[Federal Register Volume 59, Number 237 (Monday, December 12, 1994)]
[Unknown Section]
[Page 0]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 94-30312]


[[Page Unknown]]

[Federal Register: December 12, 1994]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 3

[Docket No. 941120-4320]
RIN 0651-AA76

 

Changes to Implement 20-Year Patent Term and Provisional 
Applications

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The Patent and Trademark Office (Office) is proposing to amend 
the rules of practice in patent cases to implement the changes related 
to patent term in title 35, United States Code, contained in the 
Uruguay Round Agreements Act (S. 2467 and H.R. 5110), which was 
recently passed by Congress, and to simplify the rules. Among the 
changes that are contained in S. 2467 and H.R. 5110 are the conversion 
to a 20-year patent term measured from the date of filing an 
application in the U.S., and the introduction of provisional 
applications. The changes apply to utility and plant patents. They do 
not apply to design patents. S. 2467 was passed by the Senate on 
December 1, 1994, and the House passed H.R. 5110 on November 29, 1994. 
The President has indicated that he will sign the bills. Since a Public 
Law number is not available, the rule package refers to the Senate and 
House bill numbers for convenience. The amendments to title 35 relating 
to 20-year patent term and provisional applications will be effective 
on the date which is 6 months after the date of enactment.

DATES: Written comments must be submitted on or before February 17, 
1995. A public hearing will be held Thursday, February 16, 1995, at 
9:30 a.m., in the Commissioner's Conference Room 912, Crystal Park 2, 
2121 Crystal Drive, Arlington, Virginia. Requests to present oral 
testimony should be received on or before February 14, 1995.

ADDRESSES: Address written comments and requests to present oral 
testimony to the Commissioner of Patents and Trademarks, Washington, DC 
20231, Attention: Stephen G. Kunin, Deputy Assistant Commissioner for 
Patent Policy and Projects, Crystal Park 2, Suite 919, or by fax to 
(703) 305-8825.

FOR FURTHER INFORMATION CONTACT: Magdalen Y. Greenlief or John F. 
Gonzales, Special Program Examiners, Office of the Deputy Assistant 
Commissioner for Patent Policy and Projects, at (703) 305-9285 or by 
mail marked to their attention and addressed to the Commissioner of 
Patents and Trademarks, Washington, DC 20231.

SUPPLEMENTARY INFORMATION: This proposed rule change is designed 
primarily to implement the changes in practice related to patent term 
provided for in S. 2467 and H.R. 5110. In addition, it is proposed to 
simplify the procedures for filing continuation and divisional 
applications which will benefit both the Office and the public.
    Section 154 of title 35, United States Code, currently provides 
that every patent (other than a design patent) shall be granted for a 
term of seventeen years from the patent issue date, subject to the 
payment of maintenance fees as provided for in title 35. S. 2467 and 
H.R. 5110 amend 35 U.S.C. 154 by establishing a 20-year patent term 
from the date of filing of the application. Specifically, the 
legislation provides that the patent term will begin on the date on 
which the patent issues and will end twenty years from the date on 
which the application was filed in the United States. If the 
application contains a specific reference to an earlier application 
under 35 U.S.C. 120, 121 or 365(c), the patent term will end twenty 
years from the date on which the earliest application relied on was 
filed. As amended by S. 2467 and H.R. 5110, 35 U.S.C. 154 excludes from 
determination of the patent term any application on which priority is 
claimed under 35 U.S.C. 119, 365(a) or 365(b).
    S. 2467 and H.R. 5110 further provide that the term of a patent may 
be extended, for a maximum of five years, where the issuance of a 
patent is delayed because of (1) proceedings under 35 U.S.C. 135(a), 
(2) placement of the application under a secrecy order pursuant to 35 
U.S.C. 181, and/or, under certain circumstances, (3) appellate review 
by the Board of Patent Appeals and Interferences or by a federal court. 
The total extension available is limited to five years regardless of 
whether there were delays due to more than one of the reasons covered 
by the legislation. This extension is separate from and in addition to 
the patent term extension available under 35 U.S.C. 156.
    In addition, S. 2467 and H.R. 5110 establish a domestic priority 
system. In accordance with the provisions of the Paris Convention for 
the Protection of Industrial Property, the term of a patent cannot 
include the Paris Convention priority period. The legislation provides 
a mechanism to enable domestic applicants to quickly and expensively 
file provisional applications. Applicants will be entitled to claim the 
benefit of priority in a given application based upon the previously 
filed provisional application in the United States. The domestic 
priority period will not count in the measurement of the term. Thus, 
under the legislation, domestic applicants will be placed on an equal 
footing with foreign applicants with respect to the patent term.
    35 U.S.C. 111 is amended by S. 2467 and H.R. 5110 to provide for 
the filing of a provisional application. 35 U.S.C. 41(a)(1) is amended 
to provide a $150.00 filing fee for each provisional application, 
subject to a 50 percent reduction for a small entity. The requirements 
for obtaining a filing date for a provisional application are the same 
as those which previously existed for an application filed under 35 
U.S.C. 111, except that no claim or claims as set forth in 35 U.S.C. 
112, second paragraph, is required. Moreover, no oath/declaration as 
set forth in 35 U.S.C. 115 is required. The provisional application is 
also not subject to the provisions of 35 U.S.C. 131, 135 and 157, i.e., 
a provisional application will not be examined for patentability, 
placed in interference or made the subject of a statutory invention 
registration. Further, the provisional application will automatically 
be abandoned twelve (12) months after its filing date and will not be 
subject to revival to restore it to pending status thereafter. Benefit 
of the filing date of the copending provisional application may be 
claimed pursuant to 35 U.S.C. 119(e), as contained in S. 2467 and H.R. 
5110, in a continuing application during these 12 months. A provisonal 
application will not be entitled to claim priority benefits based on 
any other application under 35 U.S.C. 119, 120, 121 or 365.
    Also, S. 2467 and H.R. 5110 amend 35 U.S.C. 119 to allow an 
applicant to claim benefits of the filing date of the provisional 
application in a later filed U.S. application. However, since 35 U.S.C. 
154 excludes from the determination of the patent term any application 
on which priority is claimed under 35 U.S.C. 119, 365(a) or 365(b), the 
filing date of a provisional application will not be considered in 
determining the term of any patent.
    S. 2467 and H.R. 5110 further include transitional provisions for 
limited reexamination in certain applications pending for 2 years or 
longer as of the effective date of 35 U.S.C. 154(a)(2), taking into 
account any reference to any earlier application under 35 U.S.C. 120, 
121 or 365(c). The transitional provisions also permit examination of 
more than one independent and distinct invention in certain 
applications pending for 3 years or longer as of the effective date of 
35 U.S.C. 154(a)(2), taking into account any reference to any earlier 
application under 35 U.S.C. 120, 121 or 365(c). These transitional 
provisions are not applicable to any application which is filed on or 
after the effective date of 35 U.S.C. 154(a)(2), regardless of whether 
the application is a continuing application.
    In addition, this proposed rule change will simplify the procedures 
by eliminating the processing and retention fee practice set forth in 
existing Secs. 1.53(d) and 1.78(a)(1). The processing and retention fee 
practice allows applicants to file an application without the filing 
fee and to pay the processing and retention fee of $130.00 in order for 
the application to be used as a basis for foreign filing and for 
priority under 35 U.S.C. 120. The processing and retention fee practice 
is seldom used and will be unnecessary in view of the legislation which 
provides for the filing of a provisional application with a filing fee 
of $150.00/$75.00. The result achieved by the use of the processing and 
retention fee practice can be achieved by the use of the provisional 
application practice at about the same fee level.
    In order to simplify the procedures for filing continuation and 
divisional applications, it is proposed that Sec. 1.60 be deleted. The 
procedures set forth in Sec. 1.60 are unnecessary in view of the recent 
rule change to Sec. 1.6(d) which permits the filing of a copy of an 
oath or declaration. Applicants may use the procedures set forth in 
Sec. 1.53 to file a continuation or divisional application under 35 
U.S.C. 111(a), as contained in S. 2467 and H.R. 5110, by providing the 
Office with a copy of the prior application as filed. The issue of a 
stale oath or declaration would be eliminated by amending Office 
practice since neither the statute nor the rules require a recent date 
of execution to appear on the oath or declaration. The subject matter 
of the application would have been executed by the inventor(s) and the 
duty of candor and good faith including the duty of disclosure 
requirements of Sec. 1.56 would be continuous and would apply to the 
continuing application.
    Clarifying amendments are proposed to be made to Secs. 1.16, 
paragraphs (a) and (f); and 1.17, paragraphs (h) and (i). These 
proposed amendments do not affect the substance of the rules.
    The fees set forth in current Sec. 1.17, paragraphs (i)(1) and 
(i)(2), are proposed to be consolidated into a new paragraph (i).

