceeding by filing a complaint under Sec. 11.34.



Sec. 11.33  [Reserved]



Sec. 11.34  Complaint.

    (a) A complaint instituting a disciplinary proceeding under 
Sec. Sec. 11.25(b)(4) or 11.32 shall:
    (1) Name the practitioner who may then be referred to as the 
``respondent'';
    (2) Give a plain and concise description of the respondent's alleged 
grounds for discipline;
    (3) State the place and time, not less than thirty days from the 
date the complaint is filed, for filing an answer by the respondent;
    (4) State that a decision by default may be entered if an answer is 
not timely filed by the respondent; and
    (5) Be signed by the OED Director.
    (b) A complaint will be deemed sufficient if it fairly informs the 
respondent of any grounds for discipline, and where applicable, the 
Mandatory Disciplinary Rules identified in Sec. 10.20(b) of this 
subchapter that form the basis for the disciplinary proceeding so that 
the respondent is able to adequately prepare a defense.
    (c) The complaint shall be filed in the manner prescribed by the 
USPTO Director.



Sec. 11.35  Service of complaint.

    (a) A complaint may be served on a respondent in any of the 
following methods:
    (1) By delivering a copy of the complaint personally to the 
respondent, in which case the individual who gives the complaint to the 
respondent shall file an affidavit with the OED Director indicating the 
time and place the complaint was delivered to the respondent.
    (2) By mailing a copy of the complaint by ``Express Mail,'' first-
class mail, or any delivery service that provides ability to confirm 
delivery or attempted delivery to:
    (i) A respondent who is a registered practitioner at the address 
provided to OED pursuant to Sec. 11.11, or
    (ii) A respondent who is a nonregistered practitioner at the last 
address for the respondent known to the OED Director.
    (3) By any method mutually agreeable to the OED Director and the 
respondent.
    (4) In the case of a respondent who resides outside the United 
States, by sending a copy of the complaint by any delivery service that 
provides ability to confirm delivery or attempted delivery, to:
    (i) A respondent who is a registered practitioner at the address 
provided to OED pursuant to Sec. 11.11; or
    (ii) A respondent who is a nonregistered practitioner at the last 
address for the respondent known to the OED Director.
    (b) If a copy of the complaint cannot be delivered to the respondent 
through any one of the procedures in paragraph (a) of this section, the 
OED Director shall serve the respondent by causing an appropriate notice 
to be published in the Official Gazette for two consecutive weeks, in 
which case, the time for filing an answer shall be thirty days from the 
second publication of the notice. Failure to timely file an answer will 
constitute an admission of the allegations in the complaint in 
accordance with paragraph (d) of Sec. 11.36, and the hearing officer 
may enter an initial decision on default.
    (c) If the respondent is known to the OED Director to be represented 
by an attorney under Sec. 11.40(a), a copy of the complaint shall be 
served on the attorney in lieu of service on the respondent in the 
manner provided for in paragraph (a) or (b) of this section.



Sec. 11.36  Answer to complaint.

    (a) Time for answer. An answer to a complaint shall be filed within 
the time set in the complaint but in no event shall that time be less 
than thirty days from the date the complaint is filed.
    (b) With whom filed. The answer shall be filed in writing with the 
hearing officer at the address specified in the complaint. The hearing 
officer may extend the time for filing an answer once for a period of no 
more than thirty days 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 served

[[Page 392]]

on respondent. A copy of the answer, and any exhibits or attachments 
thereto, shall be served on the OED Director.
    (c) Content. The respondent shall include in the answer a statement 
of the facts that 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 
that 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 in the answer special matters 
of defense and any intent to raise a disability as a mitigating factor. 
If respondent intends to raise a special matter of defense or 
disability, the answer shall specify the defense or disability, its 
nexus to the misconduct, and the reason it provides a defense or 
mitigation. A respondent who fails to do so cannot rely on a special 
matter of defense or disability. The hearing officer may, for good 
cause, allow the respondent to file the statement late, grant additional 
hearing preparation time, or make other appropriate orders.
    (d) Failure to deny allegations in complaint. Every allegation in 
the complaint that is not denied by a respondent in the answer shall be 
deemed to be admitted and may be considered proven. The hearing officer 
at any hearing need receive no further evidence with respect to that 
allegation.
    (e) Default judgment. Failure to timely file an answer will 
constitute an admission of the allegations in the complaint and may 
result in entry of default judgment.



Sec. 11.37  [Reserved]



Sec. 11.38  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 hearing 
officer.



Sec. 11.39  Hearing officer; appointment; responsibilities; review of 
interlocutory orders; stays.

    (a) Appointment. A hearing officer, appointed by the USPTO Director 
under 5 U.S.C. 3105 or 35 U.S.C. 32, shall conduct disciplinary 
proceedings as provided by this Part.
    (b) Independence of the Hearing Officer. (1) A hearing officer 
appointed in accordance with paragraph (a) of this section shall not be 
subject to first level or second level supervision by either the USPTO 
Director or OED Director, or his or her designee.
    (2) A hearing officer appointed in accordance with paragraph (a) of 
this section shall not be subject to supervision of the person(s) 
investigating or prosecuting the case.
    (3) A hearing officer appointed in accordance with paragraph (a) of 
this section shall be impartial, shall not be an individual who has 
participated in any manner in the decision to initiate the proceedings, 
and shall not have been employed under the immediate supervision of the 
practitioner.
    (4) A hearing officer appointed in accordance with paragraph (a) of 
this section shall be admitted to practice law and have suitable 
experience and training conducting hearings, reaching a determination, 
and rendering an initial decision in an equitable manner.
    (c) Responsibilities. The hearing officer shall have authority, 
consistent with specific provisions of these regulations, 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 hearing officer;
    (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;

[[Page 393]]

    (7) Receive and consider oral or written arguments on facts or law;
    (8) Adopt procedures and modify procedures for the orderly 
disposition of proceedings;
    (9) Make initial decisions under Sec. Sec. 11.25 and 11.54; and
    (10) Perform acts and take measures as necessary to promote the 
efficient, timely, and impartial conduct of any disciplinary proceeding.
    (d) Time for making initial decision. The hearing officer shall set 
times and exercise control over a disciplinary proceeding such that an 
initial decision under Sec. 11.54 is normally issued within nine months 
of the date a complaint is filed. The hearing officer may, however, 
issue an initial decision more than nine months after a complaint is 
filed if there exist circumstances, in his or her opinion, that preclude 
issuance of an initial decision within nine months of the filing of the 
complaint.
    (e) Review of interlocutory orders. The USPTO Director will not 
review an interlocutory order of a hearing officer except:
    (1) When the hearing officer 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 USPTO Director may materially 
advance the ultimate termination of the disciplinary proceeding, or
    (2) In an extraordinary situation where the USPTO Director deems 
that justice requires review.
    (f) Stays pending review of interlocutory order. If the OED Director 
or a respondent seeks review of an interlocutory order of a hearing 
officer under paragraph (b)(2) of this section, any time period set by 
the hearing officer for taking action shall not be stayed unless ordered 
by the USPTO Director or the hearing officer.
    (g) The hearing officer shall engage in no ex parte discussions with 
any party on the merits of the complaint, beginning with appointment and 
ending when the final agency decision is issued.



Sec. 11.40  Representative for OED Director or respondent.

    (a) A respondent may represent himself or herself, or be represented 
by an attorney before the Office in connection with an investigation or 
disciplinary proceeding. The attorney shall file a written declaration 
that he or she is an attorney within the meaning of Sec. 11.1 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 Deputy General Counsel for Intellectual Property and 
Solicitor, and attorneys in the Office of the Solicitor shall represent 
the OED Director. The attorneys representing the OED Director in 
disciplinary proceedings shall not consult with the USPTO Director, the 
General Counsel, the Deputy General Counsel for General Law, or an 
individual designated by the USPTO Director to decide disciplinary 
matters regarding the proceeding. The General Counsel and the Deputy 
General Counsel for General Law shall remain screened from the 
investigation and prosecution of all disciplinary proceedings in order 
that they shall be available as counsel to the USPTO Director in 
deciding disciplinary proceedings unless access is appropriate to 
perform their duties. After a final decision is entered in a 
disciplinary proceeding, the OED Director and attorneys representing the 
OED Director shall be available to counsel the USPTO Director, the 
General Counsel, and the Deputy General Counsel for General Law in any 
further proceedings.



Sec. 11.41  Filing of papers.

    (a) The provisions of Sec. Sec. 1.8 and 2.197 of this subchapter do 
not apply to disciplinary proceedings. All papers filed after the 
complaint and prior to entry of an initial decision by the hearing 
officer shall be filed with the hearing officer at an address or place 
designated by the hearing officer.
    (b) All papers filed after entry of an initial decision by the 
hearing officer shall be filed with the USPTO Director.

[[Page 394]]

A copy of the paper shall be served on the OED Director. The hearing 
officer or the OED Director may provide for filing papers and other 
matters by hand, by ``Express Mail,'' or by other means.



Sec. 11.42  Service of papers.

    (a) All papers other than a complaint shall be served on a 
respondent who is 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, ``Express 
Mail,'' or other delivery service to the attorney at the address 
provided by the attorney under Sec. 11.40(a)(1); or
    (3) Any other method mutually agreeable to the attorney and a 
representative for the OED 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, ``Express 
Mail,'' or other delivery service 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 OED Director.
    (c) A respondent shall serve on the representative for the OED 
Director one copy of each paper filed with the hearing officer or the 
OED Director. A paper may be served on the representative for the OED 
Director by:
    (1) Delivering a copy of the paper to the representative; or
    (2) Mailing a copy of the paper by first-class mail, ``Express 
Mail,'' or other delivery service to an 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 hearing officer or the USPTO Director 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. 11.43  Motions.

    Motions, including all prehearing motions commonly filed under the 
Federal Rules of Civil Procedure, shall be filed with the hearing 
officer. The hearing officer will determine whether replies to responses 
will be authorized and the time period for filing such a response. No 
motion shall be filed with the hearing officer 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, prior to a decision on the motion, the parties 
resolve issues raised by a motion presented to the hearing officer, the 
parties shall promptly notify the hearing officer.



Sec. 11.44  Hearings.

    (a) The hearing officer shall preside over hearings in disciplinary 
proceedings. The hearing officer shall set the time and place for the 
hearing. In cases involving an incarcerated respondent, any necessary 
oral hearing may be held at the location of incarceration. Oral hearings 
will be stenographically recorded and transcribed, and the testimony of 
witnesses will be received under oath or affirmation. The hearing 
officer shall conduct the hearing as if the proceeding were subject to 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 OED 
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 hearing 
officer, the hearing officer may deem the respondent to have waived the 
right to a hearing and

[[Page 395]]

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 hearing officer 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, a 
protective order is entered to exclude from public disclosure 
information which is privileged or confidential under applicable laws or 
regulations.



Sec. 11.45  Amendment of pleadings.

    The OED Director may, without Committee on Discipline authorization, 
but with the authorization of the hearing officer, amend the complaint 
to include additional charges based upon conduct committed before or 
after the complaint was filed. If amendment of the complaint is 
authorized, the hearing officer shall authorize amendment of the answer. 
Any party who would otherwise be prejudiced by the amendment will be 
given reasonable opportunity to meet the allegations in the complaint or 
answer as amended, and the hearing officer shall make findings on any 
issue presented by the complaint or answer as amended.



Sec. Sec. 11.46-11.48  [Reserved]



Sec. 11.49  Burden of proof.

    In a disciplinary proceeding, the OED Director shall have the burden 
of proving the violation by clear and convincing evidence and a 
respondent shall have the burden of proving any affirmative defense by 
clear and convincing evidence.



Sec. 11.50  Evidence.

    (a) Rules of evidence. The rules of evidence prevailing in courts of 
law and equity are not controlling in hearings in disciplinary 
proceedings. However, the hearing officer shall exclude evidence that is 
irrelevant, immaterial, or unduly repetitious.
    (b) Depositions. Depositions of witnesses taken pursuant to Sec. 
11.51 may be admitted as evidence.
    (c) Government documents. Official documents, records, and papers of 
the Office, including, but not limited to, all papers in the file of a 
disciplinary investigation, 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 hearing officer may authorize the 
withdrawal of the exhibit subject to any conditions the hearing officer 
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. 11.51  Depositions.

    (a) Depositions for use at the hearing in lieu of personal 
appearance of a witness before the hearing officer may be taken by 
respondent or the OED Director upon a showing of good cause and with the 
approval of, and under such conditions as may be deemed appropriate by, 
the hearing officer. 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 
parties may waive the requirement of ten days' notice and depositions 
may then be taken of a witness 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 hearing 
officer 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. 
Depositions may not be taken to obtain discovery, except as

[[Page 396]]

provided for in paragraph (b) of this section.
    (b) When the OED Director and the respondent agree in writing, a 
deposition of any witness who will appear voluntarily may be taken under 
such terms and conditions as may be mutually agreeable to the OED 
Director and the respondent. The deposition shall not be filed with the 
hearing officer and may not be admitted in evidence before the hearing 
officer unless he or she orders the deposition admitted in evidence. The 
admissibility of the deposition shall lie within the discretion of the 
hearing officer 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 hearing officer.



Sec. 11.52  Discovery.

    Discovery shall not be authorized except as follows:
    (a) After an answer is filed under Sec. 11.36 and when a party 
establishes that discovery is reasonable and relevant, the hearing 
officer, 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;
    (2) Is not available to the party under 35 U.S.C. 122;
    (3) Relates to any other disciplinary proceeding;
    (4) Relates to experts except as the hearing officer 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 hearing officer 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) Consists of information that 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 hearing officer shall require the party seeking discovery 
to file a motion (Sec. 11.43) and explain in detail, for each request 
made, how the discovery sought is reasonable and relevant to an issue 
actually raised in the complaint or the answer.
    (e) The hearing officer may require parties to file and serve, prior 
to any hearing, a pre-hearing statement that 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) Copies of memoranda reflecting respondent's own statements to 
administrative representatives.



Sec. 11.53  Proposed findings and conclusions; post-hearing memorandum.

    Except in cases in which the respondent has failed to answer the 
complaint or amended complaint, the hearing officer, 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.

[[Page 397]]



Sec. 11.54  Initial decision of hearing officer.

    (a) The hearing officer shall make an initial decision in the case. 
The decision will include:
    (1) A statement of findings of fact and conclusions of law, as well 
as the reasons or bases for those findings and conclusions 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 default judgment, of suspension or exclusion from 
practice, of reprimand, or an order dismissing the complaint. The 
hearing officer shall transmit a copy of the decision to the OED 
Director and to the respondent. After issuing the decision, the hearing 
officer shall transmit the entire record to the OED Director. In the 
absence of an appeal to the USPTO Director, the decision of the hearing 
officer, including a default judgment, will, without further 
proceedings, become the decision of the USPTO Director thirty days from 
the date of the decision of the hearing officer.
    (b) The initial decision of the hearing officer shall explain the 
reason for any default judgment, reprimand, suspension, or exclusion. In 
determining any sanction, the following four factors must be considered 
if they are applicable:
    (1) Whether the practitioner has violated a duty owed to a client, 
to the public, to the legal system, or to the profession;
    (2) Whether the practitioner acted intentionally, knowingly, or 
negligently;
    (3) The amount of the actual or potential injury caused by the 
practitioner's misconduct; and
    (4) The existence of any aggravating or mitigating factors.



Sec. 11.55  Appeal to the USPTO Director.

    (a) Within thirty days after the date of the initial decision of the 
hearing officer under Sec. Sec. 11.25 or 11.54, either party may appeal 
to the USPTO Director. The appeal shall include the appellant's brief. 
If more than one appeal is filed, the party who files the appeal first 
is the appellant for purpose of this rule. If appeals are filed on the 
same day, the respondent is the appellant. If an appeal is filed, then 
the OED Director shall transmit the entire record to the USPTO Director. 
Any cross-appeal shall be filed within fourteen days after the date of 
service of the appeal pursuant to Sec. 11.42, or thirty days after the 
date of the initial decision of the hearing officer, whichever is later. 
The cross-appeal shall include the cross-appellant's brief. Any appellee 
or cross-appellee brief must be filed within thirty days after the date 
of service pursuant to Sec. 11.42 of an appeal or cross-appeal. Any 
reply brief must be filed within fourteen days after the date of service 
of any appellee or cross-appellee brief.
    (b) An appeal or cross-appeal must include exceptions to the 
decisions of the hearing officer and supporting reasons for those 
exceptions. Any exception not raised will be deemed to have been waived 
and will be disregarded by the USPTO Director in reviewing the initial 
decision.
    (c) All briefs shall:
    (1) Be filed with the USPTO Director at the address set forth in 
Sec. 1.1(a)(3)(ii) of this subchapter and served on the opposing party;
    (2) Include separate sections containing a concise statement of the 
disputed facts and disputed points of law; and
    (3) Be typed on 8\1/2\ by 11-inch paper, and comply with Rule 
32(a)(4)-(6) of the Federal Rules of Appellate Procedure.
    (d) An appellant's, cross-appellant's, appellee's, and cross-
appellee's brief shall be no more than thirty pages in length, and 
comply with Rule 28(a)(2), (3), and (5) through (10) of the Federal 
Rules of Appellate Procedure. Any reply brief shall be no more than 
fifteen pages in length, and shall comply with Rule 28(a)(2), (3), (8), 
and (9) of the Federal Rules of Appellate Procedure.
    (e) The USPTO Director may refuse entry of a nonconforming brief.
    (f) The USPTO Director will decide the appeal on the record made 
before the hearing officer.
    (g) Unless the USPTO Director permits, no further briefs or motions 
shall be filed.
    (h) The USPTO Director may order reopening of a disciplinary 
proceeding in accordance with the principles that govern the granting of 
new trials. Any

[[Page 398]]

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.
    (i) In the absence of an appeal by the OED Director, failure by the 
respondent to appeal under the provisions of this section shall result 
in the initial decision being final and effective thirty days from the 
date of the initial decision of the hearing officer.



Sec. 11.56  Decision of the USPTO Director.

    (a) The USPTO Director shall decide an appeal from an initial 
decision of the hearing officer. On appeal from the initial decision, 
the USPTO Director has authority to conduct a de novo review of the 
factual record. The USPTO Director may affirm, reverse, or modify the 
initial decision or remand the matter to the hearing officer for such 
further proceedings as the USPTO Director may deem appropriate. In 
making a final decision, the USPTO Director shall review the record or 
the portions of the record designated by the parties. The USPTO Director 
shall transmit a copy of the final decision to the OED Director and to 
the respondent.
    (b) A final decision of the USPTO Director may dismiss a 
disciplinary proceeding, reverse or modify the initial decision, 
reprimand a practitioner, or may suspend or exclude the practitioner 
from practice before the Office. A final decision suspending or 
excluding a practitioner shall require compliance with the provisions of 
Sec. 11.58. The final decision may also condition the reinstatement of 
the practitioner upon a showing that the practitioner has taken steps to 
correct or mitigate the matter forming the basis of the action, or to 
prevent recurrence of the same or similar conduct.
    (c) The respondent or the OED Director may make a single request for 
reconsideration or modification of the decision by the USPTO Director if 
filed within twenty days from the date of entry of the decision. No 
request for reconsideration or modification shall be granted unless the 
request is based on newly discovered evidence or error of law or fact, 
and the requestor must demonstrate that any newly discovered evidence 
could not have been discovered any earlier by due diligence. Such a 
request shall have the effect of staying the effective date of the order 
of discipline in the final decision. The decision by the USPTO Director 
is effective on its date of entry.



Sec. 11.57  Review of final decision of the USPTO Director.

    (a) Review of the final decision by the USPTO Director in a 
disciplinary case may be had, subject to Sec. 11.55(d), by a petition 
filed in accordance with 35 U.S.C. 32. The Respondent must serve the 
USPTO Director with the petition. Respondent must serve the petition in 
accordance with Rule 4 of the Federal Rules of Civil Procedure and Sec. 
104.2 of this Title.
    (b) Except as provided for in Sec. 11.56(c), an order for 
discipline in a final decision will not be stayed except on proof of 
exceptional circumstances.



Sec. 11.58  Duties of disciplined or resigned practitioner, or practitioner
on disability inactive status.

    (a) An excluded, suspended or resigned practitioner, or practitioner 
transferred to disability inactive status shall not engage in any 
practice of patent, trademark and other non-patent law before the 
Office. An excluded, suspended or resigned practitioner will not be 
automatically reinstated at the end of his or her period of exclusion or 
suspension. An excluded, suspended or resigned practitioner, or 
practitioner transferred to disability inactive status must comply with 
the provisions of this section and Sec. 11.60 to be reinstated. Failure 
to comply with the provisions of this section may constitute both 
grounds for denying reinstatement or readmission; and cause for further 
action, including seeking further exclusion, suspension, and for 
revocation of any pending probation.
    (b) Unless otherwise ordered by the USPTO Director, any excluded, 
suspended or resigned practitioner, or practitioner transferred to 
disability inactive status shall:

[[Page 399]]

    (1) Within thirty days after the date of entry of the order of 
exclusion, suspension, acceptance of resignation, or transfer to 
disability inactive status:
    (i) File a notice of withdrawal as of the effective date of the 
exclusion, suspension, acceptance of resignation, or transfer to 
disability inactive status in each pending patent and trademark 
application, each pending reexamination and interference proceeding, and 
every other matter pending in the Office, together with a copy of the 
notices sent pursuant to paragraphs (b) and (c) of this section;
    (ii) Provide notice to all State and Federal jurisdictions and 
administrative agencies to which the practitioner is admitted to 
practice and all clients the practitioner represents having immediate or 
prospective business before the Office in patent, trademark and other 
non-patent matters of the order of exclusion, suspension, acceptance of 
resignation, or transferred to disability inactive status and of the 
practitioner's consequent inability to act as a practitioner after the 
effective date of the order; and that, if not represented by another 
practitioner, the client should act promptly to substitute another 
practitioner, or to seek legal advice elsewhere, calling attention to 
any urgency arising from the circumstances of the case;
    (iii) Provide notice to the practitioner(s) for all opposing parties 
(or, to the parties in the absence of a practitioner representing the 
parties) in matters pending before the Office of the practitioner's 
exclusion, suspension, resignation, or transfer to disability inactive 
status and, that as a consequence, the practitioner is disqualified from 
acting as a practitioner regarding matters before the Office after the 
effective date of the suspension, exclusion, resignation or transfer to 
disability inactive status, and state in the notice the mailing address 
of each client of the excluded, suspended or resigned practitioner, or 
practitioner transferred to disability inactive status who is a party in 
the pending matter;
    (iv) Deliver to all clients having immediate or prospective business 
before the Office in patent, trademark or other non-patent matters any 
papers or other property to which the clients are entitled, or shall 
notify the clients and any co-practitioner of a suitable time and place 
where the papers and other property may be obtained, calling attention 
to any urgency for obtaining the papers or other property;
    (v) Relinquish to the client, or other practitioner designated by 
the client, all funds for practice before the Office, including any 
legal fees paid in advance that have not been earned and any advanced 
costs not expended;
    (vi) 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
    (vii) Serve all notices required by paragraphs (b)(1)(ii) and 
(b)(1)(iii) of this section by certified mail, return receipt requested, 
unless mailed abroad. If mailed abroad, all notices shall be served with 
a receipt to be signed and returned to the practitioner.
    (2) Within forty-five days after entry of the order of suspension, 
exclusion, or of acceptance of resignation, the practitioner shall file 
with the OED Director an affidavit of compliance certifying that the 
practitioner has fully complied with the provisions of the order, this 
section, and with the Mandatory Disciplinary Rules identified in Sec. 
10.20(b) of this subchapter for withdrawal from representation. Appended 
to the affidavit of compliance shall be:
    (i) A copy of each form of notice, the names and addresses of the 
clients, practitioners, courts, and agencies to which notices were sent, 
and all return receipts or returned mail received up to the date of the 
affidavit. Supplemental affidavits shall be filed covering subsequent 
return receipts and returned mail. Such names and addresses of clients 
shall remain confidential unless otherwise ordered by the USPTO 
Director;
    (ii) A schedule showing the location, title and account number of 
every bank account designated as a client or trust account, deposit 
account in the Office, or other fiduciary account, and of

[[Page 400]]

every account in which the practitioner holds or held as of the entry 
date of the order any client, trust, or fiduciary funds for practice 
before the Office;
    (iii) A schedule describing the practitioner's disposition of all 
client and fiduciary funds for practice before the Office in the 
practitioner's possession, custody or control as of the date of the 
order or thereafter;
    (iv) Such proof of the proper distribution of said funds and the 
closing of such accounts as has been requested by the OED Director, 
including copies of checks and other instruments;
    (v) A list of all other State, Federal, and administrative 
jurisdictions to which the practitioner is admitted to practice; and
    (vi) An affidavit describing the precise nature of the steps taken 
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. The affidavit 
shall also state the residence or other address of the practitioner to 
which communications may thereafter be directed, and list all State and 
Federal jurisdictions, and administrative agencies to which the 
practitioner is admitted to practice. The OED Director may require such 
additional proof as is deemed necessary. In addition, for the period of 
discipline, an excluded or suspended practitioner, or a practitioner 
transferred to disability inactive status shall continue to file a 
statement in accordance with Sec. 11.11, regarding any change of 
residence or other address to which communications may thereafter be 
directed, so that the excluded or suspended practitioner, or 
practitioner transferred to disability inactive status may be located if 
a grievance is received regarding any conduct occurring before or after 
the exclusion or suspension. The practitioner shall retain copies of all 
notices sent and shall maintain complete records of the steps taken to 
comply with the notice requirements.
    (3) Not hold himself or herself out as authorized to practice law 
before the Office.
    (4) Not advertise the practitioner's availability or ability to 
perform or render legal services for any person having immediate or 
prospective business before the Office as to that business.
    (5) Not render legal advice or services to any person having 
immediate or prospective business before the Office as to that business.
    (6) Promptly take steps to change any sign identifying the 
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.
    (c) An excluded, suspended or resigned practitioner, or practitioner 
transferred to disability inactive status after entry of the order of 
exclusion or suspension, acceptance of resignation, or transfer to 
disability inactive status shall not accept any new retainer regarding 
immediate or prospective business before the Office, or engage as a 
practitioner for another in any new case or legal matter regarding 
practice before the Office. The excluded, suspended or resigned 
practitioner, or practitioner transferred to disability inactive status 
shall be granted limited recognition for a period of thirty days. During 
the thirty-day period of limited recognition, the excluded, suspended or 
resigned practitioner, or practitioner transferred to disability 
inactive status shall conclude work on behalf of a client on any matters 
that were pending before the Office on the date of entry of the order of 
exclusion or suspension, or acceptance of resignation. If such work 
cannot be concluded, the excluded, suspended or resigned practitioner, 
or practitioner transferred to disability inactive status shall so 
advise the client so that the client may make other arrangements.
    (d) Required records. An excluded, suspended or resigned 
practitioner, or practitioner transferred to disability inactive status 
shall keep and maintain records of the various steps taken under this 
section, so that in any subsequent proceeding proof of compliance

[[Page 401]]

with this section and with the exclusion or suspension order will be 
available. The OED Director will require the practitioner to submit such 
proof as a condition precedent to the granting of any petition for 
reinstatement.
    (e) An excluded, suspended or resigned practitioner, or practitioner 
on disability inactive status 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 
paralegal for the other practitioner or perform other services for the 
other practitioner which are normally performed by laypersons, provided:
    (1) The excluded, suspended or resigned practitioner, or 
practitioner transferred to disability inactive status is a salaried 
employee of:
    (i) The other practitioner;
    (ii) The other practitioner's law firm; or
    (iii) 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 excluded, 
suspended or resigned practitioner for the other practitioner;
    (3) The excluded, suspended or resigned practitioner, or 
practitioner transferred to disability inactive status does not:
    (i) Communicate directly in writing, orally, or otherwise with a 
client of the other practitioner in regard to any immediate or 
prospective business before the Office;
    (ii) Render any legal advice or any legal services to a client of 
the other practitioner in regard to any immediate or prospective 
business before the Office; or
    (iii) Meet in person or in the presence of the other practitioner in 
regard to any immediate or prospective business before the Office, with:
    (A) Any Office employee 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; or
    (C) Any witness or potential witness whom the other practitioner, 
the other practitioner's law firm, or the other practitioner's client-
employer may or 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.
    (f) When an excluded, suspended or resigned practitioner, or 
practitioner transferred to disability inactive status acts as a 
paralegal or performs services under paragraph (e) of this section, the 
practitioner shall not thereafter be reinstated to practice before the 
Office unless:
    (1) The practitioner shall have filed with the OED Director an 
affidavit which:
    (i) Explains in detail the precise nature of all paralegal or other 
services performed by the excluded, suspended or resigned practitioner, 
or practitioner transferred to disability inactive status, and
    (ii) Shows by clear and convincing evidence that the excluded, 
suspended or resigned practitioner, or practitioner transferred to 
disability inactive status has complied with the provisions of this 
section and all Mandatory Disciplinary Rules identified in Sec. 
10.20(b) of this subchapter; and
    (2) The other practitioner shall have filed with the OED Director a 
written statement which:
    (i) Shows that the other practitioner has read the affidavit 
required by paragraph (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 excluded, 
suspended or resigned practitioner, or practitioner transferred to 
disability inactive status has complied with paragraph (c) of this 
section.



Sec. 11.59  Dissemination of disciplinary and other information.

    (a) The OED Director shall inform the public of the disposition of 
each matter in which public discipline has been imposed, and of any 
other changes in a practitioner's registration status. Public discipline 
includes exclusion, as

[[Page 402]]

well as exclusion on consent; suspension; and public reprimand. Unless 
otherwise ordered by the USPTO Director, the OED Director shall give 
notice of public discipline and the reasons for the discipline to 
disciplinary enforcement agencies in the State where the practitioner is 
admitted to practice, to courts where the practitioner is known to be 
admitted, and the public. If public discipline is imposed, the OED 
Director shall cause a final decision of the USPTO Director to be 
published. Final decisions of the USPTO Director include default 
judgments. See Sec. 11.54(a)(2). If a private reprimand is imposed, the 
OED Director shall cause a redacted version of the final decision to be 
published.
    (b) Records available to the public. Unless the USPTO Director 
orders that the proceeding or a portion of the record be kept 
confidential, the OED Director's records of every disciplinary 
proceeding where a practitioner is reprimanded, suspended, or excluded, 
including when said sanction is imposed by default judgment, shall be 
made available to the public upon written request, except that 
information may be withheld as necessary to protect the privacy of third 
parties or as directed in a protective order issued pursuant to Sec. 
11.44(c). The record of a proceeding that results in a practitioner's 
transfer to disability inactive status shall not be available to the 
public.
    (c) Access to records of exclusion by consent. Unless the USPTO 
Director orders that the proceeding or a portion of the record be kept 
confidential, an order excluding a practitioner on consent under Sec. 
11.27 and the affidavit required under paragraph (a) of Sec. 11.27 
shall be available to the public, except that information in the order 
or affidavit may be withheld as necessary to protect the privacy of 
third parties or as directed in a protective order under Sec. 11.44(c). 
The affidavit required under paragraph (a) of Sec. 11.27 shall not be 
used in any other proceeding except by order of the USPTO Director or 
upon written consent of the practitioner.



Sec. 11.60  Petition for reinstatement.

    (a) Restrictions on reinstatement. An excluded, suspended or 
resigned practitioner shall not resume practice of patent, trademark, or 
other non-patent law before the Office until reinstated by order of the 
OED Director or the USPTO Director.
    (b) Petition for reinstatement. An excluded or suspended 
practitioner shall be eligible to apply for reinstatement only upon 
expiration of the period of suspension or exclusion and the 
practitioner's full compliance with Sec. 11.58. An excluded 
practitioner shall be eligible to apply for reinstatement no earlier 
than at least five years from the effective date of the exclusion. A 
resigned practitioner shall be eligible to petition for reinstatement 
and must show compliance with Sec. 11.58 no earlier than at least five 
years from the date the practitioner's resignation is accepted and an 
order is entered excluding the practitioner on consent.
    (c) Review of reinstatement petition. An excluded, suspended or 
resigned practitioner shall file a petition for reinstatement 
accompanied by the fee required by Sec. 1.21(a)(10) of this subchapter. 
The petition for reinstatement shall be filed with the OED Director. An 
excluded or suspended practitioner who has violated any provision of 
Sec. 11.58 shall not be eligible for reinstatement until a continuous 
period of the time in compliance with Sec. 11.58 that is equal to the 
period of suspension or exclusion has elapsed. A resigned practitioner 
shall not be eligible for reinstatement until compliance with Sec. 
11.58 is shown. If the excluded, suspended or resigned practitioner is 
not eligible for reinstatement, or if the OED Director determines that 
the petition is insufficient or defective on its face, the OED Director 
may dismiss the petition. Otherwise the OED Director shall consider the 
petition for reinstatement. The excluded, suspended or resigned 
practitioner seeking reinstatement shall have the burden of proof by 
clear and convincing evidence. Such proof shall be included in or 
accompany the petition, and shall establish:
    (1) That the excluded, suspended or resigned practitioner has the 
good moral character and reputation, competency, and learning in law 
required under Sec. 11.7 for admission;
    (2) That the resumption of practice before the Office will not be 
detrimental to the administration of justice

[[Page 403]]

or subversive to the public interest; and
    (3) That the suspended practitioner has complied with the provisions 
of Sec. 11.58 for the full period of suspension, that the excluded 
practitioner has complied with the provisions of Sec. 11.58 for at 
least five continuous years, or that the resigned practitioner has 
complied with Sec. 11.58 upon acceptance of the resignation.
    (d) Petitions for reinstatement--Action by the OED Director granting 
reinstatement. (1) If the excluded, suspended or resigned practitioner 
is found to have complied with paragraphs (c)(1) through (c)(3) of this 
section, the OED Director shall enter an order of reinstatement, which 
shall be conditioned on payment of the costs of the disciplinary 
proceeding to the extent set forth in paragraphs (d)(2) and (3) of this 
section.
    (2) Payment of costs of disciplinary proceedings. Prior to 
reinstatement to practice, the excluded or suspended practitioner shall 
pay the costs of the disciplinary proceeding. The costs imposed pursuant 
to this section include all of the following:
    (i) The actual expense incurred by the OED Director or the Office 
for the original and copies of any reporter's transcripts of the 
disciplinary proceeding, and any fee paid for the services of the 
reporter;
    (ii) All expenses paid by the OED Director or the Office which would 
qualify as taxable costs recoverable in civil proceedings; and
    (iii) The charges determined by the OED Director to be ``reasonable 
costs'' of investigation, hearing, and review. These amounts shall serve 
to defray the costs, other than fees for services of attorneys and 
experts, of the Office of Enrollment and Discipline in the preparation 
or hearing of the disciplinary proceeding, and costs incurred in the 
administrative processing of the disciplinary proceeding.
    (3) An excluded or suspended practitioner may be granted relief, in 
whole or in part, only from an order assessing costs under this section 
or may be granted an extension of time to pay these costs, in the 
discretion of the OED Director, upon grounds of hardship, special 
circumstances, or other good cause.
    (e) Petitions for reinstatement--Action by the OED Director denying 
reinstatement. If the excluded, suspended or resigned practitioner is 
found unfit to resume the practice of patent law before the Office, the 
OED Director shall first provide the excluded, suspended or resigned 
practitioner with an opportunity to show cause in writing why the 
petition should not be denied. Failure to comply with Sec. 11.12(c) 
shall constitute unfitness. If unpersuaded by the showing, the OED 
Director shall deny the petition. The OED Director may require the 
excluded, suspended or resigned practitioner, in meeting the 
requirements of Sec. 11.7, to take and pass an examination under Sec. 
11.7(b), ethics courses, and/or the Multistate Professional 
Responsibility Examination. The OED Director shall provide findings, 
together with the record. The findings shall include on the first page, 
immediately beneath the caption of the case, a separate section entitled 
``Prior Proceedings'' which shall state the docket number of the 
original disciplinary proceeding in which the exclusion or suspension 
was ordered.
    (f) Resubmission of petitions for reinstatement. If a petition for 
reinstatement is denied, no further petition for reinstatement may be 
filed until the expiration of at least one year following the denial 
unless the order of denial provides otherwise.
    (g) Reinstatement proceedings open to public. Proceedings on any 
petition for reinstatement shall be open to the public. Before 
reinstating any excluded or suspended practitioner, the OED Director 
shall publish a notice of the excluded or suspended 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. 11.61  Savings clause.

    (a) A disciplinary proceeding based on conduct engaged in prior to 
September 15, 2008 may be instituted subsequent to such effective date, 
if such conduct would continue to justify suspension or exclusion under 
the provisions of this part.

[[Page 404]]

    (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 September 15, 2008.
    (c) Sections 11.24, 11.25, 11.28 and 11.34 through 11.57 shall apply 
to all proceedings in which the complaint is filed on or after the 
effective date of these regulations. Section 11.26 and 11.27 shall apply 
to matters pending on or after September 15, 2008.
    (d) Sections 11.58 through 11.60 shall apply to all cases in which 
an order of suspension or exclusion is entered or resignation is 
accepted on or after September 15, 2008.



Sec. Sec. 11.62-11.99  [Reserved]

                         PARTS 15	15a [RESERVED]



PART 41_PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND ]
INTERFERENCES--Table of Contents




                      Subpart A_General Provisions

Sec.
41.1 Policy.
41.2 Definitions.
41.3 Petitions.
41.4 Timeliness.
41.5 Counsel.
41.6 Public availability of Board records.
41.7 Management of the record.
41.8 Mandatory notices.
41.9 Action by owner.
41.10 Correspondence addresses.
41.11 Ex parte communications in inter partes proceedings.
41.12 Citation of authority.
41.20 Fees.

                       Subpart B_Ex Parte Appeals

41.30 Definitions.
41.31 Appeal to Board.
41.33 Amendments and affidavits or other evidence after appeal.
41.35 Jurisdiction over appeal.
41.37 Appeal brief.
41.39 Examiner's answer.
41.41 Reply brief.
41.43 Examiner's response to reply brief.
41.47 Oral hearing.
41.50 Decisions and other actions by the Board.
41.52 Rehearing.
41.54 Action following decision.
41.56 Sanctions.

                     Subpart C_Inter Partes Appeals

41.60 Definitions.
41.61 Notice of appeal and cross appeal to Board.
41.63 Amendments and affidavits or other evidence after appeal.
41.64 Jurisdiction over appeal in inter partes reexamination.
41.66 Time for filing briefs.
41.67 Appellant's brief.
41.68 Respondent's brief.
41.69 Examiner's answer.
41.71 Rebuttal brief.
41.73 Oral hearing.
41.77 Decisions and other actions by the Board.
41.79 Rehearing.
41.81 Action following decision.

                        Subpart D_Contested Cases

41.100 Definitions.
41.101 Notice of proceeding.
41.102 Completion of examination.
41.103 Jurisdiction over involved files.
41.104 Conduct of contested case.
41.106 Filing and service.
41.108 Lead counsel.
41.109 Access to and copies of Office records.
41.110 Filing claim information.
41.120 Notice of basis for relief.
41.121 Motions.
41.122 Oppositions and replies.
41.123 Default filing times.
41.124 Oral argument.
41.125 Decision on motions.
41.126 Arbitration.
41.127 Judgment.
41.128 Sanctions.
41.150 Discovery.
41.151 Admissibility.
41.152 Applicability of the Federal Rules of Evidence.
41.153 Records of the Office.
41.154 Form of evidence.
41.155 Objection; motion to exclude; motion in limine.
41.156 Compelling testimony and production.
41.157 Taking testimony.
41.158 Expert testimony; tests and data.

                     Subpart E_Patent Interferences

41.200 Procedure; pendency.
41.201 Definitions.
41.202 Suggesting an interference.
41.203 Declaration.
41.204 Notice of basis for relief.
41.205 Settlement agreements.
41.206 Common interests in the invention.
41.207 Presumptions.
41.208 Content of substantive and responsive motions.

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 135.

[[Page 405]]


    Effective Date Note: At 73 FR 32972, June 10, 2008, the authority 
citation for Part 41 was revised, effective December 10, 2008. Per a 
subsequent final rule published at 73 FR 74972, Dec. 10, 2008, the 
effective date of this action was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:
    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 132, 133, 134, 
135, 306, and 315.

    Source: 69 FR 50003, Aug. 12, 2004, unless otherwise noted.



                      Subpart A_General Provisions



Sec. 41.1  Policy.

    (a) Scope. Part 41 governs proceedings before the Board of Patent 
Appeals and Interferences. Sections 1.1 to 1.36 and 1.181 to 1.183 of 
this title also apply to practice before the Board, as do other sections 
of part 1 of this title that are incorporated by reference into part 41.
    (b) Construction. The provisions of Part 41 shall be construed to 
secure the just, speedy, and inexpensive resolution of every proceeding 
before the Board.
    (c) Decorum. Each party must act with courtesy and decorum in all 
proceedings before the Board, including interactions with other parties.



Sec. 41.2  Definitions.

    Unless otherwise clear from the context, the following definitions 
apply to proceedings under this part:
    Affidavit means affidavit, declaration under Sec. 1.68 of this 
title, or statutory declaration under 28 U.S.C. 1746. A transcript of an 
ex parte deposition may be used as an affidavit in a contested case.
    Board means the Board of Patent Appeals and Interferences and 
includes:
    (1) For a final Board action:
    (i) In an appeal or contested case, a panel of the Board.
    (ii) In a proceeding under Sec. 41.3, the Chief Administrative 
Patent Judge or another official acting under an express delegation from 
the Chief Administrative Patent Judge.
    (2) For non-final actions, a Board member or employee acting with 
the authority of the Board.
    Board member means the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent and Trademark Office, 
the Deputy Under Secretary of Commerce for Intellectual Property and 
Deputy Director of the United States Patent and Trademark Office, the 
Commissioner for Patents, the Commissioner for Trademarks, and the 
administrative patent judges.
    Contested case means a Board proceeding other than an appeal under 
35 U.S.C. 134 or a petition under Sec. 41.3. An appeal in an inter 
partes reexamination is not a contested case.
    Final means, with regard to a Board action, final for the purposes 
of judicial review. A decision is final only if:
    (1) In a panel proceeding. The decision is rendered by a panel, 
disposes of all issues with regard to the party seeking judicial review, 
and does not indicate that further action is required; and
    (2) In other proceedings. The decision disposes of all issues or the 
decision states it is final.
    Hearing means consideration of the issues of record. Rehearing means 
reconsideration.
    Office means United States Patent and Trademark Office.
    Panel means at least three Board members acting in a panel 
proceeding.
    Panel proceeding means a proceeding in which final action is 
reserved by statute to at least three Board members, but includes a non-
final portion of such a proceeding whether administered by a panel or 
not.
    Party, in this part, means any entity participating in a Board 
proceeding, other than officers and employees of the Office, including:
    (1) An appellant;
    (2) A participant in a contested case;
    (3) A petitioner; and
    (4) Counsel for any of the above, where context permits.

    Effective Date Note: At 73 FR 32972, June 10, 2008, Sec. 41.2 was 
amended by revising the definitions of ``Board'' and ``Contested case'', 
effective December 10, 2008. Per a subsequent final rule published at 73 
FR 74972, Dec. 10, 2008, the effective date of this action was delayed 
indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:



Sec. 41.2  Definitions.

                                * * * * *

    Board means the Board of Patent Appeals and Interferences and 
includes:

[[Page 406]]

    (1) For a final Board action in an appeal or contested case, a panel 
of the Board.
    (2) For non-final actions, a Board member or employee acting with 
the authority of the Board.

                                * * * * *

    Contested case means a Board proceeding other than an appeal under 
35 U.S.C. 134. An appeal in an inter partes reexamination proceeding is 
not a contested case.

                                * * * * *



Sec. 41.3  Petitions.

    (a) Deciding official. Petitions must be addressed to the Chief 
Administrative Patent Judge. A panel or an administrative patent judge 
may certify a question of policy to the Chief Administrative Patent 
Judge for decision. The Chief Administrative Patent Judge may delegate 
authority to decide petitions.
    (b) Scope. This section covers petitions on matters pending before 
the Board (Sec. Sec. 41.35, 41.64, 41.103, and 41.205); otherwise, see 
Sec. Sec. 1.181 to 1.183 of this title. The following matters are not 
subject to petition:
    (1) Issues committed by statute to a panel, and
    (2) In pending contested cases, procedural issues. See Sec. 
41.121(a)(3) and Sec. 41.125(c).
    (c) Petition fee. The fee set in Sec. 41.20(a) must accompany any 
petition under this section except no fee is required for a petition 
under this section seeking supervisory review.
    (d) Effect on proceeding. The filing of a petition does not stay the 
time for any other action in a Board proceeding.
    (e) Time for action. (1) Except as otherwise provided in this part 
or as the Board may authorize in writing, a party may:
    (i) File the petition within 14 days from the date of the action 
from which the party is requesting relief, and
    (ii) File any request for reconsideration of a petition decision 
within 14 days of the decision on petition or such other time as the 
Board may set.
    (2) A party may not file an opposition or a reply to a petition 
without Board authorization.

[69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]

    Effective Date Note: At 73 FR 32973, June 10, 2008, Sec. 41.3 was 
amended by revising paragraphs (a) and (b), effective December 10, 2008. 
Per a subsequent final rule published at 73 FR 74972, Dec. 10, 2008, the 
effective date of this action was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:



Sec. 41.3  Petitions.

    (a) Deciding official. A petition authorized by this part must be 
addressed to the Chief Administrative Patent Judge. The Chief 
Administrative Patent Judge may delegate authority to decide petitions.
    (b) Scope. This section covers petitions on matters pending before 
the Board, petitions authorized by this part and petitions seeking 
relief under 35 U.S.C. 135(c); otherwise see Sec. Sec. 1.181 to 1.183 
of this title. The following matters are not subject to petition:
    (1) Issues committed by statute to a panel.
    (2) In pending contested cases, procedural issues. See Sec. 
41.121(a)(3) and Sec. 41.125(c).

                                * * * * *



Sec. 41.4  Timeliness.

    (a) Extensions of time. Extensions of time will be granted only on a 
showing of good cause except as otherwise provided by rule.
    (b) Late filings. (1) A late filing that results in either an 
application becoming abandoned or a reexamination prosecution becoming 
terminated under Sec. 1.550(d) or Sec. 1.957(b) of this title or 
limited under Sec. 1.957(c) of this title may be revived as set forth 
in Sec. 1.137 of this title.
    (2) A late filing that does not result in either an application 
becoming abandoned or a reexamination prosecution becoming terminated 
under Sec. 1.550(d) or Sec. 1.957(b) of this title or limited under 
Sec. 1.957(c) of this title will be excused upon a showing of excusable 
neglect or a Board determination that consideration on the merits would 
be in the interest of justice.
    (c) Scope. This section governs all proceedings before the Board, 
but does not apply to filings related to Board proceedings before or 
after the Board has jurisdiction, such as:
    (1) Extensions during prosecution (see Sec. 1.136 of this title),
    (2) Filing of a brief or request for oral hearing (see Sec. Sec. 
41.37, 41.41, 41.47, 41.67, 41.68, 41.71 and 41.73), or

[[Page 407]]

    (3) Seeking judicial review (see Sec. Sec. 1.301 to 1.304 of this 
title).

[69 FR 50003, Aug. 12, 2004, as amended at 72 FR 18907, Apr. 16, 2007]

    Effective Date Note: At 73 FR 32973, June 10, 2008, Sec. 41.4 was 
amended by revising paragraphs (b) and (c), effective December 10, 2008. 
Per a subsequent final rule published at 73 FR 74972, Dec. 10, 2008, the 
effective date of this action was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:



Sec. 41.4  Timeliness.

                                * * * * *

    (b) Late filings. (1) A request to revive an application which 
becomes abandoned or a reexamination proceeding which becomes terminated 
under Sec. Sec. 1.550(d) or 1.957(b) or (c) of this title as a result 
of a late filing may be filed pursuant to Sec. 1.137 of this title.
    (2) A late filing that does not result in an application becoming 
abandoned or a reexamination proceeding becoming terminated under 
Sec. Sec. 1.550(d) or 1.957(b) or limited under Sec. 1.957(c) of this 
title may be excused upon a showing of excusable neglect or a Board 
determination that consideration on the merits would be in the interests 
of justice.
    (c) Scope. Except to the extent provided in this part, this section 
governs proceedings before the Board, but does not apply to filings 
related to Board proceedings before or after the Board has jurisdiction 
(Sec. 41.35), such as:
    (1) Extensions during prosecution (see Sec. 1.136 of this title).
    (2) Filing of a notice of appeal and an appeal brief (see Sec. Sec. 
41.31(c) and 41.37(c)).
    (3) Seeking judicial review (see Sec. Sec. 1.301 to 1.304 of this 
title).



Sec. 41.5  Counsel.

    While the Board has jurisdiction:
    (a) Appearance pro hac vice. The Board may authorize a person other 
than a registered practitioner to appear as counsel in a specific 
proceeding.
    (b) Disqualification. (1) The Board may disqualify counsel in a 
specific proceeding after notice and an opportunity to be heard.
    (2) A decision to disqualify is not final for the purposes of 
judicial review until certified by the Chief Administrative Patent 
Judge.
    (c) Withdrawal. Counsel may not withdraw from a proceeding before 
the Board unless the Board authorizes such withdrawal. See Sec. 10.40 
of this title regarding conditions for withdrawal.
    (d) Procedure. The Board may institute a proceeding under this 
section on its own or a party in a contested case may request relief 
under this section.
    (e) Referral to the Director of Enrollment and Discipline. Possible 
violations of the disciplinary rules in part 11 of this subchapter may 
be referred to the Office of Enrollment and Discipline for 
investigation. See Sec. 11.22 of this subchapter.

[69 FR 50003, Aug. 12, 2004, as amended at 73 FR 47704, Aug. 14, 2008]



Sec. 41.6  Public availability of Board records.

    (a) Publication--(1) Generally. Any Board action is available for 
public inspection without a party's permission if rendered in a file 
open to the public pursuant to Sec. 1.11 of this title or in an 
application that has been published in accordance with Sec. Sec. 1.211 
to 1.221 of this title. The Office may independently publish any Board 
action that is available for public inspection.
    (2) Determination of special circumstances. Any Board action not 
publishable under paragraph (a)(1) of this section may be published or 
made available for public inspection if the Director believes that 
special circumstances warrant publication and a party does not, within 
two months after being notified of the intention to make the action 
public, object in writing on the ground that the action discloses the 
objecting party's trade secret or other confidential information and 
states with specificity that such information is not otherwise publicly 
available. If the action discloses such information, the party shall 
identify the deletions in the text of the action considered necessary to 
protect the information. If the affected party considers that the entire 
action must be withheld from the public to protect such information, the 
party must explain why. The party will be given time, not less than 
twenty days, to request reconsideration and seek court review before any 
contested portion of the action is made public over its objection.

[[Page 408]]

    (b) Record of proceeding. (1) The record of a Board proceeding is 
available to the public unless a patent application not otherwise 
available to the public is involved.
    (2) Notwithstanding paragraph (b)(1) of this section, after a final 
Board action in or judgment in a Board proceeding, the record of the 
Board proceeding will be made available to the public if any involved 
file is or becomes open to the public under Sec. 1.11 of this title or 
an involved application is or becomes published under Sec. Sec. 1.211 
to 1.221 of this title.



Sec. 41.7  Management of the record.

    (a) The Board may expunge any paper directed to a Board proceeding, 
or filed while an application or patent is under the jurisdiction of the 
Board, that is not authorized under this part or in a Board order, or 
that is filed contrary to a Board order.
    (b) A party may not file a paper previously filed in the same Board 
proceeding, not even as an exhibit or appendix, without Board 
authorization or as required by rule.



Sec. 41.8  Mandatory notices.

    (a) In an appeal brief (Sec. Sec. 41.37, 41.67, or 41.68) or at the 
initiation of a contested case (Sec. 41.101), and within 20 days of any 
change during the proceeding, a party must identify:
    (1) Its real party-in-interest, and
    (2) Each judicial or administrative proceeding that could affect, or 
be affected by, the Board proceeding.
    (b) For contested cases, a party seeking judicial review of a Board 
proceeding must file a notice with the Board of the judicial review 
within 20 days of the filing of the complaint or the notice of appeal. 
The notice to the Board must include a copy of the complaint or notice 
of appeal. See also Sec. Sec. 1.301 to 1.304 of this title.



Sec. 41.9  Action by owner.

    (a) Entire interest. An owner of the entire interest in an 
application or patent involved in a Board proceeding may act in the 
proceeding to the exclusion of the inventor (see Sec. 3.73(b) of this 
title).
    (b) Part interest. An owner of a part interest in an application or 
patent involved in a Board proceeding may petition to act in the 
proceeding to the exclusion of an inventor or a co-owner. The petition 
must show the inability or refusal of an inventor or co-owner to 
prosecute the proceeding or other cause why it is in the interest of 
justice to permit the owner of a part interest to act in the proceeding. 
An order granting the petition may set conditions on the actions of the 
parties during the proceeding.



Sec. 41.10  Correspondence addresses.

    Except as the Board may otherwise direct,
    (a) Appeals. Correspondence in an application or a patent involved 
in an appeal (subparts B and C of this part) during the period beginning 
when an appeal docketing notice is issued and ending when a decision has 
been rendered by the Board, as well as any request for rehearing of a 
decision by the Board, shall be mailed to: Board of Patent Appeals and 
Interferences, United States Patent and Trademark Office, PO Box 1450, 
Alexandria, Virginia 22313-1450. Notices of appeal, appeal briefs, reply 
briefs, requests for oral hearing, as well as all other correspondence 
in an application or a patent involved in an appeal to the Board for 
which an address is not otherwise specified, should be addressed as set 
out in Sec. 1.1(a)(1)(i) of this title.
    (b) Contested cases. Mailed correspondence in contested cases 
(subpart D of this part) shall be sent to Mail Stop INTERFERENCE, Board 
of Patent Appeals and Interferences, United States Patent and Trademark 
Office, PO Box 1450, Alexandria, Virginia 22313-1450.



Sec. 41.11  Ex Parte communications in inter partes proceedings.

    An ex parte communication about an inter partes reexamination 
(subpart C of this part) or about a contested case (subparts D and E of 
this part) with a Board member, or with a Board employee assigned to the 
proceeding, is not permitted.



Sec. 41.12  Citation of authority.

    (a) Citations to authority must include:

[[Page 409]]

    (1) For any United States Supreme Court decision, a United States 
Reports citation.
    (2) For any decision other than a United States Supreme Court 
decision, parallel citation to both the West Reporter System and to the 
United States Patents Quarterly whenever the case is published in both. 
Other parallel citations are discouraged.
    (3) Pinpoint citations whenever a specific holding or portion of an 
authority is invoked.
    (b) Non-binding authority should be used sparingly. If the authority 
is not an authority of the Office and is not reproduced in one of the 
reporters listed in paragraph (a) of this section, a copy of the 
authority should be filed with the first paper in which it is cited.

    Effective Date Note: At 73 FR 32973, June 10, 2008, Sec. 41.12 was 
revised, effective December 10, 2008. Per a subsequent final rule 
published at 73 FR 74972, Dec. 10, 2008, the effective date of this 
action was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:



Sec. 41.12  Citation of authority.

    (a) Authority. Citations to authority must include:
    (1) United States Supreme Court decision. A citation to a single 
source in the following order of priority: United States Reports, West's 
Supreme Court Reports, United States Patents Quarterly, Westlaw, or a 
slip opinion.
    (2) United States Court of Appeals decision. A citation to a single 
source in the following order of priority: West's Federal Reporter (F., 
F.2d or F.3d), West's Federal Appendix (Fed. Appx.), United States 
Patents Quarterly, Westlaw, or a slip opinion.
    (3) United States District Court decision. A citation to a single 
source in the following order of priority: West's Federal Supplement 
(F.Supp., F.Supp. 2d), United States Patents Quarterly, Westlaw, or a 
slip opinion.
    (4) Slip opinions. If a slip opinion is relied upon, a copy of the 
slip opinion must accompany the first paper in which an authority is 
cited.
    (5) Pinpoint citations. Use pinpoint citations whenever a specific 
holding or portion of an authority is invoked.
    (b) Non-binding authority. Non-binding authority may be cited. If 
non-binding authority is not an authority of the Office and is not 
reproduced in one of the reporters listed in paragraph (a) of this 
section, a copy of the authority shall be filed with the first paper in 
which it is cited.



Sec. 41.20  Fees.

    (a) Petition fee. The fee for filing a petition under this part is 
$400.00.
    (b) Appeal fees. (1) For filing a notice of appeal from the examiner 
to the Board:

By a small entity (Sec. 1.27(a) of this title)...........      $270.00
By other than a small entity...............................      $540.00
 

    (2) 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. 1.27(a) of this title)...........      $270.00
By other than a small entity...............................      $540.00
 

    (3) For filing a request for an oral hearing before the Board in an 
appeal under 35 U.S.C. 134:

By a small entity (Sec. 1.27(a)).........................      $540.00
By other than a small entity...............................    $1,080.00
 


[69 FR 50003, Aug. 12, 2004, as amended at 69 FR 52606, Aug. 27, 2004; 
69 FR 55506, Sept. 15, 2004; 69 FR 56546, Sept. 21, 2004; 70 FR 3892, 
Jan. 27, 2005; 72 FR 46903, Aug. 22, 2007; 73 FR 47542, Aug. 14, 2008]



                       Subpart B_Ex Parte Appeals



Sec. 41.30  Definitions.

    In addition to the definitions in Sec. 41.2, the following 
definitions apply to proceedings under this subpart unless otherwise 
clear from the context:
    Applicant means either the applicant in a national application for a 
patent or the applicant in an application for reissue of a patent.
    Owner means the owner of the patent undergoing ex parte 
reexamination under Sec. 1.510 of this title.
    Proceeding means either a national application for a patent, an 
application for reissue of a patent, or an ex parte reexamination 
proceeding. Appeal to the Board in an inter partes reexamination 
proceeding is controlled by subpart C of this part.

    Effective Date Note: At 73 FR 32973, June 10, 2008, Sec. 41.30 was 
amended by adding a definition for ``Record'', effective December 10, 
2008. Per a subsequent final rule published at 73 FR 74972, Dec. 10, 
2008, the effective date of this action was delayed indefinitely.

[[Page 410]]

    For the convenience of the user, the added text is set forth as 
follows:



Sec. 41.30  Definitions.

                                * * * * *

    Record means the official content of the file of an application or 
reexamination proceeding on appeal.



Sec. 41.31  Appeal to Board.

    (a) Who may appeal and how to file an appeal. (1) Every applicant, 
any of whose claims has been twice rejected, may appeal from the 
decision of the examiner to the Board by filing a notice of appeal 
accompanied by the fee set forth in Sec. 41.20(b)(1) within the time 
period provided under Sec. 1.134 of this title for reply.
    (2) Every owner of a patent under ex parte reexamination filed under 
Sec. 1.510 of this title before November 29, 1999, any of whose claims 
has been twice rejected, may appeal from the decision of the examiner to 
the Board by filing a notice of appeal accompanied by the fee set forth 
in Sec. 41.20(b)(1) within the time period provided under Sec. 1.134 
of this title for reply.
    (3) Every owner of a patent under ex parte reexamination filed under 
Sec. 1.510 of this title on or after November 29, 1999, any of whose 
claims has been finally (Sec. 1.113 of this title) rejected, may appeal 
from the decision of the examiner to the Board by filing a notice of 
appeal accompanied by the fee set forth in Sec. 41.20(b)(1) within the 
time period provided under Sec. 1.134 of this title for reply.
    (b) The signature requirement of Sec. 1.33 of this title 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 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 paragraphs (a)(1) through (a)(3) 
of this section are extendable under the provisions of Sec. 1.136 of 
this title for patent applications and Sec. 1.550(c) of this title for 
ex parte reexamination proceedings.

    Effective Date Note: At 73 FR 32973, June 10, 2008, Sec. 41.31 was 
revised, effective December 10, 2008. Per a subsequent final rule 
published at 73 FR 74972, Dec. 10, 2008, the effective date of this 
action was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:



Sec. 41.31  Appeal to Board.

    (a) Notice of appeal. An appeal is taken to the Board by filing a 
notice of appeal.
    (b) Fee. The notice of appeal shall be accompanied by the fee 
required by Sec. 41.20(b)(1).
    (c) Time for filing notice of appeal. A notice of appeal must be 
filed within the time period provided under Sec. 1.134 of this title.
    (d) Extensions of time to file notice of appeal. The time for filing 
a notice of appeal is extendable under the provisions of Sec. 1.136(a) 
of this title for applications and Sec. 1.550(c) of this title for ex 
parte reexamination proceedings.
    (e) Non-appealable issues. A non-appealable issue is an issue not 
subject to an appeal under 35 U.S.C. 134. An applicant or patent owner 
dissatisfied with a decision of an examiner on a non-appealable issue 
shall timely seek review by petition before jurisdiction over an appeal 
is transferred to the Board (see Sec. 41.35). Failure to timely file a 
petition seeking review of a decision of the examiner related to a non-
appealable issue may constitute a waiver to having that issue considered 
in the application or reexamination on appeal.



Sec. 41.33  Amendments and affidavits or other evidence after appeal.

    (a) Amendments filed after the date of filing an appeal pursuant to 
Sec. 41.31(a)(1) through (a)(3) and prior to the date a brief is filed 
pursuant to Sec. 41.37 may be admitted as provided in Sec. 1.116 of 
this title.
    (b) Amendments filed on or after the date of filing a brief pursuant 
to Sec. 41.37 may be admitted:
    (1) To cancel claims, where such cancellation does not affect the 
scope of any other pending claim in the proceeding, or
    (2) To rewrite dependent claims into independent form.
    (c) All other amendments filed after the date of filing an appeal 
pursuant to Sec. 41.31(a)(1) through (a)(3) will not be admitted except 
as permitted by Sec. Sec. 41.39(b)(1), 41.50(a)(2)(i), 41.50(b)(1) and 
41.50(c).
    (d)(1) An affidavit or other evidence filed after the date of filing 
an appeal pursuant to Sec. 41.31(a)(1) through (a)(3) and prior to the 
date of filing a brief

[[Page 411]]

pursuant to Sec. 41.37 may be admitted if the examiner determines that 
the affidavit or other evidence overcomes all rejections under appeal 
and that a showing of good and sufficient reasons why the affidavit or 
other evidence is necessary and was not earlier presented has been made.
    (2) All other affidavits or other evidence filed after the date of 
filing an appeal pursuant to Sec. 41.31(a)(1) through (a)(3) will not 
be admitted except as permitted by Sec. Sec. 41.39(b)(1), 
41.50(a)(2)(i) and 41.50(b)(1).

    Effective Date Note: At 73 FR 32973, June 10, 2008, Sec. 41.33 was 
revised, effective December 10, 2008. Per a subsequent final rule 
published at 73 FR 74972, Dec. 10, 2008, the effective date of this 
action was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:



Sec. 41.33  Amendments and evidence after appeal.

    (a) Amendment after notice of appeal and prior to appeal brief. An 
amendment filed after the date a notice of appeal is filed and prior to 
the date an appeal brief is filed may be admitted as provided in Sec. 
1.116 of this title.
    (b) Amendment with or after appeal brief. An amendment filed on or 
after the date an appeal brief is filed may be admitted:
    (1) To cancel claims. To cancel claims provided cancellation of 
claims does not affect the scope of any other pending claim in the 
application or reexamination proceeding on appeal, or
    (2) To convert dependent claim to independent claim. To rewrite 
dependent claims into independent form.
    (c) Other amendments. No other amendments filed after the date an 
appeal brief is filed will be admitted, except as permitted by 
Sec. Sec. 41.50(b)(1), 41.50(d)(1), or 41.50(e) of this subpart.
    (d) Evidence after notice of appeal and prior to appeal brief. 
Evidence filed after the date a notice of appeal is filed and prior to 
the date an appeal brief is filed may be admitted if:
    (1) The examiner determines that the evidence overcomes at least one 
rejection under appeal and does not necessitate any new ground of 
rejection, and
    (2) appellant shows good cause why the evidence was not earlier 
presented.
    (e) Other evidence. All other evidence filed after the date an 
appeal brief is filed will not be admitted, except as permitted by 
Sec. Sec. 41.50(b)(1) or 41.50(d)(1) of this subpart.



Sec. 41.35  Jurisdiction over appeal.

    (a) Jurisdiction over the proceeding passes to the Board upon 
transmittal of the file, including all briefs and examiner's answers, to 
the Board.
    (b) If, after receipt and review of the proceeding, the Board 
determines that the file is not complete or is not in compliance with 
the requirements of this subpart, the Board may relinquish jurisdiction 
to the examiner or take other appropriate action to permit completion of 
the file.
    (c) Prior to the entry of a decision on the appeal by the Board, the 
Director may sua sponte order the proceeding remanded to the examiner.

    Effective Date Note: At 73 FR 32973, June 10, 2008, Sec. 41.35 was 
revised, effective December 10, 2008. Per a subsequent final rule 
published at 73 FR 74972, Dec. 10, 2008, the effective date of this 
action was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:



Sec. 41.35  Jurisdiction over appeal.

    (a) Beginning of jurisdiction. The jurisdiction of the Board begins 
when a docket notice is mailed by the Board.
    (b) End of jurisdiction. The jurisdiction of the Board ends when:
    (1) The Board mails a remand order (see Sec. 41.50(b) or Sec. 
41.50(d)(1) of this subpart),
    (2) The Board mails a final decision (see Sec. 41.2 of this part) 
and judicial review is sought or the time for seeking judicial review 
has expired,
    (3) An express abandonment is filed which complies with Sec. 1.138 
of this title, or
    (4) A request for continued examination is filed which complies with 
Sec. 1.114 of this title.
    (c) Remand ordered by the Director. Prior to entry of a decision on 
the appeal by the Board (see Sec. 41.50), the Director may sua sponte 
order an application or reexamination proceeding on appeal to be 
remanded to the examiner.



Sec. 41.37  Appeal brief.

    (a)(1) Appellant must file a brief under this section within two 
months from the date of filing the notice of appeal under Sec. 41.31.
    (2) The brief must be accompanied by the fee set forth in Sec. 
41.20(b)(2).
    (b) On failure to file the brief, accompanied by the requisite fee, 
within the period specified in paragraph (a) of this section, the appeal 
will stand dismissed.

[[Page 412]]

    (c)(1) The brief shall contain the following items under appropriate 
headings and in the order indicated in paragraphs (c)(1)(i) through 
(c)(1)(x) of this section, except that a brief filed by an appellant who 
is not represented by a registered practitioner need only substantially 
comply with paragraphs (c)(1)(i) through (c)(1)(iv) and (c)(1)(vii) 
through (c)(1)(x) of this section:
    (i) Real party in interest. A statement identifying by name the real 
party in interest.
    (ii) Related appeals and interferences. A statement identifying by 
application, patent, appeal or interference number all other prior and 
pending appeals, interferences or judicial proceedings known to 
appellant, the appellant's legal representative, or assignee which may 
be related to, directly affect or be directly affected by or have a 
bearing on the Board's decision in the pending appeal. Copies of any 
decisions rendered by a court or the Board in any proceeding identified 
under this paragraph must be included in an appendix as required by 
paragraph (c)(1)(x) of this section.
    (iii) Status of claims. A statement of the status of all the claims 
in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, 
objected to, canceled) and an identification of those claims that are 
being appealed.
    (iv) Status of amendments. A statement of the status of any 
amendment filed subsequent to final rejection.
    (v) Summary of claimed subject matter. A concise explanation of the 
subject matter defined in each of the independent claims involved in the 
appeal, which shall refer to the specification by page and line number, 
and to the drawing, if any, by reference characters. For each 
independent claim involved in the appeal and for each dependent claim 
argued separately under the provisions of paragraph (c)(1)(vii) of this 
section, every means plus function and step plus function as permitted 
by 35 U.S.C. 112, sixth paragraph, must be identified and the structure, 
material, or acts described in the specification as corresponding to 
each claimed function must be set forth with reference to the 
specification by page and line number, and to the drawing, if any, by 
reference characters.
    (vi) Grounds of rejection to be reviewed on appeal. A concise 
statement of each ground of rejection presented for review.
    (vii) Argument. The contentions of appellant with respect to each 
ground of rejection presented for review in paragraph (c)(1)(vi) of this 
section, and the basis therefor, with citations of the statutes, 
regulations, authorities, and parts of the record relied on. Any 
arguments or authorities not included in the brief or a reply brief 
filed pursuant to Sec. 41.41 will be refused consideration by the 
Board, unless good cause is shown. Each ground of rejection must be 
treated under a separate heading. For each ground of rejection applying 
to two or more claims, the claims may be argued separately or as a 
group. When multiple claims subject to the same ground of rejection are 
argued as a group by appellant, the Board may select a single claim from 
the group of claims that are argued together to decide the appeal with 
respect to the group of claims as to the ground of rejection on the 
basis of the selected claim alone. Notwithstanding any other provision 
of this paragraph, the failure of appellant to separately argue claims 
which appellant has grouped together shall constitute a waiver of any 
argument that the Board must consider the patentability of any grouped 
claim separately. Any claim argued separately should be placed under a 
subheading identifying the claim by number. Claims argued as a group 
should be placed under a subheading identifying the claims by number. A 
statement which merely points out what a claim recites will not be 
considered an argument for separate patentability of the claim.
    (viii) Claims appendix. An appendix containing a copy of the claims 
involved in the appeal.
    (ix) Evidence appendix. An appendix containing copies of any 
evidence submitted pursuant to Sec. Sec. 1.130, 1.131, or 1.132 of this 
title or of any other evidence entered by the examiner and relied upon 
by appellant in the appeal, along with a statement setting forth where 
in the record that evidence was entered in the record by the examiner.

[[Page 413]]

Reference to unentered evidence is not permitted in the brief. See Sec. 
41.33 for treatment of evidence submitted after appeal. This appendix 
may also include copies of the evidence relied upon by the examiner as 
to grounds of rejection to be reviewed on appeal.
    (x) Related proceedings appendix. An appendix containing copies of 
decisions rendered by a court or the Board in any proceeding identified 
pursuant to paragraph (c)(1)(ii) of this section.
    (2) A brief shall not include any new or non-admitted amendment, or 
any new or non-admitted affidavit or other evidence. See Sec. 1.116 of 
this title for amendments, affidavits or other evidence filed after 
final action but before or on the same date of filing an appeal and 
Sec. 41.33 for amendments, affidavits or other evidence filed after the 
date of filing 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 given a time period 
within which to file an amended brief. If appellant does not file an 
amended brief within the set time 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.
    (e) The time periods set forth in this section are extendable under 
the provisions of Sec. 1.136 of this title for patent applications and 
Sec. 1.550(c) of this title for ex parte reexamination proceedings.

    Effective Date Note: At 73 FR 32974, June 10, 2008, Sec. 41.37 was 
revised, effective December 10, 2008. Per a subsequent final rule 
published at 73 FR 74972, Dec. 10, 2008, the effective date of this 
action was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:



Sec. 41.37  Appeal brief.

    (a) Requirement for appeal brief. An appeal brief shall be timely 
filed to perfect an appeal. Upon failure to file an appeal brief, the 
proceedings on the appeal are terminated without further action on the 
part of the Office.
    (b) Fee. The appeal brief shall be accompanied by the fee required 
by Sec. 41.20(b)(2) of this subpart.
    (c) Time for filing appeal brief. Appellant must file an appeal 
brief within two months from the date of the filing of the notice of 
appeal (see Sec. 41.31(a)).
    (d) Extension of time to file appeal brief. The time for filing an 
appeal brief is extendable under the provisions of Sec. 1.136(a) of 
this title for applications and Sec. 1.550(c) of this title for ex 
parte reexamination proceedings.
    (e) Content of appeal brief. The appeal brief must contain, under 
appropriate headings and in the order indicated, the following items:
    (1) Statement of the real party in interest (see paragraph (f) of 
this section).
    (2) Statement of related cases (see paragraph (g) of this section).
    (3) Jurisdictional statement (see paragraph (h) of this section).
    (4) Table of contents (see paragraph (i) of this section).
    (5) Table of authorities (see paragraph (j) of this section).
    (6) [Reserved]
    (7) Status of amendments (see paragraph (l) of this section).
    (8) Grounds of rejection to be reviewed (see paragraph (m) of this 
section).
    (9) Statement of facts (see paragraph (n) of this section).
    (10) Argument (see paragraph (o) of this section).
    (11) An appendix containing a claims section (see paragraph (p) of 
this section), a claim support and drawing analysis section (see 
paragraph (r) of this section), a means or step plus function analysis 
section (see paragraph (s) of this section), an evidence section (see 
paragraph (t) of this section), and a related cases section (see 
paragraph (u) of this section).
    (f) Statement of real party in interest. The ``statement of the real 
party in interest'' shall identify the name of the real party in 
interest. The real party in interest must be identified in such a manner 
as to readily permit a member of the Board to determine whether recusal 
would be appropriate. Appellant is under a continuing obligation to 
update this item during the pendency of the appeal. If an appeal brief 
does not contain a statement of real party in interest, the Office will 
assume that the named inventors are the real party in interest.
    (g) Statement of related cases. The ``statement of related cases'' 
shall identify, by application, patent, appeal, interference, or court 
docket number, all prior or pending appeals, interferences or judicial 
proceedings, known to any inventors, any attorneys or agents who 
prepared or prosecuted the application on appeal and any other person 
who was substantively involved in the preparation or prosecution of the 
application on appeal, and that are related to, directly affect, or 
would be directly affected by, or have a bearing on the Board's decision 
in the appeal. A related case includes any continuing application of the 
application on appeal. A

[[Page 414]]

copy of any final or significant interlocutory decision rendered by the 
Board or a court in any proceeding identified under this paragraph shall 
be included in the related cases section (see paragraph (u) of this 
section) in the appendix. Appellant is under a continuing obligation to 
update this item during the pendency of the appeal. If an appeal brief 
does not contain a statement of related cases, the Office will assume 
that there are no related cases.
    (h) Jurisdictional statement. The ``jurisdictional statement'' shall 
establish the jurisdiction of the Board to consider the appeal. The 
jurisdictional statement shall include a statement of the statute under 
which the appeal is taken, the date of the Office action setting out the 
rejection on appeal from which the appeal is taken, the date the notice 
of appeal was filed, and the date the appeal brief is being filed. If a 
notice of appeal or an appeal brief is filed after the time specified in 
this subpart, appellant must also indicate the date an extension of time 
was requested and, if known, the date the request was granted.
    (i) Table of contents. A ``table of contents'' shall list, along 
with a reference to the page where each item begins, the items required 
to be listed in the appeal brief (see paragraph (e) of this section) or 
reply brief (see Sec. 41.41(d) of this subpart), as appropriate.
    (j) Table of authorities. A ``table of authorities'' shall list 
cases (alphabetically arranged), statutes and other authorities along 
with a reference to the pages where each authority is cited in the 
appeal brief or reply brief, as appropriate.
    (k) [Reserved]
    (l) Status of amendments. The ``status of amendments'' shall 
indicate the status of all amendments filed after final rejection (e.g., 
whether entered or not entered).
    (m) Grounds of rejection to be reviewed. The ``grounds of rejection 
to be reviewed'' shall set out the grounds of rejection to be reviewed, 
including the statute applied, the claims subject to each rejection and 
references relied upon by the examiner.
    (n) Statement of facts. The ``statement of facts'' shall set out in 
an objective and non-argumentative manner the material facts relevant to 
the rejections on appeal. A fact shall be supported by a reference to a 
specific page number of a document in the Record and, where applicable, 
a specific line or paragraph, and drawing numerals. A general reference 
to a document as a whole or to large portions of a document does not 
comply with the requirements of this paragraph.
    (o) Argument. The ``argument'' shall explain why the examiner erred 
as to each ground of rejection to be reviewed. Any explanation must 
address all points made by the examiner with which the appellant 
disagrees. Any finding made or conclusion reached by the examiner that 
is not challenged will be presumed to be correct. For each argument an 
explanation must identify where the argument was made in the first 
instance to the examiner or state that the argument has not previously 
been made to the examiner. Each ground of rejection shall be separately 
argued under a separate heading.
    (1) Claims standing or falling together. For each ground of 
rejection applicable to two or more claims, the claims may be argued 
separately (claims are considered by appellants as separately 
patentable) or as a group (claims stand or fall together). When two or 
more claims subject to the same ground of rejection are argued as a 
group, the Board may select a single claim from the group of claims that 
are argued together to decide the appeal on the basis of the selected 
claim alone with respect to the group of claims as to the ground of 
rejection. Any doubt as to whether claims have been argued separately or 
as a group as to a ground of rejection will be resolved against 
appellant and the claims will be deemed to have been argued as a group. 
Any claim argued separately as to a ground of rejection shall be placed 
under a subheading identifying the claim by number. A statement that 
merely points out what a claim recites will not be considered an 
argument for separate patentability of the claim.
    (2) Arguments considered. Only those arguments which are presented 
in the argument section of the appeal brief and that address claims set 
out in the claim support and drawing analysis section in the appendix 
will be considered. Appellant waives all other arguments in the appeal.
    (3) Format of argument. Unless a response is purely legal in nature, 
when responding to a point made in the examiner's rejection, the appeal 
brief shall specifically identify the point made by the examiner and 
indicate where appellant previously responded to the point or state that 
appellant has not previously responded to the point. In identifying any 
point made by the examiner, the appellant shall refer to a page and, 
where appropriate, a line or paragraph, of a document in the Record.
    (p) Claims section. The ``claims section'' in the appendix shall 
consist of an accurate clean copy in numerical order of all claims 
pending in the application or reexamination proceeding on appeal. The 
status of every claim shall be set out after the claim number and in 
parentheses (e.g., 1 (rejected), 2 (withdrawn), 3 (objected to), 4 
(cancelled), and 5 (allowed)). A cancelled claim need not be reproduced.
    (q) [Reserved]
    (r) Claim support and drawing analysis section. For each independent 
claim involved in the appeal and each dependent claim argued separately 
(see paragraph (o)(1) of this section), the claim support and drawing 
analysis section in the appendix shall consist of

[[Page 415]]

an annotated copy of the claim (and, if necessary, any claim from which 
the claim argued separately depends) indicating in boldface between 
braces ({ {time} ) the page and line or paragraph after each limitation 
where the limitation is described in the specification as filed. If 
there is a drawing or amino acid or nucleotide material sequence, and at 
least one limitation is illustrated in a drawing or amino acid or 
nucleotide material sequence, the ``claims support and drawing analysis 
section'' in the appendix shall also contain in boldface between the 
same braces ({ {time} ) where each limitation is shown in the drawings 
or sequence.
    (s) Means or step plus function analysis section. For each 
independent claim involved in the appeal and each dependent claim argued 
separately (see paragraph (o)(1) of this section) having a limitation 
that appellant regards as a means or step plus function limitation in 
the form permitted by the sixth paragraph of 35 U.S.C. 112, for each 
such limitation, the ``means or step plus function analysis section'' in 
the appendix shall consist of an annotated copy of the claim (and, if 
necessary, any claim from which the claim argued separately depends) 
indicating in boldface between braces ({ {time} ) the page and line of 
the specification and the drawing figure and element numeral that 
describes the structure, material or acts corresponding to each claimed 
function.
    (t) Evidence section. The ``evidence section'' shall contain only 
papers which have been entered by the examiner. The evidence section 
shall include:
    (1) Contents. A table of contents.
    (2)-(4) [Reserved]
    (5) Affidavits and declarations. Affidavits and declarations, if 
any, and attachments to declarations, before the examiner and which are 
relied upon by appellant in the appeal. An affidavit or declaration 
otherwise mentioned in the appeal brief which does not appear in the 
evidence section will not be considered.
    (6) Other evidence filed prior to the notice of appeal. Other 
evidence, if any, before the examiner and filed prior to the date of the 
notice of appeal and relied upon by appellant in the appeal. Other 
evidence filed before the notice of appeal that is otherwise mentioned 
in the appeal brief and which does not appear in the evidence section 
will not be considered.
    (7) Other evidence filed after the notice of appeal. Other evidence 
relied upon by the appellant in the appeal and admitted into the file 
pursuant to Sec. 41.33(d) of this subpart. Other evidence filed after 
the notice of appeal that is otherwise mentioned in the appeal brief and 
which does not appear in the evidence section will not be considered.
    (u) Related cases section. The ``related cases section'' shall 
consist of copies of orders and opinions required to be cited pursuant 
to paragraph (g) of this section.
    (v) Appeal brief format requirements. An appeal brief shall comply 
with Sec. 1.52 of this title and the following additional requirements:
    (1) Page and line numbering. The pages of the appeal brief, 
including all sections in the appendix, shall be consecutively numbered 
using Arabic numerals beginning with the first page of the appeal brief, 
which shall be numbered page 1. If the appellant chooses to number the 
lines, line numbering may be within the left margin.
    (2) Double spacing. Double spacing shall be used except in headings, 
tables of contents, tables of authorities, signature blocks, and 
certificates of service. Block quotations must be indented and can be 
one and one half or double spaced.
    (3) [Reserved]
    (4) Font. The font size shall be 14 point, including the font for 
block quotations and footnotes.
    (5) Length of appeal brief. An appeal brief may not exceed 30 pages, 
excluding any statement of the real party in interest, statement of 
related cases, jurisdictional statement, table of contents, table of 
authorities, status of amendments, signature block, and appendix. An 
appeal brief may not incorporate another paper by reference. A request 
to exceed the page limit shall be made by petition under Sec. 41.3 
filed at least ten calendar days prior to the date the appeal brief is 
due.
    (6) Signature block. The signature block must identify the appellant 
or appellant's representative, as appropriate, and a registration 
number, a correspondence address, a telephone number, a fax number and 
an e-mail address.



Sec. 41.39  Examiner's answer.

    (a)(1) The primary examiner may, within such time as may be directed 
by the Director, furnish a written answer to the appeal brief including 
such explanation of the invention claimed and of the references relied 
upon and grounds of rejection as may be necessary, supplying a copy to 
appellant. If the primary examiner determines that the appeal does not 
comply with the provisions of Sec. Sec. 41.31 and 41.37 or does not 
relate to an appealable action, the primary examiner shall make such 
determination of record.
    (2) An examiner's answer may include a new ground of rejection.
    (b) If an examiner's answer contains a rejection designated as a new 
ground of rejection, appellant must within two months from the date of 
the examiner's answer exercise one of the following

[[Page 416]]

two options to avoid sua sponte dismissal of the appeal as to the claims 
subject to the new ground of rejection:
    (1) Reopen prosecution. Request that prosecution be reopened before 
the primary examiner by filing a reply under Sec. 1.111 of this title 
with or without amendment or submission of affidavits (Sec. Sec. 1.130, 
1.131 or 1.132 of this title) or other evidence. Any amendment or 
submission of affidavits or other evidence must be relevant to the new 
ground of rejection. A request that complies with this paragraph will be 
entered and the application or the patent under ex parte reexamination 
will be reconsidered by the examiner under the provisions of Sec. 1.112 
of this title. Any request that prosecution be reopened under this 
paragraph will be treated as a request to withdraw the appeal.
    (2) Maintain appeal. Request that the appeal be maintained by filing 
a reply brief as set forth in Sec. 41.41. Such a reply brief must 
address each new ground of rejection as set forth in Sec. 
41.37(c)(1)(vii) and should follow the other requirements of a brief as 
set forth in Sec. 41.37(c). A reply brief may not be accompanied by any 
amendment, affidavit (Sec. Sec. 1.130, 1.131 or 1.132 of this title) or 
other evidence. If a reply brief filed pursuant to this section is 
accompanied by any amendment, affidavit or other evidence, it shall be 
treated as a request that prosecution be reopened before the primary 
examiner under paragraph (b)(1) of this section.
    (c) Extensions of time under Sec. 1.136(a) of this title for patent 
applications are not applicable to the time period set forth in this 
section. See Sec. 1.136(b) of this title for extensions of time to 
reply for patent applications and Sec. 1.550(c) of this title for 
extensions of time to reply for ex parte reexamination proceedings.

    Effective Date Note: At 73 FR 32975, June 10, 2008, Sec. 41.39 was 
revised, effective December 10, 2008. Per a subsequent final rule 
published at 73 FR 74972, Dec. 10, 2008, the effective date of this 
action was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:



Sec. 41.39  Examiner's answer.

    (a) Answer. If the examiner determines that the appeal should go 
forward, then within such time and manner as may be established by the 
Director the examiner shall enter an examiner's answer responding to the 
appeal brief.
    (b) No new ground of rejection. An examiner's answer shall not 
include a new ground of rejection.



Sec. 41.41  Reply brief.

    (a)(1) Appellant may file a reply brief to an examiner's answer 
within two months from the date of the examiner's answer.
    (2) A reply brief shall not include any new or non-admitted 
amendment, or any new or non-admitted affidavit or other evidence. See 
Sec. 1.116 of this title for amendments, affidavits or other evidence 
filed after final action but before or on the same date of filing an 
appeal and Sec. 41.33 for amendments, affidavits or other evidence 
filed after the date of filing the appeal.
    (b) A reply brief that is not in compliance with paragraph (a) of 
this section will not be considered. Appellant will be notified if a 
reply brief is not in compliance with paragraph (a) of this section.
    (c) Extensions of time under Sec. 1.136(a) of this title for patent 
applications are not applicable to the time period set forth in this 
section. See Sec. 1.136(b) of this title for extensions of time to 
reply for patent applications and Sec. 1.550(c) of this title for 
extensions of time to reply for ex parte reexamination proceedings.

    Effective Date Note: At 73 FR 32975, June 10, 2008, Sec. 41.41 was 
revised, effective December 10, 2008. Per a subsequent final rule 
published at 73 FR 74972, Dec. 10, 2008, the effective date of this rule 
was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:



Sec. 41.41  Reply brief.

    (a) Reply brief authorized. An appellant may file a single reply 
brief responding to the points made in the examiner's answer.
    (b) Time for filing reply brief. If the appellant elects to file a 
reply brief, the reply brief must be filed within two months of the date 
of the mailing of the examiner's answer.
    (c) Extension of time to file reply brief. A request for an 
extension of time to file a reply brief shall be presented as a petition 
under Sec. 41.3 of this part.
    (d) Content of reply brief. Except as otherwise set out in this 
section, the form and content of a reply brief are governed by the

[[Page 417]]

requirements for an appeal brief as set out in Sec. 41.37 of this 
subpart. A reply brief may not exceed 20 pages, excluding any table of 
contents, table of authorities, and signature block, required by this 
section. A request to exceed the page limit shall be made by petition 
under Sec. 41.3 of this part and filed at least ten calendar days 
before the reply brief is due. A reply brief must contain, under 
appropriate headings and in the order indicated, the following items:
    (1) Table of contents--see Sec. 41.37(i) of this subpart.
    (2) Table of authorities--see Sec. 41.37(j) of this subpart.
    (3) [Reserved]
    (4) Statement of additional facts--see paragraph (f) of this 
section.
    (5) Argument--see paragraph (g) of this section.
    (e) [Reserved]
    (f) Statement of additional facts. The ``statement of additional 
facts'' shall consist of a statement of the additional facts that 
appellant believes are necessary to address the points raised in the 
examiner's answer and, as to each fact, must identify the point raised 
in the examiner's answer to which the fact relates.
    (g) Argument. Any arguments raised in the reply brief which are not 
responsive to points made in the examiner's answer will not be 
considered and will be treated as waived.
    (h) [Reserved]
    (i) No amendment or new evidence. No amendment or new evidence may 
accompany a reply brief.



Sec. 41.43  Examiner's response to reply brief.

    (a)(1) After receipt of a reply brief in compliance with Sec. 
41.41, the primary examiner must acknowledge receipt and entry of the 
reply brief. In addition, the primary examiner may withdraw the final 
rejection and reopen prosecution or may furnish a supplemental 
examiner's answer responding to any new issue raised in the reply brief.
    (2) A supplemental examiner's answer responding to a reply brief may 
not include a new ground of rejection.
    (b) If a supplemental examiner's answer is furnished by the 
examiner, appellant may file another reply brief under Sec. 41.41 to 
any supplemental examiner's answer within two months from the date of 
the supplemental examiner's answer.
    (c) Extensions of time under Sec. 1.136(a) of this title for patent 
applications are not applicable to the time period set forth in this 
section. See Sec. 1.136(b) of this title for extensions of time to 
reply for patent applications and Sec. 1.550(c) of this title for 
extensions of time to reply for ex parte reexamination proceedings.

    Effective Date Note: At 73 FR 32976, June 10, 2008, Sec. 41.43 was 
removed, effective December 10, 2008. Per a subsequent final rule 
published at 73 FR 74972, Dec. 10, 2008, the effective date of this 
action was delayed indefinitely.



Sec. 41.47  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 on the briefs 
without an oral hearing will receive the same consideration by the Board 
as appeals decided after an oral hearing.
    (b) If appellant desires an oral hearing, appellant must file, as a 
separate paper captioned ``REQUEST FOR ORAL HEARING,'' a written request 
for such hearing accompanied by the fee set forth in Sec. 41.20(b)(3) 
within two months from the date of the examiner's answer or supplemental 
examiner's answer.
    (c) If no request and fee for oral hearing have been timely filed by 
appellant as required by paragraph (b) of this section, the appeal will 
be assigned for consideration and decision on the briefs without an oral 
hearing.
    (d) If appellant has complied with all the requirements of paragraph 
(b) of this section, a date for the oral hearing will be set, and due 
notice thereof given to appellant. If an oral hearing is held, 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. A 
hearing will be held as stated in the notice, and oral argument will 
ordinarily be limited to twenty minutes for appellant and fifteen 
minutes for the primary examiner unless otherwise ordered.
    (e)(1) Appellant will argue first and may reserve time for rebuttal. 
At the oral hearing, appellant may only rely on evidence that has been 
previously entered and considered by the primary examiner and present 
argument that has been relied upon in the brief or

[[Page 418]]

reply brief except as permitted by paragraph (e)(2) of this section. The 
primary examiner may only rely on argument and evidence relied upon in 
an answer or a supplemental answer except as permitted by paragraph 
(e)(2) of this section.
    (2) Upon a showing of good cause, appellant and/or the primary 
examiner may rely on a new argument based upon a recent relevant 
decision of either the Board or a Federal Court.
    (f) Notwithstanding the submission of a request for oral hearing 
complying with this rule, if the Board decides that a hearing is not 
necessary, the Board will so notify appellant.
    (g) Extensions of time under Sec. 1.136(a) of this title for patent 
applications are not applicable to the time periods set forth in this 
section. See Sec. 1.136(b) of this title for extensions of time to 
reply for patent applications and Sec. 1.550(c) of this title for 
extensions of time to reply for ex parte reexamination proceedings.

    Effective Date Note: At 73 FR 32976, June 10, 2008, Sec. 41.47 was 
revised, effective December 10, 2008. Per a subsequent final rule 
published at 73 FR 74972, Dec. 10, 2008, the effective date of this rule 
was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:



Sec. 41.47  Oral hearing.

    (a) Request for oral hearing. If appellant desires an oral hearing, 
appellant must file, as a separate paper, a written request captioned:
    ``REQUEST FOR ORAL HEARING''.
    (b) Fee. A request for oral hearing shall be accompanied by the fee 
required by Sec. 41.20(b)(3) of this part.
    (c) Time for filing request for oral hearing. Appellant must file a 
request for oral hearing within two months from the date of the 
examiner's answer.
    (d) Extension of time to file request for oral hearing. A request 
for an extension of time shall be presented as a petition under Sec. 
41.3 of this part.
    (e) Date for oral hearing. If an oral hearing is properly requested, 
the Board shall set a date for the oral hearing.
    (f) Confirmation of oral hearing. Within such time as may be ordered 
by the Board, appellant shall confirm attendance at the oral hearing. 
Failure to timely confirm attendance will be taken as a waiver of any 
request for an oral hearing.
    (g) List of terms. At the time appellant confirms attendance at the 
oral hearing, appellant shall supply a list of technical terms and other 
unusual words which can be provided to any individual transcribing an 
oral hearing.
    (h) Length of argument. Unless otherwise ordered by the Board, 
argument on behalf of appellant shall be limited to 20 minutes.
    (i) Oral hearing limited to Record. At oral hearing only the Record 
will be considered. No additional evidence may be offered to the Board 
in support of the appeal. Any argument not presented in a brief cannot 
be raised at an oral hearing.
    (j) Recent legal development. Notwithstanding paragraph (i) of this 
section, an appellant or the examiner may rely on and call the Board's 
attention to a recent court or Board opinion which could have an effect 
on the manner in which the appeal is decided.
    (k) Visual aids. Visual aids may be used at an oral hearing, but 
must be limited to documents or artifacts in the Record or a model or an 
exhibit presented for demonstration purposes during an interview with 
the examiner. At the oral hearing, appellant shall provide one copy of 
each visual aid (photograph in the case of an artifact, a model or an 
exhibit) for each judge and one copy to be added to the Record.
    (l) Failure to attend oral hearing. Failure of an appellant to 
attend an oral hearing will be treated as a waiver of oral hearing.



Sec. 41.50  Decisions and other actions by the Board.

    (a)(1) The Board, 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. 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. The Board may also remand an application to the 
examiner.
    (2) If a supplemental examiner's answer is written in response to a 
remand by the Board for further consideration of a rejection pursuant to 
paragraph (a)(1) of this section, the appellant must within two months 
from the date of the supplemental examiner's answer exercise one of the 
following two options to avoid sua sponte dismissal of the appeal as to 
the claims subject to the rejection for which the Board has remanded the 
proceeding:
    (i) Reopen prosecution. Request that prosecution be reopened before 
the examiner by filing a reply under Sec. 1.111 of this title with or 
without amendment

[[Page 419]]

or submission of affidavits (Sec. Sec. 1.130, 1.131 or 1.132 of this 
title) or other evidence. Any amendment or submission of affidavits or 
other evidence must be relevant to the issues set forth in the remand or 
raised in the supplemental examiner's answer. A request that complies 
with this paragraph will be entered and the application or the patent 
under ex parte reexamination will be reconsidered by the examiner under 
the provisions of Sec. 1.112 of this title. Any request that 
prosecution be reopened under this paragraph will be treated as a 
request to withdraw the appeal.
    (ii) Maintain appeal. Request that the appeal be maintained by 
filing a reply brief as provided in Sec. 41.41. If such a reply brief 
is accompanied by any amendment, affidavit or other evidence, it shall 
be treated as a request that prosecution be reopened before the examiner 
under paragraph (a)(2)(i) of this section.
    (b) Should the Board have knowledge of any grounds not involved in 
the appeal for rejecting any pending claim, it may include in its 
opinion 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 pursuant to this paragraph shall not be 
considered final for judicial review. When the Board 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 the appeal as to the 
rejected claims:
    (1) Reopen prosecution. Submit an appropriate amendment of the 
claims so rejected or new evidence relating to the claims so rejected, 
or both, and have the matter reconsidered by the examiner, in which 
event the proceeding will be remanded to the examiner. The new ground of 
rejection is binding upon the examiner unless an amendment or new 
evidence not previously of record is 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 to the 
Board pursuant to this subpart.
    (2) Request rehearing. Request that the proceeding be reheard under 
Sec. 41.52 by the Board upon the same record. The request for rehearing 
must address any new ground of rejection and state with particularity 
the points believed to have been misapprehended or overlooked in 
entering the new ground of rejection and also state all other grounds 
upon which rehearing is sought.
    (c) The opinion of the Board may include an explicit statement of 
how a claim on appeal may be amended to overcome a specific rejection. 
When the opinion of the Board includes such a statement, appellant has 
the right to amend in conformity therewith. An amendment in conformity 
with such statement will overcome the specific rejection. An examiner 
may reject a claim so-amended, provided that the rejection constitutes a 
new ground of rejection.
    (d) The Board may order appellant to additionally brief any matter 
that the Board considers to be of assistance in reaching a reasoned 
decision on the pending appeal. Appellant will be given a non-extendable 
time period within which to respond to such an order. Failure to timely 
comply with the order may result in the sua sponte dismissal of the 
appeal.
    (e) Whenever a decision of the Board includes a remand, that 
decision shall not be considered final for judicial review. When 
appropriate, upon conclusion of proceedings on remand before the 
examiner, the Board may enter an order otherwise making its decision 
final for judicial review.
    (f) Extensions of time under Sec. 1.136(a) of this title for patent 
applications are not applicable to the time periods set forth in this 
section. See Sec. 1.136(b) of this title for extensions of time to 
reply for patent applications and Sec. 1.550(c) of this title for 
extensions of time to reply for ex parte reexamination proceedings.

    Effective Date Note: At 73 FR 32976, June 10, 2008, Sec. 41.50 was 
revised, effective December 10, 2008. Per a subsequent final rule 
published at 73 FR 74972, Dec. 10, 2008, the effective date of this rule 
was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:

[[Page 420]]



Sec. 41.50  Decisions and other actions by the Board.

    (a) Affirmance and reversal. The Board may affirm or reverse an 
examiner's rejection in whole or in part. Affirmance of a rejection of a 
claim constitutes a general affirmance of the decision of the examiner 
on that claim, except as to any rejection specifically reversed.
    (b) Remand. The Board may remand an application to the examiner. If 
in response to a remand for further consideration of a rejection, the 
examiner enters an examiner's answer, within two months the appellant 
shall exercise one of the following two options to avoid abandonment of 
the application or termination of a reexamination proceeding:
    (1) Request to reopen prosecution. Request that prosecution be 
reopened before the examiner by filing a reply under Sec. 1.111 of this 
title with or without amendment or submission of evidence. Any amendment 
or evidence must be responsive to the remand or issues discussed in the 
examiner's answer. A request that complies with this paragraph will be 
entered and the application or patent under reexamination will be 
reconsidered by the examiner under the provisions of Sec. 1.112 of this 
title. A request under this paragraph will be treated as a request to 
dismiss the appeal.
    (2) Request to re-docket the appeal. The appellant may request that 
the Board re-docket the appeal (see Sec. 41.35(a) of this subpart) and 
file a reply brief as set forth in Sec. 41.41 of this subpart. A reply 
brief may not be accompanied by any amendment or evidence. A reply brief 
which is accompanied by an amendment or evidence will be treated as a 
request to reopen prosecution pursuant to paragraph (b)(1) of this 
section.
    (c) Remand not final action. Whenever a decision of the Board 
includes a remand, the decision shall not be considered a final decision 
of the Board. When appropriate, upon conclusion of proceedings on remand 
before the examiner, the Board may enter an order making its decision 
final.
    (d) New ground of rejection. Should the Board have a basis not 
involved in the appeal for rejecting any pending claim, it may enter a 
new ground of rejection. A new ground of rejection shall be considered 
an interlocutory order and shall not be considered a final decision. If 
the Board enters a new ground of rejection, within two months appellant 
must exercise one of the following two options with respect to the new 
ground of rejection to avoid dismissal of the appeal as to any claim 
subject to the new ground of rejection:
    (1) Reopen prosecution. Submit an amendment of the claims subject to 
a new ground of rejection or new evidence relating to the new ground of 
rejection or both, and request that the matter be reconsidered by the 
examiner. The application or reexamination proceeding on appeal will be 
remanded to the examiner. A new ground of rejection by the Board is 
binding on the examiner unless, in the opinion of the examiner, the 
amendment or new evidence overcomes the new ground of rejection. In the 
event the examiner maintains the new ground of rejection, appellant may 
again appeal to the Board.
    (2) Request for rehearing. Submit a request for rehearing pursuant 
to Sec. 41.52 of this subpart relying on the Record.
    (e) Recommendation. In its opinion in support of its decision, the 
Board may include a recommendation, explicitly designated as such, of 
how a claim on appeal may be amended to overcome a specific rejection. 
When the Board makes a recommendation, appellant may file an amendment 
or take other action consistent with the recommendation. An amendment or 
other action, otherwise complying with statutory patentability 
requirements, will overcome the specific rejection. An examiner, 
however, upon return of the application or reexamination proceeding to 
the jurisdiction of the examiner, may enter a new ground of rejection of 
a claim amended in conformity with a recommendation, when appropriate.
    (f) Request for briefing and information. The Board may enter an 
order requiring appellant to brief matters or supply information or both 
that the Board believes would assist in deciding the appeal. Appellant 
will be given a non-extendable time period within which to respond to 
the order. Failure of appellant to timely respond to the order may 
result in dismissal of the appeal in whole or in part.
    (g) Extension of time to take action. A request for an extension of 
time to respond to a request for briefing and information under 
paragraph (f) of this section is not authorized. A request for an 
extension of time to respond to Board action under paragraphs (b) and 
(d) of this section shall be presented as a petition under Sec. 41.3 of 
this part.



Sec. 41.52  Rehearing.

    (a)(1) Appellant may file a single request for rehearing within two 
months of the date of the original decision of the Board. No request for 
rehearing from a decision on rehearing will be permitted, unless the 
rehearing decision so modified the original decision as to become, in 
effect, a new decision, and the Board states that a second request for 
rehearing would be permitted. The request for rehearing must state with 
particularity the points believed to have been misapprehended or 
overlooked by the Board. Arguments not raised in the briefs before the 
Board and evidence not previously relied upon in the brief and any reply 
brief(s) are

[[Page 421]]

not permitted in the request for rehearing except as permitted by 
paragraphs (a)(2) and (a)(3) of this section. When a request for 
rehearing is made, the Board shall render a decision on the request for 
rehearing. The decision on the request for rehearing is deemed to 
incorporate the earlier opinion reflecting its decision for 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 on rehearing.
    (2) Upon a showing of good cause, appellant may present a new 
argument based upon a recent relevant decision of either the Board or a 
Federal Court.
    (3) New arguments responding to a new ground of rejection made 
pursuant to Sec. 41.50(b) are permitted.
    (b) Extensions of time under Sec. 1.136(a) of this title for patent 
applications are not applicable to the time period set forth in this 
section. See Sec. 1.136(b) of this title for extensions of time to 
reply for patent applications and Sec. 1.550(c) of this title for 
extensions of time to reply for ex parte reexamination proceedings.

    Effective Date Note: At 73 FR 32977, June 10, 2008, Sec. 41.52 was 
revised, effective December 10, 2008. Per a subsequent final rule 
published at 73 FR 74972, Dec. 10, 2008, the effective date of this rule 
was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:



Sec. 41.52  Rehearing.

    (a) Request for rehearing authorized. An appellant may file a single 
request for rehearing.
    (b) Time for filing request for rehearing. Any request for rehearing 
must be filed within two months from the date of the decision mailed by 
the Board.
    (c) Extension of time to file request for rehearing. A request for 
an extension of time shall be presented as a petition under Sec. 41.3 
of this part.
    (d) Content of request for rehearing. The form of a request for 
rehearing is governed by the requirements of Sec. 41.37(v) of this 
subpart, except that a request for rehearing may not exceed 10 pages, 
excluding any table of contents, table of authorities, and signature 
block. A request to exceed the page limit shall be made by petition 
under Sec. 41.3 at least ten calendar days before the request for 
rehearing is due. A request for rehearing must contain, under 
appropriate headings and in the order indicated, the following items:
    (1) Table of contents--see Sec. 41.37(i) of this subpart.
    (2) Table of authorities--see Sec. 41.37(j) of this subpart.
    (3) [Reserved]
    (4) Argument--see paragraph (f) of this section.
    (e) [Reserved]
    (f) Argument. A request for rehearing shall state with particularity 
the points believed to have been misapprehended or overlooked by the 
Board. In filing a request for rehearing, the argument shall adhere to 
the following format: ``On page x, lines y-z of the Board's opinion, the 
Board states that (set out what was stated). The point misapprehended or 
overlooked was made to the Board in (identify paper, page and line where 
argument was made to the Board) or the point was first made in the 
opinion of the Board. The response is (state response).'' As part of 
each response, appellant shall refer to the page number and line or 
drawing number of a document in the Record. A general restatement of the 
case will not be considered an argument that the Board has 
misapprehended or overlooked a point. A new argument cannot be made in a 
request for rehearing, except:
    (1) New ground of rejection. Appellant may respond to a new ground 
of rejection entered pursuant to Sec. 41.50(d)(2) of this subpart.
    (2) Recent legal development. Appellant may rely on and call the 
Board's attention to a recent court or Board opinion which is relevant 
to an issue decided in the appeal.
    (g) No amendment or new evidence. No amendment or new evidence may 
accompany a request for rehearing.
    (h) Decision on rehearing. A decision will be rendered on a request 
for rehearing. The decision on rehearing is deemed to incorporate the 
underlying decision sought to be reheard except for those portions of 
the underlying decision specifically modified on rehearing. A decision 
on rehearing is final for purposes of judicial review, except when 
otherwise noted in the decision on rehearing.



Sec. 41.54  Action following decision.

    After decision by the Board, the proceeding 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 proceeding may require, to carry into effect the decision.

[[Page 422]]


    Effective Date Note: At 73 FR 32977, June 10, 2008, Sec. 41.54 was 
revised, effective December 10, 2008. Per a subsequent final rule 
published at 73 FR 74972, Dec. 10, 2008, the effective date of this 
action was delayed indefinitely.
    For the convenience of the user, the revised text is set forth as 
follows:



Sec. 41.54  Action following decision.

    After a decision by the Board and subject to appellant's right to 
seek judicial review, the application or reexamination proceeding will 
be returned to the jurisdiction of the examiner for such further action 
as may be appropriate consistent with the decision by the Board.



Sec. 41.56  Sanctions.

    (a) Imposition of sanctions. The Chief Administrative Patent Judge 
or an expanded panel of the Board may impose a sanction against an 
appellant for misconduct, including:
    (1) Failure to comply with an order entered in the appeal or an 
applicable rule.
    (2) Advancing or maintaining a misleading or frivolous request for 
relief or argument.
    (3) Engaging in dilatory tactics.
    (b) Nature of sanction. Sanctions may include entry of:
    (1) An order declining to enter a docket notice.
    (2) An order holding certain facts to have been established in the 
appeal.
    (3) An order expunging a paper or precluding an appellant from 
filing a paper.
    (4) An order precluding an appellant from presenting or contesting a 
particular issue.
    (5) An order excluding evidence.
    (6) [Reserved]
    (7) An order holding an application on appeal to be abandoned or a 
reexamination proceeding terminated.
    (8) An order dismissing an appeal.
    (9) An order denying an oral hearing.
    (10) An order terminating an oral hearing.

    Effective Date Note: At 73 FR 32977, June 10, 2008, Sec. 41.56 was 
added, effective December 10, 2008. Per a subsequent final rule 
published at 73 FR 74972, Dec. 10, 2008, the effective date of this rule 
was delayed indefinitely.



                     Subpart C_Inter Partes Appeals



Sec. 41.60  Definitions.

