[Federal Register Volume 60, Number 79 (Tuesday, April 25, 1995)]
[Rules and Regulations]
[Pages 20195-20231]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-9838]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 3
[Docket No. 950404087-5087-01]
RIN 0651-AA76
Changes To Implement 20-Year Patent Term and Provisional
Applications
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The Patent and Trademark Office (PTO) is amending the rules of
practice in patent cases to establish procedures for: filing and
processing provisional application papers; calculating the length of
any patent term extension to which an applicant is entitled where the
issuance of a patent on an application filed on or after June 8, 1995
(the implementation date of the 20-year patent term provisions of the
Uruguay Round Agreements Act), other [[Page 20196]] than for designs,
was delayed due to interference proceedings, the imposition of a
secrecy order and/or appellate review; and implementing certain
transitional provisions contained in the Uruguay Round Agreements Act.
EFFECTIVE DATE: June 8, 1995.
FOR FURTHER INFORMATION CONTACT: Magdalen Y. Greenlief or John F.
Gonzales, Senior Legal Advisors, Office of the Deputy Assistant
Commissioner for Patent Policy and Projects, by telephone at (703) 305-
9285, by fax at (703) 308-6916 or by mail marked to their attention and
addressed to the Commissioner of Patents and Trademarks, Box DAC,
Washington, D.C. 20231.
SUPPLEMENTARY INFORMATION: The Uruguay Round Agreements Act (Public Law
103-465) was enacted on December 8, 1994. Public Law 103-465 amends 35
U.S.C. 154 to provide that the term of patent protection begins on the
date of grant and ends 20 years from the filing date of the
application. The amendment applies to all utility and plant patents
issued on applications having an actual United States application
filing date on or after June 8, 1995. Specifically, 35 U.S.C.
154(a)(2), as contained in Public Law 103-465, 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
referred to was filed. As amended by Public Law 103-465, 35 U.S.C. 154
does not take into account for determination of the patent term any
application on which priority is claimed under 35 U.S.C. 119, 365(a) or
365(b).
Under 35 U.S.C. 154(b)(1), as contained in Public Law 103-465, if
the issuance of an original patent is delayed due to interference
proceedings under 35 U.S.C. 135(a) or because the application is placed
under a secrecy order under 35 U.S.C. 181, the term of the patent shall
be extended for the period of delay, but in no case more than five (5)
years.
Under 35 U.S.C. 154(b)(2), as contained in Public Law 103-465, 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 is issued pursuant to a decision in the review reversing an
adverse determination of patentability, the term of the patent shall be
extended for a period of time but in no case more than five (5) years.
However, a patent shall not be eligible for extension under 35 U.S.C.
154(b)(2) if the patent is 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.
Under 35 U.S.C. 154(b)(3)(B) and 154(b)(3)(C), as contained in
Public Law 103-465, the period of extension under 35 U.S.C. 154(b)(2)
shall be reduced by any time attributable to appellate review before
the expiration of three (3) years from the filing date of the
application and for any period of time during which the applicant for
patent did not act with due diligence, as determined by the
Commissioner.
Under 35 U.S.C. 154(b)(4), as contained in Public Law 103-465, the
total duration of all extensions of a patent under 35 U.S.C. 154(b)
shall not exceed five (5) years.
The provisions for patent term extension under 35 U.S.C. 154(b) are
separate from and in addition to the patent term extension provisions
of 35 U.S.C. 156. The patent term extension provisions of 35 U.S.C.
154(b) 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 35 U.S.C. 154(b) from precluding a term extension under
35 U.S.C. 156, Public Law 103-465 amends 35 U.S.C. 156(a)(2) to specify
that the term has never been extended under 35 U.S.C. 156(e)(1).
The 20-year patent term provision is contained in 35 U.S.C. 154, as
amended by Public Law 103-465. Section 154 of title 35, United States
Code, applies to utility and plant patents, but not to design patents.
The term of a design patent is defined in 35 U.S.C. 173 as fourteen
(14) years from the date of grant. Therefore, the patent term and
patent term extension provisions set forth in 35 U.S.C. 154, as amended
by Public Law 103-465, do not apply to patents for designs.
In addition, Public Law 103-465 establishes 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. Public Law 103-465
provides a mechanism to enable applicants to quickly and inexpensively
file provisional applications. Applicants will be entitled to claim the
benefit of priority in a given application based upon a previously
filed provisional application in the United States. The domestic
priority period will not count in the measurement of the term.
Section 111 of title 35, United States Code, was amended by Public
Law 103-465 to provide for the filing of a provisional application on
or after June 8, 1995. Section 41(a)(1) of title 35, United States
Code, was amended by Public Law 103-465 to provide a $150.00 filing fee
for each provisional application, subject to a fifty (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 no later than twelve (12) months after its filing date and
will not be subject to revival to restore it to pending status beyond a
date which is after twelve (12) months from its filing date. A
provisional 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, Public Law 103-465 amended 35 U.S.C. 119 to allow an
applicant to claim the benefit of the filing date of one or more
copending provisional applications in a later filed application for
patent under 35 U.S.C. 111(a) or 363. The later filed application for
patent under 35 U.S.C. 111(a) or 363 must be filed by an inventor or
inventors named in the copending provisional application not later than
12 months after the date on which the provisional application was filed
and must contain or be amended to contain a specific reference to the
provisional application. The provisional application must disclose an
invention which is claimed in the application for patent under 35
U.S.C. 111(a) or 363 in the manner provided by the first paragraph of
35 U.S.C. 112. In addition, the provisional application must be pending
on the filing date of the application for patent under 35 U.S.C. 111(a)
or 363 and the filing fee set forth in subparagaph (A) or (C) of 35
U.S.C. 41(a)(1) must be paid.
Since 35 U.S.C. 154(a)(3), as contained in Public Law 103-465,
excludes from the determination of the patent term any application on
which priority is claimed under 35 U.S.C. 119, [[Page 20197]] 365(a) or
365(b), the filing date of a provisional application is not considered
in determining the term of any patent.
Section 119(e)(1) of title 35, United States Code, provides that if
all of the conditions of 35 U.S.C. 119 (e)(1) and (e)(2) are met, an
application for patent filed under 35 U.S.C. 111(a) or 363 shall have
the same effect as though filed on the date of the provisional
application. Thus, the effective United States filing date of an
application for patent filed under 35 U.S.C. 111(a), and entitled to
benefits under 35 U.S.C. 119(e), is the filing date of the provisional
application. Any patent granted on such an application, is prior art
under 35 U.S.C. 102(e) as of the filing date of the provisional
application.
Likewise, the effective United States filing date of a patent
issued on an international application filed under 35 U.S.C. 363, and
entitled to benefits under 35 U.S.C. 119(e), is the filing date of the
provisional application, except for the purpose of applying that patent
as prior art under 35 U.S.C. 102(e). For that purpose only, 35 U.S.C.
102(e) defines the filing date of the international application as the
date the requirements of 35 U.S.C. 371 (c)(1), (c)(2) and (c)(4) were
fulfilled.
Public Law 103-465 further includes transitional provisions for
limited reexamination in certain applications pending for two (2) years
or longer as of June 8, 1995, 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
three (3) years or longer as of June 8, 1995, 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 after June 8, 1995, regardless of whether
the application is a continuing application.
The amendments to title 35 relating to 20-year patent term, patent
term extension, provisional applications and the transitional
provisions are effective on the date which is six (6) months after the
date of enactment, i.e., on June 8, 1995.
A Notice of Proposed Rulemaking was published in the Federal
Register at 59 FR 63951 (December 12, 1994) and in the Patent and
Trademark Office Gazette at 1170 Off. Gaz. Pat. Office 377-390 (January
3, 1995).
Forty-nine written comments were received in response to the Notice
of Proposed Rulemaking. A public hearing was held at 9:30 a.m. on
February 16, 1995. Fourteen individuals offered oral comments at the
hearing. The forty-nine written comments and a transcript of the
hearing are available for public inspection in the Special Program Law
Office, Office of the Deputy Assistant Commissioner for Patent Policy
and Projects, Room 520, Crystal Park I, 2011 Crystal Drive, Arlington,
Virginia, and are available on the Internet through anonymous file
transfer protocol (ftp), address: ftp.uspto.gov.
The following includes a discussion of the rules being added or
amended, the reasons for those additions and amendments and an analysis
of the comments received in response to the Notice of Proposed
Rulemaking.
Changes in text: The final rules contain numerous changes to the
text of the rules as proposed for comment. Those changes are discussed
below. Familiarity with the Notice of Proposed Rulemaking is assumed.
Section 1.9(a)(1) is being changed for clarity to define a national
application as a U.S. application for patent which was either filed in
the Office under 35 U.S.C. 111, or which entered the national stage
from an international application after compliance with 35 U.S.C. 371.
Also, a new paragraph (a)(3) is being added to define the term
``nonprovisional application'' as a U.S. national application for
patent which was either filed in the Office under 35 U.S.C. 111(a), or
which entered the national stage from an international application
after compliance with 35 U.S.C. 371.
The proposed deletion of Sec. 1.60 is being withdrawn. Therefore,
Sec. 1.17(i) is being changed to retain the reference to Sec. 1.60.
Section 1.17(q) is being changed to delete the fifty (50) percent
reduction for small entities in the $50.00 fee established for filing a
petition under Sec. 1.48 in a provisional application and a petition to
accord a provisional application a filing date or to convert an
application filed under Sec. 1.53(b)(1) to a provisional application.
Sections 1.17(r) and (s) are being changed to include a fifty (50)
percent reduction for small entities in the fees established for entry
of a submission after final rejection under Sec. 1.129(a) and for each
additional invention requested to be examined under Sec. 1.129(b). In
the final rule, the fee required by Secs. 1.17(r) and 1.17(s) from a
small entity is $365.00. The fee required from other than a small
entity is $730.00.
The elimination of the small entity reduction in Sec. 1.17(q) and
the addition of the small entity reduction in Secs. 1.17 (r) and (s)
are the result of additional review, which resulted in the conclusion
that the fees established for the transitional procedures in
Secs. 1.129 (a) and (b) may be reduced by fifty (50) percent for small
entities. However, the petition fees required by Sec. 1.17(q) are not
subject to the fifty (50) percent reduction for small entities.
The proposed deletion of the retention fee practice set forth in
former Sec. 1.53(d), now redesignated Sec. 1.53(d)(1), is being
withdrawn. Therefore, Sec. 1.21(1) is being retained and amended to
refer to Sec. 1.53(d)(1). Also, the proposed change in the text to
Sec. 1.17(n) is being withdrawn, since Sec. 1.60 is being retained.
Section 1.28(a) is being changed to clarify the procedure for
establishing status as a small entity in a nonprovisional application
claiming benefit under 35 U.S.C. 119(e), 120, 121, or 365(c) of a prior
application. In such cases, applicants may file a new verified
statement or they may rely on a verified statement filed in the prior
application, if status as a small entity is still proper and desired.
If applicants intend to rely on a verified statement filed in the prior
application, applicants must include in the nonprovisional application
either a reference to the verified statement filed in the prior
application or a copy of the verified statement filed in the prior
application. A verified statement in compliance with existing Sec. 1.27
is required to be filed in each provisional application in which it is
desired to pay reduced fees.
Section 1.45(c), first sentence, is being changed for clarity to
refer to a ``nonprovisional'' application.
Section 1.48 is being changed to include a new paragraph (e)
setting forth the procedure for deleting the name of a person who was
erroneously named as an inventor in a provisional application. The
procedure requires an amendment deleting the name of the person who was
erroneously named accompanied by: a petition including a statement of
facts verified by the person whose name is being deleted establishing
that the error occurred without deceptive intention; the fee set forth
in Sec. 1.17(q); and the written consent of any assignee. The first
sentences of Secs. 1.48 (a)-(c) are also being changed for clarity to
refer to a ``nonprovisional'' application.
Section 1.51(a)(2)(i) is being changed to require that the
provisional application cover sheet include the residence of each named
inventor and, if the invention was made by an agency of the U.S.
Government or under a contract with an agency of the U.S. Government,
the name of the U.S. Government agency and Government contract number.
The residence of each named inventor is information which is
[[Page 20198]] necessary to identify those provisional applications
which must be reviewed by the PTO for foreign filing licenses. If the
invention disclosed in the provisional application was made by an
agency of the U.S. Government or under a contract with an agency of the
U.S. Government, the security review for that application should
already have been done by that agency of the U.S. Government.
Therefore, identification of those particular provisional applications
on the cover sheet will reduce the number of applications which the PTO
must forward to other agencies of the U.S. Government for security
review.
Section 1.53(b)(1) is being changed to retain the reference to
Sec. 1.60.
Section 1.53(b)(2)(ii) is being changed to require that any
petition and petition fee to convert a Sec. 1.53(b)(1) application to a
provisional application be filed in the Sec. 1.53(b)(1) application
prior to the earlier of the abandonment of the Sec. 1.53(b)(1)
application, the payment of the issue fee, the expiration of twelve
(12) months after the filing date of the Sec. 1.53(b)(1) application,
or the filing of a request for a statutory invention registration under
Sec. 1.293. Where the Sec. 1.53(b)(1) application was abandoned before
the expiration of twelve (12) months after the filing date of the
application, a petition to convert the application to a provisional
application may be filed in the Sec. 1.53(b)(1) application if the
petition to convert is filed prior to the expiration of twelve (12)
months after the filing date of the Sec. 1.53(b)(1) application and is
accompanied by an appropriate petition to revive an abandoned
application under Sec. 1.137.
Section 1.53(b)(2)(iii) is being changed to indicate that the
requirements of Secs. 1.821-1.825 regarding application disclosures
containing nucleotide and/or amino acid sequences are not mandatory for
provisional applications.
Section 1.53(d)(1) is being changed to retain the retention fee
practice. The proposal to delete the retention fee practice set forth
in Sec. 1.53(d) is being withdrawn.
The first sentences of Secs. 1.55 (a) and (b) are being changed for
clarity to refer to a ``nonprovisional'' application.
Also, Secs. 1.55 (a) and (b) are being changed to clarify that the
nonprovisional application may claim the benefit of one or more prior
foreign applications or one or more applications for inventor's
certificate.
Section 1.59 is being changed to retain the reference to the
retention fee set forth in Sec. 1.21(l) and to clarify that the
retention fee practice applies only to applications filed under
Sec. 1.53(b)(1).
The proposal to delete Sec. 1.60 is being withdrawn. Therefore,
Sec. 1.60 is being retained and amended to clarify in the title of the
section and in paragraph (b)(1) that the procedure set forth in the
section is only available for filing a continuation or divisional
application if the prior application was a nonprovisional application
and complete as set forth in Sec. 1.51(a)(1). Also, paragraph (b)(4) is
being amended to delete the requirement that the statement which must
accompany the copy of the prior application include the language that
``no amendments referred to in the oath or declaration filed to
complete the prior application introduced new matter therein.'' The
requirement is unnecessary because any amendment filed to complete the
prior application would be considered a part of the original disclosure
of the prior application and, by definition, could not contain new
matter. Also, paragraph (b)(4) is being amended to refer to
Sec. 1.17(i).
Section 1.62(a) is being changed to refer to a prior complete
``nonprovisional'' application and to clarify that a continuing
application may be filed under Sec. 1.62 after payment of the issue fee
if a petition under Sec. 1.313(b)(5) is granted in the prior
application. Section 1.62(a) is also being changed to clarify the
existing practice that the request for a Sec. 1.62 application must
include identification of the inventors named in the prior application.
Section 1.63(a) is being changed for clarity to refer to an oath or
declaration filed as a part of a ``nonprovisional'' application.
Section 1.67(b) is being changed for clarity to refer to a
``nonprovisional'' application.
Section 1.78 (a)(1) and (a)(2) are being changed to refer to a
``nonprovisional'' application and to clarify that the nonprovisional
application may claim the benefit of one or more prior copending
nonprovisional applications or international applications designating
the United States of America. Section 1.78(a)(1)(ii) is being changed
to retain the reference to Sec. 1.60. Section 1.78(a)(1)(iii) is being
retained and amended to refer to Secs. 1.53(b)(1) and 1.53(d)(1).
Sections 1.78 (a)(3) and (a)(4) are being changed to refer to a
``nonprovisional'' application and to clarify that the nonprovisional
application may claim the benefit of one or more prior copending
provisional applications.
Section 1.78(a)(3) is also being changed to remind applicants and
practitioners that when the last day of pendency of a provisional
application falls on a Saturday, Sunday, or Federal holiday within the
District of Columbia, any nonprovisional application claiming benefit
of the provisional application must be filed prior to the Saturday,
Sunday, or Federal holiday within the District of Columbia. Section
111(b)(5) of title 35, United States Code, states that a provisional
application is abandoned twelve months after its filing date. Sections
119 (e)(1) and (e)(2) of title 35, United States Code, require that a
nonprovisional application claiming benefit of a prior provisional
application be filed not later than twelve months after the date on
which the provisional application was filed and that the provisional
application be pending on the filing date of the nonprovisional
application. Under Sec. Sec. 1.6 and 1.10, no filing dates are accorded
to applications on a Saturday, Sunday, or Federal holiday within the
District of Columbia. Thus, if a provisional application is abandoned
by operation of 35 U.S.C. 111(b)(5) on a Saturday, Sunday, or Federal
holiday within the District of Columbia, a nonprovisional application
claiming benefit of the provisional application under 35 U.S.C. 119(e)
must be filed no later than the preceding day which is not a Saturday,
Sunday, or Federal holiday within the District of Columbia.
Section 1.78(a)(4) is also being changed to delete the requirement
that the reference in the nonprovisional application to the provisional
application indicate the relationship of the applications. As a result
of the change, Sec. 1.78(a)(4) provides that a nonprovisional
application claiming benefit of one or more provisional applications
must contain a reference to each provisional application, identifying
it as a provisional application and including the provisional
application number (consisting of series code and serial number).
However, the section does not require the nonprovisional application to
identify the nonprovisional application as a continuation, divisional
or continuation-in-part application of the provisional application.
Section 1.83(a) is being changed to delete the proposed
redesignation of paragraph (a) and to delete proposed paragraph (a)(2).
Also, Secs. 1.83 (a) and (c) are being changed for clarity to refer to
a ``nonprovisional'' application. Further, Sec. 1.83(c) is being
changed to remove the reference to paragraph (a)(1).
Section 1.101 is being changed for clarity to refer to a
``nonprovisional'' application. [[Page 20199]]
Sections 1.129 (a) and (b) are being changed to identify the
effective date of 35 U.S.C. 154(a)(2) as June 8, 1995.
Further, Sec. 1.129(a) is being changed to provide that the first
and second submissions and fees set forth in Sec. 1.17(r) must be filed
prior to the filing of an Appeal Brief, rather than prior to the filing
of the Notice of Appeal, and prior to abandonment of the application.
The requirement that the fee set forth in Sec. 1.17(r) be filed within
one month of the notice refusing entry is being deleted. Section
1.129(a) is also being changed to provide that the finality of the
final rejection is automatically withdrawn upon the timely filing of
the submission and payment of the fee set forth in Sec. 1.17(r). The
language indicating that the submission would be entered and considered
after timely payment of the fee set forth in Sec. 1.17(r) ``to the
extent that it would have been entered and considered if made prior to
final rejection'' is being deleted. In view of the magnitude of the fee
set forth in Sec. 1.17(r), the next PTO action following timely payment
of the fee set forth in Sec. 1.17(r) will be equivalent to a first
action in a continuing application. Under existing PTO practice, it
would not be proper to make final a first Office action in a continuing
application where the continuing application contains material which
was presented in the earlier application after final rejection or
closing of prosecution but was denied entry because (1) new issues were
raised that required further consideration and/or search, or (2) the
issue of new matter was raised. The identical procedure will apply to
examination of a submission considered as a result of the procedure
under Sec. 1.129(a). Thus, under Sec. 1.129(a), if the first submission
after final rejection was initially denied entry in the application
because (1) new issues were raised that required further consideration
and/or search, or (2) the issue of new matter was raised, then the next
action in the application will not be made final. Likewise, if the
second submission after final rejection was initially denied entry in
the application because (1) new issues were raised that required
further consideration and/or search, or (2) the issue of new matter was
raised, then the next action in the application will not be made final.
In view of 35 U.S.C. 132, no amendment considered as a result of the
payment of the fee set forth in Sec. 1.17(r) may introduce new matter
into the disclosure of the application.
Section 1.129(b)(1) is being changed to identify the date which is
two months prior to the effective date of 35 U.S.C. 154(a)(2) as April
8, 1995. Section 1.129(b)(1) is also being changed to clarify in
subsection (ii) that the examiner has not made a requirement for
restriction in the present or parent application prior to April 8,
1995, due to actions by the applicant.