Discussion of Specific Rules

    If Title 37 of the Code of Federal Regulations, Parts 1 and 3, are 
amended as proposed:
    Section 1.1 would provide a special ``Box Provisional Patent 
Application'' address to assist the Mail Room in separating and 
processing provisional applications and mail relating thereto.
    Section 1.9 would have current paragraph (a) redesignated as 
subparagraph (a)(1). A new subparagraph (a)(2) would be added to define 
the term ``provisional application'' as a U.S. national application 
filed under 35 U.S.C. 111(b).
    Sections 1.12 and 1.14 would have the reference to 37 CFR 
1.17(i)(1) replaced with a reference to 37 CFR 1.17(i) because it is 
proposed that 37 CFR 1.17(i)(1) and (i)(2) be consolidated into a new 
paragraph (i) since the petition fees provided in existing paragraphs 
(i)(1) and (i)(2) are the same.
    Section 1.16 would list the basic filing fee for a provisional 
application as $75.00 for a small entity (see Sec. 1.19(c)-(f)) or 
$150.00 for other than a small entity as contained in S. 2467 and H.R. 
5110. Since the filing fee for a provisional application is established 
by S. 2467 and H.R. 5110 as a 35 U.S.C. 41(a) fee, the filing fee for a 
provisional application will be subject to the 50 percent reduction 
provided for in 35 U.S.C. 41(h). A complete provisional application 
does not require claims since no examination on the merits will be 
given to a provisional application. However, provisional applications 
may be filed with one or more claims as part of the application. 
Nevertheless, no additional claim fee or multiple dependent claim fee 
will be required in a provisional application.
    Also, proposed Sec. 1.16 paragraph (l), would establish the 
surcharge required by proposed Sec. 1.53(d)(2) for filing the basic 
filing fee or the cover sheet required by proposed Sec. 1.51(a)(2) for 
a provisional application at a time later than the provisional 
application filing date as $25.00 for a small entity or $50.00 for 
other than a small entity. The $50.00/$25.00 surcharge set forth in 
proposed paragraph (1) for a provisional application is less than the 
$130.00/$65.00 surcharge set forth in paragraph (e) for all other types 
of patent applications. A reduced surcharge for a provisional 
application is proposed in view of the lower filing fee required for a 
provisional application and in an attempt to minimize applicant's 
overall cost of filing a provisional application.
    Clarifying changes would be made to Sec. 1.16. These changes do not 
affect the substance of the rule. It is proposed to insert the words 
``basic fee'' in paragraph (f) of Sec. 1.16. Paragraph (e) currently 
refers to ``the basic filing fee''. Current Office practice allows a 
design application to be filed without the design filing fee or the 
oath/declaration as set forth in current Sec. 1.53(d). The change to 
Sec. 1.16(f) is merely for clarification. In addition, it is proposed 
to replace the word ``cases'' found in paragraph (a) with the word 
``applications'', since the word ``applications'' is used elsewhere in 
the rule.
    Section 1.17 would amend paragraph (h) to provide that the $130.00 
petition fee for filing a petition for correction of inventorship under 
37 CFR 1.48 applies to all patent applications, except provisional 
applications which would be covered by new paragraph (q).
    The reference to Sec. 1.60 in Sec. 1.17(i)(1) would be deleted, 
since it is proposed that Sec. 1.60 be removed.
    The words ``of this part'', in Sec. 1.17, paragraphs (h) and (i), 
would be deleted, since the paragraphs currently refer to sections in 
parts other than part 1. No substantive change is intended by this 
proposal.
    Section 1.17(i) would be amended to clarify that petitions relating 
to the grant of a filing date under Sec. 1.53 are for applications 
other than provisional applications. Proposed paragraph (q) would 
address petitions relating to provisional applications.
    In addition, the rules would be simplified by combining current 
Sec. 1.17(i)(1) and (i)(2) into new paragraph (i), since the petition 
fees provided in current paragraphs (i)(1) and (i)(2) are the same. No 
substantive change is intended by this proposal.
    A new Sec. 1.17(q) would be added to establish the fee for filing a 
petition for correction of inventorship under Sec. 1.48 in a 
provisional application as $25.00 for a small entity or $50.00 for 
other than a small entity. The $50.00/$25.00 petition fee would also be 
required by proposed Sec. 1.53 for filing a petition to accord a 
provisional application a filing date or to convert an application 
filed under proposed Sec. 1.53(b)(1) to a provisional application.
    New Secs. 1.17(r) and (s) would be added to establish the fee for 
filing a submission after final rejection under Sec. 1.129(a) and for 
each additional invention requested to be examined under Sec. 1.129(b), 
respectively. These fees have been set at $730.00 to cover the costs of 
processing the submission after final rejection and each additional 
invention requested to be examined.
    Paragraph (l) would be deleted from Sec. 1.21 since the processing 
and retention fee required in existing Sec. 1.53(d) would be eliminated 
and the reference to Sec. 1.60 in paragraph (n) would be deleted since 
Sec. 1.60 would be removed.
    Section 1.28(a) would have the references to Sec. 1.60 deleted 
since Sec. 1.60 would be removed. Section 1.28(a) would be amended to 
delete the references to Sec. 1.62 and to specify the procedure for 
establishing small entity status in continuation, divisional and 
continuation-in-part applications where small entity status has been 
established in a parent application. Where the status as a small entity 
has been established in a parent application and is still proper, 
applicant could include, in a continuation, divisional or continuation-
in-part application, either a reference to a verified statement 
claiming small entity status in the parent application or a copy of the 
verified statement filed in the parent application.
    Section 1.45(c) would state that each inventor named in a joint 
provisional application must have made a contribution to the subject 
matter disclosed in the application. The existing language of paragraph 
(c) refers to ``the subject matter of at least one claim'' which would 
be inappropriate for provisional applications, since provisional 
applications may be filed without claims.
    Section 1.48, paragraphs (a)-(c), would specify that the procedures 
for correcting an error in inventorship set forth in those paragraphs 
relate to applications other than provisional applications. A new 
paragraph (d) would establish a simplified procedure for adding the 
name of an inventor in a provisional application, where the name was 
originally omitted without deceptive intent. Proposed paragraph (d) 
would not require the verified statement of facts by the original 
inventor or inventors, the oath or declaration by each actual inventor 
in compliance with Sec. 1.63 or the consent of any assignee as 
currently required in paragraph (a). The procedure would require the 
filing of a petition identifying the name or names of the inventors to 
be added and including a statement that the name or names of the 
inventors were omitted through error without deceptive intention on the 
part of the actual inventor(s). The statement would be required to be 
verified if made by a person not registered to practice before the 
Office. The statement could be signed by a registered practitioner 
acting in a representative capacity under Sec. 1.34(a). The $50.00/
$25.00 petition fee set forth in proposed Sec. 1.17(q) would also be 
required.
    Under 35 U.S.C. 119(e), as contained in S. 2467 and H.R. 5110, a 
later filed complete application may claim priority benefits based on a 
copending provisional application so long as the applications have at 
least one inventor in common. An error in naming a person as an 
inventor in a provisional application would not require correction by 
deleting the erroneously named inventor from the provisional 
application since this would have no effect upon the ability of the 
provisional application to serve as a basis for a priority claim. 
Therefore, proposed Sec. 1.48(d) would not provide a procedure for 
deleting a named inventory. Any request to delete a named inventor 
filed in a provisional application would be properly treated as a 
petition under Sec. 1.182. As a condition to granting any petition to 
delete a named inventor in a provisional application and in order to 
protect the rights of the inventors/assignees involved, the Office may 
require a statement from all of the named inventors and/or the written 
consent of any assignee.
    Section 1.51 would include a new subparagraph (a)(2) identifying 
the required parts of a complete provisional application. The complete 
provisional application would include a cover sheet, a specification as 
prescribed in 35 U.S.C. 112, first paragraph, any necessary drawings 
and the provisional application filing fee. A suggested cover sheet 
format for a provisional application will be available from the Office 
free of charge to the public. The cover sheet as set forth by proposed 
subparagraph (a)(2)(i) would identify (1) the application as a 
provisional application, (2) the name or names of the inventor or 
inventors, (3) the title of the invention, (4) the name and 
registration number of the attorney or agent (if applicable), (5) the 
docket number used by the person filing the application to identify the 
application (if applicable), and (6) the correspondence address, all of 
which is information required in order to properly prepare the 
provisional application filing receipt.
    The Office currently receives thousands of papers and fees every 
work day. Most papers filed in the Office are received in the 
Correspondence and Mail Division which must identify and route each 
paper to the appropriate area for consideration. Among the papers which 
may currently be filed in the Office are disclosure documents, which 
may comprise a written description and drawings, and applications for 
patent, some of which may be incomplete because claims are omitted. 
Further, applications for patent are frequently received in the Office 
without the filing fee or the oath/declaration required by Sec. 1.63. 
With the inception of provisional application practice, the Office will 
begin receiving another type of document resembling either a disclosure 
document or an incomplete application for patent and which may comprise 
nothing more than a written description and drawings. The potential for 
Office error, e.g., misinterpreting a paper intended as a provisional 
application as some other type of document, will obviously increase. 
Further, with the inception of a twenty-year patent term, it will be 
highly desirable for the Office to process applications, as well as all 
other papers which the Office receives, quickly and correctly.
    While the name or names of the inventors are required in order to 
accord a provisional application a filing date, a provisional 
application is not required to be signed by the inventor or the 
assignee. No oath or declaration is required. Presumably, most 
provisional applications will be filed by a registered practitioner 
without a power of attorney being filed. If an essential part, e.g., 
the drawings, of the provisional application is omitted or if the 
filing fee did not accompany the application, the Office will need a 
correspondence address to notify the applicant of the omission.
    The cover sheet required in Sec. 1.51 would provide the 
Correspondence and Mail Division with a paper specifically identifying 
the document as a provisional application and would provide the 
Application Processing Division with most of the information it will 
need to promptly and properly process the provisional application and 
to prepare the official filing receipt. The cover sheet would also 
provide applicants and practitioners with a checklist prior to the 
filing of the provisional application.
    Since no substantive examination would be given to any provisional 
application, the filing of an information disclosure statement in a 
provisional application is unnecessary and will not be permitted. 
Therefore, paragraph (b) of Sec. 1.51 would make it clear that the 
Office will not accept an information disclosure statement in a 
provisional application. Any information disclosure statements filed in 
a provisional application would either be returned or disposed of at 
the convenience of the Office.
    Section 1.53 would have the title and paragraph (a) revised to 
refer to application number, rather than application serial number. The 
term ``application number'' is found in current Sec. 1.5(a).
    A new paragraph (b)(2) would be added to Sec. 1.53 setting forth 
the requirements for obtaining a filing date for a provisional 
application. Existing paragraph (b) would be redesignated as paragraph 
(b)(1) and would be amended to: (1) Refer to Sec. 1.17(i) rather than 
1.17(i)(1) to conform to the proposed change therein; (2) delete the 
reference to Sec. 1.60 which is proposed to be removed; and (3) clarify 
that continuations, divisions and continuations-in-part may be filed 
under either Sec. 1.53 or Sec. 1.62. Paragraph (b)(2) would state that 
a filing date would be accorded to a provisional application as of the 
date the written description, any necessary drawings and the names of 
all inventors are filed in the Office. The filing date requirements for 
a provisional application set forth in new paragraph (b)(2) parallel 
the existing requirements set forth in current paragraph (b), except 
that no claim would be required. In order to keep the cost of 
processing provisional applications down and to reduce the handling of 
the provisional applications, amendments, other than those required to 
make the provisional application comply with applicable regulations, 
would not be permitted after the filing date of the provisional 
application.
    New Sec. 1.53(b)(2)(i) would require all provisional applications 
to be filed with a cover sheet identifying the application as a 
provisional application. The paragraph would also indicate that the 
Office will treat an application as having been filed under paragraph 
(b)(1), unless the application is identified as a provisional 
application. This proposal is similar to the current requirement in 
Sec. 1.62 that the application include a specific request for an 
application under Sec. 1.62. The cover sheet with identification that a 
provisional application is intended should greatly assist the 
Correspondence and Mail Division in distinguishing provisional 
applications from other types of applications. A provisional 
application, which is identified as such, but which does not have a 
complete cover sheet as required by Sec. 1.51(a)(2)(i) would be treated 
as a provisional application. The complete cover sheet and a surcharge 
would be required to be submitted at a later date.
    Section 1.53(b)(2)(ii) would establish a procedure for converting 
an application filed under Sec. 1.53(b)(1) to a provisional 
application. The procedure would require the filing of a petition 
requesting the conversion and the $50.00/$25.00 petition fee set forth 
in Sec. 1.17(q). Filing of the petition in the application would be 
required prior to the payment of the issue fee or prior to 12 months 
after its filing date, whichever event is earlier. The grant of any 
such petition would not entitle applicant to a refund of the fees 
properly paid in the application filed under Sec. 1.53(b)(1).
    Section 1.53(b)(2)(iii) is intended to call attention to the 
provisions of S. 2467 and H.R. 5110 which prohibit any provisional 
application from claiming a right of priority under 35 U.S.C. 119 or 
365(a) or the benefit of an earlier filing date under 35 U.S.C. 120, 
121 or 365(c) of any other application. Attention would be called to 
the provisions of the legislation which provide that no claim for 
benefit of an earlier filing date may be made in a design application 
based on a provisional application and that no request for a statutory 
invention registration may be filed in a provisional application. 
Section 1.53(b)(2)(iii) would specify that the requirements of 
Sec. 1.821(e), relating to the filing of a copy of the ``Sequence 
Listing'' in computer readable form, are not applicable to a 
provisional application. It is noted that all other sequence 
requirements as set forth in Sec. 1.821 through 1.823 and 1.825 are 
applicable to a provisional application.
    Section 1.53(c) would require that any request for review of a 
refusal to accord an application a filing date be made by way of a 
petition accompanied by the fee set forth in Sec. 1.17(i), i.e., 
$130.00, if the application was filed under Sec. 1.53(b)(1), or by the 
fee set forth in Sec. 1.17(q), i.e., $50.00/$25.00, if the application 
was filed under Sec. 1.53(b)(2). This reflects the current practice set 
forth in section 506.02 of the Manual of Patent Examining Procedure 
(MPEP) with regard to any request for review of a refusal to accord a 
filing date for an application. The Office would continue its current 
practice of refunding the petition fee, if the refusal to accord the 
requested filing date is found to have been an Office error.
    Current paragraph (d) of Sec. 1.53 would be redesignated as 
paragraph (d)(1) and would be amended to delete the references to the 
processing and retention fee practice which would be eliminated by this 
proposal in view of the proposed provisional application practice. 
Under proposed paragraph (d)(2), the provisional application could be 
filed without the basic filing fee (set by S. 2467 and H.R. 5110 as 
$150.00 for other than a small entity, subject to a 50 percent 
reduction for small entity) and without the complete cover sheet 
required by proposed Sec. 1.51(a)(2). In such a case, the proposed rule 
provides that the applicant will be notified and be given a period of 
time in which to file the missing fee, and/or cover sheet and to pay 
the surcharge set forth in proposed Sec. 1.16(1).
    Section 1.53(e)(2) would be added to indicate that a provisional 
application would not be given a substantive examination and would be 
abandoned no later than twelve (12) months after its filing date as set 
forth in S. 2467 and H.R. 5110.
    Section 1.55 would have the reference to 35 U.S.C. 119 replaced 
with a reference to 35 U.S.C. 119(a)-(d) and would specify that a 
provisional application is not entitled to the right of foreign 
priority under proposed 35 U.S.C. 119(a)(-(d). S. 2467 and H.R. 5110 
amend 35 U.S.C. 119 by assigning letters (a), (b), (c) and (d) to the 
existing paragraphs of 35 U.S.C. 119. These paragraphs are directed to 
claims for foreign priority. In addition, 35 U.S.C. 111 is amended to 
provide that a provisional application may not claim or be entitled to 
the right of foreign priority of any other application under 35 U.S.C. 
119. Therefore, provisional applications are not included in Sec. 1.55. 
In addition, the reference to 37 CFR 1.17(i)(1) would be replaced by 37 
CFR 1.17(i) to be consistent with the proposed change to Sec. 1.17. No 
substantive change is intended by this proposal.
    Section 1.59 would delete the reference to the processing and 