    In addition to the definitions in Sec. 41.2, the following 
definitions apply to proceedings under this subpart unless otherwise 
clear from the context:
    Appellant means any party, whether the owner or a requester, filing 
a notice of appeal or cross appeal under Sec. 41.61. If more than one 
party appeals or cross appeals, each appealing or cross appealing party 
is an appellant with respect to the claims to which his or her appeal or 
cross appeal is directed.
    Filing means filing with a certificate indicating service of the 
document under Sec. 1.903 of this title.
    Owner means the owner of the patent undergoing inter partes 
reexamination under Sec. 1.915 of this title.
    Proceeding means an inter partes reexamination proceeding. Appeal to 
the Board in an ex parte reexamination proceeding is controlled by 
subpart B of this part. An inter partes reexamination proceeding is not 
a contested case subject to subpart D.
    Requester means each party, other than the owner, who requested that 
the patent undergo inter partes reexamination under Sec. 1.915 of this 
title.
    Respondent means any requester responding under Sec. 41.68 to the 
appellant's brief of the owner, or the owner responding under Sec. 
41.68 to the appellant's brief of any requester. No requester may be a 
respondent to the appellant brief of any other requester.



Sec. 41.61  Notice of appeal and cross appeal to Board.

    (a)(1) Upon the issuance of a Right of Appeal Notice under Sec. 
1.953 of this title, the owner may appeal to the Board with respect to 
the final rejection of any claim of the patent by filing a notice of 
appeal within the time provided in the Right of Appeal Notice and paying 
the fee set forth in Sec. 41.20(b)(1).
    (2) Upon the issuance of a Right of Appeal Notice under Sec. 1.953 
of this title, the requester may appeal to the Board with respect to any 
final decision favorable to the patentability, including any final 
determination not to make a proposed rejection, of any original, 
proposed amended, or new claim of the

[[Page 423]]

patent by filing a notice of appeal within the time provided in the 
Right of Appeal Notice and paying the fee set forth in Sec. 
41.20(b)(1).
    (b)(1) Within fourteen days of service of a requester's notice of 
appeal under paragraph (a)(2) of this section and upon payment of the 
fee set forth in Sec. 41.20(b)(1), an owner who has not filed a notice 
of appeal may file a notice of cross appeal with respect to the final 
rejection of any claim of the patent.
    (2) Within fourteen days of service of an owner's notice of appeal 
under paragraph (a)(1) of this section and upon payment of the fee set 
forth in Sec. 41.20(b)(1), a requester who has not filed a notice of 
appeal may file a notice of cross appeal with respect to any final 
decision favorable to the patentability, including any final 
determination not to make a proposed rejection, of any original, 
proposed amended, or new claim of the patent.
    (c) The notice of appeal or cross appeal in the proceeding must 
identify the appealed claim(s) and must be signed by the owner, the 
requester, or a duly authorized attorney or agent.
    (d) An appeal or cross appeal, when taken, must be taken from all 
the rejections of the claims in a Right of Appeal Notice which the 
patent owner proposes to contest or from all the determinations 
favorable to patentability, including any final determination not to 
make a proposed rejection, in a Right of Appeal Notice which a requester 
proposes to contest. Questions relating to matters not affecting the 
merits of the invention may be required to be settled before an appeal 
is decided.
    (e) The time periods for filing a notice of appeal or cross appeal 
may not be extended.
    (f) If a notice of appeal or cross appeal is timely filed but does 
not comply with any requirement of this section, appellant will be 
notified of the reasons for non-compliance and given a non-extendable 
time period within which to file an amended notice of appeal or cross 
appeal. If the appellant does not then file an amended notice of appeal 
or cross appeal within the set time period, or files a notice which does 
not overcome all the reasons for non-compliance stated in the 
notification of the reasons for non-compliance, that appellant's appeal 
or cross appeal will stand dismissed.



Sec. 41.63  Amendments and affidavits or other evidence after appeal.

    (a) Amendments filed after the date of filing an appeal pursuant to 
Sec. 41.61 canceling claims may be admitted where such cancellation 
does not affect the scope of any other pending claim in the proceeding.
    (b) All other amendments filed after the date of filing an appeal 
pursuant to Sec. 41.61 will not be admitted except as permitted by 
Sec. 41.77(b)(1).
    (c) Affidavits or other evidence filed after the date of filing an 
appeal pursuant to Sec. 41.61 will not be admitted except as permitted 
by reopening prosecution under Sec. 41.77(b)(1).



Sec. 41.64  Jurisdiction over appeal in inter partes reexamination.

    (a) Jurisdiction over the proceeding passes to the Board upon 
transmittal of the file, including all briefs and examiner's answers, to 
the Board.
    (b) If, after receipt and review of the proceeding, the Board 
determines that the file is not complete or is not in compliance with 
the requirements of this subpart, the Board may relinquish jurisdiction 
to the examiner or take other appropriate action to permit completion of 
the file.
    (c) Prior to the entry of a decision on the appeal by the Board, the 
Director may sua sponte order the proceeding remanded to the examiner.



Sec. 41.66  Time for filing briefs.

    (a) An appellant's brief must be filed no later than two months from 
the latest filing date of the last-filed notice of appeal or cross 
appeal or, if any party to the proceeding is entitled to file an appeal 
or cross appeal but fails to timely do so, no later than two months from 
the expiration of the time for filing (by the last party entitled to do 
so) such notice of appeal or cross appeal. The time for filing an 
appellant's brief or an amended appellant's brief may not be extended.
    (b) Once an appellant's brief has been properly filed, any brief 
must be filed by respondent within one month from the date of service of 
the appellant's

[[Page 424]]

brief. The time for filing a respondent's brief or an amended 
respondent's brief may not be extended.
    (c) The examiner will consider both the appellant's and respondent's 
briefs and may prepare an examiner's answer under Sec. 41.69.
    (d) Any appellant may file a rebuttal brief under Sec. 41.71 within 
one month of the date of the examiner's answer. The time for filing a 
rebuttal brief or an amended rebuttal brief may not be extended.
    (e) No further submission will be considered and any such submission 
will be treated in accordance with Sec. 1.939 of this title.



Sec. 41.67  Appellant's brief.

    (a)(1) Appellant(s) may once, within time limits for filing set 
forth in Sec. 41.66, file a brief and serve the brief on all other 
parties to the proceeding in accordance with Sec. 1.903 of this title.
    (2) The brief must be signed by the appellant, or the appellant's 
duly authorized attorney or agent and must be accompanied by the 
requisite fee set forth in Sec. 41.20(b)(2).
    (b) An appellant's appeal shall stand dismissed upon failure of that 
appellant to file an appellant's brief, accompanied by the requisite 
fee, within the time allowed under Sec. 41.66(a).
    (c)(1) The appellant's brief shall contain the following items under 
appropriate headings and in the order indicated in paragraphs (c)(1)(i) 
through (c)(1)(xi) of this section.
    (i) Real party in interest. A statement identifying by name the real 
party in interest.
    (ii) Related appeals and interferences. A statement identifying by 
application, patent, appeal or interference number all other prior and 
pending appeals, interferences or judicial proceedings known to 
appellant, the appellant's legal representative, or assignee which may 
be related to, directly affect or be directly affected by or have a 
bearing on the Board's decision in the pending appeal. Copies of any 
decisions rendered by a court or the Board in any proceeding identified 
under this paragraph must be included in an appendix as required by 
paragraph (c)(1)(xi) of this section.
    (iii) Status of claims. A statement of the status of all the claims 
in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, 
objected to, canceled). If the appellant is the owner, the appellant 
must also identify the rejected claims whose rejection is being 
appealed. If the appellant is a requester, the appellant must identify 
the claims that the examiner has made a determination favorable to 
patentability, which determination is being appealed.
    (iv) Status of amendments. A statement of the status of any 
amendment filed subsequent to the close of prosecution.
    (v) Summary of claimed subject matter. A concise explanation of the 
subject matter defined in each of the independent claims involved in the 
appeal, which shall refer to the specification by column and line 
number, and to the drawing(s), if any, by reference characters. For each 
independent claim involved in the appeal and for each dependent claim 
argued separately under the provisions of paragraph (c)(1)(vii) of this 
section, every means plus function and step plus function as permitted 
by 35 U.S.C. 112, sixth paragraph, must be identified and the structure, 
material, or acts described in the specification as corresponding to 
each claimed function must be set forth with reference to the 
specification by page and line number, and to the drawing, if any, by 
reference characters.
    (vi) Issues to be reviewed on appeal. A concise statement of each 
issue presented for review. No new ground of rejection can be proposed 
by a third party requester appellant, unless such ground was withdrawn 
by the examiner during the prosecution of the proceeding, and the third 
party requester has not yet had an opportunity to propose it as a third 
party requester proposed ground of rejection.
    (vii) Argument. The contentions of appellant with respect to each 
issue presented for review in paragraph (c)(1)(vi) of this section, and 
the basis therefor, with citations of the statutes, regulations, 
authorities, and parts of the record relied on. Any arguments or 
authorities not included in the brief permitted under this section or 
Sec. Sec. 41.68 and

[[Page 425]]

41.71 will be refused consideration by the Board, unless good cause is 
shown. Each issue must be treated under a separate heading. If the 
appellant is the patent owner, for each ground of rejection in the Right 
of Appeal Notice which appellant contests and which applies to two or 
more claims, the claims may be argued separately or as a group. When 
multiple claims subject to the same ground of rejection are argued as a 
group by appellant, the Board may select a single claim from the group 
of claims that are argued together to decide the appeal with respect to 
the group of claims as to the ground of rejection on the basis of the 
selected claim alone. Notwithstanding any other provision of this 
paragraph, the failure of appellant to separately argue claims which 
appellant has grouped together shall constitute a waiver of any argument 
that the Board must consider the patentability of any grouped claim 
separately. Any claim argued separately should be placed under a 
subheading identifying the claim by number. Claims argued as a group 
should be placed under a subheading identifying the claims by number. A 
statement which merely points out what a claim recites will not be 
considered an argument for separate patentability of the claim.
    (viii) Claims appendix. An appendix containing a copy of the claims 
to be reviewed on appeal.
    (ix) Evidence appendix. An appendix containing copies of any 
evidence submitted pursuant to Sec. Sec. 1.130, 1.131, or 1.132 of this 
title or of any other evidence entered by the examiner and relied upon 
by appellant in the appeal, along with a statement setting forth where 
in the record that evidence was entered in the record by the examiner. 
Reference to unentered evidence is not permitted in the brief. See Sec. 
41.63 for treatment of evidence submitted after appeal. This appendix 
may also include copies of the evidence relied upon by the examiner in 
any ground of rejection to be reviewed on appeal.
    (x) Related proceedings appendix. An appendix containing copies of 
decisions rendered by a court or the Board in any proceeding identified 
pursuant to paragraph (c)(1)(ii) of this section.
    (xi) Certificate of service. A certification that a copy of the 
brief has been served in its entirety on all other parties to the 
reexamination proceeding. The names and addresses of the parties served 
must be indicated.
    (2) A brief shall not include any new or non-admitted amendment, or 
any new or non-admitted affidavit or other evidence. See Sec. 1.116 of 
this title for amendments, affidavits or other evidence filed after 
final action but before or on the same date of filing an appeal and 
Sec. 41.63 for amendments, affidavits or other evidence after the date 
of filing the appeal.
    (d) If a brief is filed which does not comply with all the 
requirements of paragraph (a) and paragraph (c) of this section, 
appellant will be notified of the reasons for non-compliance and given a 
non-extendable time period within which to file an amended brief. If 
appellant does not file an amended brief within the set time period, or 
files an amended brief which does not overcome all the reasons for non-
compliance stated in the notification, that appellant's appeal will 
stand dismissed.



Sec. 41.68  Respondent's brief.

    (a)(1) Respondent(s) in an appeal may once, within the time limit 
for filing set forth in Sec. 41.66, file a respondent brief and serve 
the brief on all parties in accordance with Sec. 1.903 of this title.
    (2) The brief must be signed by the party, or the party's duly 
authorized attorney or agent, and must be accompanied by the requisite 
fee set forth in Sec. 41.20(b)(2).
    (3) The respondent brief shall be limited to issues raised in the 
appellant brief to which the respondent brief is directed.
    (4) A requester's respondent brief may not address any brief of any 
other requester.
    (b)(1) The respondent brief shall contain the following items under 
appropriate headings and in the order here indicated, and may include an 
appendix containing only those portions of the record on which reliance 
has been made.
    (i) Real Party in Interest. A statement identifying by name the real 
party in interest.

[[Page 426]]

    (ii) Related Appeals and Interferences. A statement identifying by 
application, patent, appeal or interference number all other prior and 
pending appeals, interferences or judicial proceedings known to 
respondent, the respondent's legal representative, or assignee which may 
be related to, directly affect or be directly affected by or have a 
bearing on the Board's decision in the pending appeal. Copies of any 
decisions rendered by a court or the Board in any proceeding identified 
under this paragraph must be included in an appendix as required by 
paragraph (b)(1)(ix) of this section.
    (iii) Status of claims. A statement accepting or disputing 
appellant's statement of the status of claims. If appellant's statement 
of the status of claims is disputed, the errors in appellant's statement 
must be specified with particularity.
    (iv) Status of amendments. A statement accepting or disputing 
appellant's statement of the status of amendments. If appellant's 
statement of the status of amendments is disputed, the errors in 
appellant's statement must be specified with particularity.
    (v) Summary of claimed subject matter. A statement accepting or 
disputing appellant's summary of the subject matter defined in each of 
the independent claims involved in the appeal. If appellant's summary of 
the subject matter is disputed, the errors in appellant's summary must 
be specified.
    (vi) Issues to be reviewed on appeal. A statement accepting or 
disputing appellant's statement of the issues presented for review. If 
appellant's statement of the issues presented for review is disputed, 
the errors in appellant's statement must be specified. A counter 
statement of the issues for review may be made. No new ground of 
rejection can be proposed by a requester respondent.
    (vii) Argument. A statement accepting or disputing the contentions 
of appellant with each of the issues presented by the appellant for 
review. If a contention of the appellant is disputed, the errors in 
appellant's argument must be specified, stating the basis therefor, with 
citations of the statutes, regulations, authorities, and parts of the 
record relied on. Each issue must be treated under a separate heading. 
An argument may be made with each of the issues stated in the counter 
statement of the issues, with each counter-stated issue being treated 
under a separate heading.
    (viii) Evidence appendix. An appendix containing copies of any 
evidence submitted pursuant to Sec. Sec. 1.130, 1.131, or 1.132 of this 
title or of any other evidence entered by the examiner and relied upon 
by respondent in the appeal, along with a statement setting forth where 
in the record that evidence was entered in the record by the examiner. 
Reference to unentered evidence is not permitted in the respondent's 
brief. See Sec. 41.63 for treatment of evidence submitted after appeal.
    (ix) Related proceedings appendix. An appendix containing copies of 
decisions rendered by a court or the Board in any proceeding identified 
pursuant to paragraph (b)(1)(ii) of this section.
    (x) Certificate of service. A certification that a copy of the 
respondent brief has been served in its entirety on all other parties to 
the reexamination proceeding. The names and addresses of the parties 
served must be indicated.
    (2) A respondent brief shall not include any new or non-admitted 
amendment, or any new or non-admitted affidavit or other evidence. See 
Sec. 1.116 of this title for amendments, affidavits or other evidence 
filed after final action but before or on the same date of filing an 
appeal and Sec. 41.63 for amendments, affidavits or other evidence 
filed after the date of filing the appeal.
    (c) If a respondent brief is filed which does not comply with all 
the requirements of paragraph (a) and paragraph (b) of this section, 
respondent will be notified of the reasons for non-compliance and given 
a non-extendable time period within which to file an amended brief. If 
respondent does not file an amended respondent brief within the set time 
period, or files an amended respondent brief which does not overcome all 
the reasons for non-compliance stated in the notification, the 
respondent brief and any amended respondent brief by that respondent 
will not be considered.

[[Page 427]]



Sec. 41.69  Examiner's answer.

    (a) The primary examiner may, within such time as directed by the 
Director, furnish a written answer to the owner's and/or requester's 
appellant brief or respondent brief including, as may be necessary, such 
explanation of the invention claimed and of the references relied upon, 
the grounds of rejection, and the reasons for patentability, including 
grounds for not adopting any proposed rejection. A copy of the answer 
shall be supplied to the owner and all requesters. If the primary 
examiner determines that the appeal does not comply with the provisions 
of Sec. Sec. 41.61, 41.66, 41.67 and 41.68 or does not relate to an 
appealable action, the primary examiner shall make such determination of 
record.
    (b) An examiner's answer may not include a new ground of rejection.
    (c) An examiner's answer may not include a new determination not to 
make a proposed rejection of a claim.
    (d) Any new ground of rejection, or any new determination not to 
make a proposed rejection, must be made in an Office action reopening 
prosecution.



Sec. 41.71  Rebuttal brief.

    (a) Within one month of the examiner's answer, any appellant may 
once file a rebuttal brief.
    (b)(1) The rebuttal brief of the owner may be directed to the 
examiner's answer and/or any respondent brief.
    (2) The rebuttal brief of the owner shall not include any new or 
non-admitted amendment, or an affidavit or other evidence. See Sec. 
1.116 of this title for amendments, affidavits or other evidence filed 
after final action but before or on the same date of filing an appeal 
and Sec. 41.63 for amendments, affidavits or other evidence filed after 
the date of filing the appeal.
    (c)(1) The rebuttal brief of any requester may be directed to the 
examiner's answer and/or the respondent brief of the owner.
    (2) The rebuttal brief of a requester may not be directed to the 
respondent brief of any other requester.
    (3) No new ground of rejection can be proposed by a requester.
    (4) The rebuttal brief of a requester shall not include any new or 
non-admitted affidavit or other evidence. See Sec. 1.116(d) of this 
title for affidavits or other evidence filed after final action but 
before or on the same date of filing an appeal and Sec. 41.63(c) for 
affidavits or other evidence filed after the date of filing the appeal.
    (d) The rebuttal brief must include a certification that a copy of 
the rebuttal brief has been served in its entirety on all other parties 
to the proceeding. The names and addresses of the parties served must be 
indicated.
    (e) If a rebuttal brief is timely filed under paragraph (a) of this 
section but does not comply with all the requirements of paragraphs (a) 
through (d) of this section, appellant will be notified of the reasons 
for non-compliance and provided with a non-extendable period of one 
month within which to file an amended rebuttal brief. If the appellant 
does not file an amended rebuttal brief during the one-month period, or 
files an amended rebuttal brief which does not overcome all the reasons 
for non-compliance stated in the notification, that appellant's rebuttal 
brief and any amended rebuttal brief by that appellant will not be 
considered.



Sec. 41.73  Oral hearing.

    (a) An oral hearing should be requested only in those circumstances 
in which an appellant or a respondent considers such a hearing necessary 
or desirable for a proper presentation of the appeal. An appeal decided 
on the briefs without an oral hearing will receive the same 
consideration by the Board as an appeal decided after an oral hearing.
    (b) If an appellant or a respondent desires an oral hearing, he or 
she must file, as a separate paper captioned ``REQUEST FOR ORAL 
HEARING,'' a written request for such hearing accompanied by the fee set 
forth in Sec. 41.20(b)(3) within two months after the date of the 
examiner's answer. The time for requesting an oral hearing may not be 
extended. The request must include a certification that a copy of the 
request has been served in its entirety on all other parties to the 
proceeding. The names and addresses of the parties served must be 
indicated.
    (c) If no request and fee for oral hearing have been timely filed by 
appellant or respondent as required by paragraph

[[Page 428]]

(b) of this section, the appeal will be assigned for consideration and 
decision on the briefs without an oral hearing.
    (d) If appellant or respondent has complied with all the 
requirements of paragraph (b) of this section, a hearing date will be 
set, and notice given to the owner and all requesters. If an oral 
hearing is held, 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. The notice shall set a non-extendable period 
within which all requests for oral hearing shall be submitted by any 
other party to the appeal desiring to participate in the oral hearing. A 
hearing will be held as stated in the notice, and oral argument will be 
limited to thirty minutes for each appellant or respondent who has 
requested an oral hearing, and twenty minutes for the primary examiner 
unless otherwise ordered. No appellant or respondent will be permitted 
to participate in an oral hearing unless he or she has requested an oral 
hearing and submitted the fee set forth in Sec. 41.20(b)(3).
    (e)(1) At the oral hearing, each appellant and respondent may only 
rely on evidence that has been previously entered and considered by the 
primary examiner and present argument that has been relied upon in the 
briefs except as permitted by paragraph (e)(2) of this section. The 
primary examiner may only rely on argument and evidence relied upon in 
an answer except as permitted by paragraph (e)(2) of this section. The 
Board will determine the order of the arguments presented at the oral 
hearing.
    (2) Upon a showing of good cause, appellant, respondent and/or the 
primary examiner may rely on a new argument based upon a recent relevant 
decision of either the Board or a Federal Court.
    (f) Notwithstanding the submission of a request for oral hearing 
complying with this rule, if the Board decides that a hearing is not 
necessary, the Board will so notify the owner and all requesters.



Sec. 41.77  Decisions and other actions by the Board.

    (a) The Board of Patent Appeals and Interferences, in its decision, 
may affirm or reverse each decision of the examiner on all issues raised 
on each appealed claim, or remand the reexamination proceeding to the 
examiner for further consideration. The reversal of the examiner's 
determination not to make a rejection proposed by the third party 
requester constitutes a decision adverse to the patentability of the 
claims which are subject to that proposed rejection which will be set 
forth in the decision of the Board of Patent Appeals and Interferences 
as a new ground of rejection under paragraph (b) of this section. 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 reverse the examiner's determination not to 
make a rejection proposed by a requester, the Board shall set forth in 
the opinion in support of its decision a new ground of rejection; or 
should the Board have knowledge of any grounds not raised in the appeal 
for rejecting any pending claim, it may include in its opinion a 
statement to that effect with its reasons for so holding, which 
statement shall constitute a new ground of rejection of the claim. Any 
decision which includes a new ground of rejection pursuant to this 
paragraph shall not be considered final for judicial review. When the 
Board makes a new ground of rejection, the owner, within one month 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 the 
appeal proceeding as to the rejected claim:
    (1) Reopen prosecution. The owner may file a response requesting 
reopening of prosecution before the examiner. Such a response must be 
either an amendment of the claims so rejected or new evidence relating 
to the claims so rejected, or both.
    (2) Request rehearing. The owner may request that the proceeding be 
reheard under Sec. 41.79 by the Board upon the same record. The request 
for rehearing must address any new ground of rejection and state with 
particularity the points believed to have been misapprehended or 
overlooked in entering the

[[Page 429]]

new ground of rejection and also state all other grounds upon which 
rehearing is sought.
    (c) Where the owner has filed a response requesting reopening of 
prosecution under paragraph (b)(1) of this section, any requester, 
within one month of the date of service of the owner's response, may 
once file comments on the response. Such written comments must be 
limited to the issues raised by the Board's opinion reflecting its 
decision and the owner's response. Any requester that had not previously 
filed an appeal or cross appeal and is seeking under this subsection to 
file comments or a reply to the comments is subject to the appeal and 
brief fees under Sec. 41.20(b)(1) and (2), respectively, which must 
accompany the comments or reply.
    (d) Following any response by the owner under paragraph (b)(1) of 
this section and any written comments from a requester under paragraph 
(c) of this section, the proceeding will be remanded to the examiner. 
The statement of the Board shall be binding upon the examiner unless an 
amendment or new evidence not previously of record is made which, in the 
opinion of the examiner, overcomes the new ground of rejection stated in 
the decision. The examiner will consider any owner response under 
paragraph (b)(1) of this section and any written comments by a requester 
under paragraph (c) of this section and issue a determination that the 
rejection is maintained or has been overcome.
    (e) Within one month of the examiner's determination pursuant to 
paragraph (d) of this section, the owner or any requester may once 
submit comments in response to the examiner's determination. Within one 
month of the date of service of comments in response to the examiner's 
determination, the owner and any requesters may file a reply to the 
comments. No requester reply may address the comments of any other 
requester reply. Any requester that had not previously filed an appeal 
or cross appeal and is seeking under this subsection to file comments or 
a reply to the comments is subject to the appeal and brief fees under 
Sec. 41.20(b)(1) and (2), respectively, which must accompany the 
comments or reply.
    (f) After submission of any comments and any reply pursuant to 
paragraph (e) of this section, or after time has expired, the proceeding 
will be returned to the Board which shall reconsider the matter and 
issue a new decision. The new decision is deemed to incorporate the 
earlier decision, except for those portions specifically withdrawn.
    (g) The time period set forth in paragraph (b) of this section is 
subject to the extension of time provisions of Sec. 1.956 of this title 
when the owner is responding under paragraph (b)(1) of this section. The 
time period set forth in paragraph (b) of this section may not be 
extended when the owner is responding under paragraph (b)(2) of this 
section. The time periods set forth in paragraphs (c) and (e) of this 
section may not be extended.



Sec. 41.79  Rehearing.

    (a) Parties to the appeal may file a request for rehearing of the 
decision within one month of the date of:
    (1) The original decision of the Board under Sec. 41.77(a),
    (2) The original Sec. 41.77(b) decision under the provisions of 
Sec. 41.77(b)(2),
    (3) The expiration of the time for the owner to take action under 
Sec. 41.77(b)(2), or
    (4) The new decision of the Board under Sec. 41.77(f).
    (b)(1) The request for rehearing must state with particularity the 
points believed to have been misapprehended or overlooked in rendering 
the Board's opinion reflecting its decision. Arguments not raised in the 
briefs before the Board and evidence not previously relied upon in the 
briefs are not permitted in the request for rehearing except as 
permitted by paragraphs (b)(2) and (b)(3) of this section.
    (2) Upon a showing of good cause, appellant and/or respondent may 
present a new argument based upon a recent relevant decision of either 
the Board or a Federal Court.
    (3) New arguments responding to a new ground of rejection made 
pursuant to Sec. 41.77(b) are permitted.
    (c) Within one month of the date of service of any request for 
rehearing under paragraph (a) of this section, or

[[Page 430]]

any further request for rehearing under paragraph (d) of this section, 
the owner and all requesters may once file comments in opposition to the 
request for rehearing or the further request for rehearing. The comments 
in opposition must be limited to the issues raised in the request for 
rehearing or the further request for rehearing.
    (d) If a party to an appeal files a request for rehearing under 
paragraph (a) of this section, or a further request for rehearing under 
this section, the Board shall render a decision on the request for 
rehearing. The decision on the request for rehearing is deemed to 
incorporate the earlier opinion reflecting its decision for 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 on rehearing. If the Board opinion reflecting its decision 
on rehearing becomes, in effect, a new decision, and the Board so 
indicates, then any party to the appeal may, within one month of the new 
decision, file a further request for rehearing of the new decision under 
this subsection. Such further request for rehearing must comply with 
paragraph (b) of this section.
    (e) The times for requesting rehearing under paragraph (a) of this 
section, for requesting further rehearing under paragraph (c) of this 
section, and for submitting comments under paragraph (b) of this section 
may not be extended.



Sec. 41.81  Action following decision.

    The parties to an appeal to the Board may not appeal to the U.S. 
Court of Appeals for the Federal Circuit under Sec. 1.983 of this title 
until all parties' rights to request rehearing have been exhausted, at 
which time the decision of the Board is final and appealable by any 
party to the appeal to the Board.



                        Subpart D_Contested Cases



Sec. 41.100  Definitions.

    In addition to the definitions in Sec. 41.2, the following 
definitions apply to proceedings under this subpart:
    Business day means a day other than a Saturday, Sunday, or Federal 
holiday within the District of Columbia.
    Involved means the Board has declared the patent application, 
patent, or claim so described to be a subject of the contested case.



Sec. 41.101  Notice of proceeding.

    (a) Notice of a contested case will be sent to every party to the 
proceeding. The entry of the notice initiates the proceeding.
    (b) When the Board is unable to provide actual notice of a contested 
case on a party through the correspondence address of record for the 
party, the Board may authorize other modes of notice, including:
    (1) Sending notice to another address associated with the party, or
    (2) Publishing the notice in the Official Gazette of the United 
States Patent and Trademark Office.



Sec. 41.102  Completion of examination.

    Before a contested case is initiated, except as the Board may 
otherwise authorize, for each involved application and patent:
    (a) Examination or reexamination must be completed, and
    (b) There must be at least one claim that:
    (1) Is patentable but for a judgment in the contested case, and
    (2) Would be involved in the contested case.



Sec. 41.103  Jurisdiction over involved files.

    The Board acquires jurisdiction over any involved file when the 
Board initiates a contested case. Other proceedings for the involved 
file within the Office are suspended except as the Board may order.



Sec. 41.104  Conduct of contested case.

    (a) The Board may determine a proper course of conduct in a 
proceeding for any situation not specifically covered by this part and 
may enter non-final orders to administer the proceeding.
    (b) An administrative patent judge may waive or suspend in a 
proceeding the application of any rule in this subpart, subject to such 
conditions as the administrative patent judge may impose.

[[Page 431]]

    (c) Times set in this subpart are defaults. In the event of a 
conflict between a time set by rule and a time set by order, the time 
set by order is controlling. Action due on a day other than a business 
day may be completed on the next business day unless the Board expressly 
states otherwise.



Sec. 41.106  Filing and service.

    (a) General format requirements. (1) The paper used for filings must 
be durable and white. A party must choose to file on either A4-sized 
paper or 8\1/2\ inch x 11 inch paper except in the case of exhibits that 
require a larger size in order to preserve details of the original. A 
party may not switch between paper sizes in a single proceeding. Only 
one side of the paper may be used.
    (2) In papers, including affidavits, created for the proceeding:
    (i) Markings must be in black ink or must otherwise provide an 
equivalently permanent, dark, high-contrast image on the paper. The 
quality of printing must be equivalent to the quality produced by a 
laser printer. Either a proportional or monospaced font may be used, but 
the proportional font must be 12-point or larger and a monospaced font 
must not contain more than 4 characters per centimeter (10 characters 
per inch). Case names must be underlined or italicized.
    (ii) Double spacing must be used except in headings, tables of 
contents, tables of authorities, indices, signature blocks, and 
certificates of service. Block quotations may be single-spaced and must 
be indented. Margins must be at least 2.5 centimeters (1 inch) on all 
sides.
    (b) Papers other than exhibits--(1) Cover sheet. (i) The cover sheet 
must include the caption the Board specifies for the proceeding, a 
header indicating the party and contact information for the party, and a 
title indicating the sequence and subject of the paper. For example, 
``JONES MOTION 2, For benefit of an earlier application''.
    (ii) If the Board specifies a color other than white for the cover 
sheet, the cover sheet must be that color.
    (2) Papers must have two 0.5 cm (\1/4\ inch) holes with centers 1 cm 
(\1/2\ inch) from the top of the page and 7 cm (2 \3/4\ inch) apart, 
centered horizontally on the page.
    (3) Incorporation by reference; combined papers. Arguments must not 
be incorporated by reference from one paper into another paper. Combined 
motions, oppositions, replies, or other combined papers are not 
permitted.
    (4) Exhibits. Additional requirements for exhibits appear in Sec. 
41.154(c).
    (c) Working copy. Every paper filed must be accompanied by a working 
copy marked ``APJ Copy''.
    (d) Specific filing forms--(1) Filing by mail. A paper filed using 
the EXPRESS MAIL [reg] service of the United States Postal 
Service will be deemed to be filed as of ``date-in'' on the EXPRESS MAIL 
[reg] mailing label; otherwise, mail will be deemed to be 
filed as of the stamped date of receipt at the Board.
    (2) Other modes of filing. The Board may authorize other modes of 
filing, including electronic filing and hand filing, and may set 
conditions for the use of such other modes.
    (e) Service. (1) Papers filed with the Board, if not previously 
served, must be served simultaneously on every opposing party except as 
the Board expressly directs.
    (2) If a party is represented by counsel, service must be on 
counsel.
    (3) Service must be by EXPRESS MAIL [reg] or by means at 
least as fast and reliable as EXPRESS MAIL [reg]. Electronic 
service is not permitted without Board authorization.
    (4) The date of service does not count in computing the time for 
responding.
    (f) Certificate of service. (1) Papers other than exhibits must 
include a certificate of service as a separate page at the end of each 
paper that must be served on an opposing party.
    (2) Exhibits must be accompanied by a certificate of service, but a 
single certificate may accompany any group of exhibits submitted 
together.
    (3) A certificate of service must state:
    (i) The date and manner of service,
    (ii) The name and address of every person served, and
    (iii) For exhibits filed as a group, the name and number of each 
exhibit served.

[[Page 432]]

    (4) A certificate made by a person other than a registered patent 
practitioner must be in the form of an affidavit.



Sec. 41.108  Lead counsel.

    (a) A party may be represented by counsel. The Board may require a 
party to appoint a lead counsel. If counsel is not of record in a 
party's involved application or patent, then a power of attorney for 
that counsel for the party's involved application or patent must be 
filed with the notice required in paragraph (b) of this section.
    (b) Within 14 days of the initiation of each contested case, each 
party must file a separate notice identifying its counsel, if any, and 
providing contact information for each counsel identified or, if the 
party has no counsel, then for the party. Contact information must, at a 
minimum, include:
    (1) A mailing address;
    (2) An address for courier delivery when the mailing address is not 
available for such delivery (for example, when the mailing address is a 
Post Office box);
    (3) A telephone number;
    (4) A facsimile number; and
    (5) An electronic mail address.
    (c) A party must promptly notify the Board of any change in the 
contact information required in paragraph (b) of this section.



Sec. 41.109  Access to and copies of Office records.

    (a) Request for access or copies. Any request from a party for 
access to or copies of Office records directly related to a contested 
case must be filed with the Board. The request must precisely identify 
the records and in the case of copies include the appropriate fee set 
under Sec. 1.19(b) of this title.
    (b) Authorization of access and copies. Access and copies will 
ordinarily only be authorized for the following records:
    (1) The application file for an involved patent;
    (2) An involved application; and
    (3) An application for which a party has been accorded benefit under 
subpart E of this part.
    (c) Missing or incomplete copies. If a party does not receive a 
complete copy of a record within 21 days of the authorization, the party 
must promptly notify the Board.



Sec. 41.110  Filing claim information.

    (a) Clean copy of claims. Within 14 days of the initiation of the 
proceeding, each party must file a clean copy of its involved claims 
and, if a biotechnology material sequence is a limitation, a clean copy 
of the sequence.
    (b) Annotated copy of claims. Within 28 days of the initiation of 
the proceeding, each party must:
    (1) For each involved claim having a limitation that is illustrated 
in a drawing or biotechnology material sequence, file an annotated copy 
of the claim indicating in bold face between braces ({{time} ) where 
each limitation is shown in the drawing or sequence.
    (2) For each involved claim that contains a means-plus-function or 
step-plus-function limitation in the form permitted under 35 U.S.C. 
112(6), file an annotated copy of the claim indicating in bold face 
between braces ({{time} ) the specific portions of the specification 
that describe the structure, material, or acts corresponding to each 
claimed function.
    (c) Any motion to add or amend a claim must include:
    (1) A clean copy of the claim,
    (2) A claim chart showing where the disclosure of the patent or 
application provides written description of the subject matter of the 
claim, and
    (3) Where applicable, a copy of the claims annotated according to 
paragraph (b) of this section.



Sec. 41.120  Notice of basis for relief.

    (a) The Board may require a party to provide a notice stating the 
relief it requests and the basis for its entitlement to relief. The 
Board may provide for the notice to be maintained in confidence for a 
limited time.
    (b) Effect. If a notice under paragraph (a) of this section is 
required, a party will be limited to filing substantive motions 
consistent with the notice. Ambiguities in the notice will be construed 
against the party. A notice is not evidence except as an admission by a 
party-opponent.
    (c) Correction. A party may move to correct its notice. The motion 
should

[[Page 433]]

be filed promptly after the party becomes aware of the basis for the 
correction. A correction filed after the time set for filing notices 
will only be entered if entry would serve the interests of justice.



Sec. 41.121  Motions.

    (a) Types of motions--(1) Substantive motions. Consistent with the 
notice of requested relief, if any, and to the extent the Board 
authorizes, a party may file a motion:
    (i) To redefine the scope of the contested case,
    (ii) To change benefit accorded for the contested subject matter, or
    (iii) For judgment in the contested case.
    (2) Responsive motions. The Board may authorize a party to file a 
motion to amend or add a claim, to change inventorship, or otherwise to 
cure a defect raised in a notice of requested relief or in a substantive 
motion.
    (3) Miscellaneous motions. Any request for relief other than a 
substantive or responsive motion must be filed as a miscellaneous 
motion.
    (b) Burden of proof. The party filing the motion has the burden of 
proof to establish that it is entitled to the requested relief.
    (c) Content of motions; oppositions and replies. (1) Each motion 
must be filed as a separate paper and must include:
    (i) A statement of the precise relief requested,
    (ii) A statement of material facts (see paragraph (d) of this 
section), and
    (iii) A full statement of the reasons for the relief requested, 
including a detailed explanation of the significance of the evidence and 
the governing law, rules, and precedent.
    (2) Compliance with rules. Where a rule in part 1 of this title 
ordinarily governs the relief sought, the motion must make any showings 
required under that rule in addition to any showings required in this 
part.
    (3) The Board may order additional showings or explanations as a 
condition for filing a motion.
    (d) Statement of material facts. (1) Each material fact shall be set 
forth as a separate numbered sentence with specific citations to the 
portions of the record that support the fact.
    (2) The Board may require that the statement of material facts be 
submitted as a separate paper.
    (e) Claim charts. Claim charts must be used in support of any paper 
requiring the comparison of a claim to something else, such as another 
claim, prior art, or a specification. Claim charts must accompany the 
paper as an appendix. Claim charts are not a substitute for appropriate 
argument and explanation in the paper.
    (f) The Board may order briefing on any issue that could be raised 
by motion.



Sec. 41.122  Oppositions and replies.

    (a) Oppositions and replies must comply with the content 
requirements for motions and must include a statement identifying 
material facts in dispute. Any material fact not specifically denied 
shall be considered admitted.
    (b) All arguments for the relief requested in a motion must be made 
in the motion. A reply may only respond to arguments raised in the 
corresponding opposition.



Sec. 41.123  Default filing times.

    (a) A motion, other than a miscellaneous motion, may only be filed 
according to a schedule the Board sets. The default times for acting 
are:
    (1) An opposition is due 30 days after service of the motion.
    (2) A reply is due 30 days after service of the opposition.
    (3) A responsive motion is due 30 days after the service of the 
motion.
    (b) Miscellaneous motions. (1) If no time for filing a specific 
miscellaneous motion is provided in this part or in a Board order:
    (i) The opposing party must be consulted prior to filing the 
miscellaneous motion, and
    (ii) If an opposing party plans to oppose the miscellaneous motion, 
the movant may not file the motion without Board authorization. Such 
authorization should ordinarily be obtained through a telephone 
conference including the Board and every other party to the proceeding. 
Delay in seeking relief may justify a denial of the motion.
    (2) An opposition may not be filed without authorization. The 
default times for acting are:

[[Page 434]]

    (i) An opposition to a miscellaneous motion is due five business 
days after service of the motion.
    (ii) A reply to a miscellaneous motion opposition is due three 
business days after service of the opposition.
    (c) Exhibits. Each exhibit must be filed and served with the first 
paper in which it is cited except as the Board may otherwise order.



Sec. 41.124  Oral argument.

    (a) Request for oral argument. A party may request an oral argument 
on an issue raised in a paper within five business days of the filing of 
the paper. The request must be filed as a separate paper and must 
specify the issues to be considered.
    (b) Copies for panel. If an oral argument is set for a panel, the 
movant on any issue to be argued must provide three working copies of 
the motion, the opposition, and the reply. Each party is responsible for 
providing three working copies of its exhibits relating to the motion.
    (c) Length of argument. If a request for oral argument is granted, 
each party will have a total of 20 minutes to present its arguments, 
including any time for rebuttal.
    (d) Demonstrative exhibits must be served at least five business 
days before the oral argument and filed no later than the time of the 
oral argument.
    (e) Transcription. The Board encourages the use of a transcription 
service at oral arguments but, if such a service is to be used, the 
Board must be notified in advance to ensure adequate facilities are 
available and a transcript must be filed with the Board promptly after 
the oral argument.



Sec. 41.125  Decision on motions.

    (a) Order of consideration. The Board may take up motions for 
decisions in any order, may grant, deny, or dismiss any motion, and may 
take such other action appropriate to secure the just, speedy, and 
inexpensive determination of the proceeding. A decision on a motion may 
include deferral of action on an issue until a later point in the 
proceeding.
    (b) Interlocutory decisions. A decision on motions without a 
judgment is not final for the purposes of judicial review. A panel 
decision on an issue will govern further proceedings in the contested 
case.
    (c) Rehearing--(1) Time for request. A request for rehearing of a 
decision on a motion must be filed within fourteen days of the decision.
    (2) No tolling. The filing of a request for rehearing does not toll 
times for taking action.
    (3) Burden on rehearing. The burden of showing a decision should be 
modified lies with the party attacking the decision. The request must 
specifically identify:
    (i) All matters the party believes to have been misapprehended or 
overlooked, and
    (ii) The place where the matter was previously addressed in a 
motion, opposition, or reply.
    (4) Opposition; reply. Neither an opposition nor a reply to a 
request for rehearing may be filed without Board authorization.
    (5) Panel rehearing. If a decision is not a panel decision, the 
party requesting rehearing may request that a panel rehear the decision. 
A panel rehearing a procedural decision will review the decision for an 
abuse of discretion.



Sec. 41.126  Arbitration.

    (a) Parties to a contested case may resort to binding arbitration to 
determine any issue in a contested case. The Office is not a party to 
the arbitration. The Board is not bound and may independently determine 
questions of patentability, jurisdiction, and Office practice.
    (b) The Board will not authorize arbitration unless:
    (1) It is to be conducted according to Title 9 of the United States 
Code.
    (2) The parties notify the Board in writing of their intention to 
arbitrate.
    (3) The agreement to arbitrate:
    (i) Is in writing,
    (ii) Specifies the issues to be arbitrated,
    (iii) Names the arbitrator, or provides a date not more than 30 days 
after the execution of the agreement for the selection of the 
arbitrator, and
    (iv) Provides that the arbitrator's award shall be binding on the 
parties

[[Page 435]]

and that judgment thereon can be entered by the Board.
    (4) A copy of the agreement is filed within 20 days after its 
execution.
    (5) The arbitration is completed within the time the Board sets.
    (c) The parties are solely responsible for the selection of the 
arbitrator and the conduct of proceedings before the arbitrator.
    (d) Issues not disposed of by the arbitration will be resolved in 
accordance with the procedures established in this subpart.
    (e) The Board will not consider the arbitration award unless it:
    (1) Is binding on the parties,
    (2) Is in writing,
    (3) States in a clear and definite manner each issue arbitrated and 
the disposition of each issue, and
    (4) Is filed within 20 days of the date of the award.
    (f) Once the award is filed, the parties to the award may not take 
actions inconsistent with the award. If the award is dispositive of the 
contested subject matter for a party, the Board may enter judgment as to 
that party.



Sec. 41.127  Judgment.

    (a) Effect within Office--(1) Estoppel. A judgment disposes of all 
issues that were, or by motion could have properly been, raised and 
decided. A losing party who could have properly moved for relief on an 
issue, but did not so move, may not take action in the Office after the 
judgment that is inconsistent with that party's failure to move, except 
that a losing party shall not be estopped with respect to any contested 
subject matter for which that party was awarded a favorable judgment.
    (2) Final disposal of claim. Adverse judgment against a claim is a 
final action of the Office requiring no further action by the Office to 
dispose of the claim permanently.
    (b) Request for adverse judgment. A party may at any time in the 
proceeding request judgment against itself. Actions construed to be a 
request for adverse judgment include:
    (1) Abandonment of an involved application such that the party no 
longer has an application or patent involved in the proceeding,
    (2) Cancellation or disclaiming of a claim such that the party no 
longer has a claim involved in the proceeding,
    (3) Concession of priority or unpatentability of the contested 
subject matter, and
    (4) Abandonment of the contest.
    (c) Recommendation. The judgment may include a recommendation for 
further action by the examiner or by the Director. If the Board 
recommends rejection of a claim of an involved application, the examiner 
must 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.
    (d) Rehearing. A party dissatisfied with the judgment may file a 
request for rehearing within 30 days of the entry of the judgment. The 
request must specifically identify all matters the party believes to 
have been misapprehended or overlooked, and the place where the matter 
was previously addressed in a motion, opposition, or reply.

[69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]



Sec. 41.128  Sanctions.

    (a) The Board may impose a sanction against a party for misconduct, 
including:
    (1) Failure to comply with an applicable rule or order in the 
proceeding;
    (2) Advancing a misleading or frivolous request for relief or 
argument; or
    (3) Engaging in dilatory tactics.
    (b) Sanctions include entry of:
    (1) An order holding certain facts to have been established in the 
proceeding;
    (2) An order expunging, or precluding a party from filing, a paper;
    (3) An order precluding a party from presenting or contesting a 
particular issue;
    (4) An order precluding a party from requesting, obtaining, or 
opposing discovery;
    (5) An order excluding evidence;
    (6) An order awarding compensatory expenses, including attorney 
fees;
    (7) An order requiring terminal disclaimer of patent term; or
    (8) Judgment in the contested case.

[[Page 436]]



Sec. 41.150  Discovery.

    (a) Limited discovery. A party is not entitled to discovery except 
as authorized in this subpart. The parties may agree to discovery among 
themselves at any time.
    (b) Automatic discovery. (1) Within 21 days of a request by an 
opposing party, a party must:
    (i) Serve a legible copy of every requested patent, patent 
application, literature reference, and test standard mentioned in the 
specification of the party's involved patent or application, or 
application upon which the party will rely for benefit, and, if the 
requested material is in a language other than English, a translation, 
if available, and
    (ii) File with the Board a notice (without copies of the requested 
materials) of service of the requested materials.
    (2) Unless previously served, or the Board orders otherwise, any 
exhibit cited in a motion or in testimony must be served with the citing 
motion or testimony.
    (c) Additional discovery. (1) A party may request additional 
discovery. The requesting party must show that such additional discovery 
is in the interests of justice. The Board may specify conditions for 
such additional discovery.
    (2) When appropriate, a party may obtain production of documents and 
things during cross examination of an opponent's witness or during 
testimony authorized under Sec. 41.156.



Sec. 41.151  Admissibility.

    Evidence that is not taken, sought, or filed in accordance with this 
subpart shall not be admissible.



Sec. 41.152  Applicability of the Federal Rules of Evidence.

    (a) Generally. Except as otherwise provided in this subpart, the 
Federal Rules of Evidence shall apply to contested cases.
    (b) Exclusions. Those portions of the Federal Rules of Evidence 
relating to criminal proceedings, juries, and other matters not relevant 
to proceedings under this subpart shall not apply.
    (c) Modifications in terminology. Unless otherwise clear from 
context, the following terms of the Federal Rules of Evidence shall be 
construed as indicated:
    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.
    Civil action, civil proceeding, action, and trial mean contested 
case.
    Courts of the United States, U.S. Magistrate, court, trial court, 
and trier of fact mean Board.
    Hearing means:
    (i) In Federal Rule of Evidence 703, the time when the expert 
testifies.
    (ii) In Federal Rule of Evidence 804(a)(5), the time for taking 
testimony.
    Judge means the Board.
    Judicial notice means official notice.
    Trial or hearing means, in Federal Rule of Evidence 807, the time 
for taking testimony.
    (d) 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.



Sec. 41.153  Records of the Office.

    Certification is not necessary as a condition to admissibility when 
the evidence to be submitted is a record of the Office to which all 
parties have access.



Sec. 41.154  Form of evidence.

    (a) Evidence consists of affidavits, transcripts of depositions, 
documents, and things. All evidence must be submitted in the form of an 
exhibit.
    (b) Translation required. 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 must be filed with the document.
    (c) An exhibit must conform with the requirements for papers in 
Sec. 41.106 of this subpart and the requirements of this paragraph.
    (1) Each exhibit must have an exhibit label with a unique number in 
a range assigned by the Board, the names of the parties, and the 
proceeding number in the following format:


[[Page 437]]



JONES EXHIBIT 2001

Jones v. Smith

Contested Case 104,999

    (2) When the exhibit is a paper:
    (i) Each page must be uniquely numbered in sequence, and
    (ii) The exhibit label must be affixed to the lower right corner of 
the first page of the exhibit without obscuring information on the first 
page or, if obscuring is unavoidable, affixed to a duplicate first page.
    (d) Exhibit list. Each party must maintain an exhibit list with the 
exhibit number and a brief description of each exhibit. If the exhibit 
is not filed, the exhibit list should note that fact. The Board may 
require the filing of a current exhibit list prior to acting on a 
motion.

[69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]



Sec. 41.155  Objection; motion to exclude; motion in limine.

    (a) Deposition. Objections to deposition evidence must be made 
during the deposition. Evidence to cure the objection must be provided 
during the deposition unless the parties to the deposition stipulate 
otherwise on the deposition record.
    (b) Other than deposition. For evidence other than deposition 
evidence:
    (1) Objection. Any objection must be served within five business 
days of service of evidence, other than deposition evidence, to which 
the objection is directed.
    (2) Supplemental evidence. The party relying on evidence for which 
an objection is timely served may respond to the objection by serving 
supplemental evidence within ten business days of service of the 
objection.
    (c) Motion to exclude. A miscellaneous motion to exclude evidence 
must be filed to preserve any objection. The motion must identify the 
objections in the record in order and must explain the objections.
    (d) Motion in limine. A party may file a miscellaneous motion in 
limine for a ruling on the admissibility of evidence.

[69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]



Sec. 41.156  Compelling testimony and production.

    (a) Authorization required. A party seeking to compel testimony or 
production of documents or things must file a miscellaneous motion for 
authorization. The miscellaneous motion must describe the general 
relevance of the testimony, document, or thing and must:
    (1) In the case of testimony, identify the witness by name or title, 
and
    (2) In the case of a document or thing, the general nature of the 
document or thing.
    (b) Outside the United States. For testimony or production sought 
outside the United States, the motion must also:
    (1) In the case of testimony. (i) 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
    (ii) 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. (i) 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
    (ii) Demonstrate that the party has made reasonable efforts to 
obtain the agreement of the individual or entity 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

[[Page 438]]

offered to pay the expenses of producing the document or thing in the 
United States.



Sec. 41.157  Taking testimony.

    (a) Form. Direct testimony must be submitted in the form of an 
affidavit except when the testimony is compelled under 35 U.S.C. 24, in 
which case it may be in the form of a deposition transcript.
    (b) Time and location. (1) Uncompelled direct testimony may be taken 
at any time; otherwise, testimony may only be taken during such time 
period as the Board may authorize.
    (2) Other testimony. (i) Except as the Board otherwise orders, 
authorized testimony may be taken at any reasonable time and location 
within the United States before any disinterested official authorized to 
administer oaths at that location.
    (ii) Testimony outside the United States may only be taken as the 
Board specifically directs.
    (c) Notice of deposition. (1) Prior to the taking of testimony, all 
parties to the proceeding must agree on the time and place for taking 
testimony. If the parties cannot agree, the party seeking the testimony 
must initiate a conference with the Board to set a time and place.
    (2) Cross-examination should ordinarily take place after any 
supplemental evidence relating to the direct testimony has been filed 
and more than a week before the filing date for any paper in which the 
cross-examination testimony is expected to be used. A party requesting 
cross-examination testimony of more than one witness may choose the 
order in which the witnesses are to be cross-examined.
    (3) In the case of direct testimony, at least three business days 
prior to the conference in paragraph (c)(1) of this section, the party 
seeking the direct testimony must serve:
    (i) A list and copy of each document under the party's control and 
on which the party intends to rely, and
    (ii) A list of, and proffer of reasonable access to, any thing other 
than a document under the party's control and on which the party intends 
to rely.
    (4) Notice of the deposition must be filed at least two business 
days before a deposition. The notice limits the scope of the testimony 
and must list:
    (i) The time and place of the deposition,
    (ii) The name and address of the witness,
    (iii) A list of the exhibits to be relied upon during the 
deposition, and
    (iv) A general description of the scope and nature of the testimony 
to be elicited.
    (5) Motion to quash. Objection to a defect in the notice is waived 
unless a miscellaneous motion to quash is promptly filed.
    (d) Deposition in a foreign language. If an interpreter will be used 
during the deposition, the party calling the witness must initiate a 
conference with the Board at least five business days before the 
deposition.
    (e) Manner of taking testimony. (1) Each witness before giving a 
deposition shall be duly sworn according to law by the officer before 
whom the deposition is to be taken. The officer must be authorized to 
take testimony under 35 U.S.C. 23.
    (2) 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 disinterested person in the presence of the 
officer, unless the presence of the officer is waived on the record by 
agreement of all parties.
    (3) Any exhibits relied upon must be numbered according to the 
numbering scheme assigned for the contested case and must, if not 
previously served, be served at the deposition.
    (4) 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, and any 
other objection to the proceeding shall be noted on the record by the 
officer. Evidence objected to shall be taken subject to a ruling on the 
objection.
    (5) When the testimony has been transcribed, the witness shall read 
and sign (in the form of an affidavit) a transcript of the deposition 
unless:
    (i) The parties otherwise agree in writing, (ii) The parties waive 
reading and signature by the witness on the record at the deposition, or

[[Page 439]]

    (iii) The witness refuses to read or sign the transcript of the 
deposition.
    (6) The officer shall prepare a certified transcript by attaching to 
the transcript of the deposition a certificate in the form of an 
affidavit signed and sealed by the officer. Unless the parties waive any 
of the following requirements, in which case the certificate shall so 
state, the certificate must state:
    (i) The witness was duly sworn by the officer before commencement of 
testimony by the witness;
    (ii) The transcript is a true record of the testimony given by the 
witness;
    (iii) The name of the person who recorded the testimony and, if the 
officer did not record it, whether the testimony was recorded in the 
presence of the officer;
    (iv) The presence or absence of any opponent;
    (v) The place where the deposition was taken and the day and hour 
when the deposition began and ended;
    (vi) The officer has no disqualifying interest, personal or 
financial, in a party; and
    (vii) If a witness refuses to read or sign the transcript, the 
circumstances under which the witness refused.
    (7) The officer must promptly provide a copy of the transcript to 
all parties. The proponent of the testimony must file the original as an 
exhibit.
    (8) Any objection to the content, form, or manner of taking the 
deposition, including the qualifications of the officer, is waived 
unless made on the record during the deposition and preserved in a 
timely filed miscellaneous motion to exclude.
    (f) Costs. Except as the Board may order or the parties may agree in 
writing, the proponent of the testimony shall bear all costs associated 
with the testimony, including the reasonable costs associated with 
making the witness available for the cross-examination.



Sec. 41.158  Expert testimony; tests and data.

    (a) Expert testimony that does not disclose the underlying facts or 
data on which the opinion is based is entitled to little or no weight. 
Testimony on United States patent law will not be admitted.
    (b) If a party relies on a technical test or data from such a test, 
the party must provide an affidavit explaining:
    (1) Why the test or data is being used,
    (2) How the test was performed and the data was generated,
    (3) How the data is used to determine a value,
    (4) How the test is regarded in the relevant art, and
    (5) Any other information necessary for the Board to evaluate the 
test and data.



                     Subpart E_Patent Interferences



Sec. 41.200  Procedure; pendency.

    (a) A patent interference is a contested case subject to the 
procedures set forth in subpart D of this part.
    (b) A claim shall be given its broadest reasonable construction in 
light of the specification of the application or patent in which it 
appears.
    (c) Patent interferences shall be administered such that pendency 
before the Board is normally no more than two years.



Sec. 41.201  Definitions.

    In addition to the definitions in Sec. Sec. 41.2 and 41.100, the 
following definitions apply to proceedings under this subpart:
    Accord benefit means Board recognition that a patent application 
provides a proper constructive reduction to practice under 35 U.S.C. 
102(g)(1).
    Constructive reduction to practice means a described and enabled 
anticipation under 35 U.S.C. 102(g)(1) in a patent application of the 
subject matter of a count. Earliest constructive reduction to practice 
means the first constructive reduction to practice that has been 
continuously disclosed through a chain of patent applications including 
in the involved application or patent. For the chain to be continuous, 
each subsequent application must have been co-pending under 35 U.S.C. 
120 or 121 or timely filed under 35 U.S.C. 119 or 365(a).
    Count means the Board's description of the interfering subject 
matter that sets the scope of admissible proofs on priority. Where there 
is more than one

[[Page 440]]

count, each count must describe a patentably distinct invention.
    Involved claim means, for the purposes of 35 U.S.C. 135(a), a claim 
that has been designated as corresponding to the count.
    Senior party means the party entitled to the presumption under Sec. 
41.207(a)(1) that it is the prior inventor. Any other party is a junior 
party.
    Threshold issue means an issue that, if resolved in favor of the 
movant, would deprive the opponent of standing in the interference. 
Threshold issues may include:
    (1) No interference-in-fact, and
    (2) In the case of an involved application claim first made after 
the publication of the movant's application or issuance of the movant's 
patent:
    (i) Repose under 35 U.S.C. 135(b) in view of the movant's patent or 
published application, or
    (ii) Unpatentability for lack of written description under 35 U.S.C. 
112(1) of an involved application claim where the applicant suggested, 
or could have suggested, an interference under Sec. 41.202(a).



Sec. 41.202  Suggesting an interference.

    (a) Applicant. An applicant, including a reissue applicant, may 
suggest an interference with another application or a patent. The 
suggestion must:
    (1) Provide sufficient information to identify the application or 
patent with which the applicant seeks an interference,
    (2) Identify all claims the applicant believes interfere, propose 
one or more counts, and show how the claims correspond to one or more 
counts,
    (3) For each count, provide a claim chart comparing at least one 
claim of each party corresponding to the count and show why the claims 
interfere within the meaning of Sec. 41.203(a),
    (4) Explain in detail why the applicant will prevail on priority,
    (5) If a claim has been added or amended to provoke an interference, 
provide a claim chart showing the written description for each claim in 
the applicant's specification, and
    (6) For each constructive reduction to practice for which the 
applicant wishes to be accorded benefit, provide a chart showing where 
the disclosure provides a constructive reduction to practice within the 
scope of the interfering subject matter.
    (b) Patentee. A patentee cannot suggest an interference under this 
section but may, to the extent permitted under Sec. 1.99 and Sec. 
1.291 of this title, alert the examiner of an application claiming 
interfering subject matter to the possibility of an interference.
    (c) Examiner. An examiner may require an applicant to add a claim to 
provoke an interference. Failure to satisfy the requirement within a 
period (not less than one month) the examiner sets will operate as a 
concession of priority for the subject matter of the claim. If the 
interference would be with a patent, the applicant must also comply with 
paragraphs (a)(2) through (a)(6) of this section. The claim the examiner 
proposes to have added must, apart from the question of priority under 
35 U.S.C. 102(g):
    (1) Be patentable to the applicant, and
    (2) Be drawn to patentable subject matter claimed by another 
applicant or patentee.
    (d) Requirement to show priority under 35 U.S.C. 102(g). (1) When an 
applicant has an earliest constructive reduction to practice that is 
later than the apparent earliest constructive reduction to practice for 
a patent or published application claiming interfering subject matter, 
the applicant must show why it would prevail on priority.
    (2) If an applicant fails to show priority under paragraph (d)(1) of 
this section, an administrative patent judge may nevertheless declare an 
interference to place the applicant under an order to show cause why 
judgment should not be entered against the applicant on priority. New 
evidence in support of priority will not be admitted except on a showing 
of good cause. The Board may authorize the filing of motions to redefine 
the interfering subject matter or to change the benefit accorded to the 
parties.
    (e) Sufficiency of showing. (1) A showing of priority under this 
section is not sufficient unless it would, if unrebutted, support a 
determination of priority in favor of the party making the showing.

[[Page 441]]

    (2) When testimony or production necessary to show priority is not 
available without authorization under Sec. 41.150(c) or Sec. 
41.156(a), the showing shall include:
    (i) Any necessary interrogatory, request for admission, request for 
production, or deposition request, and
    (ii) A detailed proffer of what the response to the interrogatory or 
request would be expected to be and an explanation of the relevance of 
the response to the question of priority.



Sec. 41.203  Declaration.

    (a) Interfering subject matter. An interference exists if the 
subject matter of a claim of one party would, if prior art, have 
anticipated or rendered obvious the subject matter of a claim of the 
opposing party and vice versa.
    (b) Notice of declaration. An administrative patent judge declares 
the patent interference on behalf of the Director. A notice declaring an 
interference identifies:
    (1) The interfering subject matter;
    (2) The involved applications, patents, and claims;
    (3) The accorded benefit for each count; and
    (4) The claims corresponding to each count.
    (c) Redeclaration. An administrative patent judge may redeclare a 
patent interference on behalf of the Director to change the declaration 
made under paragraph (b) of this section.
    (d) A party may suggest the addition of a patent or application to 
the interference or the declaration of an additional interference. The 
suggestion should make the showings required under Sec. 41.202(a) of 
this part.



Sec. 41.204  Notice of basis for relief.

    (a) Priority statement. (1) A party may not submit evidence of its 
priority in addition to its accorded benefit unless it files a statement 
setting forth all bases on which the party intends to establish its 
entitlement to judgment on priority.
    (2) The priority statement must:
    (i) State the date and location of the party's earliest corroborated 
conception,
    (ii) State the date and location of the party's earliest 
corroborated actual reduction to practice,
    (iii) State the earliest corroborated date on which the party's 
diligence began, and
    (iv) Provide a copy of the earliest document upon which the party 
will rely to show conception.
    (3) If a junior party fails to file a priority statement overcoming 
a senior party's accorded benefit, judgment shall be entered against the 
junior party absent a showing of good cause.
    (b) Other substantive motions. The Board may require a party to list 
the motions it intends to file, including sufficient detail to place the 
Board and the opponent on notice of the precise relief sought.
    (c) Filing and service. The Board will set the times for filing and 
serving statements required under this section.



Sec. 41.205  Settlement agreements.

    (a) Constructive notice; time for filing. Pursuant to 35 U.S.C. 
135(c), an agreement or understanding, including collateral agreements 
referred to therein, made in connection with or in contemplation of the 
termination of an interference must be filed prior to the termination of 
the interference between the parties to the agreement. 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. If an appeal to the U.S. Court of 
Appeals for the Federal Circuit (under 35 U.S.C. 141) or a civil action 
(under 35 U.S.C. 146) has been filed the interference is considered 
terminated when the appeal or civil action is terminated. A civil action 
is terminated when the time to appeal the judgment expires. An appeal to 
the U.S. Court of Appeals for the Federal Circuit, whether from a 
decision of the Board or a judgment in a civil action, is terminated 
when the mandate is issued by the Court.
    (b) Untimely filing. The Chief Administrative Patent Judge may 
permit the filing of an agreement under paragraph (a) of this section up 
to six months after termination upon petition and a showing of good 
cause for the failure to file prior to termination.

[[Page 442]]

    (c) Request to keep separate. Any party to an agreement under 
paragraph (a) of this section may request that the agreement be kept 
separate from the interference file. The request must be filed with or 
promptly after the agreement is filed.
    (d) Access to agreement. Any person, other than a representative of 
a Government agency, may have access to an agreement kept separate under 
paragraph (c) of this section only upon petition and on a showing of 
good cause. The agreement will be available to Government agencies on 
written request.



Sec. 41.206  Common interests in the invention.

    An administrative patent judge may decline to declare, or if already 
declared the Board may issue judgment in, an interference between an 
application and another application or patent that are commonly owned.



Sec. 41.207  Presumptions.

    (a) Priority--(1) Order of invention. Parties are presumed to have 
invented interfering subject matter in the order of the dates of their 
accorded benefit for each count. If two parties are accorded the benefit 
of the same earliest date of constructive reduction to practice, then 
neither party is entitled to a presumption of priority with respect to 
the other such party.
    (2) Evidentiary standard. Priority may be proved by a preponderance 
of the evidence except a party must prove priority by clear and 
convincing evidence if the date of its earliest constructive reduction 
to practice is after the issue date of an involved patent or the 
publication date under 35 U.S.C. 122(b) of an involved application or 
patent.
    (b) Claim correspondence. (1) For the purposes of determining 
priority and derivation, all claims of a party corresponding to the 
count are presumed to stand or fall together. To challenge this 
presumption, a party must file a timely substantive motion to have a 
corresponding claim designated as not corresponding to the count. No 
presumption based on claim correspondence regarding the grouping of 
claims exists for other grounds of unpatentability.
    (2) A claim corresponds to a count if the subject matter of the 
count, treated as prior art to the claim, would have anticipated or 
rendered obvious the subject matter of the claim.
    (c) Cross-applicability of prior art. When a motion for judgment of 
unpatentability against an opponent's claim on the basis of prior art is 
granted, each of the movant's claims corresponding to the same count as 
the opponent's claim will be presumed to be unpatentable in view of the 
same prior art unless the movant in its motion rebuts this presumption.



Sec. 41.208  Content of substantive and responsive motions.

    The general requirements for motions in contested cases are stated 
at Sec. 41.121(c).
    (a) In an interference, substantive motions must:
    (1) Raise a threshold issue,
    (2) Seek to change the scope of the definition of the interfering 
subject matter or the correspondence of claims to the count,
    (3) Seek to change the benefit accorded for the count, or
    (4) Seek judgment on derivation or on priority.
    (b) To be sufficient, a motion must provide a showing, supported 
with appropriate evidence, such that, if unrebutted, it would justify 
the relief sought. The burden of proof is on the movant.
    (c) Showing patentability. (1) A party moving to add or amend a 
claim must show the claim is patentable.
    (2) A party moving to add or amend a count must show the count is 
patentable over prior art.

[[Page 443]]

  INDEX III_RULES RELATING TO PRACTICE BEFORE THE PATENT AND TRADEMARK 
                                 OFFICE

  Editorial Note: This listing is provided for informational purposes 
only. It is compiled and kept current by the Department of Commerce. 
This index is updated as of July 1, 2009.

                                                                 Section

                                 A

Address change..............................................10.11, 11.11
Advertising.................................................10.31, 10.32
Agreements restricting practice....................................10.38
Aliens........................................................11.6, 11.9
Applicant for patent, representation of......................1.31, 11.10
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........11.6, 11.9

                                 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
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...............................................................11.6
Application.........................................................10.1
Canon..............................................................10.20
Confidence.........................................................10.57
Differing interests.................................................10.1

[[Page 444]]

Director of Enrollment and Discipline.........................10.1, 11.1
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, 11.1
Person..............................................................10.1
Practitioner..................................................10.1, 11.1
Proceeding before the Office..................................10.1, 11.1
Professional legal corporation......................................10.1
Registration..................................................10.1, 11.1
Respondent........................................................10.134
Secret......................................................10.33, 10.57
Service of Process..................................................15.2
State.........................................................10.1, 11.1
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...............................11.2
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
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

[[Page 445]]

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............11.2
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
Duress, 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..........................................................11.2
Registration........................................................11.8
Registration examination............................................11.7
Reinstatement......................................................10.11
Request regard of examination.......................................11.6
Fees for legal services............................................10.36
Firm name, use of..................................................10.35
Fitness to practice before the Office..............................10.23
Foreigners.............................................10.14, 11.6, 11.9

[[Page 446]]

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.....................11.9

                                 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

                                 N

Neglecting legal matters...........................................10.77
Non-practitioner, formation of partnership with....................10.49
Notice of suspension or exclusion.................................10.159

[[Page 447]]

                                 O

Oath requirement....................................................11.8
Officials, contact with............................................10.93

                                 P

Petitions:
Fees in general.....................................................1.21
Reinstatement.....................................................10.160
Review decision of Commissioner...................................10.157
Review decision of Director of Enrollment and Discipline............11.2
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

Recognition to Practice Before the Patent and Trademark Office:
Agents.................................................10.14, 11.6, 11.7
Aliens.................................................10.14, 11.6, 11.9
Attorneys..............................................10.14, 11.6, 11.7
Change of address, requirement to notify Director...........10.11, 11.11
Person not suspended or excluded....................................11.2
Suspended or excluded practitioner................................10.160
Examination of registration in patent cases.........................11.7
Examination fee.....................................................11.7
Foreigners.............................................10.14, 11.6, 11.7
Former Patent and Trademark Office employees................10.10, 10.23
Government employees........................................10.23, 11.10
Limited recognition in patent cases.................................11.9
Non-lawyers, recognition in trademark cases........................11.10
Patent cases..................................................10.6-11.10
Recognition 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....................11.5
Registration fee....................................................11.8
Registration number.................................................1.34
Removal of attorneys and agents from the register...........10.11, 11.11
Representation by registered attorney or agent in patent cases......1.31
Requirements for registration.......................................11.7
Review of Director's decision refusing registration.................11.2
Trademark cases....................................................10.14
Unauthorized representation by an agent.....................10.31, 11.10
Records, property and funds of client, maintaining of.............10.112
Reinstatement after removal from the register................10.11, 11.2
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

[[Page 448]]

                                 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 449]]



                       SUBCHAPTER B_ADMINISTRATION



                        PARTS 100	101 [RESERVED]



PART 102_DISCLOSURE OF GOVERNMENT INFORMATION--Table of Contents




                  Subpart A_Freedom of Information Act

Sec.
102.1 General.
102.2 Public reference facilities.
102.3 Records under FOIA.
102.4 Requirements for making requests.
102.5 Responsibility for responding to requests.
102.6 Time limits and expedited processing.
102.7 Responses to requests.
102.9 Business Information.
102.10 Appeals from initial determinations or untimely delays.
102.11 Fees.

                          Subpart B_Privacy Act

102.21 Purpose and scope.
102.22 Definitions.
102.23 Procedures for making inquiries.
102.24 Procedures for making requests for records.
102.25 Disclosure of requested records to individuals.
102.26 Special procedures: Medical records.
102.27 Procedures for making requests for correction or amendment.
102.28 Review of requests for correction or amendment.
102.29 Appeal of initial adverse determination on correction or 
          amendment.
102.30 Disclosure of record to person other than the individual to whom 
          it pertains.
102.31 Fees.
102.32 Penalties.
102.33 General exemptions.
102.34 Specific exemptions.

Appendix to Part 102--Systems of Records Noticed by Other Federal 
          Agencies and Applicable to USPTO Records, and Applicability of 
          This Part Thereto

    Authority: 5 U.S.C. 552; 5 U.S.C. 552a; 5 U.S.C. 553; 31 U.S.C. 
3717; 35 U.S.C. 2(b)(2), 21, 41, 42, 122; 44 U.S.C. 3101.

    Source: 65 FR 52917, Aug. 31, 2000, unless otherwise noted.



                  Subpart A_Freedom of Information Act



Sec. 102.1  General.

    (a) The information in this part is furnished for the guidance of 
the public and in compliance with the requirements of the Freedom of 
Information Act (FOIA), as amended (5 U.S.C. 552). This part sets forth 
the procedures the United States Patent and Trademark Office (USPTO) 
follows to make publicly available the materials and indices specified 
in 5 U.S.C. 552(a)(2) and records requested under 5 U.S.C. 552(a)(3). 
Information routinely provided to the public as part of a regular USPTO 
activity (for example, press releases issued by the Office of Public 
Affairs) may be provided to the public without following this part. 
USPTO's policy is to make discretionary disclosures of records or 
information exempt from disclosure under FOIA whenever disclosure would 
not foreseeably harm an interest protected by a FOIA exemption, but this 
policy does not create any right enforceable in court.
    (b) As used in this subpart, FOIA Officer means the USPTO employee 
designated to administer FOIA for USPTO. To ensure prompt processing of 
a request, correspondence should be addressed to the FOIA Officer, 
United States Patent and Trademark Office, P.O. Box 1450, Alexandria, 
Virginia 22313-1450, or delivered by hand to 10B20, Madison Building 
East, 600 Dulany Street, Alexandria, Virginia.

[65 FR 52917, Aug. 31, 2000, as amended at 68 FR 14338, Mar. 25, 2003; 
70 FR 10489, Mar. 4, 2005]



Sec. 102.2  Public reference facilities.

    (a) USPTO maintains a public reference facility that contains the 
records FOIA requires to be made regularly available for public 
inspection and copying; furnishes information and otherwise assists the 
public concerning USPTO operations under FOIA; and receives and 
processes requests for records under FOIA. The FOIA Officer is 
responsible for determining which of USPTO's records are required to be 
made available for public inspection and copying, and for making those 
records available in USPTO's reference and records inspection facility. 
The FOIA Officer shall maintain and make available for public inspection 
and copying a current subject-matter index

[[Page 450]]

of USPTO's public inspection facility records. Each index shall be 
updated regularly, at least quarterly, with respect to newly included 
records. In accordance with 5 U.S.C. 552(a)(2), USPTO has determined 
that it is unnecessary and impracticable to publish quarterly, or more 
frequently, and distribute copies of the index and supplements thereto. 
The public reference facility is located in the Public Search Room, 
Crystal Plaza Three, 2021 South Clark Place, Room 1A01, Arlington, 
Virginia.
    (b) The FOIA Officer shall also make public inspection facility 
records created by USPTO on or after November 1, 1996, available 
electronically through USPTO's World Wide Web site (http://
www.uspto.gov). Information available at the site shall include:
    (1) The FOIA Officer's index of the public inspection facility 
records, which indicates which records are available electronically; and
    (2) The general index referred to in paragraph (c)(3) of this 
section.
    (c) USPTO maintains and makes available for public inspection and 
copying:
    (1) A current index providing identifying information for the public 
as to any matter that is issued, adopted, or promulgated after July 4, 
1967, and that is retained as a record and is required to be made 
available or published. Copies of the index are available upon request 
after payment of the direct cost of duplication;
    (2) Copies of records that have been released and that the FOIA 
Officer determines, because of their subject matter, have become or are 
likely to become the subject of subsequent requests for substantially 
the same records;
    (3) A general index of the records described in paragraph (c)(2) of 
this section;
    (4) Final opinions and orders, including concurring and dissenting 
opinions made in the adjudication of cases;
    (5) Those statements of policy and interpretations that have been 
adopted by USPTO and are not published in the Federal Register; and
    (6) Administrative staff manuals and instructions to staff that 
affect a member of the public.



Sec. 102.3  Records under FOIA.

    (a) Records under FOIA include all Government records, regardless of 
format, medium or physical characteristics, and include electronic 
records and information, audiotapes, videotapes, and photographs.
    (b) There is no obligation to create, compile, or obtain from 
outside USPTO a record to satisfy a FOIA request. With regard to 
electronic data, the issue of whether records are created or merely 
extracted from an existing database is not always apparent. When 
responding to FOIA requests for electronic data where creation of a 
record or programming becomes an issue, USPTO shall undertake reasonable 
efforts to search for the information in electronic format.
    (c) USPTO officials may, upon request, create and provide new 
information pursuant to user fee statutes, such as the first paragraph 
of 15 U.S.C. 1525, or in accordance with authority otherwise provided by 
law. This is outside the scope of FOIA.
    (d) The FOIA Officer shall preserve all correspondence pertaining to 
the requests received under this subpart, as well as copies of all 
requested records, until disposition or destruction is authorized by 
Title 44 of the United States Code or a National Archives and Records 
Administration's General Records Schedule. The FOIA Officer shall not 
dispose of records while they are the subject of a pending request, 
appeal, or lawsuit under FOIA.



Sec. 102.4  Requirements for making requests.

    (a) A request for USPTO records that are not customarily made 
available to the public as part of USPTO's regular informational 
services must be in writing, and shall be processed under FOIA, 
regardless of whether FOIA is mentioned in the request. Requests should 
be sent to the USPTO FOIA Officer, United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 (records FOIA 
requires to be made regularly available for public inspection and 
copying are addressed in Sec. 102.2(c)). For the quickest handling, the 
request letter and envelope should be marked ``Freedom of Information 
Act Request.'' For requests

[[Page 451]]

for records about oneself, Sec. 102.24 contains additional 
requirements. For requests for records about another individual, either 
a written authorization signed by that individual permitting disclosure 
of those records to the requester or proof that individual is deceased 
(for example, a copy of a death certificate or an obituary) facilitates 
processing the request.
    (b) The records requested must be described in enough detail to 
enable USPTO personnel to locate them with a reasonable amount of 
effort. Whenever possible, a request should include specific information 
about each record sought, such as the date, title or name, author, 
recipient, and subject matter of the record, and the name and location 
of the office where the record is located. Also, if records about a 
court case are sought, the title of the case, the court in which the 
case was filed, and the nature of the case should be included. If known, 
any file designations or descriptions for the requested records should 
be included. In general, the more specifically the request describes the 
records sought, the greater the likelihood that USPTO will locate those 
records. If the FOIA Officer determines that a request does not 
reasonably describe records, the FOIA Officer will inform the requester 
what additional information is needed or why the request is otherwise 
insufficient. The FOIA Officer also may give the requester an 
opportunity to discuss the request so that it may be modified to meet 
the requirements of this section.

[65 FR 52917, Aug. 31, 2000, as amended at 68 FR 14338, Mar. 25, 2003]



Sec. 102.5  Responsibility for responding to requests.

    (a) In general. Except as stated in paragraph (b) of this section, 
the USPTO will process FOIA requests directed to USPTO. In determining 
records responsive to a request, the FOIA Officer shall include only 
those records within USPTO's possession and control as of the date the 
FOIA Officer receives the request.
    (b) Consultations and referrals. If the FOIA Officer receives a 
request for a record in USPTO's possession in which another Federal 
agency subject to FOIA has the primary interest, the FOIA Officer shall 
refer the record to that agency for direct response to the requester. 
The FOIA Officer shall consult with another Federal agency before 
responding to a requester if the FOIA Officer receives a request for a 
record in which another Federal agency subject to FOIA has a significant 
interest, but not the primary interest; or another Federal agency not 
subject to FOIA has the primary interest or a significant interest. 
Ordinarily, the agency that originated a record will be presumed to have 
the primary interest in it.
    (c) Notice of referral. Whenever a FOIA Officer refers a document to 
another Federal agency for direct response to the requester, the FOIA 
Officer will ordinarily notify the requester in writing of the referral 
and inform the requester of the name of the agency to which the document 
was referred.
    (d) Timing of responses to consultations and referrals. All 
consultations and referrals shall be handled according to the date the 
FOIA request was received by the first Federal agency.
    (e) Agreements regarding consultations and referrals. The FOIA 
Officer may make agreements with other Federal agencies to eliminate the 
need for consultations or referrals for particular types of records.



Sec. 102.6  Time limits and expedited processing.

    (a) In general. The FOIA Officer ordinarily shall respond to 
requests according to their order of receipt.
    (b) Initial response and appeal. Subject to paragraph (c)(1) of this 
section, an initial response shall be made within 20 working days (i.e., 
excluding Saturdays, Sundays, and legal public holidays) of the receipt 
of a request for a record under this part by the proper FOIA Officer 
identified in accordance with Sec. 102.5(a), and an appeal shall be 
decided within 20 working days of its receipt by the Office of the 
General Counsel.
    (c) Unusual circumstances. (1) In unusual circumstances as specified 
in paragraph (c)(2) of this section, the FOIA Officer may extend the 
time limits in paragraph (b) of this section by notifying the requester 
in writing as

[[Page 452]]

soon as practicable of the unusual circumstances and of the date by 
which processing of the request is expected to be completed. Extensions 
of time for the initial determination and extensions on appeal may not 
exceed a total of ten working days, unless the requester agrees to a 
longer extension, or the FOIA Officer provides the requester with an 
opportunity either to limit the scope of the request so that it may be 
processed within the applicable time limit, or to arrange an alternative 
time frame for processing the request or a modified request.
    (2) As used in this section, unusual circumstances means, but only 
to the extent reasonably necessary to properly process the particular 
request:
    (i) The need to search for and collect the requested records from 
field facilities or other establishments separate from the office 
processing the request;
    (ii) The need to search for, collect, and appropriately examine a 
voluminous amount of separate and distinct records that are the subject 
of a single request; or
    (iii) The need for consultation, which shall be conducted with all 
practicable speed, with another Federal agency having a substantial 
interest in the determination of the request.
    (3) Unusual circumstances do not include a delay that results from a 
predictable workload of requests, unless USPTO demonstrates reasonable 
progress in reducing its backlog of pending requests. Refusal to 
reasonably modify the scope of a request or arrange an alternate time 
frame may affect a requester's ability to obtain judicial review.
    (4) If the FOIA Officer reasonably believes that multiple requests 
submitted by a requester, or by a group of requesters acting in concert, 
constitute a single request that would otherwise involve unusual 
circumstances, and the requests involve clearly related matters, the 
FOIA Officer may aggregate them. Multiple requests involving unrelated 
matters will not be aggregated.
    (d) Multitrack processing. (1) The FOIA Officer may use two or more 
processing tracks by distinguishing between simple and more complex 
requests based on the number of pages involved, or some other measure of 
the amount of work and/or time needed to process the request, and 
whether the request qualifies for expedited processing as described in 
paragraph (e) of this section.
    (2) The FOIA Officer may provide requesters in a slower track with 
an opportunity to limit the scope of their requests in order to qualify 
for faster processing. The FOIA Officer may contact the requester by 
telephone or by letter, whichever is most efficient in each case.
    (e) Expedited processing. (1) Requests and appeals shall be taken 
out of order and given expedited treatment whenever it is determined 
they involve:
    (i) Circumstances in which the lack of expedited treatment could 
reasonably be expected to pose an imminent threat to the life or 
physical safety of an individual;
    (ii) The loss of substantial due process rights;
    (iii) A matter of widespread and exceptional media interest in which 
there exist questions about the Government's integrity that affect 
public confidence; or
    (iv) An urgency to inform the public about an actual or alleged 
Federal Government activity, if made by a person primarily engaged in 
disseminating information.
    (2) A request for expedited processing may be made at the time of 
the initial request for records or at any later time. For a prompt 
determination, a request for expedited processing should be sent to the 
FOIA Officer.
    (3) A requester who seeks expedited processing must submit a 
statement, certified to be true and correct to the best of that person's 
knowledge and belief, explaining in detail the basis for requesting 
expedited processing. For example, a requester within the category 
described in paragraph (e)(1)(iv) of this section, if not a full-time 
member of the news media, must establish that he or she is a person 
whose main professional activity or occupation is information 
dissemination, though it need not be his or her sole occupation. A 
requester within the category described in paragraph (e)(1)(iv) of this 
section must also establish a particular urgency to inform the public 
about the Government activity involved in the request, beyond the 
public's right to

[[Page 453]]

know about Government activity generally. The formality of certification 
may be waived as a matter of administrative discretion.
    (4) Within ten calendar days of receipt of a request for expedited 
processing, the FOIA Officer will decide whether to grant it and shall 
notify the requester of the decision. If a request for expedited 
treatment is granted, the request shall be given priority and processed 
as soon as practicable. If a request for expedited processing is denied, 
any appeal of that decision shall be acted on expeditiously.



Sec. 102.7  Responses to requests.

    (a) Grants of requests. If the FOIA Officer makes a determination to 
grant a request in whole or in part, the FOIA Officer will notify the 
requester in writing. The FOIA Officer will inform the requester in the 
notice of any fee charged under Sec. 102.11 and disclose records to the 
requester promptly upon payment of any applicable fee. Records disclosed 
in part shall be marked or annotated to show each applicable FOIA 
exemption and the amount of information deleted, unless doing so would 
harm an interest protected by an applicable exemption. The location of 
the information deleted shall also be indicated on the record, if 
feasible.
    (b) Adverse determinations of requests. If the FOIA Officer makes an 
adverse determination regarding a request, the FOIA Officer will notify 
the requester of that determination in writing. An adverse determination 
is a denial of a request in any respect, namely: A determination to 
withhold any requested record in whole or in part; a determination that 
a requested record does not exist or cannot be located; a determination 
that a record is not readily reproducible in the form or format sought 
by the requester; a determination that what has been requested is not a 
record subject to FOIA (except that a determination under Sec. 
102.11(j) that records are to be made available under a fee statute 
other than FOIA is not an adverse determination); a determination 
against the requester on any disputed fee matter, including a denial of 
a request for a fee waiver; or a denial of a request for expedited 
treatment. Each denial letter shall be signed by the FOIA Officer and 
shall include:
    (1) The name and title or position of the denying official;
    (2) A brief statement of the reason(s) for the denial, including 
applicable FOIA exemption(s);
    (3) An estimate of the volume of records or information withheld, in 
number of pages or some other reasonable form of estimation. This 
estimate need not be provided if the volume is otherwise indicated 
through deletions on records disclosed in part, or if providing an 
estimate would harm an interest protected by an applicable FOIA 
exemption; and
    (4) A statement that the denial may be appealed, and a list of the 
requirements for filing an appeal under Sec. 102.10(b).



Sec. 102.9  Business Information.

    (a) In general. Business information obtained by USPTO from a 
submitter will be disclosed under FOIA only under this section.
    (b) Definitions. For the purposes of this section:
    (1) Business information means commercial or financial information, 
obtained by USPTO from a submitter, which may be protected from 
disclosure under FOIA exemption 4 (5 U.S.C. 552(b)(4)).
    (2) Submitter means any person or entity outside the Federal 
Government from whom USPTO obtains business information, directly or 
indirectly. The term includes corporations; state, local and tribal 
governments; and foreign governments.
    (c) Designation of business information. A submitter of business 
information should designate by appropriate markings, either at the time 
of submission or at a reasonable time thereafter, any portions of its 
submission that it considers to be protected from disclosure under FOIA 
exemption 4. These designations will expire ten years after the date of 
the submission unless the submitter requests, and provides justification 
for, a longer designation period.
    (d) Notice to submitters. The FOIA Officer shall provide a submitter 
with prompt written notice of a FOIA request or administrative appeal 
that

[[Page 454]]

seeks its business information whenever required under paragraph (e) of 
this section, except as provided in paragraph (h) of this section, in 
order to give the submitter an opportunity under paragraph (f) of this 
section to object to disclosure of any specified portion of that 
information. Such written notice shall be sent via certified mail, 
return receipt requested, or similar means. The notice shall either 
describe the business information requested or include copies of the 
requested records containing the information. When notification of a 
large number of submitters is required, notification may be made by 
posting or publishing the notice in a place reasonably likely to 
accomplish notification.
    (e) When notice is required. Notice shall be given to the submitter 
whenever:
    (1) The information has been designated in good faith by the 
submitter as protected from disclosure under FOIA exemption 4; or
    (2) The FOIA Officer has reason to believe that the information may 
be protected from disclosure under FOIA exemption 4.
    (f) Opportunity to object to disclosure. The FOIA Officer shall 
allow a submitter seven working days (i.e., excluding Saturdays, 
Sundays, and legal public holidays) from the date of receipt of the 
written notice described in paragraph (d) of this section to provide the 
FOIA Officer with a detailed statement of any objection to disclosure. 
The statement must specify all grounds for withholding any portion of 
the information under any exemption of FOIA and, in the case of 
exemption 4, it must show why the information is a trade secret or 
commercial or financial information that is privileged or confidential. 
If a submitter fails to respond to the notice within the time specified, 
the submitter will be considered to have no objection to disclosure of 
the information. Information a submitter provides under this paragraph 
may itself be subject to disclosure under FOIA.
    (g) Notice of intent to disclose. The FOIA Officer shall consider a 
submitter's objections and specific grounds under FOIA for nondisclosure 
in deciding whether to disclose business information. If the FOIA 
Officer decides to disclose business information over the objection of a 
submitter, the FOIA Officer shall give the submitter written notice via 
certified mail, return receipt requested, or similar means, which shall 
include:
    (1) A statement of reason(s) why the submitter's objections to 
disclosure were not sustained;
    (2) A description of the business information to be disclosed; and
    (3) A statement that the FOIA Officer intends to disclose the 
information seven working days from the date the submitter receives the 
notice.
    (h) Exceptions to notice requirements. The notice requirements of 
paragraphs (d) and (g) of this section shall not apply if:
    (1) The FOIA Officer determines that the information should not be 
disclosed;
    (2) The information has been lawfully published or has been 
officially made available to the public;
    (3) Disclosure of the information is required by statute (other than 
FOIA) or by a regulation issued in accordance with Executive Order 
12600; or
    (4) The designation made by the submitter under paragraph (c) of 
this section appears obviously frivolous, in which case the FOIA Officer 
shall provide the submitter written notice of any final decision to 
disclose the information seven working days from the date the submitter 
receives the notice.
    (i) Notice of FOIA lawsuit. Whenever a requester files a lawsuit 
seeking to compel the disclosure of business information, the FOIA 
Officer shall promptly notify the submitter.
    (j) Corresponding notice to requesters. Whenever a FOIA Officer 
provides a submitter with notice and an opportunity to object to 
disclosure under paragraph (d) of this section, the FOIA Officer shall 
also notify the requester(s). Whenever a submitter files a lawsuit 
seeking to prevent the disclosure of business information, the FOIA 
Officer shall notify the requester(s).



Sec. 102.10  Appeals from initial determinations or untimely delays.

    (a) If a request for records is initially denied in whole or in 
part, or has not

[[Page 455]]

been timely determined, or if a requester receives an adverse initial 
determination regarding any other matter under this subpart (as 
described in Sec. 102.7(b)), the requester may file a written appeal, 
which must be received by the Office of General Counsel within thirty 
calendar days of the date of the written denial or, if there has been no 
determination, may be submitted anytime after the due date, including 
the last extension under Sec. 102.6(c), of the determination.
    (b) Appeals shall be decided by a Deputy General Counsel. Appeals 
should be addressed to the General Counsel, United States Patent and 
Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450. Both the 
letter and the appeal envelope should be clearly marked ``Freedom of 
Information Appeal''. The appeal must include a copy of the original 
request and the initial denial, if any, and may include a statement of 
the reasons why the records requested should be made available and why 
the initial denial, if any, was in error. No opportunity for personal 
appearance, oral argument or hearing on appeal is provided.
    (c) If an appeal is granted, the person making the appeal shall be 
immediately notified and copies of the releasable documents shall be 
made available promptly thereafter upon receipt of appropriate fees 
determined in accordance with Sec. 102.11.
    (d) If no determination of an appeal has been sent to the requester 
within the twenty-working-day period specified in Sec. 102.6(b) or the 
last extension thereof, the requester is deemed to have exhausted his 
administrative remedies with respect to the request, giving rise to a 
right of judicial review under 5 U.S.C. 552(a)(6)(C). If the person 
making a request initiates a civil action against USPTO based on the 
provision in this paragraph, the administrative appeal process may 
continue.
    (e) A determination on appeal shall be in writing and, when it 
denies records in whole or in part, the letter to the requester shall 
include:
    (1) A brief explanation of the basis for the denial, including a 
list of applicable FOIA exemptions and a description of how the 
exemptions apply;
    (2) A statement that the decision is final;
    (3) Notification that judicial review of the denial is available in 
the United States district court for the district in which the requester 
resides or has its principal place of business, the United States 
District Court for the Eastern District of Virginia, or the District of 
Columbia; and
    (4) The name and title or position of the official responsible for 
denying the appeal.

[65 FR 52917, Aug. 31, 2000, as amended at 68 FR 14338, Mar. 25, 2003]



Sec. 102.11  Fees.

    (a) In general. USPTO shall charge for processing requests under 
FOIA in accordance with paragraph (c) of this section, except when fees 
are limited under paragraph (d) of this section or when a waiver or 
reduction of fees is granted under paragraph (k) of this section. USPTO 
shall collect all applicable fees before sending copies of requested 
records to a requester. Requesters must pay fees by check or money order 
made payable to the Treasury of the United States.
    (b) Definitions. For purposes of this section:
    (1) Commercial use request means a request from or on behalf of a 
person who seeks information for a use or purpose that furthers his or 
her commercial, trade, or profit interests, which can include furthering 
those interests through litigation. The FOIA Officer shall determine, 
whenever reasonably possible, the use to which a requester will put the 
requested records. When it appears that the requester will put the 
records to a commercial use, either because of the nature of the request 
itself or because the FOIA Officer has reasonable cause to doubt a 
requester's stated use, the FOIA Officer shall provide the requester a 
reasonable opportunity to submit further clarification.
    (2) Direct costs means those expenses USPTO incurs in searching for 
and duplicating (and, in the case of commercial use requests, reviewing) 
records to respond to a FOIA request. Direct costs include, for example, 
the labor costs of the employee performing the work (the basic rate of 
pay for the employee, plus

[[Page 456]]

16 percent of that rate to cover benefits). Not included in direct costs 
are overhead expenses such as the costs of space and heating or lighting 
of the facility in which the records are kept.
    (3) Duplication means the making of a copy of a record, or of the 
information contained in it, necessary to respond to a FOIA request. 
Copies may take the form of paper, microform, audiovisual materials, or 
electronic records (for example, magnetic tape or disk), among others. 
The FOIA Officer shall honor a requester's specified preference of form 
or format of disclosure if the record is readily reproducible with 
reasonable efforts in the requested form or format.
    (4) Educational institution means a preschool, a public or private 
elementary or secondary school, an institution of undergraduate higher 
education, an institution of graduate higher education, an institution 
of professional education, or an institution of vocational education, 
that operates a program of scholarly research. To be in this category, a 
requester must show that the request is authorized by and is made under 
the auspices of a qualifying institution, and that the records are 
sought to further scholarly research rather than for a commercial use.
    (5) Noncommercial scientific institution means an institution that 
is not operated on a ``commercial'' basis, as that term is defined in 
paragraph (b)(1) of this section, and that is operated solely for the 
purpose of conducting scientific research, the results of which are not 
intended to promote any particular product or industry. To be in this 
category, a requester must show that the request is authorized by and is 
made under the auspices of a qualifying institution and that the records 
are sought to further scientific research rather than for a commercial 
use.
    (6) Representative of the news media, or news media requester means 
any person actively gathering news for an entity that is organized and 
operated to publish or broadcast news to the public. The term ``news'' 
means information that is about current events or that would be of 
current interest to the public. Examples of news media entities include 
television or radio stations broadcasting to the public at large and 
publishers of periodicals (but only if they can qualify as disseminators 
of ``news'') that make their products available for purchase or 
subscription by the general public. For ``freelance'' journalists to be 
regarded as working for a news organization, they must demonstrate a 
solid basis for expecting publication through that organization. A 
publication contract would be the clearest proof, but the FOIA Officer 
shall also look to the past publication record of a requester in making 
this determination. To be in this category, a requester must not be 
seeking the requested records for a commercial use. However, a request 
for records supporting the news-dissemination function of the requester 
shall not be considered to be for a commercial use.
    (7) Review means the examination of a record located in response to 
a request in order to determine whether any portion of it is exempt from 
disclosure. It also includes processing any record for disclosure--for 
example, doing all that is necessary to redact it and prepare it for 
disclosure. Review costs are recoverable even if a record ultimately is 
not disclosed. Review time does not include time spent resolving general 
legal or policy issues regarding the application of exemptions.
    (8) Search means the process of looking for and retrieving records 
or information responsive to a request. It includes page-by-page or 
line-by-line identification of information within records and also 
includes reasonable efforts to locate and retrieve information from 
records maintained in electronic form or format. The FOIA Officer shall 
ensure that searches are done in the most efficient and least expensive 
manner reasonably possible.
    (c) Fees. In responding to FOIA requests, the FOIA Officer shall 
charge the fees summarized in chart form in paragraphs (c)(1) and (c)(2) 
of this section and explained in paragraphs (c)(3) through (c)(5) of 
this section, unless a waiver or reduction of fees has been granted 
under paragraph (k) of this section.
    (1) The four categories and chargeable fees are:

[[Page 457]]



------------------------------------------------------------------------
                Category                         Chargeable fees
------------------------------------------------------------------------
(i) Commercial Use Requesters..........  Search, Review, and
                                          Duplication.
(ii) Educational and Non-commercial      Duplication (excluding the cost
 Scientific Institution Requesters.       of the first 100 pages).
(iii) Representatives of the News Media  Duplication (excluding the cost
                                          of the first 100 pages).
(iv) All Other Requesters..............  Search and Duplication
                                          (excluding the cost of the
                                          first 2 hours of search and
                                          100 pages).
------------------------------------------------------------------------

    (2) Uniform fee schedule.

------------------------------------------------------------------------
                Service                                Rate
------------------------------------------------------------------------
(i) Manual search......................  Actual salary rate of employee
                                          involved, plus 16 percent of
                                          salary rate.
(ii) Computerized search...............  Actual direct cost, including
                                          operator time.
(iii) Duplication of records:
(A) Paper copy reproduction............  $.15 per page
(B) Other reproduction (e.g., computer   Actual direct cost, including
 disk or printout, microfilm,             operator time.
 microfiche, or microform).
(iv) Review of records (includes         Actual salary rate of employee
 preparation for release, i.e.            conducting review, plus 16
 excising).                               percent of salary rate.
------------------------------------------------------------------------

    (3) Search. (i) Search fees shall be charged for all requests--other 
than requests made by educational institutions, noncommercial scientific 
institutions, or representatives of the news media--subject to the 
limitations of paragraph (d) of this section. The FOIA Officer will 
charge for time spent searching even if no responsive records are 
located or if located records are entirely exempt from disclosure. 
Search fees shall be the direct costs of conducting the search by the 
involved employees.
    (ii) For computer searches of records, requesters will be charged 
the direct costs of conducting the search, although certain requesters 
(as provided in paragraph (d)(1) of this section) will be charged no 
search fee and certain other requesters (as provided in paragraph (d)(3) 
of this section) are entitled to the cost equivalent of two hours of 
manual search time without charge. These direct costs include the costs, 
attributable to the search, of operating a central processing unit and 
operator/programmer salary.
    (4) Duplication. Duplication fees will be charged to all requesters, 
subject to the limitations of paragraph (d) of this section. For a paper 
photocopy of a record (no more than one copy of which need be supplied), 
the fee shall be $.15 cents per page. For copies produced by computer, 
such as tapes or printouts, the FOIA Officer shall charge the direct 
costs, including operator time, of producing the copy. For other forms 
of duplication, the FOIA Officer will charge the direct costs of that 
duplication.
    (5) Review. Review fees shall be charged to requesters who make a 
commercial use request. Review fees shall be charged only for the 
initial record review--the review done when the FOIA Officer determines 
whether an exemption applies to a particular record at the initial 
request level. No charge will be made for review at the administrative 
appeal level for an exemption already applied. However, records withheld 
under an exemption that is subsequently determined not to apply may be 
reviewed again to determine whether any other exemption not previously 
considered applies, and the costs of that review are chargeable. Review 
fees shall be the direct costs of conducting the review by the involved 
employees.
    (d) Limitations on charging fees. (1) No search fee will be charged 
for requests by educational institutions, noncommercial scientific 
institutions, or representatives of the news media.
    (2) No search fee or review fee will be charged for a quarter-hour 
period unless more than half of that period is required for search or 
review.
    (3) Except for requesters seeking records for a commercial use, the 
FOIA Officer will provide without charge:

[[Page 458]]

    (i) The first 100 pages of duplication (or the cost equivalent); and
    (ii) The first two hours of search (or the cost equivalent).
    (4) Whenever a total fee calculated under paragraph (c) of this 
section is $20.00 or less for any request, no fee will be charged.
    (5) The provisions of paragraphs (d) (3) and (4) of this section 
work together. This means that for requesters other than those seeking 
records for a commercial use, no fee will be charged unless the cost of 
the search in excess of two hours plus the cost of duplication in excess 
of 100 pages totals more than $20.00.
    (e) Notice of anticipated fees over $20.00. When the FOIA Officer 
determines or estimates that the fees to be charged under this section 
will be more than $20.00, the FOIA Officer shall notify the requester of 
the actual or estimated fees, unless the requester has indicated a 
willingness to pay fees as high as those anticipated. If only a portion 
of the fee can be estimated readily, the FOIA Officer shall advise the 
requester that the estimated fee may be only a portion of the total fee. 
If the FOIA Officer has notified a requester that actual or estimated 
fees are more than $20.00, the FOIA Officer shall not consider the 
request received or process it further until the requester agrees to pay 
the anticipated total fee. Any such agreement should be in writing. A 
notice under this paragraph shall offer the requester an opportunity to 
discuss the matter with USPTO personnel in order to reformulate the 
request to meet the requester's needs at a lower cost.
    (f) Charges for other services. Apart from the other provisions of 
this section, the FOIA Officer shall ordinarily charge the direct cost 
of special services. Such special services could include certifying that 
records are true copies or sending records by other than ordinary mail.
    (g) Charging interest. The FOIA Officer shall charge interest on any 
unpaid bill starting on the 31st calendar day following the date of 
billing the requester. Interest charges shall be assessed at the rate 
provided in 31 U.S.C. 3717 and accrue from the date of the billing until 
payment is received by the FOIA Officer. The FOIA Officer shall follow 
the provisions of the Debt Collection Improvement Act of 1996 (Pub. L. 
104-134), as amended, and its administrative procedures, including the 
use of consumer reporting agencies, collection agencies, and offset.
    (h) Aggregating requests. If a FOIA Officer reasonably believes that 
a requester or a group of requesters acting together is attempting to 
divide a request into a series of requests for the purpose of avoiding 
fees, the FOIA Officer may aggregate those requests and charge 
accordingly. The FOIA Officer may presume that multiple requests of this 
type made within a 30-calendar-day period have been made in order to 
avoid fees. If requests are separated by a longer period, the FOIA 
Officer shall aggregate them only if a solid basis exists for 
determining that aggregation is warranted under all the circumstances 
involved. Multiple requests involving unrelated matters shall not be 
aggregated.
    (i) Advance payments. (1) For requests other than those described in 
paragraphs (i)(2) and (3) of this section, the FOIA Officer shall not 
require the requester to make an advance payment: a payment made before 
work is begun or continued on a request. Payment owed for work already 
completed (i.e., a payment before copies are sent to a requester) is not 
an advance payment.
    (2) If the FOIA Officer determines or estimates that a total fee to 
be charged under this section will be more than $250.00, the requester 
must pay the entire anticipated fee before beginning to process the 
request, unless the FOIA Officer receives a satisfactory assurance of 
full payment from a requester who has a history of prompt payment.
    (3) If a requester has previously failed to pay a properly charged 
FOIA fee to USPTO or another responsible Federal agency within 30 
calendar days of the date of billing, the FOIA Officer shall require the 
requester to pay the full amount due, plus any applicable interest, and 
to make an advance payment of the full amount of any anticipated fee, 
before the FOIA Officer begins to process a new request or continues to 
process a pending request from that requester.

[[Page 459]]

    (4) In cases in which the FOIA Officer requires payment under 
paragraphs (i)(2) or (3) of this section, the request shall not be 
considered received and further work will not be done on it until the 
required payment is received.
    (5) Upon the completion of processing of a request, when a specific 
fee is determined to be payable and appropriate notice has been given to 
the requester, the FOIA Officer shall make records available to the 
requester only upon receipt of full payment of the fee.
    (j) Other statutes specifically providing for fees. The fee schedule 
of this section does not apply to fees charged under any statute (except 
for FOIA) that specifically requires USPTO or another responsible 
Federal agency to set and collect fees for particular types of records. 
If records responsive to requests are maintained for distribution by 
agencies operating such statutorily based fee schedule programs, the 
FOIA Officer shall inform requesters of how to obtain records from those 
sources.
    (k) Requirements for waiver or reduction of fees. (1) Records 
responsive to a request will be furnished without charge or at a charge 
reduced below that established under paragraph (c) of this section if 
the FOIA Officer determines, based on all available information, that 
the requester has demonstrated that:
    (i) 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
    (ii) Disclosure of the information is not primarily in the 
commercial interest of the requester.
    (2) To determine whether the first fee waiver requirement is met, 
the FOIA Officer shall consider the following factors:
    (i) The subject of the request: whether the subject of the requested 
records concerns the operations or activities of the Government. The 
subject of the requested records must concern identifiable operations or 
activities of the Federal Government, with a connection that is direct 
and clear, not remote or attenuated.
    (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. The disclosable portions of the 
requested records must be meaningfully informative about Government 
operations or activities in order to be ``likely to contribute'' to an 
increased public understanding of those operations or activities. The 
disclosure of information that already is in the public domain, in 
either a duplicative or a substantially identical form, would not be 
likely to contribute to such understanding.
    (iii) The contribution to an understanding of the subject by the 
public likely to result from disclosure: whether disclosure of the 
requested information will contribute to the understanding of a 
reasonably broad audience of persons interested in the subject, as 
opposed to the individual understanding of the requester. A requester's 
expertise in the subject area and ability and intention to effectively 
convey information to the public shall be considered. It shall be 
presumed that a representative of the news media satisfies this 
consideration. It shall be presumed that a requester who merely provides 
information to media sources does not satisfy this consideration.
    (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. The 
public's understanding of the subject in question prior to the 
disclosure must be significantly enhanced by the disclosure.
    (3) To determine whether the second fee waiver requirement is met, 
the FOIA Officer shall consider the following factors:
    (i) The existence and magnitude of a commercial interest: whether 
the requester has a commercial interest that would be furthered by the 
requested disclosure. The FOIA Officer shall consider any commercial 
interest of the requester (with reference to the definition of 
``commercial use request'' in paragraph (b)(1) of this section), or of 
any person on whose behalf the requester may be acting, that would be 
furthered by the requested disclosure.

[[Page 460]]

Requesters shall be given an opportunity to provide explanatory 
information regarding this consideration.
    (ii) The primary interest in disclosure: whether any identified 
commercial interest of the requester is sufficiently large, in 
comparison with the public interest in disclosure, that disclosure is 
``primarily in the commercial interest of the requester.'' A fee waiver 
or reduction is justified if the public interest standard (paragraph 
(k)(1)(i) of this section) is satisfied and the public interest is 
greater than any identified commercial interest in disclosure. The FOIA 
Officer ordinarily shall presume that if a news media requester has 
satisfied the public interest standard, the public interest is the 
primary interest served by disclosure to that requester. Disclosure to 
data brokers or others who merely compile and market Government 
information for direct economic return shall not be presumed to 
primarily serve the public interest.
    (4) If only some of the records to be released satisfy the 
requirements for a fee waiver, a waiver shall be granted for those 
records.
    (5) Requests for the waiver or reduction of fees should address the 
factors listed in paragraphs (k)(2) and (3) of this section, insofar as 
they apply to each request.



                          Subpart B_Privacy Act



Sec. 102.21  Purpose and scope.

