[Federal Register Volume 60, Number 157 (Tuesday, August 15, 1995)]
[Proposed Rules]
[Pages 42352-42405]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-18886]




[[Page 42351]]

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Part V





Department of Commerce





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Patent and Trademark Office



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37 CFR Parts 1, 3 and 5



Changes to Implement 18-Month Publication of Patent Applications; 
Proposed Rule

  Federal Register / Vol. 60, No. 157 / Tuesday, August 15, 1995 / 
Proposed Rules  
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[[Page 42352]]


DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 3 and 5

[Docket No. 950620162-5162-01]
RIN 0651-AA75


Changes to Implement 18-Month Publication of Patent Applications

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The Patent and Trademark Office (Office) is proposing to amend 
the rules of practice in patent cases primarily to implement changes 
related to the 18-month publication of patent applications in title 35, 
United States Code, contained in the Patent Application Publication Act 
of 1995 (H.R. 1733). Among the changes that are contained in H.R. 1733 
would be the publication of patent applications after 18 months from 
the earliest filing date for which a benefit is sought, and the 
addition of provisional rights to the rights provided in a patent. 
These changes would apply to utility and plant applications other than 
provisional applications, but not to design applications.

DATES: Written comments must be submitted on or before September 19, 
1995. A public hearing will be held on Tuesday, September 19, 1995, at 
9:30 a.m. Those wishing to present oral testimony must request an 
opportunity to do so no later than September 14, 1995. Written comments 
and transcripts of the hearings will be available for public inspection 
on or about October 2, 1995, and will be available on or about October 
2, 1995, through anonymous file transfer protocol (ftp) via the 
Internet (address: ftp.uspto.gov).

ADDRESSES: Address written comments and requests to present oral 
testimony to the Commissioner of Patents and Trademarks, Washington, 
D.C. 20231, Attention: Stephen G. Kunin, Deputy Assistant Commissioner 
for Patent Policy and Projects. In addition, written comments may also 
be sent by facsimile transmission to (703) 305-8825, with a 
confirmation copy mailed to the above address, or by electronic mail 
messages over the Internet to [email protected]. The public hearing 
will be held at the Holiday Inn--National Airport, 15th Street and 
Jefferson Davis Highway, Arlington, Virginia. The written comments and 
transcripts of the hearings will be available in Room 520 of Crystal 
Park One, 2011 Crystal Drive, Arlington, Virginia.

FOR FURTHER INFORMATION CONTACT: Stephen G. Kunin by telephone at (703) 
305-8850, by facsimile at (703) 305-8825, by electronic mail at 
[email protected], or Jeffrey V. Nase by telephone at (703) 305-9285, or 
by mail marked to the attention of Stephen G. Kunin, addressed to the 
Commissioner of Patents and Trademarks, Washington, D.C. 20231.