retention fee which is proposed to be eliminated from Sec. 1.53(d).
    Section 1.60 would be removed and reserved. The procedures set 
forth in Sec. 1.60 for filing a continuation or divisional application 
are unnecessary in view of the recent rule change to Sec. 1.6(d) which 
permits the filing of a copy of the signed oath or declaration. This is 
appropriate since neither the statute nor the rules require a recent 
date of execution to appear on the oath or declaration and the duty of 
disclosure requirements under Sec. 1.56 would apply to the continuing 
application. The issue of a stale oath or declaration would be 
eliminated by appropriately amending the procedures set forth in the 
Manual of Patent Examining Procedure.
    The Office currently receives a number of petitions requesting that 
an application filed under Sec. 1.60 be accepted even though at the 
time of filing of the application, applicant failed to comply with all 
the requirements of Sec. 1.60 due to inadvertent error on the part of 
the applicant. The deletion of Sec. 1.60 will help reduce the number of 
petitions and will simplify the procedures for filing an application 
for both the Office and patent practitioners. Applicants may use the 
procedures set forth in Sec. 1.53 to file a continuation or divisional 
application under 35 U.S.C. 111(a) by providing the Office with a copy 
of the prior application. Failure to submit a complete copy of the 
prior application may be corrected by way of a petition under 
Sec. 1.182.
    Section 1.62 would state that the procedure could be used for 
filing a continuation, division or continuation-in-part of a complete 
application filed under Sec. 1.53(b)(1) but not a provisional 
application under Sec. 1.53(b)(2). The section would specifically 
preclude the use of the file wrapper continuing procedures set forth in 
Sec. 1.62 for filing the first complete application under 35 U.S.C. 
111(a) which claims the benefit of an earlier filing date of a 
provisional application. In view of the relatively small filing fee for 
a provisional application and the fact that the provisional application 
will not be examined, Office handling must be kept to a minimum and 
these provisional applications, once complete, will be sent to the 
Files Repository for storage rather than being kept in the examination 
area of the Office. It would be burdensome for the Office to retrieve 
these provisional applications so that an applicant could use the 
procedures set forth in Sec. 1.62. Furthermore, since claims and an 
oath or declaration are not required in a provisional application and 
the first complete application would most likely contain additional 
subject matter not disclosed in the provisional application, the 
procedures set forth in Sec. 1.53 for filing an application will meet 
applicants' needs.
    Reference to 37 CFR 1.17(i)(1) in Sec. 1.62 would be replaced by 37 
CFR 1.17(i) to be consistent with the proposed change to Sec. 1.17. 
Furthermore, the phrase ``Serial number, filing date'' in Sec. 1.62(a) 
and the term ``application serial number'' in Sec. 1.62(e) would be 
changed to ``application number.'' The term ``application number'' is 
found in current Sec. 1.5(a).
    Section 1.63(a) would have the reference to Sec. 1.51(a)(2) 
replaced with a reference to Sec. 1.51(a)(1)(ii) in order to conform 
with the proposed changes in Sec. 1.51.
    Section 1.67(b) would have the reference to Sec. 1.53(d) replaced 
with a reference to Sec. 1.53(d)(1) in order to conform with the 
proposed changes in Sec. 1.53. Furthermore, the references to 
Secs. 1.53(b) and 1.118 would be deleted to make clear that the new 
matter exclusion applies to all applications including those filed 
under Sec. 1.62.
    Section 1.78(a)(1) and (a)(2) would specifically preclude a 
provisional application from claiming the benefit of an earlier filing 
date of a prior copending application filed in the United States under 
Sec. 1.53(b)(1) or Sec. 1.62. S. 2467 and H.R. 5110 amend 35 U.S.C. 111 
to provide that a provisional application is not entitled to the 
benefit of an earlier filing date in the United States under 35 U.S.C. 
120, 121 or 365(c). Furthermore, the reference in Sec. 1.78(a)(1) to 
the processing and retention fee required in existing Sec. 1.53(d) 
would be deleted. The use of serial number and filing date in 
Sec. 1.78(a)(2) as an identifier for a prior application would be 
eliminated to avoid any confusion as to whether an application 
identified by its serial number and filing date is an application filed 
under proposed Sec. 1.53(b)(1) or Sec. 1.62 or a design application 
since there is a different series code assigned to each of these types 
of applications.
    In addition, new subparagraphs (a)(3) and (a)(4) would be added to 
Sec. 1.78 to set forth the procedures for claiming the benefit of an 
earlier filing date based on a prior filed copending provisional 
application. The later filed application must be an application other 
than for a design patent and must be copending with the provisional 
application, which will be abandoned by operation of law no later than 
12 months after filing. There must be a common inventor named in both 
the prior provisional application and the later filed application. The 
prior provisional application must be complete as set forth in proposed 
Sec. 1.51(a)(2), or entitled to a filing date as set forth in proposed 
Sec. 1.53(b)(2) and include the basic filing fee. Newly added 
subparagraphs (a)(3) and (a)(4) parallel the existing requirements set 
forth in subparagraphs (a)(1) and (a)(2) for other than a provisional 
application.
    Section 1.83 would have current paragraph (a) redesignated as 
subparagraph (a)(1) and would clarify that this paragraph relates to 
the content of the drawings in applications other than provisional 
applications. A new subparagraph (a)(2) would set forth the required 
content of the drawings filed in a provisional application. Since 
claims would not be required in a provisional application, the drawings 
filed in a provisional application would be required to show every 
feature of the invention disclosed in the description, rather than 
specified in the claims as in subparagraph (a)(1), where necessary to 
understand the subject matter of the invention. In addition, the 
reference to paragraph (a) in Sec. 1.83(c) would be replaced by a 
reference to paragraph (a)(1).
    Section 1.97(d) would have the reference to Sec. 1.17(i)(1) 
replaced with a reference to Sec. 1.17(i) to be consistent with the 
proposed change to Sec. 1.17. No substantive change is intended by this 
proposal.
    Section 1.101(a) would indicate that provisional applications filed 
under Sec. 1.53(b)(2) would not be examined.
    Section 1.102(d) would have the reference to Sec. 1.17(i)(2) 
replaced with a reference to Sec. 1.17(i) to be consistent with the 
proposed change to Sec. 1.17. No substantive change is intended by this 
proposal.
    Section 1.103(a) would have the reference to Sec. 1.17(i)(1) 
replaced with a reference to Sec. 1.17(i) to be consistent with the 
proposed changed to Sec. 1.17. No substantive change is intended by 
this proposal.
    Section 1.129 would be added to set forth the procedure for 
implementing certain transitional provisions contained in S. 2467 and 
H.R. 5110. These transitional provisions are not applicable to any 
application which is filed on or after the effective date of 35 U.S.C. 
154(a)(2) or to any design or reissue application. Paragraph (a) of 
proposed Sec. 1.129 would provide for limited reexamination in certain 
applications pending for 2 years or longer as of the effective date of 
35 U.S.C. 154(a)(2), taking into account any reference to any earlier 
application under 35 U.S.C. 120, 121 or 365(c). Under the proposed 
procedure, an applicant would be entitled to have a first submission 
entered and considered on the merits after final rejection if (1) the 
submission is filed prior to or simultaneously with the filing of a 
notice of appeal and prior to abandonment of the application and (2) 
the $730.00 feet set forth in proposed Sec. 1.17(r) is paid within one 
month of any written notification from the Office refusing entry of the 
first submission and prior to abandonment of the application. If 
applicant complies with the requirements of the proposed rule, the 
finality of the previous rejection would be withdrawn and the 
submission would be entered and considered on the merits to the extent 
that the submission would have been considered if made prior to final 
rejection. The subsequent Office action could be made final under 
existing Office practice. If a subsequent final rejection is made in 
the application, applicant would be entitled to have a second 
submission entered and considered on the merits under the same 
conditions set forth for consideration of the first submission. 
Paragraph (a) would also define the term ``submission'' as including, 
but 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. For example, the 
submission may include an amendment, a new substantive argument and an 
information disclosure statement. In view of the $730.00 fee required 
in proposed Sec. 1.17(r), any information disclosure statement 
previously refused consideration in the application because of 
applicant's failure to provide the certification under Sec. 1.97(e) or 
to pay the fee set forth in Sec. 1.17(p) or which is filed as part of 
either the first or second submission would be treated as though it had 
been filed within one of the time periods set forth in Sec. 1.97(b) and 
would be considered without the petition and petition fee required in 
Sec. 1.97(d), if it complies with the requirements of Sec. 1.98.
    Paragraph (b) of proposed Sec. 1.129 would provide for examination 
of more than one independent and distinct invention in certain 
applications pending for 3 years or longer as of the effective date of 
35 U.S.C. 154(a)(2), taking into account any reference to any earlier 
application under 35 U.S.C. 120, 121 or 365(c). Under the proposed 
procedure, a requirement for restriction or for the filing of 
divisional applications would only be made or maintained in the 
application after the effective date of 35 U.S.C. 154(a)(2) if: (1) The 
requirement was made in the application or in an earlier application 
relied on under 35 U.S.C. 120, 121 or 365(c) more than two months prior 
to the effective date; (2) the examiner has not issued any Office 
action in the application due to actions by the applicant; or (3) the 
required fee for examination of each additional invention was not paid. 
If the application contains claims to more than one independent and 
distinct invention, and no requirement for restriction or for the 
filing of divisional applications can be made or maintained as a result 
of proposed Sec. 1.129(b), applicant will be notified and given a one 
month time period to pay the $730.00 fee set forth in proposed 
Sec. 1.17(s) for each independent and distinct invention claimed in the 
application in excess of one. The fee set forth in proposed 
Sec. 1.17(s) would not be subject to the 50 percent reduction for a 
small entity. The additional inventions for which the required fee 
under Sec. 1.17(s) has not been paid would 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.
    Section 1.139 would be added to set forth the procedures for 
reviving a provisional application where the delay was unavoidable or 
unintentional. Paragraph (a) would address the revival of a provisional 
application where the delay was unavoidable and paragraph (b) would 
address the revival of a provisional application where the delay was 
unintentional.
    Applicant may petition to have an abandoned provisional application 
revived as a pending provisional application for a period of no longer 
than twelve months from the filing date of the provisional application 
where the delay was unavoidable or unintentional. It would be 
permissible to file a petition for revival later than twelve months 
from the filing date of the provisional application but only to revive 
the application for the twelve-month period following filing. Thus, 
even if the petition were granted to reestablish the pendency up to the 
end of the twelve-month period, the provisional application would not 
be considered pending after twelve months from its filing date. The 
requirements for reviving an abandoned provisional application set 
forth in this new rule parallel the existing requirements set forth in 
Sec. 1.137.
    Sections 1.177, 1.312(b), 1.313(a), 1.314 and 1.666 would have the 
reference to Sec. 1.17(i)(1) replaced with a reference to Sec. 1.17(i) 
to be consistent with the proposed change to Sec. 1.17. No substantive 
change is intended by these proposals.
    Section 1.701 would be added to provide for the extension of patent 
term where the issuance of a patent on an application filed after the 
implementation date of the 20-year patent term provisions of S. 2467 
and H.R. 5110, other than for designs, was delayed due to certain 
causes of prosecution delay. By virtue of 35 U.S.C. 173, the term of a 
patent and patent term extension under proposed 35 U.S.C. 154 do not 
apply to patents for designs.
    The provisions for patent term extension under proposed Sec. 1.701 
are separate from and in addition to the patent term extension 
provisions of 35 U.S.C. 156. The patent term extension provisions of S. 
2467 and H.R. 5110 are designed to compensate the patent owner for 
delays in issuing a patent, whereas the patent term extension 
provisions of 35 U.S.C. 156 are designed to restore term lost to 
premarket regulatory review after the grant of a patent. In order to 
prevent a term extension under proposed section 1.701 from precluding a 
term extension under 35 U.S.C. 156, S. 2467 and H.R. 5110 amend 35 
U.S.C. 156(a)(2) to provide that the term has never been extended under 
35 U.S.C. 156(e)(1).
    Under proposed 35 U.S.C. 154(b)(1), if the issuance of a patent is 
delayed due to proceedings under 35 U.S.C. 135(a) and/or the 
application is placed under a secrecy order under 35 U.S.C. 181, the 
term of a patent could be extended for the period of delay up to five 
years. Proceedings under 35 U.S.C. 135(a) include any appeal to federal 
court. Under proposed 35 U.S.C. 154(b)(2), if the issuance of a patent 
is delayed due to appellate review by the Board of Patent Appeals and 
Interferences or by a federal court and the patent was issued pursuant 
to a decision reversing an adverse determination of patentability and 
if the patent is not subject to a terminal disclaimer due to the 
issuance of another patent claiming subject matter that is not 
patentably distinct from that under appellate review, the term of the 
patent could be extended for the period of delay up to five years. 
Pursuant to 35 U.S.C. 154(b)(4), as contained in S. 2467 and H.R. 5110, 
the term of a patent could only be extended under 35 U.S.C. 154(b)(1) 
and (b)(2) for a maximum of five years regardless of whether there were 
delays due to more than one of the reasons covered under 35 U.S.C. 
154(b) (1) and (2). Proposed subparagraph (c)(1) of Sec. 1.701 sets 
forth the method for calculating the period of delay where the delay 
was a result of proceedings under 35 U.S.C. 135(a). Proposed 
subparagraph (c)(2) sets forth the method for calculating the period of 
delay where the delay was a result of the application being placed 
under a secrecy order. Proposed subparagraph (c)(3) sets forth the 
method of calculating the period of delay where the delay was a result 
of appellate review. Pursuant to proposed Sec. 1.701(d)(1), the period 
of delay set forth in subparagraph (c)(3) shall be reduced by any time 
calculated under subparagraph (c)(3) before the expiration of three 
years from the filing date of the first national patent application 
presented for examination. The filing date for the purpose of 
Sec. 1.701(d)(1) would be the earliest effective U.S. filing date but 
not including the filing date of a provisional application or the 
international filing date of a PCT application. For PCT applications 
entering the national stage, the filing date for the purpose of 
Sec. 1.701(d)(1) would be the date on which applicant has complied with 
the requirements of Sec. 1.494(b), or Sec. 1.495(b) if applicable. 
Pursuant to proposed Sec. 1.701(d)(2), the period of delay set forth in 
subparagraph (c)(3) shall also be reduced by any time, as determined by 
the Commission, during which the applicant did not act with due 
diligence. The standard for determining due diligence is whether the 
applicant exhibited that degree of timeliness as may reasonably be 
expected from, and which is ordinarily exercised by, a person during 
the pendency period of the application. Examples of what may constitute 
lack of due diligence for this purpose include requests for extensions 
of time to respond to Office communications, submission of a response 
which is not fully responsive to an Office communication, and filing of 
informal applications. Applicants need not file a request for the 
extension of patent term under proposed Sec. 1.701. The extension of 
patent term is automatic by operation of law. It is currently 
anticipated that applicant would be advised as to the length of any 
patent term extension at the time of receiving the Notice of Allowance 
and Issue Fee Due. Review of any determination as to the length of 
patent term extension would be by way of petition under Sec. 1.181.
    Section 3.21 would eliminate the use of serial number and filing 
date as an identifier for national patent applications in assignment 
documents. This proposal would eliminate any confusion as to whether an 
application identified by its serial number and filing date in an 
assignment document is an application filed under proposed 
Sec. 1.53(b)(1) or Sec. 1.62 or a design application or a provisional 
application since there is a different series code assigned to each of 
these types of applications. If an assignment was executed after the 
filing of the national application, the assignment would be required to 
identify the application by the application number, consisting of the 
series code and serial number, e.g., 07/123,456 (for applications filed 
under proposed Sec. 1.53(b)(1) or 1.62), 29/123,456 (for design 
applications) or 59/123,456 (for provisional applications filed under 
proposed Sec. 1.53 (b)(2)). The series code would be required since it 
would clearly identify the application to which the assignment document 
is directed.
    Section 3.21 would be further clarified to indicate that existing 
requirements relating to assignments executed before the filing of the 
application refer to applications other than provisional applications. 
Section 3.21 would be further amended to specify the requirements for 
identifying a provisional application in an assignment executed before 
the filing of the provisional application. The assignment would be 
required to identify the provisional application by name of each 
inventor and the title of the invention. The date of the execution of 
the provisional application would not be required since a provisional 
application need not be executed by the inventors.
    Section 3.81 would have the reference to Sec. 1.17(i)(1) replaced 
with a reference to Sec. 1.17(i) to be consistent with the proposed 
change to Sec. 1.17. No substantive change is intended by this 
proposal.