    (a) The purpose of this subpart is to establish policies and 
procedures for implementing the Privacy Act of 1974, as amended (5 
U.S.C. 552a) (the Act). The main objectives are to facilitate full 
exercise of rights conferred on individuals under the Act and to ensure 
the protection of privacy as to individuals on whom USPTO maintains 
records in systems of records under the Act. USPTO accepts the 
responsibility to act promptly and in accordance with the Act upon 
receipt of any inquiry, request or appeal from a citizen of the United 
States or an alien lawfully admitted for permanent residence into the 
United States, regardless of the age of the individual. Further, USPTO 
accepts the obligations to maintain only such information on individuals 
as is relevant and necessary to the performance of its lawful functions, 
to maintain that information with such accuracy, relevancy, timeliness, 
and completeness as is reasonably necessary to assure fairness in 
determinations made by USPTO about the individual, to obtain information 
from the individual to the extent practicable, and to take every 
reasonable step to protect that information from unwarranted disclosure. 
USPTO will maintain no record describing how an individual exercises 
rights guaranteed by the First Amendment unless expressly authorized by 
statute or by the individual about whom the record is maintained or 
unless pertinent to and within the scope of an authorized law 
enforcement activity. An individual's name and address will not be sold 
or rented by USPTO unless such action is specifically authorized by law; 
however, this provision shall not be construed to require the 
withholding of names and addresses otherwise permitted to be made 
public.
    (b) This subpart is administered by the Privacy Officer of USPTO.
    (c) Matters outside the scope of this subpart include the following:
    (1) Requests for records which do not pertain to the individual 
making the request, or to the individual about whom the request is made 
if the requester is the parent or guardian of the individual;
    (2) Requests involving information pertaining to an individual which 
is in a record or file but not within the scope of a system of records 
notice published in the Federal Register;
    (3) Requests to correct a record where a grievance procedure is 
available to the individual either by regulation or by provision in a 
collective bargaining agreement with USPTO, and the individual has 
initiated, or has expressed in writing the intention of initiating, such 
grievance procedure. An individual selecting the grievance procedure 
waives the use of the procedures in this subpart to correct or amend a 
record; and,
    (4) Requests for employee-employer services and counseling which 
were routinely granted prior to enactment of the Act, including, but not 
limited

[[Page 461]]

to, test calculations of retirement benefits, explanations of health and 
life insurance programs, and explanations of tax withholding options.
    (d) Any request for records which pertains to the individual making 
the request, or to the individual about whom the request is made if the 
requester is the parent or guardian of the individual, shall be 
processed under the Act and this subpart and under the Freedom of 
Information Act and USPTO's implementing regulations at Subpart A of 
this part, regardless whether the Act or the Freedom of Information Act 
is mentioned in the request.



Sec. 102.22  Definitions.

    (a) All terms used in this subpart which are defined in 5 U.S.C. 
552a shall have the same meaning herein.
    (b) As used in this subpart:
    (1) Act means the ``Privacy Act of 1974, as amended (5 U.S.C. 
552a)''.
    (2) Appeal means a request by an individual to review and reverse an 
initial denial of a request by that individual for correction or 
amendment.
    (3) USPTO means the United States Patent and Trademark Office.
    (4) Inquiry means either a request for general information regarding 
the Act and this subpart or a request by an individual (or that 
individual's parent or guardian) that USPTO determine whether it has any 
record in a system of records which pertains to that individual.
    (5) Person means any human being and also shall include but not be 
limited to, corporations, associations, partnerships, trustees, 
receivers, personal representatives, and public or private 
organizations.
    (6) Privacy Officer means a USPTO employee designated to administer 
this subpart.
    (7) Request for access means a request by an individual or an 
individual's parent or guardian to see a record which is in a particular 
system of records and which pertains to that individual.
    (8) Request for correction or amendment means the request by an 
individual or an individual's parent or guardian that USPTO change 
(either by correction, amendment, addition or deletion) a particular 
record in a system of records which pertains to that individual.



Sec. 102.23  Procedures for making inquiries.

    (a) Any individual, regardless of age, who is a citizen of the 
United States or an alien lawfully admitted for permanent residence into 
the United States may submit an inquiry to USPTO. The inquiry should be 
made either in person at 10B20, Madison Building East, 600 Dulany 
Street, Alexandria, Virginia, or by mail addressed to the Privacy 
Officer, United States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, Virginia 22313-1450, or to the official identified in the 
notification procedures paragraph of the systems of records notice 
published in the Federal Register. If an individual believes USPTO 
maintains a record pertaining to that individual but does not know which 
system of records might contain such a record, the USPTO Privacy Officer 
will provide assistance in person or by mail.
    (b) Inquiries submitted by mail should include the words ``PRIVACY 
ACT INQUIRY'' in capital letters at the top of the letter and on the 
face of the envelope. If the inquiry is for general information 
regarding the Act and this subpart, no particular information is 
required. USPTO reserves the right to require compliance with the 
identification procedures appearing at Sec. 102.24(d) where 
circumstances warrant. If the inquiry is a request that USPTO determine 
whether it has, in a given system of records, a record which pertains to 
the individual, the following information should be submitted:
    (1) Name of individual whose record is sought;
    (2) Individual whose record is sought is either a U.S. citizen or an 
alien lawfully admitted for permanent residence;
    (3) Identifying data that will help locate the record (for example, 
maiden name, occupational license number, period or place of employment, 
etc.);
    (4) Record sought, by description and by record system name, if 
known;
    (5) Action requested (that is, sending information on how to 
exercise rights

[[Page 462]]

under the Act; determining whether requested record exists; gaining 
access to requested record; or obtaining copy of requested record);
    (6) Copy of court guardianship order or minor's birth certificate, 
as provided in Sec. 102.24(f)(3), but only if requester is guardian or 
parent of individual whose record is sought;
    (7) Requester's name (printed), signature, address, and telephone 
number (optional);
    (8) Date; and,
    (9) Certification of request by notary or other official, but only 
if
    (i) Request is for notification that requested record exists, for 
access to requested record or for copy of requested record;
    (ii) Record is not available to any person under 5 U.S.C. 552; and
    (iii) Requester does not appear before an employee of USPTO for 
verification of identity.
    (c) Any inquiry which is not addressed as specified in paragraph (a) 
of this section or which is not marked as specified in paragraph (b) of 
this section will be so addressed and marked by USPTO personnel and 
forwarded immediately to the Privacy Officer. An inquiry which is not 
properly addressed by the individual will not be deemed to have been 
``received'' for purposes of measuring the time period for response 
until actual receipt by the Privacy Officer. In each instance when an 
inquiry so forwarded is received, the Privacy Officer shall notify the 
individual that his or her inquiry was improperly addressed and the date 
the inquiry was received at the proper address.
    (d)(1) Each inquiry received shall be acted upon promptly by the 
Privacy Officer. Every effort will be made to respond within ten working 
days (i.e., excluding Saturdays, Sundays and legal public holidays) of 
the date of receipt. If a response cannot be made within ten working 
days, the Privacy Officer shall send an acknowledgment during that 
period providing information on the status of the inquiry and asking for 
such further information as may be necessary to process the inquiry. The 
first correspondence sent by the Privacy Officer to the requester shall 
contain USPTO's control number assigned to the request, as well as a 
note that the requester should use that number in all future contacts in 
order to facilitate processing. USPTO shall use that control number in 
all subsequent correspondence.
    (2) If the Privacy Officer fails to send an acknowledgment within 
ten working days, as provided above, the requester may ask the General 
Counsel to take corrective action. No failure of the Privacy Officer to 
send an acknowledgment shall confer administrative finality for purposes 
of judicial review.
    (e) An individual shall not be required to state a reason or 
otherwise justify his or her inquiry.
    (f) Special note should be taken of the fact that certain agencies 
are responsible for publishing notices of systems of records having 
Government-wide application to other agencies, including USPTO. The 
agencies known to be publishing these general notices and the types of 
records covered therein appear in an appendix to this part. The 
provisions of this section, and particularly paragraph (a) of this 
section, should be followed in making inquiries with respect to such 
records. Such records in USPTO are subject to the provisions of this 
part to the extent indicated in the appendix to this part. The 
exemptions, if any, determined by an agency publishing a general notice 
shall be invoked and applied by USPTO after consultation, as necessary, 
with that other agency.

[65 FR 52917, Aug. 31, 2000, as amended at 68 FR 14338, Mar. 25, 2003; 
70 FR 10489, Mar. 4, 2005]



Sec. 102.24  Procedures for making requests for records.

    (a) Any individual, regardless of age, who is a citizen of the 
United States or an alien lawfully admitted for permanent residence into 
the United States may submit a request to the USPTO for access to 
records. The request should be made either in person at 10B20, Madison 
Building East, 600 Dulany Street, Alexandria, Virginia, or by mail 
addressed to the Privacy Officer, United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
    (b) Requests submitted by mail should include the words ``PRIVACY 
ACT REQUEST'' in capital letters at

[[Page 463]]

the top of the letter and on the face of the envelope. Any request which 
is not addressed as specified in paragraph (a) of this section or which 
is not marked as specified in this paragraph will be so addressed and 
marked by USPTO personnel and forwarded immediately to the Privacy 
Officer. A request which is not properly addressed by the individual 
will not be deemed to have been ``received'' for purposes of measuring 
time periods for response until actual receipt by the Privacy Officer. 
In each instance when a request so forwarded is received, the Privacy 
Officer shall notify the individual that his or her request was 
improperly addressed and the date when the request was received at the 
proper address.
    (c) If the request follows an inquiry under Sec. 102.23 in 
connection with which the individual's identity was established by 
USPTO, the individual need only indicate the record to which access is 
sought, provide the USPTO control number assigned to the request, and 
sign and date the request. If the request is not preceded by an inquiry 
under Sec. 102.23, the procedures of this section should be followed.
    (d) The requirements for identification of individuals seeking 
access to records are as follows:
    (1) In person. Each individual making a request in person shall be 
required to present satisfactory proof of identity. The means of proof, 
in the order of preference and priority, are:
    (i) A document bearing the individual's photograph (for example, 
driver's license, passport or military or civilian identification card);
    (ii) A document, preferably issued for participation in a federally 
sponsored program, bearing the individual's signature (for example, 
unemployment insurance book, employer's identification card, national 
credit card, and professional, craft or union membership card); and
    (iii) A document bearing neither the photograph nor the signature of 
the individual, preferably issued for participation in a federally 
sponsored program (for example, Medicaid card). In the event the 
individual can provide no suitable documentation of identity, USPTO will 
require a signed statement asserting the individual's identity and 
stipulating that the individual understands the penalty provision of 5 
U.S.C. 552a(i)(3) recited in Sec. 102.32(a). In order to avoid any 
unwarranted disclosure of an individual's records, USPTO reserves the 
right to determine the adequacy of proof of identity offered by any 
individual, particularly when the request involves a sensitive record.
    (2) Not in person. If the individual making a request does not 
appear in person before the Privacy Officer or other employee authorized 
to determine identity, a certification of a notary public or equivalent 
officer empowered to administer oaths must accompany the request under 
the circumstances prescribed in Sec. 102.23(b)(9). The certification in 
or attached to the letter must be substantially in accordance with the 
following text:

City of --------
County of -------- :ss
(Name of individual), who affixed (his) (her) signature below in my 
presence, came before me, a (title), in and for the aforesaid County and 
State, this ------ day of ------, 20--, and established (his) (her) 
identity to my satisfaction.
My commission expires --------.
(Signature)

    (3) Parents of minors and legal guardians. An individual acting as 
the parent of a minor or the legal guardian of the individual to whom a 
record pertains shall establish his or her personal identity in the same 
manner prescribed in either paragraph (d)(1) or (d)(2) of this section. 
In addition, such other individual shall establish his or her identity 
in the representative capacity of parent or legal guardian. In the case 
of the parent of a minor, the proof of identity shall be a certified or 
authenticated copy of the minor's birth certificate. In the case of a 
legal guardian of an individual who has been declared incompetent due to 
physical or mental incapacity or age by a court of competent 
jurisdiction, the proof of identity shall be a certified or 
authenticated copy of the court's order. For purposes of the Act, a 
parent or legal guardian may represent only a living individual, not a 
decedent. A parent or legal guardian may be accompanied during personal 
access to a record by another individual, provided the provisions of 
Sec. 102.25(f) are satisfied.

[[Page 464]]

    (e) When the provisions of this subpart are alleged to impede an 
individual in exercising his or her right to access, USPTO will 
consider, from an individual making a request, alternative suggestions 
regarding proof of identity and access to records.
    (f) An individual shall not be required to state a reason or 
otherwise justify his or her request for access to a record.

[65 FR 52917, Aug. 31, 2000, as amended at 68 FR 14338, Mar. 25, 2003; 
70 FR 10490, Mar. 4, 2005]



Sec. 102.25  Disclosure of requested records to individuals.

    (a)(1) The Privacy Officer shall act promptly upon each request. 
Every effort will be made to respond within ten working days (i.e., 
excluding Saturdays, Sundays, and legal public holidays) of the date of 
receipt. If a response cannot be made within ten working days due to 
unusual circumstances, the Privacy Officer shall send an acknowledgment 
during that period providing information on the status of the request 
and asking for any further information that may be necessary to process 
the request. ``Unusual circumstances'' shall include circumstances in 
which
    (i) A search for and collection of requested records from inactive 
storage, field facilities or other establishments is required;
    (ii) A voluminous amount of data is involved;
    (iii) Information on other individuals must be separated or expunged 
from the particular record; or
    (iv) Consultations with other agencies having a substantial interest 
in the determination of the request are necessary.
    (2) If the Privacy Officer fails to send an acknowledgment within 
ten working days, as provided above in paragraph (a) of this section, 
the requester may ask the General Counsel to take corrective action. No 
failure of the Privacy Officer to send an acknowledgment shall confer 
administrative finality for purposes of judicial review.
    (b) Grant of access--(1) Notification. An individual shall be 
granted access to a record pertaining to him or her, except where the 
provisions of paragraph (g)(1) of this section apply. The Privacy 
Officer will notify the individual of a determination to grant access, 
and provide the following information:
    (i) The methods of access, as set forth in paragraph (b)(2) of this 
section;
    (ii) The place at which the record may be inspected;
    (iii) The earliest date on which the record may be inspected and the 
period of time that the records will remain available for inspection. In 
no event shall the earliest date be later than thirty calendar days from 
the date of notification;
    (iv) The estimated date by which a copy of the record could be 
mailed and the estimate of fees pursuant to Sec. 102.31. In no event 
shall the estimated date be later than thirty calendar days from the 
date of notification;
    (v) The fact that the individual, if he or she wishes, may be 
accompanied by another individual during personal access, subject to the 
procedures set forth in paragraph (f) of this section; and,
    (vi) Any additional requirements needed to grant access to a 
specific record.
    (2) Methods of access. The following methods of access to records by 
an individual may be available depending on the circumstances of a given 
situation:
    (i) Inspection in person may be had in a location specified by the 
Privacy Officer during business hours;
    (ii) Transfer of records to a Federal facility more convenient to 
the individual may be arranged, but only if the Privacy Officer 
determines that a suitable facility is available, that the individual's 
access can be properly supervised at that facility, and that transmittal 
of the records to that facility will not unduly interfere with 
operations of USPTO or involve unreasonable costs, in terms of both 
money and manpower; and
    (iii) Copies may be mailed at the request of the individual, subject 
to payment of the fees prescribed in Sec. 102.31. USPTO, on its own 
initiative, may elect to provide a copy by mail, in which case no fee 
will be charged the individual.
    (c) Access to medical records is governed by the provisions of Sec. 
102.26.

[[Page 465]]

    (d) USPTO will supply such other information and assistance at the 
time of access as to make the record intelligible to the individual.
    (e) USPTO reserves the right to limit access to copies and abstracts 
of original records, rather than the original records. This election 
would be appropriate, for example, when the record is in an automated 
data media such as tape or diskette, when the record contains 
information on other individuals, and when deletion of information is 
permissible under exemptions (for example, 5 U.S.C. 552a(k)(2)). In no 
event shall original records of USPTO be made available to the 
individual except under the immediate supervision of the Privacy Officer 
or the Privacy Officer's designee.
    (f) Any individual who requests access to a record pertaining to 
that individual may be accompanied by another individual of his or her 
choice. ``Accompanied'' includes discussion of the record in the 
presence of the other individual. The individual to whom the record 
pertains shall authorize the presence of the other individual in 
writing. The authorization shall include the name of the other 
individual, a specific description of the record to which access is 
sought, the USPTO control number assigned to the request, the date, and 
the signature of the individual to whom the record pertains. The other 
individual shall sign the authorization in the presence of the Privacy 
Officer. An individual shall not be required to state a reason or 
otherwise justify his or her decision to be accompanied by another 
individual during personal access to a record.
    (g) Initial denial of access--(1) Grounds. Access by an individual 
to a record which pertains to that individual will be denied only upon a 
determination by the Privacy Officer that:
    (i) The record is exempt under Sec. 102.33 or Sec. 102.34, or 
exempt by determination of another agency publishing notice of the 
system of records, as described in Sec. 102.23(f);
    (ii) The record is information compiled in reasonable anticipation 
of a civil action or proceeding;
    (iii) The provisions of Sec. 102.26 pertaining to medical records 
temporarily have been invoked; or
    (iv) The individual has unreasonably failed to comply with the 
procedural requirements of this part.
    (2) Notification. The Privacy Officer shall give notice of denial of 
access to records to the individual in writing and shall include the 
following information:
    (i) The Privacy Officer's name and title or position;
    (ii) The date of the denial;
    (iii) The reasons for the denial, including citation to the 
appropriate section of the Act and this part;
    (iv) The individual's opportunities, if any, for further 
administrative consideration, including the identity and address of the 
responsible official. If no further administrative consideration within 
USPTO is available, the notice shall state that the denial is 
administratively final; and
    (v) If stated to be administratively final within USPTO, the 
individual's right to judicial review provided under 5 U.S.C. 
552a(g)(1), as limited by 5 U.S.C. 552a(g)(5).
    (3) Administrative review. When an initial denial of a request is 
issued by the Privacy Officer, the individual's opportunities for 
further consideration shall be as follows:
    (i) As to denial under paragraph (g)(1)(i) of this section, two 
opportunities for further consideration are available in the 
alternative:
    (A) If the individual contests the application of the exemption to 
the records, review procedures in Sec. 102.25(g)(3)(ii) shall apply; or
    (B) If the individual challenges the exemption itself, the procedure 
is a petition for the issuance, amendment, or repeal of a rule under 5 
U.S.C. 553(e). If the exemption was determined by USPTO, such petition 
shall be filed with the General Counsel. If the exemption was determined 
by another agency (as described in Sec. 102.23(f)), USPTO will provide 
the individual with the name and address of the other agency and any 
relief sought by the individual shall be that provided by the 
regulations of the other agency. Within USPTO, no such denial is 
administratively final until such a petition has been filed by the 
individual and disposed of on the merits by the General Counsel.

[[Page 466]]

    (ii) As to denial under paragraphs (g)(1)(ii) of this section, 
(g)(1)(iv) of this section or (to the limited extent provided in 
paragraph (g)(3)(i)(A) of this section) paragraph (g)(1)(i) of this 
section, the individual may file for review with the General Counsel, as 
indicated in the Privacy Officer's initial denial notification. The 
procedures appearing in Sec. 102.28 shall be followed by both the 
individual and USPTO to the maximum extent practicable.
    (iii) As to denial under paragraph (g)(1)(iii) of this section, no 
further administrative consideration within USPTO is available because 
the denial is not administratively final until expiration of the time 
period indicated in Sec. 102.26(a).
    (h) If a request is partially granted and partially denied, the 
Privacy Officer shall follow the appropriate procedures of this section 
as to the records within the grant and the records within the denial.



Sec. 102.26  Special procedures: Medical records.

    (a) No response to any request for access to medical records by an 
individual will be issued by the Privacy Officer for a period of seven 
working days (i.e., excluding Saturdays, Sundays, and legal public 
holidays) from the date of receipt.
    (b) USPTO has published as a routine use, for all systems of records 
containing medical records, consultations with an individual's physician 
or psychologist if, in the sole judgment of USPTO, disclosure could have 
an adverse effect upon the individual. The mandatory waiting period set 
forth in paragraph (a) of this section will permit exercise of this 
routine use in appropriate cases. USPTO will pay no cost of any such 
consultation.
    (c) In every case of a request by an individual for access to 
medical records, the Privacy Officer shall:
    (1) Inform the individual of the waiting period prescribed in 
paragraph (a) of this section;
    (2) Obtain the name and address of the individual's physician and/or 
psychologist, if the individual consents to give them;
    (3) Obtain specific, written consent for USPTO to consult the 
individual's physician and/or psychologist in the event that USPTO 
believes such consultation is advisable, if the individual consents to 
give such authorization;
    (4) Obtain specific, written consent for USPTO to provide the 
medical records to the individual's physician or psychologist in the 
event that USPTO believes access to the record by the individual is best 
effected under the guidance of the individual's physician or 
psychologist, if the individual consents to give such authorization; and
    (5) Forward the individual's medical record to USPTO's medical 
expert for review and a determination on whether consultation with or 
transmittal of the medical records to the individual's physician or 
psychologist is warranted. If the consultation with or transmittal of 
such records to the individual's physician or psychologist is determined 
to be warranted, USPTO's medical expert shall so consult or transmit. 
Whether or not such a consultation or transmittal occurs, USPTO's 
medical officer shall provide instruction to the Privacy Officer 
regarding the conditions of access by the individual to his or her 
medical records.
    (d) If an individual refuses in writing to give the names and 
consents set forth in paragraphs (c)(2) through (c)(4) of this section 
and USPTO has determined that disclosure could have an adverse effect 
upon the individual, USPTO shall give the individual access to said 
records by means of a copy, provided without cost to the requester, sent 
registered mail return receipt requested.



Sec. 102.27  Procedures for making requests for correction or amendment.

    (a) Any individual, regardless of age, who is a citizen of the 
United States or an alien lawfully admitted for permanent residence into 
the United States may submit a request for correction or amendment to 
USPTO. The request should be made either in person or by mail addressed 
to the Privacy Officer who processed the individual's request for access 
to the record, and to whom is delegated authority to make initial 
determinations on requests for correction or amendment. The office of 
the Privacy Officer is open to the public

[[Page 467]]

between the hours of 9 a.m. and 4 p.m., Monday through Friday (excluding 
legal public holidays).
    (b) Requests submitted by mail should include the words ``PRIVACY 
ACT REQUEST'' in capital letters at the top of the letter and on the 
face of the envelope. Any request which is not addressed as specified in 
paragraph (a) of this section or which is not marked as specified in 
this paragraph will be so addressed and marked by USPTO personnel and 
forwarded immediately to the Privacy Officer. A request which is not 
properly addressed by the individual will not be deemed to have been 
``received'' for purposes of measuring the time period for response 
until actual receipt by the Privacy Officer. In each instance when a 
request so forwarded is received, the Privacy Officer shall notify the 
individual that his or her request was improperly addressed and the date 
the request was received at the proper address.
    (c) Since the request, in all cases, will follow a request for 
access under Sec. 102.25, the individual's identity will be established 
by his or her signature on the request and use of the USPTO control 
number assigned to the request.
    (d) A request for correction or amendment should include the 
following:
    (1) Specific identification of the record sought to be corrected or 
amended (for example, description, title, date, paragraph, sentence, 
line and words);
    (2) The specific wording to be deleted, if any;
    (3) The specific wording to be inserted or added, if any, and the 
exact place at which to be inserted or added; and
    (4) A statement of the basis for the requested correction or 
amendment, with all available supporting documents and materials which 
substantiate the statement. The statement should identify the criterion 
of the Act being invoked, that is, whether the information in the record 
is unnecessary, inaccurate, irrelevant, untimely or incomplete.



Sec. 102.28  Review of requests for correction or amendment.

    (a)(1)(i) Not later than ten working days (i.e., excluding 
Saturdays, Sundays and legal public holidays) after receipt of a request 
to correct or amend a record, the Privacy Officer shall send an 
acknowledgment providing an estimate of time within which action will be 
taken on the request and asking for such further information as may be 
necessary to process the request. The estimate of time may take into 
account unusual circumstances as described in Sec. 102.25(a). No 
acknowledgment will be sent if the request can be reviewed, processed, 
and the individual notified of the results of review (either compliance 
or denial) within the ten working days. Requests filed in person will be 
acknowledged in writing at the time submitted.
    (ii) If the Privacy Officer fails to send the acknowledgment within 
ten working days, as provided in paragraph (a)(1)(i) of this section, 
the requester may ask the General Counsel to take corrective action. No 
failure of the Privacy Officer to send an acknowledgment shall confer 
administrative finality for purposes of judicial review.
    (2) Promptly after acknowledging receipt of a request, or after 
receiving such further information as might have been requested, or 
after arriving at a decision within the ten working days, the Privacy 
Officer shall either:
    (i) Make the requested correction or amendment and advise the 
individual in writing of such action, providing either a copy of the 
corrected or amended record or a statement as to the means whereby the 
correction or amendment was effected in cases where a copy cannot be 
provided (for example, erasure of information from a record maintained 
only in magnetically recorded computer files); or
    (ii) Inform the individual in writing that his or her request is 
denied and provide the following information:
    (A) The Privacy Officer's name and title or position;
    (B) The date of the denial;
    (C) The reasons for the denial, including citation to the 
appropriate sections of the Act and this subpart; and

[[Page 468]]

    (D) The procedures for appeal of the denial as set forth in Sec. 
102.29, including the address of the General Counsel.
    (3) The term promptly in this section means within thirty working 
days (i.e., excluding Saturdays, Sundays, and legal public holidays). If 
the Privacy Officer cannot make the determination within thirty working 
days, the individual will be advised in writing of the reason therefor 
and of the estimated date by which the determination will be made.
    (b) Whenever an individual's record is corrected or amended pursuant 
to a request by that individual, the Privacy Officer shall be 
responsible for notifying all persons and agencies to which the 
corrected or amended portion of the record had been disclosed prior to 
its correction or amendment, if an accounting of such disclosure 
required by the Act was made. The notification shall require a recipient 
agency maintaining the record to acknowledge receipt of the 
notification, to correct or amend the record, and to apprise any agency 
or person to which it had disclosed the record of the substance of the 
correction or amendment.
    (c) The following criteria will be considered by the Privacy Officer 
in reviewing a request for correction or amendment:
    (1) The sufficiency of the evidence submitted by the individual;
    (2) The factual accuracy of the information;
    (3) The relevance and necessity of the information in terms of 
purpose for which it was collected;
    (4) The timeliness and currency of the information in light of the 
purpose for which it was collected;
    (5) The completeness of the information in terms of the purpose for 
which it was collected;
    (6) The degree of risk that denial of the request could unfairly 
result in determinations adverse to the individual;
    (7) The character of the record sought to be corrected or amended; 
and
    (8) The propriety and feasibility of complying with the specific 
means of correction or amendment requested by the individual.
    (d) USPTO will not undertake to gather evidence for the individual, 
but does reserve the right to verify the evidence which the individual 
submits.
    (e) Correction or amendment of a record requested by an individual 
will be denied only upon a determination by the Privacy Officer that:
    (1) The individual has failed to establish, by a preponderance of 
the evidence, the propriety of the correction or amendment in light of 
the criteria set forth in paragraph (c) of this section;
    (2) The record sought to be corrected or amended is part of the 
official record in a terminated judicial, quasi-judicial, or quasi-
legislative proceeding to which the individual was a party or 
participant;
    (3) The information in the record sought to be corrected or amended, 
or the record sought to be corrected or amended, is the subject of a 
pending judicial, quasi-judicial, or quasi-legislative proceeding to 
which the individual is a party or participant;
    (4) The correction or amendment would violate a duly enacted statute 
or promulgated regulation; or
    (5) The individual has unreasonably failed to comply with the 
procedural requirements of this part.
    (f) If a request is partially granted and partially denied, the 
Privacy Officer shall follow the appropriate procedures of this section 
as to the records within the grant and the records within the denial.



Sec. 102.29  Appeal of initial adverse determination on correction or amendment.

    (a) When a request for correction or amendment has been denied 
initially under Sec. 102.28, the individual may submit a written appeal 
within thirty working days (i.e., excluding Saturdays, Sundays and legal 
public holidays) after the date of the initial denial. When an appeal is 
submitted by mail, the postmark is conclusive as to timeliness.
    (b) An appeal should be addressed to the General Counsel, United 
States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 
22313-1450. An appeal should include the words ``PRIVACY APPEAL'' in 
capital letters at the top of the letter and on the

[[Page 469]]

face of the envelope. An appeal not addressed and marked as provided 
herein will be so marked by USPTO personnel when it is so identified and 
will be forwarded immediately to the General Counsel. An appeal which is 
not properly addressed by the individual will not be deemed to have been 
``received'' for purposes of measuring the time periods in this section 
until actual receipt by the General Counsel. In each instance when an 
appeal so forwarded is received, the General Counsel shall notify the 
individual that his or her appeal was improperly addressed and the date 
when the appeal was received at the proper address.
    (c) The individual's appeal shall include a statement of the reasons 
why the initial denial is believed to be in error and USPTO's control 
number assigned to the request. The appeal shall be signed by the 
individual. The record which the individual requests be corrected or 
amended and all correspondence between the Privacy Officer and the 
requester will be furnished by the Privacy Officer who issued the 
initial denial. Although the foregoing normally will comprise the entire 
record on appeal, the General Counsel may seek additional information 
necessary to assure that the final determination is fair and equitable 
and, in such instances, disclose the additional information to the 
individual to the greatest extent possible, and provide an opportunity 
for comment thereon.
    (d) No personal appearance or hearing on appeal will be allowed.
    (e) The General Counsel shall act upon the appeal and issue a final 
determination in writing not later than thirty working days (i.e., 
excluding Saturdays, Sundays and legal public holidays) from the date on 
which the appeal is received, except that the General Counsel may extend 
the thirty days upon deciding that a fair and equitable review cannot be 
made within that period, but only if the individual is advised in 
writing of the reason for the extension and the estimated date by which 
a final determination will issue. The estimated date should not be later 
than the sixtieth working day after receipt of the appeal unless unusual 
circumstances, as described in Sec. 102.25(a), are met.
    (f) If the appeal is determined in favor of the individual, the 
final determination shall include the specific corrections or amendments 
to be made and a copy thereof shall be transmitted promptly both to the 
individual and to the Privacy Officer who issued the initial denial. 
Upon receipt of such final determination, the Privacy Officer promptly 
shall take the actions set forth in Sec. 102.28(a)(2)(i) and (b).
    (g) If the appeal is denied, the final determination shall be 
transmitted promptly to the individual and state the reasons for the 
denial. The notice of final determination also shall inform the 
individual of the following:
    (1) The right of the individual under the Act to file a concise 
statement of reasons for disagreeing with the final determination. The 
statement ordinarily should not exceed one page and USPTO reserves the 
right to reject a statement of excessive length. Such a statement shall 
be filed with the General Counsel. It should provide the USPTO control 
number assigned to the request, indicate the date of the final 
determination and be signed by the individual. The General Counsel shall 
acknowledge receipt of such statement and inform the individual of the 
date on which it was received.
    (2) The facts that any such disagreement statement filed by the 
individual will be noted in the disputed record, that the purposes and 
uses to which the statement will be put are those applicable to the 
record in which it is noted, and that a copy of the statement will be 
provided to persons and agencies to which the record is disclosed 
subsequent to the date of receipt of such statement;
    (3) The fact that USPTO will append to any such disagreement 
statement filed by the individual, a copy of the final determination or 
summary thereof which also will be provided to persons and agencies to 
which the disagreement statement is disclosed; and,
    (4) The right of the individual to judicial review of the final 
determination under 5 U.S.C. 552a(g)(1)(A), as limited by 5 U.S.C. 
552a(g)(5).
    (h) In making the final determination, the General Counsel shall 
employ the criteria set forth in Sec. 102.28(c) and

[[Page 470]]

shall deny an appeal only on the grounds set forth in Sec. 102.28(e).
    (i) If an appeal is partially granted and partially denied, the 
General Counsel shall follow the appropriate procedures of this section 
as to the records within the grant and the records within the denial.
    (j) Although a copy of the final determination or a summary thereof 
will be treated as part of the individual's record for purposes of 
disclosure in instances where the individual has filed a disagreement 
statement, it will not be subject to correction or amendment by the 
individual.
    (k) The provisions of paragraphs (g)(1) through (g)(3) of this 
section satisfy the requirements of 5 U.S.C. 552a(e)(3).

[65 FR 52917, Aug. 31, 2000, as amended at 68 FR 14339, Mar. 25, 2003]



Sec. 102.30  Disclosure of record to person other than the individual 
to whom it pertains.

    (a) USPTO may disclose a record pertaining to an individual to a 
person other than the individual to whom it pertains only in the 
following instances:
    (1) Upon written request by the individual, including authorization 
under Sec. 102.25(f);
    (2) With the prior written consent of the individual;
    (3) To a parent or legal guardian under 5 U.S.C. 552a(h);
    (4) When required by the Act and not covered explicitly by the 
provisions of 5 U.S.C. 552a(b); and
    (5) When permitted under 5 U.S.C. 552a(b)(1) through (12), which 
read as follows: \1\
---------------------------------------------------------------------------

    \1\ 5 U.S.C. 552a(b)(4) has no application within USPTO.
---------------------------------------------------------------------------

    (i) To those officers and employees of the agency which maintains 
the record who have a need for the record in the performance of their 
duties;
    (ii) Required under 5 U.S.C. 552 ;
    (iii) For a routine use as defined in 5 U.S.C. 552a(a)(7) and 
described under 5 U.S.C. 552a(e)(4)(D);
    (iv) To the Bureau of the Census for purposes of planning or 
carrying out a census or survey or related activity pursuant to the 
provisions of Title 13;
    (v) To a recipient who has provided the agency with advance adequate 
written assurance that the record will be used solely as a statistical 
research or reporting record, and the record is to be transferred in a 
form that is not individually identifiable;
    (vi) To the National Archives and Records Administration as a record 
which has sufficient historical or other value to warrant its continued 
preservation by the United States Government, or for evaluation by the 
Archivist of the United States or the designee of the Archivist to 
determine whether the record has such value;
    (vii) To another agency or to an instrumentality of any governmental 
jurisdiction within or under the control of the United States for a 
civil or criminal law enforcement activity if the activity is authorized 
by law, and if the head of the agency or instrumentality has made a 
written request to the agency which maintains the record specifying the 
particular portion desired and the law enforcement activity for which 
the record is sought;
    (viii) To a person pursuant to a showing of compelling circumstances 
affecting the health or safety of an individual if upon such disclosure 
notification is transmitted to the last known address of such 
individual;
    (ix) To either House of Congress, or, to the extent of matter within 
its jurisdiction, any committee or subcommittee thereof, any joint 
committee of Congress or subcommittee of any such joint committee;
    (x) To the Comptroller General, or any of his authorized 
representatives, in the course of the performance of the duties of the 
General Accounting Office;
    (xi) Pursuant to the order of a court of competent jurisdiction; or
    (xii) To a consumer reporting agency in accordance with section 
3711(e) of Title 31.
    (b) The situations referred to in paragraph (a)(4) of this section 
include the following:
    (1) 5 U.S.C. 552a(c)(4) requires dissemination of a corrected or 
amended record or notation of a disagreement statement by USPTO in 
certain circumstances;

[[Page 471]]

    (2) 5 U.S.C. 552a(d) requires disclosure of records to the 
individual to whom they pertain, upon request; and
    (3) 5 U.S.C. 552a(g) authorizes civil action by an individual and 
requires disclosure by USPTO to the court.
    (c) The Privacy Officer shall make an accounting of each disclosure 
by him of any record contained in a system of records in accordance with 
5 U.S.C. 552a(c) (1) and (2). Except for a disclosure made under 5 
U.S.C. 552a(b)(7), the Privacy Officer shall make such accounting 
available to any individual, insofar as it pertains to that individual, 
on request submitted in accordance with Sec. 102.24. The Privacy 
Officer shall make reasonable efforts to notify any individual when any 
record in a system of records is disclosed to any person under 
compulsory legal process, promptly upon being informed that such process 
has become a matter of public record.



Sec. 102.31  Fees.

    The only fees to be charged to or collected from an individual under 
the provisions of this part are for duplication of records at the 
request of the individual. The Privacy Officer shall charge fees for 
duplication of records under the Act in the same way in which they 
charge duplication fees under Sec. 102.11, except as provided in this 
section.
    (a) No fees shall be charged or collected for the following: Search 
for and retrieval of the records; review of the records; copying at the 
initiative of USPTO without a request from the individual; 
transportation of records and personnel; and first-class postage.
    (b) It is the policy of USPTO to provide an individual with one copy 
of each record corrected or amended pursuant to his or her request 
without charge as evidence of the correction or amendment.
    (c) As required by the United States Office of Personnel Management 
in its published regulations implementing the Act, USPTO will charge no 
fee for a single copy of a personnel record covered by that agency's 
Government-wide published notice of systems of records.



Sec. 102.32  Penalties.

    (a) The Act provides, in pertinent part:

    Any person who knowingly and willfully requests or obtains any 
record concerning an individual from an agency under false pretenses 
shall be guilty of a misdemeanor and fined not more than $5,000. (5 
U.S.C. 552a(i)(3)).

    (b) A person who falsely or fraudulently attempts to obtain records 
under the Act also may be subject to prosecution under such other 
criminal statutes as 18 U.S.C. 494, 495 and 1001.



Sec. 102.33  General exemptions.

    (a) Individuals may not have access to records maintained by USPTO 
but which were provided by another agency which has determined by 
regulation that such information is subject to general exemption under 5 
U.S.C. 552a(j). If such exempt records are within a request for access, 
USPTO will advise the individual of their existence and of the name and 
address of the source agency. For any further information concerning the 
record and the exemption, the individual must contact that source 
agency.
    (b) The general exemption determined to be necessary and proper with 
respect to systems of records maintained by USPTO, including the parts 
of each system to be exempted, the provisions of the Act from which they 
are exempted, and the justification for the exemption, is as follows: 
Investigative Records--Contract and Grant Frauds and Employee Criminal 
Misconduct--COMMERCE/DEPT.--12. Pursuant to 5 U.S.C. 552a(j)(2), these 
records are hereby determined to be exempt from all provisions of the 
Act, except 5 U.S.C. 552a (b), (c) (1) and (2), (e)(4) (A) through (F), 
(e) (6), (7), (9), (10), and (11), and (i). These exemptions are 
necessary to ensure the proper functions of the law enforcement 
activity, to protect confidential sources of information, to fulfill 
promises of confidentiality, to prevent interference with law 
enforcement proceedings, to avoid the disclosure of investigative 
techniques, to avoid the endangering of law enforcement personnel, to 
avoid premature disclosure of the knowledge of criminal activity and the 
evidentiary

[[Page 472]]

bases of possible enforcement actions, and to maintain the integrity of 
the law enforcement process.



Sec. 102.34  Specific exemptions.

    (a)(1) Some systems of records under the Act which are maintained by 
USPTO contain, from time-to-time, material subject to the exemption 
appearing at 5 U.S.C. 552a(k)(1), relating to national defense and 
foreign policy materials. The systems of records published in the 
Federal Register by USPTO which are within this exemption are: COMMERCE/
PAT-TM-6, COMMERCE/PAT-TM-7, COMMERCE/PAT-TM-8, COMMERCE/PAT-TM-9.
    (2) USPTO hereby asserts a claim to exemption of such materials 
wherever they might appear in such systems of records, or any systems of 
records, at present or in the future. The materials would be exempt from 
5 U.S.C. 552a (c)(3), (d), (e)(1), (e)(4) (G), (H), and (I), and (f) to 
protect materials required by Executive order to be kept secret in the 
interest of the national defense and foreign policy.
    (b) The specific exemptions determined to be necessary and proper 
with respect to systems of records maintained by USPTO, including the 
parts of each system to be exempted, the provisions of the Act from 
which they are exempted, and the justification for the exemption, are as 
follows:
    (1)(i) Exempt under 5 U.S.C. 552a(k)(2). The systems of records 
exempt (some only conditionally), the sections of the Act from which 
exempted, and the reasons therefor are as follows:
    (A) Investigative Records--Contract and Grant Frauds and Employee 
Criminal Misconduct--COMMERCE/DEPT-12, but only on condition that the 
general exemption claimed in Sec. 102.33(b)(3) is held to be invalid;
    (B) Investigative Records--Persons Within the Investigative 
Jurisdiction of USPTO--COMMERCE/DEPT-13;
    (C) Litigation, Claims and Administrative Proceeding Records--
COMMERCE/DEPT-14;
    (D) Attorneys and Agents Registered to Practice Before the Office--
COMMERCE/PAT-TM-1;
    (E) Complaints, Investigations and Disciplinary Proceedings Relating 
to Registered Patent Attorneys and Agents--COMMERCE/PAT-TM-2; and
    (F) Non-Registered Persons Rendering Assistance to Patent 
Applicants--COMMERCE/PAT-TM-5.
    (ii) The foregoing are exempted from 5 U.S.C. 552a (c)(3), (d), 
(e)(1), (e)(4)(G), (H), and (I), and (f). The reasons for asserting the 
exemption are to prevent subjects of investigation from frustrating the 
investigatory process, to insure the proper functioning and integrity of 
law enforcement activities, to prevent disclosure of investigative 
techniques, to maintain the ability to obtain necessary information, to 
fulfill commitments made to sources to protect their identities and the 
confidentiality of information and to avoid endangering these sources 
and law enforcement personnel. Special note is taken of the fact that 
the proviso clause in this exemption imports due process and procedural 
protections for the individual. The existence and general character of 
the information exempted will be made known to the individual to whom it 
pertains.
    (2)(i) Exempt under 5 U.S.C. 552a(k)(5). The systems of records 
exempt (some only conditionally), the sections of the act from which 
exempted, and the reasons therefor are as follows:
    (A) Investigative Records--Contract and Grant Frauds and Employee 
Criminal Misconduct--COMMERCE/DEPT-12, but only on condition that the 
general exemption claimed in Sec. 102.33(b)(3) is held to be invalid;
    (B) Investigative Records--Persons Within the Investigative 
Jurisdiction of USPTO--COMMERCE/DEPT-13; and
    (C) Litigation, Claims, and Administrative Proceeding Records--
COMMERCE/DEPT-14.
    (ii) The foregoing are exempted from 5 U.S.C. 552a (c)(3), (d), 
(e)(1), (e)(4) (G), (H), and (I), and (f). The reasons for asserting the 
exemption are to maintain the ability to obtain candid and necessary 
information, to fulfill commitments made to sources to protect the 
confidentiality of information, to avoid endangering these sources and, 
ultimately, to facilitate proper selection or continuance of the best 
applicants

[[Page 473]]

or persons for a given position or contract. Special note is made of the 
limitation on the extent to which this exemption may be asserted. The 
existence and general character of the information exempted will be made 
known to the individual to whom it pertains.
    (c) At the present time, USPTO claims no exemption under 5 U.S.C. 
552a(k) (3), (4), (6) and (7).



 Sec. Appendix to Part 102--Systems of Records Noticed by Other Federal 
 Agencies \1\ and Applicable to USPTO Records and Applicability of This 
                              Part Thereto

------------------------------------------------------------------------
          Category of records                  Other federal agency
------------------------------------------------------------------------
Federal Personnel Records..............  Office of Personnel Management.
                                          \2\
Federal Employee Compensation Act        Department of Labor. \3\
 Program.
Equal Employment Opportunity Appeal      Equal Employment Opportunity
 Complaints.                              Commission. \4\
Formal Complaints/Appeals of Adverse     Merit Systems Protection Board.
 Personnel Actions.                       \5\
------------------------------------------------------------------------
\1\ Other than systems of records noticed by the Department of Commerce.
  Where the system of records applies only to USPTO, these regulations
  apply. Where the system of records applies generally to components of
  the Department of Commerce, the regulations of that department attach
  at the point of any denial for access or for correction or amendment.
\2\ The provisions of this part do not apply to these records covered by
  notices of systems of records published by the Office of Personnel
  Management for all agencies. The regulations of OPM alone apply.
\3\ The provisions of this part apply only initially to these records
  covered by notices of systems of records published by the U.S.
  Department of Labor for all agencies. The regulations of that
  department attach at the point of any denial for access or for
  correction or amendment.
\4\ The provisions of this part do not apply to these records covered by
  notices of systems of records published by the Equal Employment
  Opportunity Commission for all agencies. The regulations of the
  Commission alone apply.
\5\ The provisions of this part do not apply to these records covered by
  notices of systems of records published by the Merit Systems
  Protection Board for all agencies. The regulations of the Board alone
  apply.



PART 104_LEGAL PROCESSES--Table of Contents




                      Subpart A_General Provisions

Sec.
104.1 Definitions.
104.2 Address for mail and service; telephone number.
104.3 Waiver of rules.
104.4 Relationship of this Part to the Federal Rules of Civil and 
          Criminal Procedure.

                      Subpart B_Service of Process

104.11 Scope and purpose.
104.12 Acceptance of Service of Process.

   Subpart C_Employee Testimony and Production of Documents in Legal 
                               Proceedings

104.21 Scope and purpose.
104.22 Demand for testimony or production of documents.
104.23 Expert or opinion testimony.
104.24 Demands or requests in legal proceedings for records protected by 
          confidentiality statutes.

                   Subpart D_Employee Indemnification

104.31 Scope.
104.32 Procedure for requesting indemnification.

                          Subpart E_Tort Claims

104.41 Procedure for filing claims.
104.42 Finality of settlement or denial of claims.

    Authority: 35 U.S.C. 2(b)(2), 10, 23, 25; 44 U.S.C. 3101, except as 
otherwise indicated.

    Source: 66 FR 47389, Sept. 12, 2001, unless otherwise noted.



                      Subpart A_General Provisions



Sec. 104.1  Definitions.

    Demand means a request, order, or subpoena for testimony or 
documents for use in a legal proceeding.
    Director means the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent and Trademark Office 
(see Sec. 1.9(j)).
    Document means any record, paper, and other property held by the 
Office, including without limitation, official letters, telegrams, 
memoranda, reports, studies, calendar and diary entries, maps, graphs, 
pamphlets, notes, charts, tabulations, analyses, statistical or 
informational accumulations, any kind of summaries of meetings and 
conversations, film impressions, magnetic tapes, and sound or mechanical 
reproductions.

[[Page 474]]

    Employee means any current or former officer or employee of the 
Office.
    Legal proceeding means any pretrial, trial, and posttrial stages of 
existing or reasonably anticipated judicial or administrative actions, 
hearings, investigations, or similar proceedings before courts, 
commissions, boards or other tribunals, foreign or domestic. This phrase 
includes all phases of discovery as well as responses to formal or 
informal requests by attorneys or others involved in legal proceedings.
    Office means the United States Patent and Trademark Office, 
including any operating unit in the United States Patent and Trademark 
Office, and its predecessors, the Patent Office and the Patent and 
Trademark Office.
    Official business means the authorized business of the Office.
    General Counsel means the General Counsel of the Office.
    Testimony means a statement in any form, including personal 
appearances before a court or other legal tribunal, interviews, 
depositions, telephonic, televised, or videotaped statements or any 
responses given during discovery or similar proceedings, which response 
would involve more than the production of documents, including a 
declaration under 35 U.S.C. 25 or 28 U.S.C. 1746.
    United States means the Federal Government, its departments and 
agencies, individuals acting on behalf of the Federal Government, and 
parties to the extent they are represented by the United States.

[66 FR 47389, Sept. 12, 2001, as amended at 68 FR 14339, Mar. 25, 2003]



Sec. 104.2  Address for mail and service; telephone number.

    (a) Mail under this part should be addressed to General Counsel, 
United States Patent and Trademark Office, P.O. Box 15667, Arlington, VA 
22215.
    (b) Service by hand should be made during business hours to the 
Office of the General Counsel, 10B20, Madison Building East, 600 Dulany 
Street, Alexandria, Virginia.
    (c) The Office of the General Counsel may be reached by telephone at 
571-272-7000 during business hours.

[66 FR 47389, Sept. 12, 2001, as amended at 70 FR 10490, Mar. 4, 2005]



Sec. 104.3  Waiver of rules.

    In extraordinary situations, when the interest of justice requires, 
the General Counsel may waive or suspend the rules of this part, sua 
sponte or on petition of an interested party to the Director, subject to 
such requirements as the General Counsel may impose. Any such petition 
must be accompanied by a petition fee of $130.00.

[69 FR 56546, Sept. 21, 2004]



Sec. 104.4  Relationship of this Part to the Federal Rules of Civil 
or Criminal Procedure.

    Nothing in this part waives or limits any requirement under the 
Federal Rules of Civil or Criminal Procedure.



                      Subpart B_Service of Process



Sec. 104.11  Scope and purpose.

    (a) This subpart sets forth the procedures to be followed when a 
summons and complaint is served on the Office or on the Director or an 
employee in his or her official capacity.
    (b) This subpart is intended, and should be construed, to ensure the 
efficient administration of the Office and not to impede any legal 
proceeding.
    (c) This subpart does not apply to subpoenas, the procedures for 
which are set out in subpart C.
    (d) This subpart does not apply to service of process made on an 
employee personally on matters not related to official business of the 
Office or to the official responsibilities of the employee.



Sec. 104.12  Acceptance of service of process.

    (a) Any summons and complaint to be served in person or by 
registered or certified mail or as otherwise authorized by law on the 
Office, on the Director, or on an employee in his or her official 
capacity, shall be served as indicated in Sec. 104.2.
    (b) Any employee of the Office served with a summons and complaint 
shall immediately notify, and shall deliver the summons and complaint 
to, the Office of the General Counsel.
    (c) Any employee receiving a summons and complaint shall note on the 
summons and complaint the date,

[[Page 475]]

hour, and place of service and whether service was by hand or by mail.
    (d) When a legal proceeding is brought to hold an employee 
personally liable in connection with an action taken in the conduct of 
official business, rather than liable in an official capacity, the 
employee by law is to be served personally with process. See Fed. R. 
Civ. P. 4(e). An employee sued personally for an action taken in the 
conduct of official business shall immediately notify and deliver a copy 
of the summons and complaint to the General Counsel.
    (e) An employee sued personally in connection with official business 
may be represented by the Department of Justice at its discretion (28 
CFR 50.15 and 50.16).
    (f) The Office will only accept service of process for an employee 
in the employee's official capacity.



   Subpart C_Employee Testimony and Production of Documents in Legal 
                               Proceedings



Sec. 104.21  Scope and purpose.

    (a) This subpart sets forth the policies and procedures of the 
Office regarding the testimony of employees as witnesses in legal 
proceedings and the production or disclosure of information contained in 
Office documents for use in legal proceedings pursuant to a demand.
    (b) Exceptions. This subpart does not apply to any legal proceeding 
in which:
    (1) An employee is to testify regarding facts or events that are 
unrelated to official business; or
    (2) A former employee is to testify as an expert in connection with 
a particular matter in which the former employee did not participate 
personally while at the Office.



Sec. 104.22  Demand for testimony or production of documents.

    (a) Whenever a demand for testimony or for the production of 
documents is made upon an employee, the employee shall immediately 
notify the Office of the General Counsel at the telephone number or 
addresses in Sec. 104.2 and make arrangements to send the subpoena to 
the General Counsel promptly.
    (b) An employee may not give testimony, produce documents, or answer 
inquiries from a person not employed by the Office regarding testimony 
or documents subject to a demand or a potential demand under the 
provisions of this subpart without the approval of the General Counsel. 
The General Counsel may authorize the provision of certified copies not 
otherwise available under Part 1 of this title subject to payment of 
applicable fees under Sec. 1.19.
    (c)(1) Demand for testimony or documents. A demand for the testimony 
of an employee under this subpart shall be addressed to the General 
Counsel as indicated in Sec. 104.2.
    (2) Subpoenas. A subpoena for employee testimony or for a document 
shall be served in accordance with the Federal Rules of Civil or 
Criminal Procedure or applicable state procedure, and a copy of the 
subpoena shall be sent to the General Counsel as indicated in Sec. 
104.2.
    (3) Affidavits. Except when the United States is a party, every 
demand shall be accompanied by an affidavit or declaration under 28 
U.S.C. 1746 or 35 U.S.C. 25(b) setting forth the title of the legal 
proceeding, the forum, the requesting party's interest in the legal 
proceeding, the reason for the demand, a showing that the desired 
testimony or document is not reasonably available from any other source, 
and, if testimony is requested, the intended use of the testimony, a 
general summary of the desired testimony, and a showing that no document 
could be provided and used in lieu of testimony.
    (d) Failure of the attorney to cooperate in good faith to enable the 
General Counsel to make an informed determination under this subpart may 
serve as a basis for a determination not to comply with the demand.
    (e) A determination under this subpart to comply or not to comply 
with a demand is not a waiver or an assertion of any other ground for 
noncompliance, including privilege, lack of relevance, or technical 
deficiency.
    (f) Noncompliance. If the General Counsel makes a determination not 
to comply, he or she will seek Department of Justice representation for 
the employee and will attempt to have the

[[Page 476]]

subpoena modified or quashed. If Department of Justice representation 
cannot be arranged, the employee should appear at the time and place set 
forth in the subpoena. In such a case, the employee should produce a 
copy of these rules and state that the General Counsel has advised the 
employee not to provide the requested testimony nor to produce the 
requested document. If a legal tribunal rules that the demand in the 
subpoena must be complied with, the employee shall respectfully decline 
to comply with the demand, citing United States ex rel. Touhy v. Ragen, 
340 U.S. 462 (1951).



Sec. 104.23  Expert or opinion testimony.

    (a)(1) If the General Counsel authorizes an employee to give 
testimony in a legal proceeding not involving the United States, the 
testimony, if otherwise proper, shall be limited to facts within the 
personal knowledge of the employee. Employees, with or without 
compensation, shall not provide expert testimony in any legal 
proceedings regarding Office information, subjects, or activities except 
on behalf of the United States or a party represented by the United 
States Department of Justice.
    (2) The General Counsel may authorize an employee to appear and give 
the expert or opinion testimony upon the requester showing, pursuant to 
Sec. 104.3 of this part, that exceptional circumstances warrant such 
testimony and that the anticipated testimony will not be adverse to the 
interest of the Office or the United States.
    (b)(1) If, while testifying in any legal proceeding, an employee is 
asked for expert or opinion testimony regarding Office information, 
subjects, or activities, which testimony has not been approved in 
advance in writing in accordance with the regulations in this subpart, 
the witness shall:
    (i) Respectfully decline to answer on the grounds that such expert 
or opinion testimony is forbidden by this subpart;
    (ii) Request an opportunity to consult with the General Counsel 
before giving such testimony; and
    (iii) Explain that upon such consultation, approval for such 
testimony may be provided.
    (2) If the tribunal conducting the proceeding then orders the 
employee to provide expert or opinion testimony regarding Office 
information, subjects, or activities without the opportunity to consult 
with the General Counsel, the employee shall respectfully refuse to 
provide such testimony, citing United States ex rel. Touhy v. Ragen, 340 
U.S. 462 (1951).
    (c) If an employee is unaware of the regulations in this subpart and 
provides expert or opinion testimony regarding Office information, 
subjects, or activities in a legal proceeding without the aforementioned 
consultation, the employee shall, as soon after testifying as possible, 
inform the General Counsel that such testimony was given and provide a 
written summary of the expert or opinion testimony provided.
    (d) Proceeding where the United States is a party. In a proceeding 
in which the United States is a party or is representing a party, an 
employee may not testify as an expert or opinion witness for any party 
other than the United States.



Sec. 104.24  Demands or requests in legal proceedings for records 
protected by confidentiality statutes.

    Demands in legal proceedings for the production of records, or for 
the testimony of employees regarding information protected by the 
confidentiality provisions of the Patent Act (35 U.S.C. 122), the 
Privacy Act (5 U.S.C. 552a), the Trade Secrets Act (18 U.S.C. 1905), or 
any other confidentiality statute, must satisfy the requirements for 
disclosure set forth in those statutes and associated rules before the 
records may be provided or testimony given.



                   Subpart D_Employee Indemnification



Sec. 104.31  Scope.

    The procedure in this subpart shall be followed if a civil action or 
proceeding is brought, in any court, against an employee (including the 
employee's estate) for personal injury, loss of property, or death, 
resulting from the employee's activities while acting within the scope 
of the employee's office or employment. When the employee is 
incapacitated or deceased,

[[Page 477]]

actions required of an employee should be performed by the employee's 
executor, administrator, or comparable legal representative.



Sec. 104.32  Procedure for requesting indemnification.

    (a) After being served with process or pleadings in such an action 
or proceeding, the employee shall within five (5) calendar days of 
receipt, deliver to the General Counsel all such process and pleadings 
or an attested true copy thereof, together with a fully detailed report 
of the circumstances of the incident giving rise to the court action or 
proceeding.
    (b)(1) An employee may request indemnification to satisfy a verdict, 
judgment, or award entered against that employee only if the employee 
has timely satisfied the requirements of paragraph (a) of this section.
    (2) No request for indemnification will be considered unless the 
employee has submitted a written request through the employee's 
supervisory chain to the General Counsel with:
    (i) Appropriate documentation, including copies of the verdict, 
judgment, appeal bond, award, or settlement proposal;
    (ii) The employee's explanation of how the employee was acting 
within the scope of the employee's employment; and
    (iii) The employee's statement of whether the employee has insurance 
or any other source of indemnification.



                          Subpart E_Tort Claims

    Authority: 28 U.S.C. 2672; 35 U.S.C. 2(b)(2); 44 U.S.C. 3101; 28 CFR 
Part 14.



Sec. 104.41  Procedure for filing claims.

    Administrative claims against the Office filed pursuant to the 
administrative claims provision of the Federal Tort Claims Act (28 
U.S.C. 2672) and the corresponding Department of Justice regulations (28 
CFR Part 14) shall be filed with the General Counsel as indicated in 
Sec. 104.2.



Sec. 104.42  Finality of settlement or denial of claims.

    Only a decision of the Director or the General Counsel regarding 
settlement or denial of any claim under this subpart may be considered 
final for the purpose of judicial review.

[[Page 478]]



              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. 2(b)(2); E.O. 12504, 50 FR 4849; 3 CFR, 1985 
Comp., p. 335.

    Source: 53 FR 24447, June 29, 1988, unless otherwise noted.

    Editorial Note: Nomenclature changes to part 150 appear at 68 FR 
14339, Mar. 25, 2003.



Sec. 150.1  Definitions.

    (a) Director means the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent and Trademark Office 
(see Sec. 1.9(j)).
    (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 an 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.

[53 FR 24447, June 29, 1988, as amended at 68 Fr 14339, Mar. 25, 2003]



Sec. 150.2  Initiation of evaluation.

    (a) The Director 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 Director 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 Director.
    (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.

[[Page 479]]



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 Director may 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 Director receives the request of a foreign government 
for a section 902 proclamation, or after a determination is made by the 
Director 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 Director within sixty (60) days of publication 
of the Federal Register notice.
    (d) The Director 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 Director 
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 Director.
    (g) The Director 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 pursuant to these guidelines shall 
be addressed to: Mail Stop Congressional Relations, Director of the 
United States Patent and Trademark Office, P.O. Box 1450, Alexandria, 
Virginia 22313-1450.

[70 FR 10490, Mar. 4, 2005]

[[Page 481]]



            CHAPTER II--COPYRIGHT OFFICE, LIBRARY OF CONGRESS




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

              SUBCHAPTER A--COPYRIGHT OFFICE AND PROCEDURES
Part                                                                Page
201             General provisions..........................         483
202             Preregistration and registration of claims 
                    to copyright............................         565
203             Freedom of Information Act: Policies and 
                    procedures..............................         609
204             Privacy Act: Policies and procedures........         615
205             Legal processes.............................         618
211             Mask work protection........................         623
212             Protection of vessel hull designs...........         627
 SUBCHAPTER B--COPYRIGHT ARBITRATION ROYALTY PANEL RULES AND PROCEDURES
251             Copyright Arbitration Royalty Panel rules of 
                    procedure...............................         633
253             Use of certain copyrighted works in 
                    connection with noncommercial 
                    educational broadcasting................         656
254             Adjustment of royalty rate for coin-operated 
                    phonorecord players.....................         662
255             Adjustment of royalty payable under 
                    compulsory license for making and 
                    distributing phonorecords...............         663
256             Adjustment of royalty fee for cable 
                    compulsory license......................         666
258             Adjustment of royalty fee for secondary 
                    transmissions by satellite carriers.....         667
260             Rates and terms for preexisting subscription 
                    services' digital transmissions of sound 
                    recordings and making of ephemeral 
                    phonorecords............................         670
261             Rates and terms for eligible nonsubscription 
                    transmissions and the making of 
                    ephemeral reproductions.................         674
262             Rates and terms for certain eligible 
                    nonsubscription transmissions, new 
                    subscription services and the making of 
                    ephemeral reproductions.................         681

[[Page 482]]

263             Rates and terms for certain transmissions 
                    and the making of ephemeral 
                    reproductions by noncommercial licensees         692
270             Notice and recordkeeping requirements for 
                    statutory licenses......................         693
                Index to Chapter II--Copyright Office, 
                    Library of Congress.....................         703

[[Page 483]]



              SUBCHAPTER A_COPYRIGHT OFFICE AND PROCEDURES





PART 201_GENERAL PROVISIONS--Table of Contents




Sec.
201.1 Communication 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 Disruption of postal or other transportation or communication 
          services.
201.9 Recordation of agreements between copyright owners and public 
          broadcasting entities.
201.10 Notices of termination of transfers and licenses.
201.11 Satellite carrier statements of account covering statutory 
          licenses for secondary transmissions.
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.
201.15-201.16 [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.
201.35-201.37 [Reserved]
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.
201.40 Exemption to prohibition against circumvention.

    Authority: 17 U.S.C. 702.
    Section 201.10 also issued under 17 U.S.C. 304.



Sec. 201.1  Communication with the Copyright Office.

    (a) General purpose addresses. Members of the public must use the 
correct address in order to facilitate timely receipt by the copyright 
division or section to which an inquiry should be directed. The 
following addresses may be used for general inquiries made to a 
particular division or section of the Copyright Office. Addresses for 
special, limited purposes are provided below in paragraph (b) of this 
section. Anyone who is not certain where a particular inquiry should be 
directed, should inquire about the proper address through the ``Contact 
us'' section on the Office's Web site (http://

[[Page 484]]

www.copyright.gov) or call the Public Information Office at (202) 707-
3000.
    (1) In general. Mail and other communications which do not come 
under the areas listed in paragraph (a) or (b) of this section shall be 
addressed to the Library of Congress, Copyright Office, 101 Independence 
Avenue, SE., Washington, DC 20559-6000.
    (2) Inquiries to Licensing Division. Inquiries about filings related 
to the compulsory licenses (17 U.S.C. 111, 112, 114, 115, 118, 119, 122 
and chapter 10) should be addressed to the Library of Congress, 
Copyright Office, Licensing Division, 101 Independence Avenue, SE., 
Washington, DC 20557-6400.
    (3) Copies of records or deposits. Requests for copies of records or 
deposits for use in litigation or other authorized purposes should be 
addressed to the Records Research and Certification Section, LM-455, 
Library of Congress, Copyright Office, 101 Independence Avenue, SE., 
Washington, DC 20559-6302.
    (4) 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 Records Research and 
Certification Section, LM-455, Library of Congress, Copyright Office, 
101 Independence Avenue, SE., Washington, DC 20559-6306. Records dating 
from January 1, 1978, forward are available for searching on the 
Copyright Office's Web site at http://www.copyright.gov: COHM, which 
includes information on all registrations except serials; COHD, which 
includes information on recordations; and COHS, which includes 
information on serials.
    (b) Limited purpose addresses. The following addresses may be used 
only in the special, limited circumstances given for a particular 
Copyright Office service:
    (1) Time sensitive requests. Freedom of Information (FOIA) requests; 
notices of filing of copyright infringement lawsuits; \3\ comments for 
rulemaking proceedings; requests for Copyright Office speakers; requests 
for approvals of computer generated application forms; requests for 
expedited service from either the Records Research and Certification 
Section to meet the needs of pending or prospective litigation, customs 
matters or contract or publishing deadlines should be addressed to: 
Copyright GC/I&R, P.O. Box 70400, Washington, DC 20024-0400.
---------------------------------------------------------------------------

    \3\ All litigation material is time sensitive and must be addressed 
to the appropriate section of the Copyright Office; the Office is also 
publishing new regulations governing legal process.
---------------------------------------------------------------------------

    (2) Notices of termination. Notices of termination submitted for 
recordation should be mailed to Copyright Office, Notices of 
Termination, P.O. Box 71537, Washington, DC 20024-1537.

[69 FR 39331, June 30, 2004, as amended at 73 FR 37838, July 2, 2008; 74 
FR 12556, Mar. 25, 2009]



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 Records Research and Certification Section. Since some of these 
materials are not stored on the immediate premises of the Copyright 
Office, it is advisable to consult the

[[Page 485]]

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 Management Section, LM 
B-14, 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 Records 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 
Records Research and Certification 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 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 Copyright Information Section, 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, Washington, DC 20024.
    (6) Direct public access will not be permitted to any financial or 
accounting records, including records maintained on Deposit Accounts.
    (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 Records Research and Certifications 
Section. As the Office updates and revises certain chapters of 
Compendium II, it will make the information available on the Copyright 
Office's Web site. This information is also available for public 
inspection and copying in the Records Research and Certifications 
Section.

[[Page 486]]

    (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 not respond to any abusive or 
scurrilous correspondence or correspondence where the intent is unknown.
    (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 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 Records Research and Certifications 
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

[[Page 487]]

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; 69 FR 39332, June 
30, 2004; 69 FR 70377, Dec. 6, 2004; 73 FR 37838, July, 2 2008]



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.
    (c) Registration, recordation and related service fees. The 
Copyright Office has established the following fees for these services:

------------------------------------------------------------------------
     Registration, Recordation and Rated Services             Fees
------------------------------------------------------------------------
(1) Registration of a basic claim in an original work  $45
 of authorship: Forms TX, SE, PA, VA (including Short
 Forms), and Form SR.
(2) Electronic Registration of a basic claim in an      35
 original work of authorship: Form CO.
(3) Registration of a claim in a group of               45
 contributions to periodicals (GR/CP).
(4) Registration of a renewal claim (Form RE): Claim    75
 without Addendum.
 Addendum............................................  220
(5) Registration of a claim in a mask work (Form MW).   95
(6) Registration of a claim in a group of serials       25
 (Form SE/Group) [per issue, with minimum 2 issues].
(7) Registration of a claim in a group of daily         70
 newspapers and qualified newsletters (Form G/DN).
(8) Registration of a claim in a restored copyright     45
 (Form GATT).
(9) Registration of a group of published photographs.   45
(10) Preregistration of certain unpublished works....  100
(11) Registration of a correction or amplification to  115
 a claim (Form CA).
(12) Providing an additional certificate of             40
 registration.
(13) Certification of other Copyright Office records   150
 (per hour).
(14) Search-report prepared from official records      150
 (per hour).
 Estimate of search fee..............................  100
(15) Location of Copyright Office records (per hour).  150
 Location of in-process materials (per hour).........  150
(16) Recordation of document (single title), e.g. a     95
 Notice of Termination or a Notice of Intent to
 Enforce (NIE).
 Additional titles (per group of 10 titles)..........   25
(17) Recordation of Notice of Intention to Make and     12
 Distribute Phonorecords.
(18) Recordation of an Interim Designation of Agent     80
 to Receive Notification of Claimed Infringement
 under Sec. 512(c)(2).
(19) Issuance of a receipt for a Sec. 407 deposit..   20
(20) Registration of a claim in a vessel hull          200
 (including 3 pages of drawing or photographs).
 Additional pages....................................   20
(21) Recordation of distinctive identification of       80
 vessel hull designer.
------------------------------------------------------------------------


[[Page 488]]

    (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.............       $150
(2) Service charge for dishonored deposit account                     75
 replenishment check.........................................
(3) Appeals:
    (i) First appeal.........................................        250
        Additional claim in related group....................         25
    (ii) Second appeal.......................................        500
        Additional claim in related group....................         25
(4) Secure test processing charge, per hour..................        150
(5) Copying of Copyright Office Records by staff:
    Photocopy (b&w) (per page, minimum $6)...................       0.50
    Photocopy (color) (per page, minimum $6).................       1.50
    Photograph (Polaroid)....................................         15
    Photograph (digital).....................................         45
    Slide....................................................          3
    Audiocassette (first 30 minutes).........................         75
        Additional 15 minute increments......................         20
    Videocassette (first 30 minutes).........................         75
        Additional 15 minute increments......................         25
    CD or DVD................................................         50
    Zip or floppy disk.......................................        100
(6) Special handling fee for a claim.........................        685
    Each additional claim using the same deposit.............         50
(7) Special handling fee for recordation of a document.......        435
(8) Handling fee of extra deposit copy for certification.....         45
(9) Full-term retention of a published deposit...............        425
(10) Expedited Reference and Bibliography search and report..     400/hr
(11) Expedited Certification & Documents services (surcharge,        240
 per hour)...................................................
(12) Notice to Libraries and Archives........................         50
    Each additional title....................................         20
(13) Use of COINS terminal in LM-B14 (per hour)..............         25
(14) Fed Ex Service..........................................         35
(15) Delivery of documents via facsimile (per page, 7 page             1
 maximum)....................................................
------------------------------------------------------------------------

    (e) Licensing Division service fees. The Copyright Office has 
established the following fees for certain services performed by the 
Licensing Division:

------------------------------------------------------------------------
             Licensing Division Services                      Fees
------------------------------------------------------------------------
(1) Recordation of a Notice of Intention to Make and   $12
 Distribute Phonorecords (17 U.S.C. 115).
(2) Filing Fee for Recordation of License Agreements   125
 under 17 U.S.C. 118.
(3) Recordation of Certain Contracts by Cable           50
 Television Systems Located Outside the Forty-Eight
 Contiguous States.
(4) Initial Notice of Digital Transmission of Sound     20
 Recording (17 U.S.C. 114).
 Amendment of 17 U.S.C. 114 Notice...................   20
(5) Statement of Account Amendment (Cable Television
 Systems, Satellite Carriers, and Digital Audio
 Recording Devices or Media, 17.
U.S.C. 111, 119, and 1003)...........................   95
(6) Amendment to an Initial Notice of Distribution of   20
 Digital Audio Recording Devices or Media.
(7) Photocopy made by staff (b&w) (per page, minimum   0.50
 $6).
(8) Search, per hour.................................  150
(9) Certification of Search Report...................  150
------------------------------------------------------------------------


[64 FR 29520, June 1, 1999, as amended at 64 FR 36574, July 7, 1999; 65 
FR 39819, June 28, 2000; 67 FR 38005, May 31, 2002; 71 FR 31090, June 1, 
2006; 71 FR 46402, Aug. 14, 2006; 72 FR 33691, June 19, 2007; 74 FR 
12556, Mar. 25, 2009]



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:

[[Page 489]]

    (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 and satellite carriers and for 
digital audio recording devices and media (17 U.S.C. 111(d), 119(b) and 
1003(c); see 37 CFR 201.11; 201.17; 201.28);
    (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) and (d); 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.
    (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

[[Page 490]]

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 recordable under this title 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 imaged or otherwise reproduced in legible copies by the technology 
employed by the Office at the time of submission.
    (d) Fees. The fees for recordation of a document are 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; 65 FR 39819, June 28, 
2000; 67 FR 69136, Nov. 15, 2002; 70 FR 38022, July 1, 2005; 74 FR 
12556, Mar. 25, 2009]



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 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

[[Page 491]]

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 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:

[[Page 492]]

    (A) To which correspondence concerning the application should be 
sent; and
    (B) To which the certificate of supplementary registration should be 
mailed; and
    (viii) 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 Copyright Information Section, 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; 65 FR 39819, June 28, 2000; 65 FR 48914, Aug. 10, 
2000; 66 FR 34372, June 28, 2001; 73 FR 37838, July 2, 2008]



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, 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

[[Page 493]]

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 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

[[Page 494]]

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; 65 
FR 39819, June 28, 2000; 66 FR 34372, June 28, 2001]



Sec. 201.8  Disruption of postal or other transportation or communication
services.

    (a) For purposes of 17 U.S.C. 709, when the Register has determined 
that there is or has been a general disruption or suspension of postal 
or other transportation or communications services that has delayed the 
receipt by the Copyright Office of deposits, applications, fees, or any 
other materials, the Register shall publish an announcement of that 
determination, stating the date on which the disruption or suspension 
commenced. The announcement may, if appropriate, limit the means of 
delivery that are subject to relief pursuant to section 709. Following 
the cessation of the disruption or suspension of services, the Register 
shall publish an announcement stating the date on which the disruption 
or suspension has terminated.
    (b) At the request of any person who provides satisfactory evidence 
that he or she has attempted to deliver a deposit, application, fee or 
other material to the Copyright Office but that receipt by the Copyright 
Office was delayed due to a general disruption or suspension of postal 
or other transportation or communications services, the Register shall 
assign, as the date of receipt of the deposit, application, fee or other 
material, the date on which the Register determines the material would 
have been received but for the disruption or suspension of services, if 
the deposit, application, fee or other material was actually received in 
the Copyright Office within one month after the disruption or suspension 
of services has terminated.
    (c) Timing. The request shall be made:
    (1) With respect to an application for copyright registration, no 
earlier than the date on which the claimant receives the certificate of 
registration and no later than one year after the date on which the 
claimant receives the certificate of registration; provided, however, 
that a request may be

[[Page 495]]

made prior to receipt of a certificate of registration--
    (i) If the Copyright Office has communicated with the claimant 
relating to the application and the claimant makes the request as part 
of a response to the communication from the Office; or
    (ii) If the Register determines that good cause exists to entertain 
a request prior to the issuance of a certificate of registration;
    (2) With respect to a transfer of copyright ownership or other 
document submitted for recordation pursuant to 17 U.S.C. 205, no later 
than one year after the date on which the person submitting the transfer 
or document receives the certificate of recordation;
    (3) With respect to any other material, no later than one year after 
the date on which the material was actually received in the Copyright 
Office.
    (d) In cases in which a certificate or registration or a certificate 
of recordation has already been issued, the original certificate must be 
returned to the Copyright Office along with the request.
    (e) For purposes of paragraph (b) of this section, satisfactory 
evidence shall consist of:
    (1) A receipt from the United States Postal Service indicating the 
date on which the United States Postal Service received material for 
delivery to the Copyright Office by means of first class mail, Priority 
Mail or Express Mail;
    (2) A receipt from a delivery service such as, or comparable to, 
United Parcel Service, Federal Express, or Airborne Express, indicating 
the date on which the delivery service received material for delivery to 
the Copyright Office and
    (i) The date on which delivery was to be made to the Copyright 
Office, or
    (ii) The period of time (e.g., overnight, or 2 days) from receipt by 
the delivery service to the date on which delivery was to be made to the 
Copyright Office;
    (3) Other documentary evidence which the Register deems equivalent 
to the evidence set forth in paragraphs (e)(1) and (2) of this section; 
or
    (4) A sworn statement from a person with actual knowledge of the 
facts relating to the attempt to deliver the material to the Copyright 
Office, setting forth with particularity facts which satisfy the 
Register that in the absence of the general disruption or suspension of 
postal or other transportation or communications services, the material 
would have been received by the Copyright Office by a particular date.
    (f) For purposes of paragraph (b) of this section, the Register 
shall presume that but for the general disruption or suspension of 
postal or other transportation or communications services,
    (1) Materials deposited with the United States Postal Service for 
delivery by means of first class mail would have been received in the 
Copyright Office seven days after deposit with the United States Postal 
Service;
    (2) Materials deposited with the United States Postal Service for 
delivery by means of Priority mail would have been received in the 
Copyright Office three days after deposit with the United States Postal 
Service;
    (3) Materials deposited with the United States Postal Service for 
delivery by means of Express mail would have been received in the 
Copyright Office one day after deposit with the United States Postal 
Service;
    (4) Materials deposited with a delivery service such as, or 
comparable to, United Parcel Service, Federal Express, or Airborne 
Express, would have been received in the Copyright Office on the date 
indicated on the receipt from the delivery service.
    (g) Requests pursuant to paragraph (b) of this section shall be 
addressed to: Chief, Copyright Office Receipt, Analysis and Control 
Division, Copyright Office, and if delivered by hand they should be 
brought to the Copyright Information Section, Library of Congress, James 
Madison Memorial Building, Room 401, First and Independence Avenue, SE., 
Washington, DC. If mailed, the request should be addressed to Chief, 
Receipt, Analysis and Control Division, P.O. Box 71380, Washington, DC 
20024-1380.

[66 FR 62944, Dec. 4, 2001; 66 FR 63920, Dec. 11, 2001; 73 FR 37838, 
July 2, 2008]

[[Page 496]]



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 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.

    This section covers notices of termination of transfers and licenses 
under sections 203, 304(c) and 304(d) of title 17, of the United States 
Code. A termination under section 304(d) is possible only if no 
termination was made under section 304(c), and federal copyright was 
originally secured on or between January 1, 1923, and October 26, 1939.
    (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 covering the extended 
renewal term under sections 304(c) and 304(d) of title 17, U.S.C., must 
include a clear identification of each of the following:
    (i) Whether the termination is made under section 304(c) or under 
section 304(d);
    (ii) 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;
    (iii) 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;
    (iv) A brief statement reasonably identifying the grant to which the 
notice of termination applies;
    (v) The effective date of termination;
    (vi) If termination is made under section 304(d), a statement that 
termination of renewal term rights under section 304(c) has not been 
previously exercised; and
    (vii) 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 author's termination 
interest: That author's surviving

[[Page 497]]

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 (vii), 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 of 
title 17, U.S.C., or by their duly authorized agents.
    (2) A notice of termination of an exclusive or nonexclusive grant of 
a transfer or license of copyright or of any right under a copyright, 
executed by the author on or after January 1, 1978, under section 203 of 
title 17, U.S.C., must include a clear identification of each of the 
following:
    (i) A statement that the termination is made under section 203;
    (ii) 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;
    (iii) The date of execution of the grant being terminated and, if 
the grant covered the right of publication of a work, the date of 
publication of the work under the grant;
    (iv) For each work to which the notice of termination applies, the 
title of the work and the name of the author or, in the case of a joint 
work, the authors who executed the grant being terminated; and, if 
possible and practicable, the original copyright registration number;
    (v) A brief statement reasonably identifying the grant to which the 
notice of termination applies;
    (vi) The effective date of termination; and
    (vii) 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 author'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 
(b)(2)(vii), 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 203 of 
title 17, U.S.C., or by their duly authorized agents.
    (3) Clear identification of the information specified by paragraphs 
(b)(1) and (b)(2) 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 under 
section 304(c) or section 304(d) 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 under section 304(c) or 
section 304(d) executed by one or more of the authors of the work, the 
notice as to any one author's share shall be signed 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 section 304(c) or section 
304(d), whichever applies, of title 17, U.S.C., or by their duly 
authorized

[[Page 498]]

agents, and shall contain a brief statement of their relationship or 
relationships to that author.
    (3) In the case of a termination of a grant under section 203 
executed by one or more of the authors of the work, the notice shall be 
signed by each author who is terminating the grant 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 section 203 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.
    (4) Where a signature is by a duly authorized agent, it shall 
clearly identify the person or persons on whose behalf the agent is 
acting.
    (5) 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 203, section 304(c) or section 
304(d) of title 17, U.S.C., whichever applies, 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 paragraphs (d)(2) and (d)(3) 
of this section will satisfy the service requirements of section 203, 
section 304(c), or section 304(d) of title 17, U.S.C., whichever 
applies. However, as long as the statutory requirements have been met, 
the failure to comply with the regulatory provisions of paragraph (d)(2) 
or (d)(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 203, section 304(c), or section 304(d) of title 17, 
U.S.C., whichever applies, shall not render the notice invalid.
    (2) Without prejudice to the general rule provided by paragraph 
(e)(1) of this section, errors made in giving the date or registration 
number referred to in paragraph (b)(1)(iii), (b)(2)(iii), or (b)(2)(iv) 
of this section, or in complying with the provisions of paragraph 
(b)(1)(vii) or (b)(2)(vii) of this section, or in describing the precise 
relationships under paragraph (c)(2) or (c)(3) 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

[[Page 499]]

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. 
In instances where service is made by first-class mail, the date of 
service shall be the day the notice of termination was deposited with 
the United States Postal Service.
    (iii) The copy submitted for recordation must be legible per the 
requirements of Sec. 201.4(c)(3).
    (2) The fee for recordation of a document is prescribed in Sec. 
201.3(c).
    (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) Notwithstanding anything to the contrary in this section, the 
Copyright Office reserves the right to refuse recordation of a notice of 
termination if, in the judgment of the Copyright Office, such notice of 
termination is untimely. If a document is submitted as a notice of 
termination after the statutory deadline has expired, the Office will 
offer to record the document as a ``document pertaining to copyright'' 
pursuant to Sec. 201.4(c)(3), but the Office will not index the 
document as a notice of termination. Whether a document so recorded is 
sufficient in any instance to effect termination as a matter of law 
shall be determined by a court of competent jurisdiction.
    (5) A copy of the notice of termination shall be recorded in the 
Copyright Office before the effective date of termination, as a 
condition to its taking effect. However, the fact that the Office has 
recorded the notice does not mean that it is otherwise sufficient under 
the law. 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.
    (6) Notices of termination should be submitted to the address 
specified in Sec. 201.1(b)(2).

(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; 64 FR 36574, July 
7, 1999; 66 FR 34372, June 28, 2001; 67 FR 69136, Nov. 15, 2002; 67 FR 
78176, Dec. 23, 2002; 68 FR 16959, Apr. 8, 2003; 71 FR 36486, June 27, 
2006; 74 FR 12556, Mar. 25, 2009]



Sec. 201.11  Satellite carrier statements of account covering statutory 
licenses for secondary transmissions.

    (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

[[Page 500]]

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 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 Library of Congress, Copyright 
Office, Licensing Division, 101 Independence Avenue, SE, Washington, DC 
20557-6400.
    (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.

[[Page 501]]

    (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 prescribed in Sec. 258.3 of this chapter.
    (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 prescribed in Sec. 258.3 of this chapter.
    (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, 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. (1) All royalty fees shall be paid by a 
single electronic funds transfer and payment must be received in the 
designated bank by the filing deadline for the relevant accounting 
period. The following information shall be provided as part of the EFT 
and/or as part of the remittance advice as provided for in circulars 
issued by the Copyright Office:
    (i) Remitter's name and address;
    (ii) Name of a contact person, telephone number and extension, and 
email address;
    (iii) The actual or anticipated date that the EFT will be 
transmitted;
    (iv) Type of royalty payment (i.e., satellite);
    (v) Total amount submitted via the EFT;
    (vi) Total amount to be paid by year and period;
    (vii) Number of Statements of Account that the EFT covers;
    (viii) ID numbers assigned by the Licensing Division;
    (ix) Legal name of the owner for each Statement of Account.
    (2) The remittance advice shall be attached to the Statement(s) of 
Account. In addition, a copy of the remittance advice shall be emailed 
or sent by facsimile to the Licensing Division.
    (3) The Office may waive the requirement for payment by electronic 
funds transfer as set forth in paragraph (f)(1) of this section. To 
obtain a waiver, the remitter shall submit to the Licensing Division at 
least 60 days prior to the royalty fee due date a certified statement 
setting forth the reasons explaining why payment by an electronic funds 
transfer would be virtually impossible or, alternatively, why it would 
impose a financial or other hardship on the remitter. The certified 
statement must be signed by a duly authorized representative of the 
entity making the payment. A waiver shall cover only a single payment 
period. Failure to obtain a waiver may result in the remittance being 
returned to the remitter.
    (g) Copies of statements of account. A licensee shall file an 
original and one copy of the statement of account with

[[Page 502]]

the Licensing Division of the Copyright Office.
    (h) Corrections, supplemental payments, and refunds. (1) Upon 
compliance with the procedures and within the time limits set forth in 
paragraph (h)(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 (h)(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 (h)(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 (h)(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 (h)(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 (h) must be 
accompanied by a filing fee in the amount prescribed in Sec. 201.3(e) 
of this part 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.

[[Page 503]]

    (B) All requests that a supplemental royalty fee payment be received 
for deposit under this paragraph (h) 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 (h) 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 (h)(3)(i) of 
this section.
    (4) Following final processing, all requests submitted under this 
paragraph (h) 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.
    (i) 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 and viewing in commercial 
establishments occurring within that accounting period. The accrual 
period shall end on the date the electronic payment submitted by a 
satellite carrier is received by the Copyright Office. In cases where a 
waiver of the electronic funds transfer requirement is approved by the 
Copyright Office, and royalties payments are either late or underpaid, 
the accrual period shall end on the date the payment is postmarked. 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 the 
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. 
Satellite carriers 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 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; 64 FR 36574, July 7, 1999; 70 FR 30366, May 26, 
2005; 70 FR 38022, July 1, 2005; 71 FR 45739, Aug. 10, 2006; 72 FR 
33691, June 19, 2007; 73 FR 29072, May 20, 2008]



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

[[Page 504]]

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 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

[[Page 505]]

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.
    (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

[[Page 506]]

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. Sec. 201.15-201.16  [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 distant signal equivalent (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

[[Page 507]]

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 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

[[Page 508]]

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 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 Library of Congress, Copyright Office, Licensing Division, 101 
Independence Avenue, SE, Washington, DC 20557-6400.
    (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 
$527,600; and
    (ii) Form SA3--``Long Form'' for use by cable systems whose 
semiannual gross receipts for secondary transmission total $527,600 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.

[[Page 509]]

    (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 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.


[[Page 510]]



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 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

[[Page 511]]

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.
    (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 $137,100 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

[[Page 512]]

    (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 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:

[[Page 513]]

    (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:
    (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) 1.013 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).

[[Page 514]]

    (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 
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

[[Page 515]]

    (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 (65) 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 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

[[Page 516]]

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 must be paid by a 
single electronic funds transfer, and must be received in the designated 
bank by the filing deadline for the relevant accounting period. The 
following information must be provided as part of the EFT and/or as part 
of the remittance advice as provided for in circulars issued by the 
Copyright Office:
    (i) Remitter's name and address;
    (ii) Name of a contact person, telephone number and extension, and 
e-mail address;
    (iii) The actual or anticipated date that the EFT will be 
transmitted;
    (iv) Type of royalty payment (i.e., cable);
    (v) Total amount submitted via the EFT;
    (vi) Total amount to be paid by year and period;
    (vii) Number of Statements of Account that the EFT covers;
    (viii) ID numbers assigned by the Licensing Division;
    (ix) Legal name of the owner for each Statement of Account;
    (x) Identification of the first community served (city and state).
    (2) The remittance advice shall be attached to the Statement(s) of 
Account. In addition, a copy of the remittance advice shall be emailed 
or sent by facsimile to the Licensing Division.
    (3) The Office may waive the requirement for payment by electronic 
funds transfer as set forth in paragraph (i)(1) of this section. To 
obtain a waiver, the remitter shall submit to the Licensing Division at 
least 60 days prior to the royalty fee due date a certified statement 
setting forth the reasons explaining why payment by an electronic funds 
transfer would be virtually impossible or, alternatively, why it would 
impose a financial or other hardship on the remitter. The certified 
statement must be signed by a duly authorized representative of the 
entity making the payment. A waiver shall cover only a single payment 
period. Failure to obtain a waiver may result in the remittance being 
returned to the remitter.
    (4) 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 late payments and underpayments of royalties for the 
cable statutory license occurring within that accounting period. The 
accrual period shall end on the date the electronic payment submitted by 
a cable operator is received. The accrual period shall end on the date 
the electronic payment submitted by a satellite carrier is received by 
the Copyright Office. In cases where a waiver of the electronic funds 
transfer requirement is approved by the Copyright Office, and royalties 
payments are either late or underpaid, the accrual period shall end on 
the date the payment is postmarked. 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 the actual receipt by the 
Copyright Office.
    (j) Copies of statements of account. A licensee shall file an 
original and one copy of the statement of account with the Licensing 
Division of the Copyright Office.
    (k) Corrections, supplemental payments, and refunds. (1) Upon 
compliance with the procedures and within the time limits set forth in 
paragraph (k)(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 
(k)(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

[[Page 517]]

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 (k)(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 (k)(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 (k)(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 (k)(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)(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 (k)(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 (k) (except those 
filed under paragraph (k)(1)(iii) of this section) must be accompanied 
by a filing fee in the amount prescribed in Sec. 201.3(e) of this part 
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 (k), must be accompanied by a 
remittance in the full amount of such fee. Payment of the supplemental 
royalty fee must be

[[Page 518]]

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 (k)(3)(i) of this 
section.
    (4) Following final processing, all requests submitted under this 
paragraph (k) 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.
    (l) 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.

(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, which appears in the 
Finding Aids section of the printed volume and on GPO Access.



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, and required by 
that section to be served on a copyright owner or, in certain cases, to 
be filed in the Copyright Office, before or within thirty days after 
making, and before distributing any phonorecords of the work, in order 
to obtain a compulsory license to make and distribute phonorecords of 
nondramatic musical works.
    (2) A person is entitled to serve or file a Notice of Intention and 
thereby obtain a compulsory license pursuant to 17 U.S.C. 115 only if 
his primary purpose in making phonorecords is to distribute them to the 
public for private use, including by means of a digital phonorecord 
delivery.
    (3) For the purposes of this section, 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. The reproduction of the 
phonorecord must be sufficiently permanent or stable to permit it to be 
perceived, reproduced, or otherwise communicated for a period of more 
than transitory duration. Such a phonorecord may be permanent or it may 
be made available to the transmission recipient for a limited period of 
time or for a specified number of performances. A digital phonorecord 
delivery includes all phonorecords that are made for the purpose of 
making the digital phonorecord delivery.
    (4) A Notice of Intention shall be served or filed for nondramatic 
musical works embodied, or intended to be embodied, in phonorecords made 
under the compulsory license. A Notice of Intention may designate any 
number of nondramatic musical works, provided that the copyright owner 
of each designated work or, in the case of any work having more than one 
copyright owner, any one of the copyright owners is the same and that 
the information required under paragraphs (d)(1)(i) through (iv) of this 
section does not vary. For purposes of this section, a

[[Page 519]]

Notice which lists multiple works shall be considered a composite filing 
of multiple Notices and fees shall be paid accordingly if filed in the 
Copyright Office under paragraph (f) of this section (i.e., a separate 
fee, in the amount set forth in Sec. 201.3(e)(1), shall be paid for 
each work listed in the Notice).
    (5) 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.
    (6) For the purposes of this section, service of a Notice of 
Intention on a copyright owner may be accomplished by means of service 
of the Notice on either the copyright owner or an agent of the copyright 
owner with authority to receive the Notice. In the case where the work 
has more than one copyright owner, the service of the Notice on any one 
of the co-owners of the nondramatic musical work or upon an authorized 
agent of one of the co-owners identified in the Notice of Intention 
shall be sufficient with respect to all co-owners. Notwithstanding 
paragraph (a)(2) of this section, a single Notice may designate works 
not owned by the same copyright owner in the case where the Notice is 
served on a common agent of multiple copyright owners, and where each of 
the works designated in the Notice is owned by any of the copyright 
owners who have authorized that agent to receive Notices.
    (7) For purposes of this section, a copyright owner or an agent of a 
copyright owner with authority to receive Notices of Intention may make 
public a written policy that it will accept Notices of Intention to make 
and distribute phonorecords pursuant to 17 U.S.C. 115 which include less 
than all of the information required by this section, in a form 
different than required by this section, or delivered by means 
(including electronic transmission) other than those required by this 
section. Any Notice provided in accordance with such policy shall not be 
rendered invalid for failing to comply with the specific requirements of 
this section.
    (8) For the purposes of this section, a digital phonorecord delivery 
shall be treated as a type of phonorecord configuration, and a digital 
phonorecord delivery shall be treated as a phonorecord manufactured, 
made, and distributed on the date the phonorecord is digitally 
transmitted.
    (b) Agent. An agent who has been authorized to accept Notices of 
Intention in accordance with paragraph (a)(4) of this section and who 
has received a Notice of Intention on behalf of a copyright owner shall 
provide within two weeks of the receipt of that Notice of Intention the 
name and address of the copyright owner or its agent upon whom the 
person or entity intending to obtain the compulsory license shall serve 
Statements of Account and the monthly royalty in accordance with Sec. 
201.19(a)(4).
    (c) Form. The Copyright Office does not provide printed forms for 
the use of persons serving or filing Notices of Intention.
    (d) 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 telephone number, the full address, including a specific 
number and street name or rural route of the place of business, and an 
e-mail address, if available, of the person or entity intending to 
obtain the compulsory license, and if a business organization intends to 
obtain the compulsory license, the name and title of the chief executive 
officer, managing partner, sole proprietor or other person similarly 
responsible for the management of such 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.
    (iii) The information specified in paragraphs (d)(1)(i) and (ii) of 
this section for the primary entity expected to be engaged in the 
business of making and distributing phonorecords under

[[Page 520]]

the license or of authorizing such making and distribution (for example: 
a record company or digital music service), if an entity intending to 
obtain the compulsory license is a holding company, trust or other 
entity that is not expected to be actively engaged in the business of 
making and distributing phonorecords under the license or of authorizing 
such making and distribution;
    (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) For each nondramatic musical work embodied or intended to be 
embodied in phonorecords made under the compulsory license:
    (A) The title of the nondramatic musical work;
    (B) The name of the author or authors, if known;
    (C) A copyright owner of the work, if known;
    (D) 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, a 
digital phonorecord delivery, or a combination of them);
    (E) The expected date of initial distribution of phonorecords 
already made (if any) or expected to be made under the compulsory 
license;
    (F) 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;
    (G) 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
    (H) In the case of phonorecords already made (if any) under the 
compulsory license, the date or dates of such manufacture.
    (vi) In the case where the Notice will be filed with the Copyright 
Office pursuant to paragraph (f)(3) of this section, the Notice shall 
include an affirmative statement that with respect to the nondramatic 
musical work named in the Notice of Intention, the registration records 
or other public records of the Copyright Office have been searched and 
found not to identify the name and address of the copyright owner of 
such work.
    (2) A ``clear statement'' of the information listed in paragraph 
(d)(1) of this section requires a clearly intelligible, legible, and 
unambiguous statement in the Notice itself and without incorporation by 
reference of facts or information contained in other documents or 
records.
    (3) Where information is required to be given by paragraph (d)(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.
    (e) Signature. The Notice shall be signed by the person or entity 
intending to obtain the compulsory license or by a duly authorized agent 
of such person or entity.
    (1) If the person or entity intending to obtain the compulsory 
license is a corporation, the signature shall be that of a duly 
authorized officer or agent of the corporation.
    (2) If the person or entity intending to obtain the compulsory 
license is a partnership, the signature shall be that of a partner or of 
a duly authorized agent of the partnership.
    (3) If the Notice is signed by a duly authorized agent for the 
person or entity intending to obtain the compulsory license, the Notice 
shall include an affirmative statement that the agent is authorized to 
execute the Notice of Intention on behalf of the person or entity 
intending to obtain the compulsory license.
    (4) If the Notice is served electronically, the person or entity 
intending to obtain the compulsory license and the copyright owner shall 
establish a procedure to verify that the Notice is being submitted upon 
the authority of the person or entity intending to obtain the compulsory 
license.
    (f) Filing and service. (1) If the registration records or other 
public records of the Copyright Office identify

[[Page 521]]

the copyright owner of the nondramatic musical works named in the Notice 
of Intention and include an address for such owner, the Notice may be 
served on such owner by mail sent to, or by reputable courier service 
at, 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.
    (2) If the Notice is sent by mail or delivered by reputable courier 
service to the last address for the copyright owner shown by the records 
of the Copyright Office and the Notice 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 (f)(2) shall be submitted to the Licensing Division of the 
Copyright Office, 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 may be accompanied 
by appropriate evidence that it was mailed to, or that delivery by 
reputable courier service was attempted at, that address. In these 
cases, the Copyright Office will specially mark its records to consider 
the date the original Notice was mailed, or the date delivery by courier 
service was attempted, if shown by the evidence mentioned above, as the 
date of filing. An acknowledgment of receipt and filing will be provided 
to the sender.
    (3) If, with respect to the nondramatic musical works named in the 
Notice of Intention, the registration records 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 may be filed in the 
Copyright Office. Notices of Intention submitted for filing shall be 
accompanied by the fee specified in Sec. 201.3(e). A separate fee shall 
be assessed for each title listed in the Notice. 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 the Notice and fee are both received in the Copyright 
Office. An acknowledgment of receipt and filing will be provided to the 
sender.
    (4) Alternatively, if the person or entity intending to obtain the 
compulsory license knows the name and address of the copyright owner of 
the nondramatic musical work, or the agent of the copyright owner as 
described in paragraph (a)(4) of this section, the Notice of Intention 
may be served on the copyright owner or the agent of the copyright owner 
by sending the Notice by mail or delivering it by reputable courier 
service to the address of the copyright owner or agent of the copyright 
owner. For purposes of section 115(b)(1) of title 17 of the United 
States Code, the Notice will not be considered properly served if the 
Notice is not sent to the copyright owner or the agent of the copyright 
owner as described in paragraph (a)(4) of this section, or if the Notice 
is sent to an incorrect address.
    (5) If a Notice of Intention is sent by certified mail or registered 
mail, a mailing receipt shall be sufficient to prove that service was 
timely. If a Notice of Intention is delivered by a reputable courier, 
documentation from the courier showing the first date of attempted 
delivery shall also be sufficient to prove that service was timely. In 
the absence of a receipt from the United States Postal Service showing 
the date of delivery or documentation showing the first date of 
attempted delivery by a reputable courier, the compulsory licensee shall 
bear the burden of proving that the Notice of Intention was served in a 
timely manner.
    (6) If a Notice served upon a copyright owner or an authorized agent 
of a copyright owner identifies more than 50 works that are embodied or 
intended to be embodied in phonorecords made under the compulsory 
license, the copyright owner or the authorized agent may send the person 
who served the Notice a demand that a list of each of the works so 
identified be resubmitted in an electronic format, along with a copy of 
the original Notice. The person who served the Notice must submit such a 
list, which shall include all of the information required in paragraph 
(d)(1)(v) of this section, within 30 days after receipt of the demand 
from

[[Page 522]]

the copyright owner or authorized agent. The list shall be submitted on 
magnetic disk or another medium widely used at the time for electronic 
storage of data, in the form of a flat file, word processing document or 
spreadsheet readable with computer software in wide use at such time, 
with the required information identified and/or delimited so as to be 
readily discernible. The list may be submitted by means of electronic 
transmission (such as e-mail) if the demand from the copyright owner or 
authorized agent states that such submission will be accepted.
    (g) Harmless errors. Harmless errors in a Notice that do not 
materially affect the adequacy of the information required to serve the 
purposes of section 115(b)(1) of title 17 of the United States Code, 
shall not render the Notice invalid.

[69 FR 34582, June 22, 2004, as amended at 73 FR 66181, Nov. 7, 2008]



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)(5) of 
title 17 of the United States Code, as amended by Pub. L. 94-553, and 
required by that section to be made under the compulsory license to make 
and distribute phonorecords of nondramatic musical works, including by 
means of a digital phonorecord delivery.
    (2) An Annual Statement of Account is a statement identified in 
section 115(c)(5) 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, 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. The reproduction of the 
phonorecord must be sufficiently permanent or stable to permit it to be 
perceived, reproduced, or otherwise communicated for a period of more 
than transitory duration. Such a phonorecord may be permanent or it may 
be made available to the transmission recipient for a limited period of 
time or for a specified number of performances. A digital phonorecord 
delivery includes all phonorecords that are made for the purpose of 
making the digital phonorecord delivery.
    (4) 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.
    (5) For the purposes of this section, the service of a Statement of 
Account on a copyright owner under paragraph (e)(7) or (f)(7) of this 
section may be accomplished by means of service on either the copyright 
owner or an agent of the copyright owner with authority to receive 
Statements of Account on behalf of the copyright owner. In the case 
where the work has more than one copyright owner, the service of the 
Statement of Account on one co-owner or upon an agent of one of the co-
owners shall be sufficient with respect to all co-owners.
    (6) 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.
    (7) For the purposes of this section, a digital phonorecord delivery 
shall be treated as a type of phonorecord configuration, and a digital 
phonorecord delivery shall be treated as a phonorecord, with the 
following clarifications:
    (i) A digital phonorecord delivery shall be treated as a phonorecord 
made and distributed on the date the phonorecord is digitally 
transmitted; and
    (ii) A digital phonorecord delivery shall be treated as having been 
voluntarily distributed and relinquished from possession, and a 
compulsory licensee shall be treated as having permanently

[[Page 523]]

parted with possession of a digital phonorecord delivery, on the date 
that the phonorecord is digitally transmitted.
    (8) Except as provided in paragraph (a)(6) of this section, 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.
    (9) To the extent that the terms reserve, credit and return appear 
in this section, such provisions shall not apply to digital phonorecord 
deliveries.
    (10) 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.
    (11) 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.
    (12) An incomplete transmission is any digital transmission of a 
sound recording which, as determined by means within the sole control of 
the distributor, does not result in a specifically identifiable 
reproduction of the entire sound recording by or for any transmission 
recipient.
    (13) A retransmission is a subsequent digital transmission of the 
same sound recording initially transmitted to an identified recipient 
for the purpose of completing the delivery of a complete and usable 
reproduction of that sound recording to that recipient.
    (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 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

[[Page 524]]

revenue is being ``recognized.'' Subject to the time limitations of 
paragraph (a)(7)(iii)(B) of this section, 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 paragraph (a)(7)(iii)(B) of this section, 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 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)(10) of this section.
    (3) Except where a negative reserve balance exists, a separate and 
distinct

[[Page 525]]

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 paragraph (a)(5) of 
this section, 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 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

[[Page 526]]

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, including digital phonorecord 
deliveries, 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;
    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);
    Never delivered due to a failed transmission; or
    Digitally retransmitted in order to complete a digital phonorecord 
delivery.

    (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, digital 
phonorecord delivery, or a combination of them).
    (E) The date of and a reason for each incomplete transmission.
    (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, 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 privilege of 
returning unsold phonorecords to

[[Page 527]]

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 Generally Accepted Accounting 
Practices. 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.
    (d) Incomplete transmissions. If, in the month covered by the 
Monthly Statement, there are any digital transmissions of a sound 
recording which do not result in specifically identifiable reproductions 
of the entire sound recording by or for any transmission recipient, as 
determined by means within the sole control of the distributor, the 
number of such phonorecords is subtracted from the Step 3 subtotal.
    (e) Retransmitted digital phonorecords. If, in the month covered by 
the Monthly Statement, there are retransmissions of a digital 
phonorecord to a recipient who did not receive a complete and usable 
phonorecord during an initial transmission, and such transmissions are 
made for the sole purpose of delivering a complete and usable 
reproduction of the initially requested sound recording to that 
recipient, the number of such retransmitted digital phonorecords 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

[[Page 528]]

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 or the agent with authority to receive Monthly 
Statements of Account on behalf of the copyright owner to whom or which 
it is directed, together with the total royalty for the month covered by 
the Monthly Statement, by mail or by reputable courier service on or 
before the 20th day of the immediately succeeding month. However, in the 
case where the licensee has served its Notice of Intention upon an agent 
of the copyright owner pursuant to Sec. 201.18, the licensee is not 
required to serve Monthly Statements of Account or make any royalty 
payments until the licensee receives from the agent with authority to 
receive the Notice of Intention notice of the name and address of the 
copyright owner or its agent upon whom the licensee shall serve Monthly 
Statements of Account and the monthly royalty fees. Upon receipt of this 
information, the licensee shall serve Monthly Statements of Account and 
all royalty fees covering the intervening period upon the person or 
entity identified by the agent with authority to receive the Notice of 
Intention by or before the 20th day of the month following receipt of 
the notification. It shall not be necessary to file a copy of the 
Monthly Statement in the Copyright Office.
    (ii)(A) In any case where a Monthly Statement of Account is sent by 
mail or reputable courier service and the Monthly Statement of Account 
is returned to the sender because the copyright owner or agent is no 
longer 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 or 
attempted delivery by courier service, 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 acknowledgment 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 this paragraph (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 paragraph 
(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, and under 
this section. The Annual Statement of Account identified in paragraph 
(f) of this section does not replace any Monthly Statement of Account.
    (iv) If a Monthly Statement of Account is sent by certified mail or 
registered mail, a mailing receipt shall be sufficient to prove that 
service was timely. If a Monthly Statement of Account is delivered by a 
reputable courier, documentation from the courier showing the first date 
of attempted delivery shall also be sufficient to prove that service was 
timely. In the absence of a receipt from the United States Postal 
Service showing the date of delivery or documentation showing the first 
date of attempted delivery by a reputable courier, the compulsory 
licensee shall bear the burden of proving that the Monthly Statement of 
Account was served in a timely manner.
    (f) Annual statements of account--(1) Forms. The Copyright Office 
does not provide printed forms for the use of

[[Page 529]]

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) If the compulsory licensee is a business organization, the 
name and title of the chief executive officer, managing partner, sole 
proprietor or other person similarly responsible for the management of 
such entity.
    (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, 
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

[[Page 530]]

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 (f)(4)(i)(A) through 
(F) of this section 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 
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 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.

[[Page 531]]

    (7) Service. (i) Each Annual Statement of Account shall be served on 
the copyright owner or the agent with authority to receive Annual 
Statements of Account on behalf of the copyright owner to whom or which 
it is directed by mail or by reputable courier service on or before the 
20th 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 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 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 
mail or by reputable courier service and is returned to the sender 
because the copyright owner or agent 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 or attempted delivery by courier service, 
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 this paragraph (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.
    (iv) If an Annual Statement of Account is sent by certified mail or 
registered mail, a mailing receipt shall be sufficient to prove that 
service was timely. If an Annual Statement of Account is delivered by a 
reputable courier, documentation from the courier showing the first date 
of attempted delivery shall also be sufficient to prove that service was 
timely. In the absence of a receipt from the United States Postal 
Service showing the date of delivery or documentation showing the first 
date of attempted delivery by a reputable courier, the compulsory 
licensee shall bear the burden of proving that the Annual Statement of 
Account was served in a timely manner.
    (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; 64 FR 36574, 36575, July 7, 1999; 64 FR 41289, July 30, 1999; 66 
FR 34373, June 28, 2001; 69 FR 34584, June 22, 2004; 73 FR 66181, Nov. 
7, 2008]



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

[[Page 532]]

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 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

[[Page 533]]

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 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

[[Page 534]]

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 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,

[[Page 535]]

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, as amended at 66 FR 34373, June 28, 2001]



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.
    (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

[[Page 536]]

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:
    (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; 66 
FR 34373, June 28, 2001]



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

[[Page 537]]

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, 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, as amended at 66 FR 34373, June 28, 2001]



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

[[Page 538]]

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 8x10 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 8x10 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:
    (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 8x10 
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 8x10 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).