Section 1.129(b)(2) is being changed to delete the identification
of the period provided for applicants to respond to a notification
under Sec. 1.129(b) as one month. The time period for response will be
identified in any written notification under Sec. 1.129(b) and will
usually be one month, but in no case will it be less than thirty days.
The period may be extended under Sec. 1.136(a). The language is also
being changed to provide that applicant may respond to the notification
by (i) electing the invention or inventions to be searched and
examined, if no election has been made prior to the notice, and paying
the fee set forth in Sec. 1.17(s) for each independent and distinct
invention claimed in the application in excess of one which applicant
elects, (ii) confirming an election made prior to the notice and paying
the fee set forth in Sec. 1.17(s) for each independent and distinct
invention claimed in the application in addition to the one invention
which applicant previously elected, or (iii) filing a petition under
Sec. 1.129(b)(2) traversing the requirement without regard to whether
the requirement has been made final. No petition fee is required. The
section is also being changed to provide that if the petition under
Sec. 1.129(b)(2) is filed in a timely manner, the original time period
for electing and paying the fee set forth in Sec. 1.17(s) will be
deferred and any decision on the petition affirming or modifying the
requirement will set a new time period to elect the invention or
inventions to be searched and examined and to pay the fee set forth in
Sec. 1.17(s) for each independent and distinct invention claimed in the
application in excess of one which applicant elects.
Section 1.129(c) is being changed to clarify that the provisions of
Secs. 1.129 (a) and (b) are not applicable to any application filed
after June 8, 1995. However, any application filed on June 8, 1995
would be subject to a 20-year patent term.
Section 1.137 is being amended by revising paragraph (c) to
eliminate, in all applications filed on or after June 8, 1995, except
design applications, the requirement that a terminal disclaimer
accompany any petition under Sec. 1.137(a) not filed within six (6)
months of the date of the abandonment of the application. The language
``filed before June 8, 1995'' and ``filed on or after June 8, 1995'' as
used in the amended rule, refer to the actual United States filing
date, without reference to any claim for benefit under 35 U.S.C. 120,
121, or 365. No change to Sec. 1.137 was proposed in the Notice of
Proposed Rulemaking. However, in all applications filed on or after
June 8, 1995, except design applications, any delay in filing a
petition under Sec. 1.137(a) will automatically result in the loss of
patent term. The loss of patent term will be the incentive for
applicants to promptly file any petition to revive. Therefore, no need
is seen for requiring a terminal disclaimer in such applications. It
would amount to a penalty if a terminal disclaimer was required.
Section 1.136 is being amended by revising paragraph (d) to
eliminate, in all applications filed on or after June 8, 1995, except
design applications, the requirement that a terminal disclaimer
accompany any petition under Sec. 1.316(b) not filed within six (6)
months of the date of the abandonment of the application. Acceptance of
a late payment of an issue fee in a design application is specifically
provided for in Sec. 1.155. Therefore, Sec. 1.316 does not apply to
design applications. The language ``filed before June 8, 1995'' as used
in the amended rule, refers to the actual United States filing date,
without reference to any claim for benefit under 35 U.S.C. 120, 121, or
365. No change to Sec. 1.316 was proposed in the Notice of Proposed
Rulemaking. However, in all applications filed on or after June 8,
1995, except design applications, any delay in filing a petition under
Sec. 1.316(b) will automatically result in the loss of patent term. The
loss of patent term will be the incentive for applicants to promptly
file any petition under Sec. 1.316(b). Therefore, no need is seen for
requiring a terminal disclaimer in such applications. It would amount
to a penalty if a terminal disclaimer was required.
Section 1.317 is being amended by removing and reserving paragraph
(d) to eliminate the requirement that a terminal disclaimer accompany
any petition under Sec. 1.317(b) not filed within six (6) months of the
date of lapse of the patent. No change to Sec. 1.317 was proposed in
the Notice of Proposed Rulemaking. However, the delay in filing a
petition under Sec. 1.317(b) does not result in any gain of patent
term. Therefore, no reason is seen for requiring a terminal disclaimer
in such cases.
Section 1.701(a) is being changed to identify the implementation
date as June 8, 1995, and to clarify that a proceeding under 35 U.S.C.
135(a) is an interference proceeding.
[[Page 20200]]
Section 1.701(b) is being changed to provide that the term of a
patent entitled to an extension under Sec. 1.701 shall be extended for
the sum of the periods of delay calculated under paragraphs (c)(1),
(c)(2), (c)(3) and (d) of Sec. 1.701 and the extension will run from
the expiration date of the patent. The reference to a terminal
disclaimer is being deleted to be consistent with Sec. 1.701(a)(3) and
to avoid any confusion.
Section 1.701(c)(1)(i) is being changed for clarity by deleting the
phrase ``if any'' after the first occurrence of ``interference'' and by
inserting the same phrase after the phrase ``the number of days.''
Section 1.701(c)(1)(ii) is being changed to clarify that the period
referred to ends on the ``date of the termination of the suspension''
rather than on the date of the next PTO communication reopening
prosecution.
Section 1.701(d)(1) is being amended to clarify that the ``time''
referred to is time ``during the period of appellate review''.
Section 1.701(d)(2) is being amended to clarify that the
Commissioner, under the broad discretion granted by 35 U.S.C.
154(b)(3)(C), has decided to limit consideration of applicant's due
diligence only to acts occurring during the period of appellate review.
The supplementary information published in the Notice of Proposed
Rulemaking contained examples of what might be considered a lack of due
diligence for purposes of Sec. 1.701(d)(2) as proposed. Specifically,
the supplementary information identified 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 as examples. In view of the comments received and
the language adopted in the final rules, those examples are withdrawn.
Acts which the Commissioner considers to constitute prima facie
evidence of lack of due diligence under Sec. 1.701(d)(2) are
suspensions at applicant's request under Sec. 1.103(a) during the
period of appellate review and abandonments during the period of
appellate review.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Parts 1 and 3, are
being amended as indicated below:
Section 1.1 is being amended to add a paragraph (i) to 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 is being amended to redesignate paragraph (a) as
paragraph (a)(1) and to define a national application as a U.S.
application for patent which was either filed in the Office under 35
U.S.C. 111, or which entered the national stage from an international
application after compliance with 35 U.S.C. 371. A new paragraph (a)(2)
is being added to define the term ``provisional application'' as a U.S.
national application filed under 35 U.S.C. 111(b). Also, a new
paragraph (a)(3) is being added to define the term ``nonprovisional
application'' as a U.S. national application for patent which was
either filed in the Office under 35 U.S.C. 111(a), or which entered the
national stage from an international application after compliance with
35 U.S.C. 371.
Sections 1.12 and 1.14 are being amended to replace the references
to Sec. 1.17(i)(1) with references to Sec. 1.17(i).
Sections 1.16(a)-(e) and (g) are being amended to clarify that
those sections do not apply to provisional applications. A complete
provisional application does not require claims. 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.
Section 1.16(f) is being amended to insert the words ``basic fee''.
Section 1.16(e) 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 Sec. 1.53(d)(1). The
change to Sec. 1.16(f) is merely for clarification. In addition,
Sec. 1.16(a) is being amended to replace the word ``cases'' with the
word ``applications'', since the word ``applications'' is used
elsewhere in the rule.
Section 1.16 is also being amended to add a new paragraph (k) which
lists the basic filing fee for a provisional application as $75.00 for
a small entity (see Secs. 1.9(c)-(f)) or $150.00 for other than a small
entity as contained in Public Law 103-465. Since the filing fee for a
provisional application is established by Public Law 103-465 as a 35
U.S.C. 41(a) fee, the filing fee for a provisional application will be
subject to the fifty (50) percent reduction provided for in 35 U.S.C.
41(h).
Further, Sec. 1.16 is being amended to add a new paragraph (1)
which establishes the surcharge required by new Sec. 1.53(d)(2) for
filing the basic filing fee or the cover sheet required by new
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.
Section 1.17(h) is being amended to clarify that the $130.00
petition fee for filing a petition for correction of inventorship under
Sec. 1.48 applies to all patent applications, except provisional
applications. Paragraph (i)(1) is being redesignated as paragraph (i)
and paragraph (i)(2) is being removed. The fee for a petition under
Sec. 1.102 to make an application special has been placed in paragraph
(i). The words ``of this part'', in Sec. 1.17, paragraphs (h) and (i),
are being deleted, since the paragraphs currently refer to sections in
parts other than Part 1. Section 1.17(i) is also being amended to
clarify that the fee set forth in paragraph (i) for filing a petition
to accord a filing date under Sec. 1.53 applies to all patent
applications, except provisional applications.
A new Sec. 1.17(q) is being added to establish a petition fee of
$50.00 for filing a petition for correction of inventorship under
Sec. 1.48 in a provisional application and for filing a petition to
accord a provisional application a filing date or to convert an
application filed under Sec. 1.53(b)(1) to a provisional application.
The petition fee set forth in Sec. 1.17(q) is not reduced for a small
entity.
New Secs. 1.17 (r) and (s) are being added to establish the fees
for entry of 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 $365.00 for a
small entity and $730.00 for other than a small entity.
Section 1.21(l) is being amended to refer to Sec. 1.53(d)(1).
Section 1.28(a) is being amended to clarify the procedure for
establishing status as a small entity in a nonprovisional application
claiming benefit under 35 U.S.C. 119(e), 120, 121, or 365(c) of a prior
application. In such cases, applicants may file a new verified
statement or rely on a verified statement filed in the prior
application, if status as a small entity is still proper and desired.
If applicants intend to rely on a verified statement filed in the prior
application, applicants must include in the nonprovisional application
either a reference to the verified statement filed in the prior
application or a copy of the verified statement filed in the prior
application. Status as a small entity may be established in a
provisional application by complying with existing Sec. 1.27.
Section 1.45(c) is being amended to clarify that the first sentence
applies to a ``nonprovisional'' application. Section 1.45 (c) is also
being amended to add a second sentence relating to joint inventors
named in a provisional [[Page 20201]] application. The second sentence
states that each inventor named in a provisional application must have
made a contribution to the subject matter disclosed in the provisional
application. All that Sec. 1.45(c), second sentence, requires is that
if a person is named as an inventor in a provisional application, that
person must have made a contribution to the subject matter disclosed in
the provisional application.
Sections 1.48 (a)-(c) are being amended to specify that the
procedures for correcting an error in inventorship set forth in those
sections apply to nonprovisional applications. New paragraph (d) is
being added to establish a procedure for adding the name of an inventor
in a provisional application, where the name was originally omitted
without deceptive intent. Paragraph (d) does 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 required in paragraph (a). Instead, the
procedure requires 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 PTO. The statement could be signed by
a registered practitioner of record in the application or acting in a
representative capacity under Sec. 1.34(a). The $50.00 petition fee set
forth in Sec. 1.17(q) would also be required. New paragraph (e) is also
being added setting forth the procedure for deleting the name of a
person who was erroneously named as an inventor in a provisional
application. The procedure requires an amendment deleting the name of
the person who was erroneously named accompanied by: a petition
including a statement of facts verified by the person whose name is
being deleted establishing that the error occurred without deceptive
intention; the fee set forth in Sec. 1.17(q); and the written consent
of any assignee.
Section 1.51 is being amended to redesignate Sec. 1.51(a) as
Sec. 1.51(a)(1) and to include a new paragraph (a)(2) identifying the
required parts of a complete provisional application. As set forth in
Sec. 1.51(a)(2), a complete provisional application includes 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 is included
as an Appendix A to this Notice of Final Rulemaking and is available
from the PTO free of charge to the public. However, the rule does not
require the applicant to use the PTO suggested cover sheet. Any paper
containing the information required in Sec. 1.51(a)(2)(i) will be
acceptable. The cover sheet is required to identify the paper as a
provisional application and to provide the information which is
necessary for the PTO to prepare the provisional application filing
receipt. Also, the residence of each named inventor and, if the
invention disclosed in the provisional application was made by an
agency of the U.S. Government or under a contract with an agency of the
U.S. Government, the name of the U.S. Government agency and Government
contract number must be identified on the cover sheet.
Section 1.51(b) is being amended to indicate that an information
disclosure statement is not required and may not be filed in a
provisional application. Any information disclosure statements filed in
a provisional application will either be returned or disposed of at the
convenience of the Office. An information disclosure statement filed in
a Sec. 1.53(b)(1) application which has been converted to a provisional
application will be retained in the application after the conversion,
if the information disclosure statement was filed before the petition
required by Sec. 1.53(b)(2)(ii) was filed.
The title of Sec. 1.53 and paragraph (a) are being amended to refer
to application number, rather than application serial number. The term
``application number'' is found in current Sec. 1.53(a).
Section 1.53(b) is being redesignated as Sec. 1.53(b)(1) and is
being amended to refer to Sec. 1.17(i) rather than Sec. 1.17(i)(1) to
conform to the change therein.
A new Sec. 1.53(b)(2) is being added to set forth the requirements
for obtaining a filing date for a provisional application. Section
1.53(b)(2) states that a filing date will be accorded to a provisional
application as of the date the specification as prescribed by 35 U.S.C.
112, first paragraph, any necessary drawings, and the name of each
inventor of the subject matter disclosed are filed in the PTO. The
filing date requirements for a provisional application set forth in new
paragraph (b)(2) parallel the existing requirements set forth in former
paragraph (b), now redesignated paragraph (b)(1), except that no claim
is required. In order to minimize the cost of processing provisional
applications and to reduce the handling of provisional applications,
amendments, other than those required to make the provisional
application comply with applicable regulations, are not permitted after
the filing date of the provisional application.
Section 1.53(b)(2)(i) is being added requiring all provisional
applications to be filed with a cover sheet identifying the application
as a provisional application. The section also indicates that the PTO
will treat an application as having been filed under Sec. 1.53(b)(1),
unless the application is identified as a provisional application on
filing. A provisional application, which is identified as such on
filing, but which does not include all of the information required by
Sec. 1.51(a)(2)(i) would still be treated as a provisional application.
However, the omitted information and a surcharge would be required to
be submitted at a later date under new Sec. 1.53(d)(2).
Section 1.53(b)(2)(ii) is being added to establish a procedure for
converting an application filed under Sec. 1.53(b)(1) to a provisional
application. The section requires that a petition requesting the
conversion and a petition fee be filed in the Sec. 1.53(b)(1)
application prior to the earlier of the abandonment of the
Sec. 1.53(b)(1) application, the payment of the issue fee, the
expiration of twelve (12) months after the filing date of the
Sec. 1.53(b)(1) application, or the filing of a request for a statutory
invention registration under Sec. 1.293. 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 being added to call attention to the
provisions of Public Law 103-465 which prohibit any provisional
application from claiming a right of priority under 35 U.S.C. 120, 121
or 365(c) of any other application. The section also calls attention to
the provisions of Public Law 103-465 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) further specifies that the requirements of
Secs. 1.821-1.825 are not mandatory for provisional applications.
However, applicants are reminded that an invention being claimed in an
application filed under 35 U.S.C. 111(a) or 365 which claims benefit
under 35 U.S.C. 119(e) of a provisional application must be disclosed
in the provisional application in the manner provided by the first
paragraph of 35 U.S.C. 112. Voluntary compliance with the requirements
of Secs. 1.821-1.825 in [[Page 20202]] the provisional application is
recommended, in order to ensure that support for the invention claimed
in the 35 U.S.C. 111(a) application can be readily ascertained in the
provisional application.
Section 1.53(c) is being amended to 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), 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). This reflects the current practice set forth in the
Manual of Patent Examining Procedure (MPEP), section 506.02 (Sixth
Edition, Jan. 1995) with regard to any request for review of a refusal
to accord a filing date for an application. The PTO will continue its
current practice of refunding the petition fee, if the refusal to
accord the requested filing date is found to have been a PTO error.
Section 1.53(d) is being redesignated as Sec. 1.53(d)(1).
Section 1.53(d)(2) is being added to provide that a provisional
application may be filed without the basic filing fee and without the
complete cover sheet required by Sec. 1.51(a)(2). In such a case, the
applicant will be notified and given a period of time in which to file
the missing fee, and/or cover sheet and to pay the surcharge set forth
in Sec. 1.16(l).
Section 1.53(e) is being redesignated as Sec. 1.53(e)(1) and
amended to refer to Sec. 1.53(b)(1). Also, a new Sec. 1.53(e)(2) is
being added to indicate that a provisional application will not be
given a substantive examination and will be abandoned no later than
twelve (12) months after its filing date.
Sections 1.55(a) and (b) are being amended to clarify that the
sections apply to nonprovisional applications and to clarify that a
nonprovisional application may claim the benefit of one or more prior
foreign applications or one or more applications for inventor's
certificate. Also, Sec. 1.55(a) is being amended to replace the
reference to 35 U.S.C. 119 with a reference to 35 U.S.C. 119(a)-(d). In
addition, the reference to Sec. 1.17(i)(1) in Sec. 1.55(a) is being
replaced by a reference to Sec. 1.17(i) to be consistent with the
change to Sec. 1.17. Section 1.55(b) is also being amended to refer to
35 U.S.C. 119(d) to conform to the paragraph designations contained in
Public Law 103-465.
Section 1.59 is being amended to clarify that the retention fee
practice set forth in Sec. 1.53(d)(1) applies only to applications
filed under Sec. 1.53(b)(1).
Section 1.60 is being amended to clarify in the title of the
section and in paragraph (b)(1) that the procedure set forth in the
section is only available for filing a continuation or divisional
application if the prior application was a nonprovisional application
and complete as set forth in Sec. 1.51(a)(1). Paragraph (b)(4) is being
amended to delete the requirement that the statement which must
accompany the copy of the prior application include the language that
``no amendments referred to in the oath or declaration filed to
complete the prior application introduced new matter therein.'' The
requirement is unnecessary because any amendment filed to complete the
prior application would be considered a part of the original disclosure
of the prior application and, by definition, could not contain new
matter. Also, paragraph (b)(4) is being amended to refer to
Sec. 1.17(i).
Section 1.62(a) is being amended to clarify that the procedure set
forth in the section is only available for filing a continuation,
continuation-in-part, or divisional application of a prior
nonprovisional application which is complete as defined in
Sec. 1.51(a)(1). Section 1.62(a) is also being amended to clarify that
a continuing application may be filed under Sec. 1.62 after payment of
the issue fee if a petition under Sec. 1.313(b)(5) is granted in the
prior application and that the request for a Sec. 1.62 application must
include identification of the inventors named in the prior application.
The phrase ``Serial number, filing date'' in Sec. 1.62(a) is being
changed to ``application number.''
Section 1.62(e) is being amended to replace the reference to
Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with
the change to Sec. 1.17. Also, the term ``application serial number''
in Sec. 1.62(e) is being changed to ``application number.''
Section 1.63(a) is being amended to replace the reference to
Sec. 1.51(a)(2) with a reference to Sec. 1.51(a)(1)(ii) in order to
conform with the changes in Sec. 1.51 and to refer to an oath or
declaration filed as a part of a nonprovisional application.
Section 1.67(b) is being amended to replace the reference to
Sec. 1.53(d) with a reference to Sec. 1.53(d)(1) in order to conform
with the changes in Sec. 1.53. Furthermore, the references to
Secs. 1.53(b) and 1.118 are being deleted to make clear that the new
matter exclusion applies to all applications including those filed
under Secs. 1.60 and 1.62. Also, the section is being amended to refer
to a nonprovisional application.
Sections 1.78 (a)(1) and (a)(2) are being amended to clarify that
the sections apply to nonprovisional applications claiming the benefit
of one or more copending nonprovisional applications or international
applications designating the United States of America. Section
1.78(a)(1)(iii) is being amended to refer to Secs. 1.53(b)(1) and
1.53(d)(1). Section 1.78(a)(2) is also being amended to eliminate the
use of serial number and filing date as an identifier for a prior
application. The section will require that the prior application be
identified by application number (consisting of the series code and
serial number) or international application number and international
filing date.
Sections 1.78 (a)(3) and (a)(4) are being added to set forth the
conditions under which a nonprovisional application may claim the
benefit of one or more prior copending provisional applications. The
later filed nonprovisional application must be an application other
than for a design patent and must be copending with each provisional
application. There must be a common inventor named in the prior
provisional application and the later filed nonprovisional application.
Each prior provisional application must be complete as set forth in
Sec. 1.51(a)(2), or entitled to a filing date as set forth in
Sec. 1.53(b)(2) and include the basic filing fee. Section 1.78(a)(3)
also includes the warning that when the last day of pendency of a
provisional application falls on a Saturday, Sunday, or Federal holiday
within the District of Columbia, any nonprovisional application
claiming benefit of the provisional application must be filed prior to
the Saturday, Sunday, or Federal holiday within the District of
Columbia. A provisional application may be abandoned by operation of 35
U.S.C. 111(b)(5) on a Saturday, Sunday, or Federal holiday within the
District of Columbia, in which case, a nonprovisional application
claiming benefit of the provisional application under 35 U.S.C. 119(e)
must be filed no later than the preceding day which is not a Saturday,
Sunday, or Federal holiday within the District of Columbia.