Other Considerations

    The proposed rule changes are in conformity with the requirements 
of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq., Executive 
Order 12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et 
seq. This proposed rule has been determined to be not significant for 
the purposes of E.O. 12866.
    The Assistant General Counsel for Legislation and Regulation of the 
Department of Commerce has certified to the Chief Counsel for Advocacy, 
Small Business Administration, that the proposed rule changes will not 
have a significant economic impact on a substantial number of small 
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal 
impact of these changes is to provide a procedure for domestic 
applicants to quickly and inexpensively file a provisional application. 
The filing date of the provisional application will not be used to 
measure the term of a patent granted on an application which claims the 
earlier filing date of the provisional application.
    The Patent and Trademark Office has also determined that this 
notice has no Federalism implications affecting the relationship 
between the National Government and the States as outlined in E.O. 
12612.
    These proposed rules contain collections of information subject to 
the requirements of the Paperwork Reduction Act (Act). The provisional 
application has been approved by the Office of Management and Budget 
under control numbers 0651-0031 and 0651-0032. The cover sheet is 
necessary to expedite the processing of a provisional application and 
improve quality. Public reporting burden for the collection of 
information on the cover sheet is estimated to average 12 minutes per 
response, including the time for reviewing instructions, searching 
existing data sources, gathering and maintaining the data needed, and 
completing and reviewing the collection of information. Send comments 
regarding this burden estimate or any other aspect of this collection 
of information, including suggestions for reducing the burden to the 
Office of Assistance Quality and Enhancement Division, Patent and 
Trademark Office Washington, DC 20231, and to the Office of Information 
and Regulatory Affairs, Office of Management and Budget, Washington, DC 
20503.
    Notice is hereby given that pursuant to the authority granted to 
the Commissioner of Patents and Trademarks by 35 U.S.C. 6, the Patent 
and Trademark Office proposes to amend Title 37 of the Code of Federal 
Regulations as set forth below.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and record keeping 
requirements, Small businesses.