[[Page 539]]

    (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) Effect of recordation. 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; 65 
FR 39819, June 28, 2000]



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 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.

[[Page 540]]

    (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.
    (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-
4260.

[58 FR 29107, May 19, 1993, as amended at 60 FR 34168, June 30, 1995; 64 
FR 29522, June 1, 1999; 65 FR 39819, June 28, 2000]



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

[[Page 541]]

(``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 Library of Congress, Copyright 
Office, Licensing Division, 101 Independence Avenue, SE, Washington, DC 
20557-6400.
    (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, or if 
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, 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

[[Page 542]]

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. 
The fee for filing an Amendment to an Initial Notice of Distribution of 
Digital Audio Recording Devices or Media is prescribed in Sec. 
201.3(e).

[57 FR 55465, Nov. 25, 1992, as amended at 64 FR 36575, July 7, 1999; 72 
FR 33692, June 19, 2007]



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 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

[[Page 543]]

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 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

[[Page 544]]

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
    (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

[[Page 545]]

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 shall be made as specified in Sec. 201.28(h).
    (4) Reduction of royalty fee. (i) Section 1004(a)(2)(A) of title 17 
of the United States 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:
    (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,

[[Page 546]]

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 the name of a partnership or a corporation.
    (g) Copies of statements of account. A licensee shall file an 
original and one copy of the statement of account with the Licensing 
Division of the Copyright Office.
    (h) Royalty fee payment. (1) All royalty fees must be paid by a 
single electronic funds transfer, and must be received in the designated 
bank by the filing deadline for the relevant accounting period. The 
following information must be provided as part of the EFT and/or as part 
of the remittance advice as provided for in circulars issued by the 
Copyright Office:
    (i) Remitter's name and address;
    (ii) Name of a contact person, telephone number and extension, and 
email address;
    (iii) The actual or anticipated date that the EFT will be 
transmitted;
    (iv) Type of royalty payment (i.e., DART);
    (v) Total amount submitted via the EFT;
    (vi) Total amount to be paid by year and period;
    (vii) Number of Statements of Account that the EFT covers;
    (viii) ID numbers assigned by the Licensing Division;
    (ix) Legal name of the owner for each Statement of Account.
    (2) The remittance advice shall be attached to the Statement(s) of 
Account. In addition, a copy of the remittance advice shall be emailed 
or sent by facsimile to the Licensing Division.
    (3) The Office may waive the requirement for payment by electronic 
funds transfer as set forth in paragraph (1) of this section. To obtain 
a waiver, the remitter shall submit to the Licensing Division at least 
60 days prior to the royalty fee due date a certified statement setting 
forth the reasons explaining why payment by an electronic

[[Page 547]]

funds transfer would be virtually impossible or, alternatively, why it 
would impose a financial or other hardship on the remitter. The 
certified statement must be signed by a duly authorized representative 
of the entity making the payment. A waiver shall cover only a single 
payment period. Failure to obtain a waiver may result in the remittance 
being returned to the remitter.
    (i) 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.
    (j) Corrections, supplemental payments, and refunds--(1) General. 
Upon compliance with the procedures and within the time limits set forth 
in this paragraph (i), 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 (j)(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 (j)(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 
prescribed in Sec. 201.3(e) for each Statement of Account involved. 
Payment of

[[Page 548]]

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 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 (j) 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.
    (k) 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.
    (l) 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 for the digital audio recording obligation 
occurring within that accounting period. The accrual period shall end on 
the date the electronic payment submitted by the remitter is received. 
In cases where a waiver of the electronic funds transfer requirement is 
approved by the Copyright Office, and royalties payments are either late 
or underpaid, the accrual period shall end on the date the payment is 
postmarked. 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 the 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

[[Page 549]]

period if the interest charge is five dollars ($5.00) or less.
    (m) 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, as amended at 64 FR 36575, July 7, 1999; 65 
FR 48914, Aug. 10, 2000; 70 FR 30367, May 26, 2005; 70 FR 38022, July 1, 
2005; 71 FR 45740, Aug. 10, 2006; 72 FR 33692, June 19, 2007; 73 FR 
29073, May 20, 2008]



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 Sec. Sec. 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

[[Page 550]]

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).
    (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: Library of Congress, Copyright Office, Licensing Division, 
101 Independence Avenue, SE, Washington, DC 20557-6400. They may also be 
requested or submitted in person at the Licensing Division, Room LM-504, 
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

[[Page 551]]

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.
    (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; 64 
FR 36575, July 7, 1999; 73 FR 37839, July 2, 2008]



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

[[Page 552]]

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 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

[[Page 553]]

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 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 (NAFTA) 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

[[Page 554]]

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 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

[[Page 555]]

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; 66 FR 34373, June 28, 2001]



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 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

[[Page 556]]

    (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, P.O. Box 
70400, 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 prescribed in Sec. 201.3(c).
    (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

[[Page 557]]

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.
    (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:_____________________________________________

[[Page 558]]

    (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)
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; 71 FR 31092, June 1, 2006; 73 FR 37839, July 
1, 2008]



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, 
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

[[Page 559]]

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;
    (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 
prescribed in Sec. 201.3(c).
    (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 560]]

   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, as amended at 71 FR 31092, June 1, 2006; 73 
FR 37839, July 2, 2008]



Sec. Sec. 201.35-201.37  [Reserved]



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 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.

[[Page 561]]

    (e) Filing. A service provider may file the Interim Designation of 
Agent to Receive Notification of Claimed Infringement with the Copyright 
Information Section, 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, Washington, DC 
20024. Each designation shall be accompanied by a filing fee for 
Recordation of an Interim Designation of Agent to Receive Notification 
of Claimed Infringement under section 512(c)(2) in the amount prescribed 
in Sec. 201.3(c). 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 Copyright 
Information Section an amended Interim Designation of Agent to Receive 
Notification of Claimed Infringement, containing the current information 
required by Sec. 201.38(c). The amended Interim Designation shall be 
signed in accordance with the requirements of Sec. 201.38(d) and shall 
be accompanied by a fee equal to the amount prescribed in Sec. 201.3(c) 
for Recordation of an Interim Designation of Agent to Receive 
Notification of Claimed Infringement under section 512(c)(2).
    (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, as amended at 67 FR 38005, May 31, 2002; 72 
FR 5932, Feb. 8, 2007; 73 FR 37839, July 2, 2008]



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 is 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\x11 inch white paper with a one-inch 
margin.
    (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

[[Page 562]]

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 unpublished 
works;
    (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
    (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 Copyright Information Section, Room LM-
401, James Madison Memorial Building, Library of Congress, 101 
Independence Avenue, SE., Washington, DC.
    (2) Amount. The filing fee for recording Notice to Libraries and 
Archives is prescribed in Sec. 201.3(d).
    (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

[[Page 563]]

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
[squ] 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:
[squ] all rights.
[squ] 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:
[squ] Name:_____________________________________________________________
[squ] Address:__________________________________________________________
[squ] Telephone:________________________________________________________
[squ] Fax number (if any):______________________________________________
[squ] 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:
[squ] Name:_____________________________________________________________
[squ] Address:__________________________________________________________
[squ] Telephone:________________________________________________________
[squ] Fax number (if any):______________________________________________
[squ] E-mail address (if any):__________________________________________

                     Additional Content (OPTIONAL):

    12. Original copyright registration number: --------------------
    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:
[squ] that each work identified in this notice is subject to normal 
          commercial exploitation.
[squ] that a copy or phonorecord of each work identified in this notice 
          is available at a reasonable price.
Signature:______________________________________________________________
Date:___________________________________________________________________
[squ] Typed or printed name:____________________________________________
[squ] 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'': --------------------.

[[Page 564]]

    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, as amended at 66 FR 34373, June 28, 2001; 
71 FR 31092, June 1, 2006; 73 FR 37839, July 2, 2008]



Sec. 201.40  Exemption to prohibition against circumvention.

    (a) General. This section prescribes the classes of copyrighted 
works for which the Librarian of Congress has determined, pursuant to 17 
U.S.C. 1201(a)(1)(C) and (D), that noninfringing uses by persons who are 
users of such works are, or are likely to be, adversely affected. The 
prohibition against circumvention of technological measures that control 
access to copyrighted works set forth in 17 U.S.C. 1201(a)(1)(A) shall 
not apply to such users of the prescribed classes of copyrighted works.
    (b) Classes of copyrighted works. Pursuant to the authority set 
forth in 17 U.S.C. 1201(a)(1)(C) and (D), and upon the recommendation of 
the Register of Copyrights, the Librarian has determined that during the 
period from November 27, 2006 through October 27, 2009, the prohibition 
against circumvention of technological measures that effectively control 
access to copyrighted works set forth in 17 U.S.C. 1201(a)(1)(A) shall 
not apply to persons who engage in noninfringing uses of the following 
six classes of copyrighted works:
    (1) Audiovisual works included in the educational library of a 
college or university's film or media studies department, when 
circumvention is accomplished for the purpose of making compilations of 
portions of those works for educational use in the classroom by media 
studies or film professors.
    (2) Computer programs and video games distributed in formats that 
have become obsolete and which require the original media or hardware as 
a condition of access, when circumvention is accomplished for the 
purpose of preservation or archival reproduction of published digital 
works by a library or archive. A format shall be considered obsolete if 
the machine or system necessary to render perceptible a work stored in 
that format is no longer manufactured or is no longer reasonably 
available in the commercial marketplace.
    (3) Computer programs protected by dongles that prevent access due 
to malfunction or damage and which are obsolete. A dongle shall be 
considered obsolete if it is no longer manufactured or if a replacement 
or repair is no longer reasonably available in the commercial 
marketplace.
    (4) Literary works distributed in ebook format when all existing 
ebook editions of the work (including digital text editions made 
available by authorized entities) contain access controls that prevent 
the enabling either of the book's read-aloud function or of screen 
readers that render the text into a specialized format.
    (5) Computer programs in the form of firmware that enable wireless 
telephone handsets to connect to a wireless telephone communication 
network, when circumvention is accomplished for the sole purpose of 
lawfully connecting to a wireless telephone communication network.
    (6) Sound recordings, and audiovisual works associated with those 
sound recordings, distributed in compact disc format and protected by 
technological protection measures that control access to lawfully 
purchased works and create or exploit security flaws or vulnerabilities 
that compromise the security of personal computers, when circumvention 
is accomplished solely for the purpose of good faith testing, 
investigating, or correcting such security flaws or vulnerabilities.
    (c) Definition. ``Specialized format,'' ``digital text'' and 
``authorized entities'' shall have the same meaning as in 17 U.S.C. 121.

[65 FR 64574, Oct. 27, 2000, as amended at 68 FR 62018, Oct. 31, 2003; 
71 FR 68479, Nov. 27, 2006]

[[Page 565]]



PART 202_PREREGISTRATION AND 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 Reconsideration Procedure for Refusals to Register.
202.6-202.9 [Reserved]
202.10 Pictorial, graphic, and sculptural works.
202.11 Architectural works
202.12 Restored copyrights.
202.13-202.15 [Reserved]
202.16 Preregistration of copyrights.
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 audio and audiovisual 
          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. 408(f), 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.
    (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:

[[Page 566]]

    (1) The notice lacks one or more of the necessary elements (i.e., 
the word ``Copyright,'' the abbreviation ``Copr.'', or the symbol 
(copyright), or, in the case of a sound recording, the symbol 
(copyright); 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;
    (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; 66 FR 34373, June 28, 2001; 66 FR 
40322, Aug. 2, 2001]



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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[[Page 567]]

    (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)(4) 
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. This class 
includes periodicals; newspapers; annuals; and the journals, 
proceedings, transactions, etc. of societies.
    (2)(i) 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 Copyright Information Section, 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.
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    \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.

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[[Page 568]]

    (ii) For purposes of registration, the Register of Copyrights has 
prescribed a single form, Form CO, for registering a single work, in all 
subject matter, or for a single serial issue submitted on or after July 
1, 2007. Form CO may be used in place of Form TX, Form PA, Form VA, Form 
SR, Form SE, and Form SE/Group. Form CO allows the applicant to assign a 
specific registration class of TX (for literary works, including single 
serial issues), PA (works of the performing arts, including motion 
pictures and audiovisual works), SR (sound recordings), or VA (works of 
the visual arts, including architectural works). Copies of the generic 
registration form will be available free upon request to the Copyright 
Information Section, Library of Congress, Copyright Office, 101 
Independence Avenue, SE., Washington, DC 20559-6000. Application for 
registration using Form CO may be made in any of the following four 
ways:
    (A) electronically, i.e., the submission of an application form 
electronically at the Copyright Office website [www.copyright.gov], 
submission of deposit materials fixed in a digital format, and the 
required filing fee paid online through an electronic fund transfer, 
credit card, or through a Copyright Office deposit account; or
    (B) partially electronically, i.e., the submission of an application 
form electronically at the Copyright Office website [www.copyright.gov], 
submission of deposit materials in physically tangible formats 
separately mailed to the Copyright Office, and the required filing fee 
paid online through an electronic fund transfer, credit card, or through 
a Copyright Office deposit account; or
    (C) by completing a PDF version of the application available on the 
Office's website [www.copyright.gov], printing the completed form and 
mailing it in the same package with the required deposit copies and/or 
materials and appropriate filing fee in check, money order, or Copyright 
Office deposit account charge; or,
    (D) in hard copy form with respect to all required elements, i.e., 
submission of a completed printed application form, physically tangible 
deposit copies and/or materials, and the required filing fee, all 
elements being placed in the same package and sent by mail or delivered 
to the Copyright Office.
    (3) Continuation sheets. A continuation sheet, CON 1, is appropriate 
only in submissions for which a paper application is used and where 
additional space is needed by the applicant to provide all relevant 
information concerning a claim to copyright. A separate continuation 
sheet, CON 2, must be used to list contents titles, i.e., titles of 
independent works in which copyright is being claimed and which appear 
within a larger work or within a collection of works; examples are short 
stories within a published anthology or individual sound recording 
tracks appearing on a CD. An application may require use of both CON 1 
and CON 2 sheets.
    (4) 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

[[Page 569]]

    (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)(4) through (b)(10) 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.
    (5) 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-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).
    (6) 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 is 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

[[Page 570]]

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 Group Periodicals Registration, Library of 
Congress, 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 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.
    (7) 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.
    (8) 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;

[[Page 571]]

    (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 was first published as a contribution to a 
periodical (including newspapers) within a twelve-month period;\3\
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    \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.
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    (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 must consist of one of 
the following: one copy of the entire issue of the periodical, or, in 
the case of a newspaper, the entire section containing the contribution; 
tear sheets or proof copies of the contribution; a photocopy of the 
contribution itself, or a photocopy of the entire page containing the 
contribution; the entire page containing the contribution cut or torn 
from the collective work; the contribution cut or torn from the 
collective work; or photographs or photographic slides of the 
contribution or entire page containing the contribution as long as all 
contents of the contribution to be registered are clear and legible.
    (ii) An application for group registration under section 408(c)(2) 
of title 17 and paragraph (b)(8) of this section shall consist of:
    (A) A basic application for registration on Form TX, Form PA, or 
Form 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.
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    (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)(8)(i)(E) of this section.
    (9) 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

[[Page 572]]

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.
    (10) Group registration of published photographs. Pursuant to the 
authority granted by 17 U.S.C. 408(c)(1), the Register of Copyrights 
will accept a single application (on Form VA), deposit and filing fee 
for registration of a group of photographs if the following conditions 
are met:
    (i) The copyright claimant in all of the photographs must be the 
same.
    (ii) The photographer who photographed each of the photographs 
submitted for registration as part of the group must be the same person.
    (iii) The photographs in the group must have been published within 
the same calendar year.
    (iv) If the photographs in a group were all published on the same 
date, the date of publication must be identified in space 3b of the 
application. If the photographs in a group were not all published on the 
same date, the range of dates of publication (e.g., February 15-
September 15, 2004) must be provided in space 3b of the application, and 
the date of publication of each photograph within the group must be 
identified either:
    (A) On each deposited image;
    (B) In a text file on the CD-ROM or DVD that contains the deposited 
photographic images;
    (C) On a list that accompanies the deposit and provides the 
publication date for each image; or
    (D) On a special continuation sheet provided by the Copyright 
Office. Dates of publication must be provided in a way that clearly 
identifies the date of publication for each individual photograph in the 
group.
    (v) If the applicant chooses to identify the date of publication for 
each photograph in the group on a continuation sheet, the application 
may include no more than 50 continuation sheets identifying no more than 
750 photographs. For these purposes, the applicant must use the special 
continuation sheet for registration of a group of photographs made 
available by the Copyright Office.
    (vi) If each photograph within the group was first published within 
three months before the date on which an acceptable application, an 
acceptable deposit, and the applicable fee are received in the Copyright 
Office, the applicant may, in lieu of the procedure set forth in 
paragraph (b)(10)(iv) of this section, simply state the range of dates 
of publication (e.g., February 15-May 15, 2001) in space 3b of the 
application, without specifically identifying the date of publication of 
each photograph in the group either on the deposited image or on a 
continuation sheet.
    (vii) The deposit(s) and application must be accompanied by the fee 
set forth in Sec. 201.3(c) of this chapter for a basic registration.
    (viii) The applicant must state ``Group Registration/Photos'' and 
state the approximate number of photographs included in the group in 
space 1 of the application Form VA under the heading ``Previous or 
Alternative Titles'' (e.g., ``Group Registration/Photos; app. 450 
photographs'').
    (ix) If the photographs in the group are works made for hire, the 
applicant must note, as part of the applicant's entry in space 2 of the 
application Form VA for ``Name of Author,'' both the name of the 
employer for hire and

[[Page 573]]

the name of the photographer who photographed the works in the group 
(e.g., ``XYZ Corporation, employer for hire of John Doe'').
    (x) As an alternative to the best edition of the work, one copy of 
each photograph shall be submitted in one of the formats set forth in 
Sec. 202.20(c)(2)(xx).
    (11) 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 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, 
electronically or in printed form, on the appropriate form prescribed by 
the Register of Copyrights under paragraph (b) of this section. All 
completed application forms shall be accompanied by the appropriate 
filing fee, as required in Sec. 201.3(c) of this chapter, and the 
deposit copies and materials required under 17 U.S.C. 408 and Sec. 
202.20. \6\ All applications submitted for registration shall supply the 
information required by the particular application and shall include a 
certification. The certification shall consist of:
    (i) A designation that the party signing the print application, or 
submitting the application electronically, falls within an accepted 
status from among the following: author, claimant, an owner of exclusive 
rights, or a duly authorized agent of the author, claimant, owner of 
exclusive rights;
    (ii) For print applications, the handwritten signature of the party 
described in paragraph (c)(2)(i) of this section accompanied by the 
typed or printed name of that party; or, if an electronically submitted 
application, a name provided within the certification screen of the 
electronic application which represents a party described in paragraph 
(c)(2)(i) of this section;
    (iii) A declaration that information provided within the application 
is correct to the best of that party's knowledge; and,
    (iv) For print applications, the date of completion of the 
application form, with the date (month, day, year) printed, typed, or 
handwritten; or, if an electronically submitted application, the date of 
electronic receipt of the application by the Copyright Office, which 
date shall be provided automatically by the Copyright Office.
---------------------------------------------------------------------------

    \6\ In the case of applications for group registration of 
newspapers, contributions to periodicals, and newsletters, under 
paragraphs (b)(7), (b)(8), and (b)(9) 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.

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]

    Editorial Note: For Federal Register citations affecting Sec. 
202.3, see the List of CFR Sections Affected, which appears in the

[[Page 574]]

Finding Aids section of the printed volume and on GPO Access.



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]



Sec. 202.5  Reconsideration Procedure for Refusals to Register.

    (a) General. This section prescribes rules pertaining to procedures 
for administrative review of the Copyright Office's refusal to register 
a claim to copyright, a mask work, or a vessel hull design upon a 
finding by the Office that the application for registration does not 
satisfy the legal requirements of title 17 of the United States Code. If 
an applicant's initial claim is refused, the applicant is entitled to 
request that the initial refusal to register be reconsidered.
    (b) First reconsideration. Upon receiving a written notification 
from the Registration and Recordation Program explaining the reasons for 
a refusal to register, an applicant may request that the Registration 
and Recordation Program reconsider its initial decision to refuse 
registration, subject to the following requirements:
    (1) An applicant must request in writing that the Registration and 
Recordation Program reconsider its decision. A request for 
reconsideration must include the reasons the applicant believes 
registration was improperly refused, including any legal arguments in 
support of those reasons and any supplementary information. The 
Registration and Recordation Program will base its decision on the 
applicant's written submissions.
    (2) The fee set forth in Sec. 201.3(d)(3)(i) of this chapter must 
accompany the first request for reconsideration.
    (3) The first request for reconsideration and the applicable fee 
must be received by the Copyright Office no later than three months from 
the date that appears in the Registration and Recordation Program 
written notice of its initial decision to refuse registration. When the 
ending date for the three-month time period falls on a weekend or a 
Federal holiday, the ending day of the three-month period shall be 
extended to the next Federal work day.
    (4) If the Registration and Recordation Program decides to register 
an applicant's work in response to the first request for 
reconsideration, it will notify the applicant in writing of the decision 
and the work will be registered. However, if the Registration and 
Recordation Program again refuses to register the work, it will send the 
applicant a written notification stating the reasons for refusal within 
four months of the date on which the first request for reconsideration 
is received by the Registration and Recordation Program. When the ending 
date for the four-month time period falls on a weekend or a Federal 
holiday, the ending day of the four-month period shall be extended to 
the next Federal work day. Failure by the Registration and Recordation 
Program to send the written notification within the four-month period 
shall not result in registration of the applicant's work.
    (c) Second reconsideration. Upon receiving written notification of 
the Registration and Recordation Program's decision to refuse 
registration in response to the first request for reconsideration, an 
applicant may request that the Review Board reconsider the Registration 
and Recordation Program's refusal to register, subject to the following 
requirements:

[[Page 575]]

    (1) An applicant must request in writing that the Review Board 
reconsider the Registration and Recordation Program's decision to refuse 
registration. The second request for reconsideration must include the 
reasons the applicant believes registration was improperly refused, 
including any legal arguments in support of those reasons and any 
supplementary information, and must address the reasons stated by the 
Registration and Recordation Program for refusing registration upon 
first reconsideration. The Board will base its decision on the 
applicant's written submissions.
    (2) The fee set forth in Sec. 201.3(d)(3)(ii) of this chapter must 
accompany the second request for reconsideration.
    (3) The second request for reconsideration and the applicable fee 
must be received in the Copyright Office no later than three months from 
the date that appears in the Registration and Recordation Program's 
written notice of its decision to refuse registration after the first 
request for reconsideration. When the ending date for the three-month 
time period falls on a weekend or a Federal holiday, the ending day of 
the three-month period shall be extended to the next Federal work day.
    (4) If the Review Board decides to register an applicant's work in 
response to a second request for reconsideration, it will notify the 
applicant in writing of the decision and the work will be registered. If 
the Review Board upholds the refusal to register the work, it will send 
the applicant a written notification stating the reasons for refusal.
    (d) Submission of reconsiderations. (1) All mail, including any that 
is hand delivered, should be addressed as follows: RECONSIDERATION, 
Copyright RAC Division, P.O. Box 71380, Washington, DC 20024-1380. If 
hand delivered by a commercial, non-government courier or messenger, a 
request for reconsideration must be delivered between 8:30 a.m. and 4 
p.m. to: Congressional Courier Acceptance Site, located at Second and D 
Streets, NE., Washington, DC. If hand delivered by a private party, a 
request for reconsideration must be delivered between 8:30 a.m. and 5 
p.m. to: Room 401 of the James Madison Memorial Building, located at 101 
Independence Avenue, SE., Washington, DC.
    (2) The first page of the written request must contain the Copyright 
Office control number and clearly indicate either ``FIRST 
RECONSIDERATION'' or ``SECOND RECONSIDERATION,'' as appropriate, on the 
subject line.
    (e) Suspension or wavier of time requirements. For any particular 
request for reconsideration, the provisions relating to the time 
requirements for submitting a request under this section may be 
suspended or waived, in whole or in part, by the Register of Copyrights 
upon a showing of good cause. Such suspension or waiver shall apply only 
to the request at issue and shall not be relevant with respect to any 
other request for reconsideration from that applicant or any other 
applicant.
    (f) Composition of the Review Board. The Review Board shall consist 
of three members; the first two members are the Register of Copyrights 
and the General Counsel or their respective designees. The third member 
will be designated by the Register.
    (g) Final agency action. A decision by the Review Board in response 
to a second request for reconsideration constitutes final agency action.

[69 FR 77636, Dec. 28, 2004, as amended at 70 FR 7177, Feb. 11, 2005; 73 
FR 37839, July 2, 2008]



Sec. Sec. 202.6-202.9  [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

[[Page 576]]

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 Architectural Works Copyright 
Protection Act, title VII of 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.
    (3) Pre-December 1, 1990 building designs--(i) Published 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.
    (ii) Unpublished building designs. The designs of buildings that 
were unconstructed and embodied in unpublished plans or drawings on 
December 1, 1990, and remained unconstructed on December 31, 2002.

[57 FR 45310, Oct. 1, 1992, as amended at 68 FR 38630, June 30, 2003]



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

[[Page 577]]

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 registration of a claim in a restored work under section 104A, as 
amended, may be submitted to the Copyright Office on or after January 1, 
1996. The submission may be a completely electronic submission, with all 
required elements transmitted to the Office in electronic form; or, the 
submission may be partially electronic with the application form and fee 
submitted electronically and the deposit materials sent in physically 
tangible format(s). If all elements are submitted in physically tangible 
form, i.e., a completed, printed application form, physically tangible 
deposit copies/materials, and the appropriate filing fee in check, money 
order, or deposit account charge, all elements must be placed in the 
same package and sent to the following address: Library of Congress, 
Copyright Office, 101 Independence Avenue, SE., Washington, DC 20559-
6000.
    (2) GATT form. Application for registration for single works 
restored to copyright protection under URAA should be made on Form GATT. 
Form GATT may be submitted by completing Form GATT electronically, 
submitting the appropriate filing fee electronically, and sending the 
deposit copies and materials required by paragraph (c)(4) of this 
section by postal mail; or by printing Form GATT from the Office's 
website, sending it with the appropriate filing fee and deposit copies 
and materials required by paragraph (c)(4) of this section in the same 
package by mail; or by obtaining a Form GATT, completing it, and sending 
the appropriate filing fee and the deposit copies and materials required 
by paragraph (c)(4) of this section in the same package by mail. A 
printed Form GATT may be obtained by calling or writing the Copyright 
Office Hotline at 202-707-9100. The GATT deposit materials required by 
paragraph (c)(4) of this section may be submitted for examination and 
registration electronically. Where, however, the Library of Congress 
requests a particular work or its identifying material for its 
collections, the required print deposit materials must be submitted.
    (3) Fee--(i) Amount. The filing fee for registering a copyright 
claim in a restored work is prescribed in Sec. 201.3(c).
    (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

[[Page 578]]

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 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 Division of the 
Registration and Recordation Program for delivery instructions. The 
telephone number is: (202) 707-6040; the telefax number is: (202) 707-
1236.
    (d) Works excluded. Works which are not copyrightable subject matter 
under 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; 71 FR 31092, June 1, 2006; 72 FR 36888, July 
6, 2007; 73 FR 37839, July 2, 2008]



Sec. Sec. 202.13-202.15  [Reserved]



Sec. 202.16  Preregistration of copyrights.

    (a) General. This section prescribes rules pertaining to the 
preregistration of copyright claims in works eligible for 
preregistration under Section 408(f) of 17 U.S.C.
    (b) Definitions. For the purposes of this section--
    (1) A work is in a class of works that the Register of Copyrights 
has determined has had a history of infringement prior to authorized 
commercial release if it falls within one of the following classes of 
works:
    (i) Motion pictures;
    (ii) Sound recordings;
    (iii) Musical compositions;
    (iv) Literary works being prepared for publication in book form;
    (v) Computer programs (including videogames); or
    (vi) Advertising or marketing photographs.
    (2) A work is being prepared for commercial distribution if:
    (i) The claimant, in a statement certified by the authorized 
preregistering party, has a reasonable expectation that the work will be 
commercially distributed to the public; and

[[Page 579]]

    (ii) Preparation of the work has commenced and at least some portion 
of the work has been fixed in a tangible medium of expression, as 
follows:
    (A) For a motion picture, filming of the motion picture must have 
commenced;
    (B) For a sound recording, recording of the sounds must have 
commenced;
    (C) For a musical composition, at least some of the musical 
composition must have been fixed either in the form of musical notation 
or in a copy or phonorecord embodying a performance of some or all of 
the work;
    (D) For a literary work being prepared for publication in book form, 
the actual writing of the text of the work must have commenced;
    (E) For a computer program, at least some of the computer code 
(either source code or object code) must have been fixed; and
    (F) For an advertising or marketing photograph, the photograph (or, 
in the case of a group of photographs intended for simultaneous 
publication, at least one of the photographs) must have been taken.
    (3) A work eligible for preregistration is a work that is:
    (i) Unpublished;
    (ii) Being prepared for commercial distribution; and
    (iii) In a class of works that the Register of Copyrights has 
determined has had a history of infringement prior to authorized 
commercial release.
    (c) Preregistration--(1) General. A work eligible for 
preregistration may be preregistered by submitting an application and 
fee to the Copyright Office pursuant to the requirements set forth in 
this section.
    (2) Works excluded. Works that are not copyrightable subject matter 
under title 17 of the U.S. Code may not be preregistered in the 
Copyright Office.
    (3) Application form. An application for preregistration is made 
using Electronic Form PRE. The application must be submitted 
electronically on the Copyright Office website at: http://
www.copyright.gov.
    (4) Preregistration as a single work. For the purpose of 
preregistration on a single application and upon payment of a single 
preregistration fee, all copyrightable elements that are otherwise 
recognizable as self-contained works, that are to be included and first 
published in a single unit of publication, and in which the copyright 
claimant is the same, shall be considered a single work eligible for 
preregistration.
    (5) Fee--(i) Amount. The filing fee for preregistration is 
prescribed in Sec. 201.3(c).
    (ii) Method of payment. (A) Copyright Office deposit account. The 
Copyright Office maintains a system of Deposit Accounts for the 
convenience of those who frequently use its services and for those who 
file applications electronically. The system allows an individual or 
firm to establish a Deposit Account in the Copyright Office and to make 
advance deposits in that account. Deposit Account holders can charge 
preregistration fees against the balance in their accounts instead of 
using credit cards for each request of service. For information on 
Deposit Accounts, please download a copy of Circular 5, ``How to Open 
and Maintain a Deposit Account in the Copyright Office,'' or write the 
Register of Copyrights, Copyright Office, Library of Congress, 
Washington, D.C. 20559.
    (B) Credit cards, debit cards and electronic funds transfer. The 
online preregistration filing system will provide options for payment by 
means of credit or debit cards and by means of electronic funds 
transfers. Applicants will be redirected to the Department of Treasury's 
Pay.gov website to make payments with credit or debit cards, or directly 
from their bank accounts by means of ACH debit transactions.
    (C) No refunds. The preregistration filing fee is not refundable.
    (6) Description. No deposit of the work being preregistered should 
be submitted with an application for preregistration. The 
preregistration applicant should submit a detailed description, of not 
more than 2,000 characters (approximately 330 words), of the work as 
part of the application. The description should be based on information 
available at the time of the application sufficient to reasonably 
identify the work. Generally, the Copyright Office will not review 
descriptions for adequacy, but in an action for infringement of a 
preregistered work, the court may evaluate the adequacy

[[Page 580]]

of the description to determine whether the preregistration actually 
describes the work that is alleged to be infringed, taking into account 
the information available to the applicant at the time of 
preregistration and taking into account the legitimate interest of the 
applicant in protecting confidential information.
    (i) For motion pictures, such a description should include the 
following information to the extent known at the time of filing: the 
subject matter, a summary or outline, the director, the primary actors, 
the principal location of filming, and any other information that would 
assist in identifying the particular work being preregistered.
    (ii) For sound recordings, the identifying description should 
include the following information to the extent known at the time of 
filing: the subject matter of the work or works recorded, the performer 
or performing group, the genre of the work recorded (e.g., classical, 
pop, musical comedy, soft rock, heavy metal, gospel, rap, hip-hop, 
blues, jazz), the titles of the musical compositions being recorded, the 
principal recording location, the composer(s) of the recorded musical 
compositions embodied on the sound recording, and any other information 
that would assist in identifying the particular work being 
preregistered.
    (iii) For musical compositions, the identifying description should 
include the following information to the extent known at the time of 
filing: the subject matter of the lyrics, if any, the genre of the work 
(for example, classical, pop, musical comedy, soft rock, heavy metal, 
gospel, rap, hip-hop, blues, jazz), the performer, principal recording 
location, record label, motion picture, or other information relating to 
any sound recordings or motion pictures that are being prepared for 
commercial distribution and will include the musical composition, and 
any other detail or characteristic that may assist in identifying the 
particular musical composition.
    (iv) For literary works in book form, the identifying description 
should include to the extent known at the time of filing: the genre of 
the book, e.g., biography, novel, history, etc., and should include a 
brief summary of the work including, the subject matter (e.g., a 
biography of President Bush, a history of the war in Iraq, a fantasy 
novel); a description (where applicable) of the plot, primary 
characters, events, or other key elements of the content of the work; 
and any other salient characteristics of the book, e.g., whether it is a 
later edition or revision of a previous work, as well as any other 
detail which may assist in identifying the literary work in book form.
    (v) For computer programs (including videogames), the identifying 
description should include to the extent known at the time of filing, 
the nature, purpose and function of the computer program, including the 
programming language in which it is written, any particular organization 
or structure in which the program has been created; the form in which it 
is expected to be published, e.g. as an online-only product; whether 
there have been previous versions (and identification of such previous 
versions); the identities of persons involved in the creation of the 
computer program; and, if the work is a videogame, also describe the 
subject matter of the videogame and the overall object, goal or purpose 
of the game, its characters, if any, and the general setting and 
surrounding found in the game.
    (vi) For advertising or marketing photographs, the description 
should include the subject matter depicted in the photograph or 
photographs, including information such as the particular product, 
event, public figure, or other item or occurrence which the photograph 
is intended to advertise or market. To the extent possible and 
applicable, the description for photographs should give additional 
details which will assist in identifying the particular photographs, 
such as the party for whom such advertising photographs are taken; the 
approximate time periods during which the photographs are taken; the 
approximate number of photos which may be included in the grouping; any 
events associated with the photographs; and the location and physical 
setting or surrounding depicted in the photographs. The description may 
also explain the general presentation, e.g., the lighting, background 
scenery, positioning of elements of the

[[Page 581]]

subject matter as it is seen in the photographs, and should provide any 
locations and events, if applicable, associated with the photographs.
    (7) Review of preregistration information. The Copyright Office will 
conduct a limited review of applications for preregistration, in order 
to ascertain whether the application describes a work that is in a class 
of works that the Register of Copyrights has determined has had a 
history of infringement prior to authorized commercial release. However, 
a work will not be preregistered unless an applicant has provided all of 
the information requested on the application and has certified that all 
of the information provided on the application is correct to the best of 
the applicant's knowledge.
    (8) Certification. The person submitting an application for 
preregistration must certify on the application that he or she is the 
author, copyright claimant, or owner of exclusive rights, or the 
authorized agent of the author, copyright claimant, or owner of 
exclusive rights, of the work submitted for this preregistration; that 
the information given in this application is correct to the best of his 
or her knowledge; that the work is being prepared for commercial 
distribution; and that he or she has a reasonable expectation that the 
work will be commercially distributed to the public.
    (9) Effective date of preregistration. The effective date of a 
preregistration is the day on which an application and fee for 
preregistration of a work, which the Copyright Office later notifies the 
claimant has been preregistered or which a court of competent 
jurisdiction has concluded was acceptable for preregistration, have been 
received in the Copyright Office.
    (10) Notification of preregistration. Upon completion of the 
preregistration, the Copyright Office will provide the claimant official 
notification by email of the preregistration.
    (11) Certification of preregistation. A certified copy of the 
official notification may be obtained in physical form from the Records 
Research and Certification Section of the Information and Records 
Division at the address stated in Sec. 201.1(a)(3) of this chapter.
    (12) Public record of preregistration. The preregistration record 
will also be available to the public on the Copyright Office website, 
http://www.copyright.gov.
    (13) Effect of preregistration. Preregistration of a work offers 
certain advantages to a copyright owner pursuant to 17 U.S.C. 408(f), 
411 and 412. However, preregistration of a work does not constitute 
prima facie evidence of the validity of the copyright or of the facts 
stated in the application for preregistration or in the preregistration 
record. The fact that a work has been preregistered does not create any 
presumption that the Copyright Office will register the work upon 
submission of an application for registration.
    (14) Petition for recognition of a new class of works. At any time 
an interested party may petition the Register of Copyrights for a 
determination as to whether a particular class of works has had a 
history of copyright infringement prior to authorized release that would 
justify inclusion of that class of works among the classes of works 
eligible for preregistration.

[70 FR 61906, Oct. 27, 2005, as amended at 71 FR 31092, June 1, 2006; 73 
FR 37839, July 2, 2008]



Sec. 202.17  Renewals

    (a) General. (1) This section concerns renewal for copyrights 
originally secured from January 1, 1964, through December 31, 1977, 
either by publication with the required copyright notice or by 
registration as an unpublished work. Renewal registration for these 
works is optional. As provided in Pub. L. No. 102-307, 106 Stat. 264, 
enacted June 26, 1992, renewal registration made during the last year of 
the original 28-year term of copyright differs in legal effect from 
renewal registration made during the 67-year extended renewal term. In 
the latter instance, the copyright is renewed automatically at the 
expiration of the original 28-year term. In the former instance, renewal 
by registration during the last year of the original 28-year term vested 
the renewal copyright in the statutory claimant living on the date of 
registration.

[[Page 582]]

    (2) Works for which copyright was secured before 1964 are governed 
by the provisions of 17 U.S.C. 304(a) in effect prior to the 1992 date 
of enactment of Pub. L. No. 102-307. The copyrights in such works could 
have been renewed by registration only within the last calendar year of 
the original 28-year term of copyright protection. If renewal 
registration was not made during that period of time, copyright 
protection was lost when the original term of copyright expired and 
cannot be regained.
    (3) Works restored to copyright by the Uruguay Round Agreements Act 
are governed in their copyright term of protection by Pub. L. No. 103-
465, 108 Stat. 4809, 4976 (December 8, 1994). Under 17 U.S.C. 
104A(a)(1)(A) and (B), as amended, any work in which copyright is 
restored subsists for the remainder of the term of copyright that the 
work would have been otherwise granted in the United States. Such term 
includes the remainder of any applicable renewal term.
    (4) Automatic restoration of copyright in certain foreign works that 
were in the public domain in the United States may have occurred under 
the Uruguay Round Agreements Act and may be protected by copyright or 
neighboring rights in their ``source country,'' as defined at 17 U.S.C. 
104A(h)(8).
    (b) Definitions. (1) For purposes of this section, the terms 
assignee and successor, as they pertain to 17 U.S.C. 304(a)(3)(A)(ii), 
refer to a party which has acquired the renewal copyright in a work by 
assignment or by other means of legal succession from the statutory 
claimant [as that claimant is defined in 17 U.S.C. 304(a)(1)(B) and (C)] 
in whom the renewal copyright vested but in whose name no renewal 
registration was previously made.
    (2) For purposes of this section, a work has been copyrighted when 
it has been published with a proper copyright notice or, in the case of 
an unpublished work, when it has been registered for copyright.
    (3) 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.
    (4) For purposes of this section, the term statutory claimant means:
    (i) A party who was entitled to claim copyright for the renewal term 
at the time renewal registration was made either as a proprietary 
claimant, 17 U.S.C. 304(a)(2)(A)(i), or as a personal claimant, 17 
U.S.C. 304(a)(2)(B)(i), if registration was made during the original 
term of copyright; or
    (ii) If the original copyright term expired, a party who was 
entitled to claim copyright for the renewal term as of the last day of 
the original term of copyright as either a proprietary or a personal 
claimant, 17 U.S.C. 304(a)(2)(A)(ii) and (a)(2)(B)(ii).
    (5) For purposes of this section, the term to vest means to give a 
fixed, non-contingent right of present or future enjoyment of the 
renewal copyright in a work. If renewal registration was made during the 
28th year of the original term of copyright, the renewal copyright 
vested in the party or parties entitled to claim such copyright at the 
time of registration as provided by 17 U.S.C. 304(a)(1)(B) and (C). 
Although the vested right may have been determined by registration 
during the 28th year of the original term, the exercise of such right 
did not commence until the beginning of the renewal term, as provided in 
17 U.S.C. 304(a)(2). If renewal registration was not made during the 
28th year, the renewal copyright automatically vested upon the beginning 
of the renewal term in the party or parties entitled to claim such 
copyright on the last day of the original term as provided by 17 U.S.C. 
304(a)(2)(A)(ii) and (B)(ii).
    (c) Time limits: original term and renewal term registration. (1) 
Under 17 U.S.C. 304(a), prior to its amendment of June 26, 1992, a 
registration for the original term of copyright must have been made 
during the 28 years of that original term, and a renewal registration 
must also have been made during the 28th year of that term. Pub. L. No. 
102-307, 106 Stat. 264 (June 26, 1992) amended section 304(a) for works 
originally copyrighted from January 1, 1964,

[[Page 583]]

through December 31, 1977, and provided for optional original-term 
registration and optional renewal registration. 17 U.S.C. 304(a)(2), 
(a)(3) and 409(11). For such works, claims to renewal copyright could 
have been registered during the last year of the original term but such 
registration was not required in order to enjoy statutory protection 
during the renewal term. 17 U.S.C. 304(a)(3)(B).
    (2) A renewal registration can be made at any time during the 
renewal term. 17 U.S.C. 304(a)(3)(A)(ii). If no original-term 
registration was made, renewal registration remains possible; but the 
Register may request information, under 17 U.S.C. 409(11), regarding the 
original term of copyright. Such information must demonstrate that the 
work complies with all requirements of the 1909 Act with respect to the 
existence, ownership, or duration of the copyright for the original term 
of the work. The Form RE/Addendum is used to provide this information.
    (3) Renewal registration is currently available for works 
copyrighted from January 1, 1964, through December 31, 1977. Under the 
provisions of 17 U.S.C. 304(a)(3)(A)(ii), renewal registration may be 
made any time during the 67-year renewal term for such works according 
to the procedure indicated in paragraph (h) of this section. Such 
renewal registration is optional and is not a condition of the 
subsistence of the copyright for the 67-year renewal term. 17 U.S.C. 
304(a)(3)(B). In the case of such works for which no registration was 
made during the original term of copyright, renewal registration may be 
made by submission of a Form RE/Addendum. The Addendum, an adjunct to 
the renewal form, concerns the facts of first publication for a work and 
assures the Copyright Office that the work as it existed in its original 
term of copyright was in compliance with the 1909 copyright law, 17 
U.S.C. 1, et. seq. (1909 Act, in effect through December 31, 1977), 
whose provisions govern such works.
    (d) Benefits of 28th-year renewal registration. Prior to January 1, 
2006, renewal registration was available during the 28th year of the 
original term of copyright for works copyrighted from January 1, 1964, 
through December 31, 1977. As provided in Pub. L. No. 102-307, 106 Stat. 
264, registration made during the 28th year of the original term of 
copyright provided the following benefits to the registrant:
    (1) The certificate of registration constituted prima facie evidence 
as to the validity of the copyright during its renewal term and of the 
facts stated in the certificate. 17 U.S.C. 304(a)(4)(B).
    (2) A derivative work prepared under the authority of a grant of a 
transfer or license of copyright in a work made before the expiration of 
the original term of copyright could not continue to be used under the 
terms of the grant during the renewal term without the authority of the 
owner of the renewal copyright. 17 U.S.C. 304(a)(4)(A).
    (3) The renewal copyright vested upon the beginning of the renewal 
term in the party entitled to claim the renewal of copyright at the time 
the application was made as provided under 17 U.S.C. 304(a)(2)(A)(i) and 
(B)(i).
    (e) Statutory parties entitled to claim copyright for the renewal 
term under Section 304(a). (1) Renewal claims must be registered in the 
name of the party or parties entitled to claim copyright for the renewal 
term as provided in paragraphs (e)(2) through (4) of this section and as 
specified in 17 U.S.C. 304(a). If a work was a new version of a 
previously published or registered work, renewal registration may be 
claimed only in the new matter.
    (2) If the renewal claim was submitted during the last, i.e., the 
28th, year of the original term of copyright, the claim had to be 
registered in the name[s] of the statutory claimant[s] entitled to claim 
the renewal copyright on the date on which the claim was submitted to 
the Copyright Office. If the renewal claim is submitted during the 
sixty-seven year extended renewal term, the renewal claim can be 
registered only in the name[s] of the statutory claimant[s] entitled to 
claim the renewal on the last day (December 31) of the original term of 
copyright. These eligible renewal claimants are listed below:
    (i) The person who, on the applicable day, was the copyright 
proprietor is the appropriate renewal claimant in

[[Page 584]]

any posthumous work or any periodical, encyclopedia, or other composite 
work upon which the copyright was originally secured by the proprietor;
    (ii) The person who, on the applicable day, was the copyright 
proprietor is the appropriate claimant in 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 was made for 
hire;
    (iii) For any other copyrighted work, including a contribution by an 
individual author to a periodical or to a cyclopedic or other composite 
work, the appropriate claimants, in descending order of eligibility, are 
the person who, on the applicable day, was:
    (A) The author(s) of the work, if still living;
    (B) The widow(er) and/or child(ren) of the author, if the author was 
deceased on the applicable day;
    (C) The author's executor(s), if still acting in that capacity on 
the applicable day, provided the author had a will and neither the 
author, nor any widow(er) or child of the author is still living; or
    (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.
    (3) The provisions of paragraphs (e)(1) and (2) of this section are 
subject to the following qualification: Notwithstanding the definition 
of ``posthumous work'' in paragraph (b)(4) of this section, a renewal 
claim may be registered in the name of the proprietor of a work, as well 
as in the name of the appropriate claimant under paragraph (e)(2)(iii) 
of this section, in any case in which 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 either 
claim.
    (4) The provisions of paragraphs (e)(2)(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, removed before the estate has 
been completely administered, or is deceased at the time of the renewal 
registration submission, the renewal claim may be registered either in 
the 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 (e) 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 conflicting renewal claims in 
such a case should not be interpreted as evidencing the validity of 
either claim.
    (f) Successors/assignees entitled to file an application for the 
renewal term under Section 304(a). The provisions of paragraph (e) of 
this section are subject to the following qualifications:
    (1) Where no renewal registration has been made in the name of a 
person or entity identified in paragraphs (e)(2)(i), (ii) and (iii) of 
this section, a renewal application may be filed at any time during the 
renewal term by any successor or assignee of such person or entity.
    (2) In such cases described in paragraph (f)(1)(i) of this section, 
the renewal application must identify the party in whom the renewal 
copyright vested; must indicate the basis upon which copyright for the 
renewal term vested in that party; must identify the party who is the 
successor or assignee of the statutory claimant under 17 U.S.C. 
304(a)(3); and, must give the manner by which such successor/assignee 
secured the renewal copyright.
    (3) When such a claim has been filed by a successor or assignee in 
the name of the statutory claimant as described

[[Page 585]]

in paragraph (e)(2)(i), (ii) and (iii) of this section, generally no 
subsequent claims may be filed by other successors or assignees whose 
rights are derived from the same statutory claimant. If a public record 
of renewal ownership is sought by other successors or assignees of the 
same statutory claimant, the document of transfer of the renewal 
copyright, either the renewal in its entirety or in part, may be 
recorded in the Copyright Office.
    (4) Where a successor or assignee claims the renewal right from the 
same statutory claimant as does another successor or assignee, the 
Copyright Office may inquire concerning the situation and, if 
appropriate, may allow adverse renewal claims from the successors/
assignees to be placed on the public record. In such cases, 
correspondence between the parties filing competing renewal claims and 
the Copyright Office will be, as always, maintained within Office 
records and subject to public inspection according to regulations found 
at 37 CFR 201.2.
    (g) Application for renewal registration for a work registered in 
its original 28-year term. (1) Each application for renewal registration 
shall be submitted on Form RE. All forms are available free of charge 
via the Internet by accessing the Copyright Office homepage at http://
www.copyright.gov. Copies of Form RE are also available free upon 
request to the Copyright Information Section, United States Copyright 
Office, Library of Congress, 101 Independence Avenue, Washington, DC 
20559-6000.
    (2) (i) An application for renewal registration may be submitted by 
any eligible statutory renewal claimant as specified in paragraph (e) of 
this section or by the duly authorized agent of such claimant, or by the 
successor or assignee of such claimant as provided under paragraph (f) 
of this section or by the duly authorized agent of such successor or 
assignee.
    (ii) An application for renewal registration shall be accompanied by 
the required fee as set forth in 37 CFR 201.3. 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 a successor or assignee, or the duly authorized agent of such 
claimant or of such successor or assignee (whose identity shall also be 
given);
    (B) The handwritten signature of such claimant, successor or 
assignee, 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.
    (3) Once a renewal registration has been made, the Copyright Office 
will not accept another application for renewal registration on behalf 
of the same renewal claimant.
    (h) Renewal with addendum registration for an unregistered work. (1) 
General. For published works copyrighted from January 1, 1964, through 
December 31, 1977, where no registration was made during the original 
term of copyright and where renewal registration is sought during the 
67-year renewal term, the Form RE/Addendum must be used to provide 
information concerning the original term of copyright. The Form RE/
Addendum requires a separate fee and the deposit of one copy or 
phonorecord of the work as first published (or identifying material in 
lieu of a copy or phonorecord). The effective date of registration for a 
renewal claim submitted on a Form RE/Addendum is the date the Copyright 
Office receives an acceptable completed application, the required fees, 
and an acceptable deposit for the work.
    (2) Time Limits. A renewal claim accompanied by an Addendum to Form 
RE may be filed at any time during the 67-year renewal term.
    (3) Content. The Form RE/Addendum 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 nation of first publication of the work;
    (v) The citizenship of the author(s) on the date of first 
publication of the work;

[[Page 586]]

    (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, and 
thereafter until March 1, 1989 [effective date of the Berne 
Implementation Act of 1988], all the copies or phonorecords of the work, 
including reprints of the work, published, i.e., publicly distributed in 
the United States or elsewhere, under the authority of the author or 
other copyright proprietor, bore the copyright notice required by the 
Copyright Act of 1909 and that United States copyright subsists in the 
work;
    (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 Form RE/Addendum must 
also contain information about the country of manufacture and the 
manufacturing processes; and
    (ix) The handwritten signature of the renewal claimant or successor 
or assignee, or the duly authorized agent of the claimant or of the 
successor or assignee. The signature shall be accompanied by the printed 
or typewritten name of the person signing the Addendum and by the date 
of the signature; and shall be immediately preceded by a declaration 
that the statements made in the application are correct to the best of 
that person's knowledge.
    (4) Fees. Form RE and Form RE/Addendum must be accompanied by the 
required fee for each form as required in 37 CFR 201.3.
    (5) Deposit requirement. One copy or phonorecord or identifying 
material of the work as first published in accordance with the deposit 
requirements set out in 37 CFR 202.20 and 202.21 is required.
    (6) Waiver of the deposit requirement. Where the renewal applicant 
asserts that it is either impossible or otherwise an undue hardship to 
satisfy the deposit requirements of 37 CFR 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 descending order of 
preference. In every case, however, proof of the copyright notice 
showing the content and location of the notice as it appeared on copies 
or phonorecords of the work as first published must be included.
    (i) A reproduction of the entire work as first published (e.g., 
photocopy, videotape, audiotape, CD-ROM, DVD are examples of physical 
media which may hold reproductions of a work as first published). If the 
work is a contribution to a periodical, a reproduction of only the 
contribution (including the relevant copyright notice) will suffice.
    (ii) A reprint of the work (e.g., a later edition, a later release 
of a phonorecord, or the like). The reprint must show the copyright 
notice as it appeared in the same location within the first published 
copy of the work as well as the exact content of the copyright notice 
appearing in the first published edition. If the copyrightable content 
of the reprint differs from that of the first published edition, an 
explanation of the differences between the two editions is required.
    (iii) Identifying material including a reproduction of the greatest 
feasible portion of the copyrightable content of a work including a 
photocopy or photograph of the title page, title screen, record label or 
the like, as first published, and a photocopy or photograph showing the 
copyright notice content and location as first published. The Copyright 
Office may request deposit of additional material if the initial 
submission is inadequate for examination purposes.

[72 FR 61803, Nov. 1, 2007, as amended at 73 FR 37839, July 2, 2008]



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

[[Page 587]]

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. The ``best 
edition'' requirement is described in detail at Appendix B to this part.
    (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.
    (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 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

[[Page 588]]

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.
    (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

[[Page 589]]

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 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 8x10 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

[[Page 590]]

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 Associate Register for Registration and Recordation 
Program, 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 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; 64 FR 
62978, Nov. 18, 1999; 66 FR 34373, June 28, 2001; 73 FR 37839, July 2, 
2008]



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). For purposes of this section, if a work is

[[Page 591]]

first published in both hard copy, i.e., in a physically tangible 
format, and also in an electronic format, the current Library of 
Congress Best Edition Statement requirements pertaining to the hard copy 
format apply.
    (2) A complete copy or phonorecord means the following:
    (i) Unpublished works. Subject to the requirements of paragraph 
(b)(2)(vii) 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) (iv) through (vii) 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) Works submitted for registration in digital formats. A 
`complete' electronically filed work is one which is embodied in a 
digital file which contains:
    (A) if the work is unpublished, all authorship elements for which 
registration is sought; and
    (B) if the work is published solely in an electronic format, all 
elements constituting the work in its published form, i.e., the complete 
work as published, including metadata and authorship for which 
registration is not sought. Publication in an electronic only format 
requires submission of the digital file[s] in exact first-publication 
form and content.
    (C) For works submitted electronically, any of the following file 
formats are acceptable for registration: PDF; TXT; WPD; DOC; TIF; SVG; 
JPG; XML; HTML; WAV; and MPEG family of formats, including MP3. This 
list of file formats is non-exhaustive and it may change, or be added to 
periodically. Changes will be noted in the list of acceptable formats on 
the Copyright Office website.
    (D) Contact with the registration applicant may be necessary if the 
Copyright Office cannot access, view, or examine the content of any 
particular digital file that has been submitted for the registration of 
a work. For purposes of section 410(d) of 17 U.S.C., a deposit has not 
been received in the Copyright Office until a copy that can be reviewed 
by the Office is received.
    (iv) 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, 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.
    (v) 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;
    (vi) 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;

[[Page 592]]

    (vii) 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;
    (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;

[[Page 593]]

    (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 Registration and Recordation 
Program 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 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.

[[Page 594]]

    (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 
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

[[Page 595]]

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 paragraph (c)(2)(vii)(D) of this section, 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) of this section.
    (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 paragraphs (c)(2)(vii)(D)(6) or (7) of this section, 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 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

[[Page 596]]

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, 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

[[Page 597]]

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) of this section, 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, 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 Registration and Recordation 
Program 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

[[Page 598]]

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 8x10 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 Registration and Recordation 
Program 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.
    (xx) Photographs: group registration. For groups of photographs 
registered with one application under Sec. Sec. 202.3(b)(3)(i)(B) 
(unpublished collections) or 202.3(b)(9) (group registration of 
published photographs), photographs must be deposited in one of the 
following formats (listed in the Library's order of preference):
    (A) Digital form on one or more CD-ROMs (including CD-RW's) or DVD-
ROMs, in one of the following formats: JPEG, GIF, TIFF, or PCD;
    (B) Unmounted prints measuring at least 3 inches by 3 inches (not to 
exceed 20 inches by 24 inches);
    (C) Contact sheets;
    (D) Slides, each with a single image;
    (E) A format in which the photograph has been published (e.g., 
clippings from newspapers or magazines);

[[Page 599]]

    (F) A photocopy of each of the photographs included in the group, 
clearly depicting the photograph, provided that if registration is made 
pursuant to Sec. 202.3(b)(9) for group registration of photographs, the 
photocopy must be either a photocopy of an unmounted print measuring at 
least 3 inches by 3 inches (not to exceed 20 inches by 24 inches) or a 
photocopy of the photograph in a format in which it has been published, 
and if the photograph was published as a color photograph, the photocopy 
must be a color photocopy;
    (G) Slides, each containing up to 36 images; or
    (H) A videotape clearly depicting each photograph.
    (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 Associate Register for 
Registration and Recordation Program 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; 64 
FR 36575, July 7, 1999; 66 FR 42941, Aug. 16, 2001; 72 FR 36889, July 6, 
2007; 72 FR 40746, July 25, 2007; 73 FR 37839, July 2, 2008]



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 Sec. Sec. 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,

[[Page 600]]

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 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 3x3 inches and no larger than 9x12 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

[[Page 601]]

    (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 Registration 
and Recordation Program 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;
    (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, as amended at 73 FR 37839, July 2, 2008]



Sec. 202.22  Acquisition and deposit of unpublished audio and audiovisual
transmission programs.

    (a) General. This section prescribes rules pertaining to the 
acquisition of phonorecords and copies of unpublished audio and 
audiovisual transmission programs by the Library of Congress under 
section 407(e) of title 17 of the United States Code, as amended. It 
also prescribes rules pertaining to the use of such phonorecords and 
copies in the registration of claims to copyright, under section 408(b).
    (b) Definitions. For purposes of this section:
    (1) The terms copies, fixed, phonorecords, 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. For the purpose of this 
section, the term transmission includes transmission via the Internet, 
cable, broadcasting, and satellite systems, and via any other existing 
or future devices or processes for the communication of a performance or 
display whereby images or sounds are received beyond the place from 
which they are sent.
    (2) Title 17 means title 17 of the United States Code, as amended.
    (c) Recording of transmission programs. (1) Library of Congress 
employees, including Library of Congress contractors, acting under the 
general authority of the Librarian of Congress, may make a fixation of 
an unpublished audio or audiovisual transmission program directly from a 
transmission to the public in the United States, in accordance with 
subsections 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's acquisition policies in effect at the time of fixation. 
Specific notice of an intent to record a transmission program will 
ordinarily not be given. In general, the Library of Congress will seek 
to record a substantial portion of the television programming 
transmitted by noncommercial educational broadcast stations as defined 
in section 397 of title 47 of the United States Code, and will record 
selected programming transmitted by commercial television broadcast 
stations, both network and independent. The Library will also record a 
selected portion of the radio programming transmitted by commercial and 
noncommercial broadcast stations. Additionally, the Library will record 
a selected portion of unpublished Internet, cable and satellite 
programming transmitted to the public in the United States.
    (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 
recorded by the Library.
    (3) The Library of Congress will not knowingly record any unfixed or 
published transmission program under the recording authority of section 
407(e) of title 17 of the United States Code.

[[Page 602]]

    (4) The Library of Congress is entitled under this paragraph (c) to 
presume that a radio program transmitted to the public in the United 
States has been fixed but not published at the time of transmission, and 
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 recording 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; and
    (iv) The actual handwritten signature of an officer or other duly 
authorized agent of the organization which transmitted the program in 
question.
    (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 copy or phonorecord 
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 or phonorecord to satisfy the deposit requirement of 
section 407(a) of title 17 of the United States Code.
    (8) The Library of Congress shall maintain a list of the radio, 
cable, Internet and satellite transmission programs that the Library has 
recorded on the Motion Picture, Broadcasting and Recorded Sound Division 
Web site at http://www.loc.gov/rr/record/ for audio transmission 
programs, or http://www.loc.gov/rr/mopic/ for audiovisual transmission 
programs, and, in making fixations of such unpublished transmission 
programs, shall identify a program that the Library has recorded by 
including that transmission program on the list no later than fourteen 
days after such fixation has occurred. The Library of Congress in making 
fixations of unpublished television 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 television network stations, the notification will 
be sent to the particular network. In the case of any other commercial 
television 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

[[Page 603]]

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 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 or phonorecord 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 or phonorecord to the Library, lending a 
copy or phonorecord to the Library for reproduction, or selling a copy 
or phonorecord to the Library at a price not to exceed the cost of 
reproducing and supplying the copy or phonorecord;
    (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 use 
of the copies or phonorecords;
    (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, if the 
recipient takes the position that the work is published; and
    (vi) A statement that a compliance copy, or in the case of an audio 
transmission program, a compliance phonorecord, 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 or phonorecord in compliance with a demand of this nature 
shall be at a price not to exceed the cost to the Library of reproducing 
and supplying the copy or phonorecord. 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 and phonorecords 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 should be granted.
    (e) Disposition and use of copies and phonorecords. (1) All copies 
and phonorecords 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 or phonorecord 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 and phonorecords acquired or made under this section, 
except copies and phonorecords of transmission programs consisting of a 
regularly scheduled newscast or on-the-spot

[[Page 604]]

coverage of news events, shall be subject to the following restrictions 
concerning copying and access: in the case of television or other 
audiovisual transmission programs, copying and access are governed by 
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; in the case 
of audio transmission programs, copying and access are governed by 
Library of Congress Regulation 818-18.1, Recorded Sound Listening and 
Duplication Services, or its successors. 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,'' 2 U.S.C. 170, and such regulations as the 
Librarian of Congress shall prescribe.
    (f) Registration of claims to copyright. (1) Copies and phonorecords 
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 or 
phonorecord so fixed be used to satisfy the registration deposit 
provisions.
    (2) Copies and phonorecords 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 or phonorecord 
lent, transferred, or sold, and there is an explanation that the copy or 
phonorecord 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 or phonorecords of unpublished audio or 
audiovisual transmission programs on terms different from those 
contained in this section is authorized.
    (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; 64 FR 36575, July 7, 1999; 66 FR 34373, June 
28, 2001; 69 FR 62411, Oct. 26, 2004]



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

[[Page 605]]

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 Records 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) of this 
section 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 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 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 or after September 19, 1978, shall satisfy the requirements of 
Sec. Sec. 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

[[Page 606]]

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; 64 FR 36575, July 7, 
1999; 65 FR 39819, June 28, 2000; 73 FR 37839, July 2, 2008]



   Sec. 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
    (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]

[[Page 607]]



 Sec. 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 
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. 8x10-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, by special arrangement

[[Page 608]]

    2. 70 mm positive print, if original production negative is greater 
than 35 mm
    3. 35 mm positive prints
    4. 16 mm positive prints
    B. Video Formats
    1. Betacam SP
    2. Digital Beta (Digibeta)
    3. DVD
    4. 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 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.

[[Page 609]]

    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; 69 
FR 8822, Feb. 26, 2004]



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.

[43 FR 774, Jan. 4, 1978, as amended at 66 FR 34373, June 28, 2001]



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, litigation and promulgation of 
copyright regulations. The Office of the Register of Copyrights includes 
the legal, administrative, and automation staff.
    (b) The Copyright Office Chief of Operations has oversight of the 
operating divisions of the Copyright Office. The operating divisions 
are:
    (1) The Receipt, Analysis and Control Division, which receives 
incoming materials, dispatches outgoing materials and establishes 
control over fiscal accounts.
    (2) The Registration and Recordation Program, which examines all 
applications and material presented to the Copyright Office for 
registration of original and renewal copyright claims, and which 
determines whether the material deposited constitutes coyrightable 
subject matter and

[[Page 610]]

whether the other legal and formal requirements of title 17 have been 
met.
    (3) The Registration and Recordation Program, 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 Records Division, which provides a national 
copyright information service through the Copyright Information Section, 
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 Records 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 Royalty 
Board.
    (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 Royalty Board.
    (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 copyright protection, as 
well as legislative and policy matters.
    (e) The Office has no field organization.
    (f) The Office is located in The James Madison Memorial Building of 
the Library of Congress, 1st and Independence Avenue, SE, Washington, 
DC. 20559-6000. 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.
    (g) 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.
    (h) 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:

[[Page 611]]

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; 
64 FR 36575, July 7, 1999; 65 FR 39819, June 28, 2000; 66 FR 34373, June 
28, 2001; 73 FR 37839, July 2, 2008]

                               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 20559-6000, 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. If a 
request is made by mail, both the request and the envelope containing 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, 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, SE, 
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

[[Page 612]]

    (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 requester 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 at: Copyright GC/I&R, P.O. 
Box 70400, Washington, DC 20024. The appeal should be clearly labeled 
`Freedom of Information Act Appeal'.
    (g) 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 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; 64 FR 36575, July 7, 
1999; 65 FR 39819, June 28, 2000; 66 FR 34373, June 28, 2001; 73 FR 
37839, July 2, 2008]

                       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

[[Page 613]]

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 the 
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 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.

[[Page 614]]

    (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 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

[[Page 615]]

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; 66 FR 34373, June 28, 2001]



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; 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:
    (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

[[Page 616]]

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, Copyright Information 
Section, Copyright GC/I&R, P.O. Box 70400,, Washington, DC 20024, 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 made by 
individuals wishing to gain access to view or copy their records or any 
information pertaining to the individual, within a reasonable time. The 
Office will acknowledge in writing an individual's request to amend a 
record pertaining to him or her within ten business days.
    (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; 64 FR 36575, July 7, 
1999; 65 FR 39820, June 28, 2000; 73 FR 37839, July 2, 2008]



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, 
Copyright Information Section, Copyright GC/I&R, P.O. Box 70400, 
Washington, DC 20024, 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 
20 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

[[Page 617]]

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; 64 FR 36575, July 7, 1999; 65 FR 39820, June 
28, 2000; 73 FR 37839, July 2, 2008]



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, Copyright Information Section, Copyright GC/I&R, P.O. Box 
70400, Washington, DC 20024, 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 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 ten 
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; 64 FR 36575, July 7, 1999; 65 FR 39820, June 
28, 2000; 73 FR 37839, July 2, 2008]



Sec. 204.8  Appeal of refusal to correct or amend an individual's record.

    (a) An individual who disagrees with a refusal of the Copyright 
Office to amend his or her record may request a review of the denial. 
The decision will be made within 30 business days, unless the Office can 
demonstrate good cause for extending the 30 day period. If the requestor 
is dissatisfied with the agency's final determination, the individual 
may bring a civil action against the Office in the appropriate United 
States district court. appeal the refusal to correct or amend a record 
pertaining to the individual. The individual should submit a written 
appeal to the General Counsel, Copyright Office, Copyright GC/I&R, P.O. 
Box 70400, Washington, DC 20024. Appeals, and the envelopes containing 
them, should be plainly marked ``Privacy Act Appeal.'' Failure to so 
mark the appeal may delay the Copyright Office General Counsel'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 General Counsel will issue a written decision granting or 
denying

[[Page 618]]

the appeal within 30 working days after receipt of the appeal unless, 
after showing good cause, the General Counsel 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 General 
Counsel'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.

[43 FR 776, Jan. 4, 1978, as amended at 64 FR 36575, July 7, 1999; 65 FR 
39820, June 28, 2000; 65 FR 48914, Aug. 10, 2000; 66 FR 34373, June 28, 
2001; 73 FR 37840, July 2, 2008]



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 205_LEGAL PROCESSES--Table of Contents




                      Subpart A_General Provisions

Sec.
205.1 Definitions.
205.2 Address for mail and service; telephone number.
205.3 Waiver of rules.
205.4 Relationship of this part to the Federal Rules of Civil and 
          Criminal Procedure.
205.5 Scope of this part related to Copyright Office duties under title 
          17 of the U.S. Code.

                      Subpart B_Service of Process

205.11 Scope and purpose.
205.12 Process served on the Register of Copyrights or an employee in 
          his or her official capacity.
205.13 Complaints served on the Register of Copyrights pursuant to 17 
          U.S.C. 411(a).

 Subpart C_Testimony by Employees and Production of Documents in Legal 
             Proceedings in Which the Office is Not a Party

205.21 Scope and purpose.
205.22 Production of documents and testimony.
205.23 Scope of testimony.

    Authority: 17 U.S.C. 702.

    Source: 69 FR 39334, June 30, 2004, unless otherwise noted.



                      Subpart A_General Provisions



Sec. 205.1  Definitions.

    For the purpose of this part:
    Demand means an order, subpoena or any other request for documents 
or testimony for use in a legal proceeding.
    Document means any record or paper held by the Copyright Office, 
including, without limitation, official letters, deposits, recordations, 
registrations, publications, or other material submitted in connection 
with a claim for registration of a copyrighted work.
    Employee means any current or former officer or employee of the 
Copyright Office, as well as any individual subject to the jurisdiction, 
supervision, or control of the Copyright Office.
    General Counsel, unless otherwise specified, means the General 
Counsel of the Copyright Office or his or her designee.
    Legal proceeding means any pretrial, trial, and post trial stages of 
existing or reasonably anticipated judicial or administrative actions, 
hearings, investigations, or similar proceedings before courts, 
commissions, boards or other tribunals, foreign or domestic. This phrase 
includes all phases of discovery as well as responses to formal or 
informal requests by attorneys or others involved in legal proceedings. 
This phrase also includes state court proceedings (including grand jury 
proceedings) and any other state or local legislative and administrative 
proceedings.
    Office means the Copyright Office, including any division, section, 
or operating unit within the Copyright Office.
    Official business means the authorized business of the Copyright 
Office.
    Testimony means a statement in any form, including a personal 
appearance before a court or other legal tribunal, an interview, a 
deposition, an affidavit or declaration under penalty of perjury 
pursuant to 28 U.S.C. 1746, a telephonic, televised, or videotaped 
statement or any response given during discovery or

[[Page 619]]

similar proceeding, which response would involve more than the 
production of documents, including a declaration under 35 U.S.C. 25 or a 
declaration under penalty of perjury pursuant to 28 U.S.C. 1746.
    United States means the Federal Government, its departments and 
agencies, individuals acting on behalf of the Federal Government, and 
parties to the extent they are represented by the United States.



Sec. 205.2  Address for mail and service; telephone number.

    (a) Mail under this part should be addressed to the General Counsel, 
Copyright GC/I&R, P.O. Box 70400, Washington, DC 20024-0400.
    (b) Service by hand shall be made upon an authorized person from 
8:30 a.m. to 5 p.m., Monday through Friday in the Copyright Information 
Section, U.S. Copyright Office, Library of Congress, James Madison 
Memorial Building, Room LM-401, 101 Independence Avenue, SE., 
Washington, DC. Persons authorized to accept service of process are the 
General Counsel of the Copyright Office and his or her designees.
    (c) The Office of the General Counsel may be reached by telephone 
during normal business hours specified in paragraph (b) of this section 
at 202-707-8380.

[69 FR 39334, June 30, 2004, as amended at 73 FR 37840, July 2, 2008]



Sec. 205.3  Waiver of rules.

    In extraordinary situations, when the interest of justice requires, 
the General Counsel may waive or suspend the rules of this part, sua 
sponte or on petition of an interested party, subject to such 
requirements as the General Counsel may impose on the parties. However, 
the inclusion of certain legal processes within the scope of these 
rules, e.g., state legal proceedings, does not represent a waiver of any 
claim of immunity, privilege, or other defense by the Office in a legal 
proceeding, including but not limited to, sovereign immunity, 
preemption, or lack of relevance. This rule does not create any right or 
benefit, substantive or procedural, enforceable at law by a party 
against the Copyright Office, the Library of Congress, or the United 
States.



Sec. 205.4  Relationship of this part to the Federal Rules of Civil 
and Criminal Procedure.

    Nothing in this part waives any requirement under the Federal Rules 
of Civil or Criminal Procedure.



Sec. 205.5  Scope of this part related to Copyright Office duties under 
title 17 of the U.S. Code.

    This part relates only to legal proceedings, process, requests and 
demands relating to the Copyright Office's performance of its duties 
pursuant to title 17 of the United States Code. Legal proceedings, 
process, requests and demands relating to other matters (e.g., personal 
injuries, employment matters, etc.) are the responsibility of the 
General Counsel of the Library of Congress and are governed by 36 CFR 
part 703.



                      Subpart B_Service of Process



Sec. 205.11  Scope and purpose.

    (a) This subpart provides the procedures governing service of 
process on the Copyright Office and its employees in their official 
capacity. These regulations provide the identity of Copyright Office 
officials who are authorized to accept service of process. The purpose 
of this subpart is to provide a centralized location for receipt of 
service of process to the Office. Such centralization will provide 
timely notification of legal process and expedite Office response. 
Litigants also must comply with all requirements pertaining to service 
of process that are established by statute, court rule and rule of 
procedure including the applicable provisions of the Federal Rules of 
Civil Procedure governing service upon the United States.
    (b) This subpart does not apply to service of process made on an 
employee personally for matters not related to official business of the 
Office. Process served upon a Copyright Office employee in his or her 
individual capacity must be served in compliance with the applicable 
requirements for service of process established by statute, court rule, 
or rule of procedure.

[[Page 620]]



Sec. 205.12  Process served on the Register of Copyrights or an employee
in his or her official capacity.

    (a) Summonses, complaints and all other process directed to the 
Copyright Office, the Register of Copyrights or any other Copyright 
Office employee in his or her official capacity should be served on the 
General Counsel of the Copyright Office or his or her designee as 
indicated in Sec. 205.2 of this part. To effect proper service, the 
requirements of Rule 4(i) of the Federal Rules of Civil Procedure must 
also be satisfied by effecting service on both the United States 
Attorney for the district in which the action is brought and the 
Attorney General, Attn: Director of Intellectual Property Staff, 
Commercial Litigation Branch, Civil Division, Department of Justice, 
Washington, DC 20530.
    (b) If, notwithstanding paragraph (a) of this section, any employee 
of the Office is served with a summons or complaint in connection with 
the conduct of official business, that employee shall immediately notify 
and deliver the summons or complaint to the Office of the General 
Counsel of the Copyright Office.
    (c) Any employee receiving a summons or complaint shall note on the 
summons or complaint the date, hour, and place of service and mode of 
service.
    (d) The Office will accept service of process for an employee only 
when the legal proceeding is brought in connection with the conduct of 
official business carried out in the employee's official capacity.
    (e) When a legal proceeding is brought to hold an employee 
personally liable in connection with an action taken in the conduct of 
official business, rather than liable in an official capacity, the 
employee is to be served in accordance with any applicable statute, 
court rule, or rule of procedure. Service of process in this case is 
inadequate when made only on the General Counsel. An employee sued 
personally for an action taken in the conduct of official business shall 
immediately notify and deliver a copy of the summons or complaint to the 
General Counsel of the Copyright Office.



Sec. 205.13  Complaints served on the Register of Copyrights pursuant
to 17 U.S.C. 411(a).

    When an action has been instituted pursuant to 17 U.S.C. 411(a) for 
infringement of the copyright of a work for which registration has been 
refused, notice of the institution of the action and a copy of the 
complaint must be served on the Register of Copyrights by sending such 
documents by registered or certified mail to the General Counsel of the 
Copyright Office, GC/I&R, P.O. Box 70400, Washington, DC 20024-0400, or 
delivery by hand addressed to the General Counsel of the Copyright 
Office and delivered to the Copyright Information Section, U.S. 
Copyright Office, Library of Congress, James Madison Memorial Building, 
Room LM-401, 101 Independence Avenue, SE., Washington, DC. The notice 
must be in the form of a letter that is clearly identified as a 411(a) 
notice. Both the letter and the envelope should state: ``Section 411(a) 
Notice to the Register of Copyrights.'' In compliance with Fed. R. Civ. 
P. Sec. 4(i), a notice of the institution of the action and a copy of 
the complaint must also be served on both the United States Attorney for 
the district in which the action is brought and the United States 
Department of Justice, directed to the Attorney General, Attn: Director 
of Intellectual Property Staff, Civil Division, Department of Justice, 
Washington, DC 20530.

[69 FR 39334, June 30, 2004, as amended at 73 FR 37840, July 2, 2008]



 Subpart C_Testimony By Employees and Production of Documents in Legal 
             Proceedings in Which the Office Is Not a Party



Sec. 205.21  Scope and purpose.

    (a) This subpart prescribes policies and procedures of the Copyright 
Office governing testimony, in legal proceedings in which the Office is 
not a party, by Office employees in their official capacities and the 
production of Office documents for use in legal proceedings pursuant to 
a demand, request, subpoena or order.
    (b) The purpose of this subpart is:

[[Page 621]]

    (1) To conserve the time of Office employees for conducting official 
business;
    (2) To minimize the possibility of involving the Office in the 
matters of private parties or other issues which are not related to the 
mission of the Office;
    (3) To prevent the public from confusing personal opinions of Office 
employees with Office policy;
    (4) To avoid spending the time and money of the United States for 
private purposes;
    (5) To preserve the integrity of the administrative process, 
minimize disruption of the decision-making process, and prevent 
interference with the Office's administrative functions.
    (c) An employee of the Office may not voluntarily appear as a 
witness or voluntarily testify in a legal proceeding relating to his or 
her official capacity without proper authorization under this subpart.
    (d) This subpart does not apply to any legal proceeding in which:
    (1) An employee is to testify regarding facts or events that are 
unrelated to official business; or
    (2) A former employee is asked to testify as an expert on a matter 
in which that employee did not personally participate while at the 
Office so long as the former employee testifies concerning his or her 
personal opinion and does not purport to speak for or on behalf of the 
Copyright Office.



Sec. 205.22  Production of documents and testimony.

    (a) Generally, all documents and material submitted to the Copyright 
Office as part of an application to register a claim to copyright are 
available for public inspection and copying. It is possible, therefore, 
to obtain those materials without use of a legal process. Anyone seeking 
such documents must contact the Records Research and Certification 
Section of the Office. 37 CFR 201.2(b)(1). Certified copies of public 
documents and public records are self-authenticating. FED. R. EVID. 902 
and 1005; see also, FED. R. CIV. p. 44(a)(1). In certain specified 
circumstances, information contained in the in-process files may be 
obtained by complying with the procedures of 37 CFR 201.2(b)(3). 
Correspondence between a copyright claimant or his or her agent and the 
Copyright Office in a completed registration, recordation, or refusal to 
register is also available for public inspection. Section 201.2(d) of 
this chapter prescribes the method for requesting copies of copyright 
registration records. An attorney engaged in actual or prospective 
litigation who submits a court order or a completed Litigation Statement 
may obtain a copy of the deposit if his or her request is found to 
comply with the requirements set out in 37 CFR 201.2(d)(2). The fees 
associated with various document requests, searches, copies, and 
expedited handling are listed in 37 CFR 201.3. Other publications 
containing Copyright Office procedures and practices are available to 
the public without charge from the Copyright Office or its Web site: 
http://www.copyright.gov. The Office website also allows online 
searching of copyright registration information and information 
pertaining to documents recorded with the Copyright Office beginning 
January 1, 1978. Pre-1978 copyright registration information and 
document recordation information is available to the public in the 
Copyright Office during regular business hours. If the information 
sought to be obtained from the Office is not available through these 
Office services, demands and subpoenas for testimony or documents may be 
served as follows:
    (1) Demands for testimony or documents. All demands, requests, 
subpoenas or orders for production of documents or testimony in a legal 
proceeding directed to the Copyright Office, the Register of Copyrights 
or any other Copyright Office employee in his or her official capacity 
must be in writing and should be served on the General Counsel of the 
Copyright Office as indicated in Sec. 205.2 of this part and in 
accordance with the Federal Rules of Civil or Criminal Procedure.
    (2) Affidavits. Except when the Copyright Office is a party to the 
legal proceeding, every demand, request or subpoena shall be accompanied 
by an affidavit or declaration under penalty of perjury pursuant to 28 
U.S.C. 1746. Such affidavit or declaration shall contain a written 
statement setting forth the title of the legal proceeding; the forum;

[[Page 622]]

the requesting party's interest in the legal proceeding; the reasons for 
the demand, request, or subpoena; a showing that the desired testimony 
or document is not reasonably available from any published or other 
written source, (e.g. 37 CFR, Chapter II; Compendium II, Compendium of 
Copyright Office Practices; other written practices of the Office; 
circulars; the Copyright Office website) and is not available by other 
established procedure, e.g. 37 CFR 201.2, 201.3. If testimony is 
requested in the affidavit or declaration, it shall include the intended 
use of the testimony, a detailed summary of the testimony desired, and a 
showing that no document could be provided and used in lieu of the 
requested testimony. The purpose of these requirements is to permit the 
Copyright General Counsel to make an informed decision as to whether 
testimony or production of a document should be authorized. The decision 
by the General Counsel will be based on consideration of the purposes 
set forth in Sec. 205.21(b) of this part, on the evaluation of the 
requesting party's need for the testimony and any other factor warranted 
by the circumstances. Typically, when the information requested is 
available through other existing Office procedures or materials, the 
General Counsel will not authorize production of documents or testimony.
    (b) No Copyright Office employee shall give testimony concerning the 
official business of the Office or produce any document in a legal 
proceeding other than those made available by the Records Research and 
Certification Section under existing regulations without the prior 
authorization of the General Counsel. Without prior approval from the 
General Counsel, no Office employee shall answer inquiries from a person 
not employed by the Library of Congress or the Department of Justice 
regarding testimony or documents in connection with a demand, subpoena 
or order. All inquiries involving demands, subpoenas, or orders shall be 
directed to the Copyright General Counsel.
    (c) Any Office employee who receives a demand, request, subpoena or 
order for testimony or the production of documents in a legal proceeding 
shall immediately notify the Copyright Office General Counsel at the 
phone number indicated in Sec. 205.2 of this part and shall immediately 
forward the demand to the Copyright General Counsel.
    (d) The General Counsel may consult or negotiate with an attorney 
for a party or the party, if not represented by an attorney, to refine 
or limit a demand, request or subpoena to address interests or concerns 
of the Office. Failure of the attorney or party to cooperate in good 
faith under this part may serve as the basis for the General Counsel to 
deny authorization for the testimony or production of documents sought 
in the demand.
    (e) A determination under this part regarding authorization to 
respond to a demand is not an assertion or waiver of privilege, lack of 
relevance, technical deficiency or any other ground for noncompliance. 
The Copyright Office reserves the right to oppose any demand on any 
appropriate legal ground independent of any determination under this 
part, including but not limited to, sovereign immunity, preemption, 
privilege, lack of relevance, or technical deficiency.
    (f) Office procedures when an employee receives a demand or 
subpoena:
    (1) If the General Counsel has not acted by the return date, the 
employee must appear at the time and place set forth in the subpoena 
(unless otherwise advised by the General Counsel) and inform the court 
(or other legal authority) that the demand has been referred for the 
prompt consideration of the General Counsel and shall request the court 
(or other legal authority) to stay the demand pending receipt of the 
requested instructions.
    (2) If the General Counsel makes a determination not to authorize 
testimony or the production of documents, but the subpoena is not 
withdrawn or modified and Department of Justice representation cannot be 
arranged, the employee should appear at the time and place set forth in 
the subpoena unless advised otherwise by the General Counsel. If legal 
counsel cannot appear on behalf of the employee, the employee should 
produce a copy of these rules and state that the General Counsel has 
advised the employee not to provide the requested testimony or to

[[Page 623]]

produce the requested document. If a court (or other legal authority) 
rules that the demand in the subpoena must be complied with, the 
employee shall respectfully decline to comply with the demand, citing 
United States ex rel.Touhy v. Ragen, 340 U.S. 462 (1951).

[69 FR 39334, June 30, 2004, as amended at 73 FR 37840, July 2, 2008]



Sec. 205.23  Scope of testimony.

    (a)(1) If a Copyright Office employee is authorized to give 
testimony in a legal proceeding, the testimony, if otherwise proper, 
shall be limited to facts within the personal knowledge of the Office 
employee. An Office employee is prohibited from giving expert testimony, 
or opinion, answering hypothetical or speculative questions, or giving 
testimony with respect to subject matter which is privileged. If an 
Office employee is authorized to testify in connection with his or her 
involvement or assistance in a proceeding or matter before the Office, 
that employee is further prohibited from giving testimony in response to 
an inquiry about the bases, reasons, mental processes, analyses, or 
conclusions of that employee in the performance of his or her official 
functions.
    (2) The General Counsel may authorize an employee to appear and give 
expert testimony or opinion testimony upon the showing, pursuant to 
Sec. 205.3 of this part, that exceptional circumstances warrant such 
testimony and that the anticipated testimony will not be adverse to the 
interest of the Copyright Office or the United States.
    (b) If an Office employee is authorized to testify, the employee 
will generally be prohibited from providing testimony in response to 
questions which seek, for example:
    (1) To elicit information about the employee's:
    (i) Qualifications to examine or otherwise consider a particular 
copyright application.
    (ii) Usual practice or whether the employee followed a procedure set 
out in any Office manual of practice in a particular case.
    (iii) Consultation with another Office employee.
    (iv) Familiarity with:
    (A) Preexisting works that are similar.
    (B) Registered works, works sought to be registered, a copyright 
application, registration, denial of registration, or request for 
reconsideration.
    (C) Copyright law or other law.
    (D) The actions of another Office employee.
    (v) Reliance on particular facts or arguments.
    (2) To inquire into the manner in and extent to which the employee 
considered or studied material in performing the function.
    (3) To inquire into the bases, reasons, mental processes, analyses, 
or conclusions of that Office employee in performing the function.
    (4) In exceptional circumstances, the General Counsel may waive 
these limitations pursuant to Sec. 205.3 of this part.



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.
211.7 Reconsideration procedure for refusals to register.

    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.

[[Page 624]]

    (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.

[50 FR 26719, June 28, 1985, as amended at 66 FR 34373, June 28, 2001]



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 
Copyright 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 Sec. Sec. 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

[[Page 625]]

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 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) of this 
section, 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) 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 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; 64 
FR 36575, July 7, 1999; 66 FR 34374, June 28, 2001; 73 FR 37840, July 2, 
2008]



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

[[Page 626]]

which can be readily stored in an 8\1/2\x11 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\x11 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 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) of this 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. 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

[[Page 627]]

to be granted., Requests for special relief under this paragraph shall 
be made in writing to the Associate Register for Registration and 
Recordation Program, Library of Congress, Copyright Office - RPO, 101 
Independence Avenue, SE, Washington, DC 20559-6200, 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; 
73 FR 37840, July 2, 2008]



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 ``[om]'' 
(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 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]



Sec. 211.7  Reconsideration procedure for refusals to register.

    The requirements prescribed in Sec. 202.5 of this chapter for 
reconsideration of refusals to register copyright claims are applicable 
to requests to reconsider refusals to register mask works under 17 
U.S.C. chapter 9, unless otherwise required by this part.

[69 FR 77637, Dec. 28, 2004]



PART 212_PROTECTION OF VESSEL HULL DESIGNS--Table of Contents




Sec.
212.1 Scope.
212.2 Fees.
212.3 Registration of claims for protection of eligible designs.
212.4 Affixation and placement of design notice.
212.5 Recordation of distinctive identification of vessel hull designer.
212.6 Recordation of transfers and other documents.
212.7 Reconsideration procedure for refusals to register.
212.8 Correction of errors in certificates of registration.

    Authority: 17 U.S.C. chapter 13.

    Source: 64 FR 36578, July 7, 1999, unless otherwise noted.

[[Page 628]]



Sec. 212.1  Scope.

    The provisions of this part apply to the protection and registration 
of original designs of vessel hulls under chapter 13 of title 17, United 
States Code. Design protection and registration under this part are 
separate from copyright protection and registration. Copyright 
registration is governed by the provisions of part 202 of this 
subchapter.



Sec. 212.2  Fees.

    Services related to registration of original designs of vessel hulls 
are subject to fees prescribed in Sec. Sec. 201.3(c) and (d).

[71 FR 31092, June 1, 2006]



Sec. 212.3  Registration of claims for protection of eligible designs.

    (a) Limitations. Protection is not available for, and an application 
for registration will not be accepted for:
    (1) An otherwise eligible design made public prior to October 28, 
1998;
    (2) An otherwise eligible design made public on a date more than two 
years prior to the filing of an application for registration under this 
section;
    (3) A design ineligible for any of the reasons set forth in 17 
U.S.C. 1302.
    (b) Required elements of application. An application is considered 
filed with the Copyright Office on the date on which the following three 
items have been received by the Copyright Office:
    (1) Completed Form D-VH;
    (2) Deposit material identifying the design or designs for which 
registration is sought; and
    (3) The appropriate fee.
    (c) Application by owner of design. An application for registration 
under this section may be made only by the owner or owners of the 
design, or by the duly authorized agent or representative of the owner 
or owners of the design.
    (d) Application form. Registration must be made on Form D-VH. Forms 
are available from the Copyright Office and may be reprinted from the 
Copyright Office's website (http://www.loc.gov/copyright/forms/
formdvh.pdf).
    (e) Deposit material--(1) In General. Identification of the design 
to be registered may be made in the form of drawings or photographs. No 
more than two drawings or photographs of the design may appear on a 
single sheet. Applicants may submit up to three 81/2``x11'' sheets 
containing drawings or photographs as part of the basic application fee. 
An additional fee shall be assessed for each page beyond the first three 
pages. No combinations of drawings and photographs may be submitted on a 
single sheet. The drawings or photographs that accompany the application 
must reveal those aspects of the design for which protection is claimed. 
The registration extends only to those aspects of the design which are 
adequately shown in the drawings or photographs.
    (2) Views. The drawings or photographs submitted should contain a 
sufficient number of views to make an adequate disclosure of the 
appearance of the design, i.e., front, rear, right and left sides, top 
and bottom. While not required, it is suggested that perspective views 
be submitted to show clearly the appearance and shape of the three 
dimensional designs.
    (3) Drawings. (i) Drawings must be in black ink on white 8\1/
2\x11 unruled paper. A drawing of a design should 
include appropriate surface shading which shows clearly the character 
and contour of all surfaces of any 3-dimensional aspects of the design. 
Surface shading is also necessary to distinguish between any open and 
solid areas of the design. Solid black surface shading is not permitted 
except when used to represent the black color as well as color contrast.
    (ii) The use of broken lines in drawings depicting the design is 
understood to be for illustrative purposes only and forms no part of the 
claimed design. Structure that is not part of the design, but that is 
considered necessary to show the environment in which the design is 
used, may be represented in the drawing by broken lines. This includes 
any portion of the vessel hull in which the design is embodied or 
applied that is not considered part of the design. When the claimed 
design is only surface ornamentation to the vessel hull, the vessel hull 
in which it is embodied must be shown in broken lines.

[[Page 629]]

    (iii) When broken lines are used, they should not intrude upon or 
cross the depiction of the design and should not be of heavier weight 
than the lines used in depicting the design. Where a broken line showing 
of environmental structure must necessarily cross or intrude upon the 
representation of the design and obscure a clear understanding of the 
design, such an illustration should be included as a separate figure, in 
addition to other figures which fully disclose the subject matter of the 
design.
    (4) Photographs. High quality black and white or color photographs 
will be accepted provided that they are mounted on plain white 8\1/
2\x11 unlined paper and do not exceed two 
photographs per sheet. Photographs must be developed on double weight 
photographic paper and must be of sufficient quality so that all the 
details of the design are plainly visible and are capable of 
reproduction on the registration certificate, if issued.
    (f) Multiple claims--(1) In general. Claims for more than one design 
may be filed in one of two ways. If multiple designs are contained on a 
single make and model of a vessel hull (and therefore, the information 
in Space 1 of Form D-VH--the make and model of the vessel that embodies 
the design--is the same for each of the designs), a single application 
form may be used for all designs, provided that the information in 
spaces 3 through 9 is the same for each of the designs. If multiple 
designs are contained on more than one make and model of a vessel, or 
the information in spaces 3 through 9 is not the same for each of the 
multiple designs, then separate applications must be used for each 
design.
    (2) Single application. Where a single application for multiple 
designs is appropriate, a separate Form D-VH/CON must be used for each 
design beyond the first appearing on Form D-VH. Each Form D-VH/CON must 
be accompanied by deposit material identifying the design that is the 
subject of the Form D-VH/CON, and the deposit material must be attached 
to the Form D-VH/CON. The Form D-VH and all the Form D-VH/CONs for the 
single application must be submitted together.
    (3) Multiple applications. Where multiple applications for more than 
one design are required, a Form D-VH must be completed for each design. 
Deposit material identifying the design must accompany each application. 
Multiple applications may be filed separately.
    (4) Fees. The basic application fee prescribed in Sec. 201.3(c) of 
this chapter applies to each design submitted, regardless of whether a 
single application or multiple applications are used.
    (g) Written declaration. In lieu of the oath required by 17 U.S.C. 
1312(a), the application shall contain a written declaration, as 
permitted by 17 U.S.C. 1312(b), signed by the applicant, or the 
applicant's duly authorized agent or representative. If the design has 
been made public with the design notice prescribed in 17 U.S.C. 1306, 
the written declaration shall also describe the exact form and position 
of the design notice. The written declaration shall read as follows:

    The undersigned, as the applicant or the applicant's duly appointed 
agent or representative, being hereby warned that willful false 
statements are punishable by fine or imprisonment, or both, under 18 
U.S.C. 1001, and that such willful false statements may jeopardize the 
validity of this application or any resulting registration, hereby 
declares to the best of his/her knowledge and belief:
    (1) That the design has been fixed in a useful article;
    (2) That the design is original and was created by the designer(s), 
or employer if applicable, named in the application;
    (3) That those aspects of the design for which registration is 
sought are not protected by a design patent;
    (4) That the design has not previously been registered on behalf of 
the applicant or the applicant's predecessor in title; and
    (5) That the applicant is the person entitled to protection and to 
registration under chapter 13 of title 17, United States Code.

    (h) Priority claims. An applicant seeking the benefit of 17 U.S.C. 
1311 because the applicant has, within the previous 6 months, filed an 
application for protection of the same design in a foreign country, must 
provide:
    (1) Identification of the filing date of the foreign application;
    (2) Identification of the foreign country in which the application 
was filed;
    (3) The serial number or any other identifying number of the foreign 
application;

[[Page 630]]

    (4) A certified copy of the foreign application;
    (5) A translation of the foreign application and a statement, signed 
by the translator, that the translation is accurate, if the foreign 
application is in a language other than English; and
    (6) If requested by the Copyright Office, proof that the foreign 
country in which the prior application was filed extends to designs of 
owners who are citizens of the United States, or to applications filed 
under chapter 13 of title 17, United States Code, similar protection to 
that provided under chapter 13 of title 17, United States Code.
    (i) Effective date of registration. The effective date of 
registration is the date of publication of the registration by the 
Copyright Office.
    (j) Publication of registration. Publication of registrations of 
vessel hull designs shall be made on the Copyright Office website 
(http://www.loc.gov/copyright/vessels).

[64 FR 36578, July 7, 1999, as amended by 72 FR 33692, June 19, 2007]



Sec. 212.4  Affixation and placement of design notice.

    (a) General. (1) This section specifies the methods of affixation 
and placement of the design notice required by 17 U.S.C. 1306. Sections 
1306 and 1307 govern the circumstances under which a design notice must 
be used and the effect of omission of a design notice. A notice deemed 
acceptable under this part shall be considered to satisfy the 
requirements of section 1306 that it be so located and applied as to 
give reasonable notice of design protection while the useful article 
embodying the design is passing through its normal channels of commerce. 
As provided in that section, the examples specified in this part shall 
not be considered exhaustive of the methods of affixation and locations 
giving reasonable notice of the claim of protection in the design.
    (2) The acceptability of a design notice under these regulations 
shall depend upon its being legible under normal conditions of use, and 
affixed in such a manner and position that, when affixed, it may be 
viewed upon reasonable examination. There is no requirement that a 
design notice be permanently embossed or engraved into a vessel hull or 
deck, but it should be affixed in such a manner that, under normal 
conditions of use, it is not likely to become unattached or illegible.
    (b) Elements of a design notice. If the design has been registered, 
the registration number may be included in the design notice in place of 
the year of the date on which protection for the design commenced and 
the name of the owner, an abbreviation by which the name can be 
recognized, or a generally accepted alternative designation of the 
owner. The elements of a design notice shall consist of:
    (1) The words ``Protected Design'', the abbreviation ``Prot'd 
Des.'', or the letter ``D'' within a circle, or the symbol *D*;
    (2) The year of the date on which protection for the design 
commenced; and
    (3) The name of the owner, an abbreviation by which the name can be 
recognized, or a generally accepted alternative designation of the 
owner.
    (c) Distinctive identification. Any distinctive identification of an 
owner may be used for purposes of paragraph (b)(3) of this section if it 
has been recorded by the Register of Copyrights pursuant to Sec. 212.5 
before the design marked with such identification is registered.
    (d) Acceptable locations of notice. The following are acceptable 
means of affixing and placement of a design notice:
    (1) In close proximity to the hull identification number required by 
33 CFR 181.23;
    (2) In close proximity to the driver's console such that it is in 
plain view from the console;
    (3) If the vessel is twenty feet in length or less and is governed 
by 33 CFR 183.21, in close proximity to the capacity marking; and
    (4) In close proximity to the make and/or model designation of the 
vessel.



Sec. 212.5  Recordation of distinctive identification of vessel hull designer.

    (a) General. Any owner of a vessel hull may record a distinctive 
identification with the Register of Copyrights for purposes of using 
such distinctive identification in a design protection notice required 
by 17 U.S.C. 1306. A distinctive identification of an

[[Page 631]]

owner may not be used in a design notice before it has first been 
recorded with the Register.
    (b) Forms. The Copyright Office does not provide forms for the use 
of persons recording distinctive identifications of ownership of a 
vessel hull. However, persons recording distinctive identifications are 
encouraged to use the suggested format available on the Copyright Office 
website (http://www.loc.gov/copyright/vessels).
    (c) Recording distinctive identifications. Any distinctive 
identification of an owner of a vessel hull may be recorded with the 
Register of Copyrights provided that a document containing the following 
is submitted:
    (1) The name and address of the owner;
    (2) A statement of the owner that he/she is entitled to use the 
distinctive identification;
    (3) A statement or depiction of the identification; and
    (4) The recordation fee in the amount prescribed in Sec. 201.3(c) 
of this chapter.
    (d) The document should be mailed to: Dept. D-VH, Vessel Hull 
Registration, P.O. Box 71380, Washington, DC 20024-1380.

[64 FR 36578, July 7, 1999, as amended at 67 FR 38005, May 31, 2002; 72 
FR 33692, June 19, 2007]



Sec. 212.6  Recordation of transfers and other documents.

    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 design protection of vessel hulls under 17 U.S.C. chapter 
13.



Sec. 212.7  Reconsideration procedure for refusals to register.

    The requirements prescribed in Sec. 202.5 of this chapter for 
reconsideration of refusals to register copyright claims are applicable 
to requests to reconsider refusals to register vessel hull designs under 
17 U.S.C. chapter 13, unless otherwise required by this part.

[69 FR 77637, Dec. 28, 2004]



Sec. 212.8  Correction of errors in certificates of registration.

    (a) General.
    (1) This section prescribes conditions relating to the correction of 
clerical or typographical errors in a certificate of registration of a 
vessel hull design, under section 1319 of title 17 of the United States 
Code, as amended by Public Law 105-304.
    (2) For the purposes of this section, a basic registration means 
registration of a vessel hull design made under sections 1310 through 
1314 of title 17 of the United States Code, as amended by Public Law 
105-304.
    (3) No correction of the information in a basic registration will be 
made except pursuant to the provisions of this Sec. 212.8. As an 
exception, where it is discovered that the record of a vessel hull 
design registration contains a clerical or typographical error made by 
the Copyright Office, the Office will take appropriate measures to 
rectify its error. Correction will be made only of clerical or 
typographical errors; errors of a different nature cannot be corrected 
and there is no procedure to amplify the registration record with 
additional information.
    (b) Application for correction of error in certificate. At any time 
after registration of a vessel hull design, the Copyright Office will 
correct a clerical or typographical error in the registration upon the 
application of the owner of the registered design or the owner's 
authorized agent.
    (c) Form and content of application to correct registration. (1) An 
application to correct a registration shall be made on a form prescribed 
by the Copyright Office, shall be accompanied by the appropriate filing 
fee identified in Sec. 201.3(c) and shall contain the following 
information:
    (i) The make and model of the vessel that embodies the registered 
design;
    (ii) The registration number of the basic registration;
    (iii) The year when the basic registration was completed;
    (iv) The name or names of the designer or designers of the vessel 
hull, and the owner or owners of the vessel hull design, as they appear 
in the basic registration;

[[Page 632]]

    (v) The space number and heading or description of the part of the 
basic registration where the error occurred;
    (vi) A transcription of the erroneous information as it appears in 
the basic registration;
    (vii) A statement of the correct information as it should have 
appeared;
    (viii) If desired, an explanation of the error or its correction;
    (ix) The name and address:
    (A) To which the correspondence concerning the application should be 
sent; and
    (B) To which the certificate of correction should be mailed; and
    (x) The certification shall consist of:
    (A) The handwritten signature of the owner of the registered design 
or of the duly authorized agent of such 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 owner 
of the registered design or of the duly authorized agent of such owner, 
and that the statements made in the application are correct to the best 
of that person's knowledge.
    (2) The form prescribed by he Copyright Office for the foregoing 
purposes is designated ``Application to Correct a Design Registration 
(Form DC)''. 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 or on the Copyright 
Office Web site at http://www.copyright.gov/forms/formdc.pdf.
    (3) Copies, phonorecords or supporting documents cannot be made part 
of the record of a corrected certificate of registration and should not 
be submitted with the application.
    (d) Fee. The filing fee for an application to correct a certificate 
of registration of a vessel hull design is prescribed in Sec. 201.3(c).

[71 FR 46402, Aug. 14, 2006]

[[Page 633]]



  SUBCHAPTER B_COPYRIGHT ARBITRATION ROYALTY PANEL RULES AND PROCEDURES



    Editorial Note: Nomenclature changes to subchapter B appear at 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.

    All claims, pleadings, and general correspondence intended for the 
Copyright Arbitration Royalty Panels (CARPs) must be addressed as 
follows:

[[Page 634]]

    (a) If hand delivered by a private party, use the following address: 
Copyright Office General Counsel/CARP, U.S. Copyright Office, James 
Madison Memorial Building, Room LM-401, 101 Independence Avenue, SE., 
Washington, DC 20559-6000. This mail must be delivered to the Public 
Information Office, located at this address, Monday through Friday 
between 8:30 a.m. and 5 p.m.
    (b) If hand delivered by a commercial courier (excluding Federal 
Express, United Parcel Service and similar corporate courier services), 
use the following address: Copyright Office General Counsel/CARP, Room 
403, James Madison Memorial Building, 101 Independence Avenue, SE., 
Washington, DC. This mail must be delivered to the Congressional Courier 
Acceptance Site (CCAS) located at Second and D Street, NE., Washington, 
DC. The CCAS will accept items from couriers with proper identification, 
e.g., a valid driver's license, Monday through Friday, between 8:30 a.m. 
and 4 p.m.
    (c) If sent through the U.S. Postal Service, use the following 
address: Copyright Arbitration Royalty Panel, P.O. Box 70977, Southwest 
Station, Washington, DC 20024-0977.
    (d) Federal Express, United Parcel Service and similar corporate 
courier services may not be used for correspondence and filings for the 
Copyright Arbitration Royalty Panels.

[69 FR 39332, June 30, 2004]



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.

[[Page 635]]

    (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 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

[[Page 636]]

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. 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,

[[Page 637]]

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 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]

[[Page 638]]



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 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

[[Page 639]]

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;
    (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 appropriate 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; 70 
FR 38022, July 1, 2005]



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.

[[Page 640]]

    (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 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]

[[Page 641]]



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
    (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

[[Page 642]]

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 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--

[[Page 643]]

    (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 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--

[[Page 644]]

    (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.



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.

[[Page 645]]



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.
    (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

[[Page 646]]

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 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) Service. 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; 65 FR 39820, June 28, 2000]



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

[[Page 647]]

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 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,

[[Page 648]]

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]



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.

[[Page 649]]

    (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 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

[[Page 650]]

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 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]

[[Page 651]]



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, 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

[[Page 652]]

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 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 addressed as follows:
    (i) If hand delivered by a private party, use the following address: 
Copyright Office General Counsel/CARP, U.S. Copyright Office, James 
Madison Memorial Building, Room LM-401, 101 Independence Avenue, SE., 
Washington, DC 20559-6000. This mail must be delivered to the Public 
Information Office, located at this address, Monday through Friday, 
between 8:30 a.m. and 5 p.m.
    (ii) If hand delivered by a commercial courier (excluding Federal 
Express, United Parcel Service and similar corporate courier services), 
use the following address: Copyright Office General Counsel/CARP, Room 
403, James Madison Memorial Building, 101 Independence Avenue, SE., 
Washington, DC. This mail must be delivered to the Congressional Courier 
Acceptance Site (CCAS) located at Second and D Street, NE., Washington, 
DC. The CCAS will accept items from couriers with proper identification, 
e.g., a valid driver's license, Monday through Friday, between 8:30 a.m. 
and 4 p.m.
    (iii) If sent through the U.S. Postal Service, use the following 
address: Copyright Arbitration Royalty Panel, P.O. Box 70977, Southwest 
Station, Washington, DC 20024-0977.
    (iv) Federal Express, United Parcel Service and similar corporate 
courier services may not be used for correspondence and filings for the 
Copyright Arbitration Royalty Panels.
    (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 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, as amended at 64 FR 36575, July 7, 1999; 69 
FR 39332, June 30, 2004]



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 90 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.

[[Page 653]]

    (b) If the Librarian substitutes his or her own determination, the 
Librarian shall have an additional 30 days to issue the order which 
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.

[59 FR 23981, May 9, 1994, as amended at 64 FR 36576, July 7, 1999]



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; 64 FR 36576, July 7, 1999]



                  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

[[Page 654]]

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 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]

[[Page 655]]



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. Such notice shall, to the 
extent feasible, describe the nature, general structure, and schedule of 
the proceeding.

[59 FR 23981, May 9, 1994, as amended at 59 FR 63042, Dec. 7, 1994; 65 
FR 39820, June 28, 2000]



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.



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

[[Page 656]]

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 253_USE OF CERTAIN COPYRIGHTED WORKS IN CONNECTION WITH 
NONCOMMERCIAL EDUCATIONAL BROADCASTING--Table of Contents




Sec.
253.1 General.
253.2 Definition of public broadcasting entity.
253.3 [Reserved]
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).
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, 2003, and ending on December 31, 2007. 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; 67 FR 77171, Dec. 17, 2002]



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  [Reserved]



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 Sec. Sec. 253.5 and 253.6, and except for 
compositions which are the subject of voluntary license agreements.