Section 1.78(a)(4) is also being added to provide that a
nonprovisional application claiming benefit of one or more provisional
applications must contain a reference to each provisional application,
identifying it as a provisional application and including the
provisional application number (consisting of series code and serial
number). The section does not require the nonprovisional application to
identify the nonprovisional application as a continuation, divisional
or continuation-in-part application of the provisional
application. [[Page 20203]]
Sections 1.83 (a) and (c) are being amended to clarify that the
sections apply to nonprovisional applications.
Section 1.97(d) is being amended to replace the reference to
Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with
the change to Sec. 1.17.
Section 1.101(a) is being amended to indicate that the section
applies to nonprovisional applications.
Section 1.102(d) is being amended to replace the reference to
Sec. 1.17(i)(2) with a reference to Sec. 1.17(i) to be consistent with
the change to Sec. 1.17.
Section 1.103(a) is amended to replace the reference to
Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with
the change to Sec. 1.17.
Section 1.129 is being added to set forth the procedure for
implementing certain transitional provisions contained in Public Law
103-465. Section 1.129(a) provides for limited reexamination of
applications pending for 2 years or longer as of June 8, 1995, taking
into account any reference to any earlier application under 35 U.S.C.
120, 121 or 365(c). An applicant will be entitled to have a first
submission entered and considered on the merits after final rejection
if the submission and the fee set forth in Sec. 1.17(r) are filed prior
to the filing of an Appeal Brief and prior to abandonment of the
application. Section 1.129(a) also provides that the finality of the
final rejection is automatically withdrawn upon the timely filing of
the submission and payment of the fee set forth in Sec. 1.17(r). After
submission and payment of the fee set forth in Sec. 1.17(r), the next
PTO action on the merits may be made final only under the conditions
currently followed by the PTO for making a first action in a continuing
application final. 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. Section 1.129(a)
defines 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 fee set forth in Sec. 1.17(r), any
information disclosure statement previously refused consideration in
the application because of applicant's failure to comply with Sec. 1.97
(c) or (d) or which is filed as part of either the first or second
submission will be treated as though it had been filed within one of
the time periods set forth in Sec. 1.97(b) and will be considered
without the petition and petition fee required in Sec. 1.97(d), if it
complies with the requirements of Sec. 1.98. In view of 35 U.S.C. 132,
no amendment considered as a result of the payment of the fee set forth
in Sec. 1.17(r) may introduce new matter into the disclosure of the
application.
Section 1.129(b)(1) is being added to provide for examination of
more than one independent and distinct invention in certain
applications pending for 3 years or longer as of June 8, 1995, taking
into account any reference to any earlier application under 35 U.S.C.
120, 121 or 365(c). Under Sec. 1.129(b)(1), a requirement for
restriction or for the filing of divisional applications would only be
made or maintained in the application after June 8, 1995, 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) prior to April 8, 1995;
(2) the examiner has not made a requirement for restriction in the
present or parent application prior to April 8, 1995, due to actions by
the applicant; or (3) the required fee for examination of each
additional invention was not paid. Under Sec. 1.129(b)(2), 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, applicant will be
notified and given a time period to (i) elect the invention or
inventions to be searched and examined, if no election has been made
prior to the notice, and pay the fee set forth in Sec. 1.17(s) for each
independent and distinct invention claimed in the application in excess
of one which applicant elects, (ii) in situations where an election was
made in response to a requirement for restriction that cannot be
maintained, confirm the election made prior to the notice and pay the
fee set forth in Sec. 1.17(s) for each independent and distinct
invention claimed in the application in addition to the one invention
which applicant previously elected, or (iii) file a petition under
Sec. 1.129(b)(2) traversing the requirement without regard to whether
the requirement has been made final. No petition fee is required.
Section 1.129(b)(2) also provides that if the petition is filed in a
timely manner, the original time period for electing and paying the fee
set forth in Sec. 1.17(s) will be deferred and any decision on the
petition affirming or modifying the requirement will set a new time
period to elect the invention or inventions to be searched and examined
and to pay the fee set forth in Sec. 1.17(s) for each independent and
distinct invention claimed in the application in excess of one which
applicant elects. Under Sec. 1.129(b)(3), each additional invention for
which the required fee set forth in Sec. 1.17(s) 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.
Section 1.129(c) is being added to clarify that the provisions of
Secs. 1.129 (a) and (b) are not applicable to any application filed
after June 8, 1995. However, any application filed on June 8, 1995,
would be subject to a 20-year patent term.
Section 1.137 is being amended by revising paragraph (c) to
eliminate, in all applications filed on or after June 8, 1995, except
design applications, the requirement that a terminal disclaimer
accompany any petition under Sec. 1.137(a) not filed within six (6)
months of the date of the abandonment of the application. The language
``filed before June 8, 1995'' and ``filed on or after June 8, 1995'' as
used in the amended rule, refer to the actual United States filing
date, without reference to any claim for benefit under 35 U.S.C. 120,
121 or 365.
Section 1.139 is being added to set forth the procedure for
reviving a provisional application where the delay was unavoidable or
unintentional. Section 1.139(a) addresses the revival of a provisional
application where the delay was unavoidable and Sec. 1.139(b) addresses
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 the filing of the
provisional application. 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 Sec. 1.139 parallel the existing
requirements set forth in Sec. 1.137. [[Page 20204]]
Sections 1.177, 1.312(b), 1.313(a), and 1.314 are being amended to
replace the references to Sec. 1.17(i)(1) with references to
Sec. 1.17(i) to be consistent with the change to Sec. 1.17.
Section 1.316(d) is being amended to eliminate, in all applications
filed on or after June 8, 1995, except design applications, the
requirement that a terminal disclaimer accompany any petition under
Sec. 1.316(b) not filed within six (6) months of the date of the
abandonment of the application. Acceptance of a late payment of an
issue fee in a design application is specifically provided for in
Sec. 1.155. Therefore, Sec. 1.316 does not apply to design
applications. The language ``filed before June 8, 1955'' as used in the
amended rule, refers to the actual United States filing date, without
reference to any claim for benefit under 35 U.S.C. 120, 121 or 365.
Section 1.317(d) is being removed and reserved to eliminate the
requirement that a terminal disclaimer accompany any petition under
Sec. 1.317(b) not filed within six (6) months of the date of lapse of
the patent.
Section 1.666 is being amended to replace the reference to
Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with
the change to Sec. 1.17.
Section 1.701 is being added to set forth the procedure the PTO
will follow in calculating the length of any extension of patent term
to which an applicant is entitled under 35 U.S.C. 154(b) where the
issuance of a patent on an application, other than for designs, filed
on or after June 8, 1995, was delayed due to certain causes of
prosecution delay. Applicants need not file a request for the extension
of patent term under Sec. 1.701. The extension of patent term is
automatic by operation of law. It is currently anticipated that
applicant will 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 the length of a patent term extension calculated by the PTO
under Sec. 1.701 prior to the issuance of the patent would be by way of
petition under Sec. 1.181. If an error is noted after the patent
issues, patentee and any third party may seek correction of the period
of patent term granted by filing a request for Certificate of
Correction pursuant to Sec. 1.322. The PTO intends to identify the
length of any patent term extension calculated under Sec. 1.701 on the
printed patent.
Section 1.701(a) is being added to identify those patents which are
entitled to an extension of patent term under 35 U.S.C. 154(b).
Section 1.701(b) is being added to provide that the term of a
patent entitled to extension under Sec. 1.701(a) shall be extended for
the sum of the periods of delay calculated under Secs. 1.701 (c)(1),
(c)(2), (c)(3) and (d), to the extent that those periods are not
overlapping, up to a maximum of five years. The section also provides
that the extension will run from the expiration date of the patent.
Section 1.701(c)(1) is being added to set forth the method for
calculating the period of delay where the delay was a result of an
interference proceeding under 35 U.S.C. 135(a). The period of delay
with respect to each interference in which the application was involved
is calculated under Sec. 1.701(c)(1)(i) to include 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. An interference is considered terminated as of the date
the time for filing an appeal under 35 U.S.C. 141 or civil action under
35 U.S.C. 146 expired. If an appeal under 35 U.S.C. 141 is taken to the
Court of Appeals for the Federal Circuit, the interference terminates
on the date of receipt of the court's mandate by the PTO. If a civil
action is filed under 35 U.S.C. 146, and the decision of the district
court is not appealed, the interference terminates on the date the time
for filing an appeal from the court's decision expires. See section
2361 of the MPEP. The period of delay with respect to an application
suspended by the PTO due to interference proceedings under 35 U.S.C.
135(a) not involving the application is calculated under
Sec. 1.701(c)(1)(ii) to include the number of days in the period
beginning on the date prosecution in the application is suspended due
to interference proceedings not involving the application and ending on
the date of the termination of the suspension. The period of delay
under Sec. 1.701(a)(1) is the sum of the periods calculated under
Secs. 1.701 (c)(1)(i) and (c)(1)(ii), to the extent that the periods
are not overlapping.
Section 1.701(c)(2) is being added to set forth the method for
calculating the period of delay where the delay was a result of the
application being placed under a secrecy order.
Section 1.701(c)(3) is being added to set forth the method for
calculating the period of delay where the delay was a result of
appellate review. The period of delay is calculated under
Sec. 1.701(c)(3) to include the number of days 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.
Section 1.701(d) is being added to set forth the method for
calculating any reduction in the period calculated under
Sec. 1.701(c)(3). As required by 35 U.S.C. 154(b)(3)(B),
Sec. 1.701(d)(1) provides that the period of delay calculated under
Sec. 1.701(c)(3) shall be reduced by any time during the period of
appellate review that occurred before three years from the filing date
of the first national application for patent presented for examination.
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 PTO
will consider the ``filing date'' for the purpose of Sec. 1.701(d)(1)
to be the date on which applicant has complied with the requirements of
Sec. 1.494(b), or Sec. 1.495(b), if applicable.
As contained in Public Law 103-465, 35 U.S.C. 154(b)(3)(C) states
that the period of extension referred to in 35 U.S.C. 154(b)(2) ``shall
be reduced for the period of time during which the applicant for patent
did not act with due diligence, as determined by the Commissioner.''
Section 1.701(d)(2) is being added to provide that the period of delay
calculated under Sec. 1.701(c)(3) shall be reduced by any time during
the period of appellate review, as determined by the Commissioner,
during which the applicant for patent did not act with due diligence.
Section 1.701(d)(2) also provide that in determining the due diligence
of an applicant, the Commissioner may examine the facts and
circumstances of the applicant's actions during the period of appellate
review to determine whether the applicant exhibited that degree of
timeliness as may reasonably be expected from, and which is ordinarily
exercised by, a person during a period of appellate review. Acts which
the Commissioner considers to constitute prima facie evidence of lack
of due diligence under Sec. 1.701(d)(2) are suspension at applicant's
request under Sec. 1.103(a) during the period of appellate review and
abandonment during the period of appellate review.
Section 3.21 is being amended to provide that 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, [[Page 20205]] e.g., 07/123,456) and to
eliminate the use of serial number and filing date as an identifier for
national patent applications in assignment documents. This change is
intended to 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 Sec. 1.53(b)(1), 1.60 or 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.
Section 3.21 is also being amended to provide that 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.
Further, Sec. 3.21 is being amended to provide that 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.
Section 3.81 is being amended to replace the reference to
Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with
the change to Sec. 1.17.
Responses to and Analysis of Comments: Forty-nine written comments
were received in response to the Notice of Proposed Rulemaking. These
comments, along with those made at the public hearing, have been
analyzed. Some suggestions made in the comments have been adopted and
others have not been adopted. Responses to the comments follow.
General Comments
1. Comment: One comment questioned the use of the word ``proposed''
in the notice of proposed rulemaking in describing the statutory
amendments contained in Public Law 103-465.
Response: The statutory changes contained in Public Law 103-465
were described as ``proposed'' changes in the Notice of Proposed
Rulemaking because the President had not signed the legislation at the
time the notice was prepared for publication. In fact, the legislation
was signed by the President on December 8, 1994, which is the date of
enactment.
2. Comment: Several comments urged the PTO to favorably consider
the 17/20 patent term specified in H.R. 359 since this proposed
legislation would overcome the existing impact of extended PTO
prosecution and eliminate patent term extensions for prosecution
delays. Furthermore, the proposed legislation is consistent with the
Uruguay Round Agreements Act, Public Law 103-465.
Response: The administration and the PTO strongly believe that the
20-year patent term as enacted in Public Law 103-465 is the appropriate
way to implement the 20-year patent term required by the GATT Uruguay
Round Agreements Act. The PTO will take steps to ensure that processing
and examination of applications are handled expeditiously.
3. Comment: One comment stated that the proposed rules are
premature in view of the Rohrabacher bill, H.R. 359.
Response: The proposed rules are not premature. Public Law 103-465
was signed into law on December 8, 1994, with an effective date of June
8, 1995, for the implementation of the 20-year patent term and
provisional applications. The Commissioner must promulgate regulations
to implement the changes required by Public Law 103-465.
4. Comment: One comment stated that there is nothing in the TRIPs
agreement that requires the term to be measured from filing, nor that
provisional applications be provided for, nor that new fees of $730 as
set forth in Secs. 1.17 (r) and (s) be established. It is suggested
that 35 U.S.C. 154 be amended to provide that ``every patent (other
than a design patent) shall be granted a term of twenty years from the
patent issue date, subject to the payment of maintenance fees.'' It was
also suggested that the section regarding maintenance fees be amended
to add a new fee payable at 16.5 years of $5000 (for large entity)/
$2500 (for small entity) for maintenance of patent between 17 and 20
years.
Response: The suggestion has not been adopted. The administration
and the PTO strongly believe that the 20-year patent term as enacted in
Public Law 103-465 is the appropriate way to implement the 20-year
patent term required by the GATT Uruguay Round Agreements Act. The
establishment of a provisional application is not required by GATT. The
provisional application has been adopted as a mechanism to provide easy
and inexpensive entry into the patent system. The filing of provisional
applications is optional. Provisional applications will place domestic
applicants on an equal footing with foreign applicants as far as the
measurement of term is concerned because the domestic priority period,
like the foreign priority period, is not counted in determining the
endpoint of the patent term. As to the Secs. 1.17 (r) and (s) fees, the
statute authorizes the Commissioner to establish appropriate fees for
further limited reexamination of applications and for examination of
more than one independent and distinct inventions in an application.
5. Comment: One comment suggested that the 20-year patent term of
claims drawn to new matter in continuation-in-part (CIP) applications
be measured from the filing date of the CIP application, irrespective
of any reference to a parent application under 35 U.S.C. 120.
Response: The suggestion has not been adopted. The term of a patent
is not based on a claim-by-claim approach. Under 35 U.S.C. 154(a)(2),
if an application claims the benefit of the filing date of an earlier
filed application under 35 U.S.C. 120, 121 or 365(a), the 20-year term
of that application will be based upon the filing date of the earliest
U.S. application that the application makes reference to under 35
U.S.C. 120, 121 or 365(a). For a CIP application, applicant should
review whether any claim in the patent that will issue is supported in
an earlier application. If not, applicant should consider canceling the
reference to the earlier filed application.
6. Comment: One comment objected to the 20-year term provisions of
Public Law 103-465 because it was believed that payment of maintenance
fees would be required earlier under 20-year term than under 17-year
term.
Response: The payment of maintenance fees are not due earlier under
20-year term than under 17-year term. Maintenance fees continue to be
due at 3.5, 7.5 and 11.5 years from the issue date of the patent.
7. Comment: Several comments suggested that the expiration date be
printed on the face of the patent.
Response: The suggestion has not been adopted. The expiration date
will not be printed on the face of the patent. The PTO will publish any
patent term extension that is granted as a result of administrative
delay pursuant to Sec. 1.701 on the face of the patent. The term of a
patent will be readily discernible from the face of the patent.
Furthermore, it is noted that the term of a patent is dependent on the
timely payment of maintenance fees which is not printed on the face of
the patent.
8. Comment: One comment suggested that in order to aid the bar in
advising clients as to whether a provisional application has had its
priority claimed in a patent, the PTO should somehow link the
provisional application number [[Page 20206]] with the complete
application number and/or the patent number.
Response: It is contemplated by the PTO that all provisional
applications will be given application numbers, starting with a series
code ``60'' followed by a six digit number, e.g., ``60/123,456.'' If a
subsequent 35 U.S.C. 111(a) application claims the benefit of the
filing date of the provisional application pursuant to 35 U.S.C. 119(e)
and the 35 U.S.C. 111(a) application results in a patent, the
provisional application would be listed by its application number and
filing date on the face of the patent under the heading ``Related U.S.
Application Data.'' The public will be able to identify an application
under the above-noted heading as a provisional application by checking
to see if it has a series code of ``60.''
9. Comment: Several comments suggested that the PTO consider
modifying the rules to permit the filing of all applications by
assignees. This would promote harmonization with other patent laws
throughout the world and would eliminate one of the difficulties which
will occur for the PTO in considering claims for priority based on the
filing of a provisional application.
Response: Assignee filing was recommended in the 1992 Advisory
Commission Report on Patent Law Reform. The PTO is currently
undertaking a project to reengineer the entire patent process. The
suggestion will be taken under advisement in that project.
10. Comment: Several comments stated that a complete provisional
application should not be forwarded to a central repository for
storage.
Response: In view of the relatively small filing fee for a
provisional application and the fact that the provisional application
will not be examined, PTO 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 PTO.
11. Comment: One comment suggested that the provisional application
be maintained with the 35 U.S.C. 111(a) application because the
examiner may need it to determine whether the 35 U.S.C. 111(a)
application is entitled to the benefit of the prior provisional
application and in the event of 18-month publication, there will be a
demand for accessibility by the public to the provisional and 35 U.S.C.
111(a) applications upon publication.
Response: The suggestion has not been adopted. Benefit of the same
provisional application may be claimed in a number of 35 U.S.C. 111(a)
applications. If the PTO is to maintain the provisional application
file with one of several 35 U.S.C. 111(a) applications claiming benefit
of the provisional application and the 35 U.S.C. 111(a) application
containing the provisional application file were to go abandoned while
one of the other 35 U.S.C. 111(a) application issues, the public would
be entitled to inspect the provisional application file but not the
abandoned 35 U.S.C. 111(a) application file containing the provisional
application file. This would create access problems.
12. Comment: One comment suggested that provisional applications be
available in full to the public if the benefit of priority is being
claimed.
Response: Section 1.14 relating to access applies to all
applications including provisional applications. If the benefit of a
provisional application is claimed in a later filed 35 U.S.C. 111(a)
application which resulted in a patent, then access to the provisional
application will be available to the public pursuant to Sec. 1.14. The
mere fact that a provisional application is claimed in a later filed 35
U.S.C. 111(a) application does not give the public access to the
provisional application unless the 35 U.S.C. 111(a) application issues
as a patent.
13. Comment: Several comments requested that the PTO clarify
whether a 35 U.S.C. 111(a) application will be accorded an effective
date as a reference under 35 U.S.C. 102(e) as of the filing date of the
provisional application for which benefit under 35 U.S.C. 119(e) is
claimed. If so, the comment questioned whether pending applications
will be rejected under 35 U.S.C. 102(e) on the basis that an invention
was described in a patent granted on a provisional application by
another filed in the U.S. before the invention thereof by the applicant
for patent.
Response: If a patent is granted on a 35 U.S.C. 111(a) application
claiming the benefit of the filing date of a provisional application,
the filing date of the provisional application will be the 35 U.S.C.
102(e) prior art date. A pending application will be rejected under 35
U.S.C. 102(e) on the basis that an invention was described in a patent
granted on a 35 U.S.C. 111(a) application which claimed the benefit of
the filing date of a provisional application by another filed in the
U.S. before the invention thereof by the applicant for patent.
14. Comment: One comment suggested that the PTO issue a final rule
stating that if a 35 U.S.C. 111(a) application claims the benefit of
the filing date of a provisional application, the ``inventive entity''
for the purposes of 35 U.S.C. 102(e) will be the inventors listed on
the issued patent, and the list of inventors in the provisional
application shall have no effect on the identity of an ``inventive
entity'' for the purposes of 35 U.S.C. 102(e).
Response: The suggestion has not been adopted. The ``inventive
entity'' for the purpose of 35 U.S.C. 102(e) is determined by the
patent and not by the inventors named in the provisional application.