37 CFR Part 3

    Administrative practice and procedure, Inventions and patents, 
Reporting and record keeping requirements.
    For the reasons set forth in the preamble, 37 CFR parts 1 and 3 are 
proposed to be amended as follows, with removals (other than Sec. 1.60 
which is proposed to be removed and reserved) indicated by brackets 
([]) and additions by arrows (><):

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR part 1 would continue to read 
as follows:

    Authority: 35 U.S.C. 6 unless otherwise noted.

    2. Section 1.1 is proposed to be amended by adding new paragraph 
(i) to read as follows:


Sec. 1.1  All communications to be addressed to Commissioner of Patents 
and Trademarks.

* * * * *
    >(i) The filing of all provisional applications and any 
communications relating thereto should be additionally marked ``Box 
Provisional Patent Application.''<
* * * * *
    3. Section 1.9 is proposed to be amended by revising paragraph (a) 
to read as follows:


Sec. 1.9  Definitions

    (a)>(1)(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).<
* * * * *
    4. Section 1.12 is proposed to be amended by revising paragraph (c) 
to read as follows:


Sec. 1.12  Assignment records open to public inspection.

* * * * *
    (c) Any request by a member of the public seeking copies of any 
assignment records of any pending or abandoned patent application 
preserved in secrecy under Sec. 1.14, or any information with respect 
thereto, must
    (1) Be in the form of a petition accompanied by the petition fee 
set forth in Sec. 1.17(i)[(1)], 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.
* * * * *
    5. Section 1.14 is proposed to be amended by revising paragraph (e) 
to read as follows:


Sec. 1.14  Patent applications preserved in secrecy.

* * * * *
    (e) Any request by a member of the public seeking access to, or 
copies of, any pending or abandoned application preserved in secrecy 
pursuant to paragraphs (a) and (b) of this section, or any papers 
relating thereto, must
    (1) Be in the form of a petition and be accompanied by the petition 
fee set forth in Sec. 1.17(i)[(1)], or
    (2) Include written authority granting access to the member of the 
public in that particular application from the applicant or the 
applicant's assignee or attorney or agent of record.
* * * * *
    6. Section 1.16 is proposed to be amended by revising paragraphs 
(a)-(g) and by adding new paragraphs (k) and (l) to read as follows:


Sec. 1.16  National application filing fees.

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

By a small entity (Sec. 1.9(f))...............................   $365.00
By other than a small entity..................................    730.00
                                                                        

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

By a small entity (Sec. 1.9(f))................................    38.00
By other than a small entity...................................    76.00
                                                                        

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

By a small entity (Sec. 1.9(f))................................    11.00
By other than a small entity...................................    22.00
                                                                        

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

By a small entity (Sec. 1.9(f))................................   120.00
By other than a small entity...................................   240.00
                                                                        

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

    (e) Surcharge for filing the basic filing fee or oath or 
declaration on a date later than the filing date of the application>, 
except provisional applications<:

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

    (f) >Basic fee< for filing each design application:

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

    (g) Basic fee for filing each plant application>, except 
provisional applications,<:

By a small entity (Sec. 1.9(f))................................   245.00
By other than a small entity...................................   490.00
                                                                        

* * * * *
    >(k) Basic fee for filing each provisional application:

By a small entity (Sec. 1.9(f))................................    75.00
By other than a small entity...................................   150.00
                                                                        

    (l) Surcharge for filing the basic filing fee or cover sheet 
(Sec. 1.51(a)(2)(i)) on a date later than the filing date of the 
provisional application:

By a small entity (Sec. 1.9(f))................................  25.00  
By other than a small entity...................................  50.00< 
                                                                        

* * * * *
    7. Section 1.17 is proposed to be amended by revising paragraphs 
(h) and (i)(1) and by removing paragraph (i)(2) and by adding new 
paragraphs (q), (r) and (s) to read as follows:


Sec. 1.17  Patent application processing fees.

* * * * *

(h) For filing a petition to the Commissioner under a section           
 [of this part] listed below which refers to this paragraph..     130.00
                                                                        

    Sec. 1.47--for filing by other than all the inventors or a 
person not the inventor.
    Sec. 1.48--for correction of inventorship>, except in 
provisional applications<.
    Sec. 1.182--for decision on questions not specifically provided 
for.
    Sec. 1.183--to suspend the rules.
    Sec. 1.295--for review of refusal to publish a statutory 
invention registration.
    Sec. 1.377--for review of decision refusing to accept and record 
payment of a maintenance fee filed prior to expiration of patent.
    Sec. 1.378(e)--for reconsideration of decision on petition 
refusing to accept delayed payment of maintenance fee in expired 
patent.
    Sec. 1.644(e)--for petition in an interference.
    Sec. 1.644(f)--for request for reconsideration of a decision on 
petition in an interference.
    Sec. 1.666(c)--for late filing of interference settlement 
agreement.
    Secs. 5.12, 5.13 & 5.14--for expedited handling of a foreign 
filing license.
    Sec. 5.15--for changing the scope of a license.
    Sec. 5.25--for retroactive license.


(i) [(1)] For filing a petition to the Commissioner under a             
 section [of this part] listed below which refers to this               
 paragraph...................................................     130.00
                                                                        

    Sec. 1.12--for access to an assignment record.
    Sec. 1.14--for access to an application.
    Sec. 1.53--to accord a filing date>, except in provisional 
applications<.
    Sec. 1.55--for entry of late priority papers.
    [Sec. 1.60--to accord a filing date.]
    Sec. 1.62--to accord a filing date.
    Sec. 1.97(d)--to consider an information disclosure statement.
    >Sec. 1.102--to make application special.<
    Sec. 1.103--to suspend action in application.
    Sec. 1.177--for divisional reissues to issue separately.
    Sec. 1.312--for amendment after payment of issue fee.
    Sec. 1.313--to withdraw an application from issue.
    Sec. 1.314--to defer issuance of a patent.
    Sec. 1.666(b)--for access to interference settlement agreement.
    Sec. 3.81--for patent to issue to assignee, assignment submitted 
after payment of the issue fee.


[(2) For filing a petition to the Commissioner under Sec.               
 1.102 of this part to make application special..............    130.00]
                                                                        

* * * * *
    >(q) For filing a petition to the Commissioner under a section 
listed below which refers to this paragraph:


By a small entity (Sec. 1.9(f))..............................      25.00
By other than a small entity.................................      50.00
                                                                        

    Sec. 1.48--for correction of inventorship in a provisional 
application.
    Sec. 1.53--to accord a provisional application a filing date or 
to convert an application filed under Sec. 1.53(b)(1) to a 
provisional application.


(r) For filing a submission after final rejection under Sec.            
 1.129(a)....................................................     730.00
(s) For each additional invention requested to be examined              
 under Sec. 1.129(b).........................................    730.00<
                                                                        

    8. Section 1.21 is proposed to be amended by removing paragraph 
(l), revising paragraph (n) and republishing the introductory text to 
read as follows:


Sec. 1.21  Miscellaneous fees and charges.

    The Patent and Trademark Office has established the following fees 
for the services indicated:
* * * * *

(1) >[Reserved]< [For processing and retaining any                      
 application abandoned pursuant to Sec. 1.53(d) unless the              
 required basic filing fee has been paid.....................   $130.00]
                                                                        

* * * * *

(n) For handling an incomplete or improper application under            
 Sec. 1.53(c)[, Sec. 1.60] or Sec. 1.62......................    $130.00
                                                                        

* * * * *
    9. Section 1.28 is proposed to be amended by revising paragraph (a) 
to read as follows:


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

    (a) The failure to establish status as a small entity (Secs. 1.9(f) 
and 1.27 of this part) in any application or patent prior to paying, or 
at the time of paying, any fee precludes payment of the fee in the 
amount established for small entities. A refund pursuant to Sec. 1.26 
of this part, based on establishment of small entity status, of a 
portion of fees timely paid in full prior to establishing status as a 
small entity may only be obtained if a verified statement under 
Sec. 1.27 and a request for a refund of the excess amount are filed 
within two months of the date of the timely payment of the full fee. 
The two-month time period is not extendable under Sec. 1.136. Status as 
a small entity is waived for any fee by the failure to establish the 
status prior to paying, at the time of paying, or within two months of 
the date of payment of, the fee. Status as a small entity must be 
specifically established [by a verified statement filed] in each 
application or patent in which the status is available and desired[, 
except those applications filed under Sec. 1.60 or Sec. 1.62 of this 
part where the status as a small entity has been established in a 
parent application and is still proper]. >Status as a small entity in 
one application or patent does not affect any other application or 
patent, including applications or patents which are directly or 
indirectly dependent upon the application or patent in which the status 
has been established. Applications filed as continuations, divisions or 
continuations-in-part of a parent application must include a reference 
to a verified statement in the parent application or include a copy of 
the verified statement filed in the parent application if status as a 
small entity is still proper and desired.< Once status as a small 
entity has been established in an application or patent, the status 
remains in that application or patent without the filing of a further 
verified statement pursuant to Sec. 1.27 of this part unless the Office 
is notified of a change in status. [Status as a small entity in one 
application or patent does not affect any other application or patent, 
including applications or patents which are directly or indirectly 
dependent upon the application or patent in which the status has been 
established, except those filed under Sec. 1.60 or Sec. 1.62 of this 
part. Applications filed under Sec. 1.60 or Sec. 1.62 of this part must 
include a reference to a verified statement in a parent application if 
status as a small entity is still proper and desired.]
* * * * *
    10. Section 1.45 paragraph (c) is proposed to be revised to read as 
follows:


Sec. 1.45  Joint inventors.