(a) Determination of royalty rate. (1) For performance of such work in a
 feature presentation of PBS:
    2003-2007.................................................  $224.22
(2) For performance of such a work as background or theme music in a PBS
 program:
    2003-2007.................................................    $56.81
(3) For performance of such a work in a feature presentation of a
 station of PBS:
    2003-2007.................................................   $19.16
(4) For performance of such a work as background or theme music in a
 program of a station of PBS:
    2003-2007.................................................    $4.04
(5) For the performance of such a work in a feature presentation of NPR:
 
    2003-2007.................................................   $22.73
(6) For the performance of such a work as background or theme music in
 an NPR program:
    2003-2007.................................................    $5.51
(7) For the performance of such a work in a feature presentation of a
 station of NPR:
    2003-2007.................................................    $1.61
(8) For the performance of such a work as background or theme music in a
 program of a station of NPR:
    2003-2007.................................................     $.57

[[Page 657]]

 
(9) For 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, 2003, to December 31, 2007, 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 four years following the first 
performance.

[57 FR 60954, Dec. 22, 1992. Redesignated and amended at 59 FR 23993, 
May 9, 1994, and amended at 63 FR 2144, Jan 14, 1998; 67 FR 77171, Dec. 
17, 2002]



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.
    (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, $277 
annually.
    (2) For all such compositions in the repertory of BMI, $277 
annually.
    (3) For all such compositions in the repertory of SESAC, $90 
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; 64 FR 67188, Dec. 1, 1999; 65 FR 75167, 
Dec. 1, 2000; 66 FR 59699, Nov. 30, 2001; 67 FR 71105, Nov. 29, 2002; 67 
FR 77171, Dec. 17, 2002; 68 FR 67045, Dec. 1, 2003; 69 FR 69823, Dec. 1, 
2004; 70 FR 72077, Dec. 1, 2005; 71 FR 69486, Dec. 1, 2006]

[[Page 658]]



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 2003, 
$460; in 2004, $475; in 2005, $495; in 2006, $515; in 2007, $535.
    (2) For all such compositions in the repertory of BMI, in 2003, 
$460; in 2004, $475; in 2005, $495; in 2006, $515; in $2007, $535.
    (3) For all such compositions in the repertory of SESAC, in 2003, 
$98; in 2004, $100; in 2005, $102; in 2006, $104; in 2007, $106.
    (4) For the performance of any other such compositions, in 2003 
through 2007, $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; 67 
FR 77172, Dec. 17, 2002]



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, 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 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:

 
                                                              2003-2007
 
Feature....................................................      $112.40
Concert feature (per minute)...............................        33.75
Background.................................................        56.81
Theme:
  Single program or first series program...................        56.81
  Other series program.....................................        23.06
 

    (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:

 
                                                              2003-2007
 
Feature....................................................        $9.29

[[Page 659]]

 
Concert feature (per minute)...............................         2.44
Background.................................................         4.04
Theme:
  Single program or first series program...................         4.04
  Other series program.....................................         1.61
 

    (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.

 
                                                              2003-2007
 
Feature....................................................       $12.17
Concert feature (per minute)...............................        17.86
Background.................................................         6.10
Theme:
  Single program or first series program...................         6.10
  Other series program.....................................         2.43
 

    (3) For 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 an NPR-produced radio program:

 
                                                              2003-2007
 
Feature....................................................         $.78
Feature (concert)(per half hour)...........................         1.63
Background.................................................          .39
 

    (5) The schedule of fees covers use for a period of three years 
following the first use. Succeeding use periods will require the 
following additional payment: additional one-year period--25 percent of 
the initial three-year fee; second three-year period--50 percent of the 
initial three-year fee; each three-year fee thereafter--25 percent of 
the initial three-year fee; provided that a 100 percent additional 
payment prior to the expiration of the first three-year period will 
cover use during all subsequent use periods without limitation. Such 
succeeding uses which are subsequent to December 31, 2007, 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.
    (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

[[Page 660]]

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; 67 FR 77172, Dec. 17, 2002]



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:

 
                                                              2003-2007
 
(A) For featured display of a work.........................       $68.67
(B) For background and montage display.....................        33.49
(C) For use of a work for program identification or for           135.37
 thematic use..............................................
(D) For the display of an art reproduction copyrighted             44.47
 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..
 

    (ii) For such uses in other than PBS-distributed programs:

 
                                                              2003-2007
 
(A) For featured display of a work.........................       $44.47
(B) For background and montage display.....................        22.80
(C) For use of a work for a program identification or for          90.91
 thematic use..............................................
(D) For the display of an art reproduction copyrighted             22.80
 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 this schedule.
 

    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 full-screen or 
substantially full-screen, or full-screen for three seconds or less,

[[Page 661]]

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 
use for a period of three years from the date of the first use of the 
work under this schedule. Succeeding use periods will require the 
following additional payment: Additional one-year period--25 percent of 
the initial three-year fee; second three-year period--50 percent of the 
initial three-year fee; each three-year period thereafter--25 percent of 
the initial three-year fee; provided that a 100 percent additional 
payment prior to the expiration of the first three-year period will 
cover use during all subsequent use periods without limitation. Such 
succeeding uses which are subsequent to December 31, 2007, 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; 64 FR 
36576, July 7, 1999; 67 FR 77172, Dec. 17, 2002]



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

[[Page 662]]

make available to the Copyright Office, 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) (a) On December 1, 2003, 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, 
2002, to the most recent Index published prior to December 1, 2003. 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; 67 FR 
77173, Dec. 17, 2002]



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]

[[Page 663]]



Sec. 254.3  Compulsory license fees for coin-operated phonorecord players.

    (a) Commencing January 1, 1982, the annual compulsory license fee 
for a 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

[[Page 664]]

cent per minute of playing time or fraction thereof, whichever amount is 
larger, subject to further adjustment 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. The 
reproduction of the phonorecord must be sufficiently permanent or stable 
to permit it to be perceived, reproduced, or otherwise communicated for 
a period of more than transitory duration. Such a phonorecord may be 
permanent or it may be made available to the transmission recipient for 
a limited period of time or for a specified

[[Page 665]]

number of performances. A digital phonorecord delivery includes all 
phonorecords that are made for the purpose of making the digital 
phonorecord delivery.

[73 FR 66182, Nov. 7, 2008]



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]

[[Page 666]]



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.



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 second semiannual accounting period of 2005 
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) 1.013 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) 1.013 of 1 per centum of such gross receipts for the first 
distant signal equivalent;
    (3) .668 of 1 per centum of such gross receipts for each of the 
second, third and fourth distant signal equivalents; and
    (4) .314 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 second semiannual accounting period of 2005 
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 
$263,800 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 $263,800 exceeds such actual gross 
receipts, except that in no case shall a cable system's gross receipts 
be reduced to less than $10,400. 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 actual 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 $263,800 but less than $527,600, the royalty fee payable under 
this paragraph shall be:
    (i) 0.5 of 1 per centum of any gross receipts up to $189,800 and
    (ii) 1 per centum of any gross receipts in excess of $189,800 but 
less than $379,600, 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;

[[Page 667]]


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 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; 65 FR 39820, June 28, 
2000; 65 FR 64623, Oct. 30, 2000; 70 FR 58311, Oct. 6, 2005]



PART 258_ADJUSTMENT OF ROYALTY FEE FOR SECONDARY TRANSMISSIONS BY 
SATELLITE CARRIERS--Table of Contents




Sec.
258.1 General.
258.2 Definitions.
258.3 Royalty fee for secondary transmission of analog signals of 
          broadcast stations by satellite carriers.
258.4 Royalty fee for secondary transmission of digital signals of 
          broadcast stations by satellite carriers.

    Authority: 17 U.S.C. 119, 702, 802.



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  Definitions.

    (a) Commercial establishment. The term ``commercial establishment'' 
means an establishment used for commercial purposes, such as bars, 
restaurants, private offices, fitness clubs, oil rigs, retail stores, 
banks and financial institutions, supermarkets, auto and boat 
dealerships, and other establishments with common business areas; 
provided that the term ``commercial establishment'' shall not include a 
multi-unit permanent or temporary dwelling where private home viewing 
occurs, such as hotels, dormitories, hospitals, apartments, condominiums 
and prisons, all of which shall be subject to the rates applicable to 
private home viewing.
    (b) Syndex-proof signal. A satellite retransmission of a broadcast 
signal shall be deemed ``syndex proof'' for purposes of Sec. 258.3(a) 
if, during any

[[Page 668]]

semi-annual 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.
    (c) Per subscriber per month. The term ``per subscriber per month'' 
means each subscriber subscribing to the station in question, or to a 
package including such station, on the last day of a given month.

[70 FR 17320, Apr. 6, 2005, as amended at 70 FR 39179, July 7, 2005]



Sec. 258.3  Royalty fee for secondary transmission of analog signals 
of broadcast stations by satellite carriers.

    (a) Commencing May 1, 1992, the royalty rate for the secondary 
transmission of analog signals 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 analog signals 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).
    (c) Commencing July 1, 1999, the royalty rate for secondary 
transmission of analog signals of broadcast stations for private home 
viewing by satellite carriers shall be as follows:
    (1) 18.9 cents per subscriber per month for distant superstations.
    (2) 14.85 cents per subscriber per month for distant network 
stations.
    (3) 14.85 cents per subscriber per month for the Public Broadcasting 
Service satellite feed.
    (d) Commencing January 1, 2005, the royalty rate for secondary 
transmission of analog signals of broadcast stations by satellite 
carriers shall be as follows:
    (1) For private home viewing-
    (i) 20 cents per subscriber per month for distant superstations.
    (ii) 17 cents per subscriber per month for distant network stations.
    (2) For viewing in commercial establishments, 40 cents per 
subscriber per month for distant superstations.
    (e) Commencing January 1, 2006, the royalty rate for secondary 
transmission of analog signals of broadcast stations by satellite 
carriers shall be as follows:
    (1) For private home viewing-
    (i) 21.5 cents per subscriber per month for distant superstations.
    (ii) 20 cents per subscriber per month for distant network stations.
    (2) For viewing in commercial establishments, 43 cents per 
subscriber per month for distant superstations.
    (f) Commencing January 1, 2007, the royalty rate for secondary 
transmission of analog signals of broadcast stations by satellite 
carriers shall be as follows:
    (1) For private home viewing-
    (i) 23 cents per subscriber per month for distant superstations.
    (ii) 23 cents per subscriber per month for distant network stations.
    (2) For viewing in commercial establishments, 46 cents per 
subscriber per month for distant superstations.
    (g) Commencing January 1, 2008, the royalty rate for secondary 
transmission of analog signals of broadcast stations by satellite 
carriers shall be as follows:
    (1) For private home viewing--
    (i) 24 cents per subscriber per month for distant superstations.
    (ii) 24 cents per subscriber per month for distant network stations.
    (2) For viewing in commercial establishments, 48 cents per 
subscriber per month for distant superstations.

[[Page 669]]

    (h) Commencing January 1, 2009, the royalty rate for secondary 
transmission of analog signals of broadcast stations by satellite 
carriers shall be as follows:
    (1) For private home viewing-
    (i) 24 cents per subscriber per month for distant superstations.
    (ii) 24 cents per subscriber per month for distant network stations.
    (2) For viewing in commercial establishments, 48 cents per 
subscriber per month for distant superstations.

[62 FR 55759, Oct. 28, 1997, as amended at 64 FR 71660, Dec. 22, 1999; 
70 FR 17320, Apr. 6, 2005; 70 FR 39179, July 7, 2005; 73 FR 14185, Mar. 
17, 2008; 74 FR 12093, Mar. 23, 2009]



Sec. 258.4  Royalty fee for secondary transmission of digital signals
of broadcast stations by satellite carriers.

    (a) Commencing January 1, 2005, the royalty rate for secondary 
transmission of digital signals of broadcast stations by satellite 
carriers shall be as follows:
    (1) For private home viewing-
    (i) 20 cents per subscriber per month for distant superstations.
    (ii) 17 cents per subscriber per month for distant network stations.
    (2) For viewing in commercial establishments, 40 cents per 
subscriber per month for distant superstations.
    (b) Commencing January 1, 2006, the royalty rate for secondary 
transmission of digital signals of broadcast stations by satellite 
carriers shall be as follows:
    (1) For private home viewing-
    (i) 21.5 cents per subscriber per month for distant superstations.
    (ii) 20 cents per subscriber per month for distant network stations.
    (2) For viewing in commercial establishments, 43 cents per 
subscriber per month for distant superstations.
    (c) Commencing January 1, 2007, the royalty rate for secondary 
transmission of digital signals of broadcast stations by satellite 
carriers shall be as follows:
    (1) For private home viewing-
    (i) 23 cents per subscriber per month for distant superstations.
    (ii) 23 cents per subscriber per month for distant network stations.
    (2) For viewing in commercial establishments, 46 cents per 
subscriber per month for distant superstations.
    (d) Commencing January 1, 2008, the royalty rate for secondary 
transmission of digital signals of broadcast stations by satellite 
carriers shall be as follows:
    (1) For private home viewing--
    (i) 24 cents per subscriber per month for distant superstations.
    (ii) 24 cents per subscriber per month for distant network stations.
    (2) For viewing in commercial establishments, 48 cents per 
subscriber per month for distant superstations.
    (e) Commencing January 1, 2009, the royalty rate for secondary 
transmission of digital signals of broadcast stations by satellite 
carriers shall be as follows:
    (1) For private home viewing-
    (i) 24 cents per subscriber per month for distant superstations.
    (ii) 24 cents per subscriber per month for distant network stations.
    (2) For viewing in commercial establishments, 48 cents per 
subscriber per month for distant superstations.
    (f) For purposes of calculating the royalty rates for secondary 
transmission of digital signals of broadcast stations by satellite 
carriers-
    (1) In the case of digital multicasting, the rates in paragraphs (a) 
through (e) of this section apply to each digital stream that a 
satellite carrier or distributor retransmits pursuant to section 119; 
provided, however that no additional royalty shall be paid for the 
carriage of any material related to the programming on such stream; and
    (2) Satellite carriers and distributors are not required to pay a 
section 119 royalty for the retransmission of a digital signal to a 
subscriber who resides in a community where that signal is 
``significantly viewed,'' within the meaning of 17 U.S.C. 119(a)(3) and 
(b)(1), as amended.

[70 FR 39179, July 7, 2005, as amended at 73 FR 14185, Mar. 17, 2008; 74 
FR 12093, Mar. 23, 2009]

[[Page 670]]



PART 260_RATES AND TERMS FOR PREEXISTING SUBSCRIPTION SERVICES' DIGITAL
TRANSMISSIONS OF SOUND RECORDINGS AND MAKING OF EPHEMERAL PHONORECORDS--

Table of Contents




Sec.
260.1 General.
260.2 Royalty fees for the digital performance of sound recordings and 
          the making of ephemeral phonorecords by preexisting 
          subscription services.
260.3 Terms for making payment of royalty fees.
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 rates and terms of royalty payments 
for the public performance of sound recordings by nonexempt preexisting 
subscription services in accordance with the provisions of 17 U.S.C. 
114(d)(2), and the making of ephemeral phonorecords in connection with 
the public performance of sound recordings by nonexempt preexisting 
subscription services in accordance with the provisions of 17 U.S.C. 
112(e).
    (b) Upon compliance with 17 U.S.C. 114 and the terms and rates of 
this part, nonexempt preexisting subscription services may engage in the 
activities set forth in 17 U.S.C. 114(d)(2).
    (c) Upon compliance with 17 U.S.C. 112(e) and the terms and rates of 
this part, nonexempt preexisting subscription services may engage in the 
activities set forth in 17 U.S.C. 112(e) without limit to the number of 
ephemeral phonorecords made.
    (d) For purposes of this part, Licensee means any preexisting 
subscription service as defined in 17 U.S.C. 114(j)(11).

[68 FR 39840, July 3, 2003]



Sec. 260.2  Royalty fees for the digital performance of sound recordings 
and the making of ephemeral phonorecords by preexisting subscription services.

    (a) Commencing January 1, 2002 and continuing through December 31, 
2003, a Licensee's monthly royalty fee for the public performance of 
sound recordings pursuant to 17 U.S.C. 114(d)(2) and the making of any 
number of ephemeral phonorecords to facilitate such performances 
pursuant to 17 U.S.C. 112(e) shall be 7.0% of such Licensee's monthly 
gross revenues resulting from residential services in the United States.
    (b) Commencing January 1, 2004 and continuing through December 31, 
2007, a Licensee's monthly royalty fee for the public performance of 
sound recordings pursuant to 17 U.S.C. 114(d)(2) and the making of any 
number of ephemeral phonorecords to facilitate such performances 
pursuant to 17 U.S.C. 112(e) shall be 7.25% of such Licensee's monthly 
gross revenues resulting from residential services in the United States.
    (c) Commencing in the year 2003 and continuing through the year 
2007, each Licensee making digital performances of sound recordings 
pursuant to 17 U.S.C. 114(d)(2) and ephemeral phonorecords pursuant to 
17 U.S.C. 112(e) shall make an advance payment of $100,000 per year, 
payable no later than January 20th of each year; Provided, however, that 
for 2003, the annual advance payment shall be due on August 20, 2003. 
The annual advance payment shall be nonrefundable, but the royalties due 
and payable for a given year or any month therein under paragraphs (a) 
and (b) of this section shall be recoupable against the annual advance 
payment for such year; Provided, however, that any unused annual advance 
payment for a given year shall not carry over into a subsequent year.
    (d) A 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.

[[Page 671]]

    (e)(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 a 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, service, or anything 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 (e)(1) (i) through 
(vii) of this section.
    (2) Gross revenues shall include such payments as set forth in 
paragraphs (e)(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 (e)(1) of this section for affiliate revenue returned during 
the reporting period and for bad debts actually written off during 
reporting period.
    (f) During any given payment period, the value of each performance 
of each digital sound recording shall be the same.

[63 FR 25413, May 8, 1998, as amended at 64 FR 36576, July 7, 1999; 65 
FR 39820, June 28, 2000; 68 FR 36470, June 18, 2003; 68 FR 39840, July 
3, 2003]



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 forty-fifth day after the end of 
each month for that month, commencing 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 from any of its receipts paid by 
Licensees under Sec. 260.2, prior to the distribution of such receipts 
to any person or entity entitled thereto, the reasonable costs permitted 
to be deducted under 17 U.S.C. 114(g)(3); Provided, however, that the 
parties entitled to receive royalty payments according to the provisions 
set forth at 17 U.S.C. 114(g)(1) & (2) who have authorized a designated 
agent may agree to deduct such other costs agreed to by such other 
parties and the designated agent.
    (e) Until such time as a new designation is made, SoundExchange, 
which initially is an unincorporated division of the Recording Industry 
Association of America, Inc., shall be the agent receiving royalty 
payments and statements of account and shall continue to be designated 
if it should be separately incorporated.
    (f) A Licensee shall make any payments due under Sec. 260.2(a) for 
digital transmissions or ephemeral phonorecords made between January 1,

[[Page 672]]

2002, and July 31, 2003, to the Designated Agent, less any amounts 
previously paid by such period to the Recording Industry Association of 
America, Inc., or SoundExchange by September 15, 2003.

[63 FR 25413, May 8, 1998, as amended at 63 FR 30636, June 5, 1998; 68 
FR 36470, June 18, 2003; 68 FR 39841, July 3, 2003]



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 
preexisting subscription 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 preexisting subscription 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 Sec. Sec. 260.5 and 260.6 of this part.
    (b) Nonexempt preexisting subscription 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, agents, consultants and independent contractors 
of the designated agent, subject to an appropriate confidentiality 
agreement, who are engaged in the collection and distribution of royalty 
payments hereunder and activities directly related hereto, who are not 
also employees or officers of a sound recording copyright owner or 
performing artist, and who, for the purpose of performing such duties 
during the ordinary course of employment, 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 or any person identified in paragraph (d) 
of this section 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, using 
a reasonable standard of care, but no less than the same degree of 
security used to protect confidential financial and business information 
or similarly sensitive information belonging to the designated agent or 
such person.
    (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.

[63 FR 25413, May 8, 1998, as amended at 68 FR 39841, July 3, 2003]



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 audit of a nonexempt preexisting subscription service during any 
given calendar year.

[[Page 673]]

    (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.

[63 FR 25413, May 8, 1998, as amended at 68 FR 39841, July 3, 2003]



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 interested 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 interested 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 who are entitled to receive royalty payments pursuant 
to 17 U.S.C. 114(g)(2), or their designated agents.

[68 FR 36470, June 18, 2003, as amended at 68 FR 39841, July 3, 2003]



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 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

[[Page 674]]

offset any costs deductible under 17 U.S.C. 114(g)(3).

[63 FR 25413, May 8, 1998, as amended at 64 FR 36576, July 7, 1999; 68 
FR 36470, June 18, 2003; 68 FR 39841, July 3, 2003; 68 FR 57815, Oct. 7, 
2003]



PART 261_RATES AND TERMS FOR ELIGIBLE NONSUBSCRIPTION TRANSMISSIONS 
AND THE MAKING OF EPHEMERAL REPRODUCTIONS--Table of Contents




Sec.
261.1 General.
261.2 Definitions.
261.3 Royalty fees for public performance of sound recordings and for 
          ephemeral recordings.
261.4 Terms for making payment of royalty fees and statements of 
          account.
261.5 Confidential information.
261.6 Verification of statements of account.
261.7 Verification of royalty payments.
261.8 Unclaimed funds.

    Authority: 17 U.S.C. 112(e), 114, 801(b)(1).

    Source: 67 FR 45272, July 8, 2002, unless otherwise noted.



Sec. 261.1  General.

    (a) This part 261 establishes rates and terms of royalty payments 
for the public performance of sound recordings in certain digital 
transmissions by certain Licensees in accordance with the provisions of 
17 U.S.C. 114, and the making of ephemeral recordings by certain 
Licensees in accordance with the provisions of 17 U.S.C. 112(e).
    (b) Licensees relying upon the statutory license set forth in 17 
U.S.C. 114 shall comply with the requirements of that section and the 
rates and terms of this part.
    (c) Licensees relying upon the statutory license set forth in 17 
U.S.C. 112 shall comply with the requirements of that section and the 
rates and terms of this part.
    (d) Notwithstanding the schedule of rates and terms established in 
this part, the rates and terms of any license agreements entered into by 
Copyright Owners and services within the scope of 17 U.S.C. 112 and 114 
concerning eligible nonsubscription transmissions shall apply in lieu of 
the rates and terms of this part.



Sec. 261.2  Definitions.

    For purposes of this part, the following definitions shall apply:
    Aggregate Tuning Hours mean the total hours of programming that the 
Licensee has transmitted over the Internet during the relevant period to 
all end users within the United States from all channels and stations 
that provide audio programming consisting, in whole or in part, of 
eligible nonsubscription transmissions. By way of example, if a service 
transmitted one hour of programming to 10 simultaneous listeners, the 
service's Aggregate Tuning Hours would equal 10. Likewise, if one 
listener listened to a service for 10 hours, the service's Aggregate 
Tuning Hours would equal 10.
    Business Establishment Service is a Licensee that is entitled to 
transmit to the public a performance of a sound recording under the 
limitation on exclusive rights specified by 17 U.S.C. 114(d)(1)(C)(iv) 
and that obtains a compulsory license under 17 U.S.C. 112(e) to make 
ephemeral recordings for the sole purpose of facilitating those exempt 
transmissions.
    Commercial Broadcaster is a Licensee that owns and operates a 
terrestrial AM or FM radio station that is licensed by the Federal 
Communications Commission to make over-the-air broadcasts, other than a 
CPB-Affiliated or Non-CPB-Affiliated, Non-Commercial Broadcaster.
    Copyright Owner is a sound recording copyright owner who is entitled 
to receive royalty payments made under this part pursuant to the 
statutory licenses under 17 U.S.C. 112(e) or 114.
    Designated Agent is the agent designated by the Librarian of 
Congress for the receipt of royalty payments made pursuant to this part 
from the Receiving Agent. The Designated Agent shall make further 
distribution of those royalty payments to Copyright Owners and 
Performers that have been identified in Sec. 261.4(c).
    Ephemeral Recording is a phonorecord created solely for the purpose 
of facilitating a transmission of a public performance of a sound 
recording under the limitations on exclusive rights specified by 17 
U.S.C. 114(d)(1)(C)(iv) or under a statutory license in accordance

[[Page 675]]

with 17 U.S.C. 114(f), and subject to the limitations specified in 17 
U.S.C. 112(e).
    Gross proceeds mean all fees and payments, as used in Sec. 
261.3(d), including those made in kind, received from any source before, 
during or after the License term which are derived from the use of 
copyrighted sound recordings pursuant to 17 U.S.C. 112(e) for the sole 
purpose of facilitating a transmission to the public of a performance of 
a sound recording under the limitation on the exclusive rights specified 
in section 114(d)(1)(c)(iv).
    Licensee is: (1) A person or entity that has obtained a compulsory 
license under 17 U.S.C. 112 or 114 and the implementing regulations 
therefor to make eligible non-subscription transmissions and ephemeral 
recordings, or
    (2) A person or entity entitled to transmit to the public a 
performance of a sound recording under the limitation on exclusive 
rights specified by 17 U.S.C. 114(d)(1)(C)(iv) and that has obtained a 
compulsory license under 17 U.S.C. 112 to make ephemeral recordings.
    Listener is a recipient of a transmission of a public performance of 
a sound recording made by a Licensee or a Business Establishment 
Service. However, if more than one person is listening to a transmission 
made to a single machine or device, those persons collectively 
constitute a single listener.
    Non-CPB, Non-Commercial Broadcaster is a Public Broadcasting Entity 
as defined in 17 U.S.C. 118(g) that is not qualified to receive funding 
from the Corporation for Public Broadcasting pursuant to the criteria 
set forth in 47 U.S.C. 396.
    Performance is each instance in which any portion of a sound 
recording is publicly performed to a listener via a Web Site 
transmission or retransmission (e.g. the delivery of any portion of a 
single track from a compact disc to one listener) but excluding the 
following:
    (1) A performance of a sound recording that does not require a 
license (e.g., the sound recording is not copyrighted);
    (2) A performance of a sound recording for which the service has 
previously obtained license from the copyright owner of such sound 
recording; and
    (3) An incidental performance that both: (i) Makes no more than 
incidental use of sound recordings including, but not limited to, brief 
musical transitions in and out of commercials or program segments, brief 
performances during news, talk and sports programming, brief background 
performances during disk jockey announcements, brief performances during 
commercials of sixty seconds or less in duration, or brief performances 
during sporting or other public events; and
    (ii) Other than ambient music that is background at a public event, 
does not contain an entire sound recording and does not feature a 
particular sound recording of more than thirty seconds (as in the case 
of a sound recording used as a theme song).
    Performer means the respective independent administrators identified 
in 17 U.S.C. 114(g)(2)(A) and (B) and the parties identified in 17 
U.S.C. 114(g)(2)(C).
    Receiving Agent is the agent designated by the Librarian of Congress 
for the collection of royalty payments made pursuant to this part by 
Licensees and the distribution of those royalty payments to Designated 
Agents, and that has been identified as such in Sec. 261.4(b). The 
Receiving Agent may also be a Designated Agent.
    Side channel is a channel on the Web Site of a Commercial 
Broadcaster or a Non-CPB, Non-Commercial Broadcaster, which channel 
transmits eligible non-subscription transmissions that are not 
simultaneously transmitted over-the-air by the Licensee.
    Webcaster is a Licensee, other than a Commercial Broadcaster, Non-
CPB, Non-Commercial Broadcaster or Business Establishment Service, that 
makes eligible non-subscription transmissions of digital audio 
programming over the Internet through a Web Site.
    Web Site is a site located on the World Wide Web that can be located 
by an end user through a principal Uniform Resource Locator (a ``URL''), 
e.g., www.xxxxx.com.

[[Page 676]]



Sec. 261.3  Royalty fees for public performances of sound recordings
and for ephemeral recordings.

    (a) For the period October 28, 1998, through December 31, 2002, 
royalty rates and fees for eligible digital transmissions of sound 
recordings made pursuant to 17 U.S.C. 114(d)(2), and the making of 
ephemeral recordings pursuant to 17 U.S.C. 112(e) shall be as follows:
    (1) Webcaster and Commercial Broadcaster Performance Royalty. For 
all Internet transmissions, including simultaneous Internet 
retransmissions of over-the-air AM or FM radio broadcasts, a Webcaster 
and a Commercial Broadcaster shall pay a section 114(f) performance 
royalty of 0.07[cent] per performance.
    (2) Non-CPB, Non-Commercial Broadcaster Performance Royalty.
    (i) For simultaneous Internet retransmissions of over-the-air AM or 
FM broadcasts by the same radio station, a non-CPB, Non-Commercial 
Broadcaster shall pay a section 114(f) performance royalty of 0.02[cent] 
per performance.
    (ii) For other Internet transmissions, including up to two side 
channels of programming consistent with the mission of the station, a 
Non-CPB, Non-Commercial Broadcaster shall pay a section 114(f) 
performance royalty of 0.02[cent] per performance.
    (iii) For Internet transmissions on other side channels of 
programming, a Non-CPB, Non-Commercial Broadcaster shall pay a section 
114(f) performance royalty of 0.07[cent] per performance.
    (b) Estimate of Performance. Until December 31, 2002, a Webcaster, 
Commercial Broadcaster, or Non-CPB, Non-Commercial Broadcaster may 
estimate its total number of performances if the actual number is not 
available. Such estimation shall be based on multiplying the total 
number of Aggregate Tuning Hours by 15 performances per hour (1 
performance per hour in the case of transmissions or retransmissions of 
radio station programming reasonably classified as news, business, talk 
or sports, and 12 performances per hour in the case of transmissions or 
retransmissions of all other radio station programming).
    (c) Webcaster and Broadcaster Ephemeral Recordings Royalty. For the 
making of any number of ephemeral recordings to facilitate the Internet 
transmission of a sound recording, each Webcaster, Commercial 
Broadcaster, and Non-CPB, Non-Commercial Broadcaster shall pay a section 
112(e) royalty equal to 8.8% of their total performance royalty.
    (d) Business Establishment Ephemeral Recordings Royalty. For the 
making of any number of ephemeral recordings in the operation of a 
service pursuant to the Business Establishment exemption contained in 17 
U.S.C. 114(d)(1)(C)(iv), a Business Establishment Service shall pay a 
section 112(e) ephemeral recording royalty equal to ten percent (10%) of 
the Licensee's annual gross proceeds derived from the use in such 
service of the musical programs which are attributable to copyrighted 
recordings. The attribution of gross proceeds to copyrighted recordings 
may be made on the basis of:
    (1) For classical programs, the proportion that the playing time of 
copyrighted classical recordings bears to the total playing time of all 
classical recordings in the program,
    (2) For all other programs, the proportion that the number of 
copyrighted recordings bears to the total number of all recordings in 
the program.
    (e) Minimum fee. (1) Each Webcaster, Commercial Broadcaster, and 
Non-CPB, Non-Commercial Broadcaster licensed to make eligible digital 
transmissions and/or ephemeral recordings pursuant to licenses under 17 
U.S.C. 114(f) and/or 17 U.S.C. 112(e) shall pay a minimum fee of $500 
for each calendar year, or part thereof, in which it makes such 
transmissions or recordings.
    (2) Each Business Establishment Service licensed to make ephemeral 
recordings pursuant to a license under 17 U.S.C. 112(e) shall pay a 
minimum fee of $10,000 for each calendar year, or part thereof, in which 
it makes such recordings.



Sec. 261.4  Terms for making payment of royalty fees and statements of account.

    (a) A Licensee shall make the royalty payments due under Sec. 261.3 
to the Receiving Agent. If there are more than

[[Page 677]]

one Designated Agent representing Copyright Owners or Performers 
entitled to receive any portion of the royalties paid by the Licensee, 
the Receiving Agent shall apportion the royalty payments among 
Designated Agents using the information provided by the Licensee 
pursuant to the regulations governing records of use of performances for 
the period for which the royalty payment was made. Such apportionment 
shall be made on a reasonable basis that uses a methodology that values 
all performances equally and is agreed upon among the Receiving Agent 
and the Designated Agents. Within 30 days of adoption of a methodology 
for apportioning royalties among Designated Agents, the Receiving Agent 
shall provide the Register of Copyrights with a detailed description of 
that methodology.
    (b) Until such time as a new designation is made, SoundExchange, an 
unincorporated division of the Recording Industry Association of 
America, Inc., is designated as the Receiving Agent to receive 
statements of account and royalty payments from Licensees. Until such 
time as a new designation is made, Royalty Logic, Inc. and SoundExchange 
are designated as Designated Agents to distribute royalty payments to 
Copyright Owners and Performers entitled to receive royalties under 17 
U.S.C. 114(g)(2) from the performance of sound recordings owned by such 
Copyright Owners.
    (c) SoundExchange is the Designated Agent to distribute royalty 
payments to each Copyright Owner and Performer entitled to receive 
royalties under 17 U.S.C. 114(g)(2) from the performance of sound 
recordings owned by such Copyright Owners, except when a Copyright Owner 
or Performer has notified SoundExchange in writing of an election to 
receive royalties from a particular Designated Agent. With respect to 
any royalty payment received by the Receiving Agent from a Licensee, a 
designation by a Copyright Owner or Performer of a particular Designated 
Agent must be made no later than thirty days prior to the receipt by the 
Receiving Agent of that royalty payment.
    (d) Commencing September 1, 2002, a Licensee shall make any payments 
due under Sec. 261.3 to the Receiving Agent by the forty-fifth (45th) 
day after the end of each month for that month. Concurrently with the 
delivery of payment to the Receiving Agent, a Licensee shall deliver to 
each Designated Agent a copy of the statement of account for such 
payment. A Licensee shall pay a late fee of 0.75% per month, or the 
highest lawful rate, whichever is lower, for any payment received by the 
Receiving Agent after the due date. Late fees shall accrue from the due 
date until payment is received by the Receiving Agent.
    (e) A Licensee shall make any payments due under Sec. 261.3 for 
transmissions made between October 28, 1998, and August 31, 2002, to the 
Receiving Agent by October 20, 2002.
    (f) A Licensee shall submit a monthly statement of account for 
accompanying royalty payments on a form prepared by the Receiving Agent 
after full consultation with all Designated Agents. The form shall be 
made available to the Licensee by the Receiving Agent. A statement of 
account shall include only such information as is necessary to calculate 
the accompanying royalty payment. Additional information beyond that 
which is sufficient to calculate the royalty payments to be paid shall 
not be required to be included on the statement of account.
    (g) The Receiving Agent shall make payments of the allocable share 
of any royalty payment received from any Licensee under this section to 
the Designated Agent(s) as expeditiously as is reasonably possible 
following receipt of the Licensee's royalty payment and statement of 
account as well as the Licensee's Report of Use of Sound Recordings 
under Statutory License for the period to which the royalty payment and 
statement of account pertain, with such allocation to be made on the 
basis determined as set forth in paragraph (a) of this section. The 
Receiving Agent and the Designated Agent shall agree on a reasonable 
basis on the sharing on a pro-rata basis of any incremental costs 
directly associated with the allocation method. A final adjustment, if 
necessary, shall be agreed and paid or refunded, as the case may be, 
between the Receiving Agent and a Designated Agent for each

[[Page 678]]

calendar year no later than 180 days following the end of each calendar 
year.
    (h) The Designated Agent shall distribute royalty payments on a 
reasonable basis that values all performances by a Licensee equally 
based upon the information provided by the Licensee pursuant to the 
regulations governing records of use of performances; Provided, however, 
that Copyright Owners and Performers who have designated a particular 
Designated Agent may agree to allocate their shares of the royalty 
payments among themselves on an alternative basis.
    (i)(1) A Designated Agent shall provide to the Register of 
Copyrights:
    (i) A detailed description of its methodology for distributing 
royalty payments to Copyright Owners and Performers who have not agreed 
to an alternative basis for allocating their share of royalty payments 
(hereinafter, ``non-members''), and any amendments thereto, within 30 
days of adoption and no later than 60 days prior to the first 
distribution to Copyright Owners and Performers of any royalties 
distributed pursuant to that methodology;
    (ii) Any written complaint that the Designated Agent receives from a 
non-member concerning the distribution of royalty payments, within 30 
days of receiving such written complaint; and
    (iii) The final disposition by the Designated Agent of any complaint 
specified by paragraph (i)(1)(ii) of this section, within 60 days of 
such disposition.
    (2) A Designated Agent may request that the Register of Copyrights 
provide a written opinion stating whether the Agent's methodology for 
distributing royalty payments to non-members meets the requirements of 
this section.
    (j) A Designated Agent shall distribute such royalty payments 
directly to the Copyright Owners and Performers, according to the 
percentages set forth in 17 U.S.C. 114(g)(2), if such Copyright Owners 
and Performers provide the Designated Agent with adequate information 
necessary to identify the correct recipient for such payments. However, 
Performers and Copyright Owners may jointly agree with a Designated 
Agent upon payment protocols to be used by the Designated Agent that 
provide for alternative arrangements for the payment of royalties to 
Performers and Copyright Owners consistent with the percentages in 17 
U.S.C. 114(g)(2).
    (k) A Designated Agent may deduct from the royalties paid to 
Copyright Owners and Performers reasonable costs incurred in the 
collection and distribution of the royalties paid by Licensees under 
Sec. 261.3, and a reasonable charge for administration.
    (l) In the event a Designated Agent and a Receiving Agent cannot 
agree upon a methodology for apportioning royalties pursuant to 
paragraph (a) of this section, either the Receiving Agent or a 
Designated Agent may seek the assistance of the Copyright Office in 
resolving the dispute.



Sec. 261.5  Confidential information.

    (a) For purposes of this part, ``Confidential Information'' shall 
include the statements of account, any information contained therein, 
including the amount of royalty payments, and any information pertaining 
to the statements of account reasonably designated as confidential by 
the Licensee submitting the statement.
    (b) Confidential Information shall not include documents or 
information that at the time of delivery to the Receiving Agent or a 
Designated Agent are public knowledge. The Receiving Agent or a 
Designated Agent that claims the benefit of this provision shall have 
the burden of proving that the disclosed information was public 
knowledge.
    (c) In no event shall the Receiving Agent or Designated Agent(s) use 
any Confidential Information for any purpose other than royalty 
collection and distribution and activities directly related thereto; 
Provided, however, that the Designated Agent may report Confidential 
Information provided on statements of account under this part in 
aggregated form, so long as Confidential Information pertaining to any 
Licensee or group of Licensees cannot directly or indirectly be 
ascertained or reasonably approximated. All reported aggregated 
Confidential Information from Licensees within a class of Licensees 
shall concurrently be made available to all Licensees then in such 
class. As used in this paragraph, the

[[Page 679]]

phrase ``class of Licensees'' means all Licensees paying fees pursuant 
to Sec. 261.4(a).
    (d) Except as provided in paragraph (c) of this section and as 
required by law, access to Confidential Information shall be limited to, 
and in the case of paragraphs (d)(3) and (d)(4) of this section shall be 
provided upon request, subject to resolution of any relevance or 
burdensomeness concerns and reimbursement of reasonable costs directly 
incurred in responding to such request, to:
    (1) Those employees, agents, consultants and independent contractors 
of the Receiving Agent or a Designated Agent, subject to an appropriate 
confidentiality agreement, who are engaged in the collection and 
distribution of royalty payments hereunder and activities directly 
related thereto, who are not also employees or officers of a Copyright 
Owner or Performer, and who, for the purpose of performing such duties 
during the ordinary course of employment, require access to the records;
    (2) An independent and qualified auditor, subject to an appropriate 
confidentiality agreement, who is authorized to act on behalf of the 
Receiving Agent or a Designated Agent with respect to the verification 
of a Licensee's statement of account pursuant to Sec. 261.6 or on 
behalf of a Copyright Owner or Performer with respect to the 
verification of royalty payments pursuant to Sec. 261.7;
    (3) In connection with future Copyright Arbitration Royalty Panel 
proceedings under 17 U.S.C. 114(f)(2) and 112(e), under an appropriate 
protective order, attorneys, consultants and other authorized agents of 
the parties to the proceedings, Copyright Arbitration Royalty Panels, 
the Copyright Office or the courts; and
    (4) In connection with bona fide royalty disputes or claims by or 
among Licensees, the Receiving Agent, Copyright Owners, Performers or 
the Designated Agent(s), under an appropriate confidentiality agreement 
or protective order, attorneys, consultants and other authorized agents 
of the parties to the dispute, arbitration panels or the courts.
    (e) The Receiving Agent or Designated Agent(s) and any person 
identified in paragraph (d) of this section shall implement procedures 
to safeguard all Confidential Information using a reasonable standard of 
care, but no less than the same degree of security used to protect 
Confidential Information or similarly sensitive information belonging to 
such Receiving Agent or Designated Agent(s) or person.
    (f) Books and records of a Licensee, the Receiving Agent and of a 
Designated Agent relating to the payment, collection, and distribution 
of royalty payments shall be kept for a period of not less than three 
(3) years.



Sec. 261.6  Verification of statements of account.

    (a) General. This section prescribes general rules pertaining to the 
verification of the statements of account by the Designated Agent.
    (b) Frequency of verification. A Designated Agent may conduct a 
single audit of a Licensee, upon reasonable notice and during reasonable 
business hours, during any given calendar year, for any or all of the 
prior three (3) calendar years, and no calendar year shall be subject to 
audit more than once.
    (c) Notice of intent to audit. A Designated Agent must submit a 
notice of intent to audit a particular Licensee with the Copyright 
Office, which shall publish in the Federal Register a notice announcing 
the receipt of the notice of intent to audit within thirty (30) days of 
the filing of the Designated Agent's notice. The notification of intent 
to audit shall be served at the same time on the Licensee to be audited. 
Any such audit shall be conducted by an independent and qualified 
auditor identified in the notice, and shall be binding on all Designated 
Agents, and all Copyright Owners and Performers.
    (d) Acquisition and retention of records. The Licensee shall use 
commercially reasonable efforts to obtain or to provide access to any 
relevant books and records maintained by third parties for the purpose 
of the audit and retain such records for a period of not less than three 
(3) years. The Designated

[[Page 680]]

Agent requesting the verification procedure shall retain the report of 
the verification for a period of not less than three (3) 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 and qualified auditor, shall serve as an acceptable 
verification procedure for all Designated Agents with respect to the 
information that is within the scope of the audit.
    (f) Consultation. Before rendering a written report to a Designated 
Agent, except where the auditor has a reasonable basis to suspect fraud 
and disclosure would, in the reasonable opinion of the auditor, 
prejudice the investigation of such suspected fraud, the auditor shall 
review the tentative written findings of the audit with the appropriate 
agent or employee of the Licensee being audited in order to remedy any 
factual errors and clarify any issues relating to the audit; Provided 
that the appropriate agent or employee of the Licensee reasonably 
cooperates with the auditor to remedy promptly any factual errors or 
clarify any issues raised by the audit.
    (g) Costs of the verification procedure. The Designated Agent 
requesting the verification procedure shall pay the cost of the 
procedure, unless it is finally determined that there was an 
underpayment of ten percent (10%) or more, in which case the Licensee 
shall, in addition to paying the amount of any underpayment, bear the 
reasonable costs of the verification procedure; Provided, however, that 
a Licensee shall not have to pay any costs of the verification procedure 
in excess of the amount of any underpayment unless the underpayment was 
more than twenty percent (20%) of the amount finally determined to be 
due from the Licensee and more than $5,000.00.



Sec. 261.7  Verification of royalty payments.

    (a) General. This section prescribes general rules pertaining to the 
verification by any Copyright Owner or Performer of royalty payments 
made by a Designated Agent; Provided, however, that nothing contained in 
this section shall apply to situations where a Copyright Owner or a 
Performer and a Designated Agent have agreed as to proper verification 
methods.
    (b) Frequency of verification. A Copyright Owner or a Performer may 
conduct a single audit of a Designated Agent upon reasonable notice and 
during reasonable business hours, during any given calendar year, for 
any or all of the prior three (3) calendar years, and no calendar year 
shall be subject to audit more than once.
    (c) Notice of intent to audit. A Copyright Owner or Performer must 
submit a notice of intent to audit a particular Designated Agent with 
the Copyright Office, which shall publish in the Federal Register a 
notice announcing the receipt of the notice of intent to audit within 
thirty (30) days of the filing of the notice. The notification of intent 
to audit shall be served at the same time on the Designated Agent to be 
audited. Any such audit shall be conducted by an independent and 
qualified auditor identified in the notice, and shall be binding on all 
Copyright Owners and Performers.
    (d) Acquisition and retention of records. The Designated Agent 
making the royalty payment shall use commercially reasonable efforts to 
obtain or to provide access to any relevant books and records maintained 
by third parties for the purpose of the audit and retain such records 
for a period of not less than three (3) years. The Copyright Owner or 
Performer requesting the verification procedure shall retain the report 
of the verification for a period of not less than three (3) 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 and qualified auditor, shall serve as an acceptable 
verification procedure for all parties with respect to the information 
that is within the scope of the audit.
    (f) Consultation. Before rendering a written report to a Copyright 
Owner or Performer, except where the auditor has a reasonable basis to 
suspect fraud and disclosure would, in the reasonable

[[Page 681]]

opinion of the auditor, prejudice the investigation of such suspected 
fraud, the auditor shall review the tentative written findings of the 
audit with the appropriate agent or employee of the Designated Agent 
being audited in order to remedy any factual errors and clarify any 
issues relating to the audit; Provided that the appropriate agent or 
employee of the Designated Agent reasonably cooperates with the auditor 
to remedy promptly any factual errors or clarify any issues raised by 
the audit.
    (g) Costs of the verification procedure. The Copyright Owner or 
Performer requesting the verification procedure shall pay the cost of 
the procedure, unless it is finally determined that there was an 
underpayment of ten percent (10%) or more, in which case the Designated 
Agent shall, in addition to paying the amount of any underpayment, bear 
the reasonable costs of the verification procedure; Provided, however, 
that a Designated Agent shall not have to pay any costs of the 
verification procedure in excess of the amount of any underpayment 
unless the underpayment was more than twenty percent (20%) of the amount 
finally determined to be due from the Designated Agent and more than 
$5,000.00.



Sec. 261.8  Unclaimed funds.

    If a Designated Agent is unable to identify or locate a Copyright 
Owner or Performer who is entitled to receive a royalty payment under 
this part, the Designated Agent shall retain the required payment in a 
segregated trust account for a period of three (3) years from the date 
of payment. No claim to such payment shall be valid after the expiration 
of the three (3) year period. After the expiration of this period, the 
unclaimed funds of the Designated Agent may first be applied to the 
costs directly attributable to the administration of the royalty 
payments due such unidentified Copyright Owners and Performers and shall 
thereafter be allocated on a pro rata basis among the Designated 
Agents(s) to be used to offset such Designated Agent(s) other costs of 
collection and distribution of the royalty fees.



PART 262_RATES AND TERMS FOR CERTAIN ELIGIBLE NONSUBSCRIPTION 
TRANSMISSIONS, NEW SUBSCRIPTION SERVICES AND THE MAKING OF EPHEMERAL

REPRODUCTIONS--Table of Contents




Sec.
262.1 General.
262.2 Definitions.
262.3 Royalty fees for public performance of sound recordings and for 
          ephemeral recordings.
262.4 Terms for making payment of royalty fees and statements of 
          account.
262.5 Confidential information.
262.6 Verification of statements of account.
262.7 Verification of royalty payments.
262.8 Unclaimed funds.

    Authority: 17 U.S.C. 112(e), 114, 801(b)(1).

    Source: 69 FR 5695, Feb. 6, 2004, unless otherwise noted.



Sec. 262.1  General.

    (a) Scope. This part 262 establishes rates and terms of royalty 
payments for the public performance of sound recordings in certain 
digital transmissions by certain Licensees in accordance with the 
provisions of 17 U.S.C. 114, and the making of Ephemeral Recordings by 
certain Licensees in accordance with the provisions of 17 U.S.C. 112(e), 
during the period 2003-2004 and in the case of Subscription Services 
1998-2004 (the ``License Period'').
    (b) Legal compliance. Licensees relying upon the statutory licenses 
set forth in 17 U.S.C. 112 and 114 shall comply with the requirements of 
those sections, the rates and terms of this part and any other 
applicable regulations.
    (c) Relationship to voluntary agreements. Notwithstanding the 
royalty rates and terms established in this part, the rates and terms of 
any license agreements entered into by Copyright Owners and services 
shall apply in lieu of the rates and terms of this part to transmissions 
within the scope of such agreements.



Sec. 262.2  Definitions.

    For purposes of this part, the following definitions shall apply:
    (a) Aggregate Tuning Hours means the total hours of programming that 
the Licensee has transmitted during the

[[Page 682]]

relevant period to all Listeners within the United States from all 
channels and stations that provide audio programming consisting, in 
whole or in part, of eligible nonsubscription transmissions or 
noninteractive digital audio transmissions as part of a new subscription 
service, less the actual running time of any sound recordings for which 
the Licensee has obtained direct licenses apart from 17 U.S.C. 114(d)(2) 
or which do not require a license under United States copyright law. By 
way of example, if a service transmitted one hour of programming to 10 
simultaneous Listeners, the service's Aggregate Tuning Hours would equal 
10. If 3 minutes of that hour consisted of transmission of a directly 
licensed recording, the service's Aggregate Tuning Hours would equal 9 
hours and 30 minutes. As an additional example, if one Listener listened 
to a service for 10 hours (and none of the recordings transmitted during 
that time was directly licensed), the service's Aggregate Tuning Hours 
would equal 10.
    (b) Broadcast Simulcast means
    (1) A simultaneous Internet transmission or retransmission of an 
over-the-air terrestrial AM or FM radio broadcast, including one with 
previously broadcast programming substituted for programming for which 
requisite licenses or clearances to transmit over the Internet have not 
been obtained and one with substitute advertisements, and
    (2) An Internet transmission in accordance with 17 U.S.C. 
114(d)(2)(C)(iii) of an archived program, which program was previously 
broadcast over-the-air by a terrestrial AM or FM broadcast radio 
station, in either case whether such Internet transmission or 
retransmission is made by the owner and operator of the AM or FM radio 
station that makes the broadcast or by a third party.
    (c) Business Establishment Service means a service making 
transmissions of sound recordings under the limitation on exclusive 
rights specified by 17 U.S.C. 114(d)(1)(C)(iv).
    (d) Copyright Owner is a sound recording copyright owner who is 
entitled to receive royalty payments made under this part pursuant to 
the statutory licenses under 17 U.S.C. 112(e) or 114.
    (e) Designated Agent is the agent designated by the Librarian of 
Congress as provided in Sec. 262.4(b).
    (f) Ephemeral Recording is a phonorecord created for the purpose of 
facilitating a transmission of a public performance of a sound recording 
under the limitations on exclusive rights specified by 17 U.S.C. 
114(d)(1)(C)(iv) or for the purpose of facilitating a transmission of a 
public performance of a sound recording under a statutory license in 
accordance with 17 U.S.C. 114(f), and subject to the limitations 
specified in 17 U.S.C. 112(e).
    (g) Licensee is a person or entity that
    (1) Has obtained a compulsory license under 17 U.S.C. 114 and the 
implementing regulations therefor to make eligible nonsubscription 
transmissions, or noninteractive digital audio transmissions as part of 
a new subscription service (as defined in 17 U.S.C. 114(j)(8)), or that 
has obtained a compulsory license under 17 U.S.C. 112(e) and the 
implementing regulations therefor to make Ephemeral Recordings for use 
in facilitating such transmissions, or
    (2) Is a Business Establishment Service that has obtained a 
compulsory license under 17 U.S.C. 112(e) and the implementing 
regulations therefor to make Ephemeral Recordings, but not a person or 
entity that:
    (i) Is exempt from taxation under section 501 of the Internal 
Revenue Code of 1986 (26 U.S.C. 501);
    (ii) Has applied in good faith to the Internal Revenue Service for 
exemption from taxation under section 501 of the Internal Revenue Code 
and has a commercially reasonable expectation that such exemption shall 
be granted; or
    (iii) Is a State or possession or any governmental entity or 
subordinate thereof, or the United States or District of Columbia, 
making transmissions for exclusively public purposes.
    (h) Listener is a player, receiving device or other point receiving 
and rendering a transmission of a public performance of a sound 
recording made by a Licensee, irrespective of the number of individuals 
present to hear the transmission.

[[Page 683]]

    (i) Nonsubscription Service means a service making eligible 
nonsubscription transmissions.
    (j) Performance is each instance in which any portion of a sound 
recording is publicly performed to a Listener by means of a digital 
audio transmission or retransmission (e.g., the delivery of any portion 
of a single track from a compact disc to one Listener) but excluding the 
following:
    (1) A performance of a sound recording that does not require a 
license (e.g., the sound recording is not copyrighted);
    (2) A performance of a sound recording for which the service has 
previously obtained a license from the Copyright Owner of such sound 
recording; and
    (3) An incidental performance that both:
    (i) Makes no more than incidental use of sound recordings including, 
but not limited to, brief musical transitions in and out of commercials 
or program segments, brief performances during news, talk and sports 
programming, brief background performances during disk jockey 
announcements, brief performances during commercials of sixty seconds or 
less in duration, or brief performances during sporting or other public 
events and
    (ii) Other than ambient music that is background at a public event, 
does not contain an entire sound recording and does not feature a 
particular sound recording of more than thirty seconds (as in the case 
of a sound recording used as a theme song).
    (k) Performers means the independent administrators identified in 17 
U.S.C. 114(g)(2)(B) and (C) and the parties identified in 17 U.S.C. 
114(g)(2)(D).
    (l) Subscription Service means a new subscription service (as 
defined in 17 U.S.C. 114(j)(8)) making noninteractive digital audio 
transmissions.
    (m) Subscription Service Revenues shall mean all monies and other 
consideration paid or payable, including the fair market value of non-
cash or in-kind consideration paid or payable by third parties, from the 
operation of a Subscription Service, as comprised of the following:
    (1) Subscription fees and other monies and consideration paid for 
access to the Subscription Service by or on behalf of subscribers 
receiving within the United States transmissions made as part of the 
Subscription Service;
    (2) Monies and other consideration (including without limitation 
customer acquisition fees) from audio or visual advertising, promotions, 
sponsorships, time or space exclusively or predominantly targeted to 
subscribers of the Subscription Service, whether
    (i) On or through the Subscription Service media player, or on pages 
accessible only by subscribers or that are predominantly targeted to 
subscribers, or
    (ii) In e-mails addressed exclusively or predominantly to 
subscribers of the Subscription Service, or
    (iii) Delivered exclusively or predominantly to subscribers of the 
Subscription Service in some other manner, in each case less advertising 
agency commissions (not to exceed 15% of those monies and other 
consideration) actually paid to a recognized advertising agency not 
owned or controlled by Licensee;
    (3) Monies and other consideration (including without limitation the 
proceeds of any revenue-sharing or commission arrangements with any 
fulfillment company or other third party, and any charge for shipping or 
handling) from the sale of any product or service directly through the 
Subscription Service media player or through pages or advertisements 
accessible only by subscribers or that are predominantly targeted to 
subscribers (but not pages or advertisements that are not predominantly 
targeted to subscribers), less
    (i) Monies and other consideration from the sale of phonorecords and 
digital phonorecord deliveries of sound recordings,
    (ii) The Licensee's actual, out-of-pocket cost to purchase for 
resale the products or services (except phonorecords and digital 
phonorecord deliveries of sound recordings) from third parties, or in 
the case of products produced or services provided by the Licensee, the 
Licensee's actual cost to produce the product or provide the service 
(but not more than the fair market wholesale value of the product or 
service), and

[[Page 684]]

    (iii) Sales and use taxes, shipping, and credit card and fulfillment 
service fees actually paid to unrelated third parties; provided that:
    (A) The fact that a transaction is consummated on a different page 
than the page/location where a potential customer responds to a ``buy 
button'' or other purchase opportunity for a product or service 
advertised directly through such player, pages or advertisements shall 
not render such purchase outside the scope of Subscription Service 
Revenues hereunder, and
    (B) Monies and other consideration paid by or on behalf of 
subscribers for software or any other access device owned by Licensee 
(or any subsidiary or other affiliate of the Licensee, but excluding, 
for the avoidance of doubt, any entity that sells a third-party product, 
whether or not bearing the Licensee's brand) to access the Licensee's 
Subscription Service shall not be deemed part of Subscription Service 
Revenues, unless such software or access device is required as a 
condition to access the Subscription Service and either is purchased by 
a subscriber contemporaneously with or after subscribing or has no 
independent function other than to access the Subscription Service;
    (4) Monies and other consideration for the use or exploitation of 
data specifically and separately concerning subscribers or the 
Subscription Service, but not monies and other consideration for the use 
or exploitation of data wherein information concerning subscribers or 
the Subscription Service is commingled with and not separated or 
distinguished from data that predominantly concern nonsubscribers or 
other services; and
    (5) Bad debts recovered with respect to paragraphs (m)(1) through 
(4) of this section; provided that the Subscription Service shall be 
permitted to deduct bad debts actually written off during a reporting 
period.

[69 FR 5695, Feb. 6, 2004; 69 FR 8822, Feb. 26, 2004]



Sec. 262.3  Royalty fees for public performances of sound recordings
and for ephemeral recordings.

    (a) Basic royalty rate. Royalty rates and fees for eligible 
nonsubscription transmissions made by Licensees pursuant to 17 U.S.C. 
114(d)(2) during the period January 1, 2003, through December 31, 2004, 
and the making of Ephemeral Recordings pursuant to 17 U.S.C. 112(e) to 
facilitate such transmissions; noninteractive digital audio 
transmissions made by Licensees pursuant to 17 U.S.C. 114(d)(2) as part 
of a new subscription service during the period October 28, 1998, 
through December 31, 2004, and the making of Ephemeral Recordings 
pursuant to 17 U.S.C. 112(e) to facilitate such transmissions; and the 
making of Ephemeral Recordings by Business Establishment Services 
pursuant to 17 U.S.C. 112(e) during the period January 1, 2003, through 
December 31, 2004, shall be as follows:
    (1) Nonsubscription Services. For their operation of Nonsubscription 
Services, Licensees other than Business Establishment Services shall, at 
their election as provided in paragraph (b) of this section, pay at one 
of the following rates:
    (i) Per Performance Option. $0.000762 (0.0762[cent]) per Performance 
for all digital audio transmissions, except that 4% of Performances 
shall bear no royalty to approximate the number of partial Performances 
of nominal duration made by a Licensee due to, for example, technical 
interruptions, the closing down of a media player or channel switching; 
Provided that this provision is not intended to imply that permitting 
users of a service to ``skip'' a recording is or is not permitted under 
17 U.S.C. 114(d)(2). For the avoidance of doubt, this 4% exclusion shall 
apply to all Licensees electing this payment option irrespective of the 
Licensee's actual experience in respect of partial Performances.
    (ii) Aggregate Tuning Hour Option--(A) Non-Music Programming. 
$0.000762 (0.0762[cent]) per Aggregate Tuning Hour for programming 
reasonably classified as news, talk, sports or business programming.
    (B) Broadcast Simulcasts. $0.0088 (0.88[cent]) per Aggregate Tuning 
Hour for Broadcast Simulcast programming not reasonably classified as 
news, talk, sports or business programming.

[[Page 685]]

    (C) Other Programming. $0.0117 (1.17[cent]) per Aggregate Tuning 
Hour for programming other than Broadcast Simulcast programming and 
programming reasonably classified as news, talk, sports or business 
programming.
    (2) Subscription Services. For their operation of Subscription 
Services, Licensees other than Business Establishment Services shall, at 
their election as provided in paragraph (b) of this section, pay at one 
of the following rates:
    (i) Per Performance Option. $0.000762 (0.0762[cent]) per Performance 
for all digital audio transmissions, except that 4% of Performances 
shall bear no royalty to approximate the number of partial Performances 
of nominal duration made by a Licensee due to, for example, technical 
interruptions, the closing down of a media player or channel switching; 
Provided that this provision is not intended to imply that permitting 
users of a service to ``skip'' a recording is or is not permitted under 
17 U.S.C. 114(d)(2). For the avoidance of doubt, this 4% exclusion shall 
apply to all Licensees electing this payment option irrespective of the 
Licensee's actual experience in respect of partial performances.
    (ii) Aggregate Tuning Hour Option--(A) Non-Music Programming. 
$0.000762 (0.0762[cent]) per Aggregate Tuning Hour for programming 
reasonably classified as news, talk, sports or business programming.
    (B) Broadcast Simulcasts. $0.0088 (0.88[cent]) per Aggregate Tuning 
Hour for Broadcast Simulcast programming not reasonably classified as 
news, talk, sports or business programming.
    (C) Other Programming. $0.0117 (1.17[cent]) per Aggregate Tuning 
Hour for programming other than Broadcast Simulcast programming and 
programming reasonably classified as news, talk, sports or business 
programming.
    (iii) Percentage of Subscription Service Revenues Option. 10.9% of 
Subscription Service Revenues, but in no event less than 27[cent] per 
month for each person who subscribes to the Subscription Service for all 
or any part of the month or to whom the Subscription Service otherwise 
is delivered by Licensee without a fee (e.g., during a free trial 
period), subject to the following reduction associated with the 
transmission of directly licensed sound recordings (if applicable). For 
any given payment period, the fee due from Licensee shall be the amount 
calculated under the formula described in the immediately preceding 
sentence multiplied by the following fraction: the total number of 
Performances (as defined under Sec. 262.2(j), which excludes directly 
licensed sound recordings) made by the Subscription Service during the 
period in question, divided by the total number of digital audio 
transmissions of sound recordings made by the Subscription Service 
during the period in question (inclusive of Performances and equivalent 
transmissions of directly licensed sound recordings). Any Licensee 
paying on such basis shall report to the Designated Agent on its 
statements of account the pertinent music use information upon which 
such reduction has been calculated. This option shall not be available 
to a Subscription Service where--
    (A) A particular computer software product or other access device 
must be purchased for a separate fee from the Licensee as a condition of 
receiving transmissions of sound recordings through the Subscription 
Service, and the Licensee chooses not to include sales of such software 
product or other device to subscribers as part of Subscription Service 
Revenues in accordance with Sec. 262.2(m)(3), or
    (B) The consideration paid or given to receive the Subscription 
Service also entitles the subscriber to receive or have access to 
material, products or services other than the Subscription Service (for 
example, as in the case of a ``bundled service'' consisting of access to 
the Subscription Service and also access to the Internet in general). In 
all events, in order to be eligible for this payment option, a Licensee 
may not engage in pricing practices whereby the Subscription Service is 
offered to subscribers on a ``loss leader'' basis or whereby the price 
of the Subscription Service is materially subsidized by payments made by 
the subscribers for other products or services.
    (3) Business Establishment Services. For the making of any number of 
Ephemeral Recordings in the operation of a service pursuant to the 
limitation on exclusive rights specified by 17 U.S.C. 114(d)(1)(C)(iv), 
a Licensee that is a

[[Page 686]]

Business Establishment Service shall pay 10% of such Licensee's ``Gross 
Proceeds'' derived from the use in such service of musical programs that 
are attributable to copyrighted recordings. ``Gross Proceeds'' as used 
in paragraph (a)(3) of this section means all fees and payments, 
including those made in kind, received from any source before, during or 
after the License Period that are derived from the use of copyrighted 
sound recordings pursuant to 17 U.S.C. 112(e) for the sole purpose of 
facilitating a transmission to the public of a performance of a sound 
recording under the limitation on exclusive rights specified in 17 
U.S.C. 114(d)(1)(C)(iv). The attribution of Gross Proceeds to 
copyrighted recordings may be made on the basis of:
    (i) For classical programs, the proportion that the playing time of 
copyrighted classical recordings bears to the total playing time of all 
classical recordings in the program, and
    (ii) For all other programs, the proportion that the number of 
copyrighted recordings bears to the total number of all recordings in 
the program.
    (b) Election process. A Licensee other than a Business Establishment 
Service shall elect the particular Nonsubscription Service and/or 
Subscription Service royalty rate categories it chooses (that is, among 
paragraph (a)(1)(i) or (ii) of this section and/or paragraph (a)(2)(i), 
(ii) or (iii) of this section) for the License Period by no later than 
March 8, 2004. Notwithstanding the preceding sentence, where a Licensee 
has not previously provided a Nonsubscription Service or Subscription 
Service, as the case may be, the Licensee may make its election by no 
later than thirty (30) days after the new service first makes a digital 
audio transmission of a sound recording under the 17 U.S.C. 114 
statutory license. Each such election shall be made by notifying the 
Designated Agent in writing of such election, using an election form 
provided by the Designated Agent. A Licensee that fails to make a timely 
election shall pay royalties as provided in paragraphs (a)(1)(i) and 
(a)(2)(i) of this section, as applicable. Notwithstanding the foregoing, 
a Licensee eligible to make royalty payments under an agreement entered 
into pursuant to the Small Webcaster Settlement Act of 2002 may elect to 
make payments under such agreement as specified in such agreement.
    (c) Ephemeral Recordings. The royalty payable under 17 U.S.C. 112(e) 
for any reproduction of a phonorecord made by a Licensee other than a 
Business Establishment Service during the License Period, and used 
solely by the Licensee to facilitate transmissions for which it pays 
royalties as and when provided in this section and Sec. 262.4 shall be 
deemed to be included within, and to comprise 8.8% of, such royalty 
payments. The royalty payable under 17 U.S.C. 112(e) for the 
reproduction of phonorecords by a Business Establishment Service shall 
be as set forth in paragraph (a)(3) of this section.
    (d) Minimum fee--(1) Business Establishment Services. Each Licensee 
that is a Business Establishment Service shall pay a minimum fee of 
$10,000 for each calendar year in which it makes Ephemeral Recordings 
for use to facilitate transmissions under the limitation on exclusive 
rights specified by 17 U.S.C. 114(d)(1)(C)(iv), whether or not it does 
so for all or any part of the year.
    (2) Other Services. Each Licensee other than a Business 
Establishment Service shall pay a minimum fee of $2,500, or $500 per 
channel or station (excluding archived programs, but in no event less 
than $500 per Licensee), whichever is less, for each calendar year in 
which it makes eligible nonsubscription transmissions, noninteractive 
digital audio transmissions as part of a new subscription service or 
Ephemeral Recordings for use to facilitate such transmissions, whether 
or not it does the foregoing for all or any part of the year; except 
that the minimum annual fee for a Licensee electing to pay under 
paragraph (a)(2)(iii) of this section shall be $5,000.
    (3) In General. These minimum fees shall be nonrefundable, but shall 
be fully creditable to royalty payments due under paragraph (a) of this 
section for the same calendar year (but not any subsequent calendar 
year).
    (e) Continuing Obligation. For the limited purpose of the period 
immediately following the License Period, and on an entirely without 
prejudice and nonprecedential basis relative to other

[[Page 687]]

time periods and proceedings, if successor statutory royalty rates for 
Licensees for the period beginning January 1, 2005, have not been 
established by January 1, 2005, then Licensees shall pay to the 
Designated Agent, effective January 1, 2005, and continuing for the 
period through April 30, 2005, or until successor rates and terms are 
established, whichever is earlier, an interim royalty pursuant to the 
same rates and terms as are provided for the License Period. Such 
interim royalties shall be subject to retroactive adjustment based on 
the final successor rates. Any overpayment shall be fully creditable to 
future payments, and any underpayment shall be paid within 30 days after 
establishment of the successor rates and terms, except as may otherwise 
be provided in the successor terms. If there is a period of such interim 
payments, Licensees shall elect the particular royalty rate categories 
it chooses for the interim period as described in paragraph (b) of this 
section, except that the election for a service that is in operation 
shall be made by no later than January 15, 2005.
    (f) Other royalty rates and terms. This part 262 does not apply to 
persons or entities other than Licensees, or to Licensees to the extent 
that they make other types of transmissions beyond those set forth in 
paragraph (a) of this section. For transmissions other than those 
governed by paragraph (a) of this section, or the use of Ephemeral 
Recordings to facilitate such transmissions, persons making such 
transmissions must pay royalties, to the extent (if at all) applicable, 
under 17 U.S.C. 112(e) and 114 or as prescribed by other law, regulation 
or agreement.



Sec. 262.4  Terms for making payment of royalty fees and statements of account.

    (a) Payment to designated agent. A Licensee shall make the royalty 
payments due under Sec. 262.3 to the Designated Agent.
    (b) Designation of agent and potential successor designated agents. 
(1) Until such time as a new designation is made, SoundExchange, 
presently an unincorporated division of the Recording Industry 
Association of America, Inc. (``RIAA''), is designated as the Designated 
Agent to receive statements of account and royalty payments from 
Licensees due under Sec. 262.3 and to distribute such royalty payments 
to each Copyright Owner and Performer entitled to receive royalties 
under 17 U.S.C. 112(e) or 114(g). SoundExchange shall continue to be 
designated after its separate incorporation.
    (2) If SoundExchange should fail to incorporate by July 1, 2003, 
dissolve or cease to be governed by a board consisting of equal numbers 
of representatives of Copyright Owners and Performers, then it shall be 
replaced by successor entities upon the fulfillment of the requirements 
set forth in paragraphs (b)(2)(i) and (ii) of this section.
    (i) By a majority vote of the nine copyright owner representatives 
on the SoundExchange Board as of the last day preceding the condition 
precedent in paragraph (b)(2) of this section, such representatives 
shall file a petition with the Copyright Office designating a successor 
Designated Agent to distribute royalty payments to Copyright Owners and 
Performers entitled to receive royalties under 17 U.S.C. 112(e) or 
114(g) that have themselves authorized such Designated Agent.
    (ii) By a majority vote of the nine performer representatives on the 
SoundExchange Board as of the last day preceding the condition precedent 
in paragraph (b)(2) of this section, such representatives shall file a 
petition with the Copyright Office designating a successor Designated 
Agent to distribute royalty payments to Copyright Owners and Performers 
entitled to receive royalties under 17 U.S.C. 112(e) or 114(g) that have 
themselves authorized such Designated Agent.
    (iii) The Copyright Office shall publish in the Federal Register 
within 30 days of receipt of a petition filed under paragraph (b)(2)(i) 
or (ii) of this section an order designating the Designated Agents named 
in such petitions. Nothing contained in this section shall prohibit the 
petitions filed under paragraphs (b)(2)(i) and (ii) of this section from 
naming the same successor Designated Agent.
    (3) If petitions are filed under paragraphs (b)(2)(i) and (ii) of 
this section,

[[Page 688]]

then, following the actions of the Copyright Office in accordance with 
paragraph (b)(2)(iii) of this section:
    (i) Each of the successor entities shall have all the rights and 
responsibilities of a Designated Agent under this part 262, except as 
specifically set forth in this paragraph (b)(3).
    (ii) Licensees shall make their royalty payments to the successor 
entity named by the copyright owner representatives under paragraph 
(b)(2)(i) of this section (the ``Receiving Agent'') and shall provide 
statements of account on a form prepared by the Receiving Agent. 
Licensees shall submit a copy of each statement of account to the 
collective named by the performer representatives under paragraph 
(b)(2)(ii) of this section at the same time such statement of account is 
delivered to the Receiving Agent.
    (iii) The Designated Agents shall agree between themselves 
concerning responsibility for distributing royalty payments to Copyright 
Owners and Performers that have not themselves authorized either 
Designated Agent. The Designated Agents also shall agree to a 
corresponding methodology for allocating royalty payments between them 
using the information provided by the Licensee pursuant to the 
regulations governing records of use of performances for the period for 
which the royalty payment was made. Such methodology shall value all 
performances equally. Within 30 days after their agreement concerning 
such responsibility and methodology, the Designated Agents shall inform 
the Register of Copyrights thereof.
    (iv) With respect to any royalty payment received by the Receiving 
Agent from a Licensee, a designation by a Copyright Owner or Performer 
of a Designated Agent must be made no later than 30 days prior to the 
receipt by the Receiving Agent of that royalty payment.
    (v) The Receiving Agent shall promptly allocate the royalty payments 
it receives between the two Designated Agents in accordance with the 
agreed methodology. A final adjustment, if necessary, shall be agreed 
and paid or refunded, as the case may be, between the Receiving Agent 
and the collectives named under paragraph (b)(2) of this section for 
each calendar year no later than 180 days following the end of each 
calendar year. The Designated Agents shall agree on a reasonable basis 
for the sharing on a pro-rata basis of any costs associated with the 
allocations set forth in paragraph (b)(3)(iii) of this section.
    (vi) If a Designated Agent is unable to locate a Copyright Owner or 
Performer that the Designated Agent otherwise would be required to pay 
under this paragraph (b) within 3 years from the date of payment by 
Licensee, such Copyright Owner's or Performer's share of the payments 
made by Licensees may first be applied to the costs directly 
attributable to the administration of the royalty payments due such 
Copyright Owners and Performers by that Designated Agent and shall 
thereafter be allocated between the Designated Agents on a pro rata 
basis (based on distributions to entitled parties) to offset any costs 
permitted to be deducted by a designated agent under 17 U.S.C. 
114(g)(3). The foregoing shall apply notwithstanding the common law or 
statutes of any State.
    (c) Monthly payments. A Licensee shall make any payments due under 
Sec. 262.3(a) by the 45th day after the end of each month for that 
month, except that payments due under Sec. 262.3(a) for the period from 
the beginning of the License Period through the last day of the month in 
which these rates and terms are adopted by the Librarian of Congress and 
published in the Federal Register shall be due 45 days after the end of 
such period. All monthly payments shall be rounded to the nearest cent.
    (d) Minimum payments. A Licensee shall make any payment due under 
Sec. 262.3(d) by January 31 of the applicable calendar year, except 
that:
    (1) Payment due under Sec. 262.3(d) for 2003, and in the case of a 
Subscription Service any earlier year, shall be due 45 days after the 
last day of the month in which these rates and terms are adopted by the 
Librarian of Congress and published in the Federal Register; and
    (2) Payment for a Licensee that has not previously made eligible 
nonsubscription transmissions, noninteractive digital audio 
transmissions as

[[Page 689]]

part of a new subscription service or Ephemeral Recordings pursuant to 
licenses under 17 U.S.C. 114(f) and/or 17 U.S.C. 112(e) shall be due by 
the 45th day after the end of the month in which the Licensee commences 
to do so.
    (e) Late payments. A Licensee shall pay a late fee of 0.75% per 
month, or the highest lawful rate, whichever is lower, for any payment 
received by the Designated Agent after the due date. Late fees shall 
accrue from the due date until payment is received by the Designated 
Agent.
    (f) Statements of account. For any part of the period beginning on 
the date these rates and terms are adopted by the Librarian of Congress 
and published in the Federal Register and ending on December 31, 2004, 
during which a Licensee operates a service, by 45 days after the end of 
each month during the period, the Licensee shall deliver to the 
Designated Agent a statement of account containing the information set 
forth in this paragraph (f) on a form prepared, and made available to 
Licensees, by the Designated Agent. If a payment is owed for such month, 
the statement of account shall accompany the payment. A statement of 
account shall include only the following information:
    (1) Such information as is necessary to calculate the accompanying 
royalty payment, or if no payment is owed for the month, to calculate 
any portion of the minimum fee recouped during the month, including, as 
applicable, the Performances, Aggregate Tuning Hours (to the nearest 
minute) or Subscription Service Revenues for the month;
    (2) The name, address, business title, telephone number, facsimile 
number, electronic mail address and other contact information of the 
individual or individuals to be contacted for information or questions 
concerning the content of the statement of account;
    (3) The handwritten signature of:
    (i) The owner of the Licensee or a duly authorized agent of the 
owner, if the Licensee is not a partnership or a corporation;
    (ii) A partner or delegee, if the Licensee is a partnership; or
    (iii) An officer of the corporation, if the Licensee is a 
corporation;
    (4) The printed or typewritten name of the person signing the 
statement of account;
    (5) The date of signature;
    (6) If the Licensee is a partnership or a corporation, the title or 
official position held in the partnership or corporation by the person 
signing the statement of account;
    (7) A certification of the capacity of the person signing; and
    (8) A statement to the following effect:

    I, the undersigned owner or agent of the Licensee, or officer or 
partner, if the Licensee is a corporation or partnership, have examined 
this statement of account and hereby state that it is true, accurate and 
complete to my knowledge after reasonable due diligence.

    (g) Distribution of payments.--(1) The Designated Agent shall 
distribute royalty payments directly to Copyright Owners and Performers, 
according to 17 U.S.C. 114(g)(2); Provided that the Designated Agent 
shall only be responsible for making distributions to those Copyright 
Owners and Performers who provide the Designated Agent with such 
information as is necessary to identify and pay the correct recipient of 
such payments. The agent shall distribute royalty payments on a basis 
that values all performances by a Licensee equally based upon the 
information provided by the Licensee pursuant to the regulations 
governing records of use of sound recordings by Licensees; Provided, 
however, Performers and Copyright Owners that authorize the Designated 
Agent may agree with the Designated Agent to allocate their shares of 
the royalty payments made by any Licensee among themselves on an 
alternative basis. Parties entitled to receive payments under 17 U.S.C. 
114(g)(2) may agree with the Designated Agent upon payment protocols to 
be used by the Designated Agent that provide for alternative 
arrangements for the payment of royalties consistent with the 
percentages in 17 U.S.C. 114(g)(2).
    (2) The Designated Agent shall inform the Register of Copyrights of:
    (i) Its methodology for distributing royalty payments to Copyright 
Owners and Performers who have not themselves authorized the Designated 
Agent

[[Page 690]]

(hereinafter ``nonmembers''), and any amendments thereto, within 60 days 
of adoption and no later than 30 days prior to the first distribution to 
Copyright Owners and Performers of any royalties distributed pursuant to 
that methodology;
    (ii) Any written complaint that the Designated Agent receives from a 
nonmember concerning the distribution of royalty payments, within 60 
days of receiving such written complaint; and
    (iii) The final disposition by the Designated Agent of any complaint 
specified by paragraph (g)(2)(ii) of this section, within 60 days of 
such disposition.
    (3) A Designated Agent may request that the Register of Copyrights 
provide a written opinion stating whether the Designated Agent's 
methodology for distributing royalty payments to nonmembers meets the 
requirements of this section.
    (h) Permitted deductions. The Designated Agent may deduct from the 
payments made by Licensees under Sec. 262.3, prior to the distribution 
of such payments to any person or entity entitled thereto, all incurred 
costs permitted to be deducted under 17 U.S.C. 114(g)(3); Provided, 
however, that any party entitled to receive royalty payments under 17 
U.S.C. 112(e) or 114(g) may agree to permit the Designated Agent to make 
any other deductions.
    (i) Retention of records. Books and records of a Licensee and of the 
Designated Agent relating to the payment, collection, and distribution 
of royalty payments shall be kept for a period of not less than 3 years.



Sec. 262.5  Confidential information.

    (a) Definition. For purposes of this part, ``Confidential 
Information'' shall include the statements of account, any information 
contained therein, including the amount of royalty payments, and any 
information pertaining to the statements of account reasonably 
designated as confidential by the Licensee submitting the statement.
    (b) Exclusion. Confidential Information shall not include documents 
or information that at the time of delivery to the Receiving Agent or a 
Designated Agent are public knowledge. The Designated Agent that claims 
the benefit of this provision shall have the burden of proving that the 
disclosed information was public knowledge.
    (c) Use of Confidential Information. In no event shall the 
Designated Agent use any Confidential Information for any purpose other 
than royalty collection and distribution and activities directly related 
thereto; Provided, however, that the Designated Agent may disclose to 
Copyright Owners and Performers Confidential Information provided on 
statements of account under this part in aggregated form, so long as 
Confidential Information pertaining to any individual Licensee cannot 
readily be identified, and the Designated Agent may disclose the 
identities of services that have obtained licenses under 17 U.S.C. 
112(e) or 114 and whether or not such services are current in their 
obligations to pay minimum fees and submit statements of account (so 
long as the Designated Agent does not disclose the amounts paid by the 
Licensee).
    (d) Disclosure of Confidential Information. Except as provided in 
paragraph (c) of this section and as required by law, access to 
Confidential Information shall be limited to:
    (1) Those employees, agents, attorneys, consultants and independent 
contractors of the Designated Agent, subject to an appropriate 
confidentiality agreement, who are engaged in the collection and 
distribution of royalty payments hereunder and activities related 
thereto, who are not also employees or officers of a Copyright Owner or 
Performer, and who, for the purpose of performing such duties during the 
ordinary course of their work, require access to the records;
    (2) An independent and qualified auditor, subject to an appropriate 
confidentiality agreement, who is authorized to act on behalf of the 
Designated Agent with respect to the verification of a Licensee's 
statement of account pursuant to Sec. 262.6 or on behalf of a Copyright 
Owner or Performer with respect to the verification of royalty payments 
pursuant to Sec. 262.7;
    (3) The Copyright Office, in response to inquiries concerning the 
operation of the Designated Agent;
    (4) In connection with future Copyright Arbitration Royalty Panel 
proceedings under 17 U.S.C. 114(f)(2) and

[[Page 691]]

112(e), and under an appropriate protective order, attorneys, 
consultants and other authorized agents of the parties to the 
proceedings, Copyright Arbitration Royalty Panels, the Copyright Office 
or the courts; and
    (5) In connection with bona fide royalty disputes or claims that are 
the subject of the procedures under Sec. 262.6 or Sec. 262.7, and 
under an appropriate confidentiality agreement or protective order, the 
specific parties to such disputes or claims, their attorneys, 
consultants or other authorized agents, and/or arbitration panels or the 
courts to which disputes or claims may be submitted.
    (e) Safeguarding of Confidential Information. The Designated Agent 
and any person identified in paragraph (d) of this section shall 
implement procedures to safeguard all Confidential Information using a 
reasonable standard of care, but no less than the same degree of 
security used to protect Confidential Information or similarly sensitive 
information belonging to such Designated Agent or person.



Sec. 262.6  Verification of statements of account.

    (a) General. This section prescribes procedures by which the 
Designated Agent may verify the royalty payments made by a Licensee.
    (b) Frequency of verification. The Designated Agent may conduct a 
single audit of a Licensee, upon reasonable notice and during reasonable 
business hours, during any given calendar year, for any or all of the 
prior 3 calendar years, but no calendar year shall be subject to audit 
more than once.
    (c) Notice of intent to audit. The Designated Agent must file with 
the Copyright Office a notice of intent to audit a particular Licensee, 
which shall, within 30 days of the filing of the notice, publish in the 
Federal Register a notice announcing such filing. The notification of 
intent to audit shall be served at the same time on the Licensee to be 
audited. Any such audit shall be conducted by an independent and 
qualified auditor identified in the notice, and shall be binding on all 
parties.
    (d) Acquisition and retention of records. The Licensee shall use 
commercially reasonable efforts to obtain or to provide access to any 
relevant books and records maintained by third parties for the purpose 
of the audit and retain such records for a period of not less than 3 
years. The Designated Agent shall retain the report of the verification 
for a period of not less than 3 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 and qualified auditor, shall serve as an acceptable 
verification procedure for all parties with respect to the information 
that is within the scope of the audit.
    (f) Consultation. Before rendering a written report to the 
Designated Agent, except where the auditor has a reasonable basis to 
suspect fraud and disclosure would, in the reasonable opinion of the 
auditor, prejudice the investigation of such suspected fraud, the 
auditor shall review the tentative written findings of the audit with 
the appropriate agent or employee of the Licensee being audited in order 
to remedy any factual errors and clarify any issues relating to the 
audit; Provided that the appropriate agent or employee of the Licensee 
reasonably cooperates with the auditor to remedy promptly any factual 
errors or clarify any issues raised by the audit.
    (g) Costs of the verification procedure. The Designated Agent shall 
pay the cost of the verification procedure, unless it is finally 
determined that there was an underpayment of 10% or more, in which case 
the Licensee shall, in addition to paying the amount of any 
underpayment, bear the reasonable costs of the verification procedure.



Sec. 262.7  Verification of royalty payments.

    (a) General. This section prescribes procedures by which any 
Copyright Owner or Performer may verify the royalty payments made by the 
Designated Agent; Provided, however, that nothing contained in this 
section shall apply to situations where a Copyright Owner or a Performer 
and the Designated Agent have agreed as to proper verification methods.

[[Page 692]]

    (b) Frequency of verification. A Copyright Owner or a Performer may 
conduct a single audit of the Designated Agent upon reasonable notice 
and during reasonable business hours, during any given calendar year, 
for any or all of the prior 3 calendar years, but no calendar year shall 
be subject to audit more than once.
    (c) Notice of intent to audit. A Copyright Owner or Performer must 
file with the Copyright Office a notice of intent to audit the 
Designated Agent, which shall, within 30 days of the filing of the 
notice, publish in the Federal Register a notice announcing such filing. 
The notification of intent to audit shall be served at the same time on 
the Designated Agent. Any such audit shall be conducted by an 
independent and qualified auditor identified in the notice, and shall be 
binding on all Copyright Owners and Performers.
    (d) Acquisition and retention of records. The Designated Agent shall 
use commercially reasonable efforts to obtain or to provide access to 
any relevant books and records maintained by third parties for the 
purpose of the audit and retain such records for a period of not less 
than 3 years. The Copyright Owner or Performer requesting the 
verification procedure shall retain the report of the verification for a 
period of not less than 3 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 and qualified auditor, shall serve as an acceptable 
verification procedure for all parties with respect to the information 
that is within the scope of the audit.
    (f) Consultation. Before rendering a written report to a Copyright 
Owner or Performer, except where the auditor has a reasonable basis to 
suspect fraud and disclosure would, in the reasonable opinion of the 
auditor, prejudice the investigation of such suspected fraud, the 
auditor shall review the tentative written findings of the audit with 
the appropriate agent or employee of the Designated Agent in order to 
remedy any factual errors and clarify any issues relating to the audit; 
Provided that the appropriate agent or employee of the Designated Agent 
reasonably cooperates with the auditor to remedy promptly any factual 
errors or clarify any issues raised by the audit.
    (g) Costs of the verification procedure. The Copyright Owner or 
Performer requesting the verification procedure shall pay the cost of 
the procedure, unless it is finally determined that there was an 
underpayment of 10% or more, in which case the Designated Agent shall, 
in addition to paying the amount of any underpayment, bear the 
reasonable costs of the verification procedure.



Sec. 262.8  Unclaimed funds.

    If a Designated Agent is unable to identify or locate a Copyright 
Owner or Performer who is entitled to receive a royalty payment under 
this part, the Designated Agent shall retain the required payment in a 
segregated trust account for a period of 3 years from the date of 
payment. No claim to such payment shall be valid after the expiration of 
the 3-year period. After the expiration of this period, the Designated 
Agent may apply the unclaimed funds to offset any costs deductible under 
17 U.S.C. 114(g)(3). The foregoing shall apply notwithstanding the 
common law or statutes of any State.



PART 263_RATES AND TERMS FOR CERTAIN TRANSMISSIONS AND THE MAKING 
OF EPHEMERAL REPRODUCTIONS BY NONCOMMERCIAL LICENSEES--Table of Contents




Sec.
263.1 General.
263.2 Definitions.
263.3 Royalty rates and terms.

    Authority: 17 U.S.C. 112(e), 114, 801(b)(1).

    Source: 69 FR 5695, Feb. 6, 2004, unless otherwise noted.



Sec. 263.1  General.

    This part 263 establishes rates and terms of royalty payments for 
the public performance of sound recordings in certain digital 
transmissions by certain Noncommercial Licensees in accordance with the 
provisions of 17 U.S.C. 114, and the making of ephemeral recordings by 
certain Noncommercial Licensees in accordance with the

[[Page 693]]

provisions of 17 U.S.C. 112(e), during the period 2003-2004.



Sec. 263.2  Definitions.

    For purposes of this part, the following definition shall apply:
    A Noncommercial Licensee is a person or entity that has obtained a 
compulsory license under 17 U.S.C. 114 and the implementing regulations 
therefor, or that has obtained a compulsory license under 17 U.S.C. 
112(e) and the implementing regulations therefor to make ephemeral 
recordings for use in facilitating such transmissions, and--
    (a) Is exempt from taxation under section 501 of the Internal 
Revenue Code of 1986 (26 U.S.C. 501);
    (b) Has applied in good faith to the Internal Revenue Service for 
exemption from taxation under section 501 of the Internal Revenue Code 
and has a commercially reasonable expectation that such exemption shall 
be granted; or
    (c) Is a State or possession or any governmental entity or 
subordinate thereof, or the United States or District of Columbia, 
making transmissions for exclusively public purposes.



Sec. 263.3  Royalty rates and terms.

    A Noncommercial Licensee shall in every respect be treated as a 
``Licensee'' under part 262 of this chapter, and all terms applicable to 
Licensees and their payments under part 262 of this chapter shall apply 
to Noncommercial Licensees and their payment, except that a 
Noncommercial Licensee shall pay royalties at the rates applicable to 
such a ``Licensee,'' as currently provided in Sec. 261.3(a), (c), (d) 
and (e) of this chapter, rather than at the rates set forth in Sec. 
262.3(a) through (d) of this chapter.



PART 270_NOTICE AND RECORDKEEPING REQUIREMENTS FOR STATUTORY 
LICENSES--Table of Contents




Sec.
270.1 Notice of use of sound recordings under statutory license.
270.2 Reports of use of sound recordings under statutory license for 
          preexisting subscription services.
270.3 Reports of use of sound recordings under statutory license for 
          nonsubscription transmission services, preexisting satellite 
          digital audio radio services, new subscription services and 
          business establishment services.
270.4 Reports of use of sound recordings under statutory license prior 
          to April 1, 2004.
270.5 Designated collection and distribution organizations for records 
          of use of sound recordings under statutory license.

    Authority: 17 U.S.C. 702.

    Source: 69 FR 11527, Mar. 11, 2004, unless otherwise noted.



Sec. 270.1  Notice of use of sound recordings under statutory license.

    (a) General. This section prescribes rules under which copyright 
owners shall receive notice of use of their sound recordings when used 
under either section 112(e) or 114(d)(2) of title 17, United States 
Code, or both.
    (b) Definitions. (1) A Notice of Use of Sound Recordings under 
Statutory License is a written notice to sound recording copyright 
owners of the use of their works under section 112(e) or 114(d)(2) of 
title 17, United States Code, or both, and is required under this 
section to be filed by a Service in the Copyright Office.
    (2) A Service is an entity engaged in either the digital 
transmission of sound recordings pursuant to section 114(d)(2) of title 
17 of the United States Code or making ephemeral phonorecords of sound 
recordings pursuant to section 112(e) of title 17 of the United States 
Code or both. For purposes of this section, the definition of a Service 
includes an entity that transmits an AM/FM broadcast signal over a 
digital communications network such as the Internet, regardless of 
whether the transmission is made by the broadcaster that originates the 
AM/FM signal or by a third party, provided that such transmission meets 
the applicable requirements of the statutory license set forth in 17 
U.S.C. 114(d)(2). A Service may be further characterized as either a 
preexisting subscription service, preexisting satellite digital audio 
radio service, nonsubscription transmission service, new subscription 
service, business establishment service or a combination of those:

[[Page 694]]

    (i) A preexisting subscription service is a service that performs 
sound recordings by means of noninteractive audio-only subscription 
digital audio transmissions, and was in existence and making such 
transmissions to the public for a fee on or before July 31, 1998, and 
may include a limited number of sample channels representative of the 
subscription service that are made available on a nonsubscription basis 
in order to promote the subscription service.
    (ii) A preexisting satellite digital audio radio service is a 
subscription satellite digital audio radio service provided pursuant to 
a satellite digital audio radio service license issued by the Federal 
Communications Commission on or before July 31, 1998, and any renewal of 
such license to the extent of the scope of the original license, and may 
include a limited number of sample channels representative of the 
subscription service that are made available on a nonsubscription basis 
in order to promote the subscription service.
    (iii) A nonsubscription transmission service is a service that makes 
noninteractive nonsubscription digital audio transmissions that are not 
exempt under section 114(d)(1) of title 17 of the United States Code and 
are made as part of a service that provides audio programming 
consisting, in whole or in part, of performances of sound recordings, 
including transmissions of broadcast transmissions, if the primary 
purpose of the service is to provide to the public such audio or other 
entertainment programming, and the primary purpose of the service is not 
to sell, advertise, or promote particular products or services other 
than sound recordings, live concerts, or other music-related events.
    (iv) A new subscription service is a service that performs sound 
recordings by means of noninteractive subscription digital audio 
transmissions and that is not a preexisting subscription service or a 
preexisting satellite digital audio radio service.
    (v) A business establishment service is a service that makes 
ephemeral phonorecords of sound recordings pursuant to section 112(e) of 
title 17 of the United States Code and is exempt under section 
114(d)(1)(C)(iv) of title 17 of the United States Code.
    (c) Forms and content. A Notice of Use of Sound Recordings Under 
Statutory License shall be prepared on a form that may be obtained from 
the Copyright Office website or from the Licensing Division, and shall 
include the following information:
    (1) The full legal name of the Service that is either commencing 
digital transmissions of sound recordings or making ephemeral 
phonorecords of sound recordings under statutory license or doing both.
    (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.
    (4) Information on how to gain access to the online website or 
homepage of the Service, or where information may be posted under this 
section concerning the use of sound recordings under statutory license.
    (5) Identification of each license under which the Service intends 
to operate, including identification of each of the following categories 
under which the Service will be making digital transmissions of sound 
recordings: preexisting subscription service, preexisting satellite 
digital audio radio service, nonsubscription transmission service, new 
subscription service or business establishment service.
    (6) The date or expected date of the initial digital transmission of 
a sound recording to be made under the section 114 statutory license 
and/or the date or the expected date of the initial use of the section 
112(e) license for the purpose of making ephemeral phonorecords of the 
sound recordings.
    (7) Identification of any amendments required by paragraph (f) of 
this section.
    (d) Signature. The Notice shall include the signature of the 
appropriate officer or representative of the Service that is either 
transmitting the sound recordings or making ephemeral phonorecords of 
sound recordings under

[[Page 695]]

statutory license or doing both. The signature shall be accompanied by 
the printed or typewritten name and the title of the person signing the 
Notice and by the date of the signature.
    (e) Filing notices; fees. The original and three copies shall be 
filed with the Licensing Division of the Copyright Office and shall be 
accompanied by the filing fee set forth in Sec. 201.3(c) of this 
chapter. Notices shall be placed in the public records of the Licensing 
Division. The address of the Licensing Division is: Library of Congress, 
Copyright Office, Licensing Division, 101 Independence Avenue, SE, 
Washington, DC 20557-6400.
    (1) A Service that, prior to April 12, 2004, has already commenced 
making digital transmissions of sound recordings pursuant to section 
114(d)(2) of title 17 of the United States Code or making ephemeral 
phonorecords of sound recordings pursuant to section 112(e) of title 17 
of the United States Code, or both, and that has already filed an 
Initial Notice of Digital Transmission of Sound Recordings Under 
Statutory License, and that intends to continue to make digital 
transmissions or ephemeral phonorecords following July 1, 2004, shall 
file a Notice of Use of Sound Recordings under Statutory License with 
the Licensing Division of the Copyright Office no later than July 1, 
2004.
    (2) A Service that, on or after July 1, 2004, commences making 
digital transmissions and ephemeral phonorecords of sound recordings 
under statutory license shall file a Notice of Use of Sound Recordings 
under Statutory License with the Licensing Division of the Copyright 
Office prior to the making of the first ephemeral phonorecord of the 
sound recording and prior to the first digital transmission of the sound 
recording.
    (3) A Service that, on or after July 1, 2004, commences making only 
ephemeral phonorecords of sound recordings, shall file a Notice of Use 
of Sound Recordings under Statutory License with the Licensing Division 
of the Copyright Office prior to the making of the first ephemeral 
phonorecord of a sound recording under the statutory license.
    (f) Amendment. A Service shall file a new Notice of Use of Sound 
Recordings under Statutory License within 45 days after any of the 
information contained in the Notice on file has changed, and shall 
indicate in the space provided by the Copyright Office that the Notice 
is an amended filing. The Licensing Division shall retain copies of all 
prior Notices filed by the Service.

[69 FR 11527, Mar. 11, 2004, as amended at 69 FR 13127, Mar. 19, 2004]



Sec. 270.2  Reports of use of sound recordings under statutory license 
for preexisting subscription services.

    (a) General. This section prescribes rules under which preexisting 
subscription 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)(A) or section 
114(f)(1)(C)(i) of title 17 of the United States Code and adopted 
pursuant to 37 CFR 251.63(b), or by decision of a Copyright Arbitration 
Royalty Panel (CARP) under section 114(f)(1)(B) or section 
114(f)(1)(C)(ii), 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 
the report of use required under this section to be provided by a 
Service transmitting sound recordings and making ephemeral phonorecords 
therewith under statutory licenses.
    (3) A Service is a preexisting subscription service, as defined in 
17 U.S.C. 114(j)(11).
    (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)(A) or section 
114(f)(1)(C)(i) and adopted pursuant to 37 CFR 251.63(b), or by decision 
of a Copyright Arbitration Royalty Panel (CARP) under section 
114(f)(1)(B) or section 114(f)(1)(C)(ii), or by an order of the 
Librarian pursuant to 17 U.S.C. 802(f) or pursuant to a settlement

[[Page 696]]

agreement reached or statutory license adopted pursuant to section 
112(e). Reports of Use shall be served, by certified or registered mail, 
or by other means if agreed upon by the respective preexisting 
subscription service and Collective, on or before the forty-fifth day 
after the close of each month.
    (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 preexisting subscription 
service transmitting sound recordings under statutory license shall post 
and make available online its Reports of Use. Preexisting subscription 
services shall post their Reports of Use online on or before the forty-
fifth day after the close of each month, and make them available to all 
sound recording copyright owners for a period of 90 days. Preexisting 
subscription 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. Preexisting subscription services 
may predicate provision of a password upon:
    (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 preexisting subscription 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 preexisting subscription service's ``Intended 
Playlists'' for each channel and each day of the reported month. 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:
    (1) The name of the preexisting subscription service or entity;
    (2) The channel;
    (3) The sound recording title;
    (4) The featured recording artist, group, or orchestra;
    (5) The retail album title (or, in the case of compilation albums 
created for commercial purposes, the name of the retail album identified 
by the preexisting subscription service for purchase of the sound 
recording);
    (6) The marketing label of the commercially available album or other 
product on which the sound recording is found;
    (7) The catalog number;
    (8) The International Standard Recording Code (ISRC) embedded in the 
sound recording, where available and feasible;
    (9) Where available, the copyright owner information provided in the 
copyright notice on the retail album or other product (e.g., following 
the symbol (P), that is the letter P in a circle) or, in the case of 
compilation albums created for commercial purposes, in the copyright 
notice for the individual sound recording;
    (10) The date of transmission; and
    (11) The time of transmission.
    (f) Signature. Reports of Use shall include a signed statement by 
the appropriate officer or representative of the preexisting 
subscription service attesting, under penalty of perjury, that the 
information contained in the Report is believed to be accurate and is 
maintained by the preexisting subscription 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;

[[Page 697]]

    (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 
preexisting subscription 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 preexisting 
subscription 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.

[69 FR 11527, Mar. 11, 2004, as amended at 70 FR 24310, May 9, 2005]



Sec. 270.3  Reports of use of sound recordings under statutory license 
for nonsubscription transmission services, preexisting satellite digital

audio radio ervices, new subscription services and business establishment 
          services.

    (a) General. This section prescribes rules under which 
nonsubscription transmission services, preexisting satellite digital 
audio radio services, new subscription services, and business 
establishment services shall maintain reports of use of their sound 
recordings under section 112(e) or section 114(d)(2) of title 17 of the 
United States Code, or both.
    (b) Definitions. (1) Aggregate Tuning Hours are the total hours of 
programming that a nonsubscription transmission service, preexisting 
satellite digital audio radio service, new subscription service or 
business establishment service has transmitted during the reporting 
period identified in paragraph (c)(3) of this section to all listeners 
within the United States over the relevant channels or stations, and 
from any archived programs, that provide audio programming consisting, 
in whole or in part, of eligible nonsubscription service, preexisting 
satellite digital audio radio service, new subscription service or 
business establishment service transmissions, less the actual running 
time of any sound recordings for which the service has obtained direct 
licenses apart from 17 U.S.C. 114(d)(2) or which do not require a 
license under United States copyright law. For example, if a 
nonsubscription transmission service transmitted one hour of programming 
to 10 simultaneous listeners, the nonsubscription transmission service's 
Aggregate Tuning Hours would equal 10. If 3 minutes of that hour 
consisted of transmission of a directly licensed recording, the 
nonsubscription transmission service's Aggregate Tuning Hours would 
equal 9 hours and 30 minutes. If one listener listened to the 
transmission of a nonsubscription transmission service for 10 hours (and 
none of the recordings transmitted during that time was directly 
licensed), the nonsubscription transmission service's Aggregate Tuning 
Hours would equal 10.
    (2) An AM/FM Webcast is a transmission made by an entity that 
transmits an AM/FM broadcast signal over a digital communications 
network such as the Internet, regardless of whether the transmission is 
made by the broadcaster that originates the AM/FM signal or by a third 
party, provided that such transmission meets the applicable requirements 
of the statutory license set forth in 17 U.S.C. 114(d)(2).
    (3) A Collective is a collection and distribution organization that 
is designated under one or both of the statutory licenses, either by 
settlement agreement reached under section 112(e)(3), section 112(e)(6), 
section 114(f)(1)(A), section 114(f)(1)(C)(i), section 114(f)(2)(A), or 
section 114(f)(2)(C)(i) and adopted pursuant to

[[Page 698]]

Sec. 251.63(b) of this chapter, or by a decision of a Copyright 
Arbitration Royalty Panel under section 112(e)(4), section 112(e)(6), 
section 114(f)(1)(B), section (f)(1)(C)(ii), section 114(f)(2)(B), or 
section 114(f)(2)(C)(ii) or by order of the Librarian of Congress 
pursuant to 17 U.S.C. 802(f).
    (4) A new subscription service is defined in Sec. 270.1(b)(2)(iv).
    (5) A nonsubscription transmission service is defined in Sec. 
270.1(b)(2)(iii).
    (6) A preexisting satellite digital audio radio service is defined 
in Sec. 270.1(b)(2)(ii).
    (7) A business establishment service is defined in Sec. 
270.1(b)(2)(v).
    (8) A performance is each instance in which any portion of a sound 
recording is publicly performed to a Listener by means of a digital 
audio transmission or retransmission (e.g., the delivery of any portion 
of a single track from a compact disc to one Listener) but excluding the 
following:
    (i) A performance of a sound recording that does not require a 
license (e.g., the sound recording is not copyrighted);
    (ii) A performance of a sound recording for which the service has 
previously obtained a license from the Copyright Owner of such sound 
recording; and
    (iii) An incidental performance that both:
    (A) Makes no more than incidental use of sound recordings including, 
but not limited to, brief musical transitions in and out of commercials 
or program segments, brief performances during news, talk and sports 
programming, brief background performances during disk jockey 
announcements, brief performances during commercials of sixty seconds or 
less in duration, or brief performances during sporting or other public 
events and
    (B) Other than ambient music that is background at a public event, 
does not contain an entire sound recording and does not feature a 
particular sound recording of more than thirty seconds (as in the case 
of a sound recording used as a theme song).
    (9) Play frequency is the number of times a sound recording is 
publicly performed by a Service during the relevant period, without 
respect to the number of listeners receiving the sound recording. If a 
particular sound recording is transmitted to listeners on a particular 
channel or program only once during the two-week reporting period, then 
the play frequency is one. If the sound recording is transmitted 10 
times during the two-week reporting period, then the play frequency is 
10.
    (10) A Report of Use is a report required under this section to be 
provided by a nonsubscription transmission service and new subscription 
service that is transmitting sound recordings pursuant to the statutory 
license set forth in section 114(d)(2) of title 17 of the United States 
Code or making ephemeral phonorecords of sound recordings pursuant to 
the statutory license set forth in section 112(e) of title 17 of the 
United States Code, or both.
    (c) Report of Use--(1) Separate reports not required. A 
nonsubscription transmission service, preexisting satellite digital 
audio radio service or a new subscription service that transmits sound 
recordings pursuant to the statutory license set forth in section 
114(d)(2) of title 17 of the United States Code and makes ephemeral 
phonorecords of sound recordings pursuant to the statutory license set 
forth in section 112(e) of title 17 of the United States Code need not 
maintain a separate Report of Use for each statutory license during the 
relevant reporting periods.
    (2) Content. For a nonsubscription transmission service, preexisting 
satellite digital audio radio service, new subscription service or 
business establishment service that transmits sound recordings pursuant 
to the statutory license set forth in section 114(d)(2) of title 17 of 
the United States Code, or the statutory license set forth in section 
112(e) of title 17 of the United States Code, or both, each Report of 
Use shall contain the following information, in the following order, for 
each sound recording transmitted during the reporting periods identified 
in paragraph (c)(3) of this section:
    (i) The name of the nonsubscription transmission service, 
preexisting satellite digital audio radio service, new

[[Page 699]]

subscription service or business establishment service making the 
transmissions, including the name of the entity filing the Report of 
Use, if different;
    (ii) The category transmission code for the category of transmission 
operated by the nonsubscription transmission service, preexisting 
satellite digital audio radio service, new subscription service or 
business establishment service:
    (A) For eligible nonsubscription transmissions other than broadcast 
simulcasts and transmissions of non-music programming;
    (B) For eligible nonsubscription transmissions of broadcast 
simulcast programming not reasonably classified as news, talk, sports or 
business programming;
    (C) For eligible nonsubscription transmissions of non-music 
programming reasonably classified as news, talk, sports or business 
programming;
    (D) For eligible nonsubscription transmissions by a non-Corporation 
for Public Broadcasting noncommercial broadcaster making transmissions 
covered by Sec. Sec. 261.3(a)(2)(i) and (ii) of this chapter;
    (E) For eligible nonsubscription transmissions by a non-Corporation 
for Public Broadcasting noncommercial broadcaster making transmissions 
covered by Sec. 261.3(a)(2)(iii) of this chapter;
    (F) For eligible nonsubscription transmissions by a small webcaster 
operating under an agreement published in the Federal Register pursuant 
to the Small Webcaster Settlement Act;
    (G) For eligible nonsubscription transmissions by a noncommercial 
broadcaster operating under an agreement published in the Federal 
Register pursuant to the Small Webcaster Settlement Act;
    (H) For transmissions other than broadcast simulcasts and 
transmissions of non-music programming made by an eligible new 
subscription service;
    (I) For transmissions of broadcast simulcast programming not 
reasonably classified as news, talk, sports or business programming made 
by an eligible new subscription service;
    (J) For transmissions of non-music programming reasonably classified 
as news, talk, sports or business programming made by an eligible new 
subscription service; and
    (K) For eligible transmissions by a business establishment service 
making ephemeral recordings;
    (iii) The featured artist;
    (iv) The sound recording title;
    (v) The International Standard Recording Code (ISRC) or, 
alternatively to the ISRC, the
    (A) Album title; and
    (B) Marketing label;
    (vi) The actual total performances of the sound recording during the 
reporting period or, alternatively, the
    (A) Aggregate Tuning Hours;
    (B) Channel or program name; and
    (C) Play frequency.
    (3) Reporting period. A Report of Use shall be prepared for a two-
week period (two periods of 7 consecutive days) for each calendar 
quarter of the year. The two weeks need not be consecutive, but both 
weeks must be completely within the calendar quarter.
    (4) 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 the title of the person signing the 
Report, and by the date of the signature.
    (5) 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, without consent of the service 
providing the Report of Use.
    (6) Documentation. A Service shall, for a period of at least three 
years from the date of service or posting of a Report of Use, keep and 
retain a copy of the Report of Use.