As long as the requirements of 35 U.S.C. 119(e) are satisfied, a patent
granted on a 35 U.S.C. 111(a) application which claimed the benefit of
the filing date of a provisional application has a 35 U.S.C. 102(e)
prior art effect as of the filing date of the provisional application
based on the inventive entity of the patent. It is clear from 35 U.S.C.
102(e) that the inventive entity is determined by the patent and a rule
to this effect is not necessary.
15. Comment: One comment requested the PTO to express its position
as to whether the filing of a provisional application with the
subsequent filing of a 35 U.S.C. 111(a) application claiming benefit of
the provisional application under 35 U.S.C. 119(e) creates a prior art
date against other patent applicants under 35 U.S.C. 102(g).
Response: As to 35 U.S.C. 102(g), the filing of a provisional
application with the subsequent filing of a 35 U.S.C. 111(a)
application claiming benefit of the provisional application under 35
U.S.C. 119(e) creates a prior art date under 35 U.S.C. 102(g) as of the
filing date of the provisional application.
16. Comment: One comment suggested that in view of the 20-year
patent term measured from filing, Sec. 1.103(a) should be deleted. The
PTO should not have the right to suspend action on any application,
thereby reducing applicant's term of protection.
Response: Section 1.103(a) refers to suspension of action as a
result of a request by applicant. If applicant wishes to suspend
prosecution and thereby reduce his/her term of protection, applicant
should be permitted to do so.
17. Comment: One comment suggested that in order to avoid delays
resulting from consideration of petitions to withdraw premature notices
of abandonment, examiners should be required to contact an attorney of
record prior to abandoning the application to find out if a response to
an Office communication has been filed.
Response: The suggestion has not been adopted. However, in order to
avoid loss of patent term, applicants are encouraged to check on the
status in [[Page 20207]] cases where applicants have not received a
return postcard from the PTO within two (2) weeks of the filing of any
response to a PTO action.
18. Comment: One comment asked whether there is a ``cut-off'' date
after which patentees may lose the opportunity to choose 17- vs. 20-
year patent term.
Response: The ``cut-off'' date is June 8, 1995. A patent that is in
force on June 8, 1995, or a patent that issues after June 8, 1995, on
an application filed before June 8, 1995, is automatically entitled to
the longer of the 20-year patent term measured from the earliest U.S.
effective filing date or 17 years from grant. This is automatic by
operation of law. Patentees need not make any election to be entitled
to the longer term. A patent that issues on an application filed on or
after June 8, 1995 is entitled to a 20-year patent term measured from
the earliest U.S. effective filing date.
19. Comment: One comment stated that there is no clear guidance as
to a patentee's ``bonus rights'' that may arise because of the
difference in a 17-year term vs. a 20-year term. Will parties that were
previously in a licensing arrangement have to renegotiate terms for the
bonus patent term?
Response: Section 154(c) of title 35, United States Code, states
that the remedies of sections 283 (injunction), 284 (damages) and 285
(attorney fees) shall not apply to acts which were commenced or for
which substantial investment was made before June 8, 1995, and became
infringing by reason of the 17/20 year term and that these acts may be
continued only upon the payment of an equitable remuneration to the
patentee that is determined in an action brought under chapters 28 and
29 of Title 35. There is no guidance provided in the statute as to the
meaning of ``substantial investment'' and ``equitable remuneration.''
Licensing arrangements are between the parties to the agreement and are
determined by the terms of the agreement and state law and are outside
the jurisdiction of the PTO.
20. Comment: One comment questioned whether an international
application designating the U.S. filed before June 8, 1995, with entry
into the U.S. national stage on or after June 8, 1995, preserves the
17-year patent term measured from grant.
Response: An international application designating the U.S. that is
filed before June 8, 1995, with entry into the U.S. national stage
under 35 U.S.C. 371 on or after June 8, 1995, preserves the option for
a 17-year patent term measured from date of grant.
21. Comment: One comment suggested that 35 U.S.C. 371(c) be amended
because a declaration should not be required to obtain a filing date
and a prior art date under 35 U.S.C. 102(e).
Response: The suggestion has not been adopted. This issue was not
addressed in the Notice of Proposed Rulemaking. However, the suggestion
will be taken under advisement as part of a comprehensive effort being
conducted by the PTO to re-engineer the entire patent process.
22. Comment: One comment suggested that Secs. 1.604, 1.605 and
1.607 be amended to state that provisional applications are not subject
to interference.
Response: The suggestion has not been adopted because it is
unnecessary. By statute, 35 U.S.C. 111(b)(8), provisional applications
are not subject to 35 U.S.C. 135, i.e., a provisional application will
not be placed in interference.
23. Comment: One comment suggested that Secs. 1.821-1.825 be
amended so that (1) only unbranched sequences of ten or more amino
acids and twenty or more nucleotides which are claimed have to be
included in Sequence Listings, (2) previously published sequences can
be omitted, and (3) the sequences of primers and oligonucleotide probes
should not be included in a Sequence Listing if encompassed by another
disclosed sequence.
Response: The suggestion has not been adopted. There was no change
proposed to Secs. 1.821-1.825 in the Notice of Proposed Rulemaking.
However, the suggestion will be taken under advisement as part of a
comprehensive effort being conducted by the PTO to reengineer the
entire patent process.
24. Comment: One comment suggested that Secs. 5.11 to 5.15 be
amended to provide for the grant of a foreign license for a provisional
application.
Response: The suggestion has not been adopted. The present language
of Secs. 5.11 to 5.15 already provides for the grant of a foreign
license for a provisional application.
25. Comment: One comment suggested that in order to assist defense
agencies in reviewing application for secrecy orders, PTO should (1)
automatically impose a secrecy order on any application filed under 35
U.S.C. 111(a) if a secrecy order was previously imposed on
corresponding provisional application, and (2) require applications
filed under 35 U.S.C. 111(a) based on a previous provisional
application to indicate changes made to the provisional application in
the 35 U.S.C. 111(a) application by means of underlining and
bracketing.
Response: The suggestions have not been adopted. The PTO cannot
automatically impose a secrecy order on any 35 U.S.C. 111(a)
applications even if a secrecy order was previously imposed on a
provisional application, for which benefit under 35 U.S.C. 119(e) is
claimed, unless the agency which imposed the secrecy order on the
provisional application specifically requests the PTO to do so since
the 35 U.S.C. 111(a) application could disclose subject matter which is
different from that which is disclosed in the provisional application.
As to item (2), the PTO will not require applicants to identify the
differences in subject matter disclosed in the 35 U.S.C. 111(a)
application and the provisional application.
26. Comment: One comment suggested that in order to relieve defense
agencies from possible liability for secrecy orders imposed for more
than 5 years, the PTO should seek legislation setting patent term at 20
years from the earliest filing date or 17 years from the issue date,
whichever is longer, for any patent application placed under secrecy
order.
Response: The suggestion has not been adopted. The PTO strongly
believes that the 20-year patent term as enacted in Public Law 103-465
is the appropriate way to implement the 20-year patent term required by
the GATT Uruguay Round Agreements Act. The 35-year limit for patent
term extension set forth in Sec. 1.701(b) is required by statute, 35
U.S.C. 154(b).
Comments Directed to Specific Rules
27. Comment: One comment suggested that in order to eliminate the
need for the expression ``other than a provisional application'' in
other parts of the regulations, Sec. 1.9 should be amended to identify
a 35 U.S.C. 111(a) application by some term that can be used in the
rules to distinguish that type of application from a provisional
application.
Response: The suggestion has been adopted. The rules are being
amended to include a definition of the term ``nonprovisional
application'' in Sec. 1.9(a) to describe an application filed under 35
U.S.C. 111(a) or 371. Further, the term ``nonprovisional application''
is being used in the final rules where the rule applies only to
applications filed under 35 U.S.C. 111(a) or 371 and not to provisional
applications.
28. Comment: One comment suggested that the rules be simplified if
[[Page 20208]] a ``national application'' could be defined in Sec. 1.9
to exclude a provisional application.
Response: The suggestion has not been adopted. Section 1.9(a),
prior to this rulemaking, defined a national application to include any
application filed under 35 U.S.C. 111. A provisional application is an
application filed under 35 U.S.C. 111. It is appropriate to define a
provisional application as a special type of national application.
29. Comment: One comment requested an explanation of the showing
required in a petition under Secs. 1.12 and 1.14 for access to pending
applications and to assignment records for pending applications.
Response: There was no substantive change proposed to either
Sec. 1.12 or 1.14 in the Notice of Proposed Rulemaking. Thus, the
showing required in a petition under Sec. 1.12 or 1.14 remains the same
after this final rulemaking as before. A discussion of such a petition
can be found in section 103 of the MPEP.
30. Comment: Several comments objected to the definition in
Sec. 1.45(c) of joint inventors in provisional applications as being
those having made a contribution to ``the subject matter disclosed'' in
the provisional application. Various language, such as, ``the subject
matter which constitutes the invention,'' ``subject matter disclosed
and regarded to be the invention,'' ``disclosed invention,'' ``the
inventive subject matter disclosed'' was suggested. Another comment
requested guidance as to the determination of inventorship in a
provisional application.
Response: The suggestion has not been adopted. The term
``invention'' is typically used to refer to subject matter which
applicant is claiming in his/her application. Since claims are not
required in a provisional application, it would not be appropriate to
reference joint inventors as those who have made a contribution to the
``invention'' disclosed in the provisional application. If the
``invention'' has not been determined in the provisional application
because no claims have been presented, then the name(s) of those
person(s) who have made a contribution to the subject matter disclosed
in the provisional application should be submitted. Section 1.45(c)
states that ``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.'' All that Sec. 1.45(c) requires is that if
someone is named as an inventor, that person must have made a
contribution to the subject matter disclosed in the provisional
application. When applicant has determined what the invention is by the
filing of the 35 U.S.C. 111(a) application, that is the time when the
correct inventors must be named. The 35 U.S.C. 111(a) application must
have an inventor in common with the provisional application in order
for the 35 U.S.C. 111(a) application to be entitled to claim the
benefit of the provisional application under 35 U.S.C. 119(e).
31. Comment: Several comments suggested that it might be desirable
to correct inventorship in a provisional application where an
individual was erroneously named as an inventor and that the procedure
for doing so should be set forth in Sec. 1.48.
Response: Under 35 U.S.C. 119(e), as contained in Public Law 103-
465, a later filed application under 35 U.S.C. 111(a) 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 under 35 U.S.C. 119(e). However, in response to the
comments, Sec. 1.48 is being amended to include a new paragraph (e)
which sets forth the requirements for deleting the names of the
inventors incorrectly named as joint inventors in a provisional
application, namely, a petition including a verified statement by the
inventor(s) whose name(s) are being deleted stating that the error
arose without deceptive intent, the fee set forth in Sec. 1.17(q) and
the written consent of all assignees.
32. Comment: One comment suggested that in order to make the
procedures for provisional applications as simple as possible, there is
no need to provide any rules to add inventor(s) or change inventorship
in a provisional application since the whole concept of inventorship is
meaningless without a claim. Error in inventorship can be corrected by
the filing of and 35 U.S.C. 111(a) application within 12 months after
the filing of a provisional application.
Response: The suggestion has not been adopted. One of the
requirements of 35 U.S.C. 119(e) is that a 35 U.S.C. 111(a) application
must have at least one inventor in common with a provisional
application in order for the 35 U.S.C. 111(a) application to be
entitled to claim the benefit of the filing date of the provisional
application. In situations where there is no inventor in common between
the 35 U.S.C. 111(a) application and the provisional application due to
error in naming the inventors in the provisional application,
procedures must be established to permit applicant to correct the
inventorship in the provisional application.
33. Comment: One comment suggested that an individual who is the
inventor of subject matter disclosed in a provisional application, but
who is not named as an inventor in the provisional application because
that subject matter was not intended to be claimed in a later filed 35
U.S.C. 111(a) application, could be added as an inventor pursuant to
Sec. 1.48(d) in the provisional application if the subject matter was
claimed in 35 U.S.C. 111(a) application.
Response: The individual could be added as an inventor pursuant to
Sec. 1.48(d) in the provisional application so long as the individual
was originally omitted without deceptive intent.
34. Comment: One comment questioned whether it would be proper for
a registered practitioner who did not file the provisional application
to sign the statement required by Sec. 1.48(d) that the error occurred
without deceptive intention on the part of the inventors.
Response: It would be proper for a registered practitioner who did
not file the provisional application to sign the statement required by
Sec. 1.48(d), if the registered practitioner has a reasonable basis to
believe the truth of the statement being signed.
35. Comment: One comment suggested that there should be no
diligence requirement to correct inventorship in a provisional
application.
Response: Diligence is not a requirement to correct inventorship in
a provisional application in either Sec. 1.48(d) or 1.48(e).
36. Comment: One comment suggested that Sec. 1.48(a) be amended by
deleting the requirements for ``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'' and
for the written consent of any assignee.
Response: The suggestion has not been adopted. There was no
substantive change proposed to Sec. 1.48(a) in the Notice of Proposed
Rulemaking. Since the correction of inventorship affects ownership
rights, the existing rules are designed to provide assurances that all
parties including the original named inventors and all assignees agree
to the change of inventorship. If the [[Page 20209]] requirements for
verified statements of facts from the original named inventors and
written consent of the assignees are to be deleted, the PTO would no
longer have the assurances that all parties agree to the change.
37. Comment: One comment expressed concern that a provisional
application filed without a claim will leave subsequent readers with
little or no clue as to what the inventors in the provisional
application considered to be their invention at the time the
provisional application was filed and doubted that a provisional
application filed without a claim defining the invention could ever
provide a sufficient disclosure to support a claim for a foreign or
U.S. priority date.
Response: Claims are not required by the statute to provide a
specification in compliance with the requirements of 35 U.S.C. 112,
first paragraph. However, if an applicant desires, one or more claims
may be included in a provisional application. Any claim field with a
provisional application will, of course, be considered part of the
original provisional application disclosure.
38. Comment: One comment suggested that the PTO issue a
specification format or guideline for a provisional application to
enable an inventor to comply with 35 U.S.C. 112, first paragraph.
Response: The format of a provisional application is the same as
for other applications and is set forth in existing Sec. 1.77 which is
applicable to provisional applications except no claims are required
for provisional applications.
39. Comment: Several comments suggested that the PTO revise its
rules to clarify that strict adherence to the enablement, description
and best mode requirements of 35 U.S.C. 112, first paragraph, is not
required in provisional applications.
Response: The suggestion has not been adopted. The substantive
requirements of a specification necessary to comply with 35 U.S.C. 112,
first paragraph, are established by court cases interpreting that
section of the statute, not by rule. The case law applies to
provisional applications as well as to applications filed under 35
U.S.C. 111(a).
40. Comment: Several comments suggested that the rules or comments
published with the Final Rule indicate whether there is any requirement
to update the best mode disclosed in the provisional application when
filing the 35 U.S.C. 111(a) application.
Response: No rule was proposed to address the issue when going from
a provisional application to a 35 U.S.C. 111(a) application because no
current rule exists when going from one 35 U.S.C. 111(a) application to
another 35 U.S.C. 111(a) application. The question of whether the best
mode has to be updated is the same when going from one 35 U.S.C. 111(a)
application to another 35 U.S.C. 111(a) application or from a
provisional application to a 35 U.S.C. 111(a) application. Accordingly,
the rationale of Transco Products, Inc. v. Performance Contracting
Inc., 38 F.3d 551, 32 U.S.P.Q.2d 1077 (Fed. Cir. 1994), would appear to
be applicable. Clearly, if the substantive content of the application
does not change when filing the 35 U.S.C. 111(a) application, there is
no requirement to update the best mode. However, if subject matter is
added to the 35 U.S.C. 111(a) application, there may be a requirement
to update the best mode.
41. Comment: One comment suggested that Sec. 1.51(c) be amended to
permit a provisional application to be filed with an authorization to
charge fees to a deposit account.
Response: Section 1.51(c) permits an application to be filed with
an authorization to charge fees to a deposit account. Section 1.51(c)
applies to provisional applications. Therefore, no change to
Sec. 1.51(c) is necessary.
42. Comment: One comment suggested that the PTO confirm that there
will be no procedural examination of a provisional application other
than to determine whether the provisional application complies with
Sec. 1.51(a)(2).
Response: The PTO intends to require compliance with the formal
requirements of Secs. 1.52(a)-(c) only to the extent necessary to
permit the PTO to properly microfilm and store the application papers.
43. Comment: Several comments suggested that an English translation
of a foreign language provisional application should not be required
unless necessary in prosecution of the 35 U.S.C. 111(a) application to
establish benefit. If an English translation is required, there is no
useful purpose to require the translation at any time earlier than the
filing of 35 U.S.C. 111(a) application claiming the benefit of the
provisional application.
Response: Provisional applications may be filed in a language other
than English as set forth in existing Sec. 1.52(d). However, an English
language translation is necessary for security screening purposes.
Therefore, the PTO will require the English language translation and
payment of the fee required in Sec. 1.52(d) in the provisional
application. Failure to timely submit the translation in response to a
PTO requirement will result in the abandonment of the provisional
application. If a 35 U.S.C. 111(a) application is filed without
providing the English language translation in the provisional
application, the English language translation will be required to be
supplied in every 35 U.S.C. 111(a) application claiming priority of the
non-English language provisional application.
44. Comment: One comment suggested that a new model oath or
declaration form for use in claiming 35 U.S.C. 119(e) priority and a
``cover sheet'' for use in filing provisional applications be published
as an addendum to the final rules.
Response: The suggestion has been adopted. See Appendix A for the
sample cover sheet for filing a provisional application and Appendix B
for the sample declaration for use in claiming 35 U.S.C. 119(e)
priority.
45. Comment: One comment suggested that the statement in
Sec. 1.53(b)(2) that the provisional application will not be given a
filing date if all the names of the actual inventor or inventor(s) are
not supplied be deleted and Sec. 1.41 be amended to make an exception
for provisional applications. The comment suggested that 35 U.S.C.
111(b) is satisfied as long as the name of one person who made an
inventive contribution to the subject matter of the application is
given.
Response: The suggestion has not been adopted. Section 111(b) of
title 35, United States Code, states that ``a provisional application
shall be made or authorized to be made by the inventor.'' This language
parallels 35 U.S.C. 111(a). The naming of inventors for obtaining a
filing date for a provisional application is the same as for other
applications. A provisional application filed with the inventors
identified as ``Jones et al.'' will not be accorded a filing date
earlier than the date upon which the name of each inventor is supplied
unless a petition with the fee set forth in Sec. 1.17(i) is filed which
sets forth the reasons the delay in supplying the names should be
excused. Administrative oversight is an acceptable reason. It should be
noted that for a 35 U.S.C. 111(a) application to be entitled to claim
the benefit of the filing date of a provisional application, the 35
U.S.C. 111(a), application must have at least one inventor in common
with the provisional application.
46. Comment: One comment suggested that a drawing should not be
required to obtain a filing date for a provisional application.
Whatever is filed should be given a serial number and filing date in
order to establish status as a provisional application, regardless of
what is in the specification or drawing. If the provisional
[[Page 20210]] application omitted drawings, has pages missing, or is
otherwise incomplete, then applicant may not be able to rely on the
filing date of the provisional application in a subsequently filed 35
U.S.C. 111(a) application. It should not be the job of the Application
Branch to review compliance with Sec. 1.81(a).
Response: Section 111(b) of title 35, United States Code, states
that a provisional application must include a specification as
prescribed by 35 U.S.C. 112, first paragraph and a drawing as
prescribed by 35 U.S.C. 113. Drawings are required pursuant to 35
U.S.C. 113 if they are necessary to understand the subject matter
sought to be patented. If a provisional application as filed omitted
drawings and/or has pages missing, the provisional application is prima
facie incomplete and no filing date will be granted. Application Branch
currently reviews all applications to make sure that no filing date
will be granted to an application that is prima facie incomplete.
Application Branch will perform the same type of review with
provisional applications. If a filing date is not granted to a
provisional application because it is prima facie incomplete, applicant
may petition the PTO under Sec. 1.182 to grant a filing date to the
provisional application as of the date of deposit of the application
papers if it can be shown that the omitted items are not necessary for
the understanding of the subject matter.
47. Comment: One comment objected to the requirement in
Sec. 1.53(b)(2)(i) for a cover sheet identifying the application as a
provisional application because it is unnecessarily rigid and contrary
to Congress' desire to keep the filing of provisional application as
simple as possible.
Response: The requirement that a provisional application be
specifically identified on filing as a provisional application is not
seen to be burdensome on the applicant and is necessary for the PTO to
properly process the papers as a provisional application. All an
applicant is required to do in order to comply with the requirement of
Sec. 1.53(b)(2)(i) is to include a transmittal sheet identifying the
papers being filed as a PROVISIONAL application.