SUPPLEMENTARY INFORMATION: This proposed rule change is designed 
primarily to implement the changes in practice related to the 
publication of patent applications provided for in H.R. 1733. H.R. 1733 
was introduced in the House of Representatives on May 25, 1995. The 
amendments to title 35 relating to 18-month publication, if enacted as 
proposed, would be effective on January 1, 1996. A copy of this 
legislation may be obtained from the individuals identified in the For 
Further Information Contact section of the notice.
    Section 122 of title 35, United States Code, currently provides 
that patent applications are maintained in confidence until a patent is 
granted. H.R. 1733, if enacted, would amend 35 U.S.C. 122 to provide 
that each application for patent, except for design applications filed 
under 35 U.S.C. 171 and provisional applications filed under 35 U.S.C. 
111(b), shall be published ``as soon as possible after the expiration 
of a period of 18 months from the earliest filing date for which a 
benefit is sought,'' but provides that applications that are no longer 
pending and applications that are subject to a secrecy order under 35 
U.S.C. 181 shall not be published.
    H.R. 1733 includes a provision (35 U.S.C. 122(b)(2)) that, upon 
request, an application of an independent inventor who has been 
accorded status under 35 U.S.C. 41(h) will not be published until three 
months after an Office action under 35 U.S.C. 132; however, 
applications filed under 35 U.S.C. 363 and applications claiming the 
benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, 365(a) 
or 365(c) are not eligible for such a request. In addition, H.R. 1733 
provides that an applicant making such a request must certify that the 
invention disclosed in the application was not or will not be the 
subject of an application filed in a foreign country. H.R. 1733 
provides that the Commissioner may establish appropriate procedures and 
fees for such a request.
    H.R. 1733, if enacted, would further amend 35 U.S.C. 119 to provide 
that the claim and certified copy of the original foreign application 
must be filed in the Office at such time during the pendency of the 
application as required by the Commissioner, and that the Commissioner 
may consider the failure of the applicant to file a timely claim for 
priority as a waiver of any such claim. H.R. 1733, if enacted, would 
likewise amend 35 U.S.C. 120 to provide that the Commissioner may 
determine the time period during the pendency of the application within 
which an amendment containing the specific reference to the earlier 
filed application shall be submitted, and that the Commissioner may 
consider the failure of the applicant to file a timely claim for 
priority as a waiver of any such claim.
    H.R. 1733, if enacted, would further amend 35 U.S.C. 102(e) to 
include applications published pursuant to 35 U.S.C. 122(b) within its 
scope. H.R. 1733, if enacted, would provide that the costs of early 
publication shall be recovered by adjusting the filing, issue and 
maintenance fees, by charging a separate publication fee, or by any 
combination of these methods. H.R. 1733, if enacted, would also provide 
that, upon issuance of the application as a patent, the patent shall, 
where the invention claimed in the patent is identical to the invention 
claimed in the published application, include provisional rights during 
the period from publication until issuance of the patent.
    H.R. 1733 also includes amendments relating to 20-year patent term 
and provisional applications. Specifically, H.R. 1733 includes an 
amendment to 35 U.S.C. 119(e) to provide that if the day that is twelve 
months after the filing date of a provisional application falls on a 
Saturday, Sunday, or Federal holiday within the District of Columbia, 
the period of pendency of the provisional application shall be extended 
to the next succeeding secular or business day. H.R. 1733 also includes 
an amendment to 35 U.S.C. 154(b) to: (1) Include an unusual 
administrative delay by the Office in issuing the patent as a basis for 
patent term extension; (2) provide that the total duration of all 
extensions under 35 U.S.C. 154(b) shall not exceed ten years, as 
opposed to the five year limit currently provided in Public Law 103-
465; (3) provide that no patent that has issued before the expiration 
of three years after the filing date of the application or entry of the 
application into the national stage under 35 U.S.C. 371 shall be 
extended under 35 U.S.C. 154(b); (4) provide that no patent whose term 
has been disclaimed beyond a specified date shall be extended under 35 
U.S.C. 154(b) beyond the expiration date specified in the terminal 
disclaimer, and (5) provide that any 