Sec. 270.4  Reports of use of sound recordings under statutory license
prior to April 1, 2004.

    (a) General. This section prescribes the rules which govern reports 
of use of sound recordings by nonsubscription

[[Page 700]]

transmission services, preexisting satellite digital audio radio 
services, new subscription services, and business establishment services 
under section 112(e) or section 114(d)(2) of title 17 of the United 
States Code, or both, for the period from October 28, 1998, through 
March 31, 2004.
    (b) Reports of use. Reports of use filed by preexisting subscription 
services for transmissions made under 17 U.S.C. 114(f) pursuant to Sec. 
270.2 for use of sound recordings under section 112(e) or section 
114(d)(2) of title 17 of the United States Code, or both, for the period 
October 28, 1998, through March 31, 2004, shall serve as the reports of 
use for nonsubscription transmission services, preexisting satellite 
digital audio radio services, new subscription services, and business 
establishment services for their use of sound recordings under section 
112(e) or section 114(d)(2) of title 17 of the United States Code, or 
both, for the period from October 28, 1998, through March 31, 2004.
    (c) Royalty Logic Inc. If, in accordance with Sec. 261.4(c), any 
Copyright Owners or Performers have provided timely notice to 
SoundExchange of an election to receive royalties from Royalty Logic, 
Inc. as a Designated Agent for the period October 28, 1998, through 
December 31, 2002, or any portion thereof, SoundExchange shall provide 
to RLI copies of the Reports of Use described in paragraph (b) of this 
section for that period or the applicable portion thereof.

[69 FR 58262, Sept. 30, 2004]



Sec. 270.5  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, 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)(A) or section 
114(f)(1)(C)(i) and adopted pursuant to 37 CFR 251.63(b), or by decision 
of a Copyright Arbitration Royalty Panel (CARP) under section 
114(f)(1)(B) or section 114(f)(1)(C)(ii), 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 this part 
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

[[Page 701]]

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.

[69 FR 11527, Mar. 11, 2004, Redesignated at 69 FR 58262, Sept. 30, 
2004]

[[Page 703]]

        INDEX TO CHAPTER II_COPYRIGHT OFFICE, LIBRARY OF CONGRESS

  Editorial Note: This listing is provided for informational purposes 
only. It is compiled and kept current by the Department of Commerce. 
This index is updated as of July 1, 2009.

                                                                 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 the Copyright Office 
                                              201.1, 201.2, 201.5, 202.3
Administrative classification and application forms for 
registration.................................................202.3(b)(2)
Basic or general purpose.......................................201.1 (a)
Filing of materials in CARP proceedings......251.1, 251.54(c), 257.4(a), 
                                                                259.5(a)
Form and content of application for supplementary registration 
                                                             201.5(c)(2)
Group registration of related serials, letter affirming submission 
of copies to Library of Congress.............................202.3(c)(5)
Inspection and copying of records............................201.2(b)(5)
Legal processes....................................................205.2
Special limited addresses.......................................201.1(b)
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)
Anti-circumvention, (circumvention), Exemptions to prohibition 
against...........................................................201.40
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

[[Page 704]]

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
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 arbitrator lists..............................................251.3
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)
Circumvention, Exemptions to prohibition against..................201.40
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
Claims to satellite royalties........................................257
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 
(see Addresses for communication)..................................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

[[Page 705]]

Compulsory license for secondary transmissions by cable systems, 
Statements of Account covering....................................201.17
Compulsory license, Record keeping for use of sound recordings....201.35 
                                                               to 201.37
Compulsory license, Sound recordings....................201.35 to 201.37
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
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
Arbitrator lists...................................................251.3
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

[[Page 706]]

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)
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

[[Page 707]]

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)
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
Designs, Protection of original designs of vessel hulls...212.1 to 212.6

[[Page 708]]

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 deliveries, compulsory license for making and 
distributing phonorecords.........................................201.18
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
Digital transmissions and making of ephemeral reproductions of 
public performance of sound recordings...............................263
Disclosure (financial) statements of CARP \1\ arbitrators.........251.32
Displays [and] nondramatic performances of musical works for 
public broadcasting entities.......................................253.7
Disruption of postal or other transportation or communications 
services...........................................................201.8
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)
Exemption to prohibition on circumvention of copyright protection 
systems for access control technologies........................201.40(b)
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)
Vessel hull designs.........................................212.2, 212.5
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

[[Page 709]]

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)
Legal processes:
see Service of process
Complaints served under 411(a)....................................205.13
Complaints process on register or employee........................205.12
General provisions........................................205.1 to 205.5
Production of documents in proceedings in which the Office is not 
a party...........................................................205.22
Scope of testimony in proceedings in which the Office is not a 
party.............................................................205.23
Service of Sec. 411(a) notice.....................................205.1
Service of process......................................205.11 to 205.13
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
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)

[[Page 710]]

Mail and other communications with Copyright Office, Proper 
address for........................................................201.1
Mail, disruption of................................................201.8
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
Nonsubscription transmissions and the making of ephemeral 
recordings...........................................................262
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)
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

[[Page 711]]

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
Performance of sound recordings by certain eligible 
nonsubscription transmissions and digital transmissions under 
statutory license...............................................262, 263
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
Photographs, Group Registration of..............................202.3(b)
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
Proceedings for rate adjustment (CARP \1\)..............251.60 to 251.65
Prohibition on Circumvention of Copyright Protection Systems for 
Access Control Technologies....................................201.40(b)
Public access to CARP \1\ meetings......................251.11 to 251.16
Public access to CARP \1\ records.......................251.21 to 251.23

[[Page 712]]

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)
Photographs.....................................................202.3(b)
Serials......................................................202.3(b)(5)
Registration of original designs of vessel hulls..........212.1 to 212.6
Registration, one registration per work.....................202.3(b)(10)
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 713]]

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)
Service of process
See Legal processes......................................205.1 to 205.23
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
Sound recordings, Public performance of, Definition of a service 
                                                            201.35(b)(2)
Sound recordings, Recordkeeping for use of..............201.35 to 201.37
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

[[Page 714]]

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
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 license, Notice and recordkeeping for use of sound 
recordings..............................................201.35 to 201.37
Statutory licenses for secondary transmissions for private home 
viewing, Satellite carrier statements of account and royalty fees 
covering..........................................................201.11
Subscription services and the making of ephemeral recordings.........262
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
Vessel Hulls, Protection of original designs..............212.1 to 212.6
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

[[Page 715]]

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 717]]



        CHAPTER III--COPYRIGHT ROYALTY BOARD, LIBRARY OF CONGRESS




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

                    SUBCHAPTER A--GENERAL PROVISIONS
Part                                                                Page
301             Organization................................         719
302             Public access to records....................         719
       SUBCHAPTER B--COPYRIGHT ROYALTY JUDGES RULES AND PROCEDURES
350             General administrative provisions...........         720
351             Proceedings.................................         722
352             Determinations..............................         728
353             Rehearing...................................         729
354             Submissions to the Register of Copyrights...         729
               SUBCHAPTER C--SUBMISSION OF ROYALTY CLAIMS
360             Filing of claims to royalty fees collected 
                    under compulsory license................         732
   SUBCHAPTER D--NOTICE AND RECORDKEEPING REQUIREMENTS FOR STATUTORY 
                                LICENSES
370             Notice and recordkeeping requirements for 
                    statutory licenses......................         741
          SUBCHAPTER E--RATES AND TERMS FOR STATUTORY LICENSES
380             Rates and terms for certain eligible 
                    nonsubscription transmissions, new 
                    subscription services and the making of 
                    ephemeral reproductions.................         751
381             Use of certain copyrighted works in 
                    connection with noncommercial 
                    educational broadcasting................         757
382             Rates and terms for digital transmissions of 
                    sound recordings and the reproduction of 
                    ephemeral recordings by preexisting 
                    subscription services and preexisting 
                    satellite digital audio radio services..         765
383             Rates and terms for subscription 
                    transmissions and the reproduction of 
                    ephemeral recordings by new subscription 
                    services................................         774

[[Page 718]]

384             Rates and terms for the making of ephemeral 
                    recordings by business establishment 
                    services................................         777
385             Rates and terms for use of musical works 
                    under compulsory license for making and 
                    distributing of physical and digital 
                    phonorecords............................         782

[[Page 719]]



                     SUBCHAPTER A_GENERAL PROVISIONS





PART 301_ORGANIZATION--Table of Contents




Sec.
301.1 Copyright Royalty Board.
301.2 Official addresses.

    Authority: 17 U.S.C. 801.

    Source: 70 FR 30905, May 31, 2005, unless otherwise noted.



Sec. 301.1  Copyright Royalty Board.

    The Copyright Royalty Board is the institutional entity in the 
Library of Congress that will house the Copyright Royalty Judges, 
appointed pursuant to 17 U.S.C. 801(a), and their staff.



Sec. 301.2  Official addresses.

    All claims, pleadings, and general correspondence intended for the 
Copyright Royalty Board must be addressed as follows:
    (a) If sent by mail (including overnight delivery using United 
States Postal Service Express Mail), the envelope should be addressed 
to: Copyright Royalty Board, P.O. Box 70977, Southwest Station, 
Washington, DC 20024-0977.
    (b) If hand delivered by a private party, the envelope must be 
brought to the Copyright Office Public Information Office, Room LM-401 
in the James Madison Memorial Building, Monday through Friday, between 
8:30 a.m. and 5 p.m., and be addressed as follows: Copyright Royalty 
Board, Library of Congress, James Madison Memorial Building, 101 
Independence Avenue, SE., Washington, DC 20559-6000.
    (c) If hand delivered by a commercial courier (excluding Federal 
Express, United Parcel Service and similar courier services), the 
envelope must be delivered to the Congressional Courier Acceptance Site 
(CCAS) located at Second and D Street, NE., Washington, DC, Monday 
through Friday, between 8:30 a.m. and 4 p.m., and be addressed as 
follows: Copyright Royalty Board, Library of Congress, James Madison 
Memorial Building, 101 Independence Avenue, SE., Washington, DC.
    (d) Correspondence and filings for the Copyright Royalty Board may 
not be delivered by means of overnight delivery services such as Federal 
Express, United Parcel Service, etc., due to delays in processing 
receipt of such deliveries.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53326, Sept. 11, 2006]



PART 302_PUBLIC ACCESS TO RECORDS--Table of Contents




Sec.
302.1 Public records and access.
302.2 Fees.

    Authority: 5 U.S.C. 522.

    Source: 71 FR 53326, Sept. 11, 2006, unless otherwise noted.



Sec. 302.1  Public records and access.

    (a) Inspection. Records of proceedings before the Board will be 
available for public inspection at the Copyright Royalty Board offices.
    (b) Requests. Requests for access to records must be directed to the 
Copyright Royalty Board. No requests for information or access to 
records shall be directed to or accepted by a Copyright Royalty Judge. 
Access to records is only available by appointment.



Sec. 302.2  Fees.

    For services rendered in connection with document location, 
reproduction, etc., fees shall apply in accordance with Sec. 201.3 of 
this title.

[[Page 720]]



       SUBCHAPTER B_COPYRIGHT ROYALTY JUDGES RULES AND PROCEDURES





PART 350_GENERAL ADMINISTRATIVE PROVISIONS--Table of Contents




Sec.
350.1 Scope.
350.2 Representation.
350.3 Caption required.
350.4 Filing and service.
350.5 Time.
350.6 Construction and waiver.

    Authority: 17 U.S.C. 803.

    Source: 70 FR 30905, May 31, 2005, unless otherwise noted.



Sec. 350.1  Scope.

    This subchapter governs procedures generally applicable to 
proceedings before the Copyright Royalty Judges in making determinations 
and adjustments pursuant to the Copyright Act, 17 U.S.C. 801(b).

[70 FR 30905, May 31, 2005, as amended at 71 FR 53327, Sept. 11, 2006]



Sec. 350.2  Representation.

    Individual parties in proceedings before the Judges may represent 
themselves or be represented by an attorney. All other parties must be 
represented by an attorney. Cf. Rule 49(c)(11) of the Rules of the 
District of Columbia Court of Appeals. The appearance of an attorney on 
behalf of any party constitutes a representation that the attorney is a 
member of the bar, in one or more states, in good standing.

[71 FR 53327, Sept. 11, 2006]



Sec. 350.3  Caption required.

    All pleadings and documents filed in a proceeding before the 
Copyright Royalty Judges must be identified in a caption that identifies 
the proceeding by caption and docket number.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53327, Sept. 11, 2006]



Sec. 350.4  Filing and service.

    (a) Filing of pleadings. For all filings, the submitting party shall 
deliver an original, five paper copies, and one electronic copy in 
Portable Document Format (PDF) on compact disk (an optical data storage 
medium such as a CD-ROM, CD-R or CD-RW) or floppy diskette to the 
Copyright Royalty Board in accordance with the provisions set forth in 
Sec. 301.2 of this chapter. In no case shall a party tender any 
document by facsimile transmission, except with the prior express 
authorization of the Copyright Royalty Judges.
    (b) Exhibits. All exhibits must be included with the pleadings they 
support. In the case of exhibits whose bulk or whose cost of 
reproduction would unnecessarily encumber the record or burden the 
party, the Copyright Royalty Judges may reduce the number of required 
copies.
    (c) English language translations. Each submission that 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 shall be accompanied 
by an affidavit or a declaration made pursuant to 28 U.S.C. 1746 
supporting the testimony.
    (e) Subscription--(1) Parties represented by counsel. 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 
full name, mailing address, e-mail address (if any), telephone number, 
facsimile number (if any), and a state bar identification number. 
Submissions signed by an 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 the person's knowledge, information, 
and belief, formed after an inquiry reasonable under the circumstances:
    (i) It is not being presented for any improper purpose, such as to 
harass or to cause unnecessary delay or needless increase in the cost of 
litigation;

[[Page 721]]

    (ii) The claims, defenses, 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.
    (2) Parties representing themselves. The original of all documents 
filed by a party not represented by counsel shall be signed by that 
party and list that party's full name, mailing address, e-mail address 
(if any), telephone number, and facsimile number (if any). The signature 
will constitute the party's 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.
    (f) Oppositions and replies. Oppositions to motions shall be filed 
within five business days of the filing of the motion, and replies to 
oppositions shall be filed within four business days of the filing of 
the opposition.
    (g) Service list. The Copyright Royalty Judges will compile and 
distribute, to those parties who have filed a petition to participate 
that has been accepted by the Copyright Royalty Judges, the official 
service list of 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 Copyright 
Royalty Judges and all parties of any change in the name or address to 
which service shall be made.
    (h) Service method. During the course of a proceeding, each party 
must serve all motions, 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. If a party is willing to 
accept service of a document electronically (i.e., by e-mail), followed 
by a hard copy, first-class mail of the hard copy may be used in lieu of 
express mail or other expedited delivery.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53327, Sept. 11, 2006; 
71 FR 59010, Oct. 6, 2006]



Sec. 350.5  Time.

    (a) Computation. To compute the due date for filing and serving any 
document or performing any other act directed by an order of the 
Copyright Royalty Judges or the Copyright Royalty Judges' rules:
    (1) Exclude the day of the act, event, or default that begins the 
period.
    (2) Exclude intermediate Saturdays, Sundays, and legal holidays when 
the period is less than 11 days, unless stated in calendar days.
    (3) Include the last day of the period unless it is a Saturday, 
Sunday, legal holiday, or a day on which the weather or other conditions 
render the Copyright Royalty Board's office inaccessible.
    (4) As used in this rule, ``legal holiday'' means the date 
designated for the observance of New Year's Day, Martin Luther King, 
Jr.'s Birthday, Presidents' Day, Memorial Day, Independence Day, Labor 
Day, Columbus Day, Veterans' Day, Thanksgiving Day, Christmas Day, and 
any other day declared a holiday by the President or the Congress.
    (b) Extensions. A party seeking an extension must do so by written 
motion. Prior to filing such a motion, a party must attempt to obtain 
consent from the other parties to the proceeding. An extension motion 
must state:
    (1) The date on which the action or submission is due;
    (2) The length of the extension sought;
    (3) The date on which the action or submission would be due if the 
extension were allowed;
    (4) The reason or reasons why there is good cause for the delay;
    (5) The justification for the amount of additional time being 
sought; and
    (6) The attempts that have been made to obtain consent from the 
other

[[Page 722]]

parties to the proceeding and the position of the other parties on the 
motion.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53327, Sept. 11, 2006]



Sec. 350.6  Construction and waiver.

    The regulations of the Copyright Royalty Judges are intended to 
provide efficient and just administrative proceedings and will be 
construed to advance these purposes. For purposes of an individual 
proceeding, the provisions of this subchapter may be suspended or 
waived, in whole or in part, upon a showing of good cause, to the extent 
allowable by law.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53327, Sept. 11, 2006]



PART 351_PROCEEDINGS--Table of Contents




Sec.
351.1 Initiation of proceedings.
351.2 Voluntary negotiation period; settlement.
351.3 Controversy and further proceedings.
351.4 Written direct statements.
351.5 Discovery in royalty rate proceedings.
351.6 Discovery in distribution proceedings.
351.7 Settlement conference.
351.8 Pre-hearing conference.
351.9 Conduct of hearings.
351.10 Evidence.
351.11 Rebuttal proceedings.
351.12 Closing the record.
351.13 Transcript and record.
351.14 Proposed findings of fact and conclusions of law.

    Authority: 17 U.S.C. 803, 805.

    Source: 70 FR 30905, May 31, 2005, unless otherwise noted.



Sec. 351.1  Initiation of proceedings.

    (a) Notice of commencement; solicitation of petitions to 
participate. All proceedings before the Copyright Royalty Judges to make 
determinations and adjustments of reasonable terms and rates of royalty 
payments, and to authorize the distribution of royalty fees, shall be 
initiated by publication in the Federal Register of a notice of the 
initiation of proceedings calling for the filing of petitions to 
participate in the proceeding.
    (b) Petitions to participate--(1) Royalty rate proceedings--(i) 
Single petition. Each petition to participate filed in a royalty rate 
proceeding must include:
    (A) The petitioner's full name, address, telephone number, facsimile 
number (if any), and e-mail address (if any); and
    (B) A description of the petitioner's significant interest in the 
subject matter of the proceeding.
    (ii) Joint petition. Petitioners with similar interests may, in lieu 
of filing individual petitions, file a single petition. Each joint 
petition must include:
    (A) The full name, address, telephone number, facsimile number (if 
any), and e-mail address (if any) of the person filing the petition;
    (B) A list identifying all participants to the joint petition;
    (C) A description of the participants' significant interest in the 
subject matter of the proceeding; and
    (D) If the joint petition is filed by counsel or a representative of 
one or more of the participants that are named in the joint petition, a 
statement from such counsel or representative certifying that, as of the 
date of submission of the joint petition, such counsel or representative 
has the authority and consent of the participants to represent them in 
the royalty rate proceeding.
    (2) Distribution proceedings--(i) Single petition. Each petition to 
participate filed in a royalty distribution proceeding must include:
    (A) The petitioner's full name, address, telephone number, facsimile 
number (if any), and e-mail address (if any);
    (B) In a cable or satellite royalty distribution proceeding, 
identification of whether the petition covers a Phase I proceeding (the 
initial part of a distribution proceeding where royalties are divided 
among the categories or groups of copyright owners), a Phase II 
proceeding (where the money allotted to each category is subdivided 
among the various copyright owners within that category), or both; and
    (C) A description of the petitioner's significant interest in the 
subject matter of the proceeding.
    (ii) Joint petition. Petitioners with similar interests may, in lieu 
of filing individual petitions, file a single petition. Each joint 
petition must include:
    (A) The full name, address, telephone number, facsimile number (if 
any), and

[[Page 723]]

e-mail address (if any) of the person filing the petition;
    (B) A list identifying all participants to the joint petition;
    (C) In a cable or satellite royalty distribution proceeding, 
identification of whether the petition covers a Phase I proceeding (the 
initial part of a distribution proceeding where royalties are divided 
among the categories or groups of copyright owners), a Phase II 
proceeding (where the money allotted to each category is subdivided 
among the various copyright owners within that category), or both;
    (D) A description of the participants' significant interest in the 
subject matter of the proceeding; and
    (E) If the joint petition is filed by counsel or a representative of 
one or more of the participants that are named in the joint petition, a 
statement from such counsel or representative certifying that, as of the 
date of submission of the joint petition, such counsel or representative 
has the authority and consent of the participants to represent them in 
the royalty distribution proceeding.
    (3) Filing deadline. A petition to participate shall be filed by no 
later than 30 days after the publication of the notice of commencement 
of a proceeding, subject to the qualified exception set forth in 
paragraph (d) of this section.
    (4) Filing fee. A petition to participate must be accompanied with a 
filing fee of $150 or the petition will be rejected. Payment shall be 
made to the Copyright Royalty Board. If a check is subsequently 
dishonored, the petition will be rejected. If the petitioner believes 
that the contested amount of that petitioner's claim will be $10,000 or 
less, petitioner shall so state in the petition to participate and 
should not include payment of the $150 filing fee. If it becomes 
apparent during the course of the proceedings that the contested amount 
of the claim is more than $10,000, the Copyright Royalty Judges will 
require payment of the filing fee at such time.
    (c) Acceptance and rejection of petitions to participate. A petition 
to participate will be deemed to have been allowed by the Copyright 
Royalty Judges unless the Copyright Royalty Judges determine the 
petitioner lacks a significant interest in the proceeding or the 
petition is otherwise invalid.
    (d) Late petitions to participate. The Copyright Royalty Judges may, 
for substantial good cause shown, and if there is no prejudice to the 
participants that have already filed petitions, accept late petitions to 
participate at any time up to the date that is 90 days before the date 
on which participants in the proceeding are to file their written direct 
statements. However, petitioners whose petitions are filed more than 30 
days after publication of notice of commencement of a proceeding are not 
eligible to object to a settlement reached during the voluntary 
negotiation period.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53327, Sept. 11, 2006]



Sec. 351.2  Voluntary negotiation period; settlement.

    (a) Commencement; duration. After the date for filing petitions to 
participate in a proceeding, the Copyright Royalty Judges will announce 
the beginning of a voluntary negotiation period and will make a list of 
the participants available to the participants in the particular 
proceeding. The voluntary negotiation period shall last three months, 
after which the parties shall notify the Copyright Royalty Judges in 
writing as to whether a settlement has been reached.
    (b) Settlement--(1) Distribution proceedings. Pursuant to 17 U.S.C. 
801(b)(7)(A), to the extent that a settlement has been reached in a 
distribution proceeding, that agreement will provide the basis for the 
distribution.
    (2) Royalty rate proceedings. If, in a proceeding to determine 
statutory terms and rates, the participating parties report that a 
settlement has been reached by some or all of the parties, the Copyright 
Royalty Judges, pursuant to 17 U.S.C. 801(b)(7)(A), will publish the 
settlement in the Federal Register for notice and comment from those 
bound by the terms, rates, or other determination set by the agreement. 
If an objection to the adoption of an agreement is filed, the Copyright 
Royalty Judges may decline to adopt the agreement as a basis for 
statutory terms and rates for participants that are not parties to the 
agreement if the

[[Page 724]]

Copyright Royalty Judges conclude that the agreement does not provide a 
reasonable basis for setting statutory terms or rates.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53328, Sept. 11, 2006]



Sec. 351.3  Controversy and further proceedings.

    (a) Declaration of controversy. If a settlement has not been reached 
within the voluntary negotiation period, the Copyright Royalty Judges 
will issue an order declaring that further proceedings are necessary. 
The procedures set forth at Sec. Sec. 351.5, et seq., for formal 
hearings will apply, unless the abbreviated procedures set forth in 
paragraphs (b) and (c) of this section are invoked by the Copyright 
Royalty Judges.
    (b) Small claims in distribution proceedings--(1) General. If, in a 
distribution proceeding, the contested amount of a claim is $10,000 or 
less, the Copyright Royalty Judges shall decide the controversy on the 
basis of the filing of the written direct statement by each participant 
(or participant group filing a joint petition), the response by any 
opposing participant, and one optional reply by a participant who has 
filed a written direct statement.
    (2) Bad faith inflation of claim. If the Copyright Royalty Judges 
determine that a participant asserts in bad faith an amount in 
controversy in excess of $10,000 for the purpose of avoiding a 
determination under the procedure set forth in paragraph (b)(1) of this 
section, the Copyright Royalty Judges shall impose a fine on that 
participant in an amount not to exceed the difference between the actual 
amount distributed and the amount asserted by the participant.
    (c) Paper proceedings--(1) Standard. The procedure under this 
paragraph (c) will be applied in cases in which there is no genuine 
issue of material fact, there is no need for evidentiary hearings, and 
all participants in the proceeding agree in writing to the procedure. In 
the absence of an agreement in writing among all participants, this 
procedure may be applied by the Copyright Royalty Judges either on the 
motion of a party or by the Copyright Royalty Judges sua sponte.
    (2) Procedure. Paper proceedings will be decided on the basis of the 
filing of the written direct statement by the participant (or 
participant group filing a joint petition), the response by any opposing 
participant, and one optional reply by a participant who has filed a 
written direct statement.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53328, Sept. 11, 2006]



Sec. 351.4  Written direct statements.

    (a) Required filing; deadline. All parties who have filed a petition 
to participate in the hearing must file a written direct statement. The 
deadline for the filing of the written direct statement will be 
specified by the Copyright Royalty Judges, not earlier than 4 months, 
nor later than 5 months, after the end of the voluntary negotiation 
period set forth in Sec. 351.2.
    (b) Required content--(1) Testimony. The written direct statement 
shall include all testimony, including each witness's background and 
qualifications, along with all the exhibits.
    (2) Designated past records and testimony. Each participating party 
may designate a portion of past records, including records of the 
Copyright Royalty Tribunal or Copyright Arbitration Royalty Panels, that 
it wants included in its direct statement. If a party intends to rely on 
any part of the testimony of a witness in a prior proceeding, the 
complete testimony of that witness (i.e., direct, cross and redirect 
examination) must be designated. The party submitting such past records 
and/or testimony shall include a copy with the written direct statement.
    (3) Claim. In the case of a royalty distribution proceeding, each 
party must state in the written direct statement its percentage or 
dollar claim to the fund. In the case of a rate (or rates) 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, and including, the filing of the proposed findings of 
fact and conclusions of law.
    (c) Amended written direct statements. A participant in a proceeding 
may amend a written direct statement based on new information received 
during the discovery process, within 15

[[Page 725]]

days after the end of the discovery period. An amended written direct 
statement must explain how it differs from the written direct statement 
it will amend and must demonstrate that the amendment is based on new 
information received during the discovery process. The participant 
amending its written direct statement may file either the amended 
portions of the written direct statement or submit complete new copies 
at its option.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53328, Sept. 11, 2006; 
71 FR 59010, Oct. 6, 2006]



Sec. 351.5  Discovery in royalty rate proceedings.

    (a) Schedule. Following the submission to the Copyright Royalty 
Judges of written direct and rebuttal statements by the participants in 
a royalty rate proceeding, and after conferring with the participants, 
the Copyright Royalty Judges will issue a discovery schedule.
    (b) Document production, depositions and interrogatories--(1) 
Document production. A participant in a royalty rate proceeding may 
request of an opposing participant nonprivileged documents that are 
directly related to the written direct statement or written rebuttal 
statement of that participant. Broad, nonspecific discovery requests are 
not acceptable. All documents offered in response to a discovery request 
must be furnished in as organized and useable form as possible. Any 
objection to a request for production shall be resolved by a motion or 
request to compel production. The motion must include a statement that 
the parties had conferred and were unable to resolve the matter.
    (2) Depositions and interrogatories. In a proceeding to determine 
royalty rates, the participants entitled to receive royalties shall 
collectively be permitted to take no more than 10 depositions and secure 
responses to no more than 25 interrogatories. Similarly, the 
participants obligated to pay royalties shall collectively be permitted 
to take no more than 10 depositions and secure responses to no more than 
25 interrogatories. Parties may obtain such discovery regarding any 
matter, not privileged, that is relevant to the claim or defense of any 
party. Relevant information need not be admissible at hearing if the 
discovery by means of depositions and interrogatories appears reasonably 
calculated to lead to the discovery of admissible evidence.
    (c) Motions to request other relevant information and materials. (1) 
In any royalty rate proceeding scheduled to commence prior to January 1, 
2011, a participant may, by means of written or oral motion on the 
record, request of an opposing participant or witness other relevant 
information and materials. The Copyright Royalty Judges will allow such 
request only if they determine that, absent the discovery sought, their 
ability to achieve a just resolution of the proceeding would be 
substantially impaired.
    (2) In determining whether such discovery motions will be granted, 
the Copyright Royalty Judges may consider--
    (i) Whether the burden or expense of producing the requested 
information or materials outweighs the likely benefit, taking into 
account the needs and resources of the participants, the importance of 
the issues at stake, and the probative value of the requested 
information or materials in resolving such issues;
    (ii) Whether the requested information or materials would be 
unreasonably cumulative or duplicative, or are obtainable from another 
source that is more convenient, less burdensome, or less expensive; and
    (iii) Whether the participant seeking the discovery had an ample 
opportunity by discovery in the proceeding or by other means to obtain 
the information sought.

[71 FR 53328, Sept. 11, 2006]



Sec. 351.6  Discovery in distribution proceedings.

    In distribution proceedings, the Copyright Royalty Judges shall 
designate a 45-day period beginning with the filing of written direct 
statements within which parties may request of an opposing party 
nonprivileged underlying documents related to the written exhibits and 
testimony. However, all

[[Page 726]]

parties shall be given a reasonable opportunity to conduct discovery on 
amended statements.

[71 FR 53328, Sept. 11, 2006]



Sec. 351.7  Settlement conference.

    A post-discovery settlement conference will be held among the 
participants, within 21 days after the close of discovery, outside of 
the presence of the Copyright Royalty Judges. Immediately after this 
conference the participants shall file with the Copyright Royalty Judges 
a written Joint Settlement Conference Report indicating the extent to 
which the participants have reached a settlement.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53329, Sept. 11, 2006]



Sec. 351.8  Pre-hearing conference.

    In the absence of a complete settlement in a proceeding not subject 
to the abbreviated procedures set forth in Sec. Sec. 351.3(b) and (c), 
a hearing will be scheduled expeditiously so as to allow the Copyright 
Royalty Judges to conduct hearings and issue its final determination in 
the proceeding within the time allowed by the Copyright Act. Prior to 
the hearing, the Copyright Royalty Judges may conduct a prehearing 
conference to assist in setting the order of presentation of evidence 
and the appearance of witnesses at the hearing and to provide for the 
submission of pre-hearing written legal arguments.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53329, Sept. 11, 2006]



Sec. 351.9  Conduct of hearings.

    (a) By panels. Subject to paragraph (b) of this section, hearings 
will be conducted by Copyright Royalty Judges sitting en banc.
    (b) Role of Chief Judge. The Chief Copyright Royalty Judge, or an 
individual Copyright Royalty Judge designated by the Chief Judge, may 
preside over such collateral and administrative proceedings, and over 
such proceedings under section 803(b)(1) through (5) of the Copyright 
Act, as the Chief Judge considers appropriate. The Chief Judge, or an 
individual Copyright Royalty Judge designated by the Chief Judge, shall 
have the responsibility for:
    (1) Administering oaths and affirmations to all witnesses;
    (2) Announcing the Copyright Royalty Judges' ruling on objections 
and motions and all rulings with respect to introducing or excluding 
documentary or other evidence. In all cases, with the exception of a 
hearing pursuant to 17 U.S.C. 803(a)(2), it takes a majority vote to 
grant a motion or sustain an objection. A tie vote will result in the 
denial of a motion or the overruling of the objection;
    (c) Opening statements. In each distribution or rate proceeding, 
each party may present its opening statement summarizing its written 
direct statement.
    (d) Notice of witnesses and prior exchange of exhibits. Each party 
must provide all other parties notice of the witnesses who are to be 
called to testify at least one week in advance of such testimony, unless 
modified by applicable trial order. Parties must exchange exhibits at 
least one day in advance of being offered into evidence at a hearing, 
unless modified by applicable trial order.
    (e) Subpoenas. The parties may move the Copyright Royalty Judges to 
issue a subpoena. The object of the subpoena shall be served with the 
motion and may appear in response to the motion.
    (f) Witnesses sequestered. Subject to applicable trial order, 
witnesses, other than party representatives, may not be permitted to 
listen to any testimony and may not be allowed to review a transcript of 
any prior testimony.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53329, Sept. 11, 2006]



Sec. 351.10  Evidence.

    (a) Admissibility. All evidence that is relevant and not unduly 
repetitious or privileged, shall be admissible. Hearsay may be admitted 
to the extent deemed appropriate by the Copyright Royalty Judges. 
Written testimony and exhibits must be authenticated or identified in 
order to be admissible as evidence. The requirement of authentication or 
identification as a condition precedent to admissibility is satisfied by 
evidence sufficient to support a finding that the

[[Page 727]]

matter in question is what its proponent claims. Extrinsic evidence of 
authenticity as a condition precedent to admissibility is not required 
with respect to materials that can be self-authenticated under Rule 902 
of the Federal Rules of Evidence such as certain public records. No 
evidence, including exhibits, may be submitted without a sponsoring 
witness, except for good cause shown.
    (b) Examination of witnesses. All witnesses shall be required to 
take an oath or affirmation before testifying. Parties are entitled to 
conduct direct examination (consisting of the testimony of the witness 
in the written statements and an oral summary of that testimony); cross-
examination (limited to matters raised on direct examination); and 
redirect examination (limited to matters raised on cross-examination). 
The Copyright Royalty Judges may limit the number of witnesses or limit 
questioning to avoid cumulative testimony.
    (c) Exhibits--(1) Submission. Writings, recordings and photographs 
shall be presented as exhibits and marked by the presenting party. 
``Writings'' and ``recordings'' consist of letters, words, or numbers, 
or their equivalent, set down by handwriting, typewriting, printing, 
photostating, photographing, magnetic impulse, mechanical or electronic 
recording, or other form of data compilation. ``Photographs'' include 
still photographs, video tapes, and motion pictures.
    (2) Separation of irrelevant portions. Relevant and material matter 
embraced in an exhibit 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.
    (3) Summary exhibits. The contents of voluminous writings, 
recordings, or photographs which cannot conveniently be examined in the 
hearing may be presented in the form of a chart, summary, or 
calculation. The originals, or duplicates, shall be made available for 
examination or copying, or both, by other parties at a reasonable time 
and place. The Copyright Royalty Judges may order that they be produced 
in the hearing.
    (d) Copies. Anyone presenting exhibits as evidence must present 
copies to all other participants in the proceedings, or their attorneys, 
and afford them an opportunity to examine the exhibits in their entirety 
and offer into evidence any other portion that may be considered 
material and relevant.
    (e) Introduction of studies and analyses. If studies or analyses are 
offered in evidence, they shall state clearly the study plan, the 
principles and methods underlying the study, all relevant assumptions, 
all variables considered in the analysis, the techniques of data 
collection, the techniques of estimation and testing, and the results of 
the study's actual estimates and tests presented in a format commonly 
accepted within the relevant field of expertise implicated by the study. 
The facts and judgments upon which conclusions are based shall be stated 
clearly, together with any alternative courses of action considered. 
Summarized descriptions of input data, tabulations of input data and the 
input data themselves shall be retained.
    (f) Objections. Parties are entitled to raise objections to evidence 
on any proper ground during the course of the hearing and to raise an 
objection that an opposing party has not furnished unprivileged 
underlying documents.
    (g) New exhibits for use in cross-examination. Exhibits that have 
not been identified and exchanged in advance may be shown to a witness 
on cross-examination. However, copies of such exhibits must be 
distributed to the Copyright Royalty Judges and to the other 
participants before being shown to the witness at the time of cross-
examination, unless the Copyright Royalty Judges direct otherwise. Such 
exhibits can be used solely to impeach the witness's direct testimony.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53329, Sept. 11, 2006; 
71 FR 59010, Oct. 6, 2006]



Sec. 351.11  Rebuttal proceedings.

    Written rebuttal statements shall be filed at a time designated by 
the Copyright Royalty Judges upon conclusion of the hearing of the 
direct case, in the same form and manner as the written

[[Page 728]]

direct statement, except that the claim or the requested rate shall not 
have to be included if it has not changed from the written direct 
statement. Further proceedings at the rebuttal stage shall follow the 
schedule ordered by the Copyright Royalty Judges.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53329, Sept. 11, 2006]



Sec. 351.12  Closing the record.

    To close the record of a proceeding, the presiding Judge shall make 
an announcement that the taking of evidence has concluded.

[71 FR 53330, Sept. 11, 2006]



Sec. 351.13  Transcript and record.

    (a) An official reporter for the recording and transcribing of 
hearings shall be designated by the Copyright Royalty Judges. Anyone 
wishing to inspect the transcript of a hearing may do so at the offices 
of the Copyright Royalty Board.
    (b) The transcript of testimony and written statements, except those 
portions to which an objection has been sustained, and all exhibits, 
documents and other items admitted in the course of a proceeding shall 
constitute the official written record. The written record, along with 
the Copyright Royalty Judges' final determination, shall be available at 
the Copyright Royalty Board's offices for public inspection and copying.

[71 FR 53330, Sept. 11, 2006]



Sec. 351.14  Proposed findings of fact and conclusions of law.

    (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 
Copyright Royalty Judges to do so. Such filings, and any replies to 
them, shall take place after the record has been closed.
    (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. A party waives any objection to a 
provision in the determination unless the provision conflicts with a 
proposed finding of fact or conclusion of law filed by the party.
    (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 conclusions shall be 
stated and numbered by paragraph separately. Failure to comply with this 
paragraph (c) may result in the offending paragraph being stricken.

[71 FR 53330, Sept. 11, 2006]



PART 352_DETERMINATIONS--Table of Contents




Sec.
352.1 How made.
352.2 Timing.
352.3 Final determinations.

    Authority: 17 U.S.C. 803.

    Source: 70 FR 30905, May 31, 2005, unless otherwise noted.



Sec. 352.1  How made.

    Except for decisions authorized by law to be made by a single 
Copyright Royalty Judge, determinations in a proceeding will be made by 
a majority of the Copyright Royalty Judges. The opinion or opinions of 
the majority and any dissenting opinion will be included in the 
determination. Each determination will be transmitted to the Register of 
Copyrights to enable review for consistency with the Copyright Act on 
the day it is issued.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53330, Sept. 11, 2006]



Sec. 352.2  Timing.

    The Copyright Royalty Judges will issue their determination within 
11 months of the date of the post-discovery settlement conference or 15 
days before the expiration of the existing rates or terms in a 
proceeding to determine successors to rates or terms that will expire on 
a specific date, whichever date first occurs. The date the determination 
is ``issued'' refers to the date of the order.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53330, Sept. 11, 2006]

[[Page 729]]



Sec. 352.3  Final determinations.

    Unless a motion for a rehearing is timely filed within 15 days, the 
determination by the Copyright Royalty Judges pursuant to 17 U.S.C. 
803(c) in a proceeding is final when it is issued.

[71 FR 53330, Sept. 11, 2006]



PART 353_REHEARING--Table of Contents




Sec.
353.1 When granted.
353.2 Form and content of rehearing motions.
353.3 Procedure on rehearing.
353.4 Filing deadline.
353.5 Participation not required.

    Authority: 17 U.S.C. 803.

    Source: 70 FR 30905, May 31, 2005, unless otherwise noted.



Sec. 353.1  When granted.

    A motion for rehearing may be filed by any participant in the 
relevant proceeding. The Copyright Royalty Judges may grant rehearing 
upon a showing that any aspect of the determination may be erroneous.

[71 FR 53330, Sept. 11, 2006]



Sec. 353.2  Form and content of rehearing motions.

    A motion for rehearing shall not exceed 10 pages in length and must 
set forth, in the beginning of its text, a brief summary statement of 
the aspects of the determination believed by the moving participant to 
be without evidentiary support in the record or contrary to legal 
requirements.



Sec. 353.3  Procedure on rehearing.

    Upon receipt of a motion for rehearing, the Copyright Royalty Judges 
will issue an appropriate order. No participant shall file a response to 
a rehearing motion, unless such response is allowed by order of the 
Copyright Royalty Judges.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53330, Sept. 11, 2006]



Sec. 353.4  Filing deadline.

    A motion for rehearing must be filed within 15 days after the date 
on which the Copyright Royalty Judges issue an initial determination.

[71 FR 53330, Sept. 11, 2006]



Sec. 353.5  Participation not required.

    In any case in which a response to a rehearing motion is allowed, or 
rehearing is granted, an opposing party shall not be required to 
participate in the rehearing. The Copyright Royalty Judges will not draw 
any negative inference from a lack of participation in a rehearing. 
Nonparticipation in rehearing proceedings may limit the scope of their 
participation in judicial review proceedings as set forth in 17 U.S.C. 
803(d)(1).

[70 FR 30905, May 31, 2005, as amended at 71 FR 53330, Sept. 11, 2006]



PART 354_SUBMISSIONS TO THE REGISTER OF COPYRIGHTS--Table of Contents




Sec.
354.1 Material questions of copyright law.
354.2 Novel questions.
354.3 Register of Copyrights' authority to redesignate referrals.

    Authority: 17 U.S.C. 802.

    Source: 70 FR 30905, May 31, 2005, unless otherwise noted.



Sec. 354.1  Material questions of copyright law.

    (a) Discretionary referrals. The Copyright Royalty Judges may seek 
guidance from the Register of Copyrights with respect to a material 
question of substantive law, concerning an interpretation or 
construction of those provisions of the Copyright Act, that arises in 
the course of their proceedings.
    (b) How presented. A question of substantive law may be referred to 
the Register of Copyrights at the request of one or more of the 
Copyright Royalty Judges. A question of substantive law may also be 
referred to the Register of Copyrights as a request submitted by motion 
of a participant, provided that one or more of the Copyright Royalty 
Judges agrees with the participant's request.
    (1) Referral by Judges. One or more of the Copyright Royalty Judges 
may refer what he or she believes to be a material question of 
substantive law to

[[Page 730]]

the Register of Copyrights at any time during a proceeding by issuing a 
written referral that is made part of the record of that proceeding. The 
referral will state the issue(s) to be referred and the schedule for the 
filing of briefs by the parties of the issue(s). After the briefs and 
other relevant materials are received, they will be transmitted to the 
Register of Copyrights.
    (2) Motion by participant. Any participant may submit a motion to 
the Copyright Royalty Judges (but not to the Register of Copyrights) 
requesting their referral to the Register of Copyrights a question that 
the participant believes would be suitable for referral under paragraph 
(a) of this section.
    (i) Content. The motion should be captioned ``Motion of 
[Participant(s)] Requesting Referral of Material Question of Substantive 
Law.'' The motion should set forth, at the outset, the precise legal 
question for which the moving party is seeking interlocutory referral to 
the Register of Copyrights. The motion should then proceed to explain, 
with brevity, why the issue meets the criteria for potential referral 
under paragraph (a) of this section and why the interests of fair and 
efficient adjudication would be best served by obtaining interlocutory 
guidance from the Register of Copyrights. The motion should not include 
argument on the merits of the issue, but may include a suggested 
schedule of briefing that would make reasonable provision for comments 
and legal arguments, in such a way as to avoid delay and duplication.
    (ii) Time of motion. A motion for referral of a material question of 
substantive law to the Register of Copyrights should be filed as soon as 
possible in the relevant proceeding, but no later than any deadline set 
by the Copyright Royalty Judges.
    (iii) Action on motion--(A) Referral granted. Upon consideration of 
a Motion Requesting Referral of Material Question of Substantive Law, if 
one or more of the Copyright Royalty Judges agrees with the request, the 
Chief Judge shall issue an appropriate referral. The referral will state 
the issue(s) to be referred and the schedule for the filing of briefs by 
the parties of the issue(s). After the briefs and other relevant 
materials are received, they will be transmitted to the Register of 
Copyrights.
    (B) Referral denied. If none of the Copyright Royalty Judges agrees 
with the request, the Board will issue an order denying the request 
which will provide the basis for the decision. A copy of any order 
denying a Motion Requesting Referral of Material Question of Substantive 
Law will be transmitted to the Register of Copyrights.
    (c) No effect on proceedings. The issuance of a request to the 
Register of Copyrights for an interpretive ruling under this part does 
not delay or otherwise affect the schedule of the participants' 
obligations in the relevant ongoing proceeding, unless that schedule or 
those obligations are expressly changed by order of the Copyright 
Royalty Judges.
    (d) Binding effect; time limit. The Copyright Royalty Judges will 
not issue a final determination in a proceeding where the discretionary 
referral of a question to the Register of Copyrights under this part is 
pending, unless the Register has not delivered the decision to the 
Copyright Royalty Judges within 14 days after the Register receives all 
of the briefs of the participants. If the decision of the Register of 
Copyrights is timely delivered to the Copyright Royalty Judges, the 
decision will be included in the record of the proceeding. The legal 
interpretation embodied in the timely delivered response of the Register 
of Copyrights in resolving material questions of substantive law is 
binding upon the Copyright Royalty Judges and will be applied by them in 
their final determination in the relevant proceeding.

[71 FR 53330, Sept. 11, 2006]



Sec. 354.2  Novel questions.

    (a) Mandatory referrals. If the material question of substantive law 
described in Sec. 354.1(a) is a novel question of law, referral to the 
Register of Copyrights by the Copyright Royalty Judges is mandatory. A 
``novel question of law'' is a question of law that has not been 
determined in the prior decisions, determinations, or rulings under the 
Copyright Act of the Copyright Royalty Judges, the Librarian of 
Congress, the Register of Copyrights,

[[Page 731]]

the Copyright Arbitration Royalty Panels (to the extent they are 
consistent with the current decisions, determinations, or rulings of the 
Register of Copyrights or the Librarian of Congress), or the former 
Copyright Royalty Tribunal.
    (b) Procedures. The procedures set forth for the discretionary 
referral of material questions of copyright law to the Register of 
Copyrights by the Copyright Royalty Judges, set forth in Sec. 354.1, 
shall also govern the mandatory referral of novel questions, except that 
the Register of Copyrights' decision will be timely if it is delivered 
to the Copyright Royalty Judges within 30 days after the Register of 
Copyrights has received all of the briefs or comments of the 
participants. The Copyright Royalty Judges will not issue a final 
determination in a proceeding where the referral of a novel question to 
the Register of Copyrights under this part is pending, unless this 30-
day period has expired. The legal interpretation embodied in the timely 
delivered response of the Register of Copyrights in resolving material 
questions of substantive law is binding upon the Copyright Royalty 
Judges and will be applied by them in their final determination in the 
relevant proceeding.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53331, Sept. 11, 2006]



Sec. 354.3  Register of Copyrights' authority to redesignate referrals.

    If, during the 14-day period of a discretionary referral of a 
material question of law under Sec. 354.1, the Register of Copyrights 
determines that the question is a ``novel'' one within the meaning of 
Sec. 354.2(a), the Register may notify the Copyright Royalty Judges of 
that determination. The Copyright Royalty Judges will be bound by such a 
determination by the Register of Copyrights and will regard the 
Register's decision as timely delivered if it is received within the 30-
day period applicable to novel question referrals.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53331, Sept. 11, 2006]

[[Page 732]]



                SUBCHAPTER C_SUBMISSION OF ROYALTY CLAIMS





PART 360_FILING OF CLAIMS TO ROYALTY FEES COLLECTED UNDER 
COMPULSORY LICENSE--Table of Contents




                         Subpart A_Cable Claims

Sec.
360.1 General.
360.2 Time of filing.
360.3 Form and content of claims.
360.4 Compliance with statutory dates.
360.5 Copies of claims.

                       Subpart B_Satellite Claims

360.10 General.
360.11 Time of filing.
360.12 Form and content of claims.
360.13 Compliance with statutory dates.
360.14 Copies of claims.
360.15 Separate claims required.

   Subpart C_Digital audio recording devices and media royalty claims

360.20 General
360.21 Time of filing.
360.22 Form and content of claims.
360.23 Content of notices regarding independent administrators.
360.24 Compliance with statutory dates.
360.25 Copies of claims.

    Authority: 17 U.S.C. 801, 803, 805.
    Subpart A also issued under 17 U.S.C. 111(d)(4).
    Subpart B also issued under 17 U.S.C. 119(b)(4).
    Subpart C also issued under 17 U.S.C. 1007(a)(1).

    Source: 70 FR 30905, May 31, 2005, unless otherwise noted.



                         Subpart A_Cable Claims



Sec. 360.1  General.

    This subpart 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 Royalty Board.



Sec. 360.2  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 Royalty Board. 
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. 360.3  Form and content of claims.

    (a) Forms. (1) Each claim to cable compulsory license royalty fees 
shall be furnished on a form prescribed by the Copyright Royalty Board 
and shall contain the information required by that form and its 
accompanying instructions.
    (2) Copies of cable claim forms are available:
    (i) On the Copyright Royalty Board Web site at http://www.loc.gov/
crb/claims/ for claims filed with the Copyright Royalty Board by mail or 
by hand delivery in accordance with Sec. 360.4(a)(2)-(4);
    (ii) On the Copyright Royalty Board Web site at http://www.loc.gov/
crb/cable/ during the month of July for claims filed online in 
accordance with Sec. 360.4(a)(1); and
    (iii) Upon request to the Copyright Royalty Board, Library of 
Congress, P.O. Box 70977, Southwest Station, Washington, DC 20024-0977.
    (b) Content--(1) Single claim. A claim filed on behalf of a single 
copyright owner of a work or works secondarily transmitted by a cable 
system shall include the following information:
    (i) The full legal name and address of the copyright owner entitled 
to claim the royalty fees.
    (ii) A general statement of the nature of the copyright owner's work 
or works, and identification of at least one secondary transmission by a 
cable system of such work or works establishing a basis for the claim.
    (iii) The name, telephone number, facsimile number, if any, full 
address, including a specific number and street name or rural route, and 
e-mail address, if any, of the person or entity filing the single claim. 
An e-mail address must be provided on claims submitted online through 
the Copyright Royalty Board Web site.

[[Page 733]]

    (iv) The name, telephone number, facsimile number, if any, and e-
mail address, if any, of the person whom the Copyright Royalty Board can 
contact regarding the claim.
    (v) An original signature of the copyright owner or of a duly 
authorized representative of the copyright owner, except for claims 
filed online through the Copyright Royalty Board Web site. See 37 CFR 
360.3(b)(1)(vi).
    (vi) A declaration of the authority to file the claim and of the 
veracity of the information contained in the claim and the good faith of 
the person signing in providing such information. Penalties for fraud 
and false statements are provided under 18 U.S.C. 1001 et seq.
    (2) Joint claim. A claim filed on behalf of more than one copyright 
owner whose works have been secondarily transmitted by a cable system 
shall include the following information:
    (i) A list including the full legal name and address of each 
copyright owner to the joint claim entitled to claim royalty fees.
    (ii) A concise statement of the authorization for the person or 
entity filing 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 affiliate 
agreements, or to list the name of each of its members or affiliates in 
the joint claim as required by paragraph (b)(2)(i) of this section.
    (iii) A general statement of the nature of the copyright owners' 
works and identification of at least one secondary transmission of one 
of the copyright owners' works by a cable system establishing a basis 
for the joint claim and the identification of the copyright owner of 
each work so identified.
    (iv) The name, telephone number, facsimile number, if any, full 
address, including a specific number and street name or rural route, and 
e-mail address, if any, of the person or entity filing the joint claim. 
An e-mail address must be provided on claims submitted online through 
the Copyright Royalty Board Web site.
    (v) The name, telephone number, facsimile number, if any, and e-mail 
address, if any, of the person whom the Copyright Royalty Board can 
contact regarding the claim.
    (vi) Original signatures of the copyright owners to the joint claim 
or of a duly authorized representative or representatives of the 
copyright owners, except for claims filed online through the Copyright 
Royalty Board Web site. See 37 CFR 360.3(b)(2)(vii).
    (vii) Notwithstanding paragraph (b)(2)(ii) of this section, a 
declaration of the authority to file the claim and of the veracity of 
the information contained in the claim and the good faith of the person 
signing in providing such information. Penalties for fraud and false 
statements are provided under 18 U.S.C. 1001 et seq.
    (c) In the event that the legal name and/or address of the copyright 
owner entitled to royalties or the person or entity filing the claim 
changes after the filing of the claim, the Copyright Royalty Board shall 
be notified of the change. If the good faith efforts of the Copyright 
Royalty Board to contact the copyright owner or person or entity filing 
the claim are frustrated because of failure to notify the Copyright 
Royalty Board of a name and/or address change, the claim may be subject 
to dismissal.



Sec. 360.4  Compliance with statutory dates.

    (a) Claims filed with the Copyright Royalty Board shall be 
considered timely filed only if:
    (1) They are received online in the Board's server no later than 5 
p.m. E.D.T. on July 31. Online claims must be filed through the 
Copyright Royalty Board Web site at http://www.loc.gov/crb/cable/ during 
the month of July.
    (2) They are hand delivered by a private party no later than 5 p.m. 
E.D.T. on July 31. Claims hand delivered by a private party must be 
delivered to the Copyright Office Public Information Office, in the 
James Madison Memorial Building, Room LM-401, 101 Independence Avenue, 
SE., Washington, DC 20559-6000, Monday through Friday, between 8:30 a.m. 
and 5 p.m., and the envelope must be addressed as follows: Copyright 
Royalty Board, Library of Congress, James Madison Memorial Building, 101 
Independence Avenue, SE., Washington, DC 20559-6000. Claims

[[Page 734]]

hand delivered by a private party must be filed at the Copyright Office 
Public Information Office during the month of July.
    (3) They are hand delivered by a commercial courier (excluding 
overnight delivery services such as Federal Express, United Parcel 
Service and similar overnight delivery services) no later than 4 p.m. 
E.D.T. on July 31. Claims hand delivered by a commercial courier service 
(excluding overnight delivery services such as Federal Express, United 
Parcel Service and similar overnight delivery services) must be 
delivered to the Congressional Courier Acceptance Site (CCAS) located at 
Second and D Street, N.E., Washington, DC, Monday through Friday, 
between 8:30 a.m. and 4 p.m., and the envelope must be addressed as 
follows: Copyright Royalty Board, Library of Congress, James Madison 
Memorial Building, 101 Independence Avenue, SE., Washington, DC 20559-
6000. Claims hand delivered by a commercial courier must be filed at 
CCAS during the month of July.
    (4) They are mailed through the United States Postal Service (USPS) 
having sufficient postage and bearing a July USPS postmark. Claims 
mailed through USPS must be addressed as follows: Copyright Royalty 
Board, P.O. Box 70977, Southwest Station, Washington, DC 20024-0977.
    (5) Federal Express, United Parcel Service and similar overnight 
delivery services may not be used for the filing of claims. A claim sent 
by means of overnight delivery shall be done via United States Postal 
Service Express Mail, and the claim shall be addressed in accordance 
with paragraph (a)(4) of this section.
    (b) Claims dated only with a business meter that are received after 
July 31 will not be accepted as having been timely filed.
    (c) Notwithstanding paragraphs (a) and (b) of this section, 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 Royalty Board 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.
    (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 Royalty Board, proper filing of the 
claim may nonetheless be proven if it was sent by certified mail return 
receipt requested, and a receipt bearing a July date stamp of the United 
States Postal Service, except where paragraph (c) of this section 
applies, can be provided. No other offer of proof will be accepted in 
lieu of the receipt.
    (f) The Copyright Royalty Board will accept either the confirmation 
page generated upon submission of the claim online through the Board's 
Web site or the electronic mail message from the Board confirming 
receipt of the claim as proof that a claim submitted online through the 
Board's Web site was received timely in the Board's server. No other 
offer of proof will be accepted in lieu thereof.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53331, Sept. 11, 2006]



Sec. 360.5  Copies of claims.

    A claimant shall, for each claim submitted to the Copyright Royalty 
Board by hand delivery or by mail, file an original and one copy of the 
claim to cable royalty fees.



                       Subpart B_Satellite Claims



Sec. 360.10  General.

    This subpart 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 shall file claims with the Copyright 
Royalty Board.



Sec. 360.11  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 shall file a claim to such fees

[[Page 735]]

with the Copyright Royalty Board. 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. 360.12  Form and content of claims.

    (a) Forms. (1) Each claim to compulsory license royalty fees for 
secondary transmissions by satellite carriers of television broadcast 
signals to the public shall be furnished on a form prescribed by the 
Copyright Royalty Board and shall contain the information required by 
that form and its accompanying instructions.
    (2) Copies of satellite claim forms are available:
    (i) On the Board's Web site at http://www.loc.gov/crb/claims/ for 
claims filed with the Copyright Royalty Board by mail or by hand 
delivery in accordance with Sec. 360.13(a)(2)-(4);
    (ii) On the Board's Web site at http://www.loc.gov/crb/satellite/ 
during the month of July for claims filed online in accordance with 
Sec. 360.13(a)(1); and
    (iii) Upon request to the Copyright Royalty Board, Library of 
Congress, P.O. Box 70977, Southwest Station, Washington, DC 20024-0977.
    (b) Content--(1) Single claim. A claim filed on behalf of a single 
copyright owner of a work or works secondarily transmitted by a 
satellite carrier shall include the following information:
    (i) The full legal name and address of the copyright owner entitled 
to claim the royalty fees.
    (ii) A general statement of the nature of the copyright owner's work 
or works, and identification of at least one secondary transmission by a 
satellite carrier of such work or works establishing a basis for the 
claim.
    (iii) The name, telephone number, facsimile number, if any, full 
address, including a specific number and street name or rural route, and 
e-mail address, if any, of the person or entity filing the single claim. 
An e-mail address must be provided on claims submitted online through 
the Copyright Royalty Board Web site.
    (iv) The name, telephone number, facsimile number, if any, and e-
mail address, if any, of the person whom the Copyright Royalty Board can 
contact regarding the claim.
    (v) An original signature of the copyright owner or of a duly 
authorized representative of the copyright owner, except for claims 
filed online through the Copyright Royalty Board Web site. See 37 CFR 
360.12(b)(1)(vi).
    (vi) A declaration of the authority to file the claim and of the 
veracity of the information contained in the claim and the good faith of 
the person signing in providing such information. Penalties for fraud 
and false statements are provided under 18 U.S.C. 1001 et seq.
    (2) Joint claim. A claim filed on behalf of more than one copyright 
owner whose works have been secondarily transmitted by a satellite 
carrier shall include the following information:
    (i) A list including the full legal name and address of each 
copyright owner to the joint claim entitled to claim royalty fees.
    (ii) A concise statement of the authorization for the person or 
entity filing 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 affiliate 
agreements, or to list the name of each of its members or affiliates in 
the joint claim as required by paragraph (b)(2)(i) of this section.
    (iii) A general statement of the nature of the copyright owners' 
works, identification of at least one secondary transmission of one of 
the copyright owners' works by a satellite carrier establishing a basis 
for the joint claim, and the identification of the copyright owner of 
each work so identified.
    (iv) The name, telephone number, facsimile number, if any, full 
address, including a specific number and street name or rural route, and 
e-mail address, if any, of the person or entity filing the joint claim. 
An e-mail address must be provided on claims submitted online through 
the Copyright Royalty Board Web site.
    (v) The name, telephone number, facsimile number, if any, and e-mail 
address, if any, of a person whom the Copyright Royalty Board can 
contact regarding the claim.
    (vi) Original signatures of the copyright owners to the joint claim 
or of a

[[Page 736]]

duly authorized representative or representatives of the copyright 
owners, except for claims filed online through the Copyright Royalty 
Board Web site. See 37 CFR 360.12(b)(2)(vii).
    (vii) Notwithstanding paragraph (b)(2)(ii) of this section, a 
declaration of the authority to file the claim and of the veracity of 
the information contained in the claim and the good faith of the person 
signing in providing such information. Penalties for fraud and false 
statements are provided under 18 U.S.C. 1001 et seq.
    (c) In the event that the legal name and/or address of the copyright 
owner entitled to royalties or the person or entity filing the claim 
changes after the filing of the claim, the Copyright Royalty Board shall 
be notified of the change. If the good faith efforts of the Copyright 
Royalty Board to contact the copyright owner or person or entity filing 
the claim are frustrated because of failure to notify the Copyright 
Royalty Board of a name and/or address change, the claim may be subject 
to dismissal.



Sec. 360.13  Compliance with statutory dates.

    (a) Claims filed with the Copyright Royalty Board shall be 
considered timely filed only if:
    (1) They are received online in the Board's server no later than 5 
p.m. e.d.t. on July 31. Online claims must be filed through the 
Copyright Royalty Board Web site at http://www.loc.gov/crb/satellite/ 
during the month of July.
    (2) They are hand delivered by a private party no later than 5 p.m. 
e.d.t. on July 31. Claims hand delivered by a private party must be 
delivered to the Copyright Office Public Information Office, in the 
James Madison Memorial Building, Room LM-401, 101 Independence Avenue, 
SE., Washington, DC 20559-6000, Monday through Friday, between 8:30 a.m. 
and 5 p.m., and the envelope must be addressed as follows: Copyright 
Royalty Board, Library of Congress, James Madison Memorial Building, 101 
Independence Avenue, SE., Washington, DC 20559-6000. Claims hand 
delivered by a private party must be filed at the Copyright Office 
Public Information Office during the month of July.
    (3) They are hand delivered by a commercial courier (excluding 
overnight delivery services such as Federal Express, United Parcel 
Service and similar overnight delivery services) no later than 4 p.m. 
e.d.t. on July 31. Claims hand delivered by a commercial courier service 
(excluding overnight delivery services such as Federal Express, United 
Parcel Service and similar overnight delivery services) must be 
delivered to the Congressional Courier Acceptance Site (CCAS) located at 
Second and D Street, NE., Washington, DC, Monday through Friday, between 
8:30 a.m. and 4 p.m., and the envelope must be addressed as follows: 
Copyright Royalty Board, Library of Congress, James Madison Memorial 
Building, 101 Independence Avenue, SE., Washington, DC 20559-6000. 
Claims hand delivered by a commercial courier must be filed at CCAS 
during the month of July.
    (4) They are mailed through the United States Postal Service (USPS) 
having sufficient postage and bearing a July USPS postmark. Claims 
mailed through USPS must be addressed as follows: Copyright Royalty 
Board, P.O. Box 70977, Southwest Station, Washington, DC 20024-0977.
    (5) Federal Express, United Parcel Service and similar overnight 
delivery services may not be used for the filing of claims. A claim sent 
by means of overnight delivery shall be done via United States Postal 
Service Express Mail, and the claim shall be addressed in accordance 
with paragraph (a)(4) of this section.
    (b) Claims dated only with a business meter that are received after 
July 31 will not be accepted as having been timely filed.
    (c) Notwithstanding paragraphs (a) and (b) of this section, 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 Royalty Board 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.

[[Page 737]]

    (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 Royalty Board, proper filing of the 
claim may nonetheless be proven if it was sent by certified mail return 
receipt requested, and a receipt bearing a July date stamp of the United 
States Postal Service, except where paragraph (c) of this section 
applies, can be provided. No other offer of proof will be accepted in 
lieu of the receipt.
    (f) The Copyright Royalty Board will accept either the confirmation 
page generated upon submission of the claim online through the Board's 
Web site or the electronic mail message from the Board confirming 
receipt of the claim as proof that a claim submitted online through the 
Board's Web site was received timely in the Board's server. No other 
offer of proof will be accepted in lieu thereof.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53331, Sept. 11, 2006]



Sec. 360.14  Copies of claims.

    A claimant shall, for each claim submitted to the Copyright Royalty 
Board by hand delivery or by mail, file an original and one copy of the 
claim to satellite carrier royalty fees.



Sec. 360.15  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 
Royalty Board. Any single claim which purports to file for both cable 
and satellite carrier royalty fees will be dismissed.



   Subpart C_Digital Audio Recording Devices and Media Royalty Claims



Sec. 360.20  General.

    This subpart 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 Royalty 
Board.



Sec. 360.21  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 Royalty Board. 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, 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 Royalty Board 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 
Royalty Board in royalty filing and fee distribution proceedings.

[[Page 738]]



Sec. 360.22  Form and content of claims.

    (a) Forms. (1) Each claim to digital audio recording devices and 
media royalty payments (DART) shall be furnished on a form prescribed by 
the Copyright Royalty Board and shall contain the information required 
by that form and its accompanying instructions.
    (2) Copies of DART claim forms are available:
    (i) On the Board's Web site at http://www.loc.gov/crb/claims for 
claims filed with the Copyright Royalty Board by mail or by hand 
delivery in accordance with Sec. 360.24(a)(2)-(4);
    (ii) On the Board's Web site at http://www.loc.gov/crb/dart/ during 
the months of January and February for claims filed online in accordance 
with Sec. 360.24(a)(1); and
    (iii) Upon request to the Copyright Royalty Board, Library of 
Congress, P.O. Box 70977, Southwest Station, Washington, DC 20024-0977.
    (b) Content. 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 and address of the person or entity claiming 
royalty payments.
    (2) The name, telephone number, facsimile number, if any, full 
address, including a specific number and street name or rural route, and 
e-mail address, if any, of the person or entity filing the claim. An e-
mail address must be provided on claims submitted online through the 
Copyright Royalty Board Web site.
    (3) The name, telephone number, facsimile number, if any, and e-mail 
address, if any, of a person whom the Copyright Royalty Board can 
contact regarding the claim.
    (4) A statement as to how the claimant fits within the definition of 
interested copyright party specified in 17 U.S.C. 1001(7).
    (5) 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) 
through (2).
    (6) 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.
    (7) A declaration of the authority to file the claim and of the 
veracity of the information contained in the claim and the good faith of 
the person signing in providing such information. Penalties for fraud 
and false statements are provided under 18 U.S.C. 1001 et seq.
    (c) Claims shall bear the original signature of the claimant or of a 
duly authorized representative of the claimant, except for claims filed 
online through the Copyright Royalty Board Web site. See 37 CFR 
360.22(b)(7).
    (d) 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 Royalty Board of such change. If the good faith efforts of the 
Copyright Royalty Board to contact the claimant are frustrated because 
of failure to notify the Copyright Royalty Board of a name and/or 
address change, the claim may be subject to dismissal.
    (e) If the claim is a joint claim, it shall include a concise 
statement of the authorization for the filing of the joint claim in 
addition to the declaration required under paragraph (b)(7) of this 
section and the name of each claimant to the joint claim.
    (f) If an interested copyright party intends to file claims against 
more than one Subfund, each such claim must be filed separately with the 
Copyright Royalty Board. Any claim that purports to file against more 
than one Subfund will be rejected.

[[Page 739]]



Sec. 360.23  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 royalty payments to 
nonfeatured musicians as defined in 17 U.S.C. 1006(b)(1), shall file a 
notice informing the Copyright Royalty Board 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 
Royalty Board 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 Royalty Board no 
later than March 31 of each year, commencing with March 31, 2006.
    (e) No notice may be filed by facsimile transmission.



Sec. 360.24  Compliance with statutory dates.

    (a) Claims filed with the Copyright Royalty Board shall be 
considered timely filed only if:
    (1) They are received online in the Board's server no later than 5 
p.m. E.S.T. on the last day of February. Online claims must be filed 
through the Copyright Royalty Board Web site at http://www.loc.gov/crb/
dart/ during the months of January and February.
    (2) They are hand delivered by a private party no later than 5 p.m. 
E.S.T. on the last day of February. Claims hand delivered by a private 
party must be delivered to the Copyright Office Public Information 
Office, in the James Madison Memorial Building, Room LM-401, 101 
Independence Avenue, SE., Washington, DC 20559-6000, Monday through 
Friday, between 8:30 a.m. and 5 p.m., and the envelope must be addressed 
as follows: Copyright Royalty Board, Library of Congress, James Madison 
Memorial Building, 101 Independence Avenue, SE., Washington, DC 20559-
6000. Claims hand delivered by a private party must be filed at the 
Copyright Office Public Information Office during the months of January 
and February.
    (3) They are hand delivered by a commercial courier (excluding 
overnight delivery services such as Federal Express, United Parcel 
Service and similar overnight delivery services) no later than 4 p.m. 
E.S.T. on the last day of February. Claims hand delivered by a 
commercial courier service (excluding overnight delivery services such 
as Federal Express, United Parcel Service and similar overnight delivery 
services) must be delivered to the Congressional Courier Acceptance Site 
(CCAS) located at Second and D Street, NE., Washington, DC, Monday 
through Friday, between 8:30 a.m. and 4 p.m., and the envelope must be 
addressed as follows: Copyright Royalty Board, Library of Congress, 
James Madison Memorial Building, 101 Independence Avenue, SE., 
Washington, DC 20559-6000. Claims hand delivered by a commercial courier 
must be filed at CCAS during the months of January and February.
    (4) They are mailed through the United States Postal Service (USPS) 
having sufficient postage and bearing a January or February USPS 
postmark. Claims mailed through USPS must be addressed as follows: 
Copyright Royalty Board, P.O. Box 70977, Southwest Station, Washington, 
DC 20024-0977.
    (5) Federal Express, United Parcel Service and similar overnight 
delivery services may not be used for the filing of claims. A claim sent 
by means of overnight delivery shall be done via

[[Page 740]]

United States Postal Service Express Mail, and the claim shall be 
addressed in accordance with paragraph (a)(4) of this section.
    (b) Claims dated only with a business meter that are received after 
the last day in February will not be accepted as having been timely 
filed.
    (c) Notwithstanding paragraphs (a) and (b) of this section, in any 
year in which the last day of February falls on a Saturday, Sunday, a 
holiday, or other nonbusiness day within the District of Columbia or the 
Federal Government, claims received by the Copyright Royalty Board 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.
    (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 Royalty Board, proper filing of the 
claim may nonetheless be proven if it was sent by certified mail return 
receipt requested, and a receipt bearing a January or February date 
stamp of the United States Postal Service, except where paragraph (c) of 
this section applies, can be provided. No other offer of proof will be 
accepted in lieu of the receipt.
    (f) The Copyright Royalty Board will accept either the confirmation 
page generated upon submission of the claim online through the Copyright 
Royalty Board Web site or the electronic mail message from the Copyright 
Royalty Board confirming receipt of the claim as proof that a claim 
submitted online through the Copyright Royalty Board Web site was 
received timely in the Board's server. No other offer of proof will be 
accepted in lieu thereof.

[70 FR 30905, May 31, 2005, as amended at 71 FR 53331, Sept. 11, 2006]



Sec. 360.25  Copies of claims.

    A claimant shall, for each claim submitted to the Copyright Royalty 
Board by hand delivery or by mail, file an original and one copy of the 
claim to digital audio recording devices and media royalty payments.

[[Page 741]]



    SUBCHAPTER D_NOTICE AND RECORDKEEPING REQUIREMENTS FOR STATUTORY 
                                LICENSES





PART 370_NOTICE AND RECORDKEEPING REQUIREMENTS FOR STATUTORY LICENSES--
Table of Contents




Sec.
370.1 Notice of use of sound recordings under statutory license.
370.2 Reports of use of sound recordings under statutory license for 
          preexisting subscription services.
370.3 Reports of use of sound recordings under statutory license for 
          nonsubscription transmission services, preexisting satellite 
          digital audio radio services, new subscription services and 
          business establishment services.
370.4 Reports of use of sound recordings under statutory license prior 
          to April 1, 2004.
370.5 Designated collection and distribution organizations for reports 
          of use of sound recordings under statutory license.

    Authority: 17 U.S.C. 112(e)(4), 114(f)(4)(A).

    Source: 71 FR 59013, Oct. 6, 2006, unless otherwise noted.



Sec. 370.1  Notice of use of sound recordings under statutory license.

    (a) General. This section prescribes rules under which copyright 
owners shall receive notice of use of their sound recordings when used 
under either section 112(e) or 114(d)(2) of title 17, United States 
Code, or both.
    (b) Definitions. (1) A Notice of Use of Sound Recordings under 
Statutory License is a written notice to sound recording copyright 
owners of the use of their works under section 112(e) or 114(d)(2) of 
title 17, United States Code, or both, and is required under this 
section to be filed by a Service in the Copyright Office.
    (2) A Service is an entity engaged in either the digital 
transmission of sound recordings pursuant to section 114(d)(2) of title 
17 of the United States Code or making ephemeral phonorecords of sound 
recordings pursuant to section 112(e) of title 17 of the United States 
Code or both. For purposes of this section, the definition of a Service 
includes an entity that transmits an AM/FM broadcast signal over a 
digital communications network such as the Internet, regardless of 
whether the transmission is made by the broadcaster that originates the 
AM/FM signal or by a third party, provided that such transmission meets 
the applicable requirements of the statutory license set forth in 17 
U.S.C. 114(d)(2). A Service may be further characterized as either a 
preexisting subscription service, preexisting satellite digital audio 
radio service, nonsubscription transmission service, new subscription 
service, business establishment service or a combination of those:
    (i) A preexisting subscription service is a service that performs 
sound recordings by means of noninteractive audio-only subscription 
digital audio transmissions, and was in existence and making such 
transmissions to the public for a fee on or before July 31, 1998, and 
may include a limited number of sample channels representative of the 
subscription service that are made available on a nonsubscription basis 
in order to promote the subscription service.
    (ii) A preexisting satellite digital audio radio service is a 
subscription satellite digital audio radio service provided pursuant to 
a satellite digital audio radio service license issued by the Federal 
Communications Commission on or before July 31, 1998, and any renewal of 
such license to the extent of the scope of the original license, and may 
include a limited number of sample channels representative of the 
subscription service that are made available on a nonsubscription basis 
in order to promote the subscription service.
    (iii) A nonsubscription transmission service is a service that makes 
noninteractive nonsubscription digital audio transmission that are not 
exempt under section 114(d)(1) of title 17 of the United States Code and 
are made as part of a service that provides audio programming 
consisting, in whole or in part, of performances of sound recordings, 
including transmissions of broadcast transmissions, if the primary 
purpose of the service is to provide to the

[[Page 742]]

public such audio or other entertainment programming, and the primary 
purpose of the service is not to sell, advertise, or promote particular 
products or services other than sound recordings, live concerts, or 
other music-related events.
    (iv) A new subscription service is a service that performs sound 
recordings by means of noninteractive subscription digital audio 
transmissions and that is not a preexisting subscription service or a 
preexisting satellite digital audio radio service.
    (v) A business establishment service is a service that makes 
ephemeral phonorecords of sound recordings pursuant to section 112(e) of 
title 17 of the United States Code and is exempt under section 
114(d)(1)(C)(iv) of title 17 of the United States Code.
    (c) Forms and content. A Notice of Use of Sound Recordings Under 
Statutory License shall be prepared on a form that may be obtained from 
the Copyright Office Web site or from the Licensing Division, and shall 
include the following information:
    (1) The full legal name of the Service that is either commencing 
digital transmissions of sound recordings or making ephemeral 
phonorecords of sound recordings under statutory license or doing both.
    (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.
    (4) Information on how to gain access to the online Web site or 
homepage of the Service, or where information may be posted under this 
section concerning the use of sound recordings under statutory license.
    (5) Identification of each license under which the Service intends 
to operate, including identification of each of the following categories 
under which the Service will be making digital transmissions of sound 
recordings: preexisting subscription service, preexisting satellite 
digital audio radio service, nonsubscription transmission service, new 
subscription service or business establishment service.
    (6) The date or expected date of the initial digital transmission of 
a sound recording to be made under the section 114 statutory license 
and/or the date or the expected date of the initial use of the section 
112(e) license for the purpose of making ephemeral phonorecords of the 
sound recordings.
    (7) Identification of any amendments required by paragraph (f) of 
this section.
    (d) Signature. The Notice shall include the signature of the 
appropriate officer or representative of the Service that is either 
transmitting the sound recordings or making ephemeral phonorecords of 
sound recordings under statutory license or doing both. The signature 
shall be accompanied by the printed or typewritten name and the title of 
the person signing the Notice and by the date of the signature.
    (e) Filing notices; fees. The original and three copies shall be 
filed with the Licensing Division of the Copyright Office and shall be 
accompanied by the filing fee set forth in Sec. 201.3(c) of this title. 
Notices shall be placed in the public records of the Licensing Division. 
The address of the Licensing Division is: Library of Congress, Copyright 
Office, Licensing Division, 101 Independence Avenue, SE., Washington, DC 
20557-6400.
    (1) A Service that, prior to April 12, 2004, has already commenced 
making digital transmissions of sound recordings pursuant to section 
114(d)(2) of title 17 of the United States Code or making ephemeral 
phonorecords of sound recordings pursuant to section 112(e) of title 17 
of the United States Code, or both, and that has already filed an 
Initial Notice of Digital Transmission of Sound Recordings Under 
Statutory License, and that intends to continue to make digital 
transmissions or ephemeral phonorecords following July 1, 2004, shall 
file a Notice of Use of Sound Recordings under Statutory License with 
the Licensing Division of the Copyright Office no later than July 1, 
2004.
    (2) A Service that, on or after July 1, 2004, commences making 
digital transmissions and ephemeral phonorecords

[[Page 743]]

of sound recordings under statutory license shall file a Notice of Use 
of Sound Recordings under Statutory License with the Licensing Division 
of the Copyright Office prior to the making of the first ephemeral 
phonorecord of the sound recording and prior to the first digital 
transmission of the sound recording.
    (3) A Service that, on or after July 1, 2004, commences making only 
ephemeral phonorecords of sound recordings, shall file a Notice of Use 
of Sound Recordings under Statutory License with the Licensing Division 
of the Copyright Office prior to the making of the first ephemeral 
phonorecord of a sound recording under the statutory license.
    (f) Amendment. A Service shall file a new Notice of Use of Sound 
Recordings under Statutory License within 45 days after any of the 
information contained in the Notice on file has changed, and shall 
indicate in the space provided by the Copyright Office that the Notice 
is an amended filing. The Licensing Division shall retain copies of all 
prior Notices filed by the Service.



Sec. 370.2  Reports of use of sound recordings under statutory license for preexisting subscription services.

    (a) General. This section prescribes the rules for the maintenance 
and delivery of reports of use for sound recordings under section 112(e) 
or section 114(d)(2) of title 17 of the United States Code, or both, by 
preexisting subscription services.
    (b) Definitions. (1) A Collective is a collection and distribution 
organization that is designated under the statutory license by decision 
of a Copyright Arbitration Royalty Panel (CARP) under section 
114(f)(1)(B) or section 114(f)(1)(C)(ii), or by an order of the 
Librarian pursuant to 17 U.S.C. 802(f), prior to the effective date of 
the Copyright Royalty and Distribution Reform Act of 2004, or by 
determination of the Copyright Royalty Judges under section 114(f)(1)(B) 
or section 114(f)(1)C)(ii).
    (2) A Report of Use of Sound Recordings Under Statutory License is 
the report of use required under this section to be provided by a 
Service transmitting sound recordings and making ephemeral phonorecords 
therewith under statutory licenses.
    (3) A Service is a preexisting subscription service, as defined in 
17 U.S.C. 114(j)(11).
    (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 by decision 
of a Copyright Arbitration Royalty Panel (CARP) under section 
114(f)(1)(B) or section 114(f)(1)(C)(ii), or by an order of the 
Librarian pursuant to 17 U.S.C. 802(f), prior to the effective date of 
the Copyright Royalty and Distribution Reform Act of 2004, or by 
determination of the Copyright Royalty Judges under section 114(f)(1)(B) 
or section 114(f)(1)C)(ii). Reports of Use shall be served, by certified 
or registered mail, or by other means if agreed upon by the respective 
preexisting subscription service and Collective, on or before the forty-
fifth day after the close of each month.
    (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 preexisting subscription 
service transmitting sound recordings under statutory license shall post 
and make available online its Reports of Use. Preexisting subscription 
services shall post their Reports of Use online on or before the forty-
fifth day after the close of each month, and make them available to all 
sound recording copyright owners for a period of 90 days. Preexisting 
subscription 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. Preexisting subscription services 
may predicate provision of a password upon:
    (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 preexisting subscription service providing 
the Report of Use.

[[Page 744]]

    (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 preexisting subscription service's ``Intended 
Playlists'' for each channel and each day of the reported month. 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:
    (1) The name of the preexisting subscription service or entity;
    (2) The channel;
    (3) The sound recording title;
    (4) The featured recording artist, group, or orchestra;
    (5) The retail album title (or, in the case of compilation albums 
created for commercial purposes, the name of the retail album identified 
by the preexisting subscription service for purchase of the sound 
recording);
    (6) The marketing label of the commercially available album or other 
product on which the sound recording is found;
    (7) The catalog number;
    (8) The International Standard Recording Code (ISRC) embedded in the 
sound recording, where available and feasible;
    (9) Where available, the copyright owner information provided in the 
copyright notice on the retail album or other product (e.g., following 
the symbol (P), that is the letter P in a circle) or, in the case of 
compilation albums created for commercial purposes, in the copyright 
notice for the individual sound recording;
    (10) The date of transmission; and
    (11) The time of transmission.
    (f) Signature. Reports of Use shall include a signed statement by 
the appropriate officer or representative of the preexisting 
subscription service attesting, under penalty of perjury, that the 
information contained in the Report is believed to be accurate and is 
maintained by the preexisting subscription 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 
preexisting subscription 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 preexisting 
subscription service shall serve upon all designated Collectives and 
retain for a period of three years from the date of transmission reports 
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.



Sec. 370.3  Reports of use of sound recordings under statutory license for 
nonsubscription transmission services, preexisting satellite digital audio radio 

          services, new subscription services and business establishment 
          services.

    (a) General. This section prescribes rules for the maintenance and 
delivery of reports of use of sound recordings under section 112(e) or 
section 114(d)(2)

[[Page 745]]

of title 17 of the United States Code, or both, by nonsubscription 
transmission services, preexisting satellite digital audio radio 
services, new subscription services, and business establishment 
services.
    (b) Definitions. (1) Aggregate Tuning Hours are the total hours of 
programming that a nonsubscription transmission service, preexisting 
satellite digital audio radio service, new subscription service or 
business establishment service has transmitted during the reporting 
period identified in paragraph (c)(3) of this section to all listeners 
within the United States over the relevant channels or stations, and 
from any archived programs, that provide audio programming consisting, 
in whole or in part, of eligible nonsubscription service, preexisting 
satellite digital audio radio service, new subscription service or 
business establishment service transmissions, less the actual running 
time of any sound recordings for which the service has obtained direct 
licenses apart from 17 U.S.C. 114(d)(2) or which do not require a 
license under United States copyright law. For example, if a 
nonsubscription transmission service transmitted one hour of programming 
to 10 simultaneous listeners, the nonsubscription transmission service's 
Aggregate Tuning Hours would equal 10. If 3 minutes of that hour 
consisted of transmission of a directly licensed recording, the 
nonsubscription transmission service's Aggregate Tuning Hours would 
equal 9 hours and 30 minutes. If one listener listened to the 
transmission of a nonsubscription transmission service for 10 hours (and 
none of the recordings transmitted during that time was directly 
licensed), the nonsubscription transmission service's Aggregate Tuning 
Hours would equal 10.
    (2) An AM/FM Webcast is a transmission made by an entity that 
transmits an AM/FM broadcast signal over a digital communications 
network such as the Internet, regardless of whether the transmission is 
made by the broadcaster that originates the AM/FM signal or by a third 
party, provided that such transmission meets the applicable requirements 
of the statutory license set forth in 17 U.S.C. 114(d)(2).
    (3) A Collective is a collection and distribution organization that 
is designated under one or both of the statutory licenses by decision of 
a Copyright Arbitration Royalty Panel under section 112(e)(4), section 
112(e)(6), section 114(f)(1)(B), section 114(f)(1)(C)(ii), section 
114(f)(2)(B), or section 114(f)(2)(C)(ii), or by an order of the 
Librarian of Congress pursuant to 17 U.S.C. 802(f), prior to the 
effective date of the Copyright Royalty and Distribution Reform Act of 
2004, or by determination of the Copyright Royalty Judges under section 
112(e)(4), section 112(e)(6), section 114(f)(1)(B), section 
114(f)(1)(C)(ii), section 114(f)(2)(B), or section 114(f)(2)(C)(ii).
    (4) A new subscription service is defined in Sec. 370.1(b)(2)(iv).
    (5) A nonsubscription transmission service is defined in Sec. 
370.1(b)(2)(iii).
    (6) A preexisting satellite digital audio radio service is defined 
in Sec. 370.1(b)(2)(ii).
    (7) A business establishment service is defined in Sec. 
370.1(b)(2)(v).
    (8) A performance is each instance in which any portion of a sound 
recording is publicly performed to a Listener by means of a digital 
audio transmission or retransmission (e.g., the delivery of any portion 
of a single track from a compact disc to one Listener) but excluding the 
following:
    (i) A performance of a sound recording that does not require a 
license (e.g., the sound recording is not copyrighted);
    (ii) A performance of a sound recording for which the service has 
previously obtained a license from the Copyright Owner of such sound 
recording; and
    (iii) An incidental performance that both:
    (A) Makes no more than incidental use of sound recordings including, 
but not limited to, brief musical transitions in and out of commercials 
or program segments, brief performances during news, talk and sports 
programming, brief background performances during disk jockey 
announcements, brief performances during commercials of sixty seconds or 
less in duration, or brief performances during sporting or other public 
events and
    (B) Other than ambient music that is background at a public event, 
does not

[[Page 746]]

contain an entire sound recording and does not feature a particular 
sound recording of more than thirty seconds (as in the case of a sound 
recording used as a theme song).
    (9) Play frequency is the number of times a sound recording is 
publicly performed by a Service during the relevant period, without 
respect to the number of listeners receiving the sound recording. If a 
particular sound recording is transmitted to listeners on a particular 
channel or program only once during the two-week reporting period, then 
the play frequency is one. If the sound recording is transmitted 10 
times during the two-week reporting period, then the play frequency is 
10.
    (10) A Report of Use is a report required under this section to be 
provided by a nonsubscription transmission service and new subscription 
service that is transmitting sound recordings pursuant to the statutory 
license set forth in section 114(d)(2) of title 17 of the United States 
Code or making ephemeral phonorecords of sound recordings pursuant to 
the statutory license set forth in section 112(e) of title 17 of the 
United States Code, or both.
    (c) Report of Use--(1) Separate reports not required. A 
nonsubscription transmission service, preexisting satellite digital 
audio radio service or a new subscription service that transmits sound 
recordings pursuant to the statutory license set forth in section 
114(d)(2) of title 17 of the United States Code and makes ephemeral 
phonorecords of sound recordings pursuant to the statutory license set 
forth in section 112(e) of title 17 of the United States Code need not 
maintain a separate Report of Use for each statutory license during the 
relevant reporting periods.
    (2) Content. For a nonsubscription transmission service, preexisting 
satellite digital audio radio service, new subscription service or 
business establishment service that transmits sound recordings pursuant 
to the statutory license set forth in section 114(d)(2) of title 17 of 
the United States Code, or the statutory license set forth in section 
112(e) of title 17 of the United States Code, or both, each Report of 
Use shall contain the following information, in the following order, for 
each sound recording transmitted during the reporting periods identified 
in paragraph (c)(3) of this section:
    (i) The name of the nonsubscription transmission service, 
preexisting satellite digital audio radio service, new subscription 
service or business establishment service making the transmissions, 
including the name of the entity filing the Report of Use, if different;
    (ii) The category transmission code for the category of transmission 
operated by the nonsubscription transmission service, preexisting 
satellite digital audio radio service, new subscription service or 
business establishment service:
    (A) For eligible nonsubscription transmissions other than broadcast 
simulcasts and transmissions of non-music programming;
    (B) For eligible nonsubscription transmissions of broadcast 
simulcast programming not reasonably classified as news, talk, sports or 
business programming;
    (C) For eligible nonsubscription transmissions of non-music 
programming reasonably classified as news, talk, sports or business 
programming;
    (D) For eligible nonsubscription transmissions by a non-Corporation 
for Public Broadcasting noncommercial broadcaster making transmissions 
covered by Sec. Sec. 261.3(a)(2)(i) and (ii) of this title;
    (E) For eligible nonsubscription transmissions by a non-Corporation 
for Public Broadcasting noncommercial broadcaster making transmissions 
covered by Sec. 261.3(a)(2)(iii) of this title;
    (F) For eligible nonsubscription transmissions by a small webcaster 
operating under an agreement published in the Federal Register pursuant 
to the Small Webcaster Settlement Act;
    (G) For eligible nonsubscription transmissions by a noncommercial 
broadcaster operating under an agreement published in the Federal 
Register pursuant to the Small Webcaster Settlement Act;
    (H) For transmissions other than broadcast simulcasts and 
transmissions of non-music programming made by an eligible new 
subscription service;

[[Page 747]]

    (I) For transmissions of broadcast simulcast programming not 
reasonably classified as news, talk, sports or business programming made 
by an eligible new subscription service;
    (J) For transmissions of non-music programming reasonably classified 
as news, talk, sports or business programming made by an eligible new 
subscription service; and
    (K) For eligible transmissions by a business establishment service 
making ephemeral recordings;
    (iii) The featured artist;
    (iv) The sound recording title;
    (v) The International Standard Recording Code (ISRC) or, 
alternatively to the ISRC, the
    (A) Album title; and
    (B) Marketing label;
    (vi) The actual total performances of the sound recording during the 
reporting period or, alternatively, the
    (A) Aggregate Tuning Hours;
    (B) Channel or program name; and
    (C) Play frequency.
    (3) Reporting period. A Report of Use shall be prepared for a two-
week period (two periods of 7 consecutive days) for each calendar 
quarter of the year. The two weeks need not be consecutive, but both 
weeks must be completely within the calendar quarter.
    (4) 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 the title of the person signing the 
Report, and by the date of the signature.
    (5) 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, without consent of the service 
providing the Report of Use.
    (6) Documentation. A Service shall, for a period of at least three 
years from the date of service or posting of a Report of Use, keep and 
retain a copy of the Report of Use.
    (d) Format and delivery--(1) Electronic format only. Reports of use 
must be maintained and delivered in electronic format only, as 
prescribed in paragraphs (d)(2) through (8) of this section. A hard copy 
report of use is not permissible.
    (2) ASCII text file delivery; facilitation by provision of 
spreadsheet templates. All report of use data files must be delivered in 
ASCII format. However, to facilitate such delivery, SoundExchange shall 
post and maintain on its Internet Web site a template for creating a 
report of use using Microsoft's Excel spreadsheet and Corel's Quattro 
Pro spreadsheet and instruction on how to convert such spreadsheets to 
ASCII text files that conform to the format specifications set forth 
below. Further, technical support and cost associated with the use of 
spreadsheets is the responsibility of the service submitting the report 
of use.
    (3) Delivery mechanism. The data contained in a report of use may be 
delivered by File Transfer Protocol (FTP), e-mail, CD-ROM, or floppy 
diskette according to the following specifications:
    (i) A service delivering a report of use via FTP must obtain a 
username, password and delivery instructions from SoundExchange. 
SoundExchange shall, by no later than December 5, 2006, post on a 
publicly available portion of its Web site instructions for applying for 
a username, password and delivery instructions. SoundExchange shall have 
15 days from date of request to respond with a username, password and 
delivery instructions.
    (ii) A service delivering a report of use via e-mail shall append 
the report as an attachment to the e-mail. The main body of the e-mail 
shall identify:
    (A) The full name and address of the service;
    (B) The contact person's name, telephone number and e-mail address;
    (C) The start and end date of the reporting period;
    (D) The number of rows in the data file. If the report of use is a 
file using headers, counting of the rows should begin with row 15. If 
the report of use is a file without headers, counting of the rows should 
begin with row 1; and
    (E) The name of the file attached.

[[Page 748]]

    (iii) A service delivering a report of use via CD-ROM must compress 
the reporting data to fit onto a single CD-ROM per reporting period. 
Each CD-ROM shall be submitted with a cover letter identifying:
    (A) The full name and address of the service;
    (B) The contact person's name, telephone number and e-mail address;
    (C) The start and end date of the reporting period;
    (D) The number of rows in the data file. If the report of use is a 
file using headers, counting of the rows should begin with row 15. If 
the report of use is a file without headers, counting of the rows should 
begin with row 1; and
    (E) The name of the file attached.
    (iv) A service delivering a report of use via floppy diskette must 
compress the reporting data to fit onto a single floppy diskette per 
reporting period. Each floppy diskette must measure 3.5 inches in 
diameter and be formatted using MS/DOS. Each floppy diskette shall be 
submitted with a cover letter identifying:
    (A) The full name and address of the service;
    (B) The contact person's name, telephone number and e-mail address;
    (C) The start and end date of the reporting period;
    (D) The number of rows in the data file. If the report of use is a 
file using headers, counting of the rows should begin with row 15. If 
the report of use is a file without headers, the counting of the rows 
should begin with row 1; and
    (E) The name of the file attached.
    (4) Delivery address. Reports of use shall be delivered to 
SoundExchange at the following address: SoundExchange, Inc., 1330 
Connecticut Avenue, NW., 330, Washington, DC 20036; (Phone) 
(202) 828-0120; (Facsimile) (202) 833-2141; (E-mail) 
[email protected]. SoundExchange shall forward electronic copies of 
these reports of use to all other collectives defined in this section.
    (5) File naming. Each data file contained in a report of use must be 
given a name by the service followed by the start and end date of the 
reporting period. The start and end date must be separated by a dash and 
in the format of day, month and year (YYYYMMDD). Each file name must end 
with the file type extension of ``.txt''. (Example: AcmeMusicCo20050101-
20050331.txt).
    (6) File type and compression. (i) All data files must be in ASCII 
format.
    (ii) A report of use must be compressed in one of the following 
zipped formats:
    (A) .zip--generated using utilities such as WinZip and/or UNIX zip 
command;
    (B) .Z--generated using UNIX compress command; or
    (C) .gz--generated using UNIX gzip command.
    Zipped files shall be named in the same fashion as described in 
paragraph (d)(5) of this section, except that such zipped files shall 
use the applicable file extension compression name described in this 
paragraph (d)(6).
    (7) Files with headers. (i) If a service elects to submit files with 
headers, the following elements, in order, must occupy the first 14 rows 
of a report of use:
    (A) Name of service;
    (B) Name of contact person;
    (C) Street address of the service;
    (D) City, state and zip code of the service;
    (E) Telephone number of the contact person;
    (F) E-mail address of the contact person;
    (G) Start of the reporting period (YYYYMMDD);
    (H) End of the reporting period (YYYYMMDD);
    (I) Report generation date (YYYYMMDD);
    (J) Number of rows in data file, beginning with 15th row;
    (K) Text indicator character;
    (L) Field delimiter character;
    (M) Blank line; and
    (N) Report headers (Featured Artist, Sound Recording Title, etc.).
    (ii) Each of the rows described in paragraphs (d)(7)(i)(A) through 
(F) of this section must not exceed 255 alphanumeric characters. Each of 
the rows described in paragraphs (d)(7)(i)(G) through (I) of this 
section should not exceed eight alphanumeric characters.
    (iii) Data text fields, as required by paragraph (c) of this 
section, begin on row 15 of a report of use with headers. A carriage 
return must be at the end of

[[Page 749]]

each row thereafter. Abbreviations within data fields are not permitted.
    (iv) The text indicator character must be unique and must never be 
found in the report's data content.
    (v) The field delimiter character must be unique and must never be 
found in the report's data content. Delimiters must be used even when 
certain elements are not being reported; in such case, the service must 
denote the blank data field with a delimiter in the order in which it 
would have appeared.
    (8) Files without headers. If a service elects to submit files 
without headers, the following format requirements must be met:
    (i) ASCII delimited format, using pipe ([verbar]) characters as 
delimiters, with no headers or footers;
    (ii) Carats ([and]) should surround strings;
    (iii) No carats ([and]) should surround dates and numbers;
    (iv) A carriage return must be at the end of each line;
    (v) All data for one record must be on a single line; and
    (vi) Abbreviations within data fields are not permitted.



Sec. 370.4  Reports of use of sound recordings under statutory license 
prior to April 1, 2004.

    (a) General. This section prescribes the rules which govern reports 
of use of sound recordings by nonsubscription transmission services, 
preexisting satellite digital audio radio services, new subscription 
services, and business establishment services under section 112(e) or 
section 114(d)(2) of title 17 of the United States Code, or both, for 
the period from October 28, 1998, through March 31, 2004.
    (b) Reports of use. Reports of use filed by preexisting subscription 
services for transmissions made under 17 U.S.C. 114(f) pursuant to Sec. 
370.2 for use of sound recordings under section 112(e) or section 
114(d)(2) of title 17 of the United States Code, or both, for the period 
October 28, 1998, through March 31, 2004, shall serve as the reports of 
use for nonsubscription transmission services, preexisting satellite 
digital audio radio services, new subscription services, and business 
establishment services for their use of sound recordings under section 
112(e) or section 114(d)(2) of title 17 of the United States Code, or 
both, for the period from October 28, 1998, through March 31, 2004.
    (c) Royalty Logic Inc. If, in accordance with Sec. 261.4(c) of this 
title, any Copyright Owners or Performers have provided timely notice to 
SoundExchange of an election to receive royalties from Royalty Logic, 
Inc. (RLI) as a Designated Agent for the period October 28, 1998, 
through December 31, 2002, or any portion thereof, SoundExchange shall 
provide to RLI copies of the Reports of Use described in paragraph (b) 
of this section for that period or the applicable portion thereof.



Sec. 370.5  Designated collection and distribution organizations for
reports of use of sound recordings under statutory license.

    (a) General. This section prescribes rules under which reports of 
use shall be collected and distributed under section 114(f) of title 17 
of the United States Code, and under which reports 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 by decision 
of a Copyright Arbitration Royalty Panel under section 114(f)(1)(B) or 
section 114(f)(1)(C)(ii), or by an order of the Librarian of Congress 
pursuant to 17 U.S.C. 802(f), prior to the effective date of the 
Copyright Royalty and Distribution Reform Act of 2004, or by 
determination of the Copyright Royalty Judges under section 114(f)(1)(B) 
or section 114(f)(1)(C)(ii).
    (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:

[[Page 750]]

    (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 Web site or home 
page of the Collective, where information may be posted under this part 
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 reports 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.

[[Page 751]]



           SUBCHAPTER E_RATES AND TERMS FOR STATUTORY LICENSES





PART 380_RATES AND TERMS FOR CERTAIN ELIGIBLE NONSUBSCRIPTION 
TRANSMISSIONS, NEW SUBSCRIPTION SERVICES AND THE MAKING OF EPHEMERAL

REPRODUCTIONS--Table of Contents




Sec.
380.1 General.
380.2 Definitions.
380.3 Royalty fees for the public performance of sound recordings and 
          for ephemeral recordings.
380.4 Terms for making payment of royalty fees and statements of 
          account.
380.5 Confidential information.
380.6 Verification of royalty payments.
380.7 Verification of royalty distributions.
380.8 Unclaimed funds.

    Authority: 17 U.S.C. 112(e), 114(f), 804(b)(3).

    Source: 72 FR 24110, May 1, 2007, unless otherwise noted.



Sec. 380.1  General.

    (a) Scope. This part 380 establishes rates and terms of royalty 
payments for the public performance of sound recordings in certain 
digital transmissions by Licensees in accordance with the provisions of 
17 U.S.C. 114, and the making of Ephemeral Recordings by Licensees in 
accordance with the provisions of 17 U.S.C. 112(e), during the period 
January 1, 2006, through December 31, 2010.
    (b) Legal compliance. Licensees relying upon the statutory licenses 
set forth in 17 U.S.C. 112 and 114 shall comply with the requirements of 
those sections, the rates and terms of this part, and any other 
applicable regulations.
    (c) Relationship to voluntary agreements. Notwithstanding the 
royalty rates and terms established in this part, the rates and terms of 
any license agreements entered into by Copyright Owners and digital 
audio services shall apply in lieu of the rates and terms of this part 
to transmission within the scope of such agreements.



Sec. 380.2  Definitions.

    For purposes of this part, the following definitions shall apply:
    (a) Aggregate Tuning Hours (ATH) means the total hours of 
programming that the Licensee has transmitted during the relevant period 
to all Listeners within the United States from all channels and stations 
that provide audio programming consisting, in whole or in part, of 
eligible nonsubscription transmissions or noninteractive digital audio 
transmissions as part of a new subscription service, less the actual 
running time of any sound recordings for which the Licensee has obtained 
direct licenses apart from 17 U.S.C. 114(d)(2) or which do not require a 
license under United States copyright law. By way of example, if a 
service transmitted one hour of programming to 10 simultaneous 
Listeners, the service's Aggregate Tuning Hours would equal 10. If 3 
minutes of that hour consisted of transmission of a directly licensed 
recording, the service's Aggregate Tuning Hours would equal 9 hours and 
30 minutes. As an additional example, if one Listener listened to a 
service for 10 hours (and none of the recordings transmitted during that 
time was directly licensed), the service's Aggregate Tuning Hours would 
equal 10.
    (b) Broadcaster is a type of Commercial Webcaster or Noncommercial 
Webcaster that owns and operates a terrestial AM or FM radio station 
that is licensed by the Federal Communications Commission.
    (c) Collective is the collection and distribution organization that 
is designated by the Copyright Royalty Judges. For the 2006-2010 license 
period, the Collective is SoundExchange, Inc.
    (d) Commercial Webcaster is a Licensee, other than a Noncommercial 
Webcaster, that makes eligible digital audio transmissions.
    (e) Copyright Owners are sound recording copyright owners who are 
entitled to royalty payments made under this part pursuant to the 
statutory licenses under 17 U.S.C. 112(e) and 114(f).

[[Page 752]]

    (f) Ephemeral Recording is a phonorecord created for the purpose of 
facilitating a transmission of a public performance of a sound recording 
under a statutory license in accordance with 17 U.S.C. 114(f), and 
subject to the limitations specified in 17 U.S.C.112(e).
    (g) Licensee is a person that has obtained a statutory license under 
17 U.S.C. 114, and the implementing regulations, to make eligible 
nonsubscription transmissions, or noninteractive digital audio 
transmissions as part of a new subscription service (as defined in 17 
U.S.C. 114(j)(8)), or that has obtained a statutory license under 17 
U.S.C. 112(e), and the implementing regulations, to make Ephemeral 
Recordings for use in facilitating such transmissions.
    (h) Noncommercial Webcaster is a Licensee that makes eligible 
digital audio transmissions and:
    (1) Is exempt from taxation under section 501 of the Internal 
Revenue Code of 1986 (26 U.S.C. 501),
    (2) Has applied in good faith to the Internal Revenue Service for 
exemption from taxation under section 501 of the Internal Revenue Code 
and has a commercially reasonable expectation that such exemption shall 
be granted, or
    (3) Is operated by a State or possession or any governmental entity 
or subordinate thereof, or by the United States or District of Columbia, 
for exclusively public purposes.
    (i) Performance is each instance in which any portion of a sound 
recording is publicly performed to a Listener by means of a digital 
audio transmission (e.g., the delivery of any portion of a single track 
from a compact disc to one Listener) but excluding the following:
    (1) A performance of a sound recording that does not require a 
license (e.g., a sound recording that is not copyrighted);
    (2) A performance of a sound recording for which the service has 
previously obtained a license from the Copyright Owner of such sound 
recording; and
    (3) An incidental performance that both:
    (i) Makes no more than incidental use of sound recordings including, 
but not limited to, brief musical transitions in and out of commercials 
or program segments, brief performances during news, talk and sports 
programming, brief background performances during disk jockey 
announcements, brief performances during commercials of sixty seconds or 
less in duration, or brief performances during sporting or other public 
events and
    (ii) Other than ambient music that is background at a public event, 
does not contain an entire sound recording and does not feature a 
particular sound recording of more than thirty seconds (as in the case 
of a sound recording used as a theme song).
    (j) Performers means the independent administrators identified in 17 
U.S.C. 114(g)(2)(B) and (C) and the parties identified in 17 U.S.C. 
114(g)(2)(D).
    (k) Qualified Auditor is a Certified Public Accountant.
    (l) Side Channel is a channel on the website of a broadcaster which 
channel transmits eligible transmissions that are not simultaneously 
transmitted over the air by the broadcaster.



Sec. 380.3  Royalty fees for the public performance of sound recordings
and for ephemeral recordings.

    (a) Royalty rates and fees for eligible digital transmissions of 
sound recordings made pursuant to 17 U.S.C. 114, and the making of 
ephemeral recordings pursuant to 17 U.S.C. 112 are as follows:
    (1) Commercial Webcasters: (i) The per-performance fee for 2006-
2010: For all digital audio transmissions, including simultaneous 
digital audio retransmissions of over-the-air AM or FM radio broadcasts, 
a Commercial Webcaster will pay a performance royalty of: $.0008 per 
performance for 2006, $.0011 per performance for 2007, $.0014 per 
performance for 2008, $.0018 per performance for 2009, and $.0019 per 
performance for 2010. The royalty payable under 17 U.S.C. 112 for any 
reproduction of a phonorecord made by a Commercial Webcaster during this 
license period and used solely by the Commercial Webcaster to facilitate 
transmissions for which it pays royalties as and when provided in this 
section is deemed to be included within such royalty payments.