48. Comment: Several comments suggested that in
Sec. 1.53(b)(2)(ii), as proposed, the phrase ``the expiration of 12
months after the filing date of the provisional application'' should
read ``the expiration of 12 months after the filing date of the
Sec. 1.53(b)(1) application''.
Response: The suggestion has been adopted.
49. Comment: One comment objected to the requirement in
Sec. 1.53(b)(2)(ii) for a petition to convert an application filed
under Sec. 1.53(b)(1) to a provisional application and suggested that
any confusion concerning applicant's intention could be handled
informally without a petition or petition fee.
Response: The requirement for a petition and fee is intended to
ensure that the cost of any PTO reprocessing is borne specifically by
the applicant requesting the action.
50. Comment: Several comments suggested that the filing fee
required in an application filed under 35 U.S.C. 111(a) claiming
benefit of the filing date of an earlier 35 U.S.C. 111(a) application
which has been converted to a provisional application under proposed
Sec. 1.53(b)(2)(ii) be reduced, since the $730/$365 filing fee was paid
in the earlier application.
Response: The suggestion has not been adopted. The filing fee
required in an application filed under 35 U.S.C. 111(a) is set by
statute. The statute does not provide for the suggested reduction in
the filing fee.
51. Comment: One comment suggested that the proposed
Sec. 1.53(b)(2)(iii) should apply retroactively to permit applications
filed between June 9, 1994, and June 8, 1995, to be converted to
provisional applications.
Response: The suggestion has not been adopted. The statute does not
permit a provisional application to have a filing date prior to June 8,
1995.
52. Comment: One comment suggested that Sec. 1.53(b)(2)(ii) be
revised to state that the petition requesting conversion must also be
filed before (1) the application becomes involved in interference, or
(2) notice by the PTO of intent to publish the application as a
statutory invention registration. This suggestion conforms with 35
U.S.C. 11(b)(8).
Response: The suggestion has not been fully adopted. It is not
necessary to include interference in Sec. 1.53(b)(2)(ii) because if a
35 U.S.C. 111(a) application becomes involved in an interference
proceeding and applicant files a petition requesting conversion of that
35 U.S.C. 111(a) application to a provisional application, the 35
U.S.C. 111(a) will be removed from the interference proceeding upon
granting the petition to convert. When a subsequent 35 U.S.C. 111(a)
application is filed based on the provisional application, the
subsequent 35 U.S.C. 111(a) application could be placed in the
interference proceeding if necessary. As to the reference to statutory
invention registration, Sec. 1.53(b)(2)(ii) is being amended to require
the petition and the fee be filed prior to the earlier of the
abandonment of the 35 U.S.C. 111(a) application, the payment of the
issue fee, the expiration of 12 months after the filing date of the 35
U.S.C. 111(a) application, or the filing of a request for a statutory
invention registration under Sec. 1.293.
53. Comment: One comment suggested that the procedures for
converting a 35 U.S.C. 111(a) application to a provisional application
be explained in greater detail in Sec. 1.53(b)(2)(ii) or in the
discussion. If a 35 U.S.C. 111(a) application is converted to a
provisional application on the last day of the 12-month period, and a
second 35 U.S.C. 111(a) application is concurrently filed, how should
this be done and how should the first sentence in the second 35 U.S.C.
111(a) application be worded. Furthermore, if a 35 U.S.C. 111(a)
application is converted to a provisional application on the last day
of the 12-month period, will it be necessary to file a second 35 U.S.C.
111(a) application on the same day, or else lose the priority claim.
Response: The suggestion has not been adopted. The language in
Sec. 1.53(b)(2)(ii) is clear relating to the requirements for
converting a 35 U.S.C. 111(a) application to a provisional application.
If applicant wishes to convert a 35 U.S.C. 111(a) application to a
provisional application, applicant must file a petition requesting the
conversion along with the petition fee set forth in Sec. 1.17(q). The
petition and the fee must be filed prior to the earlier of the
abandonment of the 35 U.S.C. 111(a) application, the payment of the
issue fee, the expiration of 12 months after the filing date of the 35
U.S.C. 111(a) application, or the filing of a request for a statutory
invention registration under Sec. 1.293. In the example noted in the
comment, if a 35 U.S.C. 111(a) application is converted to a
provisional application on the last day of the 12-month period, a
second 35 U.S.C. 111(a) application must be filed on that same day,
otherwise, applicant will lose the priority pursuant to 35 U.S.C.
119(e). An example of how the first sentence of the second 35 U.S.C.
111(a) application would read is, ``This application claims the benefit
of U.S. Provisional Application No. 60/------, filed ------, which was
converted from Application No.------.''
54. Comment: One comment suggested that the PTO consider a rule
mandating that any prior U.S. application that would have been eligible
for conversion to a provisional application that is abandoned in favor
of a continuing application within one [[Page 20211]] year of the
earlier priority date asserted be deemed constructively converted to a
provisional application.
Response: The suggestion has not been adopted. Conversion of a 35
U.S.C. 111(a) application to a provisional will be permitted only by
way of a petition and under the conditions set forth in
Sec. 1.53(b)(2)(ii). One reason for this is that the PTO plans to
provide sufficient information on the printed patent to determine the
end date of the 20-year patent term by identifying provisional
applications using a unique series code, i.e., ``60''. Thus, a 35
U.S.C. 111(a) application converted to a provisional application will
need to be reprocessed by the PTO with a new application number. The
petition fee is intended to reimburse the PTO for the extra processing
necessitated by the conversion.
55. Comment: One comment stated that Sec. 1.53(b)(2)(ii) permits
the conversion of a 35 U.S.C. 111(a) application to a provisional
application. However, it is silent as to whether such a conversion
would kill any benefit the 35 U.S.C. 111(a) application had of domestic
and/or foreign priority.
Response: Section 111(b)(7) of title 35, United States Code,
specifically states that a provisional application shall not be
entitled to the right of priority of any other application under 35
U.S.C. 119 or 365(a) or to the benefit of an earlier filing date in the
United States under 35 U.S.C. 120, 121, or 365(c). If a 35 U.S.C.
111(a) application is converted to a provisional application, the
granting of the conversion will automatically eliminate any claim of
priority which could have been made in the 35 U.S.C. 111(a)
application.
56. Comment: Several comments suggested that it was inconsistent
with the purpose of the provisional application to require any
compliance with the Sequence Disclosure Rules Secs. 1.821-1.823 and
1.825, since the provisional applications are not examined and there is
no comparison of the sequences with the prior art.
Response: The Office agrees with the comments that a provisional
application need not comply with the requirements of Secs. 1.821
through 1.825. Section 1.53(b)(2)(iii) is being amended to indicate
that the requirements of Secs. 1.821 through 1.825 regarding sequence
listings are not mandatory for a provisional application. However,
applicants are cautioned that in order for a 35 U.S.C. 111(a)
application to obtain the benefit of the filing date of an earlier
filed provisional application, the claimed subject matter of the 35
U.S.C. 111(a) application must have been disclosed in the provisional
application in a manner provided by 35 U.S.C. 112, first paragraph.
Applicants are encouraged to follow the sequence rules to ensure that
support for the invention claimed in the 35 U.S.C. 111(a) application
can be readily ascertained in the provisional application.
57. Comment: One comment suggested that the language in
Sec. 1.53(e)(2) that a provisional application will become abandoned no
later than twelve months after its filing date was misleading and that
the words ``no later than'' should be deleted because it was believed
that a provisional application could not be abandoned prior to twelve
months after its filing date.
Response: The statute does not state that a provisional application
can never be abandoned prior to twelve months after its filing date. In
fact, a provisional application may be abandoned as a result of
applicant's failure to timely respond to a PTO requirement. For
example, if a provisional application which has been accorded a filing
date 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). Failure to timely respond will result in the
abandonment of the application. This may occur prior to twelve months
after its filing date. Furthermore, a provisional application may also
be expressly abandoned prior to twelve months from its filing date.
58. Comment: One comment objected to the deletion of the
``retention fee'' practice in Sec. 1.53(d) since it permits an
applicant in a first application claiming benefits under 35 U.S.C. 119
(a)-(d) or 120 to correct inventorship by filing a second application
without having to pay the full filing fee in the first application.
Response: Since the comment indicated that there is a benefit to
retain the retention fee practice, the proposal to eliminate the
practice is withdrawn.
59. Comment: One comment stated that the language of Secs. 1.53
(d)(1) and (d)(2) indicates an intent by the PTO to mail the ``Notice
Of Missing Parts'' to applicant's post office address and argues that
the ``Notice'' should be mailed to the registered practitioner who
filed the application on behalf of the applicant.
Response: The language in Secs. 1.53 (d)(1) and (d)(2) states that
the applicant will be notified of the missing part, if a correspondence
address is provided. This means that the ``Notice'' to applicant will
be mailed to the correspondence address provided in the application
papers. Under current PTO practice, if no specific correspondence
address is identified in the application, the address of the registered
practitioner who filed the application on behalf of the applicant is
used as the correspondence address. If no specific correspondence
address or registered practitioner is identified in the application,
the post office address of the first named inventor is used as the
correspondence address. No change in current PTO practice in this
regard is required as a result of Sec. 1.53(d)(2) nor is any change
planned.
60. Comment: Several comments objected to the proposed deletion of
Sec. 1.60. One comment suggested that the deletion of Sec. 1.60 was a
major rule change and should have been proposed separate from the
proposed rules dealing with the changes in practice required by Public
Law 103-465.
Response: In view of the comments received, the proposal to delete
Sec. 1.60 is withdrawn. However, the proposal will be considered as
part of a comprehensive effort being conducted by the PTO to reengineer
the entire patent process.
61. Comment: One comment suggested that in view of the deletion of
Sec. 1.60, language should be incorporated in Sec. 1.53(a)(1) to state
that a copy of the prior application along with a copy of the
declaration may be filed to obtain a filing date. Furthermore, full
details and guidelines of the procedure should accompany the rule.
Response: The suggestion has not been adopted. The proposal to
delete Sec. 1.60 is withdrawn in view of several comments received
objecting to the deletion.
62. Comment: One comment suggested that the removal of the stale
oath practice be codified.
Response: The suggestion has not been adopted. Neither the statute
nor the rules require a recent date of execution to appear on the oath
or declaration. The PTO practice of objecting to an oath or declaration
where the time elapsed between the date of execution and the filing
date of the application is more than three months is found in section
602.05 of the MPEP. Therefore, the removal of the stale oath practice
will be accomplished by amending the MPEP.
63. Comment: One comment questioned whether a copy of an
application faxed to an attorney could be filed in the PTO as the
application papers.
Response: Yes. While a patent application may not be faxed directly
to the PTO, an application faxed to an [[Page 20212]] attorney may be
forwarded to the PTO by mail or courier as the application papers
provided the papers meet the formal requirements of Sec. 1.52.
Effective November 22, 1993, Sec. 1.4 was amended to include a new
paragraph (d) to specify that most correspondence filed in the PTO,
which requires a person's signature, may be an original, a copy of an
original or a copy of a copy. Only correspondence identified in
Secs. 1.4(e) and (f) require the original to be filed in the PTO. Thus,
an oath or declaration required by Sec. 1.63, 1.153, 1.162 or 1.175 may
be an original, a copy of an original or a copy of a copy. See 1156
Off. Gaz. Pat. Office 61 (November 16, 1993).
64. Comment: One comment suggested that applicant be permitted to
use Sec. 1.62 procedure to file the 35 U.S.C. 111(a) application which
claims the benefit of a provisional application, at least in those
situations where the 35 U.S.C. 111(a) application has been converted to
a provisional application which is followed by the filing of a second
35 U.S.C. 111(a) application.
Response: The suggestion has not been adopted. Section 1.62 will
not be amended to permit the filing of a 35 U.S.C. 111(a) application
based on a provisional application because the PTO sees this situation
as a trap for applicants. The filing procedures would be made more
complicated if an exception is provided to address situations where a
35 U.S.C. 111(a) application is converted to a provisional application
and a second 35 U.S.C. 111(a) application is later filed. However, the
suggestion will be taken under advisement when greater familiarity with
provisional applications is developed.
65. Comment: One comment suggested that Sec. 1.62 procedure be
replaced with a simple petition procedure to reopen prosecution.
Response: The suggestion is not being adopted. However, the
suggestion will be taken under advisement as part of a comprehensive
effort being conducted by the PTO to reengineer the entire patent
process.
66. Comment: One comment suggested that the language in
Sec. 1.62(a) that requires an identification of the ``applicant's name
of the prior complete application'' is confusing and should be
clarified.
Response: The suggestion has been adopted. Section 1.62 is being
amended to require the identification of the ``applicants named in the
prior complete application.''
67. Comment: One comment suggested that Sec. 1.62 be amended to
state that the refiling procedures set forth in Sec. 1.62 may be used
after the issue fee is paid when a petition under Sec. 1.313(b)(5) is
granted. This practice is permitted pursuant to the notice published in
1138 Off. Gaz. Pat. Office 40 (May 19, 1992).
Response: The suggestion has been adopted.
68. Comment: One comment suggested that Sec. 1.62 be amended to
clarify whether applicant needs to re-list, in the Sec. 1.62
application, all the references cited by the examiner and applicant in
the parent application in order to get those references printed on the
eventual patent.
Response: The suggestion has not been adopted. Section 609 of the
MPEP (Sixth Edition, Jan. 1995) has been amended to clarify that in a
Sec. 1.62 application, references submitted and cited in the parent
application need not be resubmitted. These references will be printed
on the patent. However, in any continuing application filed under
Sec. 1.53(b)(1) or 1.60, a list of the references must be resubmitted
if applicant wishes to have the references printed in the eventual
patent.
69. Comment: One comment suggested that Sec. 1.67 should go into
more detail on when supplemental oaths are required in Sec. 1.53
filings of continuation and divisional applications.
Response: The suggestion has been adopted because it is seen to be
unnecessary and no substantive change was proposed to Sec. 1.67 in the
Notice of Proposed Rulemaking.
70. Comment: One comment suggested that ``not but'' in Sec. 1.67(b)
should read ``but not''.
Response: The suggestion has been adopted.
71. Comment: Several comments suggested that a rule be provided to
state that an application for patent is permitted to claim the benefit
of the filing date of more than one prior provisional application so
long as the applicant complies with all statutory provisions.
Response: The suggestion has been adopted. Section 1.78(a)(3) is
being amended to indicate that applicants are permitted to separately
claim the benefit of the filing date of more than one prior provisional
application in a later filed 35 U.S.C. 111(a) application provided all
statutory requirements of 35 U.S.C. 119(e) are complied with. It is
noted that current practice permits an application to claim the
benefits of the filing date of more than one prior foreign application
under 35 U.S.C. 119(a)-(d) and of more than one prior copending U.S.
application under 35 U.S.C. 120, without an explicit statement to that
effect in the rules. Since the final rules are being amended to
specifically permit applications filed under 35 U.S.C. 111(a) to claim
the benefits of the filing date of more than one prior copending
provisional application, corresponding changes are also being made to
Secs. 1.55 and 1.78(a)(1) relating to claims for the benefits available
under 35 U.S.C. 119(a)-(d) and 120 to be consistent with
Sec. 1.78(a)(3).
72. Comment: Several comments requested that the PTO specify
language to use in the first sentence of an application when priority
is based on more than one provisional application.
Response: Section 1.78(a)(4) requires that ``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.'' Where a 35 U.S.C. 111(a)
application claims the benefit of more than one provisional
application, a suitable reference would read, ``This application claims
the benefit of U.S. Provisional Application No. 60/----, filed ---- and
U.S. Provisional Application No. 60/----, filed ----.'' In addition,
for an application which is claiming the benefit under 35 U.S.C. 120 of
a prior application, which in turn claims the benefit of a provisional
application under 35 U.S.C. 119(e), a suitable reference would read,
``This application is a continuation of U.S. application No. 08/----,
filed ----, now abandoned, which claims the benefit of U.S. Provisional
Application No. 60/----, filed ----.''
73. Comment: One comment suggested that the rules address the
effect on patent term where an applicant in a continuing application
deletes the reference to the prior filed application before the patent
issues.
Response: an applicant has full control over claims to the benefit
of an earlier filing date under 35 U.S.C. 120, 121 or 365(c). The 20-
year patent term will be based upon the filing date of the earliest
U.S. application that the applicant makes reference to under 35 U.S.C.
120, 121 and 365(c). Whether an applicant is entitled to the benefit of
the filing date of an earlier application is something that an
applicant should examine before the patent is issued. The PTO is not,
unless it comes up as an issue in the examination process, going to
determine whether any of the claims are entitled to the earlier filing
date. Applicant however, should determine whether the claims are
entitled to or require the benefit of the earlier filing
[[Page 20213]] date. If not, the applicant should consider canceling
the reference to the earlier filed application to avoid having the 20-
year patent term measured from that earlier filing date. An amendment
adding or deleting a reference to an earlier filed application
presented prior to a final action will be entered, however, the claims
may be subject to possible intervening prior art.
74. Comment: One comment stated that in view of the fact that a
provisional application is not entitled to claim the benefit of a prior
filed copending national or international application as stated in
Sec. 1.53(b)(2)(iii), the phrase ``other than a provisional
application'' in Sec. 1.78(a)(2) is unnecessary.
Response: Section 1.78(a)(2) is being amended to state that ``any
nonprovisional application claiming the benefit of a prior copending
nonprovisional or international application must contain * * *.''
Section 1.78(a)(2) addresses a 35 U.S.C. 111(a) application which
claims the benefit of a prior copending 35 U.S.C. 111(a) application or
international application.
75. Comment: Several comments objected to the content requirements
for drawings filed in a provisional application as originally set forth
in proposed Sec. 1.83(a)(2). One comment suggested that no rule was
necessary to set forth the required content of drawings in a
provisional application.
Response: In view of the comments received, the proposed amendment
to Sec. 1.83 is withdrawn. Under 35 U.S.C. 113, first sentence,
applicant must furnish drawings in a provisional application ``where
necessary for the understanding of the subject matter sought to be
patented.'' This requirement is also stated in existing Sec. 1.81(a).
Therefore, no further elaboration on the content of the drawings in a
provisional application is believed necessary in the rules.
76. Comment: One comment suggested that the rules specify that
formal drawings are not required in a provisional application.
Response: The suggestion has not been adopted. However, the PTO
intends to examine provisional applications for requirements of form
only to the extent that is necessary to permit normal storage and
microfilming of the application papers. Formal drawings are usually not
required for those purposes.
77. Comment: Several comments suggested that Sec. 1.97(d) be
amended to require the PTO to consider any information disclosure
statement submitted after a final rejection or notice of allowance if
an appropriate fee is paid.
Response: The suggestion has not been adopted because no
substantive change to this rule was proposed in the Notice of Proposed
Rulemaking. The existing rules are designed to encourage prompt
submission of information to the PTO. To permit applicant to merely pay
a fee to have any information disclosure statement submitted after a
final rejection or Notice of Allowance would be contrary to the effort
to encourage prompt submissions.
78. Comment: One comment suggested that Sec. 1.97 be changed so
that an office action which uses a newly cited reference as a ground
for rejection under 35 U.S.C. 102 or 103 cannot be made final.
Response: The suggestion has not been adopted because no
substantive change to this rule was proposed in the Notice of Proposed
Rulemaking.
79. Comment: One comment suggested that the words ``which are not
examined'' in Sec. 1.101 as proposed are unnecessary and could create a
negative implication that some provisional applications are examined.
Response: The suggestion has not been adopted. By statute,
provisional applications are not subject to 35 U.S.C. 131, i.e., the
Commissioner is not permitted to examine a provisional application for
patentability.
80. Comment: Several comments stated that it is unfair to require
small entities to pay the full $730.00 fee set forth in proposed
Sec. 1.129. It is suggested that the fee be changed to $365.00 or less.
Response: Pursuant to Public Law 103-465, the Commissioner has the
authority to establish appropriate fees for the further limited
reexamination of applications and for the examination of more than one
independent and distinct invention in an application. As a result of
additional review, it was concluded that these fees may be reduced by
50% for small entities. Sections 1.17 (r) and (s) are being amended to
indicate that the fees are reduced by 50% for small entities, that is,
$365.00 for small entities.
81. Comment: Several comments suggested that the transitional
procedure set forth in Sec. 1.129(a) as proposed is equivalent to
filing one application, i.e., it provides for an extra examination and
reexamination after the original final rejection, and, therefore, the
requirement for two $730.00 fees, which is equivalent to two filing
fees, is unwarranted. Another comment suggested that if the proposed
$730.00 fee is adopted, the examiner should be instructed to treat the
after-final amendment as any other initial filing, i.e., a new
application, not as an amendment submitted after a non-final office
action.