[[Page 42353]]
period of extension under 35 U.S.C. 154(b) shall be reduced by the 
period during which the applicant for patent did not engage in 
reasonable efforts to conclude processing or examination of the 
application, rather than the ``due diligence'' provision applicable to 
extensions under 35 U.S.C. 154(b)(2) in Public Law 103-465.
    The current planning approach to the implementation of early 
publication is to create an electronic data base which captures the 
technical content, i.e., the specification, abstract, claims and 
drawings, of the application-as-filed. A data capturing operation will 
enable the creation of a data base containing image and text equivalent 
of the technical contents of the application-as-filed. Application 
materials will be digital image and/or optical character recognition 
(OCR) scanned by the Office for entry into this electronic data base. 
This electronic data base will be used to provide a source for (a) 
meeting publication requirements for the applications, (b) providing a 
basis for electronic searching and retrieval of applications, and (c) 
providing a basis for producing copies of the technical contents of the 
application-as-filed. The publication of an application will take the 
form of publishing information necessary to identify the applicant and 
the technical subject matter of the application, i.e., a Gazette Entry, 
in a separate Gazette of Patent Application Notices, with a one-page 
printed publication, i.e., a Patent Application Notice or PAN, 
containing similar information for placement in the paper search files. 
Published applications will be assigned a sequential Patent Application 
Notice (PAN) number in the manner that issued patents are assigned a 
sequential patent number. In addition, a document including the Patent 
Application Notice and the technical contents of the application-as-
filed, designated as the Technical Contents Publication, will be 
available to the public upon publication.
    The digital images of the technical contents of the application-as-
filed, i.e., the Technical Contents Publication, will be available for 
public review. Paper copies of the Patent Application Notice and 
Technical Contents Publication will also be available for purchase 
similar to the way paper copies of patents are currently available for 
purchase. When budgetary and process considerations permit, text 
searching of the Patent Application Notice and Technical Contents 
Publication will be implemented.
    The information provided to Patent and Trademark Depository 
Libraries will be expanded to include weekly issues of the Gazette of 
Patent Application Notices (provided by the Government Printing 
Office), and a CD-ROM collection of facsimile images of the Patent 
Application Notices and Technical Contents Publications. The public 
would also be able to place subscription orders to receive weekly paper 
copies of the Patent Application Notices and Technical Contents 
Publications published in specific classes and subclasses similar to 
the way such orders are currently placed for issued patents, as well as 
subscription orders to receive the CD-ROM collection of facsimile 
images of the Patent Application Notices and Technical Contents 
Publications.
    H.R. 1733, as proposed, does not specifically exclude applications 
that are national security classified from those applications to be 
published. Executive Order 12356 and a number of statutes, e.g., 42 
U.S.C. 2011 et seq. (the Atomic Energy Act of 1954), 15 U.S.C. 1155 
(provides that the Secretary of Commerce shall respect and preserve the 
security classification of inventions in the possession or control of 
the Department of Commerce), and 18 U.S.C. 798 (provides criminal 
sanctions for the disclosure of classified information) preclude the 
publication of a national security classified application. Further, the 
publication requirement in H.R. 1733, as proposed, provides some 
latitude to the Commissioner to publish applications later than 18 
months from the earliest filing date for which a benefit is sought. 
Therefore, the publication of a national security classified 
application will be delayed until such application is either 
declassified, which will permit publication of the application, or 
subjected to a secrecy order pursuant to 35 U.S.C. 181, which will 
exclude the application from publication by the express terms of H.R. 
1733, as proposed. In view of national security considerations, and the 
current statutory prohibitions on the disclosure of classified 
information, it is appropriate to specifically exclude those 
applications that are national security classified from publication 
under the provisions of H.R. 1733.
    While H.R. 1733, if enacted, would not directly affect design 
applications, this notice of proposed rulemaking includes a proposed 
amendment to Sec. 1.154 such that the arrangement for a design 
application will be consistent with the arrangements for a utility 
(Sec. 1.77) or plant (Sec. 1.163) application, as well as a proposed 
amendment to Sec. 1.5 to provide that a paper concerning a provisional 
application must identify the provisional application as such and by 
application number. In addition, while this proposed rule change is 
designed primarily to implement the changes in practice related to the 
publication of patent applications provided for in H.R. 1733, a number 
of proposed rule changes set forth in this notice of proposed 
rulemaking would be desirable even in the absence of an 18-month 
publication system. Specifically, this proposed rule change is also 
designed to: (1) clarify which applications claiming the benefit of 
prior applications or prior applications for which a benefit is claimed 
in a later application will be preserved in confidence; (2) amend the 
rules pertaining to the format and standards for application papers and 
drawings to improve the standardization of patent applications; (3) 
broaden the application of Sec. 1.131 to instances in which inventions 
of a pending application or patent under reexamination and a patent 
held by a single party are not identical, but not patentably distinct; 
(4) broaden the application of Secs. 1.78(c) and (d) to patents under 
reexamination, (5) clarify the practice for the delivery or mailing of 
patents; (6) provide for the treatment of national security classified 
applications; (7) expedite the entry of international applications into 
the national stage; and (8) amend a number of rules for consistency and 
clarity. Since these proposed rule changes may be adopted as final 
rules even in the absence of an 18-month publication system, interested 
persons are advised to comment on any proposed rule change, regardless 
of whether H.R. 1733 is enacted.
    If H.R. 1733 is amended during the legislative process, the final 
rules will comply with this legislation as enacted. If H.R. 1733 is not 
enacted, the proposed rules that would implement publication of patent 
applications would be withdrawn.
    In a Notice of Public Hearing and Request for Comments on 18-Month 
Publication of Patent Applications (18-Month Publication Notice) 
published in the Federal Register at 59 FR 63966 (December 12, 1994) 
and in the Patent and Trademark Office Official Gazette at 1170 Off. 
Gaz. Pat Office 390-94 (January 3, 1995), the Office requested public 
comment on the procedures the Office should adopt if an 18-month 
publication system was enacted. The 18-Month Publication Notice set 
forth the Office's planning approach for the implementation of 18-month 
(pre-grant) publication of patent applications, and specifically 
presented fourteen (14) questions on which comment was invited. An oral 
hearing was conducted on February 15, 1995. 