[[Page 753]]

    (ii) Optional transitional Aggregate Tuning Hour fee for 2006-2007: 
The following Aggregate Tuning Hours (ATH) usage rate calculation 
options, in lieu of the per-performance fee, are available for the 
transition period of 2006 and 2007:

----------------------------------------------------------------------------------------------------------------
                                                          Broadcast simulcast
                                     Other programming        programming            Non-music  programming
----------------------------------------------------------------------------------------------------------------
Prior Fees.......................  $0.0117 per ATH.....  $0.0088 per ATH.....  $0.000762 per ATH.
2006.............................  $0.0123 per ATH.....  $0.0092 per ATH.....  $0.0008 per ATH.
2007.............................  $0.0169 per ATH.....  $0.0127 per ATH.....  $0.0011 per ATH.
----------------------------------------------------------------------------------------------------------------

    (iii) ``Non-Music Programming'' is defined as Broadcaster 
programming reasonably classified as news, talk, sports or business 
programming; ``Broadcast Simulcast Programming'' is defined as 
Broadcaster simulcast programming not reasonably classified as news, 
talk, sports or business programming; and ``Other Programming'' is 
defined as programming other than either Broadcaster simulcast 
programming or Broadcaster programming reasonably classified as news, 
talk, sports or business programming.
    (2) Noncommercial Webcasters: (i) For all digital audio 
transmissions totaling not more than 159,140 Aggregate Tuning Hours 
(ATH) in a month, including simultaneous digital audio retransmissions 
of over-the-air AM or FM radio broadcasts, a Noncommercial Webcaster 
will pay an annual per channel or per station performance royalty of 
$500 in 2006, 2007, 2008, 2009 and 2010.
    (ii) For all digital audio transmissions totaling in excess of 
159,140 Aggregate Tuning Hours (ATH) in a month, including simultaneous 
digital audio retransmissions of over-the-air AM or FM radio broadcasts, 
a Noncommercial Webcaster will pay a performance royalty of: $.0008 per 
performance for 2006, $.0011 per performance for 2007, $.0014 per 
performance for 2008, $.0018 per performance for 2009, and $.0019 per 
performance for 2010.
    (iii) The following Aggregate Tuning Hours (ATH) usage rate 
calculation options, in lieu of the per-performance fee, are available 
for the transition period of 2006 and 2007:

----------------------------------------------------------------------------------------------------------------
                                                          Broadcast simulcast
                                     Other programming        programming            Non-music  programming
----------------------------------------------------------------------------------------------------------------
Prior Fees.......................  $0.0117 per ATH.....  $0.0088 per ATH.....  $0.000762 per ATH.
2006.............................  $0.0123 per ATH.....  $0.0092 per ATH.....  $0.0008 per ATH.
2007.............................  $0.0169 per ATH.....  $0.0127 per ATH.....  $0.0011 per ATH.
----------------------------------------------------------------------------------------------------------------

    (iv) ``Non-Music Programming'' is defined as Broadcaster programming 
reasonably classified as news, talk, sports or business programming; 
``Broadcast Simulcast Programming'' is defined as Broadcaster simulcast 
programming not reasonably classified as news, talk, sports or business 
programming; and ``Other Programming'' is defined as programming other 
than either Broadcaster simulcast programming or Broadcaster programming 
reasonably classified as news, talk, sports or business programming.
    (v) The royalty payable under 17 U.S.C. 112 for any reproduction of 
a phonorecord made by a Noncommercial Webcaster during this license 
period and used solely by the Noncommercial Webcaster to facilitate 
transmissions for which it pays royalties as and when provided in this 
section is deemed to be included within such royalty payments.
    (b) Minimum fee. Each Commercial Webcaster and Noncommercial 
Webcaster will pay an annual, nonrefundable minimum fee of $500 for each 
calendar year or part of a calendar year of the license period during 
which they are Licensees pursuant to licenses under 17 U.S.C. 114. This 
annual minimum fee is payable for each individual channel and each 
individual station maintained by Commercial Webcasters and Noncommercial 
Webcasters and is also payable for each individual Side Channel 
maintained by

[[Page 754]]

Broadcasters who are Licensees. The minimum fee payable under 17 U.S.C. 
112 is deemed to be included within the minimum fee payable under 17 
U.S.C. 114. Upon payment of the minimum fee, the Licensee will receive a 
credit in the amount of the minimum fee against any additional royalty 
fees payable in the same calendar year.

[72 FR 24110, May 1, 2007, as amended at 72 FR 29886, May 30, 2007]



Sec. 380.4  Terms for making payment of royalty fees and statements of account.

    (a) Payment to the Collective. A Licensee shall make the royalty 
payments due under Sec. 380.3 to the Collective.
    (b) Designation of the Collective. (1) Until such time as a new 
designation is made, SoundExchange, Inc., is designated as the 
Collective to receive statements of account and royalty payments from 
Licensees due under Sec. 380.3 and to distribute such royalty payments 
to each Copyright Owner and Performer, or their designated agents, 
entitled to receive royalties under 17 U.S.C. 112(e) or 114(g).
    (2) If SoundExchange, Inc. should dissolve or cease to be governed 
by a board consisting of equal numbers of representatives of Copyright 
Owners and Performers, then it shall be replaced by a successor 
Collective upon the fulfillment of the requirements set forth in 
paragraph (b)(2)(i) of this section.
    (i) By a majority vote of the nine Copyright Owner representatives 
and the nine Performer representatives on the SoundExchange board as of 
the last day preceding the condition precedent in paragraph (b)(2) of 
this section, such representatives shall file a petition with the 
Copyright Royalty Board designating a successor to collect and 
distribute royalty payments to Copyright Owners and Performers entitled 
to receive royalties under 17 U.S.C. 112(e) or 114(g) that have 
themselves authorized such Collective.
    (ii) The Copyright Royalty Judges shall publish in the Federal 
Register within 30 days of receipt of a petition filed under paragraph 
(b)(2)(i) of this section an order designating the Collective named in 
such petition.
    (c) Monthly payments. A Licensee shall make any payments due under 
Sec. 380.3 by the 45th day after the end of each month for that month, 
except that payments due under Sec. 380.3 for the period beginning 
January 1, 2006, through the last day of the month in which the 
Copyright Royalty Judges issue their final determination adopting these 
rates and terms shall be due 45 days after the end of such period. All 
monthly payments shall be rounded to the nearest cent.
    (d) Minimum payments. A Licensee shall make any minimum payment due 
under Sec. 380.3(b) by January 31 of the applicable calendar year, 
except that:
    (1) Payment due under Sec. 380.3(b) for 2006 and 2007 shall be due 
45 days after the last day of the month in which the Copyright Royalty 
Judges issue their final determination adopting these rates and terms.
    (2) Payment for a Licensee that has not previously made eligible 
nonsubscription transmissions, noninteractive digital audio 
transmissions as part of a new subscription service or Ephemeral 
Recordings pursuant to the licenses in 17 U.S.C. 114 and/or 17 U.S.C. 
112(e) shall be due by the 45th day after the end of the month in which 
the Licensee commences to do so.
    (e) Late payments and statements of account. A Licensee shall pay a 
late fee of 1.5% per month, or the highest lawful rate, whichever is 
lower, for any payment and/or statement of account received by the 
Collective after the due date. Late fees shall accrue from the due date 
until payment is received by the Collective.
    (f) Statements of account. Any payment due under Sec. 380.3 shall 
be accompanied by a corresponding statement of account. A statement of 
account shall contain the following information:
    (1) Such information as is necessary to calculate the accompanying 
royalty payment;
    (2) The name, address, business title, telephone number, facsimile 
number (if any), electronic mail address and other contact information 
of the person to be contacted for information or questions concerning 
the content of the statement of account;
    (3) The handwritten signature of:

[[Page 755]]

    (i) The owner of the Licensee or a duly authorized agent of the 
owner, if the Licensee is not a partnership or corporation;
    (ii) A partner or delegee, if the Licensee is a partnership; or
    (iii) An officer of the corporation, if the Licensee is a 
corporation.
    (4) The printed or typewritten name of the person signing the 
statement of account;
    (5) The date of signature;
    (6) If the Licensee is a partnership or corporation, the title or 
official position held in the partnership or corporation by the person 
signing the statement of account;
    (7) A certification of the capacity of the person signing; and
    (8) A statement to the following effect:

    I, the undersigned owner or agent of the Licensee, or officer or 
partner, have examined this statement of account and hereby state that 
it is true, accurate, and complete to my knowledge after reasonable due 
diligence.

    (g) Distribution of royalties. (1) The Collective shall promptly 
distribute royalties received from Licensees to Copyright Owners and 
Performers, or their designated agents, that are entitled to such 
royalties. The Collective shall only be responsible for making 
distributions to those Copyright Owners, Performers, or their designated 
agents who provide the Collective with such information as is necessary 
to identify the correct recipient. The Collective shall distribute 
royalties on a basis that values all performances by a Licensee equally 
based upon the information provided under the reports of use 
requirements for Licensees contained in Sec. 370.3 of this chapter.
    (2) If the Collective is unable to locate a Copyright Owner or 
Performer entitled to a distribution of royalties under paragraph (g)(1) 
of this section within 3 years from the date of payment by a Licensee, 
such distribution may first be applied to the costs directly 
attributable to the administration of that distribution. The foregoing 
shall apply notwithstanding the common law or statutes of any State.
    (h) Retention of records. Books and records of a Licensee and of the 
Collective relating to payments of and distributions of royalties shall 
be kept for a period of not less than the prior 3 calendar years.



Sec. 380.5  Confidential information.

    (a) Definition. For purposes of this part, ``Confidential 
Information'' shall include the statements of account and any 
information contained therein, including the amount of royalty payments, 
and any information pertaining to the statements of account reasonably 
designated as confidential by the Licensee submitting the statement.
    (b) Exclusion. Confidential Information shall not include documents 
or information that at the time of delivery to the Collective are public 
knowledge. The party claiming the benefit of this provision shall have 
the burden of proving that the disclosed information was public 
knowledge.
    (c) Use of Confidential Information. In no event shall the 
Collective use any Confidential Information for any purpose other than 
royalty collection and distribution and activities related directly 
thereto.
    (d) Disclosure of Confidential Information. Access to Confidential 
Information shall be limited to:
    (1) Those employees, agents, attorneys, consultants and independent 
contractors of the Collective, subject to an appropriate confidentiality 
agreement, who are engaged in the collection and distribution of royalty 
payments hereunder and activities related thereto, for the purpose of 
performing such duties during the ordinary course of their work and who 
require access to the Confidential Information;
    (2) An independent and Qualified Auditor, subject to an appropriate 
confidentiality agreement, who is authorized to act on behalf of the 
Collective with respect to verification of a Licensee's statement of 
account pursuant to Sec. 380.6 or on behalf of a Copyright Owner or 
Performer with respect to the verification of royalty distributions 
pursuant to Sec. 380.7;
    (3) Copyright Owners and Performers, including their designated 
agents, whose works have been used under the statutory licenses set 
forth in 17 U.S.C. 112(e) and 114(f) by the Licensee whose

[[Page 756]]

Confidential Information is being supplied, subject to an appropriate 
confidentiality agreement, and including those employees, agents, 
attorneys, consultants and independent contractors of such Copyright 
Owners and Performers and their designated agents, subject to an 
appropriate confidentiality agreement, for the purpose of performing 
their duties during the ordinary course of their work and who require 
access to the Confidential Information; and
    (4) In connection with future proceedings under 17 U.S.C. 112(e) and 
114(f) before the Copyright Royalty Judges, and under an appropriate 
protective order, attorneys, consultants and other authorized agents of 
the parties to the proceedings or the courts.
    (e) Safeguarding of Confidential Information. The Collective and any 
person identified in paragraph (d) of this section shall implement 
procedures to safeguard against unauthorized access to or dissemination 
of any Confidential Information using a reasonable standard of care, but 
no less than the same degree of security used to protect Confidential 
Information or similarly sensitive information belonging to the 
Collective or person.



Sec. 380.6  Verification of royalty payments.

    (a) General. This section prescribes procedures by which the 
Collective may verify the royalty payments made by a Licensee.
    (b) Frequency of verification. The Collective may conduct a single 
audit of a Licensee, upon reasonable notice and during reasonable 
business hours, during any given calendar year, for any or all of the 
prior 3 calendar years, but no calendar year shall be subject to audit 
more than once.
    (c) Notice of intent to audit. The Collective must file with the 
Copyright Royalty Board a notice of intent to audit a particular 
Licensee, which shall, within 30 days of the filing of the notice, 
publish in the Federal Register a notice announcing such filing. The 
notification of intent to audit shall be served at the same time on the 
Licensee to be audited. Any such audit shall be conducted by an 
independent and Qualified Auditor identified in the notice, and shall be 
binding on all parties.
    (d) Acquisition and retention of report. The Licensee shall use 
commercially reasonable efforts to obtain or to provide access to any 
relevant books and records maintained by third parties for the purpose 
of the audit. The Collective shall retain the report of the verification 
for a period of not less than 3 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 and Qualified Auditor, shall serve as an acceptable 
verification procedure for all parties with respect to the information 
that is within the scope of the audit.
    (f) Consultation. Before rendering a written report to the 
Collective, except where the auditor has a reasonable basis to suspect 
fraud and disclosure would, in the reasonable opinion of the auditor, 
prejudice the investigation of such suspected fraud, the auditor shall 
review the tentative written findings of the audit with the appropriate 
agent or employee of the Licensee being audited in order to remedy any 
factual errors and clarify any issues relating to the audit; Provided 
that an appropriate agent or employee of the Licensee reasonably 
cooperates with the auditor to remedy promptly any factual errors or 
clarify any issues raised by the audit.
    (g) Costs of the verification procedure. The Collective shall pay 
the cost of the verification procedure, unless it is finally determined 
that there was an underpayment of 10% or more, in which case the 
Licensee shall, in addition to paying the amount of any underpayment, 
bear the reasonable costs of the verification procedure.



Sec. 380.7  Verification of royalty distributions.

    (a) General. This section prescribes procedures by which any 
Copyright Owner or Performer may verify the royalty distributions made 
by the Collective; Provided, however, that nothing contained in this 
section shall apply to situations where a Copyright Owner or Performer 
and the Collective

[[Page 757]]

have agreed as to proper verification methods.
    (b) Frequency of verification. A Copyright Owner or Performer may 
conduct a single audit of the Collective upon reasonable notice and 
during reasonable business hours, during any given calendar year, for 
any or all of the prior 3 calendar years, but no calendar year shall be 
subject to audit more than once.
    (c) Notice of intent to audit. A Copyright Owner or Performer must 
file with the Copyright Royalty Board a notice of intent to audit the 
Collective, which shall, within 30 days of the filing of the notice, 
publish in the Federal Register a notice announcing such filing. The 
notification of intent to audit shall be served at the same time on the 
Collective. Any audit shall be conducted by an independent and Qualified 
Auditor identified in the notice, and shall be binding on all Copyright 
Owners and Performers.
    (d) Acquisition and retention of report. The Collective shall use 
commercially reasonable efforts to obtain or to provide access to any 
relevant books and records maintained by third parties for the purpose 
of the audit. The Copyright Owner or Performer requesting the 
verification procedure shall retain the report of the verification for a 
period of not less than 3 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 and Qualified Auditor, shall serve as an acceptable 
verification procedure for all parties with respect to the information 
that is within the scope of the audit.
    (f) Consultation. Before rendering a written report to a Copyright 
Owner or Performer, except where the auditor has a reasonable basis to 
suspect fraud and disclosure would, in the reasonable opinion of the 
auditor, prejudice the investigation of such suspected fraud, the 
auditor shall review the tentative written findings of the audit with 
the appropriate agent or employee of the Collective in order to remedy 
any factual errors and clarify any issues relating to the audit; 
Provided that the appropriate agent or employee of the Collective 
reasonably cooperates with the auditor to remedy promptly any factual 
errors or clarify any issues raised by the audit.
    (g) Costs of the verification procedure. The Copyright Owner or 
Performer requesting the verification procedure shall pay the cost of 
the procedure, unless it is finally determined that there was an 
underpayment of 10% or more, in which case the Collective shall, in 
addition to paying the amount of any underpayment, bear the reasonable 
costs of the verification procedure.



Sec. 380.8  Unclaimed funds.

    If the Collective is unable to identify or locate a Copyright Owner 
or Performer who is entitled to receive a royalty distribution under 
this part, the Collective shall retain the required payment in a 
segregated trust account for a period of 3 years from the date of 
distribution. No claim to such distribution shall be valid after the 
expiration of the 3-year period. After expiration of this period, the 
Collective may apply the unclaimed funds to offset any costs deductible 
under 17 U.S.C. 114(g)(3). The foregoing shall apply notwithstanding the 
common law or statutes of any State.



PART 381_USE OF CERTAIN COPYRIGHTED WORKS IN CONNECTION WITH NONCOMMERCIAL
EDUCATIONAL BROADCASTING--Table of Contents




Sec.
381.1 General.
381.2 Definition of public broadcasting entity.
381.3 [Reserved]
381.4 Performance of musical compositions by PBS, NPR, and other public 
          broadcasting entities engaged in the activities set forth in 
          17 U.S.C. 118(c).
381.5 Performance of musical compositions by public broadcasting 
          entities licensed to colleges and universities.
381.6 Performance of musical compositions by other public broadcasting 
          entities.
381.7 Recording rights, rates and terms.
381.8 Terms and rates of royalty payments for the use of published 
          pictorial, graphic, and sculptural works.
381.9 Unknown copyright owners.
381.10 Cost of living adjustment.
381.11 Notice of restrictions on use of reproductions of transmission 
          programs.

    Authority: 17 U.S.C. 118, 801(b)(1) and 803.

[[Page 758]]


    Source: 72 FR 67647, Nov. 30, 2007, unless otherwise noted.



Sec. 381.1  General.

    This part 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, 2008, and ending on December 31, 2012. 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(c).



Sec. 381.2  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(c).



Sec. 381.3  [Reserved]



Sec. 381.4  Performance of musical compositions by PBS, NPR and other
public broadcasting entities engaged in the activities set forth 

in 17 U.S.C. 118(c).

    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(c) of copyrighted published 
nondramatic musical compositions, except for public broadcasting 
entities covered by Sec. Sec. 381.5 and 381.6, and except for 
compositions which are the subject of voluntary license agreements.

(a) Determination of royalty rate. (1) For performance of
 such work in a feature presentation of PBS:
    2008-2012..............................................      $227.58
(2) For performance of such a work as background or theme
 music in a PBS program:
    2008-2012..............................................       $57.66
(3) For performance of such a work in a feature
 presentation of a station of PBS:
    2008-2012..............................................       $19.45
(4) For performance of such a work as background or theme
 music in a program of a station of PBS:
    2008-2012..............................................        $4.10
(5) For the performance of such a work in a feature
 presentation of NPR:
    2008-2012..............................................       $23.07
(6) For the performance of such a work as background or
 theme music in an NPR program:
    2008-2012..............................................        $5.59
(7) For the performance of such a work in a feature
 presentation of a station of NPR:
2008-2012..................................................        $1.63
(8) For the performance of such a work as background or
 theme music in a program of a station of NPR:
    2008-2012..............................................         $.58
 

    (9) For 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

[[Page 759]]

and NPR station that shall be required by the provisions of any 
voluntary license agreement with ASCAP, BMI or SESAC covering the 
license period January 1, 2008, to December 31, 2012, to provide 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 four years following the first 
performance.



Sec. 381.5  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 accredited colleges, accredited 
universities, or other accredited nonprofit educational institutions and 
which are not affiliated with National Public Radio. For purposes of 
this section, accreditation of institutions providing post-secondary 
education shall be determined by a regional or national accrediting 
agency recognized by the Council for Higher Education Accreditation or 
the United States Department of Education; and accreditation of 
institutions providing elementary or secondary education shall be as 
recognized by the applicable state licensing authority.
    (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.
    (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, $298 
annually.
    (2) For all such compositions in the repertory of BMI, $298 
annually.
    (3) For all such compositions in the repertory of SESAC, $120 
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.

[72 FR 67647, Nov. 30, 2007, as amended at 73 FR 72726, Dec. 1, 2008]



Sec. 381.6  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 NPR. In the event that a 
station owned by a public broadcasting entity broadcasts programming by 
means of an in-band, on-channel (``IBOC'') digital radio signal and such 
programming is different than the station's analog broadcast 
programming, then any such programming shall be deemed to be provided by 
a separate station requiring a separate royalty payment.
    (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

[[Page 760]]

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, the royalty 
rates shall be as follows:

--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                           Population count                  2008         2009         2010         2011         2012
--------------------------------------------------------------------------------------------------------------------------------------------------------
Level 1.....................................  0-249,999................................        $ 550        $ 567        $ 583        $ 601        $ 619
Level 2.....................................  250,000-499,999..........................        1,000        1,030        1,061        1,093        1,126
Level 3.....................................  500,000-999,999..........................        1,500        1,545        1,591        1,639        1,688
Level 4.....................................  1,000,000-1,499,999......................        2,000        2,060        2,122        2,185        2,251
Level 5.....................................  1,500,000-1,999,999......................        2,500        2,575        2,652        2,732        2,814
Level 6.....................................  2,000,000-2,499,999......................        3,000        3,090        3,183        3,278        3,377
Level 7.....................................  2,500,000-2,999,999......................        3,500        3,605        3,713        3,825        3,939
Level 8.....................................  3,000,000 and above......................        5,000        5,150        5,305        5,464        5,628
--------------------------------------------------------------------------------------------------------------------------------------------------------

    (2) For all such compositions in the repertory of BMI, the royalty 
rates shall be as follows:

--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                           Population count                  2008         2009         2010         2011         2012
--------------------------------------------------------------------------------------------------------------------------------------------------------
Level 1.....................................  0-249,999................................        $ 550        $ 567        $ 583        $ 601        $ 619
Level 2.....................................  250,000-499,999..........................        1,000        1,030        1,061        1,093        1,126
Level 3.....................................  500,000-999,999..........................        1,500        1,545        1,591        1,639        1,688
Level 4.....................................  1,000,000-1,499,999......................        2,000        2,060        2,122        2,185        2,251
Level 5.....................................  1,500,000-1,999,999......................        2,500        2,575        2,652        2,732        2,814
Level 6.....................................  2,000,000-2,499,999......................        3,000        3,090        3,183        3,278        3,377
Level 7.....................................  2,500,000-2,999,999......................        3,500        3,605        3,713        3,825        3,939
Level 8.....................................  3,000,000 and above......................        5,000        5,150        5,305        5,464        5,628
--------------------------------------------------------------------------------------------------------------------------------------------------------

    (3) For all such compositions in the repertory of SESAC, the royalty 
rates shall be as follows:

--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                           Population count                  2008         2009         2010         2011         2012
--------------------------------------------------------------------------------------------------------------------------------------------------------
Level 1.....................................  0-249,999................................        $ 120        $ 124        $ 127        $ 131        $ 135
Level 2.....................................  250,000-499,999..........................          200          206          212          219          225
Level 3.....................................  500,000-999,999..........................          300          309          318          328          338
Level 4.....................................  1,000,000-1,499,999......................          400          412          424          437          450
Level 5.....................................  1,500,000-1,999,999......................          500          515          530          546          563
Level 6.....................................  2,000,000-2,499,999......................          600          618          637          656          675
Level 7.....................................  2,500,000-2,999,999......................          700          721          743          765          788
Level 8.....................................  3,000,000 and above......................        1,000        1,030        1,061        1,093        1,126
--------------------------------------------------------------------------------------------------------------------------------------------------------

    (4) For the performance of any other such compositions, in 2008 
through 2012, $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. Each annual payment shall be accompanied by a 
signed declaration stating the Population Count of the public 
broadcasting entity and the source for such Population Count. An exact 
copy of such declaration shall be furnished to each of ASCAP, BMI and 
SESAC. Upon prior written notice thereof from ASCAP, BMI or SESAC, a 
public broadcasting entity shall make its books and records relating to 
its Population Count available for inspection.
    (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 10 stations to 
furnish such reports.
    (f) Definitions. As used in paragraphs (c) and (d) of this section, 
the following terms and their variant forms mean the following:

[[Page 761]]

    (1) Population Count. The combination of:
    (i) The number of persons estimated to reside within a stations 
Predicted 60 dBu Contour, based on the most recent available census 
data; and
    (ii) The nonduplicative number of persons estimated to reside in the 
Predicted 60 dBu Contour of any Translator Station or Booster Station 
that extends a public broadcasting entity's signal beyond the contours 
of a station's Predicted 60 dBu Contour.
    (iii) In determining Population Count, a station or a Translator 
Station or a Booster Station may use and report the total population 
data, from a research company generally recognized in the broadcasting 
industry, for the radio market within which the station's community 
license is located.
    (2) Predicted 60 dBu Contour shall be calculated as set forth in 47 
CFR 73.313.
    (3) Translator Station and Booster Station shall have the same 
meanings as set forth in 47 CFR 74.1201.



Sec. 381.7  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, 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 broadcasting entities. The rates and 
terms established in this schedule include the making of the 
reproductions described in 17 U.S.C. 118(c)(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:

------------------------------------------------------------------------
                                                             2008-2012
------------------------------------------------------------------------
(A) Feature.............................................         $114.09
(B) Concert feature (per minute)........................           34.26
(C) Background..........................................           57.66
(D) Theme:
    (1) Single program or first series program..........           57.66
    (2) Other series program............................           23.41
------------------------------------------------------------------------

    (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:

------------------------------------------------------------------------
                                                             2008-2012
------------------------------------------------------------------------
(A) Feature.............................................           $9.43
(B) Concert feature (per minute)........................            2.48
(C) Background..........................................            4.10
(D) Theme:
    (1) Single program or first series of program.......            4.10
    (2) Other series program............................            1.63
------------------------------------------------------------------------

    (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.

[[Page 762]]

    (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.

------------------------------------------------------------------------
                                                             2008-2012
------------------------------------------------------------------------
(i) Feature.............................................          $12.35
(ii) Concert feature (per minute).......................           18.13
(iii) Background........................................            6.19
(iv) Theme:
    (A) Single program or first series program..........            6.19
    (B) Other series program............................            2.47
------------------------------------------------------------------------

    (3) For 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 an NPR-produced radio program:

------------------------------------------------------------------------
                                                             2008-2012
------------------------------------------------------------------------
(i) Feature.............................................            $.79
(ii) Feature (concert) (per half hour)..................            1.65
(iii) Background........................................             .40
------------------------------------------------------------------------

    (5) The schedule of fees covers use for a period of three years 
following the first use. Succeeding use periods will require the 
following additional payment: Additional one-year period--25 percent of 
the initial three-year fee; second three-year period--50 percent of the 
initial three-year fee; each three-year fee thereafter--25 percent of 
the initial three-year fee; provided that a 100 percent additional 
payment prior to the expiration of the first three-year period will 
cover use during all subsequent use periods without limitation. Such 
succeeding uses which are subsequent to December 31, 2012, 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 public broadcasting entities shall maintain and 
make available for examination pursuant to paragraph (e) of this section 
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.
    (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 Royalty Judges. Deposit 
of cue sheets or summaries. PBS and its stations, NPR, or other 
television public broadcasting entity shall deposit with the Copyright 
Royalty Judges one electronic copy in Portable Document Format (PDF) on 
compact disk (an optical data storage medium such as a CD-ROM, CD-R or 
CD-RW) or floppy diskette of their standard music cue sheets or 
summaries of same listing the recording pursuant to this schedule of the 
musical works of copyright owners.

[[Page 763]]

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 Royalty Judges upon their 
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.



Sec. 381.8  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(c).
    (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:

------------------------------------------------------------------------
                                                             2008-2012
------------------------------------------------------------------------
(A) For featured display of a work......................          $69.70
(B) For background and montage display..................           33.99
(C) For use of a work for program identification or for           137.40
 thematic use...........................................
(D) For the display of an art reproduction copyrighted             45.14
 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..................................
------------------------------------------------------------------------

    (ii) For such uses in other than PBS-distributed programs:

------------------------------------------------------------------------
                                                             2008-2012
------------------------------------------------------------------------
(A) For featured display of a work......................          $45.14
(B) For background and montage display..................           23.13
(C) For use of a work for program identification or for            92.27
 thematic use...........................................
(D) For the display of an art reproduction copyrighted             23.14
 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 this schedule.................................
------------------------------------------------------------------------

    (2) For the purposes of the schedule in paragraph (b)(1) of this 
section 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.
    (3) ``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 full-screen or 
substantially full-screen, or full-screen for three seconds or less, is 
deemed to be a ``background or montage display''.
    (4) ``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.
    (5) ``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

[[Page 764]]

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 Royalty Judges. (1) PBS 
and its stations or other public broadcasting entity shall deposit with 
the Copyright Royalty Judges one electronic copy in Portable Document 
Format (PDF) on compact disk (an optical data storage medium such as a 
CD-ROM, CD-R or CD-RW) or floppy diskette 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 
use for a period of three years from the date of the first use of the 
work under this schedule. Succeeding use periods will require the 
following additional payment: Additional one-year period--25 percent of 
the initial three-year fee; second three-year period--50 percent of the 
initial three-year fee; each three-year period thereafter--25 percent of 
the initial three-year fee; provided that a 100 percent additional 
payment prior to the expiration of the first three-year period will 
cover use during all subsequent use periods without limitation. Such 
succeeding uses which are subsequent to December 31, 2012, shall be 
subject to the rates established in this schedule.
    (2) Pursuant to the provisions of 17 U.S.C. 118(e), 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.



Sec. 381.9  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 Royalty 
Judges, upon request, information concerning fees deposited in trust 
funds.



Sec. 381.10  Cost of living adjustment.

    (a) On or before December 1, 2007, the Copyright Royalty Judges 
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, 2006, to the

[[Page 765]]

most recent Index published prior to December 1, 2007. On each December 
1 thereafter the Copyright Royalty Judges 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 Copyright Royalty Judges shall publish in the 
Federal Register a revised schedule of rates for Sec. 381.5 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 for rates for Sec. 381.5 shall become 
effective thirty days after publication in the Federal Register.



Sec. 381.11  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 382_RATES AND TERMS FOR DIGITAL TRANSMISSIONS OF SOUND RECORDINGS 
  AND THE REPRODUCTION OF EPHEMERAL RECORDINGS BY PREEXISTING SUBSCRIPTION
  
  SERVICES AND PREEXISTING SATELLITE DIGITAL AUDIO RADIO SERVICES--
  Table of Contents




               Subpart A_Preexisting Subscription Services

Sec.
382.1 General.
382.2 Royalty fees for the digital performance of sound recordings and 
          the making of ephemeral phonorecords by preexisting 
          subscription services.
382.3 Terms for making payment of royalty fees.
382.4 Confidential information and statements of account.
382.5 Verification of statements of account.
382.6 Verification of royalty payments.
382.7 Unknown copyright owners.

      Subpart B_Preexisting Satellite Digital Audio Radio Services

382.10 General.
382.11 Definitions.
382.12 Royalty fees for public performance of sound recordings and the 
          making of ephemeral recordings.
382.13 Terms for making payment of royalty fees and statements of 
          account.
382.14 Confidential information.
382.15 Verification of royalty payments.
382.16 Verification of royalty distributions.
382.17 Unclaimed funds.

    Authority: 17 U.S.C. 112(e), 114 and 801(b)(1).

    Source: 72 FR 71796, Dec. 19, 2007, unless otherwise noted.



               Subpart A_Preexisting Subscription Services



Sec. 382.1  General.

    (a) This subpart establishes rates and terms of royalty payments for 
the public performance of sound recordings by nonexempt preexisting 
subscription services in accordance with the provisions of 17 U.S.C. 
114(d)(2), and the making of ephemeral phonorecords in connection with 
the public performance of sound recordings by nonexempt preexisting 
subscription services in accordance with the provisions of 17 U.S.C. 
112(e).

[[Page 766]]

    (b) Upon compliance with 17 U.S.C. 114 and the terms and rates of 
this subpart, nonexempt preexisting subscription services may engage in 
the activities set forth in 17 U.S.C. 114(d)(2).
    (c) Upon compliance with 17 U.S.C. 112(e) and the terms and rates of 
this subpart, nonexempt preexisting subscription services may engage in 
the activities set forth in 17 U.S.C. 112(e) without limit to the number 
of ephemeral phonorecords made.
    (d) For the purposes of this subpart, Licensee means any preexisting 
subscription service as defined in 17 U.S.C. 114(j)(11).



Sec. 382.2  Royalty fees for the digital performance of sound recordings
and the making of ephemeral phonorecords by preexisting subscription services.

    (a) Commencing January 1, 2008, and continuing through December 31, 
2011, a Licensee's monthly royalty fee for the public performance of 
sound recordings pursuant to 17 U.S.C. 114(d)(2) and the making of any 
number of ephemeral phonorecords to facilitate such performances 
pursuant to 17 U.S.C. 112(e) shall be 7.25% of such Licensee's monthly 
gross revenues resulting from residential services in the United States.
    (b) Commencing January 1, 2012, and continuing through December 31, 
2012, a Licensee's monthly royalty fee for the public performance of 
sound recordings pursuant to 17 U.S.C. 114(d)(2) and the making of any 
number of ephemeral phonorecords to facilitate such performances 
pursuant to 17 U.S.C. 112(e) shall be 7.5% of such Licensee's monthly 
gross revenues resulting from residential services in the United States.
    (c) Each Licensee making digital performances of sound recordings 
pursuant to 17 U.S.C. 114(d)(2) and ephemeral phonorecords pursuant to 
17 U.S.C. 112(e) shall make an advance payment of $100,000 per year, 
payable no later than January 20th of each year. The annual advance 
payment shall be nonrefundable, but the royalties due and payable for a 
given year or any month therein under paragraphs (a) and (b) of this 
section shall be recoupable against the annual advance payment for such 
year; Provided, however, that any unused annual advance payment for a 
given year shall not carry over into a subsequent year.
    (d) A 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.
    (e)(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 a 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, service, or anything 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 (e)(1)(i) through 
(vii) of this section.
    (2) Gross revenues shall include such payments as set forth in 
paragraphs (e)(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

[[Page 767]]

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 (e)(1) of this section for 
affiliate revenue returned during the reporting period and for bad debts 
actually written off during reporting period.
    (f) During any given payment period, the value of each performance 
of each digital sound recording shall be the same.



Sec. 382.3  Terms for making payment of royalty fees.

    (a) Payment to the Collective. All royalty payments shall be made to 
the Collective designated for the collection and distribution of 
royalties for the 2008-2012 time period, which shall be SoundExchange.
    (b) Timing of payment. Payment shall be made on the forty-fifth day 
after the end of each month for that month, commencing with the month 
succeeding the month in which the royalty fees are set.
    (c) Distribution of royalties. (1) The Collective shall promptly 
distribute royalties received from Licensees to copyright owners and 
performers, or their designated agents, that are entitled to such 
royalties. The Collective shall only be responsible for making 
distributions to those copyright owners, performers, or their designated 
agents who provide the Collective with such information as is necessary 
to identify the correct recipient. The Collective shall distribute 
royalties on a basis that values all performances by a Licensee equally 
based upon the information provided under the reports of use 
requirements for Licensees contained in Sec. 370.2 of this chapter.
    (2) If the Collective is unable to locate a copyright owner or 
performer entitled to a distribution of royalties under paragraph (c)(1) 
of this section within 3 years from the date of payment by a Licensee, 
such distribution may first be applied to the costs directly 
attributable to the administration of that distribution. The foregoing 
shall apply notwithstanding the common law or statutes of any State.



Sec. 382.4  Confidential information and statements of account.

    (a) For purposes of this subpart, confidential information shall 
include statements of account and any information pertaining to the 
statements of account designated as confidential by the nonexempt 
preexisting subscription 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 preexisting subscription 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 Sec. Sec. 382.5 and 382.6.
    (b) Nonexempt preexisting subscription services shall submit monthly 
statements of account on a form provided by the Collective 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, agents, consultants and independent contractors 
of the Collective, subject to an appropriate confidentiality agreement, 
who are engaged in the collection and distribution of royalty payments 
hereunder and activities directly related hereto, who are not also 
employees or officers of a sound recording copyright owner or performing 
artist, and who, for the purpose of performing such duties during the 
ordinary course of employment, 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.

[[Page 768]]

    (3) Copyright owners and performers whose works have been used under 
the statutory licenses set forth in 17 U.S.C. 112(e) and 114(f) by the 
Licensee whose Confidential Information is being supplied, or agents 
thereof, subject to an appropriate confidentiality agreement, provided 
that the sole confidential information that may be shared pursuant to 
this paragraph (d)(3) are the monthly statements of account that 
accompany royalty payments.
    (e) The Collective or any person identified in paragraph (d) of this 
section 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, using 
a reasonable standard of care, but no less than the same degree of 
security used to protect confidential financial and business information 
or similarly sensitive information belonging to the Collective or such 
person.
    (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. 382.5  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 the Copyright Royalty Board.
    (b) Frequency of verification. Interested parties may conduct a 
single audit of a nonexempt preexisting subscription 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 
Royalty Board, 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 
Collective.



Sec. 382.6  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 the Copyright 
Royalty Board.
    (b) Frequency of verification. Interested parties may conduct a 
single audit of the Collective 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 Royalty Board, 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 interested party requesting the 
verification

[[Page 769]]

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 interested 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 who are entitled to receive royalty payments pursuant 
to 17 U.S.C. 114(g)(2), or their designated agents.



Sec. 382.7  Unknown copyright owners.

    If the Collective is unable to identify or locate a copyright owner 
or performer who is entitled to receive a royalty distribution under 
this subpart, the Collective shall retain the required payment in a 
segregated trust account for a period of 3 years from the date of 
distribution. No claim to such distribution shall be valid after the 
expiration of the 3-year period. After expiration of this period, the 
Collective may apply the unclaimed funds to offset any costs deductible 
under 17 U.S.C. 114(g)(3). The foregoing shall apply notwithstanding the 
common law or statutes of any State.



      Subpart B_Preexisting Satellite Digital Audio Radio Services

    Authority: 17 U.S.C. 112(e), 114(f), 804(b)(3).

    Source: 73 FR 4102, Jan. 24, 2008, unless otherwise noted.



Sec. 382.10  General.

    (a) Scope. This subpart establishes rates and terms of royalty 
payments for the public performance of sound recordings in certain 
digital transmissions by Licensees in accordance with the provisions of 
17 U.S.C. 114, and the making of Ephemeral Recordings by Licensees in 
accordance with the provisions of 17 U.S.C. 112(e), during the period 
from January 1, 2007, through December 31, 2012.
    (b) Legal compliance. Licensees relying upon the statutory licenses 
set forth in 17 U.S.C. 112 and 114 shall comply with the requirements of 
those sections, the rates and terms of this subpart, and any other 
applicable regulations.
    (c) Relationship to voluntary agreements. Notwithstanding the 
royalty rates and terms established in this subpart, the rates and terms 
of any license agreements entered into by Copyright Owners and Licensees 
shall apply in lieu of the rates and terms of this subpart to 
transmission within the scope of such agreements.



Sec. 382.11  Definitions.

    For purposes of this subpart, the following definitions shall apply:
    Collective is the collection and distribution organization that is 
designated by the Copyright Royalty Judges. For the 2007-2012 license 
period, the Collective is SoundExchange, Inc.
    Copyright Owners are sound recording copyright owners who are 
entitled to royalty payments made under this subpart pursuant to the 
statutory licenses under 17 U.S.C. 112(e) and 114(f).
    Ephemeral Recording is a phonorecord created for the purpose of 
facilitating a transmission of a public performance of a sound recording 
under a statutory license in accordance with 17 U.S.C. 114(f) and 
subject to the limitations specified in 17 U.S.C. 112(e).
    GAAP shall mean generally accepted accounting principles in effect 
from time to time in the United States.
    Gross Revenues. (1) Gross Revenues shall mean revenue recognized by 
the Licensee in accordance with GAAP from the operation of an SDARS, and 
shall be comprised of the following:
    (i) Subscription revenue recognized by Licensee directly from 
residential U.S. subscribers for Licensee's SDARS; and
    (ii) Licensee's advertising revenues, or other monies received from 
sponsors, if any, attributable to advertising on channels other than 
those that use

[[Page 770]]

only incidental performances of sound recordings, less advertising 
agency and sales commissions.
    (2) Gross Revenues shall include such payments as set forth in 
paragraphs (1)(i) and (ii) of the definition of ``Gross Revenues'' to 
which Licensee is entitled but which are paid to a parent, wholly-owned 
subsidiary or division of Licensee.
    (3) Gross Revenues shall exclude:
    (i) Monies or other consideration attributable to the sale and/or 
license of equipment and/or other technology, including but not limited 
to bandwidth, sales of devices that receive the Licensee's SDARS and any 
taxes, shipping and handling fees therefor;
    (ii) Royalties paid to Licensee for intellectual property rights;
    (iii) Monies or other consideration received by Licensee from the 
sale of phonorecords and digital phonorecord deliveries;
    (iv) Sales and use taxes, shipping and handling, credit card, 
invoice, and fulfillment service fees;
    (v) Bad debt expense, and
    (vi) Revenues recognized by Licensee for the provision of
    (A) Current and future data services offered for a separate charge 
(e.g., weather, traffic, destination information, messaging, sports 
scores, stock ticker information, extended program associated data, 
video and photographic images, and such other telematics and/or data 
services as may exist from time to time);
    (B) Channels, programming, products and/or other services offered 
for a separate charge where such channels use only incidental 
performances of sound recordings;
    (C) Channels, programming, products and/or other services provided 
outside of the United States; and
    (D) Channels, programming, products and/or other services for which 
the performance of sound recordings and/or the making of ephemeral 
recordings is exempt from any license requirement or is separately 
licensed, including by a statutory license and, for the avoidance of 
doubt, webcasting, audio services bundled with television programming, 
interactive services, and transmissions to business establishments.
    Licensee is a person that has obtained a statutory license under 17 
U.S.C. 114, and the implementing regulations, to make transmissions over 
a preexisting satellite digital audio radio service, and has obtained a 
statutory license under 17 U.S.C. 112(e), and the implementing 
regulations, to make Ephemeral Recordings for use in facilitating such 
transmissions.
    Performers means the independent administrators identified in 17 
U.S.C. 114(g)(2)(B) and (C), and the parties identified in 17 U.S.C. 
114(g)(2)(D).
    Qualified Auditor is a Certified Public Accountant.
    Residential means, with respect to a service, a service that may be 
licensed under the provisions of 17 U.S.C. 114(d)(2)(B); and, with 
respect to subscribers, subscribers to such a service.
    SDARS means the preexisting satellite digital audio radio services 
as defined in 17 U.S.C. 114(j)(10).
    Term means the period commencing January 1, 2007, and continuing 
through December 31, 2012.



Sec. 382.12  Royalty fees for the public performance of sound recordings
and the making of ephemeral recordings.

    The monthly royalty fee to be paid by a Licensee for the public 
performance of sound recordings pursuant to 17 U.S.C. 114(d)(2) and the 
making of any number of ephemeral phonorecords to facilitate such 
performances pursuant to 17 U.S.C. 112(e) shall be the percentage of 
monthly Gross Revenues resulting from Residential services in the United 
States as follows: for 2007 and 2008, 6.0%; for 2009, 6.5%; for 2010, 
7.0%; for 2011, 7.5%; and for 2012, 8.0%.



Sec. 382.13  Terms for making payment of royalty fees and statements 
of account.

    (a) Payment to the Collective. A Licensee shall make the royalty 
payments due under Sec. 382.12 to the Collective.
    (b) Designation of the Collective. (1) Until such time as a new 
designation is made, SoundExchange, Inc., is designated as the 
Collective to receive statements of account and royalty payments from 
Licensees due under Sec. 382.12 and to distribute such royalty payments 
to each Copyright Owner and

[[Page 771]]

Performer, or their designated agents, entitled to receive royalties 
under 17 U.S.C. 112(e) or 114.
    (2) If SoundExchange, Inc. should dissolve or cease to be governed 
by a board consisting of equal numbers of representatives of Copyright 
Owners and Performers, then it shall be replaced by a successor 
Collective upon the fulfillment of the requirements set forth in 
paragraph (b)(2)(i) of this section.
    (i) By a majority vote of the nine Copyright Owner representatives 
and the nine Performer representatives on the SoundExchange board as of 
the last day preceding the condition precedent in paragraph (b)(2) of 
this section, such representatives shall file a petition with the 
Copyright Royalty Judges designating a successor to collect and 
distribute royalty payments to Copyright Owners and Performers entitled 
to receive royalties under 17 U.S.C. 112(e) or 114 that have themselves 
authorized the Collective.
    (ii) The Copyright Royalty Judges shall publish in the Federal 
Register within 30 days of receipt of a petition filed under paragraph 
(b)(2)(i) of this section an order designating the Collective named in 
such petition.
    (c) Monthly payments. A Licensee shall make any payments due under 
Sec. 382.12 on a monthly basis on or before the 45th day after the end 
of each month for that month, except that payments due under Sec. 
382.12 for the period beginning January 1, 2007, through the last day of 
the month in which the Copyright Royalty Judges issue their final 
determination adopting these rates and terms shall be due 45 days after 
the end of such period. All payments shall be rounded to the nearest 
cent.
    (d) Late payments and statements of account. A Licensee shall pay a 
late fee of 1.5% per month, or the highest lawful rate, whichever is 
lower, for any payment and/or statement of account received by the 
Collective after the due date. Late fees shall accrue from the due date 
until payment is received by the Collective.
    (e) Statements of account. Any payment due under Sec. 382.12 shall 
be accompanied by a corresponding statement of account. A statement of 
account shall contain the following information:
    (1) Such information as is necessary to calculate the accompanying 
royalty payments;
    (2) The name, address, business title, telephone number, facsimile 
number (if any), electronic mail address and other contact information 
of the person to be contacted for information or questions concerning 
the content of the statement of account;
    (3) The handwritten signature of a duly authorized officer or 
representative of the Licensee;
    (4) The printed or typewritten name of the person signing the 
statement of account;
    (5) The date of signature;
    (6) The title or official position held in relation to the Licensee 
by the person signing the statement of account;
    (7) A certification of the capacity of the person signing; and
    (8) A statement to the following effect:

    I, the undersigned officer or representative of the Licensee, have 
examined this statement of account and hereby state that it is true, 
accurate, and complete to my knowledge after reasonable due diligence.

    (f) Distribution of royalties. (1) The Collective shall promptly 
distribute royalties received from Licensees to Copyright Owners and 
Performers, or their designated agents, that are entitled to such 
royalties. The Collective shall only be responsible for making 
distributions to those Copyright Owners, Performers, or their designated 
agents who provide the Collective with such information as is necessary 
to identify the correct recipient. The Collective shall distribute 
royalties on a basis that values all performances by a Licensee equally 
based upon the information provided under the reports of use 
requirements for Licensees contained in Sec. 370.3 of this chapter.
    (2) If the Collective is unable to locate a Copyright Owner or 
Performer entitled to a distribution of royalties under paragraph (f)(1) 
of this section within 3 years from the date of payment by a Licensee, 
such royalties shall be handled in accordance with Sec. 382.17.

[[Page 772]]

    (g) Retention of records. Books and records of a Licensee and of the 
Collective relating to payments of and distributions of royalties shall 
be kept for a period of not less than the prior 3 calendar years.



Sec. 382.14  Confidential information.

    (a) Definition. For purposes of this subpart, ``Confidential 
Information'' shall include the statements of account and any 
information contained therein, including the amount of royalty payments, 
and any information pertaining to the statements of account reasonably 
designated as confidential by the Licensee submitting the statement.
    (b) Exclusion. Confidential Information shall not include documents 
or information that at the time of delivery to the Collective are public 
knowledge. The party claiming the benefit of this provision shall have 
the burden of proving that the disclosed information was public 
knowledge.
    (c) Use of Confidential Information. In no event shall the 
Collective use any Confidential Information for any purpose other than 
royalty collection and distribution and activities related directly 
thereto.
    (d) Disclosure of Confidential Information. Access to Confidential 
Information shall be limited to:
    (1) Those employees, agents, attorneys, consultants and independent 
contractors of the Collective, subject to an appropriate confidentiality 
agreement, who are engaged in the collection and distribution of royalty 
payments hereunder and activities related thereto, for the purpose of 
performing such duties during the ordinary course of their work and who 
require access to the Confidential Information;
    (2) An independent and Qualified Auditor, subject to an appropriate 
confidentiality agreement, who is authorized to act on behalf of the 
Collective with respect to verification of a Licensee's statement of 
account pursuant to Sec. 382.15 or on behalf of a Copyright Owner or 
Performer with respect to the verification of royalty distributions 
pursuant to Sec. 382.16;
    (3) Copyright Owners and Performers, including their designated 
agents, whose works have been used under the statutory licenses set 
forth in 17 U.S.C. 112(e) and 114(f) by the Licensee whose Confidential 
Information is being supplied, subject to an appropriate confidentiality 
agreement, and including those employees, agents, attorneys, consultants 
and independent contractors of such Copyright Owners and Performers and 
their designated agents, subject to an appropriate confidentiality 
agreement, for the purpose of performing their duties during the 
ordinary course of their work and who require access to the Confidential 
Information; and
    (4) In connection with future proceedings under 17 U.S.C. 112(e) and 
114(f) before the Copyright Royalty Judges, and under an appropriate 
protective order, attorneys, consultants and other authorized agents of 
the parties to the proceedings or the courts.
    (e) Safeguarding of Confidential Information. The Collective and any 
person identified in paragraph (d) of this section shall implement 
procedures to safeguard against unauthorized access to or dissemination 
of any Confidential Information using a reasonable standard of care, but 
no less than the same degree of security used to protect Confidential 
Information or similarly sensitive information belonging to the 
Collective or person.



Sec. 382.15  Verification of royalty payments.

    (a) General. This section prescribes procedures by which the 
Collective may verify the royalty payments made by a Licensee.
    (b) Frequency of verification. The Collective may conduct a single 
audit of a Licensee, upon reasonable notice and during reasonable 
business hours, during any given calendar year, for any or all of the 
prior 3 calendar years, but no calendar year shall be subject to audit 
more than once.
    (c) Notice of intent to audit. The Collective must file with the 
Copyright Royalty Judges a notice of intent to audit a particular 
Licensee, which shall, within 30 days of the filing of the notice, 
publish in the Federal Register a notice announcing such filing. The 
notification of intent to audit shall be served at the same time on the 
Licensee to be audited. Any such audit shall be conducted by an 
independent

[[Page 773]]

and Qualified Auditor identified in the notice, and shall be binding on 
all parties.
    (d) Acquisition and retention of report. The Licensee shall use 
commercially reasonable efforts to obtain or to provide access to any 
relevant books and records maintained by third parties for the purpose 
of the audit. The Collective shall retain the report of the verification 
for a period of not less than 3 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 and Qualified Auditor, shall serve as an acceptable 
verification procedure for all parties with respect to the information 
that is within the scope of the audit.
    (f) Consultation. Before rendering a written report to the 
Collective, except where the auditor has a reasonable basis to suspect 
fraud and disclosure would, in the reasonable opinion of the auditor, 
prejudice the investigation of such suspected fraud, the auditor shall 
review the tentative written findings of the audit with the appropriate 
agent or employee of the Licensee being audited in order to remedy any 
factual errors and clarify any issues relating to the audit; Provided 
that an appropriate agent or employee of the Licensee reasonably 
cooperates with the auditor to remedy promptly any factual errors or 
clarify any issues raised by the audit.
    (g) Costs of the verification procedure. The Collective shall pay 
the cost of the verification procedure, unless it is finally determined 
that there was an underpayment of 10% or more, in which case the 
Licensee shall, in addition to paying the amount of any underpayment, 
bear the reasonable costs of the verification procedure.



Sec. 382.16  Verification of royalty distributions.

    (a) General. This section prescribes procedures by which any 
Copyright Owner or Performer may verify the royalty distributions made 
by the Collective; Provided, however, that nothing contained in this 
section shall apply to situations where a Copyright Owner or Performer 
and the Collective have agreed as to proper verification methods.
    (b) Frequency of verification. A Copyright Owner or Performer may 
conduct a single audit of the Collective upon reasonable notice and 
during reasonable business hours, during any given calendar year, for 
any or all of the prior 3 calendar years, but no calendar year shall be 
subject to audit more than once.
    (c) Notice of intent to audit. A Copyright Owner and Performer must 
file with the Copyright Royalty Judges a notice of intent to audit the 
Collective, which shall, within 30 days of the filing of the notice, 
publish in the Federal Register a notice announcing such filing. The 
notification of intent to audit shall be served at the same time on the 
Collective. Any audit shall be conducted by an independent and Qualified 
Auditor identified in the notice, and shall be binding on all Copyright 
Owners and Performers.
    (d) Acquisition and retention of report. The Collective shall use 
commercially reasonable efforts to obtain or to provide access to any 
relevant books and records maintained by third parties for the purpose 
of the audit. The Copyright Owner or Performer requesting the 
verification procedure shall retain the report of the verification for a 
period of not less than 3 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 and Qualified Auditor, shall serve as an acceptable 
verification procedure for all parties with respect to the information 
that is within the scope of the audit.
    (f) Consultation. Before rendering a written report to a Copyright 
Owner or Performer, except where the auditor has a reasonable basis to 
suspect fraud and disclosure would, in the reasonable opinion of the 
auditor, prejudice the investigation of such suspected fraud, the 
auditor shall review the tentative written findings of the audit with 
the appropriate agent or employee of the Collective in order to remedy 
any factual errors and clarify any issues relating

[[Page 774]]

to the audit; Provided that the appropriate agent or employee of the 
Collective reasonably cooperates with the auditor to remedy promptly any 
factual errors or clarify any issues raised by the audit.
    (g) Costs of the verification procedure. The Copyright Owner or 
Performer requesting the verification procedure shall pay the cost of 
the procedure, unless it is finally determined that there was an 
underpayment of 10% or more, in which case the Collective shall, in 
addition to paying the amount of any underpayment, bear the reasonable 
costs of the verification procedure.



Sec. 382.17  Unclaimed funds.

    If the Collective is unable to identify or locate a Copyright Owner 
or Performer who is entitled to receive a royalty distribution under 
this subpart, the Collective shall retain the required payment in a 
segregated trust account for a period of 3 years from the date of 
distribution. No claim to such distribution shall be valid after the 
expiration of the 3-year period. After expiration of this period, the 
Collective may apply the unclaimed funds to offset any costs deductible 
under 17 U.S.C. 114(g)(3). The foregoing shall apply notwithstanding the 
common law or statutes of any State.



PART 383_RATES AND TERMS FOR SUBSCRIPTION TRANSMISSIONS AND THE 
REPRODUCTION OF EPHEMERAL RECORDINGS BY NEW SUBSCRIPTION SERVICES--

Table of Contents




Sec.
383.1 General.
383.2 Definitions.
383.3 Royalty fees for public performance of sound recordings and the 
          making of ephemeral recordings.
383.4 Terms for making payment of royalty fees.

    Authority: 17 U.S.C. 112(e), 114, and 801(b)(1).

    Source: 72 FR 72254, Dec. 20, 2007, unless otherwise noted.



Sec. 383.1  General.

    (a) Scope. This part 383 establishes rates and terms of royalty 
payments for the public performance of sound recordings in certain 
digital transmissions by Licensees in accordance with the provisions of 
17 U.S.C. 114, and the making of certain ephemeral recordings by 
Licensees in accordance with the provisions of 17 U.S.C. 112(e), during 
the period commencing from the inception of the Licensees' Services and 
continuing through December 31, 2010.
    (b) Legal compliance. Licensees relying upon the statutory licenses 
set forth in 17 U.S.C. 112 and 114 shall comply with the requirements of 
those sections and the rates and terms of this part.
    (c) Relationship to voluntary agreements. Notwithstanding the 
royalty rates and terms established in this part, the rates and terms of 
any license agreements entered into by Copyright Owners and Licensees 
shall apply in lieu of the rates and terms of this part to transmissions 
with the scope of such agreements.



Sec. 383.2  Definitions.

    For purposes of this part, the following definitions shall apply:
    (a) Applicable Period is the period for which a particular payment 
to the designated collection and distribution organization is due.
    (b) Bundled Contracts means contracts between the Licensee and a 
Provider in which the Service is not the only content licensed by the 
Licensee to the Provider.
    (c) Copyright Owner is a sound recording copyright owner who is 
entitled to receive royalty payments under 17 U.S.C. 112(e) or 114(g).
    (d) License Period means the period commencing from the inception of 
the Licensees' Services and continuing through December 31, 2010.
    (e) Licensee is a person that has obtained statutory licenses under 
17 U.S.C. 112 and 114, and the implementing regulations, to make digital 
audio transmissions as part of a Service (as defined in paragraph (h) of 
this section), and ephemeral recordings for use in facilitating such 
transmissions.
    (f) Provider means a ``multichannel video programming distributor'' 
as that term is defined in 47 CFR 76.1000(e); notwithstanding such 
definition, for purposes of this part, a Provider shall include only a 
distributor of

[[Page 775]]

programming to televisions, such as a cable or satellite television 
provider.
    (g) Revenue. (1) ``Revenue'' means all monies and other 
considerations, paid or payable, recognizable during the Applicable 
Period as revenue by the Licensee consistent with Generally Accepted 
Accounting Principles (``GAAP'') and the Licensee's past practices, 
which is derived by the Licensee from the operation of the Service and 
shall be comprised of the following:
    (i) Revenues recognizable by Licensee from Licensee's Providers and 
directly from residential U.S. subscribers for Licensee's Service;
    (ii) Licensee's advertising revenues recognizable from the Service 
(as billed), or other monies received from sponsors of the Service if 
any, less advertising agency commissions not to exceed 15% of those fees 
incurred to a recognized advertising agency not owned or controlled by 
Licensee;
    (iii) Revenues recognizable for the provision of time on the Service 
to any third party;
    (iv) Revenues recognizable from the sale of time to Providers of 
paid programming, such as infomercials, on the Service;
    (v) Where merchandise, service, or anything of value is receivable 
by Licensee in lieu of cash consideration for the use of Licensee's 
Service, the fair market value thereof or Licensee's prevailing 
published rate, whichever is less;
    (vi) Monies or other consideration recognizable as revenue by 
Licensee from Licensee's Providers, but not including revenues 
recognizable by Licensee's Providers from others and not accounted for 
by Licensee's Providers to Licensee, for the provision of hardware for 
the Service by anyone and used in connection with the Service;
    (vii) Monies or other consideration recognizable as revenue for any 
references to or inclusion of any product or service on the Service; and
    (viii) Bad debts recovered regarding paragraphs (g)(1)(i) through 
(vii) of this section.
    (2) ``Revenue'' shall include such payments as set forth in 
paragraphs (g)(1)(i) through (viii) of this section to which Licensee is 
entitled but which are paid or payable to a parent, subsidiary, 
division, or affiliate of Licensee, in lieu of payment to Licensee but 
not including payments to Licensee's Providers for the Service. Licensee 
shall be allowed a deduction from ``Revenue'' as defined in paragraph 
(g)(1) of this section for bad debts actually written off during the 
reporting period.
    (h) A Service is a non-interactive (consistent with the definition 
of ``interactive service'' in 17 U.S.C. 114(j)(7)) audio-only 
subscription service (including accompanying information and graphics 
related to the audio) that is transmitted to residential subscribers of 
a television service through a Provider which is marketed as and is in 
fact primarily a video service where
    (1) Subscribers do not pay a separate fee for audio channels.
    (2) The audio channels are delivered by digital audio transmissions 
through a technology that is incapable of tracking the individual sound 
recordings received by any particular consumer.
    (3) However, paragraph (h)(2) of this section shall not apply to the 
Licensee's current contracts with Providers that are in effect as of the 
effective date of this part if such Providers become capable in the 
future of tracking the individual sound recordings received by any 
particular consumer, provided that the audio channels continued to be 
delivered to Subscribers by digital audio transmissions and the Licensee 
remains incapable of tracking the individual sound recordings received 
by any particular consumer.
    (i) Subscriber means every residential subscriber to the underlying 
service of the Provider who receives Licensee's Service in the United 
States for all or any part of a month; provided, however, that for any 
Licensee that is not able to track the number of subscribers on a per-
day basis, ``Subscribers'' shall be calculated based on the average of 
the number of subscribers on the last day of the preceding month and the 
last day of the applicable month, unless the Service is paid by the 
Provider based on end-of-month numbers, in which event ``Subscribers'' 
shall be counted based on end-of-month data.

[[Page 776]]

    (j) Stand-Alone Contracts means contracts between the Licensee and a 
Provider in which the only content licensed to the Provider is the 
Service.



Sec. 383.3  Royalty fees for public performances of sound recordings
and the making of ephemeral recordings.

    (a) Royalty rates. Royalty rates for the public performance of sound 
recordings by eligible digital transmissions made over a Service 
pursuant to 17 U.S.C. 114, and for ephemeral recordings of sound 
recordings made pursuant to 17 U.S.C. 112 to facilitate such 
transmissions, are as follows. Each Licensee will pay, with respect to 
content covered by the License that is provided via the Service of each 
such Licensee:
    (1) For Stand-Alone Contracts, the greater of:
    (i) 15% of Revenue, or
    (ii) The following monthly minimum payment per Subscriber to the 
Service of such Licensee--

(A) From inception through 2006: $0.0075
(B) 2007: $0.0075
(C) 2008: $0.0075
(D) 2009: $0.0125
(E) 2010: $0.0150 and

    (2) For Bundled Contracts, the greater of:
    (i) 15% of Revenue allocated to reflect the objective value of the 
Licensee's Service, or
    (ii) The following monthly minimum payment per Subscriber to the 
Service of such Licensee:

(A) From inception through 2006: $0.0220
(B) 2007: $0.0220
(C) 2008: $0.0220
(D) 2009: $0.0220
(E) 2010: $0.0250

    (b) Minimum fee. Each Licensee will pay an annual, non-refundable 
minimum fee of one hundred thousand dollars ($100,000), payable on 
January 31 of each calendar year in which the Service is provided 
pursuant to the section 112 and 114 statutory licenses, but payable 
pursuant to the applicable regulations for all years 2007 and earlier. 
Such fee shall be recoupable and credited against royalties due in the 
calendar year in which it is paid.



Sec. 383.4  Terms for making payment of royalty fees.

    (a) Subject to the provisions of this section, terms governing 
timing and due dates of royalty payments, late fees, statements of 
account, audit and verification of royalty payments and distributions, 
cost of audit and verification, record retention requirements, treatment 
of Licensees' confidential information, distribution of royalties, 
unclaimed funds, designation and definition of the collection and 
distribution organization, and any definitions for applicable terms not 
defined herein and not otherwise inapplicable shall be those adopted by 
the Copyright Royalty Judges for subscription transmissions and the 
reproduction of ephemeral recordings by preexisting satellite digital 
audio radio services in Docket No. 2006-1 CRB DSTRA (``the SDARS 
Proceeding'').
    (b) Without prejudice to any applicable notice and recordkeeping 
provisions, statements of account shall not require reports of 
performances.
    (c) If the Copyright Royalty Judges adopt reports of use regulations 
in the SDARS Proceeding, those regulations, if any, shall govern 
Licensees' obligations to report sound recordings used pursuant to this 
part, except that Licensees also shall report to SoundExchange which 
channels are transmitted by their respective Providers for all past, 
current and future periods. In the event that the Copyright Royalty 
Judges do not adopt reports of use regulations in the SDARS Proceeding, 
then reports of use provided by XM Satellite Radio, Inc. (``XM'') and 
Sirius Satellite Radio, Inc. (``Sirius'') for their use of sound 
recordings on their preexisting satellite digital audio radio services 
(as defined in 17 U.S.C. 114(j)(10)) shall be deemed to satisfy XM's and 
Sirius' obligations to report sound recordings used pursuant to this 
part, and MTV Networks shall provide census reporting, retroactive to 
the inception of its Service.

[[Page 777]]



PART 384_RATES AND TERMS FOR THE MAKING OF EPHEMERAL RECORDINGS
BY BUSINESS ESTABLISHMENT SERVICES--Table of Contents




Sec.
384.1 General.
384.2 Definitions.
384.3 Royalty fees for Ephemeral Recordings.
384.4 Terms for making payment of royalty fees and statements of 
          account.
384.5 Confidential information.
384.6 Verification of royalty payments.
384.7 Verification of royalty distributions.
384.8 Unclaimed funds.

    Authority: 17 U.S.C. 112(e), 801(b)(1).

    Source: 73 FR 16199, Mar. 27, 2008, unless otherwise noted.



Sec. 384.1  General.

    (a) Scope. This part 384 establishes rates and terms of royalty 
payments for the making of Ephemeral Recordings by a Business 
Establishment Service, as defined in Sec. 384.2(a), in accordance with 
the provisions of 17 U.S.C. 112(e), during the period 2009-2013 (the 
``License Period'').
    (b) Legal compliance. Licensees relying upon the statutory licenses 
set forth in 17 U.S.C. 112 shall comply with the requirements of that 
section, the rates and terms of this part and any other applicable 
regulations.
    (c) Relationship to voluntary agreements. Notwithstanding the 
royalty rates and terms established in this part, the rates and terms of 
any license agreements entered into by Copyright Owners and services 
shall apply in lieu of the rates and terms of this part to the making of 
Ephemeral Recordings within the scope of such agreements.



Sec. 384.2  Definitions.

    For purposes of this part, the following definitions shall apply:
    Business Establishment Service means a service making transmissions 
of sound recordings under the limitation on exclusive rights specified 
by 17 U.S.C. 114(d)(1)(C)(iv).
    Collective is the collection and distribution organization that is 
designated by the Copyright Royalty Judges. For the License Period, the 
Collective is SoundExchange, Inc.
    Copyright Owner is a sound recording copyright owner who is entitled 
to receive royalty payments made under this part pursuant to the 
statutory license under 17 U.S.C. 112(e).
    Ephemeral Recording is a phonorecord created for the purpose of 
facilitating a transmission of a public performance of a sound recording 
under the limitations on exclusive rights specified by 17 U.S.C. 
114(d)(1)(C)(iv), and subject to the limitations specified in 17 U.S.C. 
112(e).
    Licensee is a Business Establishment Service that has obtained a 
compulsory license under 17 U.S.C. 112(e) and the implementing 
regulations therefor to make Ephemeral Recordings.
    Performers means the independent administrators identified in 17 
U.S.C. 114(g)(2)(B) and (C) and the parties identified in 17 U.S.C. 
114(g)(2)(D).
    Qualified Auditor is a certified public accountant.



Sec. 384.3  Royalty fees for ephemeral recordings.

    (a) Basic royalty rate. For the making of any number of Ephemeral 
Recordings in the operation of a service pursuant to the limitation on 
exclusive rights specified by 17 U.S.C. 114(d)(1)(C)(iv), a Licensee 
shall pay 10% of such Licensee's ``Gross Proceeds'' derived from the use 
in such service of musical programs that are attributable to copyrighted 
recordings. ``Gross Proceeds'' as used in this section means all fees 
and payments, including those made in kind, received from any source 
before, during or after the License Period that are derived from the use 
of copyrighted sound recordings during the License Period pursuant to 17 
U.S.C. 112(e) for the sole purpose of facilitating a transmission to the 
public of a performance of a sound recording under the limitation on 
exclusive rights specified in 17 U.S.C. 114(d)(1)(C)(iv). The 
attribution of Gross Proceeds to copyrighted recordings may be made on 
the basis of:
    (1) For classical programs, the proportion that the playing time of 
copyrighted classical recordings bears to the total playing time of all 
classical recordings in the program, and
    (2) For all other programs, the proportion that the number of 
copyrighted

[[Page 778]]

recordings bears to the total number of all recordings in the program.
    (b) Minimum fee. Each Licensee shall pay a minimum fee of $10,000 
for each calendar year in which it makes Ephemeral Recordings for use to 
facilitate transmissions under the limitation on exclusive rights 
specified by 17 U.S.C. 114(d)(1)(C)(iv), whether or not it does so for 
all or any part of the year. These minimum fees shall be nonrefundable, 
but shall be fully creditable to royalty payments due under paragraph 
(a) of this section for the same calendar year (but not any subsequent 
calendar year).
    (c) Other royalty rates and terms. This part 384 does not apply to 
persons or entities other than Licensees, or to Licensees to the extent 
that they make other types of ephemeral recordings beyond those set 
forth in paragraph (a) of this section. For ephemeral recordings other 
than those governed by paragraph (a) of this section, persons making 
such ephemeral recordings must pay royalties, to the extent (if at all) 
applicable, under 17 U.S.C. 112(e) or as prescribed by other law, 
regulation or agreement.



Sec. 384.4  Terms for making payment of royalty fees and statements of account.

    (a) Payment to Collective. A Licensee shall make the royalty 
payments due under Sec. 384.3 to the Collective.
    (b) Designation of the Collective. (1) Until such time as a new 
designation is made, SoundExchange, Inc., is designated as the 
Collective to receive statements of account and royalty payments from 
Licensees due under Sec. 384.3 and to distribute such royalty payments 
to each Copyright Owner, or their designated agents, entitled to receive 
royalties under 17 U.S.C. 112(e).
    (2) If SoundExchange, Inc. should dissolve or cease to be governed 
by a board consisting of equal numbers of representatives of Copyright 
Owners and Performers, then it shall be replaced by a successor 
Collective upon the fulfillment of the requirements set forth in 
paragraph (b)(2)(i) of this section.
    (i) By a majority vote of the nine Copyright Owner representatives 
and the nine Performer representatives on the SoundExchange board as of 
the last day preceding the condition precedent in paragraph (b)(2) of 
this section, such representatives shall file a petition with the 
Copyright Royalty Judges designating a successor to collect and 
distribute royalty payments to Copyright Owners entitled to receive 
royalties under 17 U.S.C. 112(e) that have themselves authorized such 
Collective.
    (ii) The Copyright Royalty Judges shall publish in the Federal 
Register within 30 days of receipt of a petition filed under paragraph 
(b)(2)(i) of this section an order designating the Collective named in 
such petition.
    (c) Monthly payments. A Licensee shall make any payments due under 
Sec. 384.3(a) by the 45th day after the end of each month for that 
month, except that if the Copyright Royalty Judges issue their final 
determination adopting these rates and terms after the commencement of 
the License Period, then payments due under Sec. 384.3(a) for the 
period from the beginning of the License Period through the last day of 
the month in which the Copyright Royalty Judges issue their final 
determination adopting these rates and terms shall be due 45 days after 
the end of such period. All monthly payments shall be rounded to the 
nearest cent.
    (d) Minimum payments. A Licensee shall make any payment due under 
Sec. 384.3(b) by January 31 of the applicable calendar year, except 
that:
    (1) If the Copyright Royalty Judges issue their final determination 
adopting these rates and terms after the commencement of the License 
Period, then payment due under Sec. 384.3(b) for 2009 shall be due 45 
days after the last day of the month in which these rates and terms are 
adopted by the Copyright Royalty Judges and published in the Federal 
Register; and
    (2) Payment for a Licensee that has not previously made Ephemeral 
Recordings pursuant to the license under 17 U.S.C. 112(e) shall be due 
by the 45th day after the end of the month in which the Licensee 
commences to do so.
    (e) Late payments. A Licensee shall pay a late fee of 0.75% per 
month, or the highest lawful rate, whichever is lower, for any payment 
received by the Collective after the due date. Late fees

[[Page 779]]

shall accrue from the due date until payment is received by the 
Collective.
    (f) Statements of account. For any part of the period beginning on 
the date the Copyright Royalty Judges issue their final determination 
adopting these rates and terms and ending on December 31, 2013, during 
which a Licensee operates a Business Establishment Service, by 45 days 
after the end of each month during the period, the Licensee shall 
deliver to the Collective a statement of account containing the 
information set forth in this paragraph (f) on a form prepared, and made 
available to Licensees, by the Collective. If a payment is owed for such 
month, the statement of account shall accompany the payment. A statement 
of account shall contain only the following information:
    (1) Such information as is necessary to calculate the accompanying 
royalty payment, or if no payment is owed for the month, to calculate 
any portion of the minimum fee recouped during the month;
    (2) The name, address, business title, telephone number, facsimile 
number, electronic mail address and other contact information of the 
individual or individuals to be contacted for information or questions 
concerning the content of the statement of account;
    (3) The handwritten signature of:
    (i) The owner of the Licensee or a duly authorized agent of the 
owner, if the Licensee is not a partnership or a corporation;
    (ii) A partner or delegee, if the Licensee is a partnership; or
    (iii) An officer of the corporation, if the Licensee is a 
corporation;
    (4) The printed or typewritten name of the person signing the 
statement of account;
    (5) The date of signature;
    (6) If the Licensee is a partnership or a corporation, the title or 
official position held in the partnership or corporation by the person 
signing the statement of account;
    (7) A certification of the capacity of the person signing; and
    (8) A statement to the following effect:

    I, the undersigned owner or agent of the Licensee, or officer or 
partner, if the Licensee is a corporation or partnership, have examined 
this statement of account and hereby state that it is true, accurate and 
complete to my knowledge after reasonable due diligence.

    (g) Distribution of payments. The Collective shall distribute 
royalty payments directly to Copyright Owners; Provided that the 
Collective shall only be responsible for making distributions to those 
Copyright Owners who provide the Collective with such information as is 
necessary to identify and pay the correct recipient of such payments. 
The Collective shall distribute royalty payments on a basis that values 
all Ephemeral Recordings by a Licensee equally based upon the 
information provided by the Licensee pursuant to the regulations 
governing reports of use of sound recordings by Licensees; Provided, 
however, that Copyright Owners that authorize the Collective may agree 
with the Collective to allocate their shares of the royalty payments 
made by any Licensee among themselves on an alternative basis. Copyright 
Owners entitled to receive payments may agree with the Collective upon 
payment protocols to be used by the Collective that provide for 
alternative arrangements for the payment of royalties.
    (h) Permitted deductions. The Collective may deduct from the 
payments made by Licensees under Sec. 384.3, prior to the distribution 
of such payments to any person or entity entitled thereto, all incurred 
costs permitted to be deducted under 17 U.S.C. 114(g)(3); Provided, 
however, that any party entitled to receive royalty payments under 17 
U.S.C. 112(e) may agree to permit the Collective to make any other 
deductions.
    (i) Retention of records. Books and records of a Licensee and of the 
Collective relating to the payment, collection, and distribution of 
royalty payments shall be kept for a period of not less than 3 years.



Sec. 384.5  Confidential information.

    (a) Definition. For purposes of this part, ``Confidential 
Information'' shall include the statements of account, any information 
contained therein, including the amount of royalty payments, and any 
information pertaining to the

[[Page 780]]

statements of account reasonably designated as confidential by the 
Licensee submitting the statement.
    (b) Exclusion. Confidential Information shall not include documents 
or information that at the time of delivery to the Collective are public 
knowledge. The Collective shall have the burden of proving that the 
disclosed information was public knowledge.
    (c) Use of Confidential Information. In no event shall the 
Collective or any other person or entity authorized to have access to 
Confidential Information pursuant to paragraph (d) of this section use 
any Confidential Information for any purpose other than royalty 
collection and distribution and activities directly related thereto.
    (d) Disclosure of Confidential Information. Access to Confidential 
Information shall be limited to:
    (1) Those employees, agents, attorneys, consultants and independent 
contractors of the Collective, subject to an appropriate confidentiality 
agreement, who are engaged in the collection and distribution of royalty 
payments hereunder and activities related thereto, who are not also 
employees or officers of a Copyright Owner or Performer, and who, for 
the purpose of performing such duties during the ordinary course of 
their work, require access to the records;
    (2) Board members of the Collective, and members of Collective 
committees whose primary functions are directly related to royalty 
collection and distribution, subject to an appropriate confidentiality 
agreement and for the sole purpose of performing their duties as board 
or committee members of the Collective, as applicable, provided that the 
sole confidential information that may be shared pursuant to this 
paragraph (d)(2) is confidential information contained in monthly 
statements of accounts provided pursuant to Sec. 384.4(f) that 
accompany royalty payments;
    (3) An independent and Qualified Auditor, subject to an appropriate 
confidentiality agreement, who is authorized to act on behalf of the 
Collective with respect to the verification of a Licensee's royalty 
payments pursuant to Sec. 384.6 or on behalf of a Copyright Owner with 
respect to the verification of royalty distributions pursuant to Sec. 
384.7;
    (4) Copyright owners whose works have been used under the statutory 
license set forth in 17 U.S.C. 112(e) by the Licensee whose Confidential 
Information is being supplied, or agents thereof, subject to an 
appropriate confidentiality agreement, provided that the sole 
confidential information that may be shared pursuant to paragraph (d)(4) 
of this section are monthly statements of account provided pursuant to 
Sec. 384.4(f) that accompany royalty payments;
    (5) In connection with future proceedings under 17 U.S.C. 112(e) 
before the Copyright Royalty Judges, and under an appropriate protective 
order, attorneys, consultants and other authorized agents of the parties 
to the proceedings or the courts; and
    (6) In connection with bona fide royalty disputes or claims that are 
the subject of the procedures under Sec. 384.6 or Sec. 384.7, and 
under an appropriate confidentiality agreement or protective order, the 
specific parties to such disputes or claims, their attorneys, 
consultants or other authorized agents, and/or arbitration panels or the 
courts to which disputes or claims may be submitted.
    (e) Safeguarding of Confidential Information. The Collective and any 
person or entity identified in paragraph (d) of this section shall 
implement procedures to safeguard all Confidential Information using a 
reasonable standard of care, but no less than the same degree of 
security used to protect Confidential Information or similarly sensitive 
information belonging to such Collective, person, or entity.



Sec. 384.6  Verification of royalty payments.

    (a) General. This section prescribes procedures by which the 
Collective may verify the royalty payments made by a Licensee.
    (b) Frequency of verification. The Collective may conduct a single 
audit of a Licensee, upon reasonable notice and during reasonable 
business hours, during any given calendar year, for any or all of the 
prior 3 calendar years, but no calendar year shall be subject to audit 
more than once.

[[Page 781]]

    (c) Notice of intent to audit. The Collective must file with the 
Copyright Royalty Judges a notice of intent to audit a particular 
Licensee, which shall, within 30 days of the filing of the notice, 
publish in the Federal Register a notice announcing such filing. The 
notification of intent to audit shall be served at the same time on the 
Licensee to be audited. Any such audit shall be conducted by an 
independent and Qualified Auditor identified in the notice, and shall be 
binding on all parties.
    (d) Acquisition and retention of records. The Licensee shall use 
commercially reasonable efforts to obtain or to provide access to any 
relevant books and records maintained by third parties for the purpose 
of the audit and retain such records for a period of not less than 3 
years. The Collective shall retain the report of the verification for a 
period of not less than 3 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 and Qualified Auditor, shall serve as an acceptable 
verification procedure for all parties with respect to the information 
that is within the scope of the audit.
    (f) Consultation. Before rendering a written report to the 
Collective, except where the auditor has a reasonable basis to suspect 
fraud and disclosure would, in the reasonable opinion of the auditor, 
prejudice the investigation of such suspected fraud, the auditor shall 
review the tentative written findings of the audit with the appropriate 
agent or employee of the Licensee being audited in order to remedy any 
factual errors and clarify any issues relating to the audit; Provided 
that the appropriate agent or employee of the Licensee reasonably 
cooperates with the auditor to remedy promptly any factual errors or 
clarify any issues raised by the audit.
    (g) Costs of the verification procedure. The Collective shall pay 
the cost of the verification procedure, unless it is finally determined 
that there was an underpayment of 10% or more, in which case the 
Licensee shall, in addition to paying the amount of any underpayment, 
bear the reasonable costs of the verification procedure.



Sec. 384.7  Verification of royalty distributions.

    (a) General. This section prescribes procedures by which any 
Copyright Owner may verify the royalty distributions made by the 
Collective; Provided, however, that nothing contained in this section 
shall apply to situations where a Copyright Owner and the Collective 
have agreed as to proper verification methods.
    (b) Frequency of verification. A Copyright Owner may conduct a 
single audit of the Collective upon reasonable notice and during 
reasonable business hours, during any given calendar year, for any or 
all of the prior 3 calendar years, but no calendar year shall be subject 
to audit more than once.
    (c) Notice of intent to audit. A Copyright Owner must file with the 
Copyright Royalty Judges a notice of intent to audit the Collective, 
which shall, within 30 days of the filing of the notice, publish in the 
Federal Register a notice announcing such filing. The notification of 
intent to audit shall be served at the same time on the Collective. Any 
such audit shall be conducted by an independent and Qualified Auditor 
identified in the notice, and shall be binding on all Copyright Owners.
    (d) Acquisition and retention of records. The Collective shall use 
commercially reasonable efforts to obtain or to provide access to any 
relevant books and records maintained by third parties for the purpose 
of the audit and retain such records for a period of not less than 3 
years. The Copyright Owner requesting the verification procedure shall 
retain the report of the verification for a period of not less than 3 
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 and Qualified Auditor, shall serve as an acceptable 
verification procedure for all parties with respect to the information 
that is within the scope of the audit.
    (f) Consultation. Before rendering a written report to a Copyright 
Owner,

[[Page 782]]

except where the auditor has a reasonable basis to suspect fraud and 
disclosure would, in the reasonable opinion of the auditor, prejudice 
the investigation of such suspected fraud, the auditor shall review the 
tentative written findings of the audit with the appropriate agent or 
employee of the Collective in order to remedy any factual errors and 
clarify any issues relating to the audit; Provided that the appropriate 
agent or employee of the Collective reasonably cooperates with the 
auditor to remedy promptly any factual errors or clarify any issues 
raised by the audit.
    (g) Costs of the verification procedure. The Copyright Owner 
requesting the verification procedure shall pay the cost of the 
procedure, unless it is finally determined that there was an 
underpayment of 10% or more, in which case the Collective shall, in 
addition to paying the amount of any underpayment, bear the reasonable 
costs of the verification procedure.



Sec. 384.8  Unclaimed funds.

    If a Collective is unable to identify or locate a Copyright Owner 
who is entitled to receive a royalty payment under this part, the 
Collective shall retain the required payment in a segregated trust 
account for a period of 3 years from the date of payment. No claim to 
such payment shall be valid after the expiration of the 3-year period. 
After the expiration of this period, the Collective may apply the 
unclaimed funds to offset any costs deductible under 17 U.S.C. 
114(g)(3). The foregoing shall apply notwithstanding the common law or 
statutes of any State.



PART 385_RATES AND TERMS FOR USE OF MUSICAL WORKS UNDER COMPULSORY
LICENSE FOR MAKING AND DISTRIBUTING OF PHYSICAL AND DIGITAL PHONORECORDS--

Table of Contents




 Subpart A_Physical Phonorecord Deliveries, Permanent Digital Downloads 
                              and Ringtones

Sec.
385.1 General.
385.2 Definitions.
385.3 Royalty rates for making and distributing phonorecords.
385.4 Late payments.

 Subpart B_Interactive Streaming, Other Incidental Digital Phonorecord 
                    Deliveries and Limited Downloads

385.10 General.
385.11 Definitions.
385.12 Calculation of royalty payments in general.
385.13 Minimum royalty rates and subscriber-based royalty floors for 
          specific types of services.
385.14 Promotional royalty rate.
385.15 [Reserved]
385.16 Reproduction and distribution rights covered.
385.17 Effect of rates.

    Authority: 17 U.S.C. 115, 801(b)(1), 804(b)(4).

    Source: 74 FR 4529, Jan. 26, 2009, unless otherwise noted.



 Subpart A_Physical Phonorecord Deliveries, Permanent Digital Downloads 
                              and Ringtones



Sec. 385.1  General.

    (a) Scope. This subpart establishes rates and terms of royalty 
payments for making and distributing phonorecords, including by means of 
digital phonorecord deliveries, in accordance with the provisions of 17 
U.S.C. 115.
    (b) Legal compliance. Licensees relying upon the compulsory license 
set forth in 17 U.S.C. 115 shall comply with the requirements of that 
section, the rates and terms of this subpart, and any other applicable 
regulations.
    (c) Relationship to voluntary agreements. Notwithstanding the 
royalty rates and terms established in this subpart, the rates and terms 
of any license agreements entered into by Copyright Owners and Licensees 
shall apply in lieu of the rates and terms of this subpart to use of 
musical works within the scope of such agreements.



Sec. 385.2  Definitions.

    For purposes of this subpart, the following definitions apply:
    Copyright owners are nondramatic musical work copyright owners who 
are entitled to royalty payments made under this subpart pursuant to the 
compulsory license under 17 U.S.C. 115.

[[Page 783]]

    Digital phonorecord delivery means a digital phonorecord delivery as 
defined in 17 U.S.C. 115(d).
    Licensee is a person or entity that has obtained a compulsory 
license under 17 U.S.C. 115, and the implementing regulations, to make 
and distribute phonorecords of a nondramatic musical work, including by 
means of a digital phonorecord delivery.
    Permanent digital download means a digital phonorecord delivery that 
is distributed in the form of a download that may be retained and played 
on a permanent basis.
    Ringtone means a phonorecord of a partial musical work distributed 
as a digital phonorecord delivery in a format to be made resident on a 
telecommunications device for use to announce the reception of an 
incoming telephone call or other communication or message or to alert 
the receiver to the fact that there is a communication or message.



Sec. 385.3  Royalty rates for making and distributing phonorecords.

    (a) Physical phonorecord deliveries and permanent digital downloads. 
For every physical phonorecord and permanent digital download made and 
distributed, the royalty rate payable for each work embodied in such 
phonorecord shall be either 9.1 cents or 1.75 cents per minute of 
playing time or fraction thereof, whichever amount is larger.
    (b) Ringtones. For every ringtone made and distributed, the royalty 
rate payable for each work embodied therein shall be 24 cents.



Sec. 385.4  Late payments.

    A Licensee shall pay a late fee of 1.5% per month, or the highest 
lawful rate, whichever is lower, for any payment received by the 
Copyright Owner after the due date set forth in ( 201.19(e)(7)(i) of 
this title. Late fees shall accrue from the due date until payment is 
received by the Copyright Owner.



 Subpart B_Interactive Streaming, Other Incidental Digital Phonorecord 
                    Deliveries and Limited Downloads



Sec. 385.10  General.

    (a) Scope. This subpart establishes rates and terms of royalty 
payments for interactive streams and limited downloads of musical works 
by subscription and nonsubscription digital music services in accordance 
with the provisions of 17 U.S.C. 115.
    (b) Legal compliance. A licensee that makes or authorizes 
interactive streams or limited downloads of musical works through 
subscription or nonsubscription digital music services pursuant to 17 
U.S.C. 115 shall comply with the requirements of that section, the rates 
and terms of this subpart, and any other applicable regulations.



Sec. 385.11  Definitions.

    For purposes of this subpart, the following definitions shall apply:
    Interactive stream means a stream of a sound recording of a musical 
work, where the performance of the sound recording by means of the 
stream is not exempt under 17 U.S.C. 114(d)(1) and does not in itself or 
as a result of a program in which it is included qualify for statutory 
licensing under 17 U.S.C. 114(d)(2).
    Licensee means a person that has obtained a compulsory license under 
17 U.S.C. 115 and its implementing regulations.
    Licensed activity means interactive streams or limited downloads of 
musical works, as applicable.
    Limited download means a digital transmission of a sound recording 
of a musical work to an end user, other than a stream, that results in a 
specifically identifiable reproduction of that sound recording that is 
only accessible for listening for--
    (1) An amount of time not to exceed 1 month from the time of the 
transmission (unless the service, in lieu of retransmitting the same 
sound recording as another limited download, separately and upon 
specific request of the end user made through a live network connection, 
reauthorizes use for another time period not to exceed 1

[[Page 784]]

month), or in the case of a subscription transmission, a period of time 
following the end of the applicable subscription no longer than a 
subscription renewal period or 3 months, whichever is shorter; or
    (2) A specified number of times not to exceed 12 (unless the 
service, in lieu of retransmitting the same sound recording as another 
limited download, separately and upon specific request of the end user 
made through a live network connection, reauthorizes use of another 
series of 12 or fewer plays), or in the case of a subscription 
transmission, 12 times after the end of the applicable subscription.
    (3) A limited download is a general digital phonorecord delivery 
under 17 U.S.C. 115(c)(3)(C) and (D).
    Offering means a service's offering of licensed activity that is 
subject to a particular rate set forth in Sec. 385.13(a) (e.g., a 
particular subscription plan available through the service).
    Promotional royalty rate means the statutory royalty rate of zero in 
the case of certain promotional interactive streams and certain 
promotional limited downloads, as provided in Sec. 385.14.
    Publication date means January 26, 2009.
    Record company means a person or entity that
    (1) Is a copyright owner of a sound recording of a musical work;
    (2) In the case of a sound recording of a musical work fixed before 
February 15, 1972, has rights to the sound recording, under the common 
law or statutes of any State, that are equivalent to the rights of a 
copyright owner of a sound recording of a musical work under title 17, 
United States Code;
    (3) Is an exclusive licensee of the rights to reproduce and 
distribute a sound recording of a musical work; or
    (4) Performs the functions of marketing and authorizing the 
distribution of a sound recording of a musical work under its own label, 
under the authority of the copyright owner of the sound recording.
    Relevant page means a page (including a Web page, screen or display) 
from which licensed activity offered by a service is directly available 
to end users, but only where the offering of licensed activity and 
content that directly relates to the offering of licensed activity 
(e.g., an image of the artist or artwork closely associated with such 
offering, artist or album information, reviews of such offering, credits 
and music player controls) comprises 75% or more of the space on that 
page, excluding any space occupied by advertising. A licensed activity 
is directly available to end users from a page if sound recordings of 
musical works can be accessed by end users for limited downloads or 
interactive streams from such page (in most cases this will be the page 
where the limited download or interactive stream takes place).
    Service means that entity (which may or may not be the licensee) 
that, with respect to the licensed activity,
    (1) Contracts with or has a direct relationship with end users in a 
case where a contract or relationship exists, or otherwise controls the 
content made available to end users;
    (2) Is able to report fully on service revenue from the provision of 
the licensed activity to the public, and to the extent applicable, 
verify service revenue through an audit; and
    (3) Is able to report fully on usage of musical works by the 
service, or procure such reporting, and to the extent applicable, verify 
usage through an audit.
    Service revenue. (1) Subject to paragraphs (2) through (5) of the 
definition of ``Service revenue,'' and subject to U.S. Generally 
Accepted Accounting Principles, service revenue shall mean the 
following:
    (i) All revenue recognized by the service from end users from the 
provision of licensed activity;
    (ii) All revenue recognized by the service by way of sponsorship and 
commissions as a result of the inclusion of third-party ``in-stream'' or 
``in-download'' advertising as part of licensed activity (i.e., 
advertising placed immediately at the start, end or during the actual 
delivery, by way of interactive streaming or limited downloads, as 
applicable, of a musical work); and
    (iii) All revenue recognized by the service, including by way of 
sponsorship and commissions, as a result of the placement of third-party 
advertising on a relevant page of the service

[[Page 785]]

or on any page that directly follows such relevant page leading up to 
and including the limited download or interactive streaming, as 
applicable, of a musical work; provided that, in the case where more 
than one service is actually available to end users from a relevant 
page, any advertising revenue shall be allocated between such services 
on the basis of the relative amounts of the page they occupy.
    (2) In each of the cases identified in paragraph (1) of the 
definition of ``Service revenue,'' such revenue shall, for the avoidance 
of doubt,
    (i) Include any such revenue recognized by the service, or if not 
recognized by the service, by any associate, affiliate, agent or 
representative of such service in lieu of its being recognized by the 
service;
    (ii) Include the value of any barter or other nonmonetary 
consideration;
    (iii) Not be reduced by credit card commissions or similar payment 
process charges; and
    (iv) Except as expressly set forth in this subpart, not be subject 
to any other deduction or set-off other than refunds to end users for 
licensed activity that they were unable to use due to technical faults 
in the licensed activity or other bona fide refunds or credits issued to 
end users in the ordinary course of business.
    (3) In each of the cases identified in paragraph (1) of the 
definition of ``Service revenue,'' such revenue shall, for the avoidance 
of doubt, exclude revenue derived solely in connection with services and 
activities other than licensed activity, provided that advertising or 
sponsorship revenue shall be treated as provided in paragraphs (2) and 
(4) of the definition of ``Service revenue.'' By way of example, the 
following kinds of revenue shall be excluded:
    (i) Revenue derived from non-music voice, content and text services;
    (ii) Revenue derived from other non-music products and services 
(including search services, sponsored searches and click-through 
commissions); and
    (iii) Revenue derived from music or music-related products and 
services that are not or do not include licensed activity.
    (4) For purposes of paragraph (1) of the definition of ``Service 
revenue,'' advertising or sponsorship revenue shall be reduced by the 
actual cost of obtaining such revenue, not to exceed 15%.
    (5) Where the licensed activity is provided to end users as part of 
the same transaction with one or more other products or services that 
are not a music service engaged in licensed activity, then the revenue 
deemed to be recognized from end users for the service for the purpose 
of the definition in paragraph (1) of the definition of ``Service 
revenue'' shall be the revenue recognized from end users for the bundle 
less the standalone published price for end users for each of the other 
component(s) of the bundle; provided that, if there is no such 
standalone published price for a component of the bundle, then the 
average standalone published price for end users for the most closely 
comparable product or service in the U.S. shall be used or, if more than 
one such comparable exists, the average of such standalone prices for 
such comparables shall be used. In connection with such a bundle, if a 
record company providing sound recording rights to the service
    (i) Recognizes revenue (in accordance with U.S. Generally Accepted 
Accounting Principles, and including for the avoidance of doubt barter 
or nonmonetary consideration) from a person or entity other than the 
service providing the licensed activity and;
    (ii) Such revenue is received, in the context of the transactions 
involved, as consideration for the ability to make interactive streams 
or limited downloads of sound recordings, then such revenue shall be 
added to the amounts expensed by the service for purposes of Sec. 
385.13(b). Where the service is the licensee, if the service provides 
the record company all information necessary for the record company to 
determine whether additional royalties are payable by the service 
hereunder as a result of revenue recognized from a person or entity 
other than the service as described in the immediately preceding 
sentence, then the record company shall provide such further information 
as necessary for the service to calculate the additional royalties

[[Page 786]]

and indemnify the service for such additional royalties. The sole 
obligation of the record company shall be to pay the licensee such 
additional royalties if actually payable as royalties hereunder; 
provided, however, that this shall not affect any otherwise existing 
right or remedy of the copyright owner nor diminish the licensee's 
obligations to the copyright owner.
    Stream means the digital transmission of a sound recording of a 
musical work to an end user--
    (1) To allow the end user to listen to the sound recording, while 
maintaining a live network connection to the transmitting service, 
substantially at the time of transmission, except to the extent that the 
sound recording remains accessible for future listening from a streaming 
cache reproduction;
    (2) Using technology that is designed such that the sound recording 
does not remain accessible for future listening, except to the extent 
that the sound recording remains accessible for future listening from a 
streaming cache reproduction; and
    (3) That is also subject to licensing as a public performance of the 
musical work.
    Streaming cache reproduction means a reproduction of a sound 
recording of a musical work made on a computer or other receiving device 
by a service solely for the purpose of permitting an end user who has 
previously received a stream of such sound recording to play such sound 
recording again from local storage on such computer or other device 
rather than by means of a transmission; provided that the user is only 
able to do so while maintaining a live network connection to the 
service, and such reproduction is encrypted or otherwise protected 
consistent with prevailing industry standards to prevent it from being 
played in any other manner or on any device other than the computer or 
other device on which it was originally made.
    Subscription service means a digital music service for which end 
users are required to pay a fee to access the service for defined 
subscription periods of 3 years or less (in contrast to, for example, a 
service where the basic charge to users is a payment per download or per 
play), whether such payment is made for access to the service on a 
standalone basis or as part of a bundle with one or more other products 
or services, and including any use of such a service on a trial basis 
without charge as described in Sec. 385.14(b).

[74 FR 4529, Jan. 26, 2009, as amended at 74 FR 6834, Feb. 11, 2009]



Sec. 385.12  Calculation of royalty payments in general.

    (a) Applicable royalty. Licensees that make or authorize licensed 
activity pursuant to 17 U.S.C. 115 shall pay royalties therefor that are 
calculated as provided in this section, subject to the minimum royalties 
and subscriber-based royalty floors for specific types of services 
provided in Sec. 385.13, except as provided for certain promotional 
uses in Sec. 385.14.
    (b) Rate calculation methodology. Royalty payments for licensed 
activity shall be calculated as provided in paragraph (b) of this 
section. If a service includes different offerings, royalties must be 
separately calculated with respect to each such offering. Uses subject 
to the promotional royalty rate shall be excluded from the calculation 
of royalties due, as further described in this section and the following 
Sec. 385.13.
    (1) Step 1: Calculate the All-In Royalty for the Service. For each 
accounting period, the all-in royalty for each offering of the service 
is the greater of
    (i) The applicable percentage of service revenue as set forth in 
paragraph (c) of this section (excluding any service revenue derived 
solely from licensed activity uses subject to the promotional royalty 
rate), and
    (ii) The minimum specified in Sec. 385.13 of the offering involved.
    (2) Step 2: Subtract Applicable Performance Royalties. From the 
amount determined in step 1 in paragraph (b)(1) of this section, for 
each offering of the service, subtract the total amount of royalties for 
public performance of musical works that has been or will be expensed by 
the service pursuant to public performance licenses in connection with 
uses of musical works through such offering during the accounting period 
that constitute licensed activity (other than licensed activity subject 
to the promotional royalty rate). While this amount may be the total of 
the

[[Page 787]]

service's payments for that offering for the accounting period under its 
agreements with performing rights societies as defined in 17 U.S.C. 101, 
it will be less than the total of such public performance payments if 
the service is also engaging in public performance of musical works that 
does not constitute licensed activity. In the latter case, the amount to 
be subtracted for public performance payments shall be the amount of 
such payments allocable to licensed activity uses (other than 
promotional royalty rate uses) through the relevant offering, as 
determined in relation to all uses of musical works for which the public 
performance payments are made for the accounting period. Such allocation 
shall be made on the basis of plays of musical works or, where per-play 
information is unavailable due to bona fide technical limitations as 
described in step 4 in paragraph (b)(4) of this section, using the same 
alternative methodology as provided in step 4.
    (3) Step 3: Determine the Payable Royalty Pool. This is the amount 
payable for the reproduction and distribution of all musical works used 
by the service by virtue of its licensed activity for a particular 
offering during the accounting period. This amount is the greater of
    (i) The result determined in step 2 in paragraph (b)(2) of this 
section, and
    (ii) The subscriber-based royalty floor resulting from the 
calculations described in Sec. 385.13.
    (4) Step 4: Calculate the Per-Work Royalty Allocation for Each 
Relevant Work. This is the amount payable for the reproduction and 
distribution of each musical work used by the service by virtue of its 
licensed activity through a particular offering during the accounting 
period. To determine this amount, the result determined in step 3 in 
paragraph (b)(3) of this section must be allocated to each musical work 
used through the offering. The allocation shall be accomplished by 
dividing the payable royalty pool determined in step 3 for such offering 
by the total number of plays of all musical works through such offering 
during the accounting period (other than promotional royalty rate plays) 
to yield a per-play allocation, and multiplying that result by the 
number of plays of each musical work (other than promotional royalty 
rate plays) through the offering during the accounting period. For 
purposes of determining the per-work royalty allocation in all 
calculations under this step 4 only (i.e., after the payable royalty 
pool has been determined), for sound recordings of musical works with a 
playing time of over 5 minutes, each play on or after October 1, 2010 
shall be counted as provided in paragraph (d) of this section. 
Notwithstanding the foregoing, if the service is not capable of tracking 
play information due to bona fide limitations of the available 
technology for services of that nature or of devices useable with the 
service, the per-work royalty allocation may instead be accomplished in 
a manner consistent with the methodology used by the service for making 
royalty payment allocations for the use of individual sound recordings.
    (c) Percentage of service revenue. The percentage of service revenue 
applicable under paragraph (b) of this section is 10.5%, except that 
such percentage shall be discounted by 2% (i.e., to 8.5%) in the case of 
licensed activity occurring on or before December 31, 2007.
    (d) Overtime adjustment. For licensed activity on or after October 
1, 2010, for purposes of the calculations in step 4 in paragraph (b)(4) 
of this section only, for sound recordings of musical works with a 
playing time of over 5 minutes, adjust the number of plays as follows:
    (1) 5:01 to 6:00 minutes--Each play = 1.2 plays
    (2) 6:01 to 7:00 minutes--Each play = 1.4 plays
    (3) 7:01 to 8:00 minutes--Each play = 1.6 plays
    (4) 8:01 to 9:00 minutes--Each play = 1.8 plays
    (5) 9:01 to 10:00 minutes--Each play = 2.0 plays
    (6) For playing times of greater than 10 minutes, continue to add .2 
for each additional minute or fraction thereof.
    (e) Accounting. The calculations required by paragraph (b) of this 
section shall be made in good faith and on the basis of the best 
knowledge, information and belief of the licensee at the time payment is 
due, and subject to

[[Page 788]]

the additional accounting and certification requirements of 17 U.S.C. 
115(c)(5) and Sec. 201.19 of this title. Without limitation, a 
licensee's statements of account shall set forth each step of its 
calculations with sufficient information to allow the copyright owner to 
assess the accuracy and manner in which the licensee determined the 
payable royalty pool and per-play allocations (including information 
sufficient to demonstrate whether and how a minimum royalty or 
subscriber-based royalty floor pursuant to Sec. 385.13 does or does not 
apply) and, for each offering reported, also indicate the type of 
licensed activity involved and the number of plays of each musical work 
(including an indication of any overtime adjustment applied) that is the 
basis of the per-work royalty allocation being paid.



Sec. 385.13  Minimum royalty rates and subscriber-based royalty floors
for specific types of services.

    (a) In general. The following minimum royalty rates and subscriber-
based royalty floors shall apply to the following types of licensed 
activity:
    (1) Standalone non-portable subscription--streaming only. Except as 
provided in paragraph (a)(4) of this section, in the case of a 
subscription service through which an end user can listen to sound 
recordings only in the form of interactive streams and only from a non-
portable device to which such streams are originally transmitted while 
the device has a live network connection, the minimum for use in step 1 
of Sec. 385.12(b)(1) is the lesser of subminimum II as described in 
paragraph (c) of this section for the accounting period and the 
aggregate amount of 50 cents per subscriber per month. The subscriber-
based royalty floor for use in step 3 of Sec. 385.12(b)(3) is the 
aggregate amount of 15 cents per subscriber per month.
    (2) Standalone non-portable subscription--mixed. Except as provided 
in paragraph (a)(4) of this section, in the case of a subscription 
service through which an end user can listen to sound recordings either 
in the form of interactive streams or limited downloads but only from a 
non-portable device to which such streams or downloads are originally 
transmitted, the minimum for use in step 1 of Sec. 385.12(b)(1) is the 
lesser of the subminimum I as described in paragraph (b) of this section 
for the accounting period and the aggregate amount of 50 cents per 
subscriber per month. The subscriber-based royalty floor for use in step 
3 of Sec. 385.12(b)(3) is the aggregate amount of 30 cents per 
subscriber per month.
    (3) Standalone portable subscription service. Except as provided in 
paragraph (a)(4) of this section, in the case of a subscription service 
through which an end user can listen to sound recordings in the form of 
interactive streams or limited downloads from a portable device, the 
minimum for use in step 1 of Sec. 385.12(b)(1) is the lesser of 
subminimum I as described in paragraph (b) of this section for the 
accounting period and the aggregate amount of 80 cents per subscriber 
per month. The subscriber-based royalty floor for use in step 3 of Sec. 
385.12(b)(3) is the aggregate amount of 50 cents per subscriber per 
month.
    (4) Bundled subscription services. In the case of a subscription 
service made available to end users with one or more other products or 
services as part of a single transaction without pricing for the 
subscription service separate from the product(s) or service(s) with 
which it is made available (e.g., a case in which a user can buy a 
portable device and one-year access to a subscription service for a 
single price), the minimum for use in step 1 of Sec. 385.12(b)(1) is 
subminimum I as described in paragraph (b) of this section for the 
accounting period. The subscriber-based royalty floor for use in step 3 
of Sec. 385.12(b)(3) is the aggregate amount of 25 cents per month for 
each end user who has made at least one play of a licensed work during 
such month (each such end user to be considered an ``active 
subscriber'').
    (5) Free nonsubscription/ad-supported services. In the case of a 
service offering licensed activity free of any charge to the end user, 
the minimum for use in step 1 of Sec. 385.12(b)(1) is subminimum II 
described in paragraph (c) of this section for the accounting period. 
There is no subscriber-based royalty floor for use in step 3 of Sec. 
385.12(b)(3).

[[Page 789]]

    (b) Computation of subminimum I. For purposes of paragraphs (a)(2), 
(3) and (4) of this section, and with reference to paragraph (5) of the 
definition of ``service revenue'' in Sec. 385.11 if applicable, 
subminimum I for an accounting period means the aggregate of the 
following with respect to all sound recordings of musical works used in 
the relevant offering of the service during the accounting period--
    (1) In cases in which a record company is the licensee under 17 
U.S.C. 115 and a third-party service has obtained from the record 
company the rights to make interactive streams or limited downloads of a 
sound recording together with the right to reproduce and distribute the 
musical work embodied therein, 17.36% of the total amount expensed by 
the service in accordance with U.S. Generally Accepted Accounting 
Principles, which for the avoidance of doubt shall include the value of 
any barter or other nonmonetary consideration provided by the service, 
for such rights for the accounting period, except that for licensed 
activity occurring on or before December 31, 2007, subminimum I for an 
accounting period shall be 14.53% of the amount expensed by the service 
for such rights for the accounting period.
    (2) In cases in which the relevant service is the licensee under 17 
U.S.C. 115 and the relevant service has obtained from a third-party 
record company the rights to make interactive streams or limited 
downloads of a sound recording without the right to reproduce and 
distribute the musical work embodied therein, 21% of the total amount 
expensed by the service in accordance with U.S. Generally Accepted 
Accounting Principles, which for the avoidance of doubt shall include 
the value of any barter or other nonmonetary consideration provided by 
the service, for such sound recording rights for the accounting period, 
except that for licensed activity occurring on or before December 31, 
2007, subminimum I for an accounting period shall be 17% of the amount 
expensed by the service for such sound recording rights for the 
accounting period.
    (c) Computation of subminimum II. For purposes of paragraphs(a)(1) 
and (5) of this section, subminimum II for an accounting period means 
the aggregate of the following with respect to all sound recordings of 
musical works used by the relevant service during the accounting 
period--
    (1) In cases in which a record company is the licensee under 17 
U.S.C. 115 and a third-party service has obtained from the record 
company the rights to make interactive streams and limited downloads of 
a sound recording together with the right to reproduce and distribute 
the musical work embodied therein, 18% of the total amount expensed by 
the service in accordance with U.S. Generally Accepted Accounting 
Principles, which for the avoidance of doubt shall include the value of 
any barter or other nonmonetary consideration provided by the service, 
for such rights for the accounting period, except that for licensed 
activity occurring on or before December 31, 2007, subminimum II for an 
accounting period shall be 14.53% of the amount expensed by the service 
for such rights for the accounting period.
    (2) In cases in which the relevant service is the licensee under 17 
U.S.C. 115 and the relevant service has obtained from a third-party 
record company the rights to make interactive streams or limited 
downloads of a sound recording without the right to reproduce and 
distribute the musical work embodied therein, 22% of the total amount 
expensed by the service in accordance with U.S. Generally Accepted 
Accounting Principles, which for the avoidance of doubt shall include 
the value of any barter or other nonmonetary consideration provided by 
the service, for such sound recording rights for the accounting period, 
except that for licensed activity occurring on or before December 31, 
2007, subminimum II for an accounting period shall be 17% of the amount 
expensed by the service for such sound recording rights for the 
accounting period.
    (d) Computation of subscriber-based royalty rates. For purposes of 
paragraph (a) of this section, to determine the minimum or subscriber-
based royalty floor, as applicable to any particular offering, the 
service shall for the relevant offering calculate its total number of 
subscriber-months for the accounting period, taking into account

[[Page 790]]

all end users who were subscribers for complete calendar months, 
prorating in the case of end users who were subscribers for only part of 
a calendar month, and deducting on a prorated basis for end users 
covered by a free trial period subject to the promotional royalty rate 
as described in Sec. 385.14(b)(2), except that in the case of a bundled 
subscription service, subscriber-months shall instead be determined with 
respect to active subscribers as defined in paragraph (a)(4) of this 
section. The product of the total number of subscriber-months for the 
accounting period and the specified number of cents per subscriber (or 
active subscriber, as the case may be) shall be used as the subscriber-
based component of the minimum or subscriber-based royalty floor, as 
applicable, for the accounting period.