Response: Under existing PTO practice, it would not be proper to
make final a first Office action in a continuing or substitute
application where the continuing or substitute application contains
material which was presented in the earlier application after final
rejection or closing of prosecution but was denied entry because (1)
new issues were raised that required further consideration and/or
search, or (2) the issue of new matter was raised. The identical
procedure will apply to examination of a submission consideration as a
result of the procedure under Sec. 1.129(a). Thus, under Sec. 1.129(a),
if the first submission after final rejection was initially denied
entry in the application because (1) new issues were raised that
required further consideration and/or search, or (2) the issue of new
matter was raised, then the next action in the application will not be
made final. Likewise, if the second submission after final rejection
was initially denied entry in the application because (1) new issues
were raised that required further consideration and/or search, or (2)
the issue of new matter was raised, then the next action in the
application will not be made final. Thus, the fee required by
Sec. 1.129(a) has been set at the amount required for filing an
application because the procedure provided by the rule is equivalent to
the filing of two applications. No new matter can be entered by payment
of the fee set forth in Sec. 1.17(r).
82. Comment: Several comments suggested that the fees required for
filing a provisional application and those fees required by
Secs. 1.129(a) and (b) for the transitional procedures should not be
greater than the average cost of processing such matters by the PTO.
Two comments stated that the fee required by Sec. 1.129(a) is excessive
relative to PTO costs.
Response: The fee required for filing a provisional application is
set by Public Law 103-465 and the PTO has no discretion with respect to
the amount of that particular fee. As to the fee required by
Sec. 1.129(a), the procedures relating to the first submission provided
by Sec. 1.129(a) is equivalent to the filing of a file wrapper
continuation application under Sec. 1.62, and therefore, the fee
required with the first submission is appropriately set at the same
amount as a filing fee, which is $730.00. The $730.00 fee is subject to
a 50% reduction for small entities. The second submission is equivalent
to the filing of [[Page 20214]] a second file wrapper continuation
application and the fee for the second submission is appropriately set
at the same amount as a filing fee. As to the fee required by
Sec. 1.129(b), the procedures set forth in Sec. 1.129(b) permit
applicants to retain multiple inventions in a single application rather
than having to file multiple divisional applications. The fee for each
independent and distinct invention in excess of one is appropriately
set at the same amount as the filing fee for a divisional application,
which is $730.00. The $730.00 fee is subject to a 50% reduction for
small entities.
83. Comment: One comment suggested that the time period for the
payment of the $730.00 fee for the transitional after-final practice by
extended if applicant files a petition seeking reversal of the
examiner's refusal to enter the amendment after final without fee,
until one month after an unfavorable decision on the petition.
Response: If an earlier filed petition seeking reversal of the
examiner's refusal to enter the amendment after final is granted by the
Director finding that the final rejection was premature, but the
petition had not been decided by the time the Sec. 1.129(a) fee was
due, applicant must submit the Sec. 1.129(a) fee so as to toll the time
period for response to the final rejection. Otherwise, the application
would be abandoned. Upon granting of such a petition by the Director,
the Sec. 1.129(a) fee paid will be refundable to applicant on request.
Applications that fall under Sec. 1.129(a) are under final rejection
and there is a time period running against the applicant. Applicant
must toll that time period by paying the transitional after-final fee
set forth in Sec. 1.129(a) and any necessary extension of time fees and
Notice of Appeal fee. Section 1.129(a) is being amended to indicate
that the submission and the fee set forth in Sec. 1.17(r) may be
submitted before the filing of the Appeal Brief and prior to
abandonment of the application.
84. Comment: One comment suggested that if it is decided that the
transitional after-final practice is made permanent, the PTO should
seek legislative authorization to provide reduced fees for small
entities.
Response: If it is decided that the transitional after-final
practice be made permanent, the PTO will propose legislation to
accomplish this change.
85. Comment: Several comments suggested that Secs. 1.129 (a) and
(b) should apply to all applications regardless of whether they were
filed before or after June 8, 1995.
Several comments suggested that the practices set forth in
Secs. 1.129 (a) and (b) should be made permanent.
Several comments suggested that an applicant should be permitted to
have a submission entered and considered after any final rejection upon
payment of a fee as set forth in Sec. 1.17(r), not just the first and
second final rejections.
Response: The suggestions have not been adopted at this time.
However, the PTO is undertaking a project to reengineer the entire
patent process. These suggestions will be taken under advisement in
that project.
86. Comment: One comment suggested that the PTO make an effort to
treat applications in which a submission under Sec. 1.129(a) has been
filed on an expedited basis.
Response: Once the submission is filed and the fee set forth in
Sec. 1.17(r) is paid the finality of the last PTO action is withdrawn.
The filing of the submission and the fee under Sec. 1.129(a) is
equivalent to the filing of a continuing application and will be
treated in the same fashion and under the same turnaround time frame as
a continuing application.
87. Comment: One comment suggested that PTO practice be changed so
that a first Office action in a continuing application cannot be made
final.
One comment suggested that PTO practice regarding second action
final be relaxed.
Response: The suggestions have not been adopted at this time.
However, the PTO is undertaking a project to reengineer the entire
patent process. These suggestions will be taken under advisement in
that project.
88. Comment: One comment stated that in proposed Sec. 1.129, there
is no express provision for the finality of the previous rejection to
be withdrawn if applicant complies with the proposed rule. It is
suggested that the proposed rule state that the finality of the
previous action would be withdrawn if applicant complied with the rule
when making a first or second submission after a final action.
Response: The suggestion has been adopted.
89. Comment: One comment requested that the PTO clarify whether
Sec. 1.129(a) required the first final rejection to be specifically
withdrawn and a different final (i.e., one containing a new ground of
rejection) rejection made before applicant is entitled to make a second
submission.
Response: The final rule provides that the finality of the previous
final office action is automatically withdrawn upon the timely filing
of the first Sec. 1.129(a) submission and the fee set forth in
Sec. 1.17(r). If the first PTO action following the payment of the
Sec. 1.17(r) fee is a non-final office action, a further response from
applicant will be entered and considered as a matter of right without
payment of the fee set forth in Sec. 1.17(r). If the next office action
or any subsequent action is made final, the finality of that office
action will be automatically withdrawn upon the timely filing of a
second Sec. 1.129(a) submission and the fee set forth in Sec. 1.17(r).
90. Comment: One comment suggested that the PTO not permit the
first PTO action following the payment of the Sec. 1.17(r) fee to be
made final under any circumstances.
Response: The suggestion has not been adopted. The first PTO action
following the payment of the Sec. 1.17(r) fee may be made final under
the same conditions that a first office action may be made final in a
continuing application (see section 706.07(b) of the MPEP). However, it
would not be proper to make final a first Office action in a continuing
or substitute application where the continuing or substitute
application contains material which was presented in the earlier
application after final rejection or closing of prosecution but was
denied entry because (1) new issues were raised that required further
consideration and/or search, or (2) the issue of new matter was raised.
The procedure set forth in section 706.07(b) of the MPEP will apply to
examination of a submission considered as a result of the procedure
under Sec. 1.129(a).
91. Comment: Several comments suggested that the filing of the
first submission under Sec. 1.129(a) within the statutory period for
response set in final rejection should toll the running of the six-
month statutory period.
Response: The filing of a submission, e.g., an information
disclosure statement or an amendment, after a final rejection without
payment of the fee set forth in Sec. 1.17(r) will not toll the period
for response set in the final rejection. However, Sec. 1.129(a) is
being amended to provide in the rule that the finality of the previous
Office action is automatically withdrawn upon the filing of the
submission and the payment of the fee set forth in Sec. 1.17(r). Thus,
the filing of a submission and the payment of the fee set forth in
Sec. 1.17(r) and any extension of time fees and Notice of Appeal fee,
if they are necessary to avoid abandonment of the application, will
automatically toll the period for response set in the final rejection.
It must be kept in mind that the provisions of Sec. 1.129 apply only to
an application, other than for reissue or [[Page 20215]] a design
patent, that has been pending for at least two years as of June 8,
1995, taking into account any reference made in such application to any
earlier filed application under 35 U.S.C. 120, 121 and 365(c).
92. Comment: One comment asked (1) whether it would be necessary to
file a Notice of Appeal and appeal fee with or after the first
submission and fee if the examiner acts on the first submission and
before the end of the six months from the date of the final rejection
issues (a) a notice of allowance, (b) a non-final action, or (c) a
second final rejection; (2) would the Notice of Appeal and fee be due
only at the end of the six months from the date of the final rejection
regardless of whether the examiner has acted on the submission by then;
and (3) if the Notice of Appeal and fee have once been paid following a
first final rejection, would a second notice and fee need to be paid if
a second final rejection were issued and applicant desired to file a
second submission under Sec. 1.129(a).
Another comment suggested that the appeal fee set forth in
Sec. 1.17(e) should not be required where the Notice of Appeal is filed
with a Sec. 1.129(a) submission and the fee set forth in Sec. 1.17(r).
Response: As to questions (1) and (2) and the second comment, if
the first submission and the proper fee set forth in Sec. 1.17(r) are
timely filed in response to the final rejection, the finality of the
previous rejection will be automatically withdrawn and applicant need
not file the Notice of Appeal or the appeal fee. For example, if the
first submission and the proper fee set forth in Sec. 1.17(r) were
filed on the last day of the six-month period for response to the final
rejection, applicant must also file a petition for three months
extension of time with the appropriate fee in order to avoid
abandonment of the application. In such case, applicant need not file
the Notice of Appeal or the appeal fee if the proper fee set forth in
Sec. 1.17(r) was timely paid. However, under the same fact situation,
if applicant failed to submit the proper fee set forth in Sec. 1.17(r),
the finality of the previous rejection would not be withdrawn and the
time period for response would still be running against applicant. In
such case, a Notice of Appeal and appeal fee must also accompany the
papers filed at the six-month period in order to avoid abandonment of
the application. The proper fee set forth in Sec. 1.17(r) must be filed
prior to the filing of the Appeal Brief and prior to the abandonment of
the application.
As to question (3), if the Notice of Appeal and fee have once been
paid following a first final rejection and applicant timely files a
first submission and the proper fee set forth in Sec. 1.17(r), the
finality of the previous final rejection will be withdrawn and the
appeal fee paid could be applied against any subsequent appeal. If the
examiner issues a non-final rejection in response to applicant's first
submission, a further response from applicant will be entered and
considered as a matter of right. If any subsequent Office action is
made final, applicant may file a second submission along with the
proper fee pursuant to Sec. 1.129(a). If the second submission and the
proper fee set forth in Sec. 1.17(r) are timely filed in response to
the subsequent final rejection, the finality of the previous final
rejection will be withdrawn. Any submission filed after a final
rejection made in the application subsequent to the fee under
Sec. 1.129(a) having been paid twice will be treated as set forth in
Sec. 1.116. Applicant may, upon payment of the appeal fee, appeal a
final rejection within the time allowed for response pursuant to
Sec. 1.191.
93. Comment: One comment questioned whether the ``first
submission'' under Sec. 1.129(a) has to be the first response filed
after a final rejection or could it include subsequent responses to the
same final rejection.
Response: The ``first submission'' under Sec. 1.129(a) would
include all responses filed prior to and with the payment of the fee
required by Sec. 1.129(a) provided the submission and fee are filed
prior to the filing of the Appeal Brief and prior to abandonment of the
application.
94. Comment: One comment suggested that Sec. 1.129(a) be changed to
permit the procedure to be available up until the filing of an Appeal
Brief since it is not uncommon to file an amendment after a Notice of
Appeal is filed but before the filing of an Appeal Brief.
Response: The suggestion has been adopted. Section 1.129(a) is
being amended to indicate that the submission and the fee set forth in
Sec. 1.17(r) must be submitted before the filing of the Appeal Brief
and prior to abandonment of the application.
95. Comment: One comment suggested that the transitional after-
final practice be available at any time after final, including after
the resolution of an appeal unfavorable to applicant in whole or in
part.
Response: The suggestion has not been adopted. Section 1.129(a) is
being amended to indicate that the submission and the fee set forth in
Sec. 1.17(r) must be submitted before the filing of the Appeal Brief
and prior to abandonment of the application. The suggestion to extend
the period to after the resolution of an appeal unfavorable to
applicant in whole or in part has not been adopted because the
suggestion would further unduly extend prosecution of the application.
96. Comment: One comment stated that if an examiner must withdraw
the finality of the rejection as a result of the transitional
provision, the examiner should be credited with two counts in order to
be compensated for the additional work.
Response: The examiner credit system is not part of this rulemaking
package. However, as part of the Public Law 103-465 implementation
plan, some accommodation will be made for the extra work performed.
97. Comment: One comment stated that regarding the transitional
after-final practice, the fee should not be required if the only reason
is to have the PTO consider recently obtained art.
Response: Under current practice, if applicant submits prior art
after final rejection but before the payment of issue fee, the art will
be considered if applicant makes the required certification and submits
a petition with the required petition fee of $130.00 (see section 609
of the MPEP). If applicant can make the certification, applicant would
not have to rely on the transitional after-final procedure to have the
prior art considered. In the event that applicant cannot make the
certification, then the procedure under Sec. 1.129(a) is available if
applicant wishes the PTO to consider the prior art without refiling the
application.
98. Comment: One comment suggested that the PTO modify existing
restriction practice to make it more difficult for examiners to require
restriction, for example, by requiring every restriction requirement to
show two-way distinctness and separate status in the art established by
means other than reference to the PTO's classification system.
Response: The suggestion has not been adopted. However, the PTO is
undertaking a project to reengineer the entire patent process. This
suggestion will be taken under advisement in that project.
99. Comment: One comment suggested that the pendency periods
required by Secs. 1.129(a) and (b) should be 18 months rather than 2-
year and 3-year, respectively.
Response: The pendency periods set forth in the rule which
establish eligibility for the transitional procedures are set forth in
Public Law 103-465.
100. Comment: One comment suggested that Sec. 1.129(a) be amended
to [[Page 20216]] permit prosecution to be reopened after a Notice of
Allowance or final rejection upon the filing of a form requesting that
prosecution be reopened and payment of the necessary fee.
Response: The procedures set forth in Sec. 1.129(a) are not
applicable to amendments filed after a Notice of Allowance. Amendments
filed after the mailing of a Notice of Allowance are governed by
Sec. 1.312. The procedures set forth in Sec. 1.129(a) are applicable to
amendments filed after a final rejection. If applicant submits an
amendment after final and the examiner notifies the applicant in
writing that the amendment is not entered, Sec. 1.129(a) permits
applicant to submit a letter prior to abandonment of the application
and prior to the filing of the Appeal Brief, requesting entry of the
prior filed amendment along with the payment of the appropriate fee set
forth in Sec. 1.17(r). The letter requesting entry of the prior filed
amendment would be equivalent to ``a form'' as suggested in the
comment.
101. Comment: One comment suggested that the PTO liberalize its
current practice under Sec. 1.116 to make it easier for amendments or
evidence to be entered and considered after a final rejection.
Response: The suggestion has not been adopted since no change was
proposed to Sec. 1.116 in the Notice of Proposed Rulemaking. However,
the suggestion will be taken under advisement as part of a
comprehensive effort being conducted by the PTO to reengineer the
entire patent process. It should be noted that any change to liberalize
the current practice under Sec. 1.116 would necessitate increasing
fees.
102. Comment: Several comments suggested that the transitional
restriction provision be modified to state that no restriction
requirement shall be made or maintained in any application pending for
three years on the effective date of the legislation. The comment
stated that if restriction requirements made prior to April 8, 1995,
are permitted to be maintained then applicants will be forced to file
divisional applications resulting in the automatic loss of term after
June 8, 1995. A heavy penalty will be placed on the chemical,
pharmaceutical and biotechnology industries, who have less than 4
months to search through the ancestors of all pending applications and
to identify all restriction requirements and to file divisional
applications before June 8, 1995. The comment further suggested that
the current restriction practice be changed in view of the
implementation of the 20-year term.
Response: The suggestion has not been adopted. The two-month date
set forth in Sec. 1.129(b)(1)(i) is from the Statement of
Administrative Action, which is part of Public Law 103-465. Under
section 102 of Public Law 103-465, ``the statement of administrative
action approved by the Congress shall be regarded as an authoritative
expression by the United States concerning the interpretation and
application of the Uruguay Round Agreements and this Act in any
judicial proceeding in which a question arises concerning such
interpretation or application.'' The Commissioner does not have any
authority to establish rules which are inconsistent with the Act. It is
noted that in cases where a restriction requirement was made prior to
April 8, 1995, applicant will have sufficient time to file divisional
applications prior to June 8, 1995, so as to retain the benefit of the
17-year patent term for those divisional applications.
The PTO is currently reviewing the restriction practice in view of
the implementation of the 20-year patent term. It is noted that a
change in restriction practice without changes to other fees would have
a negative impact on funding needed to operate the PTO.
103. Comment: Several comments suggested that proposed exceptions
(1) and (2) in Sec. 1.129(b) ignore the mandatory language of section
532(2)(B) of Public Law 103-465 and should be deleted.
Response: The suggestion has not been adopted. The exceptions
referred to are contained in the Statement of Administrative Action,
which is part of Public Law 103-465. Under section 102 of Public Law
103-465, ``the statement of administrative action approved by the
Congress shall be regarded as an authoritative expression by the United
States concerning the interpretation and application of the Uruguay
Round Agreements and this Act in any judicial proceeding in which a
question arises concerning such interpretation or application.''
104. Comment: One comment asked whether ``restriction'' under
Sec. 1.129(b) apply to election of species under Sec. 1.146.
Response: ``Restriction'' under Sec. 1.129(b) applies to both
requirements under Sec. 1.142 and elections under Sec. 1.146.
105. Comment: Several comments requested that clarification be made
as to what constitutes ``actions by the applicant'' in Sec. 1.129(b)(1)
and specifically, whether a request for extension of time under
Sec. 1.136(a) constitutes such ``actions'' by the applicant.
Response: Examples of what constitute ``actions by the applicant''
in Sec. 1.129(b)(1) are: (1) applicant abandons the application and
continues to refile the application such that no Office action can be
issued in the application, and (2) applicant requests suspension of
prosecution under Sec. 1.103(a) such that no Office action can be
issued in the application. Extension of time under Sec. 1.136(a) would
not constitute such ``actions by the applicant'' under
Sec. 1.129(b)(1).
106. Comment: One comment suggested that the one-month period set
forth in Sec. 1.129(b) is insufficient to give an applicant time to
file a petition under Sec. 1.144 from a restriction requirement.
Several comments suggested that Sec. 1.129(b) be amended to permit
applicant to challenge the restriction requirement by way of a petition
before being required to pay the fees set forth in Sec. 1.17(s).
Response: Section 1.129(b)(2) is being amended in the final rule
package to indicate that applicant will be given ``a time period'' to
(1) make an election, if no election has been previously made, and pay
the fee set forth in Sec. 1.17(s), (2) confirm an earlier election and
pay the fee set forth in Sec. 1.17(s), or (3) file a petition under
Sec. 1.129(b)(2) traversing the restriction requirement. If applicant
chooses not to pay the fee set forth in Sec. 1.17(s), applicant may
file a petition under Sec. 1.129(b)(2) requesting immediate review by
the Group Director of the restriction requirement. No petition fee is
required. A petition under Sec. 1.129(b)(2) rather than under
Sec. 1.144 would be more appropriate under the circumstances since a
petition under Sec. 1.144 requires the examiner to make the restriction
final before the petition can be considered.
107. Comment: One comment suggested that if applicant elects not to
pay the fee set forth in Sec. 1.17(s), applicant should be allowed to
elect the invention to be examined.
Response: The suggestion has been adopted. Section 1.129(b) is
being amended to indicate that if applicant chooses not to pay the fees
for the additional inventions, applicant must elect the invention to be
examined and the claims directed to the non-elected inventions for
which no fee has been paid will be withdrawn from consideration.
108. Comment: One comment suggested that the PTO amend the rules to
permit all, or at least several, inventions to be examined in a single
application upon payment of an appropriate fee.
Response: The suggestion has not been adopted at this time.
However, the [[Page 20217]] PTO is currently undertaking a project to
reengineer the entire patent process. The suggestion will be taken in
advisement in this project.
109. Comment: One comment suggested that PTO follow the wording of
35 U.S.C. 121 and only require restriction where an application claims
two or more independent and distinct inventions rather than two or more
independent or distinct inventions.
Response: In making restriction requirements, the PTO has always
followed the wording of 35 U.S.C. 121 to require restriction if two or
more independent and distinct inventions are claimed in an application
rather than independent or distinct as suggested by the comment. The
term ``independent'' includes species and related inventions such as
combination/subcombination and process and product. Restriction is
proper if these independent inventions are patentably distinct (see
section 802.01 of the MPEP).