* * * * *
    (c) If multiple inventors are named in an application, >other than 
a provisional application under Sec. 1.53(b)(2),< 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.<
    11. Section 1.48 is proposed to be revised to read as follows:


Sec. 1.48  Correction of inventorship.

    (a) If the correct inventor or inventors are not named in an 
application for patent>, other than a provisional application,< through 
error without any deceptive intention on the part of the actual 
inventor or inventors, the application may be amended to name only the 
actual inventor or inventors. Such amendment must be diligently made 
and must be accompanied by:
    (1) A petition including a statement of facts verified by the 
original named inventor or inventors establishing when the error 
without deceptive intention was discovered and how it occurred;
    (2) An oath or declaration by each actual inventor or inventors as 
required by Sec. 1.63;
    (3) The fee set forth in Sec. 1.17(h); and
    (4) The written consent of any assignee. When the application is 
involved in an interference, the petition shall comply with the 
requirements of this section and shall be accompanied by a motion under 
Sec. 1.634.
    (b) If the correct inventors are named in the application >,other 
than a provisional application,< when filed and the prosecution of the 
application results in the amendment or cancellation of claims so that 
less than all of the originally named inventors are the actual 
inventors of the invention being claimed in the application, an 
amendment shall be filed deleting the names of the person or persons 
who are not inventors of the invention being claimed. The amendment 
must be diligently made and shall be accompanied by:
    (1) A petition including a statement identifying each named 
inventor who is being deleted and acknowledging that the inventor's 
invention is no longer being claimed in the application, and
    (2) The fee set forth in Sec. 1.17(h).
    (c) If an application >,other than a provisional application< 
discloses unclaimed subject matter by an inventor or inventors not 
named in the application, the application may be amended pursuant to 
paragraph (a) of this section to add claims to the subject matter and 
name the correct inventors for the application.
    >(d) If the name or names of an inventor or inventors were omitted 
in a provisional application for patent filed under Sec. 1.53(b)(2) 
through error without any deceptive intention on the part of the actual 
inventor or inventors, the provisional application may be amended to 
add the name or names of the actual inventor or inventors. Such 
amendment must be accompanied by:
    (1) A petition including a statement that the error occurred 
without deceptive intention on the part of the actual inventor or 
inventors, which statement must be a verified statement if made by a 
person not registered to practice before the Patent and Trademark 
Office; and
    (2) The fee set forth in Sec. 1.17(q)<.
    12. Section 1.51 is proposed to be amended by revising paragraphs 
(a) and (b) to read as follows:


Sec. 1.51  General requisites of an application.

    (a) Applications for patents must be made to the Commissioner of 
Patents and Trademarks.
>(1)< A complete application >filed under Sec. 1.53(b)(1)< comprises:
    >(i)< [(1)] A specification, including a claim or claims, see 
Secs. 1.71 to 1.77[.]>;<
    >(ii)< [(2)] An oath or declaration, see Secs. 1.63 to 1.68[.]>;<
    >(iii)< [(3)] Drawings, when necessary, see Secs. 1.81 to >1.85< 
[1.88.]>; and <
    >(iv)< [(4)] The prescribed filing fee, see Sec. 1.16.
>(2)< A complete provisional application filed under Sec. 1.53(b)(2) 
comprises:
    (i) A cover sheet identifying:
    (A) The application as a provisional application,
    (B) The name or names of the inventor or inventors, (see 
Sec. 1.41),
    (C) The title of the invention,
    (D) The name and registration number of the attorney or agent (if 
applicable),
    (E) The docket number used by the person filing the application to 
identify the application (if applicable), and
    (F) The correspondence address;
    (ii) A specification as prescribed by 35 U.S.C. 112, first 
paragraph, see Sec. 1.71;
    (iii) Drawings, when necessary, see Secs. 1.81 to 1.85; and
    (iv) The prescribed filing fee, see Sec. 1.16.<
    (b) Applicants are encouraged to file an information disclosure 
statement >in national applications other than provisional 
applications.< See Secs. 1.97 and 1.98. >No information disclosure 
statement may be filed in a provisional application filed under 
Sec. 1.53(b)(2).<
* * * * *
    13. Section 1.53 paragraphs (a)-(e) are proposed to be revised to 
read as follows:


Sec. 1.53  [Serial] >Application< number, filing date, and completion 
of application.

    (a) Any application for a patent received in the Patent and 
Trademark Office will be assigned >an application< [a serial] number 
for identification purposes.
    (b) >(1)< The filing date of an application for patent filed under 
this section>, except for a provisional application,< is the date on 
which: [(1)] A specification containing a description pursuant to 
Sec. 1.71 and at least one claim pursuant to Sec. 1.75; and [(2)] any 
drawing required by Sec. 1.81(a), are filed in the Patent and Trademark 
Office in the name of the actual inventor or inventors as required by 
Sec. 1.41. No new matter may be introduced into an application after 
its filing date (Sec. 1.118). If all the names of the actual inventor 
or inventors are not supplied when the specification and any required 
drawing are filed, the application will not be given a filing date 
earlier than the date upon which the names are supplied unless a 
petition with the fee set forth in Sec. 1.17(i) [(1)] is filed which 
sets forth the reasons the delay in supplying the names should be 
excused. A continuation>,< [or] divisional >or continuation-in-part< 
application (filed under the conditions specified in 35 U.S.C. 120 or 
121 and Sec. 1.78 (a)) may be filed >under< [pursuant to] this 
section[, Sec. 1.60] or Sec. 1.62. [A continuation-in-part application 
may be filed pursuant to this section or Sec. 1.62.]
    >(2) The filing date of a provisional application is the date on 
which: A specification as prescribed by 35 U.S.C. 112, first paragraph; 
and any drawing required by Sec. 1.81(a), are filed in the Patent and 
Trademark Office in the name of the actual inventor or inventors as 
required by Sec. 1.41. No amendment, other than to make the provisional 
application comply with all applicable regulations, may be made to the 
provisional application after the filing date of the provisional 
application. If all the names of the actual inventor or inventors are 
not supplied when the specification and any required drawing are filed, 
the provisional application will not be given a filing date earlier 
than the date upon which the names are supplied unless a petition with 
the fee set forth in Sec. 1.17(q) is filed which sets forth the reasons 
the delay in supplying the names should be excused.
    (i) A provisional application must also include a cover sheet 
identifying the application as a provisional application. Otherwise, 
the application will be treated as an application filed under 
Sec. 1.53(b)(1).
    (ii) An application for patent filed under Sec. 1.53(b)(1) may be 
treated as a provisional application and be accorded the original 
filing date provided that a petition requesting the conversion, with 
the fee set forth in Sec. 1.17(q), is filed prior to the earlier of 
either the payment of the issue fee or the expiration of 12 months 
after the filing date of the provisional application. The grant of any 
such petition will not entitle applicant to a refund of the fees which 
are properly paid in the application filed under Sec. 1.53(b)(1).
    (iii) A provisional application shall not be entitled to the right 
of priority under Sec. 1.55 or 35 U.S.C. 119 or 365(a) or to the 
benefit of an earlier filing date under Sec. 1.78 or 35 U.S.C. 120, 121 
or 365(c) of any other application. No claim for priority under 
Sec. 1.78(a)(3) may be made in a design application based on a 
provisional application. No request under Sec. 1.293 for a statutory 
invention registration may be filed in a provisional application. The 
requirements of Sec. 1.821(e) regarding sequence listings in computer 
readable form are not applicable to a provisional application.<
    (c) If any application is filed without the specification, drawing 
or name, or names, of the actual inventor or inventors required by 
paragraph (b)>(1) or (b)(2)< of this section, applicant will be so 
notified and given a time period within which to submit the omitted 
specification, drawing, name, or names, of the actual inventor, or 
inventors, in order to obtain a filing date as of the date of filing of 
such submission. A copy of the ``Notice of Incomplete Application'' 
form notifying the applicant should accompany any response thereto 
submitted to the Office. If the omission is not corrected within the 
time period set, the application will be returned or otherwise disposed 
of; the fee, if submitted, will be refunded less the handling fee set 
forth in Sec. 1.21(n). >Any request for review of a refusal to accord 
an application a filing date must be by way of a petition accompanied 
by the fee set forth in Sec. 1.17(i), if the application was filed 
under Sec. 1.53(b)(1), or by the fee set forth in Sec. 1.17(q), if the 
application was filed under Sec. 1.53(b)(2).<
    (d)>(1)< If an application which has been accorded a filing date 
pursuant to paragraph (b)>(1)< of this section does not include the 
appropriate filing fee or an oath or declaration by the applicant, 
applicant will be so notified, if a correspondence address has been 
provided and given a period of time within which to file the fee, oath, 
or declaration and to pay the surcharge as set forth in Sec. 1.16(e) in 
order to prevent abandonment of the application. A copy of the ``Notice 
to File Missing Parts'' form mailed to applicant should accompany any 
response thereto submitted to the Office. If the required filing fee is 
not timely paid, [or if the processing and retention fee set forth in 
Sec. 1.21(l) is not paid within one year of the date of mailing of the 
notification required by this paragraph,] the application will be 
disposed of. No copies will be provided or certified by the Office of 
an application which has been disposed of or in which [neither] the 
required basic filing fee [nor the processing and retention fee] has 
>not< been paid. The notification pursuant to this paragraph may be 
made simultaneously with any notification pursuant to paragraph (c) of 
this section. If no correspondence address is included in the 
application, applicant has two months from the filing date to file the 
basic filing fee, oath or declaration and to pay the surcharge as set 
forth in Sec. 1.16(e) in order to prevent abandonment of the 
application[; or, if no basic filing fee has been paid, one year from 
the filing date to pay the processing and retention fee set forth in 
Sec. 1.21(l) to prevent disposal of the application].
    >(2) If a provisional application which has been accorded a filing 
date pursuant to paragraph (b)(2) of this section does not include the 
appropriate filing fee or the cover sheet required by Sec. 1.51(a)(2), 
applicant will be so notified if a correspondence address has been 
provided and given a period of time within which to file the fee, cover 
sheet and to pay the surcharge as set forth in Sec. 1.16(l) in order to 
prevent abandonment of the application. A copy of the ``Notice to File 
Missing Parts'' form mailed to applicant should accompany any response 
thereto submitted to the Office. If the required filing fee is not 
timely paid, the application will be disposed of. No copies will be 
provided or certified by the Office of an application which has been 
disposed of or in which the required basic filing fee has not been 
paid. The notification pursuant to this paragraph may be made 
simultaneously with any notification pursuant to paragraph (c) of this 
section. If no correspondence address is included in the application, 
applicant has two months from the filing date to file the basic filing 
fee, cover sheet and to pay the surcharge as set forth in Sec. 1.16(l) 
in order to prevent abandonment of the application.<
    (e)>(1)< An application for a patent >filed under paragraph (b)(1) 
of this section< will not be placed upon 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.
    >(2) A provisional application for a patent filed under paragraph 
(b)(2) of this section will not be placed upon 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).<
* * * * *
    14. Section 1.55 is proposed to be revised to read as follows:


Sec. 1.55  Claim for foreign priority.