Sec. 385.14  Promotional royalty rate.

    (a) General provisions. (1) This section establishes a royalty rate 
of zero in the case of certain promotional interactive streaming 
activities, and of certain promotional limited downloads offered in the 
context of a free trial period for a digital music subscription service 
under a license pursuant to 17 U.S.C. 115. Subject to the requirements 
of 17 U.S.C. 115 and the additional provisions of paragraphs (b) through 
(e) of this section, the promotional royalty rate shall apply to a 
musical work when a record company transmits or authorizes the 
transmission of interactive streams or limited downloads of a sound 
recording that embodies such musical work, only if--
    (i) The primary purpose of the record company in making or 
authorizing the interactive streams or limited downloads is to promote 
the sale or other paid use of sound recordings by the relevant artists, 
including such sound recording, through established retail channels or 
the paid use of one or more established retail music services through 
which the sound recording is available, and not to promote any other 
good or service;
    (ii) Either--
    (A) The sound recording (or a different version of the sound 
recording embodying the same musical work) is being lawfully distributed 
and offered to consumers through the established retail channels or 
services described in paragraph (a)(1)(i) of this section; or
    (B) In the case of a sound recording of a musical work being 
prepared for commercial release but not yet released, the record company 
has a good faith intention of lawfully distributing and offering to 
consumers the sound recording (or a different version of the sound 
recording embodying the same musical work) through the established 
retail channels or services described in paragraph (a)(1)(i) of this 
section within 90 days after the commencement of the first promotional 
use authorized under this section (and in fact does so, unless it can 
demonstrate that notwithstanding its bona fide intention, it 
unexpectedly did not meet the scheduled release date);
    (iii) In connection with authorizing the promotional interactive 
streams or limited downloads, the record company has obtained from the 
service it authorizes a written representation that--
    (A) In the case of a promotional use commencing on or after October 
1, 2010, except interactive streaming subject to paragraph (d) of this 
section, the service agrees to maintain for a period of no less than 5 
years from the conclusion of the promotional activity complete and 
accurate records of the relevant authorization and dates on which the 
promotion was conducted, and identifying each sound recording of a 
musical work made available through the promotion, the licensed activity 
involved, and the number of plays of such recording;
    (B) The service is in all material respects operating with 
appropriate license authority with respect to the musical works it is 
using for promotional and other purposes; and
    (C) The representation is signed by a person authorized to make the 
representation on behalf of the service;
    (iv) Upon receipt by the record company of written notice from the 
copyright owner of a musical work or agent of the copyright owner 
stating in good faith that a particular service is in a material manner 
operating without appropriate license authority from such copyright 
owner, the record company shall within 5 business days withdraw

[[Page 791]]

by written notice its authorization of such uses of such copyright 
owner's musical works under the promotional royalty rate by that 
service;
    (v) The interactive streams or limited downloads are offered free of 
any charge to the end user and, except in the case of interactive 
streaming subject to paragraph (d) of this section in the case of a free 
trial period for a digital music subscription service, no more than 5 
sound recordings at a time are streamed in response to any individual 
request of an end user;
    (vi) The interactive streams and limited downloads are offered in a 
manner such that the user is at the same time (e.g., on the same Web 
page) presented with a purchase opportunity for the relevant sound 
recording or an opportunity to subscribe to a paid service offering the 
sound recording, or a link to such a purchase or subscription 
opportunity, except--
    (A) In the case of interactive streaming of a sound recording being 
prepared for commercial release but not yet released, certain mobile 
applications or other circumstances in which the foregoing is 
impracticable in view of the current state of the relevant technology; 
and
    (B) In the case of a free trial period for a digital music 
subscription service, if end users are periodically offered an 
opportunity to subscribe to the service during such free trial period; 
and
    (vii) The interactive streams and limited downloads are not provided 
in a manner that is likely to cause mistake, to confuse or to deceive, 
reasonable end users as to the endorsement or association of the author 
of the musical work with any product, service or activity other than the 
sale or paid use of sound recordings or paid use of a music service 
through which sound recordings are available. Without limiting the 
foregoing, upon receipt of written notice from the copyright owner of a 
musical work or agent of the copyright owner stating in good faith that 
a particular use of such work under this section violates the limitation 
set forth in this paragraph (a)(1)(vii), the record company shall 
promptly cease such use of that work, and within 5 business days 
withdraw by written notice its authorization of such use by all relevant 
third parties it has authorized under this section.
    (2) To rely upon the promotional royalty rate, a record company 
making or authorizing interactive streams or limited downloads shall 
keep complete and accurate contemporaneous written records of such uses, 
including the sound recordings and musical works involved, the artists, 
the release dates of the sound recordings, a brief statement of the 
promotional activities authorized, the identity of the service or 
services where each promotion is authorized (including the Internet 
address if applicable), the beginning and end date of each period of 
promotional activity authorized, and the representation required by 
paragraph (a)(1)(iii) of this section; provided that, in the case of 
trial subscription uses, such records shall instead consist of the 
contractual terms that bear upon promotional uses by the particular 
digital music subscription services it authorizes; and further provided 
that, if the record company itself is conducting the promotion, it shall 
also maintain any additional records described in paragraph 
(a)(1)(iii)(A) of this section. The records required by this paragraph 
(a)(2) shall be maintained for no less time than the record company 
maintains records of usage of royalty-bearing uses involving the same 
type of licensed activity in the ordinary course of business, but in no 
event for less than 5 years from the conclusion of the promotional 
activity to which they pertain. If the copyright owner of a musical work 
or its agent requests a copy of the information to be maintained under 
this paragraph (a)(2) with respect to a specific promotion or relating 
to a particular sound recording of a musical work, the record company 
shall provide complete and accurate documentation within 10 business 
days, except for any information required under paragraph (a)(1)(iii)(A) 
of this section, which shall be provided within 20 business days, and 
provided that if the copyright owner or agent requests information 
concerning a large volume of promotions or sound recordings, the record 
company shall have a reasonable time, in view of the amount of 
information requested, to respond to any

[[Page 792]]

request of such copyright owner or agent. If the record company does not 
provide required information within the required time, and upon receipt 
of written notice citing such failure does not provide such information 
within a further 10 business days, the uses will be considered not to be 
subject to the promotional royalty rate and the record company (but not 
any third-party service it has authorized) shall be liable for any 
payment due for such uses; provided, however, that all rights and 
remedies of the copyright owner with respect to unauthorized uses shall 
be preserved.
    (3) If the copyright owner of a musical work or its agent requests a 
copy of the information to be maintained under paragraph (a)(1)(iii)(A) 
of this section by a service authorized by a record company with respect 
to a specific promotion, the service shall provide complete and accurate 
documentation within 20 business days, provided that if the copyright 
owner or agent requests information concerning a large volume of 
promotions or sound recordings, the service shall have a reasonable 
time, in view of the amount of information requested, to respond to any 
request of such copyright owner or agent. If the service does not 
provide required information within the required time, and upon receipt 
of written notice citing such failure does not provide such information 
within a further 10 business days, the uses will be considered not to be 
subject to the promotional royalty rate and the service (but not the 
record company) will be liable for any payment due for such uses; 
provided, however, that all rights and remedies of the copyright owner 
with respect to unauthorized uses shall be preserved.
    (4) The promotional royalty rate is exclusively for audio-only 
interactive streaming and limited downloads of musical works subject to 
licensing under 17 U.S.C. 115. The promotional royalty rate does not 
apply to any other use under 17 U.S.C. 115; nor does it apply to public 
performances, audiovisual works, lyrics or other uses outside the scope 
of 17 U.S.C. 115. Without limitation, uses subject to licensing under 17 
U.S.C. 115 that do not qualify for the promotional royalty rate 
(including without limitation interactive streaming or limited downloads 
of a musical work beyond the time limitations applicable to the 
promotional royalty rate) require payment of applicable royalties. This 
section is based on an understanding of industry practices and market 
conditions at the time of its development, among other things. The terms 
of this section shall be subject to de novo review and consideration (or 
elimination altogether) in future proceedings before the Copyright 
Royalty Judges. Nothing in this section shall be interpreted or 
construed in such a manner as to nullify or diminish any limitation, 
requirement or obligation of 17 U.S.C. 115 or other protection for 
musical works afforded by the Copyright Act, 17 U.S.C. 101 et seq.
    (b) Interactive streaming and limited downloads of full-length 
musical works through third-party services. In addition to those of 
paragraph (a) of this section, the provisions of this paragraph (b) 
apply to interactive streaming, and limited downloads (in the context of 
a free trial period for a digital music subscription service), 
authorized by record companies under the promotional royalty rate 
through third-party services (including Web sites) that is not subject 
to paragraphs (c) or (d) of this section. Such interactive streams and 
limited downloads may be made or authorized by a record company under 
the promotional royalty rate only if--
    (1) No cash, other monetary payment, barter or other consideration 
for making or authorizing the relevant interactive streams or limited 
downloads is received by the record company, its parent company, any 
entity owned in whole or in part by or under common ownership with the 
record company, or any other person or entity acting on behalf of or in 
lieu of the record company, except for in-kind promotional consideration 
used to promote the sale or paid use of sound recordings or the paid use 
of music services through which sound recordings are available;
    (2) In the case of interactive streaming and limited downloads 
offered in the context of a free trial period for a digital music 
subscription service, the

[[Page 793]]

free trial period does not exceed 30 consecutive days per subscriber per 
two-year period; and
    (3) In contexts other than a free trial period for a digital music 
subscription service, interactive streaming subject to paragraph (b) of 
this section of a particular sound recording is authorized by the record 
company on no more than 60 days total for all services (i.e., 
interactive streaming under paragraph (b) of this section of a 
particular sound recording may be authorized on no more than a total of 
60 days, which need not be consecutive, and on any one such day, 
interactive streams may be offered on one or more services); provided, 
however, that an additional 60 days shall be available each time the 
sound recording is re-released by the record company in a remastered 
form or as a part of a compilation with a different set of sound 
recordings than the original release or any prior compilation including 
such sound recording.
    (4) In the event that a record company authorizes promotional uses 
in excess of the time limitations of paragraph (b) of this section, the 
record company, and not the third-party service it has authorized, shall 
be liable for any payment due for such uses; provided, however, that all 
rights and remedies of the copyright owner with respect to unauthorized 
uses shall be preserved. In the event that a third-party service exceeds 
the scope of any authorization by a record company, the service, and not 
the record company, shall be liable for any payment due for such uses; 
provided, however, that all rights and remedies of the copyright owner 
with respect to unauthorized uses shall be preserved.
    (c) Interactive streaming of full-length musical works through 
record company and artist services. In addition to those of paragraph 
(a) of this section, the provisions of this paragraph (c) apply to 
interactive streaming conducted or authorized by record companies under 
the promotional royalty rate through a service (e.g., a Web site) 
directly owned or operated by the record company, or directly owned or 
operated by a recording artist under the authorization of the record 
company, and that is not subject to paragraph (d) of this section. For 
the avoidance of doubt and without limitation, an artist page or site on 
a third-party service (e.g., a social networking service) shall not be 
considered a service operated by the record company or artist. Such 
interactive streams may be made or authorized by a record company under 
the promotional royalty rate only if--
    (1) The interactive streaming subject to this paragraph (c) of a 
particular sound recording is offered or authorized by the record 
company on no more than 90 days total for all services (i.e., 
interactive streaming under this paragraph (c) of a particular sound 
recording may be authorized on no more than a total of 90 days, which 
need not be consecutive, and on any such day, interactive streams may be 
offered on one or more services operated by the record company or 
artist, subject to the provisions of paragraph (b)(2) of this section); 
provided, however, that an additional 90 days shall be available each 
time the sound recording is re-released by the record company in a 
remastered form or as part of a compilation with a different set of 
sound recordings than prior compilations that include that sound 
recording;
    (2) In the case of interactive streaming through a service devoted 
to one featured artist, the interactive streams subject to this 
paragraph (c) of this section of a particular sound recording are made 
or authorized by the record company on no more than one official artist 
site per artist and are recordings of that artist; and
    (3) In the case of interactive streaming through a service that is 
not limited to a single featured artist, all interactive streaming on 
such service (whether eligible for the promotional royalty rate or not) 
is limited to sound recordings of a single record company and its 
affiliates and the service would not reasonably be considered to be a 
meaningful substitute for a paid music service.
    (d) Interactive streaming of clips. In addition to those in 
paragraph (a) of this section, the provisions of this paragraph (d) 
apply to interactive streaming conducted or authorized by record 
companies under the promotional royalty rate of segments of sound 
recordings of musical works with a playing

[[Page 794]]

time that does not exceed the greater of:
    (1) 30 seconds, or
    (2) 10% of the playing time of the complete sound recording, but in 
no event in excess of 60 seconds. Such interactive streams may be made 
or authorized by a record company under the promotional royalty rate 
without any of the temporal limitations set forth in paragraphs (b) and 
(c) of this section (but subject to the other conditions of paragraphs 
(b) and (c) of this section, as applicable). For clarity, this paragraph 
(d) is strictly limited to the uses described herein and shall not be 
construed as permitting the creation or use of an excerpt of a musical 
work in violation of 17 U.S.C. 106(2) or 115(a)(2) or any other right of 
a musical work owner.

[74 FR 4529, Jan. 26, 2009, as amended at 74 FR 6834, Feb. 11, 2009]



Sec. 385.15  [Reserved]



Sec. 385.16  Reproduction and distribution rights covered.

    A compulsory license under 17 U.S.C. 115 extends to all reproduction 
and distribution rights that may be necessary for the provision of the 
licensed activity, solely for the purpose of providing such licensed 
activity (and no other purpose).



Sec. 385.17  Effect of rates.

    In any future proceedings under 17 U.S.C. 115(c)(3)(C) and (D), the 
royalty rates payable for a compulsory license shall be established de 
novo.

[[Page 795]]



  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..................         797
404             Licensing of government-owned inventions....         813

[[Page 797]]



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 798]]

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 Sec. Sec. 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 Sec. Sec. 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. Sec. 401.5 
or 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 799]]

    (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 800]]

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.
    (5) If any part of the contract may require the contractor to 
perform work on behalf of the Government at a Government laboratory 
under a Cooperative Research and Development Agreement (CRADA) pursuant 
to the statutory authority of 15 U.S.C. 3710a, the contracting officer 
may include alternate paragraph (b) in the basic patent rights clause in 
Sec. 401.14. Because the use of the alternate is based on a 
determination of exceptional circumstances under Sec. 401.3(a)(2), the 
contracting officer shall ensure that the appeal procedures of Sec. 
401.4 are satisfied whenever the alternate is used.
    (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

[[Page 801]]

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 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.

[52 FR 8554, Mar. 18, 1987, as amended at 69 FR 17301, Apr. 2, 2004]



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

[[Page 802]]

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 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:


[[Page 803]]


    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 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

[[Page 804]]

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 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

[[Page 805]]

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 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.

[[Page 806]]



Sec. 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.



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

[[Page 807]]

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.
    (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

[[Page 808]]

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 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))

[[Page 809]]

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 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

[[Page 810]]

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 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).

[[Page 811]]

    (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 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

[[Page 812]]

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 
requirements 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, 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).
    (c) As prescribed in Sec. 401.3, replace (b) of the basic clause 
with the following paragraphs (1) and (2):

    (b) Allocation of principal rights. (1) The Contractor may retain 
the entire right, title, and interest throughout the world to each 
subject invention subject to the provisions of this clause, including 
(2) below, 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.
    (2) If the Contractor performs services at a Government owned and 
operated laboratory or at a Government owned and contractor operated 
laboratory directed by the Government to fulfill the Government's 
obligations under a Cooperative Research and Development Agreement 
(CRADA) authorized by 15 U.S.C. 3710a, the Government may require the 
Contractor to negotiate an agreement with the CRADA collaborating party 
or parties regarding the allocation of rights to any subject invention 
the Contractor makes, solely or jointly, under the CRADA. The agreement 
shall be negotiated prior to the Contractor undertaking the CRADA work 
or, with the permission of the Government, upon the identification of a 
subject invention. In the absence of such an agreement, the Contractor 
agrees to grant the collaborating party or parties an option for a 
license in its inventions of the same scope and terms set forth in the 
CRADA for inventions made by the Government.

[52 FR 8554, Mar. 18, 1987, as amended at 69 FR 17301, Apr. 2, 2004]



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

[[Page 813]]

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 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, co-exclusive and partially exclusive licenses.
404.8 Application for a license.
404.9 [Reserved]
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. 207-209.

[[Page 814]]


    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. This part 
does not affect licenses which:
    (a) Were in effect prior to April 7, 2006;
    (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, including interferences; or
    (d) Are otherwise authorized by law or treaty, including 35 U.S.C. 
202(e), 35 U.S.C. 207(a)(3) and 15 U.S.C. 3710a, which also may 
authorize the assignment of inventions. Although licenses on inventions 
made under a cooperative research and development agreement (CRADA) are 
not subject to this regulation, agencies are encouraged to apply the 
same policies and use similar terms when appropriate. Similarly, this 
should be done for licenses granted under inventions where the agency 
has acquired rights pursuant to 35 U.S.C. 207(a)(3).

[71 FR 11512, Mar. 8, 2006]



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) Government owned invention means an invention, whether or not 
covered by a patent or patent application, or discovery which is or may 
be patentable or otherwise protectable under Title 35, the Plant Variety 
Protection Act (7 U.S.C. 2321 et seq.) or foreign patent law, owned in 
whole or in part by 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, 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.

[50 FR 9802, Mar. 12, 1985, as amended at 71 FR 11512, Mar. 8, 2006]



Sec. 404.4  Authority to grant licenses.

    Federally owned inventions shall be made available for licensing as 
deemed appropriate in the public interest and each agency shall notify 
the public of these available inventions. The agencies having custody of 
these inventions may grant nonexclusive, co-exclusive, partially 
exclusive, or exclusive licenses thereto under this part. Licenses may 
be royalty-free or for royalties or other consideration. They may be for 
all or less than all fields of use or in specified geographic areas and 
may include a release for past infringement. Any license shall not 
confer on any person immunity from the antitrust laws or from a charge 
of patent misuse, and the exercise of such 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.

[71 FR 11512, Mar. 8, 2006]



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 satisfactory plan for

[[Page 815]]

development or marketing of the invention, or both, and with information 
about the applicant's capability to fulfill the plan. The plan for a 
non-exclusive research license may be limited to describing the research 
phase of development.
    (2) A license granting rights to use or sell under a Government 
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. However, this condition may be 
waived or modified if reasonable but unsuccessful efforts have been made 
to grant licenses to potential licensees that would be likely to 
manufacture substantially in the United States or if domestic 
manufacture is not commercially feasible.
    (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) Any patent license may grant the licensee the right of 
enforcement of the licensed patent without joining the Federal agency as 
a party as determined appropriate in the public interest.
    (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 license may provide the licensee 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 
with any modifications thereto, shall be promptly 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 reasonable time as specified 
in the license, and 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 but 
only to the extent necessary to enable the agency to determine 
compliance with the terms of the license.
    (7) Where an agreement is obtained pursuant to Sec. 404.5(a)(2) 
that any products embodying the invention or produced through the use of 
the invention will be manufactured substantially in the United States, 
the license shall recite such an agreement.
    (8) The license shall provide for the right of the Federal agency to 
terminate the license, in whole or in part, if the agency determines 
that:
    (i) The licensee is not executing its commitment to achieve 
practical application of the invention, including commitments contained 
in any plan submitted in support of 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) Termination 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;
    (iv) The licensee commits a substantial breach of a covenant or 
provision contained in the license agreement, including the requirement 
in Sec. 404.5(a)(2); or
    (v) The licensee has been found by a court of competent jurisdiction 
to have

[[Page 816]]

violated the Federal antitrust laws in connection with its performance 
under the license agreement.
    (9) The license may be modified or terminated, consistent with this 
part, upon mutual agreement of the Federal agency and the licensee.
    (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.

[50 FR 9802, Mar. 12, 1985, as amended at 71 FR 11512, Mar. 8, 2006]



Sec. 404.6  Nonexclusive licenses.

    Nonexclusive licenses may be granted under Government owned 
inventions without a public notice of a prospective license.

[71 FR 11513, Mar. 8, 2006]



Sec. 404.7  Exclusive, co-exclusive and partially exclusive licenses.

    (a)(1) Exclusive, co-exclusive or partially exclusive domestic 
licenses may be granted on Government owned inventions, 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 at least a 
15-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 public will be served by the granting of the license, in 
view of the applicant's intentions, plans and ability to bring the 
invention to the point of practical application or otherwise promote the 
invention's utilization by the public.
    (B) Exclusive, co-exclusive or partially exclusive licensing is a 
reasonable and necessary incentive to call forth the investment capital 
and expenditures needed to bring the invention to practical application 
or otherwise promote the invention's utilization by the public; and
    (C) The proposed scope of exclusivity is not greater than reasonably 
necessary to provide the incentive for bringing the invention to 
practical application, as proposed by the applicant, or otherwise to 
promote the invention's utilization by the public;
    (iii) The Federal agency has not determined that the grant of such a 
license will tend substantially to lessen competition or create or 
maintain a violation of the Federal 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 capability of the firms and as having equal or greater 
likelihood as those from other applicants to bring the invention to 
practical application within a reasonable time.
    (2) In addition to the provisions of Sec. 404.5, the following 
terms and conditions apply to domestic exclusive, co-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 or 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, co-exclusive or partially exclusive 
license.
    (b)(1) Exclusive, co-exclusive or partially exclusive foreign 
licenses may be granted on a Government owned invention provided that;
    (i) Notice of the prospective license, identifying the invention and 
prospective licensee, has been published in the

[[Page 817]]

Federal Register, providing opportunity for filing written objections 
within at least a 15-day period and following consideration of such 
objections received during the period;
    (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 a 
license will tend substantially to lessen competition or create or 
maintain a violation of the Federal antitrust laws.
    (2) In addition to the provisions of Sec. 404.5, the following 
terms and conditions apply to foreign exclusive, co-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, co-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, co-exclusive or partially exclusive licenses.

[71 FR 11513, Mar. 8, 2006]



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;
    (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  [Reserved]



Sec. 404.10  Modification and termination of licenses.

    Before modifying or terminating a license, other than by mutual 
agreement, the Federal agency shall furnish

[[Page 818]]

the licensee and any sublicensee of record a written notice of intention 
to modify or terminate the license, and the licensee 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.

[71 FR 11514, Mar. 8, 2006]



Sec. 404.11  Appeals.

    (a) 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, modification, or 
termination of a license:
    (1) A person whose application for a license has been denied;
    (2) A licensee whose license has been modified or terminated, in 
whole or in part; or
    (3) 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.
    (b) An appeal by a licensee under paragraph (a)(2) of this section 
may include a hearing, upon the request of the licensee, to address a 
dispute over any relevant fact. The parties may agree to Alternate 
Dispute Resolution in lieu of an appeal.

[71 FR 11514, Mar. 8, 2006]



Sec. 404.12  Protection and administration of inventions.

    A Federal agency may take any suitable and necessary steps to 
protect and administer rights to Government owned inventions, either 
directly or through contract.

[71 FR 11514, Mar. 8, 2006]



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, requires that any plan 
submitted pursuant to Sec. 404.8(h) and any report required by Sec. 
404.5(b)(6) shall be treated as commercial or 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.

[71 FR 11514, Mar. 8, 2006]

[[Page 819]]



    CHAPTER V--UNDER SECRETARY FOR TECHNOLOGY, DEPARTMENT OF COMMERCE




  --------------------------------------------------------------------
Part                                                                Page
501             Uniform patent policy for rights in 
                    inventions made by government employees.         821

[[Page 821]]



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 Sec. Sec. 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 822]]



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 823]]

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 Sec. Sec. 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 824]]

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 Sec. Sec. 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 Sec. Sec. 
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 825]]



                              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.

  Table of CFR Titles and Chapters
  Alphabetical List of Agencies Appearing in the CFR
  List of CFR Sections Affected

[[Page 827]]



                    Table of CFR Titles and Chapters




                      (Revised as of July 1, 2009)

                      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--Grants and Agreements

            Subtitle A--Office of Management and Budget Guidance 
                for Grants and Agreements
         I  Office of Management and Budget Governmentwide 
                Guidance for Grants and Agreements (Parts 100--
                199)
        II  Office of Management and Budget Circulars and Guidance 
                (200--299)
            Subtitle B--Federal Agency Regulations for Grants and 
                Agreements
       III  Department of Health and Human Services (Parts 300-- 
                399)
        VI  Department of State (Parts 600--699)
      VIII  Department of Veterans Affairs (Parts 800--899)
        IX  Department of Energy (Parts 900--999)
        XI  Department of Defense (Parts 1100--1199)
       XII  Department of Transportation (Parts 1200--1299)
      XIII  Department of Commerce (Parts 1300--1399)
       XIV  Department of the Interior (Parts 1400--1499)
        XV  Environmental Protection Agency (Parts 1500--1599)
     XVIII  National Aeronautics and Space Administration (Parts 
                1880--1899)
      XXII  Corporation for National and Community Service (Parts 
                2200--2299)
     XXIII  Social Security Administration (Parts 2300--2399)
      XXIV  Housing and Urban Development (Parts 2400--2499)
       XXV  National Science Foundation (Parts 2500--2599)
      XXVI  National Archives and Records Administration (Parts 
                2600--2699)
     XXVII  Small Business Administration (Parts 2700--2799)
    XXVIII  Department of Justice (Parts 2800--2899)
      XXXI  Institute of Museum and Library Services (Parts 3100--
                3199)
     XXXII  National Endowment for the Arts (Parts 3200--3299)
    XXXIII  National Endowment for the Humanities (Parts 3300--
                3399)

[[Page 828]]

      XXXV  Export-Import Bank of the United States (Parts 3500--
                3599)
    XXXVII  Peace Corps (Parts 3700--3799)

                        Title 3--The President

         I  Executive Office of the President (Parts 100--199)

                           Title 4--Accounts

         I  Government Accountability Office (Parts 1--99)

                   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)
         V  The International Organizations Employees Loyalty 
                Board (Parts 1500--1599)
        VI  Federal Retirement Thrift Investment Board (Parts 
                1600--1699)
      VIII  Office of Special Counsel (Parts 1800--1899)
        IX  Appalachian Regional Commission (Parts 1900--1999)
        XI  Armed Forces Retirement Home (Parts 2100--2199)
       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)
      XXII  Federal Deposit Insurance Corporation (Parts 3200--
                3299)
     XXIII  Department of Energy (Parts 3300--3399)
      XXIV  Federal Energy Regulatory Commission (Parts 3400--
                3499)
       XXV  Department of the Interior (Parts 3500--3599)
      XXVI  Department of Defense (Parts 3600-- 3699)
    XXVIII  Department of Justice (Parts 3800--3899)
      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 (Parts 4300--
                4399)
      XXXV  Office of Personnel Management (Parts 4500--4599)
        XL  Interstate Commerce Commission (Parts 5000--5099)
       XLI  Commodity Futures Trading Commission (Parts 5100--
                5199)
      XLII  Department of Labor (Parts 5200--5299)
     XLIII  National Science Foundation (Parts 5300--5399)
       XLV  Department of Health and Human Services (Parts 5500--
                5599)
      XLVI  Postal Rate Commission (Parts 5600--5699)

[[Page 829]]

     XLVII  Federal Trade Commission (Parts 5700--5799)
    XLVIII  Nuclear Regulatory Commission (Parts 5800--5899)
         L  Department of Transportation (Parts 6000--6099)
       LII  Export-Import Bank of the United States (Parts 6200--
                6299)
      LIII  Department of Education (Parts 6300--6399)
       LIV  Environmental Protection Agency (Parts 6400--6499)
        LV  National Endowment for the Arts (Parts 6500--6599)
       LVI  National Endowment for the Humanities (Parts 6600--
                6699)
      LVII  General Services Administration (Parts 6700--6799)
     LVIII  Board of Governors of the Federal Reserve System 
                (Parts 6800--6899)
       LIX  National Aeronautics and Space Administration (Parts 
                6900--6999)
        LX  United States Postal Service (Parts 7000--7099)
       LXI  National Labor Relations Board (Parts 7100--7199)
      LXII  Equal Employment Opportunity Commission (Parts 7200--
                7299)
     LXIII  Inter-American Foundation (Parts 7300--7399)
      LXIV  Merit Systems Protection Board (Parts 7400--7499)
       LXV  Department of Housing and Urban Development (Parts 
                7500--7599)
      LXVI  National Archives and Records Administration (Parts 
                7600--7699)
     LXVII  Institute of Museum and Library Services (Parts 7700--
                7799)
    LXVIII  Commission on Civil Rights (Parts 7800--7899)
      LXIX  Tennessee Valley Authority (Parts 7900--7999)
      LXXI  Consumer Product Safety Commission (Parts 8100--8199)
    LXXIII  Department of Agriculture (Parts 8300--8399)
     LXXIV  Federal Mine Safety and Health Review Commission 
                (Parts 8400--8499)
     LXXVI  Federal Retirement Thrift Investment Board (Parts 
                8600--8699)
    LXXVII  Office of Management and Budget (Parts 8700--8799)
     XCVII  Department of Homeland Security Human Resources 
                Management System (Department of Homeland 
                Security--Office of Personnel Management) (Parts 
                9700--9799)
      XCIX  Department of Defense Human Resources Management and 
                Labor Relations Systems (Department of Defense--
                Office of Personnel Management) (Parts 9900--9999)

                      Title 6--Domestic Security

         I  Department of Homeland Security, Office of the 
                Secretary (Parts 0--99)

                         Title 7--Agriculture

            Subtitle A--Office of the Secretary of Agriculture 
                (Parts 0--26)
            Subtitle B--Regulations of the Department of 
                Agriculture

[[Page 830]]

         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)
       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)
        XX  Local Television Loan Guarantee Board (Parts 2200--
                2299)
      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 Policy and New Uses, 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 831]]

    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)
         L  Rural Business-Cooperative Service, Rurual Housing 
                Service, and Rural Utilities Service, Department 
                of Agriculture (Parts 5000--5099)

                    Title 8--Aliens and Nationality

         I  Department of Homeland Security (Immigration and 
                Naturalization) (Parts 1--499)
         V  Executive Office for Immigration Review, Department of 
                Justice (Parts 1000--1399)

                 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)
      XIII  Nuclear Waste Technical Review Board (Parts 1303--
                1399)
      XVII  Defense Nuclear Facilities Safety Board (Parts 1700--
                1799)
     XVIII  Northeast Interstate Low-Level Radioactive Waste 
                Commission (Parts 1800--1899)

[[Page 832]]

                      Title 11--Federal Elections

         I  Federal Election Commission (Parts 1--9099)
        II  Election Assistance Commission (Parts9400--9499)

                      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)
        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)
       XII  Federal Housing Finance Agency (Parts 1200--1299)
       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)
        IV  Emergency Steel Guarantee Loan Board (Parts 400--499)
         V  Emergency Oil and Gas Guaranteed Loan Board (Parts 
                500--599)

                    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)
        VI  Air Transportation System Stabilization (Parts 1300--
                1399)

[[Page 833]]

                 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 Industry and Security, Department of 
                Commerce (Parts 700--799)
      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)

[[Page 834]]

      VIII  Susquehanna River Basin Commission (Parts 800--899)
      XIII  Tennessee Valley Authority (Parts 1300--1399)

                       Title 19--Customs Duties

         I  Bureau of Customs and Border Protection, Department of 
                Homeland Security; Department of the Treasury 
                (Parts 0--199)
        II  United States International Trade Commission (Parts 
                200--299)
       III  International Trade Administration, Department of 
                Commerce (Parts 300--399)
        IV  Bureau of Immigration and Customs Enforcement, 
                Department of Homeland Security (Parts 400--599)

                     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 Service, 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  Broadcasting Board of Governors (Parts 500--599)
       VII  Overseas Private Investment Corporation (Parts 700--
                799)
        IX  Foreign Service Grievance Board (Parts 900--999)

[[Page 835]]

         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  Millenium Challenge Corporation (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)

                          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 
                HousingCommissioner, 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 Housing and 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)

[[Page 836]]

      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--1699)
         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)

                           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 (Parts 1000--1199)
       VII  Office of the Special Trustee for American Indians, 
                Department of the Interior (Parts 1200--1299)

                      Title 26--Internal Revenue

         I  Internal Revenue Service, Department of the Treasury 
                (Parts 1--899)

           Title 27--Alcohol, Tobacco Products and Firearms

         I  Alcohol and Tobacco Tax and Trade Bureau, Department 
                of the Treasury (Parts 1--399)
        II  Bureau of Alcohol, Tobacco, Firearms, and Explosives, 
                Department of Justice (Parts 400--699)

                   Title 28--Judicial Administration

         I  Department of Justice (Parts 0--299)

[[Page 837]]

       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)
      VIII  Court Services and Offender Supervision Agency for the 
                District of Columbia (Parts 800--899)
        IX  National Crime Prevention and Privacy Compact Council 
                (Parts 900--999)
        XI  Department of Justice and Department of State (Parts 
                1100--1199)

                            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)
       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  Employee Benefits Security 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)

[[Page 838]]

       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)
        IX  Federal Claims Collection Standards (Department of the 
                Treasury--Department of Justice) (Parts 900--999)

                      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)
       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)
      XVII  Office of the Director of National Intelligence (Parts 
                1700--1799)
     XVIII  National Counterintelligence Center (Parts 1800--1899)
       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)

               Title 33--Navigation and Navigable Waters

         I  Coast Guard, Department of Homeland Security (Parts 
                1--199)
        II  Corps of Engineers, Department of the Army (Parts 
                200--399)

[[Page 839]]

        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 Improvmeent, 
                Department of Education [Reserved]
        XI  National Institute for Literacy (Parts 1100--1199)
            Subtitle C--Regulations Relating to Education
       XII  National Council on Disability (Parts 1200--1299)

                          Title 35 [Reserved]

             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)
        VI  [Reserved]
       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)
        XV  Oklahoma City National Memorial Trust (Parts 1500--
                1599)
       XVI  Morris K. Udall Scholarship and Excellence in National 
                Environmental Policy Foundation (Parts 1600--1699)

[[Page 840]]

             Title 37--Patents, Trademarks, and Copyrights

         I  United States Patent and Trademark Office, Department 
                of Commerce (Parts 1--199)
        II  Copyright Office, Library of Congress (Parts 200--299)
       III  Copyright Royalty Board, Library of Congress (Parts 
                301--399)
        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 Regulatory Commission (Parts 3000--3099)

                  Title 40--Protection of Environment

         I  Environmental Protection Agency (Parts 1--1099)
        IV  Environmental Protection Agency and Department of 
                Justice (Parts 1400--1499)
         V  Council on Environmental Quality (Parts 1500--1599)
        VI  Chemical Safety and Hazard Investigation Board (Parts 
                1600--1699)
       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
        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 Service, Department of 
                Labor (Parts 61-1--61-999)
            Chapters 62--100 [Reserved]
            Subtitle C--Federal Property Management Regulations 
                System
       101  Federal Property Management Regulations (Parts 101-1--
                101-99)
       102  Federal Management Regulation (Parts 102-1--102-299)
            Chapters 103--104 [Reserved]
       105  General Services Administration (Parts 105-1--105-999)

[[Page 841]]

       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)
            Chapters 129--200 [Reserved]
            Subtitle D--Other Provisions Relating to Property 
                Management [Reserved]
            Subtitle E--Federal Information Resources Management 
                Regulations System [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 (Part 303-1--303-99)
       304  Payment of Travel Expenses from a Non-Federal Source 
                (Parts 304-1--304-99)

                        Title 42--Public Health

         I  Public Health Service, Department of Health and Human 
                Services (Parts 1--199)
        IV  Centers for Medicare & Medicaid Services, 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)
       III  Utah Reclamation Mitigation and Conservation 
                Commission (Parts 10000--10010)

             Title 44--Emergency Management and Assistance

         I  Federal Emergency Management Agency, Department of 
                Homeland Security (Parts 0--399)
        IV  Department of Commerce and Department of 
                Transportation (Parts 400--499)

[[Page 842]]

                       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) 
                [Reserved]
         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)
     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)

                          Title 46--Shipping

         I  Coast Guard, Department of Homeland Security (Parts 
                1--199)
        II  Maritime Administration, Department of Transportation 
                (Parts 200--399)
       III  Coast Guard (Great Lakes Pilotage), Department of 
                Homeland Security (Parts 400--499)
        IV  Federal Maritime Commission (Parts 500--599)

                      Title 47--Telecommunication

         I  Federal Communications Commission (Parts 0--199)

[[Page 843]]

        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  Defense Acquisition Regulations System, 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  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  Broadcasting Board of Governors (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)
        30  Department of Homeland Security, Homeland Security 
                Acquisition Regulation (HSAR) (Parts 3000--3099)
        34  Department of Education Acquisition Regulation (Parts 
                3400--3499)
        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 [Reserved]

[[Page 844]]

        54  Defense Logistics Agency, Department of Defense (Parts 
                5400--5499)
        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  Pipeline and Hazardous Materials Safety 
                Administration, Department of Transportation 
                (Parts 100--199)
        II  Federal Railroad Administration, Department of 
                Transportation (Parts 200--299)
       III  Federal Motor Carrier Safety Administration, 
                Department of Transportation (Parts 300--399)
        IV  Coast Guard, Department of Homeland Security (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  Research and Innovative Technology Administration, 
                Department of Transportation [Reserved]
       XII  Transportation Security Administration, Department of 
                Homeland Security (Parts 1500--1699)

                   Title 50--Wildlife and Fisheries

         I  United States Fish and Wildlife Service, Department of 
                the Interior (Parts 1--199)
        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)

[[Page 845]]

         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 847]]





           Alphabetical List of Agencies Appearing in the CFR




                      (Revised as of July 1, 2009)

                                                  CFR Title, Subtitle or 
                     Agency                               Chapter

Administrative Committee of the Federal Register  1, I
Advanced Research Projects Agency                 32, I
Advisory Council on Historic Preservation         36, VIII
African Development Foundation                    22, XV
  Federal Acquisition Regulation                  48, 57
Agency for International Development              22, II
  Federal Acquisition Regulation                  48, 7
Agricultural Marketing Service                    7, I, IX, X, XI
Agricultural Research Service                     7, V
Agriculture Department                            5, LXXIII
  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                               2, IX; 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, L
  Rural Development Administration                7, XLII
  Rural Housing Service                           7, XVIII, XXXV, L
  Rural Telephone Bank                            7, XVI
  Rural Utilities Service                         7, XVII, XVIII, XLII, L
  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
Air Transportation Stabilization Board            14, VI
Alcohol and Tobacco Tax and Trade Bureau          27, I
Alcohol, Tobacco, Firearms, and Explosives,       27, II
     Bureau of
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 848]]

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
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
Broadcasting Board of Governors                   22, V
  Federal Acquisition Regulation                  48, 19
Census Bureau                                     15, I
Centers for Medicare & Medicaid Services          42, IV
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
Civil Rights, Commission on                       5, LXVIII; 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
  Federal Acquisition Regulation                  48, 13
  Fishery Conservation and Management             50, VI
  Foreign-Trade Zones Board                       15, IV
  Industry and Security, Bureau of                15, VII
  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, United States      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
Copyright Royalty Board                           37, III
Corporation for National and Community Service    2, XXII; 45, XII, XXV
Cost Accounting Standards Board                   48, 99
Council on Environmental Quality                  40, V
Court Services and Offender Supervision Agency    28, VIII
     for the District of Columbia
Customs and Border Protection Bureau              19, I
Defense Contract Audit Agency                     32, I
Defense Department                                5, XXVI; 32, Subtitle A; 
                                                  40, VII

[[Page 849]]

  Advanced Research Projects Agency               32, I
  Air Force Department                            32, VII
  Army Department                                 32, V; 33, II; 36, III, 
                                                  48, 51
  Defense Acquisition Regulations System          48, 2
  Defense Intelligence Agency                     32, I
  Defense Logistics Agency                        32, I, XII; 48, 54
  Engineers, Corps of                             33, II; 36, III
  Human Resources Management and Labor Relations  5, XCIX
       Systems
  National Imagery and Mapping Agency             32, I
  Navy Department                                 32, VI; 48, 52
  Secretary of Defense, Office of                 2, XI; 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
District of Columbia, Court Services and          28, VIII
     Offender Supervision Agency for the
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
Election Assistance Commission                    11, II
Elementary and Secondary Education, Office of     34, II
Emergency Oil and Gas Guaranteed Loan Board       13, V
Emergency Steel Guarantee Loan Board              13, IV
Employee Benefits Security Administration         29, XXV
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                   2, XV; 5, LIV; 40, I, IV, 
                                                  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                5, III, LXXVII; 14, VI; 
                                                  48, 99

[[Page 850]]

  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-Import Bank of the United States           2, XXXV; 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
Federal Aviation Administration                   14, I
  Commercial Space Transportation                 14, III
Federal Claims Collection Standards               31, IX
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 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
Federal Home Loan Mortgage Corporation            1, IV
Federal Housing Enterprise Oversight Office       12, XVII
Federal Housing Finance Agency                    12, XII
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 Management Regulation                     41, 102
Federal Maritime Commission                       46, IV
Federal Mediation and Conciliation Service        29, XII
Federal Mine Safety and Health Review Commission  5, LXXIV; 29, XXVII
Federal Motor Carrier Safety Administration       49, III
Federal Prison Industries, Inc.                   28, III
Federal Procurement Policy Office                 48, 99
Federal Property Management Regulations           41, 101
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

[[Page 851]]

General Services Administration                   5, LVII; 41, 105
  Contract Appeals, Board of                      48, 61
  Federal Acquisition Regulation                  48, 5
  Federal Management Regulation                   41, 102
  Federal Property Management Regulations         41, 101
  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
  Temporary Duty (TDY) Travel Allowances          41, 301
Geological Survey                                 30, IV
Government Accountability Office                  4, I
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          2, III; 5, XLV; 45, 
                                                  Subtitle A,
  Centers for Medicare & Medicaid Services        42, IV
  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
  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
Homeland Security, Department of                  6, I
  Coast Guard                                     33, I; 46, I; 49, IV
  Coast Guard (Great Lakes Pilotage)              46, III
  Customs and Border Protection Bureau            19, I
  Federal Emergency Management Agency             44, I
  Human Resources Management and Labor Relations  5, XCVII
       Systems
  Immigration and Customs Enforcement Bureau      19, IV
  Immigration and Naturalization                  8, I
  Transportation Security Administration          49, XII
HOPE for Homeowners Program, Board of Directors   24, XXIV
     of
Housing and Urban Development, Department of      2, XXIV; 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
  Housing, Office of, and Multifamily Housing     24, IV
       Assistance Restructuring, Office of
  Inspector General, Office of                    24, XII
  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
Housing, Office of, and Multifamily Housing       24, IV
     Assistance Restructuring, Office of
Human Development Services, Office of             45, XIII
Immigration and Customs Enforcement Bureau        19, IV
Immigration and Naturalization                    8, I
Immigration Review, Executive Office for          8, V
Independent Counsel, Office of                    28, VII

[[Page 852]]

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
Industry and Security, Bureau of                  15, VII
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
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
  National Indian Gaming Commission               25, III
  National Park Service                           36, I
  Reclamation, Bureau of                          43, I
  Secretary of the Interior, Office of            2, XIV; 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 Fishing and Related Activities      50, III
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
Investment Security, Office of                    31, VIII
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                                2, XXVII; 5, XXVIII; 28, 
                                                  I, XI; 40, IV
  Alcohol, Tobacco, Firearms, and Explosives,     27, II
       Bureau of
  Drug Enforcement Administration                 21, II
  Federal Acquisition Regulation                  48, 28
  Federal Claims Collection Standards             31, IX
  Federal Prison Industries, Inc.                 28, III
  Foreign Claims Settlement Commission of the     45, V
       United States
  Immigration Review, Executive Office for        8, V
  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
  Employee Benefits Security Administration       29, XXV
  Employees' Compensation Appeals Board           20, IV
  Employment and Training Administration          20, V

[[Page 853]]

  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
  Public Contracts                                41, 50
  Secretary of Labor, Office of                   29, Subtitle A
  Veterans' Employment and Training Service,      41, 61; 20, IX
       Office of 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
  Copyright Royalty Board                         37, III
Local Television Loan Guarantee Board             7, XX
Management and Budget, Office of                  5, III, LXXVII; 14, VI; 
                                                  48, 99
Marine Mammal Commission                          50, V
Maritime Administration                           46, II
Merit Systems Protection Board                    5, II, LXIV
Micronesian Status Negotiations, Office for       32, XXVII
Millenium Challenge Corporation                   22, XIII
Mine Safety and Health Administration             30, I
Minerals Management Service                       30, II
Minority Business Development Agency              15, XIV
Miscellaneous Agencies                            1, IV
Monetary Offices                                  31, I
Morris K. Udall Scholarship and Excellence in     36, XVI
     National Environmental Policy Foundation
Museum and Library Services, Institute of         2, XXXI
National Aeronautics and Space Administration     2, XVIII; 5, LIX; 14, V
  Federal Acquisition Regulation                  48, 18
National Agricultural Library                     7, XLI
National Agricultural Statistics Service          7, XXXVI
National and Community Service, Corporation for   45, XII, XXV
National Archives and Records Administration      2, XXVI; 5, LXVI; 36, XII
  Information Security Oversight Office           32, XX
National Capital Planning Commission              1, IV
National Commission for Employment Policy         1, IV
National Commission on Libraries and Information  45, XVII
     Science
National Council on Disability                    34, XII
National Counterintelligence Center               32, XVIII
National Credit Union Administration              12, VII
National Crime Prevention and Privacy Compact     28, IX
     Council
National Drug Control Policy, Office of           21, III
National Endowment for the Arts                   2, XXXII
National Endowment for the Humanities             2, XXXIII
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 Intelligence, Office of Director of      32, XVII
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

[[Page 854]]

National Science Foundation                       2, XXV; 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
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 Interstate Low-Level Radioactive Waste  10, XVIII
     Commission
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
Oklahoma City National Memorial Trust             36, XV
Operations Office                                 7, XXVIII
Overseas Private Investment Corporation           5, XXXIII; 22, VII
Patent and Trademark Office, United States        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 Benefit Guaranty Corporation              29, XL
Personnel Management, Office of                   5, I, XXXV; 45, VIII
  Human Resources Management and Labor Relations  5, XCIX
       Systems, Department of Defense
  Human Resources Management and Labor Relations  5, XCVII
       Systems, Department of Homeland Security
  Federal Acquisition Regulation                  48, 17
  Federal Employees Group Life Insurance Federal  48, 21
       Acquisition Regulation
  Federal Employees Health Benefits Acquisition   48, 16
       Regulation
Pipeline and Hazardous Materials Safety           49, I
     Administration
Postal Regulatory 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 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
Relocation Allowances                             41, 302
Research and Innovative Technology                49, XI
     Administration
Rural Business-Cooperative Service                7, XVIII, XLII, L
Rural Development Administration                  7, XLII
Rural Housing Service                             7, XVIII, XXXV, L
Rural Telephone Bank                              7, XVI
Rural Utilities Service                           7, XVII, XVIII, XLII, L
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
[[Page 855]]

Secret Service                                    31, IV
Securities and Exchange Commission                17, II
Selective Service System                          32, XVI
Small Business Administration                     2, XXVII; 13, I
Smithsonian Institution                           36, V
Social Security Administration                    2, XXIII; 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                                  2, VI; 22, I; 28, XI
  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                     2, XII; 5, L
  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
  Federal Motor Carrier Safety Administration     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
  Pipeline and Hazardous Materials Safety         49, I
       Administration
  Saint Lawrence Seaway Development Corporation   33, IV
  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 Security Administration            49, XII
Transportation Statistics Bureau                  49, XI
Travel Allowances, Temporary Duty (TDY)           41, 301
Treasury Department                               5, XXI; 12, XV; 17, IV; 
                                                  31, IX
  Alcohol and Tobacco Tax and Trade Bureau        27, I
  Community Development Financial Institutions    12, XVIII
       Fund
  Comptroller of the Currency                     12, I
  Customs and Border Protection Bureau            19, I
  Engraving and Printing, Bureau of               31, VI
  Federal Acquisition Regulation                  48, 10
  Federal Claims Collection Standards             31, IX
  Federal Law Enforcement Training Center         31, VII
  Fiscal Service                                  31, II
  Foreign Assets Control, Office of               31, V
  Internal Revenue Service                        26, I
  Investment Security, 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                       2, VIII; 38, I
  Federal Acquisition Regulation                  48, 8

[[Page 856]]

Veterans' Employment and Training Service,        41, 61; 20, IX
     Office of the 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 857]]



List of CFR Sections Affected



All changes in this volume of the Code of Federal Regulations that were 
made by documents published in the Federal Register since January 1, 
2001, 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, 2001, see the ``List of CFR Sections 
Affected, 1949-1963, 1964-1972, 1973-1985, and 1986-2000'' published in 
11 separate volumes.

                                  2001

37 CFR
                                                                   66 FR
                                                                    Page
Chapter I
1.1 (a) introductory text and (d) revised..........................39448
1.14 (i)(2) revised................................................67094
1.16 (a), (b), (d), (f) through (i) and (k) revised................39449
1.17 (a)(2) through (5), (b) through (e), (m), (r), (s) and (t) 
        revised....................................................39449
    (h) revised....................................................47389
1.18 (a), (b) and (c) revised......................................39449
1.20 (e), (f) and (g) revised......................................39449
1.21 (o) removed...................................................39450
1.55 (a)(1)(i) and (c) revised.....................................67094
1.78 (a) revised...................................................67095
1.311 (a) revised..................................................67096
1.136 (c) revised..................................................21092
1.434 (d) revised..................................................16006
    (d)(2) revised.................................................67096
1.451 (b) revised..................................................16006
1.471 (c) added....................................................16006
1.484 (g) added....................................................16006
1.491 Revised......................................................45777
1.492 (a)(1), (2), (3), (5), (b) and (d) revised...................39450
1.494 (c)(2) revised...............................................16006
    (c)(2) corrected...............................................28054
1.495 (c)(2) revised...............................................16006
    (c)(2) corrected...............................................28054
1.497 (a), (c) and (d) revised; (f) and (g) added..................16006
    (a)(1) corrected...............................................28054
1.809 (b) and (c) revised; (e) added...............................21092
6.1 Amended........................................................48339
10 Policy statement................................................44526
104 Added..........................................................47390
Chapter II
201.1 (a) and (b) revised..........................................34372
201.5 (a)(1) introductory text, (i)(A) through (D) and (ii) 
        amended....................................................34372
201.7 (c)(1) amended...............................................34372
201.8 Added; interim...............................................62944
    Corrected......................................................63920
201.10 (b)(1)(v)(B), (d)(2), (4), (e)(1) and (f)(3) amended........34373
201.15 Removed.....................................................34373
201.17 (b)(1) and (2) amended......................................34373
201.19 (e)(4)(ii) and (f)(6)(ii)(A) amended........................34373
201.20 (b)(1) amended..............................................34373
201.22 (c)(1)(i) amended...........................................34373
201.24 (b) amended.................................................34373
201.31 (a) amended.................................................34373
201.39 (b) and (f)(3) amended......................................34373
202 Authority citation revised.....................................37149
202.2 (a)(1), (3) and (b)(6)(iii) amended..........................34373
    Corrected......................................................40322
202.3 (b)(5)(i)(F), (ii), (iii), (v)(A), (6)(i)(E), (7)(i)(C) and 
        (8)(i) amended.............................................34373
    (b)(9) redesignated as (b)(10); new (b)(9) added...............37149
202.17 (a), (c), (e)(1) and (f)(1) amended.........................24267
    (f)(3)(i)(C) amended...........................................34373
    Corrected......................................................40322
202.19 (b)(1)(iii) amended.........................................34373
202.20 (c)(2)(xx) added............................................37150
202.22 (b)(2) and (c)(1) amended...................................34373
203.1 Amended......................................................34373

[[Page 858]]

203.3 (a) amended..................................................34373
203.4 (d) amended..................................................34373
203.6 (a) and (h) amended..........................................34373
204.8 (a) and (b) amended..........................................34373
205 Added..........................................................19094
205.1 Amended......................................................34373
211.2 Amended......................................................34373
211.4 (a) amended..................................................34373
    (f) removed; (g) redesignated as (f)...........................34374
252.3 Revised......................................................29703
253.5 (c)(1) through (3) revised...................................59699
257.3 Revised......................................................29704
Chapter IV
404 Authority citation revised.....................................34546
404.7 (a)(1)(i) and (b)(1)(i) revised..............................34546

                                  2002

37 CFR
                                                                   67 FR
                                                                    Page
Chapter I
1.4 (d)(1)(iii)(A) revised.........................................79522
1.8 (a)(2)(i)(F) revised.............................................523
1.10 (a) revised...................................................36101
1.14 (d)(4) revised..................................................523
1.16 (a), (g) and (h) revised......................................70849
1.17 (a)(2) through (5), (e), (m), (r), (s) and (t) revised........70849
1.18 (a), (b) and (c) revised......................................70849
1.19 (a)(1) and (b)(1) revised.....................................70849
1.20 (e), (f) and (g) revised......................................70849
1.25 (b) revised.....................................................523
1.41 (a)(4) revised..................................................523
1.48 (f)(1) revised..................................................523
1.103 (d)(1) revised.................................................523
1.417 Revised........................................................523
1.480 (c) removed; (d) redesignated as (c)...........................523
.....................................................................523
1.492 (e) and (f) revised............................................523
    (a)(1), (2), (3) and (5) revised...............................70850
1.494 Removed........................................................523
1.497 (a) introductory text, (c), (d) and (f) revised................524
2.6 (a)(1), (b)(1) and (2) revised.................................70850
    (b)(8) revised.................................................79522
2.18 Revised.......................................................79522
2.24 Revised.......................................................79522
2.33 (b)(2) revised................................................79522
2.34 (a)(2)(i), (3)(i), (ii),(iii), and (4)(ii) revised............79522
2.119 (d) revised..................................................79523
2.161 (h) removed; (g)(2) revised..................................79523
2.183 (d) removed; (e) and (f) redesignated as new (d) and (e).....79523
3.31 (a)(7) removed; (a)(8) redesignated as new (a)(7).............79523
3.61 Revised.......................................................79523
Chapter II
201 Authority citation revised.....................................69136
201.3 (c) and (d) revised..........................................38005
201.4 (a)(1)(v) amended............................................69136
201.10 (b)(1)(i) through (v) redesignated as (b)(1)(ii) through 
        (v) and (vii); introductory text, new (b)(1)(i) and (vi) 
        added; new (b)(1)(vii) amended; (c)(2), (d)(2), (4) and 
        (e) revised................................................69136
    (b)(2), (c)(3) and (4) redesignated as (b)(3), (c)(4) and (5); 
Heading, (b)(1) introductory text, (v), (vii)(B), ne (3), (c)(1), 
(2), (d)(2) introductory text, (e)(1) and (2) revised; 
introductory text and (d)(4) amended; (b)(2) and (c)(3) added; 
interim............................................................78176
201.38 (e) and (f) amended.........................................38005
202.3 (b)(7)(i)(E) revised.........................................10329
212.2 (a), (b), (d)(1) and (e) through (h) amended.................38005
212.5 (c)(4) amended...............................................38005
252 Waiver.........................................................21176
253.1 Amended......................................................77171
253.3 Removed......................................................77171
253.4 Introductory text, (c) and (d) amended; (a) revised..........77171
253.5 (c)(1) and (2) revised.......................................71105
    (c)(3) amended.................................................77171
253.6 (c) revised..................................................77172
253.7 (a) amended; (b) revised.....................................77172
253.8 (b)(1) and (f)(1) revised....................................77172
253.10 (a)j amended................................................77173
257 Waiver.........................................................21176
259 Waiver..........................................................5213
    Policy statement...............................................71477
261 Added..........................................................45272

                                  2003

37 CFR
                                                                   68 FR
                                                                    Page
Chapter I
1 Nomenclature change..............................................14335
    Heading corrected..............................................22772
1.1 Revised........................................................14335
    (a)(2)(i) corrected............................................19371
    Heading, (a) introductory text and (4) revised; (a)(2) and (f) 
footnote removed...................................................48287

[[Page 859]]

    (c) revised....................................................71006
1.3 Revised; eff. 7-30-03..........................................38624
1.4 (a)(1), (2), (b), (d)(1) introductory text and (ii) revised; 
        (d)(1)(iii) removed........................................48287
1.5 Heading revised; (c) removed...................................48288
1.6 (b) removed....................................................14336
    (a)(4), (d)(7) and (8) removed; (d) introductory text, (3) and 
(4) revised........................................................48288
1.8 (a)(2)(ii) removed.............................................48288
1.9 (j) added......................................................14336
    (k) added; eff. 7-30-03........................................38624
1.10 (a)(1) revised................................................48288
1.12 (a) revised...................................................48288
1.13 Revised.......................................................48288
    (b) revised....................................................71006
1.14 Revised; eff. 7-30-03.........................................38624
    (g)(1)(ii) and (3) revised.....................................59886
    (g)(1)(ii) corrected; (g)(5) revised...........................67805
    (g)(2) revised.................................................71006
1.15 Removed.......................................................14336
1.16 (a), (b), (d) and (f) through (i) revised.....................41534
1.17 (h) revised; eff. 7-30-03.....................................38626
    (a)(2) through (5), (b) through (e), (m), (r), (s) and (t) 
revised............................................................41534
1.18 (a), (b) and (c) revised......................................41534
1.20 (e), (f) and (g) revised......................................41534
1.22 Revised.......................................................48288
1.25 (c) added.....................................................14336
1.26 (a) revised...................................................48289
1.51 (a) revised...................................................14336
1.52 (a) and (b) revised; eff. 7-30-03.............................38627
1.53 (d)(9) revised................................................14336
    (d)(1), (3) and (e)(1) revised; eff. date 7-14-03..............32380
1.59 Revised; eff. 7-30-03.........................................38628
1.71 (f) added; eff. 7-30-03.......................................38628
1.72 (b) revised; eff. 7-30-03.....................................38628
1.75 (h) revised; eff. 7-30-03.....................................38628
1.78 (a)(3) revised................................................71006
1.98 (e) added; eff. 7-30-03.......................................38628
1.99 (d) and (e) added; eff. 7-30-03...............................38628
1.121 Revised; eff. 7-30-03........................................38628
1.125 (b) and (c) revised; eff. 7-30-03............................38630
1.173 (b)(3) revised; eff. 7-30-03.................................38630
1.181 Undesignated center heading revised..........................14336
1.191 (a) revised..................................................71006
1.197 (c) revised..................................................71006
1.301 Revised......................................................71006
1.302 (c) revised..................................................14336
    Revised........................................................71006
1.303 (a), (b) and (d) revised.....................................71007
1.304 (a)(1) revised...............................................71007
1.413 (a) and (c) revised..........................................59886
1.417 Revised......................................................14337
    Revised........................................................71007
1.421 (b) through (g) revised......................................59887
    (a)(2) revised.................................................67805
1.424 Removed......................................................59887
1.425 Removed......................................................59887
1.431 (b)(3), (c) and (d) revised..................................59887
    (c)(2) corrected...............................................67805
1.432 Revised......................................................59887
1.434 (a) and (d)(2) revised.......................................14337
    (d) revised; (e) added.........................................59887
1.445 Revised......................................................59888
1.455 (b) revised..................................................59888
1.480 (b) revised..................................................14337
    (a) revised; (d) and (e) added.................................59888
1.481 (a) revised..................................................59888
1.482 Revised......................................................59888
1.484 (b) and (e) through (g) revised; (h) and (i) added...........59888
1.492 (a)(1), (2) and (3), (a)(5), (b) and (d) revised.............41535
1.495 (c) and (g) revised..........................................71007
1.627 (a) added....................................................14337
1.676 (d) introductory text revised................................14337
1.740 (a)(13) revised..............................................14337
1.823 (a)(1) revised; eff. 7-30-03.................................38630
1.913 Revised......................................................71007
1.959 (f) added....................................................71007
1.965 (d) revised..................................................71008
1.967 (c) revised..................................................71008
1.971 Revised......................................................71008
1.977 (g) revised..................................................71008
1.979 (e) and (f) revised..........................................71008
1.983 Undesignated center heading and section revised..............71008
2 Authority citation revised; nomenclature change..................14337
    Authority citation revised.....................................48289
    Applicability dates suspended....................60850, 63019, 74479
2.1 Removed........................................................48289
2.2 (c) through (f) added..........................................48289
    (g) and (h) added..............................................55762
2.6 (b)(12) and (13) added.........................................48289
2.11 Revised.......................................................55762
2.17 (a), (b) and (c) revised......................................55762
2.18 Revised.......................................................55762
2.19 Revised.......................................................55762
2.21 (a) introductory text revised.................................55762

[[Page 860]]

2.33 (d)(1) revised; (e) added.....................................55762
2.34 (a) introductory text, (2), (4)(i)(A) and (b) revised; 
        (a)(1)(v), (3)(iv) and (4)(iv) removed; (a)(5) added.......55763
2.35 Revised.......................................................55763
2.37 Revised.......................................................55763
2.47 (c) and (d) redesignated as (d) and (e); new (c) added........55763
2.51 Revised.......................................................55763
2.52 Revised.......................................................55763
2.53 Added.........................................................55764
2.54 Added.........................................................55764
2.56 (d)(4) revised................................................55764
2.65 (a) revised...................................................55764
2.66 (a)(2) revised................................................55764
2.73 (a) revised...................................................55764
2.75 (c) added.....................................................55765
2.84 Revised.......................................................55765
2.88 (i)(3) revised................................................55765
2.101 Revised......................................................55765
2.102 Revised......................................................55765
2.104 (a) revised..................................................55766
2.105 Revised......................................................55766
2.107 Revised......................................................55766
2.111 Revised......................................................55766
2.112 Revised......................................................55767
2.113 Revised......................................................55767
2.118 Revised......................................................55767
2.121 (d) revised..................................................55767
2.123 (f)(2) revised...............................................14337
    (f)(2) revised.................................................48289
    (g)(1) revised.................................................55767
2.126 Added........................................................55767
2.127 (a) revised..................................................55768
2.128 (b) revised..................................................55768
2.130 Revised......................................................55768
2.131 Revised......................................................55768
2.142 (a) and (b)(2) revised.......................................55768
2.145 (b)(3) revised...............................................14337
    (b)(3), (c)(3) and (4) revised.................................55769
2.146 Undesignated center heading revised..........................14337
    (c) and (i) revised............................................55769
2.151 Revised......................................................55769
2.161 (g)(2) revised; (g)(3) added.................................55769
2.171 Revised......................................................55769
2.188 Undesignated center heading added............................48289
2.190 Added........................................................48289
2.191 Added........................................................48289
2.192 Added........................................................48289
2.193 Added........................................................48289
2.194 Added........................................................48289
2.195 Added........................................................48289
2.196 Added........................................................48289
2.197 Added........................................................48289
2.198 Added........................................................48289
    Corrected......................................................56557
2.200 Undesignated center heading and section added................48292
2.201 Added........................................................48292
2.206 Undesignated center heading and section added................48292
2.207 Added........................................................48292
2.208 Added........................................................48292
2.209 Added........................................................48292
3 Nomenclature change..............................................14337
3.27 Revised.......................................................14337
4 Authority citation revised.......................................14338
4.3 (c) revised....................................................14338
4.5 Revised.........................................................9553
4.6 Revised........................................................14338
5 Authority citation revised; nomenclature change..................14338
5.1 (a) revised....................................................14338
7 Added............................................................55769
    Applicability dates suspended....................60850, 63019, 74479
102.1 (b) revised..................................................14338
102.4 (a) revised..................................................14338
102.10 (b) revised.................................................14338
102.23 (a) revised.................................................14338
102.24 (a) revised.................................................14338
102.29 (b) revised.................................................14339
104.1 Amended......................................................14339
150 Authority citation revised; nomenclature change................14339
150.1 (a) revised..................................................14339
150.6 Revised......................................................14339
Chapter II
201.10 (b)(1)(i) amended...........................................16959
201.40 (b) revised; (c) added......................................62018
202.11 Amended; (d)(3) revised.....................................38630
252 Policy statement...............................................32381
253.5 (c)(1), (2) and (3) revised..................................67045
257 Policy statement...............................................32381
259 Actions on petitions...........................................74481
260 Heading revised................................................39840
260.1 Revised......................................................39840
260.2 (d) removed; eff. 7-18-03....................................36470
    Heading, (a) and (b) revised; (c) redesignated as (e); new 
(c), (d) and (f) added; new (e)(1)(ii), (iii), (vi), (viii) and 
(2) amended........................................................39840
260.3 (c), (d) and (e) revised; eff. 7-18-03.......................36470
    (b) amended; (c), (d) and (e) revised; (f) added...............39841
260.4 (a) and (b) amended; (d)(1) and (e) revised..................39841

[[Page 861]]

260.5 (b) amended..................................................39841
260.6 Revised; eff. 7-18-03........................................36470
    (a), (b) and (c) revised; (f) and (g) amended..................39841
260.7 Amended; eff. 7-18-03........................................36470
    Amended.................................................39841, 57815

                                  2004

37 CFR
                                                                   69 FR
                                                                    Page
Title 37 Nomenclature change.......................................18803
Chapter I
1 Policy Statement.................................................34283
1.1 (a)(4)(i) revised; (f) removed.................................29877
    (a) introductory text revised; (a)(5) added; eff. 7-26-04......35451
    (a)(1)(ii) revised; (a)(1)(iii) removed........................49997
1.4 (a)(2) revised.................................................49997
    (d) and (e) revised; (h) added.................................56535
1.5 (e) removed....................................................49997
1.6 (d)(9) revised.................................................49997
    (d)(4) revised; (e) removed....................................56536
1.8 (a)(2)(i)(B) removed; (a)(2)(i)(C) revised.....................49997
    (a) introductory text and (b) introductory text revised........56536
1.9 (g) revised....................................................49997
1.10 (g), (h) and (i) added........................................56536
1.11 (e) revised...................................................49997
1.12 (b) revised...................................................29877
    (c)(1) revised.................................................56536
1.14 (e) revised...................................................49997
    (h)(1) revised.................................................56536
1.16 (a), (b), (d) and (f) through (i) revised.....................52605
1.17 (b) and (h) revised; (c) and (d) removed......................49997
    (a)(2) through (5), (e), (m), (r), (s) and (t) revised.........52605
    (f) and (g) added; (h) and (i) revised.........................56536
1.18 (a), (b) and (c) revised......................................52606
1.19 Introductory text and (b) revised; (g) added..................56537
1.20 (e), (f) and (g) revised......................................52606
1.21 (a) revised; eff. 7-26-04.....................................35451
1.23 (b) revised...................................................43752
1.25 (c)(2) revised................................................43752
1.27 (a) revised...................................................56538
1.31 Revised.......................................................29877
    Revised; eff. 7-26-04..........................................35452
1.32 Added.........................................................29877
1.33 (a) introductory text, (b) introductory text, (1), (2) and 
        (c) revised................................................29877
    (c) revised; eff. 7-26-04......................................35452
1.34 Revised.......................................................29878
1.36 Revised................................................29878, 49997
1.47 (a) and (b) revised...........................................56538
1.48 (a), (b), (c) and (i) revised; (j) added......................49998
1.52 Heading, (b)(2)(ii), (e)(1), (3)(i) and (ii) revised..........56538
1.53 (d)(9) removed; (d)(10) redesignated as new (d)(9)............29878
    (e)(2) revised.................................................56539
1.55 (a)(3) and (4) revised........................................49998
1.57 Added.........................................................56539
1.58 Revised.......................................................56540
1.59 (a)(1) revised................................................49998
    (b) revised....................................................56540
1.63 (d)(4) revised................................................56540
1.69 (b) revised...................................................56540
1.76 (a), (b)(4), (c)(2) and (d) revised...........................56540
1.78 (a)(1), (2)(iii), (5)(iii) and (c) revised....................56541
1.83 (a) revised...................................................56541
1.84 (a)(2) and (c) revised........................................56541
1.85 (c) revised...................................................56541
1.91 (c) added.....................................................56541
1.94 Revised.......................................................56542
1.98 (a) and (c) revised; (e) removed..............................56542
1.102 (c) revised..................................................56542
1.103 (g) revised..................................................49999
    (a)(2) revised.................................................56542
1.105 (a)(3) revised; (a)(1)(viii) and (4) added...................56542
1.111 (a)(2) revised...............................................56542
1.112 Revised......................................................49999
1.113 (a) revised..................................................49999
1.114 (d) revised..................................................49999
1.115 Revised......................................................56543
1.116 Revised......................................................49999
1.121 (d) revised..................................................56543
1.131 (a)(1) revised...............................................49999
    (b) revised....................................................56543
1.136 (a)(1), (2) and (b) revised..................................50000
    (b) revised....................................................56543
1.137 (d)(3) revised...............................................56543
1.165 (b) revised..................................................56543
1.173 (b) introductory text revised................................56543
1.175 (e) added....................................................56544
1.178 (a) revised..................................................56544
1.179 Removed......................................................56544
1.181 (a)(3) revised...............................................50000

[[Page 862]]

1.182 Revised......................................................56544
1.183 Revised......................................................56544
1.191 Revised......................................................50000
1.192 Removed......................................................50000
1.193 Removed......................................................50000
1.194 Removed......................................................50000
1.195 Removed......................................................50000
1.196 Removed......................................................50000
1.197 Revised......................................................50000
1.198 Correctly removed; CFR correction.............................4059
    Revised........................................................50000
1.215 (a) and (c) revised..........................................56544
1.248 (c) revised..................................................50000
    (c) revised....................................................58260
1.291 Revised......................................................56544
1.292 (a) and (c) revised..........................................50000
1.295 (b) revised..................................................50001
    (a) revised....................................................56545
1.296 Revised......................................................56545
1.302 (b) revised...........................................50001, 58260
1.303 (c) revised...........................................50001, 58260
1.304 (a)(1) and (2) revised.......................................50001
1.311 (b) revised..................................................56545
1.322 (a)(3) revised...............................................50001
1.323 Revised......................................................50001
1.324 (a) and (c) revised; (d) added...............................50001
    (a) and (b) introductory text revised..........................56545
1.363 (c) added....................................................29878
1.377 (b) revised..................................................56545
1.378 (e) revised..................................................56545
1.455 (a) amended; eff. 7-26-04....................................35452
1.492 (a)(1), (2), (3), (5), (b) and (d) revised...................52606
1.550 (c) revised..................................................56545
1.565 (e) revised..................................................50001
1.601--1.690 (Subpart E) Removed...................................50001
1.701 (a)(3) revised...............................................21710
    (c)(2)(ii) revised.............................................50001
1.702 (e) revised..................................................21711
1.703 (f) revised..................................................21711
    (a)(4), (b)(3)(ii), (4), (d)(2) and (e) revised................50001
1.704 (d) revised..................................................21711
    (c)(9) revised.................................................50002
1.705 (d) revised..................................................21711
1.741 (b) revised..................................................56546
1.956 Revised......................................................56546
1.959 Revised......................................................50002
1.961 Removed......................................................50002
1.962 Removed......................................................50002
1.963 Removed......................................................50002
1.965 Removed......................................................50002
1.967 Removed......................................................50002
1.969 Removed......................................................50002
1.971 Removed......................................................50002
1.973 Removed......................................................50002
1.975 Removed......................................................50002
1.977 Removed......................................................50002
1.979 Revised......................................................50002
1.981 Revised......................................................50002
1.993 Revised......................................................50002
2.53 (c) waiver....................................................59809
2.172 Revised......................................................51364
2.173 (a) revised..................................................51364
2.174 Revised......................................................51364
2.175 (a) and (b) revised..........................................51364
2.176 Revised......................................................51364
2.190 (a) revised; (e) added.......................................57184
    (a) revised....................................................63321
2.195 (d)(3) and (4) revised; (d)(5) added.........................57185
2.197 (a)(2) revised...............................................57185
2.207 (b) revised..................................................43752
2.208 (c)(2) revised...............................................43752
3.1 Revised........................................................29878
3.21 Revised.......................................................29878
3.24 Revised.......................................................29879
3.25 Revised.......................................................29879
3.27 Revised.......................................................29879
3.31 (a)(7) and (c)(1) revised; (f) added..........................29879
3.34 Revised.......................................................29879
3.41 (b)(2) revised................................................29879
3.81 Revised.......................................................29878
5.1 (a) revised....................................................29880
5.3 (b) revised....................................................50002
5.12 (b) revised...................................................56546
5.15 (c) revised...................................................56546
5.25 (a)(4) revised; (b) redesignated as (c); new (b) added........56546
7.4 Revised........................................................57185
    (c) revised....................................................63321
7.7 (a) introductory text revised; (c) redesignated as (d); new 
        (c) added..................................................57185
7.11 (a) introductory text, (3), (9), (10) and (11) revised; (12) 
        added......................................................57185
7.14 (e) revised...................................................57186
7.21 (b) introductory text, (7) and (8) revised; (b)(9) added......57186
7.23 (a)(8) revised................................................57186
7.25 (a) revised...................................................57186
7.31 (a) introductory text revised.................................57186
10.2 Removed; eff. 7-26-04.........................................35452
10.3 Removed; eff. 7-26-04.........................................35452
10.5 Removed; eff. 7-26-04.........................................35452

[[Page 863]]

10.6 Removed; eff. 7-26-04.........................................35452
10.7 Removed; eff. 7-26-04.........................................35452
10.8 Removed; eff. 7-26-04.........................................35452
10.9 Removed; eff. 7-26-04.........................................35452
10.10 Removed; eff. 7-26-04........................................35452
10.11 Revised; eff. 7-26-04........................................35452
10.18 (a) revised..................................................56546
10.23 (c)(7) revised...............................................50003
11 Added; eff. 7-26-04.............................................35452
11.6 (d) revised...................................................50003
41 Added...........................................................50003
41.3 (e)(1) revised................................................58260
41.20 (b)(1), (2) and (3) revised..................................52606
    (b)(3) corrected...............................................55506
    (a) revised....................................................56546
41.127 (d) revised.................................................58260
41.154 (c)(1) revised..............................................58260
41.155 (b) revised.................................................58260
104.3 Revised......................................................56546
Chapter II
201.1 Revised......................................................39331
201.2 (b)(5) and (c)(4) revised; (b)(7) added......................39332
    (b)(2) amended.................................................70377
201.18 Revised; eff. 7-22-04.......................................34582
201.19 (a)(4) through (11) redesignated as (a)(5) through (12); 
        (a)(7), (c)(2)(iii), (d) introductory text, (e)(7)(ii)(B), 
        (D), (f)(4)(ii), (5) and (7)(iii)(B) amended; (a)(3), 
        (e)(7)(i), (ii)(A), (f)(3)(iii), (7)(i) and (iii)(A) 
        revised; new (a)(4), (e)(7)(iv), and (f)(7)(iv) added; 
        eff. 7-22-04...............................................34584
201.35 Removed; interim............................................11527
201.36 Removed; interim............................................11527
201.37 Removed; interim............................................11527
202 Appendix B amended..............................................8822
202.5 Added........................................................77636
202.22 Heading, (a), (b)(1), (c) heading, (1), (4), (8) 
        introductory text and (e)(2) revised; (b)(2), (c)(2), (3), 
        (5) introductory text, (iii), (6) introductory text, (7), 
        (d) heading, (1), (3)(ii), (iv), (v), (vi), (4), (5), 
        (6)(iii), (e) heading, (1), (f)(1), (ii), (2) and (g)(1) 
        amended....................................................62411
205 Revised; eff. 7-30-04..........................................39334
211.7 Added........................................................77637
212.7 Added........................................................77637
251.1 Revised......................................................39332
251.54 (c)(2) revised..............................................39332
252.4 (a) revised..................................................39333
253.5 (c)(1), (2) and (3) revised..................................69823
257.4 (a) revised..................................................39333
259 Policy statement...............................................69288
259.5 (a) revised..................................................39333
262 Added...........................................................5695
262.2 (a) corrected.................................................8822
263 Added...........................................................5695
270 Added; interim.................................................11527
270 Technical correction...........................................59648
270.1 (e)(2) corrected.............................................13127
270.4 Redesignated as 270.5; new 270.4 added.......................58262
270.5 Redesignated from 270.4......................................58262
Chapter IV
401.3 (a)(5) added.................................................17301
401.14 (c) added...................................................17301

                                  2005

37 CFR
                                                                   70 FR
                                                                    Page
Chapter I
1.4 (d)(2) introductory text and (ii) revised......................56126
1.11 (a) revised...................................................56126
1.16 Revised........................................................3887
    (f) and (s) revised............................................30365
1.17 (a), (l) and (m) revised.......................................3888
    (i) revised....................................................54265
    (f) revised....................................................56126
1.18 (a), (b) and (c) revised.......................................3888
1.20 (c) through (g) revised........................................3888
1.21 (l) removed...................................................30365
1.25 (c)(4) revised................................................56127
1.27 (b) and (c)(3) revised.........................................3889
1.31 Revised.......................................................56127
1.32 (a) and (c)(3) revised........................................56127
1.33 (c) revised....................................................3889
    (a) introductory text, (1), (b)(1) and (2) revised; (e) added 
                                                                   56127
1.34 Revised.......................................................56127
1.36 (a) revised...................................................56128
1.51 (b)(4) and (c)(4) revised......................................3889
1.52 Heading revised; (f) added.....................................3889
    (f) revised....................................................30365
    (e)(5) revised.................................................54266
    (a)(5), (7) and (b)(7) removed; (a)(6) redesignated as (a)(5) 
                                                                   56128
1.53 (c)(3), (f) and (g) revised....................................3890
    (d)(3) and (f)(5) revised......................................30365
1.69 (b) revised....................................................3890
1.71 (g) added; interim.............................................1823
    (g) revised....................................................54266
1.75 (c) revised....................................................3891
1.76 (b)(5) revised................................................54266

[[Page 864]]

1.77 (b)(4) through (11) redesignated as (b)(5) through (12); new 
        (b)(4) added; (c) revised; interim..........................1823
1.78 (a)(4) revised.................................................3891
    (a)(1)(ii) revised; (a)(1)(iii) removed........................30365
    (a)(5)(iv) revised.............................................56128
1.84 (y) revised....................................................3891
1.96 (c) introductory text revised.................................54266
1.104 (c)(4) revised; interim.......................................1823
    (c)(4) revised.................................................54266
1.109 Added; interim................................................1823
    Removed........................................................54266
1.111 (a)(2)(i) amended.............................................3891
1.130 (b) removed; interim..........................................1824
1.133 (a)(2) revised...............................................56128
1.136 (b) amended...................................................3891
1.211 (c) revised...................................................3891
1.321 (d) added; interim............................................1824
    (c) and (d) revised............................................54266
1.324 (a) amended...................................................3891
1.445 (a)(2) revised................................................3891
1.492 Revised.......................................................3892
    (b) and (c) revised; interim....................................5054
    (h) and (j) revised............................................30365
    (b) and (c) revised............................................35378
1.495 (c) revised...................................................3892
    (c)(1)(i) and (3) revised......................................30365
1.496 (b) revised; interim..........................................5055
    (b) revised....................................................35378
1.821 (a) introductory text revised................................10489
1.822 (b) revised..................................................10489
2.6 (a)(1) revised..................................................2953
    (a)(1) revised.................................................38773
2.22 Added.........................................................38773
2.23 Revised.......................................................38773
2.53 (a) revised...................................................38774
2.86 (a)(2) revised.................................................2953
2.87 (b) revised....................................................2953
2.208 (c)(4) revised...............................................56128
3.11 (c) added; interim.............................................1824
    (c) revised....................................................54267
3.28 Revised.......................................................56128
3.31 (g) added; interim.............................................1824
    (a)(7)(i) revised..............................................56128
3.73 (b)(1)(i) revised.............................................56128
5 Authority citation revised.......................................56129
5.11 (b) and (c) revised...........................................56129
5.19 Revised.......................................................56129
7.25 (a) revised...................................................38774
10.112 (a) revised.................................................56129
41.20 (b) revised...................................................3892
102.1 (b) revised..................................................10489
102.23 (a) revised.................................................10489
102.24 (a) revised.................................................10490
104.2 (b) and (c) revised..........................................10490
150 Authority citation revised.....................................10490
150.6 Revised......................................................10490
Chapter II
201 Policy statement...............................................44049
201.4 (a)(1)(ii) amended...........................................38022
201.11 Heading revised; (g) and (h) redesignated as (h) and (i); 
        new (g) added..............................................30366
    (h) amended....................................................38022
201.17 (j) and (k) redesignated as (k) and (l); new (j) added......30366
    (k) amended....................................................38022
    (d)(2), (e)(12) and (g)(2)(ii) amended.........................58311
201.28 (g) through (k) redesignated as (h) through (l); new (g) 
        added......................................................30367
    (i) amended....................................................38022
202 Authority citation and heading revised; interim................61906
202.3 (b)(9)(iv) revised; (b)(9)(v) through (ix) redesignated as 
        (b)(9)(vi) through (x); new (b)(9)(v) added................15590
202.5 (b)(2) and (c)(2) amended.....................................7177
202.16 Added; interim..............................................61906
251.22 (b) amended.................................................38022
252 Removed........................................................38023
253.5 (c)(1), (2) and (3) amended..................................72077
256.2 (a) introductory text, (1) through (4), (b) introductory 
        text, (1) and (2) amended..................................58311
257 Removed........................................................38023
258 Authority citation revised..............................17320, 39179
258.2 Revised......................................................17320
    (b) amended....................................................39179
258.3 (d) through (h) added........................................17320
    Heading revised; (a) through (h) amended.......................39179
258.4 Added........................................................39179
259 Removed........................................................38023
270.2 (b)(2), (3) and (e) revised; (c) and (d) introductory text 
        amended....................................................24310
Chapter III
Chapter III Established............................................30905

[[Page 865]]

                                  2006

37 CFR
                                                                   71 FR
                                                                    Page
Chapter I
1.11 (c) revised...................................................44223
1.21 (c) removed...................................................64639
1.138 (c) revised; (d) added.......................................12284
1.510 (c) and (d) revised; interim..................................9262
    (c) and (d) revised............................................44223
1.915 (d) revised; interim..........................................9262
    revised........................................................44223
1.919 (a) revised; interim..........................................9262
Chapter II
201 Policy statement...............................................64639
201.3 (c), (d) and (e) revised.....................................31090
    (c) table amended; interim.....................................46402
201.10 (f)(1)(ii) amended..........................................36486
201.11 (f) revised.................................................45739
201.17 (i) revised.................................................45739
201.28 (e)(3)(ii) revised; (h) through (l) redesignated as (i) 
        through (m); new (h) added; new (j)(1)(ii), (3)(i) and 
        (vi) amended...............................................45740
201.33 (e)(1) revised..............................................31092
201.34 (e)(1) revised..............................................31092
201.39 (g)(2) revised..............................................31092
201.40 (b) introductory text amended; interim......................63247
    (b) and (c) revised............................................68479
202.12 (c)(2) and (c)(3)(1) revised; (c)(5) removed................31092
202.16 (c)(5)(1) revised...........................................31092
212.2 Revised......................................................31092
212.8 Added; interim...............................................46402
253.5 (c)(1), (2) and (3) revised..................................69486
Chapter III
301.2 (b) and (c) amended..........................................53326
301.3 removed......................................................53326
302 Revised........................................................53326
350.1--350.6 (Subchapter B) Heading revised........................53326
350.1 Amended......................................................53327
350.2 Revised......................................................53327
350.3 Amended......................................................53327
350.4 (a) and (e)(1) revised; (b), (e)(2), (f) and (g) amended; 
        (e)(3) removed.............................................53327
    (e) heading correctly revised..................................59010
350.5 (a) introductory text, (3), (4) and (b)(5) amended; (b) 
        introductory text and (4) revised; (b)(6) added............53327
350.6 Amended......................................................53327
351.1 (b)(1)(i)(C), (ii)(D), (2)(i)(D) and (ii)(E) removed; 
        (b)(1)(ii)(E) and (2)(ii)(F) redesignated as new 
        (b)(1)(ii)(D) and (2)(ii)(E); (a), (b)(1)(i)(A), (B), 
        (ii)(C), (2)(i) (B), (C), (ii)(D), (4), (c) and (d) 
        amended;...................................................53327
351.2 (a), (b)(1) and (2) amended..................................53328
351.3 (a), (b)(1) and (2) amended; (c) revised.....................53328
351.4 (a), (b) heading and (c) amended; (b)(4) removed.............53328
    (b)(1) correctly amended.......................................59010
351.5 Revised......................................................53328
351.6 Revised......................................................53328
351.7 Amended......................................................53329
351.8 Amended......................................................53329
351.9 (a) and (b) introductory text revised; (b)(1), (4) and (5) 
        removed; (b)(2) and (3) redesignated as (b)(1) and (2); 
        new (b)(2) amended; (d), (e) and (f) added.................53329
351.10 (a), (c)(1), (3), (d), (e) introductory text, (f) and (g) 
        revised; (b) and (c)(2) amended; (e)(1) removed............53329
    (c) heading correctly amended..................................59010
351.11 Amended.....................................................53329
351.12 Removed; new 351.12 redesignated from 351.13 and revised....53330
351.13 Redesignated as new 351.12; new 351.13 redesignated from 
        351.14 and revised.........................................53330
351.14 Redesignated as new 351.13; new 351.14 redesignated from 
        351.15 and revised.........................................53330
351.15 Redesignated as 351.14......................................53330
352.1 Amended......................................................53330
352.2 Amended......................................................53330
352.3 Revised......................................................53330
353.1 Revised......................................................53330
353.3 Amended......................................................53330
353.4 Revised......................................................53330
353.5 Amended......................................................53330
354.1 Revised......................................................53330
354.2 (a) and (b) amended..........................................53331
354.3 Amended......................................................53331
354.4 Removed......................................................53331
354.5 Removed......................................................53331
360 (Subchapter C) Added...........................................53331
360 Transferred from Subchapter B to Subchapter C..................53331
360.4 (a)(2) and (3) amended.......................................53331

[[Page 866]]

360.13 (a)(2) and (3) amended......................................53331
360.24 (a)(2) and (3) amended......................................53331
370 (Subchapter D) added; interim..................................59013
Chapter IV
404 Authority citation revised.....................................11512
404.1 Revised......................................................11512
404.3 (a) revised..................................................11512
404.4 Revised......................................................11512
404.5 (a), (b)(2) and (4) through (9) revised......................11512
404.6 Revised......................................................11513
404.7 Revised......................................................11513
404.9 Removed......................................................11514
404.10 Revised.....................................................11514
404.11 Revised.....................................................11514
404.12 Revised.....................................................11514
404.14 Revised.....................................................11514

                                  2007

37 CFR
                                                                   72 FR
                                                                    Page
Chapter I
1.1 (c)(1) revised.................................................18904
1.4 (d)(2) introductory text, (3) and (4)(ii) revised...............2775
1.6 (a)(4) and (g) added............................................2775
1.8 (a)(1)(i) and (b)(3) revised....................................2775
    (b) introductory text revised..................................18904
1.14 (a)(1)(iii), (v), (vi), (vii), (2) introductory text and (b) 
        revised; (h) redesignated as (i); new (h) added.............1667
1.16 (a) through (e) and (h) through (s) revised...................46901
1.17 (f) revised...................................................46835
    (a)(2) through (5), (e), (l), (m), (r), (s) and (t) revised....46901
    (a)(4) and (5) corrected.......................................55055
    1.17 (l) and (m) revised.......................................18904
    (t) revised....................................................51563
    (t) corrected..................................................57864
1.18 (a), (b) and (c) revised......................................46902
1.19 (b)(1)(iv) added...............................................1668
1.20 (c)(3), (4), (e), (f) and (g) revised.........................46902
1.26 (a) and (b) revised...........................................46836
1.33 (a) introductory text revised..................................2776
    (c) revised....................................................18904
1.52 (d)(2) revised................................................46836
1.53 (b) and (c)(4) revised........................................46836
1.55 (d) added......................................................1668
1.57 (a)(2) revised................................................51563
1.75 (b) and (c) revised...........................................46836
1.76 (b)(5) revised................................................46837
1.78 Revised.......................................................46837
1.104 (a)(1) and (b) revised.......................................46841
1.105 (a)(1)(ix) added.............................................46841
1.110 Revised......................................................46841
1.114 (a) and (d) revised; (f), (g) and (h) added..................46841
1.117 Added........................................................46841
1.136 (a)(1) revised...............................................46842
1.137 Heading, (a) introductory text, (b) introductory text and 
        (e) revised................................................18904
1.142 (a) revised; (c) added.......................................46842
1.145 Revised......................................................46842
1.265 Added........................................................46842
1.437 Revised......................................................51563
1.445 (a)(2) and (3) revised.......................................51563
1.452 Added........................................................51563
1.465 (b) revised..................................................51564
1.492 (a), (b)(2), (3), (4), (c)(2), (d), (e), (f) and (j) revised
                                                                   46902
    (b)(2), (3) and (4) corrected..................................55055
1.495 (g) revised..................................................46843
1.497 (f)(1) revised...............................................51564
1.502 Revised......................................................18905
1.510 (f) revised..................................................18905
1.530 (a), (k) and (l) revised.....................................18905
1.550 (d) revised..................................................18905
1.565 (c) and (d) revised..........................................18905
1.570 Heading, (a), (b) and (d) revised............................18905
1.704 (c)(11) redesignated as (c)(12); new (c)(11) added...........46843
1.902 Revised......................................................18906
1.915 (c) revised..................................................18906
1.923 Revised......................................................18906
1.945 Revised......................................................18906
1.953 (b) and (c) revised..........................................18906
1.956 Undesignated center heading revised..........................18906
1.957 (b) revised..................................................18906
1.958 Heading revised..............................................18906
1.979 Heading and (b) revised......................................18907
1.983 (a) revised..................................................18907
1.989 (a) revised..................................................18907
1.991 Revised......................................................18907
1.997 Heading, (a), (b) and (d) revised............................18907
2.99 (b), (c) and (d)(1) revised...................................42258
2.101 (a), (b) introductory text and (d)(4) revised................42258
2.105 (a) and (c) introductory text revised........................42258
2.111 (a), (b) and (c)(4) revised..................................42258
2.113 (a) and (c) revised; (e) removed.............................42259

[[Page 867]]

2.116 (g) added....................................................42259
2.118 Revised......................................................42259
2.119 (a) revised; (b)(6) added....................................42259
2.120 (a), (d)(1), (e), (f), (g), (h)(2), (i), (j) introductory 
        text, (3) and (5) through (8) revised......................42259
2.121 (a) and (d) revised; (e) added...............................42262
2.122 (d)(1) revised...............................................42262
2.123 (e)(3) revised...............................................42262
2.126 (a)(6) revised; (b) removed; (c) and (d) redesignated as new 
        (b) and (c)................................................42262
2.127 (a), (c) and (e) revised.....................................42262
2.129 (a) revised..................................................42263
2.133 (a) and (b) revised..........................................42263
2.142 (e)(1) revised...............................................42263
2.173 (a) revised..................................................42263
2.176 Revised......................................................42263
2.190 (e) revised..................................................18908
6.1 Revised........................................................28611
7.4 (b) introductory text, (2) and (c) revised.....................18908
41.4 (b) revised...................................................18907
41.20 (b)(1), (2) and (3) revised..................................46903
Chapter II
201.3 (c) and (e) revised..........................................33691
201.11 (h)(3)(iv)(A) amended.......................................33691
201.17 (k)(3)(iv)(A) amended.......................................33691
201.27 (g)(2) revised..............................................33692
201.28 (j)(3)(v)(A) amended........................................33692
201.38 (e) and (f) revised..........................................5932
202.3 (b)(2) and (3) through (10) redesignated as (b)(2)(i) and 
        (4) through (11); (b)(2)(ii) and new (3) added; (c)(2) 
        revised; interim...........................................36888
    (b)(1)(iv), (4)(ii), (8)(ii), (C), (10)(vi) and (c)(2) 
correctly amended; Footnote 6 correctly added; interim.............40746
202.12 (c)(1) and (2) revised; interim.............................36888
202.17 Revised.....................................................61803
202.20 (b)(1) revised; (b)(2)(iii) through (vi) redesignated as 
        (b)(2)(iv) through (vii); new (b)(2)(iii) added; interim 
                                                                   36889
    (b)(2)(i) and (ii) correctly amended; interim..................40746
212.3 (e)(1) and (f)(4) revised....................................33692
212.5 (c)(4) revised...............................................33692
Chapter III
380 (Subchapter E) Added...........................................24110
380.3 (a)(1)(ii) and (2)(iii) amended..............................29886
381 Added..........................................................67647
382 Added..........................................................71796
383 Added..........................................................72254

                                  2008

37 CFR
                                                                   73 FR
                                                                    Page
Chapter I
1.1 (d) revised....................................................47540
1.4 (d)(3) and (4)(i) revised; (d)(4)(ii)(C) added.................47684
1.8 (a)(2)(iii)(A) revised.........................................47684
1.9 (j) revised....................................................47685
1.16 (a) through (e), (h) through (k), and (m) through (s) revised
                                                                   47540
1.17 (a), (l), and (m) revised.....................................47540
1.18 (a) through (c) revised.......................................47541
1.20 (c)(3), (4), and (d) through (g) revised......................47541
1.21 (a)(3) removed; (a)(7), (8) and (9) added.....................67756
1.25 (c)(4) removed; (c)(3) revised................................47541
1.401--1.499 (Subpart C) Authority citation revised................66759
1.445 (a)(1), (2) and (3) revised..................................66759
1.492 (a), (b)(3), (4), (c)(2), (d), (e), (f) and (j) revised......47541
2.2 (c) revised....................................................47685
2.6 (a)(8), (13), (19), (b)(3) and (6) revised.....................67767
2.11 Revised.......................................................47685
2.17 (a), (b) and (c) revised......................................47685
2.18 (a) revised...................................................47685
2.19 (b) revised...................................................47685
2.21 (a) introductory text and (b) revised; (c) removed............67767
2.23 (a)(2) revised................................................67768
2.24 Revised.......................................................47685
2.25 Revised.......................................................67768
2.26 Removed.......................................................67768
2.27 (d) revised...................................................67768
2.32 (a)(8) added..................................................13784
2.32 (a)(3)(iii), (6) and (8) revised; (a)(3)(iv), (9) and (10) 
        added......................................................67768
2.33 (a)(3) revised................................................47685
    (b)(1) revised.................................................67768
2.34 (a)(1)(i), (2), (3)(i) and (4)(ii) revised; (a)(1)(v) added 
                                                                   67768
2.37 Revised.......................................................13784
2.41 (a) revised...................................................67768
2.44 (b) revised...................................................67769
2.45 (b) revised...................................................67769
2.47 (a) revised...................................................67769
2.48 Added.........................................................67769

[[Page 868]]

2.52 (b)(5) revised................................................13784
2.52 (b) introductory text and (1) revised.........................67769
2.53 (a) revised...................................................67769
2.56 (b)(1), (d)(2) and (4) revised................................67769
2.62 Revised.......................................................67769
2.64 (c)(1) revised................................................67769
2.65 (a) revised...................................................67769
2.66 (a)(1), (d) and (f)(1) revised................................67769
2.73 Revised.......................................................67770
2.74 Revised.......................................................67770
2.76 (d) revised...................................................67770
2.77 Revised.......................................................67770
2.81 (b) revised...................................................67770
2.84 (b) revised...................................................67770
2.85 Revised.......................................................67770
2.86 (a)(2) revised................................................67771
2.87 Revised.......................................................67771
2.88 (b)(1)(ii), (3), (d) and (i)(2) revised.......................67771
2.89 (a) introductory text, (2), (3), (b)(2) and (g) revised.......67772
2.93 Revised.......................................................67772
2.99 (d)(2) and (g) revised........................................67772
2.101 (b) introductory text revised................................47685
2.102 (a) introductory text revised................................47685
2.105 (b)(1) and (c)(1) revised....................................47685
2.111 (b) revised..................................................47686
2.113 (b)(1) revised...............................................47686
2.119 (d) revised..................................................47686
2.141 Revised......................................................67772
2.146 (c), (d), (e), (i) introductory text and (j)(1) revised......67773
2.153 Revised......................................................67773
2.160 Undesignated center heading revised..........................67773
2.161 (b)(3) revised...............................................47686
    (g)(3) revised.................................................67773
2.163 (b) revised; (c) added.......................................67773
2.165 (b) revised..................................................67773
2.167 (a), (d) and (f) revised.....................................67773
2.171 Revised......................................................67774
2.173 Revised......................................................67774
2.174 Revised......................................................67774
2.175 Heading, (a) and (b)(2) revised; (c) removed.................67774
2.176 Revised......................................................67774
2.183 (f) added....................................................67775
2.184 (b) revised..................................................67775
2.186 (b) revised..................................................67775
2.193 (c)(2) revised...............................................47686
2.195 (b) and (e) revised..........................................67775
2.208 (c)(3) revised; (c)(4) removed...............................67775
3.31 (a)(8) added; (f) revised.....................................67775
6.3 Revised........................................................67775
6.4 Revised........................................................67775
7.11 (a)(2) revised................................................67775
7.14 (e) revised...................................................67776
7.25 (a) revised............................................47686, 67776
7.37 (b)(3) revised................................................47686
7.39 (b) revised...................................................67776
7.40 (b) revised...................................................67776
10.4 Correctly removed.............................................59514
10.5--10.19 Undesignated center heading removed....................47687
10.14 Removed......................................................47687
10.15 Removed......................................................47687
10.18 Removed......................................................47687
10.23 (c)(5), (6), (13) through (16) and (19) correctly revised....59514
10.31 (c) correctly revised........................................59514
10.130--10.170 Undesignated center heading removed.................47687
10.130 Removed.....................................................47687
10.131 Removed.....................................................47687
10.132 Removed.....................................................47687
10.133 Removed.....................................................47687
10.134 Removed.....................................................47687
10.135 Removed.....................................................47687
10.136 Removed.....................................................47687
10.137 Removed.....................................................47687
10.138 Removed.....................................................47687
10.139 Removed.....................................................47687
10.140 Removed.....................................................47687
10.141 Removed.....................................................47687
10.142 Removed.....................................................47687
10.143 Removed.....................................................47687
10.144 Removed.....................................................47687
10.145 Removed.....................................................47687
10.149 Removed.....................................................47687
10.150 Removed.....................................................47687
10.151 Removed.....................................................47687
10.152 Removed.....................................................47687
10.153 Removed.....................................................47687
10.154 Removed.....................................................47687
10.155 Removed.....................................................47687
10.156 Removed.....................................................47687
10.157 Removed.....................................................47687
10.158 Removed.....................................................47687
10.159 Removed.....................................................47687
10.160 Removed.....................................................47687
10.161 Removed.....................................................47687
10.170 Removed.....................................................47687
11 Authority citation revised......................................67757
11.1 Amended.......................................................47687
11.2 (a), (b)(4), (c) and (d) revised; (b)(5), (6) and (e) added 
                                                                   47687
11.3 Revised.......................................................47688
11.5 Revised.......................................................47688

[[Page 869]]

11.8 (d) added.....................................................67757
11.11 Revised......................................................67757
11.12 Added........................................................47688
11.13 Added........................................................47688
11.14 Added........................................................47688
11.15 Added........................................................47688
11.16 Added........................................................47689
11.17 Added........................................................47689
11.18 Added........................................................47689
11.19--11.99 (Subpart C) Added.....................................47689
41 Authority citation revised......................................32972
    Regulation at 73 FR 32972 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32972 eff. date delayed indefinitely.......74972
41.2 Amended; eff. 12-10-08........................................32972
    Regulation at 73 FR 32972 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32972 eff. date delayed indefinitely.......74972
41.3 (a) and (b) revised; eff. 12-10-08............................32973
    Regulation at 73 FR 32973 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32973 eff. date delayed indefinitely.......74972
41.4 (b) and (c) revised; eff. 12-10-08............................32973
    Regulation at 73 FR 32973 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32973 eff. date delayed indefinitely.......74972
41.5 (e) revised...................................................47704
41.12 Revised; eff. 12-10-08.......................................32973
    Regulation at 73 FR 32973 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32973 eff. date delayed indefinitely.......74972
41.20 (b) revised..................................................47542
41.30 Amended; eff. 12-10-08.......................................32973
    Regulation at 73 FR 32973 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32973 eff. date delayed indefinitely.......74972
41.31 Amended; eff. 12-10-08.......................................32973
    Regulation at 73 FR 32973 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32973 eff. date delayed indefinitely.......74972
41.33 Revised; eff. 12-10-08.......................................32973
    Regulation at 73 FR 32973 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32973 eff. date delayed indefinitely.......74972
41.35 Revised; eff. 12-10-08.......................................32973
    Regulation at 73 FR 32973 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32973 eff. date delayed indefinitely.......74972
41.37 Revised; eff. 12-10-08.......................................32974
    Regulation at 73 FR 32974 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32974 eff. date delayed indefinitely.......74972
41.39 Revised; eff. 12-10-08.......................................32975
    Regulation at 73 FR 32975 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32975 eff. date delayed indefinitely.......74972
41.41 Revised; eff. 12-10-08.......................................32975
    Regulation at 73 FR 32975 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32975 eff. date delayed indefinitely.......74972
41.43 Removed; eff. 12-10-08.......................................32976
    Regulation at 73 FR 32976 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32976 eff. date delayed indefinitely.......74972
41.47 Revised; eff. 12-10-08.......................................32976
    Regulation at 73 FR 32976 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32976 eff. date delayed indefinitely.......74972
41.50 Revised; eff. 12-10-08.......................................32976
    Regulation at 73 FR 32976 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32976 eff. date delayed indefinitely.......74972
41.52 Revised; eff. 12-10-08.......................................32977
    Regulation at 73 FR 32977 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32977 eff. date delayed indefinitely.......74972
41.54 Revised; eff. 12-10-08.......................................32977

[[Page 870]]

    Regulation at 73 FR 32977 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32977 eff. date delayed indefinitely.......74972
41.56 Added; eff. 12-10-08.........................................32977
    Regulation at 73 FR 32977 interpretation and eff. date 
clarification......................................................70282
    Regulation at 73 FR 32977 eff. date delayed indefinitely.......74972
Chapter II
201.1 (a)(3), (4) and (b)(1) correctly amended; (b)(2) correctly 
        revised....................................................37838
201.2 (b)(1), (2), (3) introductory text, (i) introductory text, 
        (4), (5), (7) and (d)(1)(iv) correctly amended.............37838
201.5 (c)(2) correctly amended.....................................37838
201.8 (g) correctly amended........................................37838
201.11 (i)(1) revised..............................................29072
201.17 (i)(4) added................................................29073
201.18 (a)(2) through (6) redesignated as (a)(4) through (8); new 
        (a)(2) and (3) added; interim..............................66181
201.19 (a)(1) amended; (a)(3) through (12) redesignated as (a)(4) 
        through (13); new (a)(3) added; interim....................66181
201.28 (l)(1) revised..............................................29073
201.29 (e)(3) correctly amended....................................37839
201.33 (d)(1) correctly amended....................................37839
201.34 (d)(2) correctly amended....................................37839
201.38 (e) and (f) correctly amended...............................37839
201.39 (g)(1) correctly amended....................................37839
202.3 (b)(2)(i), (ii) introductory text and (6)(ii) correctly 
        amended....................................................37839
202.5 (b) introductory text, (1), (3), (4), (c) introductory text, 
        (1), (3) and (d)(1) correctly amended......................37839
202.12 (c)(4)(vi) correctly amended................................37839
202.16 (c)(11) correctly amended...................................37839
202.17 (g)(1) correctly amended....................................37839
202.19 (e)(3) correctly amended....................................37839
202.20 (c)(2)(ii), (xvi), (xix)(B) and (d)(3) correctly amended....37839
202.21 (h) correctly amended.......................................37839
202.23 (b)(2) correctly amended....................................37839
203.3 (b) introductory text, (1) through (5) and (c) correctly 
        amended; (e) correctly removed; (f) through (i) correctly 
        redesignated as new (e) through (h)........................37839
203.4 (f) correctly amended........................................37839
204.4 (a) correctly amended........................................37839
204.5 (a) correctly amended........................................37839
204.7 (a) correctly amended........................................37839
204.8 (a) correctly amended........................................37840
205.2 (a) and (b) correctly amended................................37840
205.13 Correctly amended...........................................37840
205.22 (a) and (b) correctly amended...............................37840
211.4 (b)(1) correctly amended.....................................37840
211.5 (d) correctly amended........................................37840
255.4 Revised; interim.............................................66182
258.3 (g) revised..................................................14185
258.4 (d) revised..................................................14185
Chapter III
381.5 (c)(1), (2) and (3) revised..................................72726
382.10--382.17 (Subpart B) Added....................................4102
384 Added; eff. 1-1-09.............................................16199

                                  2009

   (Regulations published from January 1, 2009, through July 1, 2009)

37 CFR
                                                                   74 FR
                                                                    Page
Chapter I
1.16 Authority citation added after undesignated center heading; 
        (a) through (e), (h) through (k) and (m) through (s) 
        revised....................................................47540
1.17 (a), (l) and (m) revised......................................47540
1.18 (a), (b) and (c) revised......................................47541
1.20 (c)(3), (4) and (d) through (g) revised.......................47541
1.25 (c)(3) revised; (c)(4) removed................................47541
1.485 Revised......................................................31373
Chapter II
201.1 (b)(2) revised...............................................12556
201.3 (c)(16) amended..............................................12556
201.4 (c)(3) revised...............................................12556
201.10 (f)(4) redesignated as (f)(5); (f)(1)(iii), new (f)(4) and 
        (6) added; new (f)(5) revised..............................12556
258.3 (h) revised..................................................12093
258.4 (e) revised..................................................12093

[[Page 871]]

Chapter III
385 Added...........................................................4529
385.11 Amended......................................................6834
385.14 (a)(4) amended; (e) removed..................................6834
385.15 Removed......................................................6834


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