110. Comment: One comment suggested that the standard for
determining whether an application contains independent and distinct
inventions should only be the ``unity of invention'' standard used for
PCT applications.
Response: The suggestion has not been adopted. The current
restriction practice for 35 U.S.C. 111(a) applications is governed by
35 U.S.C. 121 and Secs. 1.141, 1.142 and 1.146. The PCT ``unity of
invention'' standard only applies to PCT applications and applications
filed under 35 U.S.C. 371. The PTO is currently reviewing the
restriction practice in view of the implementation of the 20-year
patent term. It is noted that a change in restriction practice without
changes to other fees would have a negative impact on funding needed to
operate the PTO.
111. Comment: One comment suggested that the PTO apply the PCT
unity of invention standard as interpreted by the EPO and that
Sec. 1.475(b) be amended to permit a broad range of claims in a single
application.
Response: The PTO is currently undertaking a project to reengineer
the entire patent process. The suggestion will be taken under
advisement in this project.
112. Comment: One comment suggested that the PTO examiner should
not be permitted to issue a restriction requirement or an election of
species requirement if the ISA and the IPEA have found that an
application complies with the unity of invention requirement.
Another comment suggested that the PTO consider allowing applicants
to retain all claims in a single application when the claims are
related, e.g., method and apparatus claims.
Another comment suggested that all species be searched before the
first Office action regardless of whether one species is found to be
unpatentable.
Another comment suggested that election of species requirements be
prohibited.
Response: The suggestions have not been adopted. These issues were
not addressed in the Notice of Proposed Rulemaking. However, the PTO is
currently undertaking a project to reeingineer the entire patent
process. The suggestions will be taken under advisement in that
project.
113. Comment: One comment suggested that decisions on whether to
issue a restriction requirement be made within two-three months of the
application filing date, and, if the requirement is traversed, the
examiner should determine within four-five months of the filing date
whether to maintain the requirement. Decisions on petitions to withdraw
a restriction requirement should be decided within one month.
Response: The suggestion has not been adopted. Current practice
dictates that restriction requirements be made at the earliest
appropriate time in the pendency of a given application, e.g., in the
first Office action. It would be difficult to issue a restriction
requirement within two-three months of the application filing date as
suggested since a large number of applications are filed with missing
parts and applicants are given a time period to submit the missing
parts. Furthermore, applications must be processed by the Application
Branch and must be screened by Licensing and Review for national
security. Petitions to withdraw a restriction requirement should be
acted on by the Group Director expeditiously.
114. Comment: One comment argued that the phrases, ``so as to be
pending for a period of no longer than 12 months'' and ``under no
circumstances will the provisional application be pending after 12
months'', in Sec. 1.139 were repetitious and suggested that one or both
of the phrases be deleted.
Response: The suggestion has not been adopted. The statements are
included for emphasis.
115. Comment: One comment suggested that Sec. 1.139 clearly state
that if the revival petition is filed later than 12 months after filing
of the provisional application, then the revival is for the sole
purpose of providing copendency for a 35 U.S.C. 111(a) application
filed during that 12-month period.
Response: The suggestion has not been adopted. The proposed
language is not necessary.
116. Comment: One comment stated that 35 U.S.C. 154(b) as contained
in Public Law 103-465 does not give the Commissioner any authority to
decide the period of extension. Therefore, proposed Sec. 1.701 is
without statutory basis.
Response: 35 U.S.C. 6(a) gives the Commissioner authority to
establish regulations not inconsistent with law. Section 1.701 is
consistent with 35 U.S.C. 154(b) and furthermore, the Commissioner has
the authority under 35 U.S.C. 154(b)(3)(C) to establish regulations to
address the standards for determining due diligence.
117. Comment: One comment questioned whether patent term extension
under 35 U.S.C. 154(b) is available for patents issuing: (1) Before
June 8, 1995, with a 17-year patent term or a 17/20 year patent term;
(2) on or after June 8, 1995, on applications filed before June 8,
1995, with a 17-year patent term or a 17/20 year patent term.
Response: None of the patents set forth in the examples are
eligible for patent term extension. Under the terms of the statute,
patent term extension is only available for patents issued on
applications filed on or after June 8, 1995.
118. Comment: Several comments questioned whether a patent issued
on a continuing application is entitled to a patent term extension
under 35 U.S.C. 154(b) due to interference, secrecy order, or appellate
review delays occurring in the examination of the parent application.
Response: If the delay in the parent application contributed to a
delay in the issuance of a patent in the continuing application, the
patent granted on the continuing application may be eligible for an
extension under 35 U.S.C. 154(b).
119. Comment: One comment suggested that the patent term be
extended for a period of time equal to the time necessary to revive an
application improperly abandoned due to PTO error. Another comment
suggested that patent time extension be available for other PTO delays.
Response: The suggestions have not been adopted. Section 154(b) of
title 35, United States Code, only permits patent term extension for
delays due to interferences, secrecy orders, and/or successful appeals.
120. Comment: One comment suggested that the period of an extension
granted under Sec. 1.701 be printed on the face of the patent.
Response: The PTO will publish on the face of the patent any patent
term [[Page 20218]] extension that is granted pursuant to Sec. 1.701.
121. Comment: One comment suggested that the word ``interference''
be inserted before the word ``proceedings'' in Sec. 1.701(a)(1).
Response: The suggestion has been adopted.
122. Comment: One comment stated that the last sentence of
Sec. 1.701(b) is confusing because it suggests that patent term
extension will be available in cases of terminal disclaimer and that
the extension begins on the terminal disclaimer date rather than the
original expiration date. This statement is contrary to 35 U.S.C.
154(b)(2) which does not permit any patent term extension for appellate
delay if the patent is subject to a terminal disclaimer.
Response: In order to reduce confusion, the last sentence of
Sec. 1.701(b) is being amended to state that the extension will run
from the expiration date of the patent. The reference to ``terminal
disclaimer'' is being deleted.
123. Comment: Two comments stated that if an application involved
in an interference proceeding contains uninvolved claims, those
uninvolved claims should not be entitled to extension of patent term
under proposed Sec. 1.701 because applicant could cancel those
uninvolved claims from the application and refile those claims in a
continuation application. It is suggested that if an applicant leaves
conclusively uninvolved claims (where no Sec. 1.633(c)(4) motion is
filed) in the application in interference, applicant does not get the
benefit of the extension for any claim.
Response: The suggestion has not been adopted. The statute, 35
U.S.C. 154(b), grants patent term extension to a patent if the issuance
of the patent was delayed due to interference proceeding under 35
U.S.C. 135(a). The statute does not exclude applications containing
uninvolved claims. The Commissioner does not have the authority to
establish regulations which are inconsistent with the law. Therefore,
an application involved in an interference which contains uninvolved
claims will be entitled to patent term extension if the issuance of the
patent was delayed due to interference proceeding under 35 U.S.C.
135(a).
124. Comment: One comment asked whether applicant is entitled to
patent term extension regardless of whether an interference involving
applicant's application is ultimately declared.
One comment asked if the PTO ends the suspension without declaring
an interference, and continued prosecution results in filing of a
continuation or divisional application, are such subsequent cases
entitled to the extension.
Response: An application will not be suspended unless it is decided
that an interference can be declared involving that application. If
prosecution of applicant's application is suspended due to an
interference not involving applicant's application and an interference
involving applicant's application is later declared, applicant will be
entitled to patent term extension under Sec. 1.701(c)(1)(ii) for the
suspension period and under Sec. 1.701(c)(1)(ii) for the interference
period. However, if prosecution of applicant's application is suspended
due to an interference not involving applicant's application and if the
PTO ends the suspension of the application without declaring an
interference involving applicant's application, that application will
be entitled to patent term extension under Sec. 1.701(c)(1)(ii). If
prosecution results in filing of a continuing application and if the
delay in the parent application contributed to a delay in the issuance
of a patent on the continuing application, the patent granted on the
continuing application may be eligible for an extension under 35 U.S.C.
154(b).
125. Comment: One comment stated that delays in the issuance of a
patent can exceed the five-year limit provided for in proposed
Sec. 1.701(b). Where the delay was not the fault of the applicant, why
should there be this maximum?
Another comment stated that in a biotechnology application, if
suspension of the application results in a declared interference, the
period of delay calculated under Sec. 1.701(c)(1)(i) will likely
consume most of the five-year maximum extension. This renders the value
of any time period measured under Sec. 1.701(c)(1)(ii) negligible, thus
diminishing the rights of applicant due to the unregulated suspension
powers of the PTO.
Response: The five-year limit for patent term extension set forth
in Sec. 1.701(b) is required by statute, 35 U.S.C. 154(b).
126. Comment: One comment suggested that Sec. 1.701(c)(1)(i) be
amended to state that an application added after an interference is
declared is entitled to an extension measured only from the date of
redeclaration.
Response: The suggestion has not been adopted. The language in
Sec. 1.701(c)(1)(i) is clear that for an application that is added to
an interference, that application is entitled to an extension measured
from the date of redeclaration of the interference.
127. Comment: One comment stated that Sec. 1.701(c)(1)(ii) does not
address the case where a suspended application is added to the
interference without the suspension being lifted.
Response: Section 1.701(c)(1)(ii) is being amended to reference the
endpoint for the suspension period to the date of termination of the
suspension. Where prosecution of an application is suspended due to
interference proceedings not involving the application, the suspension
is made pursuant to Sec. 1.103(b). When that application is added to an
interference, the suspension pursuant to Sec. 1.103(b) will be
automatically lifted. The application is entitled to patent term
extension for the period of suspension pursuant to Sec. 1.701(c)(1)(ii)
and for the period of interference pursuant to Sec. 1.701(c)(1)(i).
Under Sec. 1.701(c)(1)(ii), the period of suspension begins on the date
the application is suspended and ends on the date the suspension under
Sec. 1.103(b) is terminated, which in this case would be the same date
as the date of redeclaration of the interference.
128. Comment: One comment suggested that the phrase ``, if any,''
in Sec. 1.701(c)(1)(i) and (ii) is unnecessary.
Response: The suggestion has not been adopted. However,
Sec. 1.701(c)(1)(i) is being amended for clarity by deleting the phrase
``if any'' after the first occurrence of ``interference'' and by
inserting the same phrase after the phrase ``the number of days.''
129. Comment: Several comments suggested that the phrase ``was
declared or redeclared'' in Sec. 1.701(c)(1)(i) be changed to--was
first declared--.
Response: The suggestion has not been adopted. The language of the
rule reads ``with respect to each interference 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.* * *'' An interference may be declared as A vs. B
and later redeclared as A vs. B vs. C. Under the rule, the period of
extension would be counted, with respect to applications A and B, from
the date the interference was declared to involve the applications A
and B. With respect to application C, the period of extension would be
counted from the date the interference was redeclared to involve the
application C. No ambiguity is seen in the language as originally
proposed.
130. Comment: One comment suggested that the use of the phrase
``appellate review'' in reference to an action under 35 U.S.C. 145 or
146 is incorrect, since an action under 35 U.S.C. 145 or 146 is not
considered as an ``appellate review'' and suggests that
Sec. 1.701(a)(3) be amended so that the [[Page 20219]] introductory
phrase reads ``Appellate review by the Board of Patent Appeals and
Interferences or review by a Federal court under 35 U.S.C. 141 or 145,*
* *.''
Response: The suggestion has not been adopted. The use of the
phrase ``appellate review'' in reference to an action under 35 U.S.C.
145 or 146 is technically incorrect. However, Public Law 103-465
provides for extension of patent term for ``delay due to appellate
review by the Board of Patent Appeals and Interferences or by a Federal
court''. The introductory phrase referred to in the comment uses the
exact language found in the statute.
131. Comment: One comment suggested that Sec. 1.701(a) be amended
to specify whether extensions for appellate delays are available for
reissue applications.
Response: The suggestion has not been adopted. Under 35 U.S.C. 251,
the term of a reissue patent is ``for the unexpired part of the term of
the original patent.'' Therefore, patent term extension for appellate
delays is not available for reissue applications.
132. Comment: One comment suggested that Sec. 1.701(d) be deleted.
Response: The suggestion has not been adopted. Section 1.701(d)
sets forth the language found in the statute, 35 U.S.C. 154(b)(3) and
further provides a standard for determining due diligence.
133. Comment: Several comments suggested that the lack of due
diligence set forth in Sec. 1.701(d)(2) be limited to the acts which
occurred during the appellate period (after the filing of a Notice of
Appeal) and not during prosecution.
Response: The suggestion has been adopted. Section 1.701(d) is
being amended accordingly.
134. Comment: One comment suggested that the rules be made clear
that a suspension under Sec. 1.103 does not constitute a lack of due
diligence under Sec. 1.701(d)(2).
Response: The suggestion has not been adopted. A request for
suspension pursuant to Sec. 1.103(a) during the appellate review period
will be considered to be prima facie evidence of lack of due diligence.
135. Comment: Several comments stated that the rules permit
extensions of time and the filing of informal applications. These acts
should not constitute lack of due diligence since the proposed rule
defined 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. One
comment suggested that the Office adopt a gross negligence standard.
Response: The examples of acts that may constitute lack of due
diligence set forth in the Notice of Proposed Rulemaking (extensions of
time, filing of nonresponsive submissions, and filing of informal
applications) are being withdrawn. The suggestion regarding the
adoptions of a gross negligence standard has not been adopted. As set
forth in Sec. 1.701(d)(2), the standard for determining due diligence
is whether applicant exhibited that degree of timeliness as may
reasonably be expected from, and which is ordinarily exercised by, a
person during the appellate review period.
136. Comment: One comment stated that the PTO list in the rule all
circumstances in which an applicant will be considered not to have
acted with due diligence.
Another comment suggested that objective criteria for ``diligence''
be set forth in Sec. 1.701(d)(2).
Response: The suggestion has not been adopted. Whether an action by
the applicant constitutes lack of due diligence will be determined by
the facts and circumstances of each case. Since lack of due diligence
is determined on a case-by-case basis, it would not be possible to list
all circumstances in the rule. Examples of acts which will constitute
prima facie evidence of lack of due diligence are: (1) abandonment of
the application during appellate review; and (2) suspension of action
under Sec. 1.103(a) during appellate review.
137. Comment: One comment suggested that guidance be provided in
the comments to the Notice of Final Rules identifying in what
circumstances is a patent issued ``pursuant to an appellate decision
reversing an adverse determination of patentability.''
Several comments questioned whether the reversal of all rejections
on one of several appealed claims would entitle applicant to an
extension under Sec. 1.701(a)(3). Two comments suggested that the rule
be redrafted to allow appropriate extension of term where the Board or
a court reverses at least ``in part.''
Response: Extension of patent term under Sec. 1.701(a)(3) is
applicable if all the rejections of any one claim are ultimately
reversed. The rule is clear and no clarification is needed.
138. Comment: One comment stated that Sec. 1.701 does not address
the situation where applicant appeals with both allowed and rejected
claims. In such case, patent term extension should be available for any
claims that were allowed prior to appellate review, if the allowed
claims were in the same application, whether or not the decision of the
examiner on the rejected claims is ultimately reversed. Applicant
should not have to refile the allowed claims and rejected claims in
separate cases in order to take advantage of the patent term extension.
Response: If applicant chooses to keep the allowed claims with the
rejected claims in the application on appeal, patent term extension
pursuant to 35 U.S.C. 154(b)(2) is only available if a 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. If the
appellate review is not successful, applicant will not be entitled to
patent term extension.
139. Comment: One comment questioned whether the phrase ``if the
patent is not subject to a terminal disclaimer'' in Sec. 1.701(a)(3) is
intended to be limited to those applications in which a terminal
disclaimer has actually been filed or encompass those applications in
which a double patenting rejection has been made and a terminal
disclaimer suggested by an examiner.
Response: The calculation of any applicable extension under
Sec. 1.701 will be made prior to the mailing of the Notice of Allowance
and Issue Fee Due. At that time, any double patenting rejection would
have been resolved and a terminal disclaimer would have been filed if
one was required.
140. Comment: One comment stated that Sec. 1.701(d)(1) is
inconsistent with 35 U.S.C. 154(b)(2) and (b)(3), because the period of
extension for appellate review would be calculated under
Sec. 1.701(d)(1) by first subtracting the period of appellate review
occurring within three years of the filing date before the five-year
limit is imposed. It is suggested that Sec. 1.701 be modified to be
consistent with 35 U.S.C. 154(b)(2) which requires the five-year limit
to be imposed before the subtraction for appellate review occurring
within three years of the filing date.
Response: The suggestion has not been adopted. Section 1.701 is not
inconsistent with 35 U.S.C. 154(b)(2) and (b)(3). The period of
extension referred to in 35 U.S.C. 154(b)(2) is defined in 35 U.S.C.
154(b)(3). Therefore, one must determine the period of extension in 35
U.S.C. 154(b)(3)(A), then reduce that period by the time determined in
35 U.S.C. 154(b)(3)(B) and (b)(3)(C). Then, according to 35 U.S.C.
154(b)(2), the [[Page 20220]] resulting time period may not be more
than five years.
141. Comment: One comment suggested that the Commissioner identify
a senior person who is charged with approving all reductions in
extension of patent term rather than leaving the decision to the
examiner or the SPE.
One comment questioned who will make the calculation of the period
of patent term extension under Sec. 1.701 and whether that calculation
can be challenged and by whom.
Response: It is contemplated that the period of patent term
extension calculated and any reduction in the extension of patent term
will not be made by an examiner. It is noted that the period of patent
term extension will be identified in the Notice of Allowance and Issue
Fee Due and if applicant disagrees with the period, applicant may
request further review by way of a petition under Sec. 1.181. If an
error is noted after the patent issues, patentee or any third party may
seek correction of the period of patent term extension granted by
filing a request for a Certificate of Correction pursuant to
Sec. 1.322.
142. Comment: One comment questioned whether a challenge to the
period of patent term extension calculated by the PTO under Sec. 1.701
would be required to be made within a fixed period.
Response: No. However, the longer applicant delays filing a
petition under Sec. 1.181 challenging the period of extension
calculated by the PTO, the less likely any error will be corrected
before the patent is issued with the error printed on the patent. If
the patent issues with an incorrect period of extension, applicant
should file a request for a Certificate of Correction pursuant to
Sec. 1.322 instead of a petition under Sec. 1.181.
143. Comment: One comment suggested that Sec. 1.701(d)(2) be
amended to require PTO to notify applicant in writing of any intent to
reduce the term extension for lack of due diligence, stating the
specific basis, and provide applicant with a reasonable opportunity to
respond.
Response: The suggestion has not been adopted. The period of patent
term extension will be identified in the Notice of Allowance and Issue
Fee Due and if applicant disagrees with the period, applicant may
request further review by way of a petition under Sec. 1.181.
144. Comment: One comment suggested that a cover sheet for use in
recording assignments be included in the final rules package as an
addendum.
Response: The suggestion has not been adopted. A sample cover sheet
for use in recording assignments was published as Appendix B in the
Federal Register on July 6, 1992, at 57 FR 29634 and in the Official
Gazette on July 28, 1992, at 1140 Off. Gaz. Pat. Office 63 and may be
obtained from Assignment Branch.
Other Considerations
This final rule change is 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 final rule has been determined not to be 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 these final 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 final 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
approved under OMB control number 0651-0037. 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, D.C. 20231, and to the Office of
Information and Regulatory Affairs, Office of Management and Budget,
Washington, D.C. 20503 (ATTN: Paperwork Reduction Act Projects 0651-
0031, 0651-0032, and 0651-0037).
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
amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 6 unless otherwise noted.
2. Section 1.1 is 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 amended by revising paragraph (a) to read as
follows:
Sec. 1.9 Definitions.
(a)(1) A national application as used in this chapter means a U.S.
application for patent which was either filed in the Office under 35
U.S.C. 111, or which entered the national stage from an international
application after compliance with 35 U.S.C. 371.
(2) A provisional application as used in this chapter means a U.S.
national application for patent filed in the Office under 35 U.S.C.
111(b).
(3) A nonprovisional application as used in this chapter means a
U.S. national application for patent which was either filed in the
Office under 35 U.S.C. 111(a), or which entered the national stage from
an international [[Page 20221]] application after compliance with 35
U.S.C. 371.
* * * * *
4. Section 1.12 is 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), 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 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), 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 amended by revising paragraphs (a) through (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:
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
(1) 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 amended by revising paragraphs (h) and (i), 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 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. 1.84--for accepting color drawings or photographs
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 and 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) For filing a petition to the Commissioner under a section listed
below which refers to this paragraph
130.00
Sec. 1.12--for access to an assignment record
Sec. 1.14--for access to an application
Sec. 1.53--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
* * * * *
(q) For filing a petition to the Commissioner under a section listed
below which refers to this paragraph
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 [[Page 20222]] Sec. 1.53(b)(1) to a
provisional application
(r) For entry of a submission after final rejection under
Sec. 1.129(a):
By a small entity (Sec. 1.9(f))
365.00
By other than a small entity
730.00
(s) For each additional invention requested to be examined under
Sec. 1.129(b):
By a small entity (Sec. 1.9(f))
365.00
By other than a small entity
730.00
8. Section 1.21 is amended by revising paragraph (l) to read as
follows:
Sec. 1.21 Miscellaneous fees and charges.