    (a) An applicant >in an application other than a provisional 
application< may claim the benefit of the filing date of a prior 
foreign application under the conditions specified in 35 U.S.C. 
119>(a)-(d)< and 172. The claim to priority need be in no special form 
and may be made by the attorney or agent if the foreign application is 
referred to in the oath or declaration as required by Sec. 1.63. The 
claim for priority and the certified copy of the foreign application 
specified in [the second paragraph of] 35 U.S.C. 119>(b)< must be 
filed:
    (1) In the case of an interference (Sec. 1.630);
    (2) When necessary to overcome the date of a reference relied upon 
by the examiner;
    (3) When specifically required by the examiner; and
    (4) In all other cases, before the patent is granted.
    If the claim for priority or the certified copy of the foreign 
application is filed after the date the issue fee is paid, it must be 
accompanied by a petition requesting entry and by the fee set forth in 
Sec. 1.17(i)[(1)]. If the certified copy filed is not in the English 
language, a translation need not be filed except in the case of 
interference; or when necessary to overcome the date of a reference 
relied upon by the examiner; or when specifically required by the 
examiner, in which event an English language translation must be filed 
together with a statement that the translation of the certified copy is 
accurate. The statement must be a verified statement if made by a 
person not registered to practice before the Patent and Trademark 
Office.
    (b) An applicant may under certain circumstances claim priority on 
the basis of an application for an inventor's certificate in a country 
granting both inventor's certificates and patents. When an applicant 
wishes to claim the right of priority as to a claim or claims of the 
application on the basis of an application for an inventor's 
certificate in such a country under 35 U.S.C. 119>(d)<, [last paragraph 
(as amended July 28, 1972),] the applicant or his or her attorney or 
agent, when submitting a claim for such right as specified in paragraph 
(a) of this section, shall include an affidavit or declaration 
including a specific statement that, upon an investigation, he or she 
has satisfied himself or herself that to the best of his or her 
knowledge the applicant, when filing his or her application for the 
inventor's certificate, had the option to file an application either 
for 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.
    15. Section 1.59 is proposed to be revised to read as follows:


Sec. 1.59  Papers of application with filing date not to be returned.

    Papers in an application which has received a filing date pursuant 
to Sec. 1.53 will not be returned for any purpose whatever. If 
applicants have not preserved copies of the papers, the Office will 
furnish copies at the usual cost of any application in which [either] 
the required basic filing fee (Sec. 1.16) [or the processing and 
retention fee Sec. 1.21(l))] has been paid. See Sec. 1.618 for return 
of unauthorized and improper papers in interferences.
    16. Section 1.60 is proposed to be removed and reserved.


Sec. 1.60   >[Reserved]< [Continuation or divisional application for 
invention disclosed in a prior application.]

    17. Section 1.62 is proposed to be amended by revising paragraphs 
(a) and (e) to read as follows:


Sec. 1.62  File wrapper continuing procedure.

    (a) A continuation, continuation-in-part, or divisional 
application, which uses the specification, drawings and oath or 
declaration from a prior complete application [(Sec. 1.51(a))]> as 
defined by Sec. 1.51(a)(1) (not a prior complete provisional 
application as defined by Sec. 1.51(a)(2)), and< which is to be 
abandoned, may be filed >under this section< before the payment of the 
issue fee, abandonment of, or termination of proceedings on the prior 
application. The file date of an application filed under this section 
is the date on which a request is filed for an application under this 
section including identification of the [Serial Number, filing 
date,]>application number< and applicant's name of the prior complete 
application. If the continuation, continuation-in-part, or divisional 
application is filed by less than all the inventors named in the prior 
application a statement must accompany the application when filed 
requesting deletion of the names of the person or persons who are not 
inventors of the invention being claimed in the continuation, 
continuation-in-part, or divisional application.
* * * * *
    (e) An application filed under this section will utilize the file 
wrapper and contents of the prior application to constitute the new 
continuation, continuation-in-part, or divisional application but will 
be assigned a new application [serial] number. Changes to the prior 
application must be made in the form of an amendment to the prior 
application as it exists at the time of filing the application under 
this section. No copy of the prior application or new specification is 
required. The filing of such a copy or specification will be considered 
improper, and a filing date as of the date of deposit of the request 
for an application under this section will not be granted to the 
application unless a petition with the fee set forth in Sec. 1.17(i) 
[(1)] is filed with instructions to cancel the copy or specification.
* * * * *
    18. Section 1.63 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.63  Oath or declaration.

    (a) An oath or declaration filed under Sec. 1.51(a) [(2)]>(1)(ii)< 
as a part of an application must:
    (1) Be executed in accordance with either Sec. 1.66 or Sec. 1.68;
    (2) Identify the specification to which it is directed;
    (3) Identify each inventor and the residence and country of 
citizenship of each inventor; and
    (4) State whether the inventor is a sole or joint inventor of the 
invention claimed.
* * * * *
    19. Section 1.67 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 1.67  Supplemental oath or declaration.

* * * * *
    (b) A supplemental oath or declaration meeting the requirements of 
Sec. 1.63 must be filed: (1) When a claim is presented for matter 
originally shown or described not but substantially embraced in the 
statement of invention or claims originally presented; and (2) When an 
oath or declaration submitted in accordance with Sec. 1.53(d)>(1)< 
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 an application after its 
filing date even if a supplemental oath or declaration is filed 
[(Sec. 1.53(b); Sec. 1.118)]. In proper cases the oath or declaration 
here required may be made on information and belief by an applicant 
other than inventor.
* * * * *
    20. Section 1.78 is proposed to be amended by revising paragraphs 
(a)(1) and (a)(2) and by adding new paragraphs (a)(3) and (a)(4) to 
read as follows:


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

    (a)(1) An application >other than a provisional application< may 
claim an invention disclosed in a prior filed copending national 
application >filed under Sec. 1.53(b)(1) or Sec. 1.62 (not a 
provisional application (see paragraph (a)(3) of this section))< or 
international application designating the United States of America. In 
order for an application to claim the benefit of a prior filed 
copending national application, the prior application must name as an 
inventor at least one inventor named in the later filed application and 
disclose the named inventor's invention claimed in at least one claim 
of the later filed application in the manner provided by the first 
paragraph of 35 U.S.C. 112. In addition, the prior application must be
    (i) complete as set forth in Sec. 1.51(a)(1); or
    (ii) entitled to a filing date as set forth in Sec. 1.53(b)>(1) or 
Sec. 1.62< and include the basic filing fee set forth in Sec. 1.16[; 
or]
    [(iii) entitled to a filing date as set forth in Sec. 1.53(b) and 
have paid therein the processing and retention fee set forth in 
Sec. 1.21(l) within the time period set forth in Sec. 1.53(d)].
    (2) Any application claiming the benefit of a prior filed copending 
national or international application >other than a provisional 
application< must contain or be amended to contain in the first 
sentence of the specification following the title a reference to such 
prior application, identifying it by application number (consisting of 
the series code and serial number) [, or serial number and filing date] 
or international application number and international filing date and 
indicating the relationship of the applications. Cross-references to 
other related applications may be made when appropriate. (See 
Sec. 1.14(b).)
    >(3) An application other than for a design patent may claim an 
invention disclosed in a prior filed copending provisional application 
filed under Sec. 1.53(b)(2). A provisional application can be pending 
for no more than twelve months. In order for an application to claim 
the benefit of a prior filed copending provisional application, the 
prior provisional application must name as an inventor at least one 
inventor named in the later filed application and disclose the named 
inventor's invention claimed in at least one claim of the later filed 
application in the manner provided by the first paragraph of 35 U.S.C. 
112. In addition, the prior provisional application must be
    (i) Complete as set forth in Sec. 1.51(a)(2); or
    (ii) Entitled to a filing date as set forth in Sec. 1.53(b)(2) and 
include the basic filing fee set forth in Sec. 1.16(k).
    (4) Any application claiming the benefit of a prior filed copending 
provisional application must contain or be amended to contain in the 
first sentence of the specification following the title a reference to 
such prior provisional application, identifying it as a provisional 
application, and including the provisional application number 
(consisting of series code and serial number) and indicating the 
relationship of the applications.<
* * * * *
    21. Section 1.83 is proposed to be amended by revising paragraphs 
(a) and (c) to read as follows:


Sec. 1.83  Content of drawing.

    (a)>(1)< The drawing >in an application other than a provisional 
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).
    >(2) The drawing in a provisional application filed under 
Sec. 1.53(b)(2) must show every feature of the invention disclosed in 
the description where necessary to understand the subject matter of 
that invention. However, conventional features disclosed in the 
description, 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).<
* * * * *
    (c) Where the drawings do not comply with the requirements of 
paragraphs (a)>(1)< 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)
    22. Section 1.97 is proposed to be amended by revising paragraph 
(d) to read as follows:


Sec. 1.97  Filing of information disclosure statement.

* * * * *
    (d) An information disclosure statement shall be considered by the 
Office if filed after the mailing date of either:
    (1) A final action under Sec. 1.113 or
    (2) A notice of allowance under Sec. 1.311, whichever occurs first, 
but before payment of the issue fee, provided the statement is 
accompanied by:
    (i) A certification as specified in paragraph (e) of this section,
    (ii) A petition requesting consideration of the information 
disclosure statement, and
    (iii) The petition fee set forth in Sec. 1.17(i)[(1)].
* * * * *
    23. Section 1.101 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.101  Order of examination.

    (a) Applications filed in the Patent and Trademark Office and 
accepted as complete applications>, except for provisional applications 
filed under Sec. 1.53(b)(2) which are not examined,< are assigned for 
examination to the respective examining groups having the classes of 
inventions to which the applications relate. Applications shall be 
taken up for examination by the examiner to whom they have been 
assigned in the order in which they have been filed except for those 
applications in which examination has been advanced pursuant to 
Sec. 1.102. See Sec. 1.496 for order of examination of International 
applications in the national stage.
* * * * *
    24. Section 1.102 is proposed to be amended by revising paragraph 
(d) to read as follows:


Sec. 1.102  Advancement of examination.