* * * * *
(l) For processing and retaining any application abandoned pursuant to
Sec. 1.53(d)(1) unless the required basic filing fee has been paid
$130.00
* * * * *
9. Section 1.28 is 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 in each application or patent in which the
status is available and desired. Status as a small entity in one
application or patent does not affect any other application or patent,
including applications or patents which are directly or indirectly
dependent upon the application or patent in which the status has been
established. A nonprovisional application claiming benefit under 35
U.S.C. 119(e), 120, 121, or 365(c) of a prior application may rely on a
verified statement filed in the prior application if the nonprovisional
application includes a reference to the verified statement in the prior
application or includes a copy of the verified statement in the prior
application and 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 the 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.
* * * * *
10. Section 1.45 paragraph (c) is revised to read as follows:
Sec. 1.45 Joint inventors.
* * * * *
(c) If multiple inventors are named in a nonprovisional
application, each named inventor must have made a contribution,
individually or jointly, to the subject matter of at least one claim of
the application and the application will be considered to be a joint
application under 35 U.S.C. 116. If multiple inventors are named in a
provisional application, each named inventor must have made a
contribution, individually or jointly, to the subject matter disclosed
in the provisional application and the provisional application will be
considered to be a joint application under 35 U.S.C. 116.
11. Section 1.48 is revised to read as follows:
Sec. 1.48 Correction of inventorship.
(a) If the correct inventor or inventors are not named in a
nonprovisional 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 nonprovisional
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 a nonprovisional 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 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).
(e) If a person or persons were named as an inventor or inventors
in a provisional application through error without any deceptive
intention, an amendment may be filed in the provisional application
deleting the name or names of the person or persons who were
erroneously named. Such amendment must be accompanied by:
(1) A petition including a statement of facts verified by the
person or persons whose name or names are being deleted establishing
that the error occurred without deceptive intention;
(2) The fee set forth in Sec. 1.17(q); and
(3) The written consent of any assignee.
12. Section 1.51 is 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) A specification, including a claim or claims, see Secs. 1.71 to
1.77;
(ii) An oath or declaration, see Secs. 1.63 and 1.68;
(iii) Drawings, when necessary, see Secs. 1.81 to 1.85; and
[[Page 20223]]
(iv) 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 residence of each named inventor,
(D) The title of the invention,
(E) The name and registration number of the attorney or agent (if
applicable),
(F) The docket number used by the person filing the application to
identify the application (if applicable),
(G) The correspondence address, and
(H) The name of the U.S. Government agency and Government contract
number (if the invention was made by an agency of the U.S. Government
or under a contract with an agency of the U.S. Government);
(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 nonprovisional applications. See Secs. 1.97 and 1.98. No
information disclosure statement may be filed in a provisional
application.
* * * * *
13. Section 1.53 heading and paragraphs (a) through (e) are revised
to read as follows:
Sec. 1.53 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 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: a specification containing a description pursuant to Sec. 1.71
and at least one claim pursuant to Sec. 1.75; and any drawing required
by Sec. 1.81(a), are filed in the Patent and Trademark Office 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) is filed which sets forth the reasons the delay
in supplying the names should be excused. A continuation or divisional
application (filed under the conditions specified in 35 U.S.C. 120 or
121 and Sec. 1.78(a)) may be filed under this section, Sec. 1.60 or
Sec. 1.62. A continuation-in-part application may be filed under 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 the
abandonment of the Sec. 1.53(b)(1) application, the payment of the
issue fee, the expiration of 12 months after the filing date of the
Sec. 1.53(b)(1) application, or the filing of a request for a statutory
invention registration under Sec. 1.293. The grant of any such petition
will not entitle applicant to a refund of the fees which were properly
paid in the application filed under 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 Secs. 1.821 through 1.825 regarding application
disclosures containing nucleotide and/or amino acid sequences are not
mandatory for provisional applications.
(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 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 [[Page 20224]] 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 revised to read as follows:
Sec. 1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the
benefit of the filing date of one or more prior foreign applications
under the conditions specified in 35 U.S.C. 119(a)-(d) and 172. The
claim to priority need be in no special form and may be made by the
attorney or agent if the foreign application is referred to in the oath
or declaration as required by Sec. 1.63. The claim for priority and the
certified copy of the foreign application specified in 35 U.S.C. 119(b)
must be filed in the case of an interference (Sec. 1.630), when
necessary to overcome the date of a reference relied upon by the
examiner, when specifically required by the examiner, and in all other
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). 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 in a nonprovisional application may under certain
circumstances claim priority on the basis of one or more applications
for an inventor's certificate in a country granting both inventor's
certificates and patents. To claim the right of priority on the basis
of an application for an inventor's certificate in such a country under
35 U.S.C. 119(d), the applicant when submitting a claim for such right
as specified in paragraph (a) of this section, shall include an
affidavit or declaration. The affidavit or declaration must include a
specific statement that, upon an investigation, he or she is satisfied
that to the best of his or her knowledge, the applicant, when filing
the application for the inventor's certificate, had the option to file
an application for either a patent or an inventor's certificate as to
the subject matter of the identified claim or claims forming the basis
for the claim of priority.
15. Section 1.59 is 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, if the application was filed
under Sec. 1.53(b)(1), the processing and retention fee (Sec. 1.21(1))
has been paid. See Sec. 1.618 for return of unauthorized and improper
papers in interferences.
16. Section 1.60 is amended by revising the heading and paragraph
(b) to read as follows:
Sec. 1.60 Continuation or divisional application for invention
disclosed in a prior nonprovisional application.
* * * * *
(b) An applicant may omit signing of the oath or declaration in a
continuation or divisional application (filed under the conditions
specified in 35 U.S.C. 120 or 121 and Sec. 1.78(a)) if:
(1) The prior application was a nonprovisional application and a
complete application as set forth in Sec. 1.51(a)(1);
(2) Applicant indicates that the application is being filed
pursuant to this section and files a true copy of the prior complete
application as filed including the specification (with claims),
drawings, oath or declaration showing the signature or an indication it
was signed, and any amendments referred to in the oath or declaration
filed to complete the prior application;
(3) The inventors named in the continuation or divisional
application are the same or less than all the inventors named in the
prior application; and
(4) The application is filed before the patenting, or abandonment
of, or termination of proceedings on the prior application. The copy of
the prior application must be accompanied by a statement that the
application papers filed are a true copy of the prior complete
application. Such statement must be by the applicant or applicant's
attorney or agent and must be a verified statement if made by a person
not registered to practice before the Patent and Trademark Office. Only
amendments reducing the number of claims or adding a reference to the
prior application (Sec. 1.78(a)) will be entered before calculating the
filing fee and granting the filing date. If the continuation 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 or
divisional application. Except as provided in paragraph (d) of this
section, if a true copy of the prior application as filed is not filed
with the application or if the statement that the application papers
are a true copy is omitted, the application will not be given a filing
date earlier than the date upon which the copy and statement are
[[Page 20225]] filed, unless a petition with the fee set forth in
Sec. 1.17(i) is filed which satisfactorily explains the delay in filing
these items.
* * * * *
17. Section 1.62 is 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 nonprovisional application which is complete
as defined by Sec. 1.51(a)(1), 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,
or after payment of the issue fee if a petition under Sec. 1.313(b)(5)
is granted in the prior application. The filing 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
application number and the names of the inventors named in 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 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) is filed with
instructions to cancel the copy or specification.
* * * * *
18. Section 1.63 is 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)(1)(ii) as a
part of a nonprovisional 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 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 when a claim is presented for matter originally
shown or described but not substantially embraced in the statement of
invention or claims originally presented or when an oath or declaration
submitted in accordance with Sec. 1.53(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 a nonprovisional application after its filing date even
if a supplemental oath or declaration is filed. In proper cases, the
oath or declaration here required may be made on information and belief
by an applicant other than the inventor.
* * * * *
20. Section 1.78 is 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) A nonprovisional application may claim an invention
disclosed in one or more prior filed copending nonprovisional
applications or international applications designating the United
States of America. In order for a nonprovisional application to claim
the benefit of a prior filed copending nonprovisional application or
international application designating the United States of America,
each prior application must name as an inventor at least one inventor
named in the later filed nonprovisional application and disclose the
named inventor's invention claimed in at least one claim of the later
filed nonprovisional application in the manner provided by the first
paragraph of 35 U.S.C. 112. In addition, each prior application must
be:
(i) 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),
Sec. 1.60 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)(1) 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)(1).
(2) Any nonprovisional application claiming the benefit of one or
more prior filed copending nonprovisional applications or international
applications designating the United States of America must contain or
be amended to contain in the first sentence of the specification
following the title a reference to each such prior application,
identifying it by application number (consisting of the series code and
serial number) or international application number and international
filing date and indicating the relationship of the applications. Cross-
references to other related applications may be made when appropriate.
(See Sec. 1.14(b)).
(3) A nonprovisional application other than for a design patent may
claim an invention disclosed in one or more prior filed copending
provisional applications. Since a provisional application can be
pending for no more than twelve months, the last day of pendency may
occur on a Saturday, Sunday, or Federal holiday within the District of
Columbia which for copendency would require the nonprovisional
application to be filed prior to the Saturday, Sunday, or Federal
holiday. In order for a nonprovisional application to claim the benefit
of one or more prior filed copending provisional applications, each
prior provisional application must name as an inventor at least one
inventor named in the later filed nonprovisional application and
disclose the named inventor's invention claimed in at least one claim
of the later filed nonprovisional application in the manner provided by
the first paragraph of 35 U.S.C. 112. In addition, each prior
provisional application must be:
(i) Complete as set forth in Sec. 1.51(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 nonprovisional application claiming the benefit of one or
more prior filed copending provisional applications must contain or be
amended to contain in the first sentence of the specification following
the title a reference to each such prior provisional application,
identifying it as a provisional application, and including the
[[Page 20226]] provisional application number (consisting of series
code and serial number).
* * * * *
21. Section 1.83 is amended by revising paragraphs (a) and (c) to
read as follows:
Sec. 1.83 Content of drawing.
(a) The drawing in a nonprovisional application must show every
feature of the invention specified in the claims. However, conventional
features disclosed in the description and claims, where their detailed
illustration is not essential for a proper understanding of the
invention, should be illustrated in the drawing in the form of a
graphical drawing symbol or a labeled representation (e.g., a labeled
rectangular box).
* * * * *
(c) Where the drawings in a nonprovisional application do not
comply with the requirements of paragraphs (a) and (b) of this section,
the examiner shall require such additional illustration within a time
period of not less than two months from the date of the sending of a
notice thereof. Such corrections are subject to the requirements of
Sec. 1.81(d).
22. Section 1.97 is 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 a final action under
Sec. 1.113 or a notice of allowance under Sec. 1.311, whichever occurs
first, but before payment of the issue fee, provided the statement is
accompanied by:
(1) A certification as specified in paragraph (e) of this section;
(2) A petition requesting consideration of the information
disclosure statement; and
(3) The petition fee set forth in Sec. 1.17(i).
* * * * *
23. Section 1.101 is amended by revising paragraph (a) to read as
follows:
Sec. 1.101 Order of examination.
(a) Nonprovisional applications filed in the Patent and Trademark
Office and accepted as complete applications are assigned for
examination to the respective examining groups having the classes of
inventions to which the applications relate. Nonprovisional
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 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).
25. Section 1.103 is 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). 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 section 1.129 are
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 June
8, 1995, taking into account any reference made in such application to
any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is
entitled to have a first submission entered and considered on the
merits after final rejection under the following circumstances: The
Office will consider such a submission, if the first submission and the
fee set forth in Sec. 1.17(r) are filed prior to the filing of an
appeal brief and prior to abandonment of the application. The finality
of the final rejection is automatically withdrawn upon the timely
filing of the submission and payment of the fee set forth in
Sec. 1.17(r). If a subsequent final rejection is made in the
application, applicant is entitled to have a second submission entered
and considered on the merits after the subsequent final rejection under
the following circumstances: The Office will consider such a
submission, if the second submission and a second fee set forth in
Sec. 1.17(r) are filed prior to the filing of an appeal brief and prior
to abandonment of the application. The finality of the subsequent final
rejection is automatically withdrawn upon the timely filing of the
submission and payment of the second fee set forth in Sec. 1.17(r). Any
submission filed after a final rejection made in an application
subsequent to the fee set forth in Sec. 1.17(r) having been twice paid
will be treated as set forth in Sec. 1.116. A submission as used in
this paragraph includes, but is not limited to, an information
disclosure statement, an amendment to the written description, claims
or drawings and a new substantive argument or new evidence in support
of patentability.
(b)(1) In an application, other than for reissue or a design
patent, that has been pending for at least three years as of June 8,
1995; taking into account any reference made in the application to any
earlier filed application under 35 U.S.C. 120, 121, and 365(c), no
requirement for restriction or for the filing of divisional
applications shall be made or maintained in the application after June
8, 1995, except where:
(i) The requirement was first made in the application or any
earlier filed application under 35 U.S.C. 120, 121 and 365(c) prior to
April 8, 1995;
(ii) The examiner has not made a requirement for restriction in the
present or parent application prior to April 8, 1995, due to actions by
the applicant; or
(iii) The required fee for examination of each additional invention
was not paid.
(2) If the application contains more than one independent and
distinct invention and a requirement for restriction or for the filing
of divisional applications cannot be made or maintained pursuant to
this paragraph, applicant will be so notified and given a time period
to:
(i) Elect the invention or inventions to be searched and examined,
if no election has been made prior to the notice, and pay the fee set
forth in Sec. 1.17(s) for each independent and distinct invention
claimed in the application in excess of one which applicant elects;
(ii) Confirm an election made prior to the notice and pay the fee
set forth in Sec. 1.17(s) for each independent and distinct invention
claimed in the application in addition to the one invention which
applicant previously elected; or
(iii) File a petition under this section traversing the
requirement. If the required petition is filed in a timely manner, the
original time period for [[Page 20227]] electing and paying the fee set
forth in Sec. 1.17(s) will be deferred and any decision on the petition
affirming or modifying the requirement will set a new time period to
elect the invention or inventions to be searched and examined and to
pay the fee set forth in Sec. 1.17(s) for each independent and distinct
invention claimed in the application in excess of one which applicant
elects.
(3) The additional inventions for which the required fee has not
been paid will be withdrawn from consideration under Sec. 1.142(b). An
applicant who desires examination of an invention so withdrawn from
consideration can file a divisional application under 35 U.S.C. 121.
(c) The provisions of this section shall not be applicable to any
application filed after June 8, 1995.
27. Section 1.137 is amended by revising paragraph (c) to read as
follows:
Sec. 1.137 Revival of abandoned application.
* * * * *
(c) In all applications filed before June 8, 1995, and in all
design applications filed on or after June 8, 1995, any petition
pursuant to paragraph (a) of this section not filed within six months
of the date of abandonment of the application, must be accompanied by a
terminal disclaimer with fee under Sec. 1.321 dedicating to the public
a terminal part of the term of any patent granted thereon equivalent to
the period of abandonment of the application. The terminal disclaimer
must also apply to any patent granted on any continuing application
entitled under 35 U.S.C. 120 to the benefit of the filing date of the
application for which revival is sought.
* * * * *
28. Section 1.139 is 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 paragraphs (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.
29. Section 1.177 is 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), all the divisions of a reissue will issue simultaneously;
if there is any controversy as to one division, the others will be
withheld from issue until the controversy is ended, unless the
Commissioner orders otherwise.
30. Section 1.312 is 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) and a showing of good and
sufficient reasons why the amendment is necessary and was not earlier
presented.
31. Section 1.313 is 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). 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.
* * * * *
32. Section 1.314 is 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) and must include a
showing of good and sufficient reasons why it is necessary to defer
issuance of the patent. [[Page 20228]]
33. Section 1.316 is amended by revising paragraph (d) to read as
follows:
Sec. 1.316 Application abandoned for failure to pay issue fee.
* * * * *
(d) In all applications filed before June 8, 1995, any petition
pursuant to paragraph (b) of this section not filed within six months
of the date of abandonment of the application, must be accompanied by a
terminal disclaimer with fee under Sec. 1.321 dedicating to the public
a terminal part of the term of any patent granted thereon equivalent to
the period of abandonment of the application. The terminal disclaimer
must also apply to any patent granted on any continuing application
entitled under 35 U.S.C. 120 to the benefit of the filing date of the
application for which revival is sought.
* * * * *
34. Section 1.317 is amended by removing and reserving paragraph
(d).
Sec. 1.317 [Amended]
35. Section 1.666 is 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) and on a showing of
good cause.
* * * * *
36. Section 1.701 is 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 June 8, 1995, is entitled to extension of the patent
term if the issuance of the patent was delayed due to:
(1) Interference proceedings under 35 U.S.C. 135(a); and/or
(2) The application being placed under a secrecy order under 35
U.S.C. 181; and/or
(3) Appellate review by the Board of Patent Appeals and
Interferences or by a Federal court under 35 U.S.C. 141 or 145, if the
patent was issued pursuant to a decision reversing an adverse
determination of patentability and if the patent is not subject to a
terminal disclaimer due to the issuance of another patent claiming
subject matter that is not patentably distinct from that under
appellate review.
(b) The term of a patent entitled to extension under paragraph (a)
of this section shall be extended for the sum of the periods of delay
calculated under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this
section, to the extent that these periods are not overlapping, up to a
maximum of five years. The extension will run from the expiration date
of the patent.
(c)(1) The period of delay under paragraph (a)(1) of this section
for an application is the sum of the following periods, to the extent
that the periods are not overlapping:
(i) With respect to each interference in which the application was
involved, the number of days, if any, in the period beginning on the
date the interference was declared or redeclared to involve the
application in the interference and ending on the date that the
interference was terminated with respect to the application; and
(ii) The number of days, if any, in the period beginning on the
date prosecution in the application was suspended by the Patent and
Trademark Office due to interference proceedings under 35 U.S.C. 135(a)
not involving the application and ending on the date of the termination
of the suspension.
(2) The period of delay under paragraph (a)(2) of this section for
an application is the sum of the following periods, to the extent that
the periods are not overlapping:
(i) The number of days, if any, the application was maintained in a
sealed condition under 35 U.S.C. 181;
(ii) The number of days, if any, in the period beginning on the
date of mailing of an examiner's answer under Sec. 1.193 in the
application under secrecy order and ending on the date the secrecy
order and any renewal thereof was removed;
(iii) The number of days, if any, in the period beginning on the
date applicant was notified that an interference would be declared but
for the secrecy order and ending on the date the secrecy order and any
renewal thereof was removed; and
(iv) The number of days, if any, in the period beginning on the
date of notification under Sec. 5.3(c) and ending on the date of
mailing of the notice of allowance under Sec. 1.311.
(3) The period of delay under paragraph (a)(3) of this section is
the sum of the number of days, if any, in the period beginning on the
date on which an appeal to the Board of Patent Appeals and
Interferences was filed under 35 U.S.C. 134 and ending on the date of a
final decision in favor of the applicant by the Board of Patent Appeals
and Interferences or by a Federal court in an appeal under 35 U.S.C.
141 or a civil action under 35 U.S.C. 145.
(d) The period of delay set forth in paragraph (c)(3) shall be
reduced by:
(1) Any time during the period of appellate review that occurred
before three years from the filing date of the first national
application for patent presented for examination; and
(2) Any time during the period of appellate review, as determined
by the Commissioner, during which the applicant for patent did not act
with due diligence. In determining the due diligence of an applicant,
the Commissioner may examine the facts and circumstances of the
applicant's actions during the period of appellate review to determine
whether the applicant exhibited that degree of timeliness as may
reasonably be expected from, and which is ordinarily exercised by, a
person during a period of appellate review.
PART 3--ASSIGNMENT, RECORDING, AND RIGHTS OF ASSIGNEE
37. The authority citation for 37 CFR Part 3 continues to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
38. Section 3.21 is 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). An assignment relating to an international patent application
which designates the United States of America must identify the
international application by the international 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. [[Page 20229]]
39. Section 3.81 is 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) of
this chapter.
Dated: April 14, 1995.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
Note--The following appendix will not appear in the Code of
Federal Regulations.
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[[Page 20230]]
Appendix
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[FR Doc. 95-9838 Filed 4-24-95; 8:45 am]
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