* * * * *
    (d) A petition to make an application special on grounds other than 
those referred to in paragraph (c) of this section must be accompanied 
by the petition fee set forth in Sec. 1.17(i)[(2)].
    25. Section 1.103 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.103  Suspension of action.

    (a) Suspension of action by the Office will be granted for good and 
sufficient cause and for a reasonable time specified upon petition by 
the applicant and, if such cause is not the fault of the Office, the 
payment of the fee set forth in Sec. 1.17(i)[(1)]. Action will not be 
suspended when a response by the applicant to an Office action is 
required.
* * * * *
    26. A new, undesignated center heading and new Sec. 1.129 are 
proposed to be added to Subpart B--National Processing Provisions to 
read as follows:

>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 the 
effective date of 35 U.S.C. 154(a)(2), 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, to the extent that it would have been entered and 
considered if made prior to final rejection, if the first submission is 
filed prior to or simultaneously with the filing of a notice of appeal 
and prior to abandonment of the application and the fee set forth in 
Sec. 1.17(r) is paid within one month of any written notification from 
the Office refusing entry of the first submission and prior to 
abandonment of the application. 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, to the extent that it would have been entered and 
considered if made prior to final rejection, if the second submission 
is filed prior to or simultaneously with the filing of a notice of 
appeal of the subsequent final rejection and prior to abandonment of 
the application and a second fee set forth in Sec. 1.17(r) is paid 
within one month of any written notification from the Office refusing 
entry of the second submission and prior to abandonment of the 
application. 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 the 
effective date of 35 U.S.C. 154(a)(2), 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 the effective date, 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) more than 
two months prior to the effective date;
    (ii) The examiner has not issued any Office action in the 
application 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 is withdrawn pursuant to 
this paragraph, applicant will be so notified and given a time period 
of one month from the notice 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. If applicant does not pay the required fee for each 
additional invention in a timely manner, only the first claimed 
invention and those additional inventions for which the fee has been 
paid will be searched and examined. 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 on or after the effective date of 35 U.S.C. 
154(a)(2).<
    27. Section 1.139 is proposed to be added to read as follows:


>Sec. 1.139  Revival of provisional application.

    (a) A provisional application which has been accorded a filing date 
and abandoned for failure to timely respond to an Office requirement 
may be revived so as to be pending for a period of no longer than 
twelve months from its filing date if it is shown to the satisfaction 
of the Commissioner that the delay was unavoidable. Under no 
circumstances will the provisional application be pending after twelve 
months from its filing date. A petition to revive an abandoned 
provisional application must be promptly filed after the applicant is 
notified of, or otherwise becomes aware of, the abandonment, and must 
be accompanied by:
    (1) The required response unless it has been previously filed;
    (2) The petition fee as set forth in Sec. 1.17(l); and
    (3) A showing that the delay was unavoidable. The showing must be a 
verified showing if made by a person not registered to practice before 
the Patent and Trademark Office.
    (b) A provisional application which has been accorded a filing date 
and abandoned for failure to timely respond to an Office requirement 
may be revived so as to be pending for a period of no longer than 
twelve months from its filing date if the delay was unintentional. 
Under no circumstances will the provisional application be pending 
after twelve months from its filing date. A petition to revive an 
abandoned provisional application must be:
    (1) Accompanied by the required response unless it has been 
previously filed;
    (2) Accompanied by the petition fee as set forth in Sec. 1.17(m);
    (3) Accompanied by a statement that the delay was unintentional. 
The statement must be a verified statement if made by a person not 
registered to practice before the Patent and Trademark Office. The 
Commissioner may require additional information where there is a 
question whether the delay was unintentional; and
    (4) Filed either:
    (i) Within one year of the date on which the provisional 
application became abandoned; or
    (ii) Within three months of the date of the first decision on a 
petition to revive under paragraph (a) of this section which was filed 
within one year of the date on which the provisional application became 
abandoned.
    (c) Any request for reconsideration or review of a decision 
refusing to revive a provisional application upon petition filed 
pursuant to paragraph (a) or (b) of 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.
    (d) The time periods set forth in this section cannot be extended, 
except that the three-month period set forth in paragraph (b)(4)(ii) of 
this section and the time period set forth in paragraph (c) of this 
section may be extended under the provisions of Sec. 1.136.<
    28. Section 1.177 is proposed to be revised to read as follows:


Sec. 1.177  Reissue in divisions.

    The Commissioner may, in his or her discretion, cause several 
patents to be issued for distinct and separate parts of the thing 
patented, upon demand of the applicant, and upon payment of the 
required fee for each division. Each division of a reissue constitutes 
the subject of a separate specification descriptive of the part or 
parts of the invention claimed in such division; and the drawing may 
represent only such part or parts, subject to the provisions of 
Secs. 1.83 and 1.84. On filing divisional reissue applications, they 
shall be referred to the Commissioner. Unless otherwise ordered by the 
Commissioner upon petition and payment of the fee set forth in 
Sec. 1.17(i)[(1)], all the divisions of a reissue will issue 
simultaneously; if there be any controversy as to one division, the 
others will be withheld from issue until the controversy is ended, 
unless the Commissioner shall otherwise order.
    29. Section 1.312 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 1.312  Amendments after allowance.

* * * * *
    (b) Any amendment pursuant to paragraph (a) of this section filed 
after the date the issue fee is paid must be accompanied by a petition 
including the fee set forth in Sec. 1.17(i)[(1)] and a showing of good 
and sufficient reasons why the amendment is necessary and was not 
earlier presented.
    30. Section 1.313 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.313  Withdrawal from issue.

    (a) Applications may be withdrawn from issue for further action at 
the initiative of the Office or upon petition by the applicant. Any 
such petition by the applicant must include a showing of good and 
sufficient reasons why withdrawal of the application is necessary and, 
if the reason for the withdrawal is not the fault of the Office, must 
be accompanied by the fee set forth in Sec. 1.17(i)[(1)]. If the 
application is withdrawn from issue, a new notice of allowance will be 
sent if the application is again allowed. Any amendment accompanying a 
petition to withdraw an application from issue must comply with the 
requirements of Sec. 1.312.
* * * * *
    31. Section 1.314 is proposed to be revised to read as follows:


Sec. 1.314  Issuance of patent.

    If payment of the issue fee is timely made, the patent will issue 
in regular course unless the application is withdrawn from issue 
(Sec. 1.313), or issuance of the patent is deferred. Any petition by 
the applicant requesting a deferral of the issuance of a patent must be 
accompanied by the fee set forth in Sec. 1.17(i)([(1)] and must include 
a showing of good and sufficient reasons why it is necessary to defer 
issuance of the patent.
    32. Section 1.666 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 1.666  Filing of interference settlement agreements.

* * * * *
    (b) If any party filing the agreement or understanding under 
paragraph (a) of this section so requests, the copy will be kept 
separate from the file of the interference, and made available only to 
Government agencies on written request, or to any person upon petition 
accompanied by the fee set forth in Sec. 1.17(i)[(1)] and on a showing 
of good cause.
* * * * *
    33. Section 1.701 is proposed to be added to subpart F to read as 
follows:


>Sec. 1.701  Extension of patent term due to prosecution delay.

    (a) A patent, other than for designs, issued on an application 
filed on or after [the implementation date] is entitled to extension of 
the patent term if the issuance of the patent was delayed due to:
    (1) Proceedings under 35 U.S.C. 135(a), and/or
    (2) The application being placed under a secrecy order under 35 
U.S.C. 181, and/or
    (3) Appellate review by the Board of Patent Appeals and 
Interferences or by a federal court under 35 U.S.C. 141 or 145, if the 
patent was issued pursuant to a decision reversing an adverse 
determination of patentability and if the patent is not subject to a 
terminal disclaimer due to the issuance of another patent claiming 
subject matter that is not patentably distinct from that under 
appellate review.
    (b) The term of a patent entitled to extension under paragraph (a) 
of this section shall be extended for the sum of the periods of delay 
calculated under paragraphs (c)(1), (c)(2) and (c)(3) 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 original expiration date 
of the patent unless an earlier expiration date is set by terminal 
disclaimer (Sec. 1.321).
    (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, if any, in which the 
application was involved, the number of days 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 is 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 next Office 
communication reopening prosecution.
    (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 is maintained in a 
sealed condition under 35 U.S.C. 181;
    (ii) The number of days, if any, in the period beginning on the 
date of mailing of an examiner's answer under Sec. 1.193 in the 
application under secrecy order and ending on the date the secrecy 
order and any renewal thereof is removed;
    (iii) The number of days, if any, in the period beginning on the 
date applicant is notified that an interference would be declared but 
for the secrecy order and ending on the date the secrecy order and any 
renewal thereof is 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) of this 
section shall be reduced by:
    (1) Any time calculated pursuant to paragraph (c)(3) of this 
section before the expiration of three years from the filing date of 
the first national application for patent presented for examination, 
and
    (2) Any time, as determined by the Commissioner, during which the 
applicant for patent did not act with due diligence. In determining the 
due diligence of an applicant, the Commissioner will examine the facts 
and circumstances of the applicant's actions during the pendency period 
of the application 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 the pendency period of an 
application.<

PART 3--ASSIGNMENT, RECORDING, AND RIGHTS OF ASSIGNEE

    34. The authority citation for 37 CFR part 3 would continue to read 
as follows:

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

    35. Section 3.21 is proposed to be revised to read as follows:


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) 
[or the serial number and filing date]. 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)(1) or 
Sec. 1.62< is executed concurrently with, or subsequent to, the 
execution of the patent application, but before the patent application 
is filed, it must identify the patent application by its date of 
execution, name of each inventor, and title of the invention so that 
there can be no mistake as to the patent application intended. >If an 
assignment of a provisional application is executed before the 
provisional application is filed, it must identify the provisional 
application by name of each inventor and title of the invention so that 
there can be no mistake as to the provisional application intended.<
    36. Section 3.81 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 3.81  Issue of patent to assignee.

* * * * *
    (b) If the assignment is submitted for recording after the date of 
payment of the issue fee, but prior to issuance of the patent, the 
assignee may petition that the patent issue to the assignee. Any such 
petition must be accompanied by the fee set forth in Sec. 1.17(i) [(1)] 
of this chapter.

    Dated: December 5, 1994.
Michael K. Kirk,
Deputy Assistant Secretary of Commerce and Deputy Commissioner of 
Patents and Trademarks.
[FR Doc. 94-30312 Filed 12-9-94; 8:45 am]
BILLING CODE 3510-16-M