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    Sixty-five (65) written comments, as well as two (2) Law Review 
articles concerning the pre-grant publication of pending patent 
applications, were submitted. Of the sixty-five (65) comments, forty 
(40) submitted comments directed to at least one of the questions 
presented in the 18-Month Publication Notice. Sixteen (16) persons 
testified at the public hearing conducted on February 15, 1995.
Response to Comments on the 18-Month Publication Notice

    The following questions were presented in the 18-Month Publication 
Notice. Each question is followed by a summary of the comments 
submitted in response to the question, and the proposed disposition of 
the issue presented in the question.
    1. Should the PTO require that all official application-related 
materials be delivered to a central location? Specifically, what 
problems would a requirement that all official application-related 
materials be delivered to a central location cause?
    Summary: A slight majority of the comments opposed a requirement 
that all official application-related materials be delivered to a 
central location.
    Response: As the Office currently considers the delivery of all 
official application-related materials to a central location to be 
unnecessary to the currently planned approach to implementation of 18-
month publication, no change to the rules of practice to require that 
all official application-related materials be delivered to a central 
location will be proposed.
    2. Should the PTO adopt a standard application format? If so, what 
portions of the application papers should the PTO require be submitted 
in a standard size and/or format, and what sanction (e.g., surcharge) 
should be established for the failure to comply with these 
requirements?
    Summary: A majority of the comments favored the implementation of a 
standard application format, so long as an applicant was given a time 
period in which to comply with this format, i.e., failure to comply 
with the standard application format did not deprive the application of 
a filing date. In addition, a number of comments indicated that any 
additional requirements should not be inconsistent with European Patent 
Office (EPO) or Patent Cooperation Treaty (PCT) requirements, or in 
excess of those requirements necessary for the implementation of 18-
month publication.
    Response: The Office is proposing to change the rules of practice 
to institute only those additional standardizations which are 
consistent with the requirements set forth in PCT Rule 11, and are 
considered necessary for the digital image and OCR scanning of 
application materials into an electronic data base. Those additional 
standardizations are that: (1) applications be submitted on flexible, 
strong, smooth, non-shiny, durable and white paper (PCT Rule 11.3); (2) 
the papers be typewritten by a typewriter or word-processor, i.e., 
hand-written application materials would no longer be acceptable, with 
1\1/2\ or double spaced lines (PCT Rule 11.9(c)), and in permanent 
``dark'' ink (PCT Rule 11.9(d)) and portrait orientation, i.e., with 
the shorter sides of the paper on the top and bottom (PCT Rule 
11.2(d)); (3) the sheets of papers be the same size and either 21.0 cm. 
by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches) 
(PCT Rule 11.5), with a top margin of at least 2.0 cm. (\3/4\ inch), a 
left side margin of at least 2.5 cm. (1 inch), a right side margin of 
at least 2.0 cm. (\3/4\ inch), and a bottom margin of at least 2.0 cm. 
(\3/4\ inch) (PCT Rule 11.6(a)); (4) the pages of the application be 
numbered consecutively, with the numbers being centrally located above 
or below the text (PCT Rule 11.7); and (5) the claims be on a separate 
sheet (PCT Rule 11.4). Finally, Secs. 1.52(b) and 1.84(x) are proposed 
to be amended to provide that no holes should be provided in the paper 
or drawing sheets due to the potential for their interference with the 
scanning operation.
    Section 1.52(b) currently requires that application papers be 
written on but one side, and Sec. 1.72(b) currently requires that the 
abstract be on a separate sheet. In an application filed without: (1) 
typewritten application papers on flexible, strong, smooth, non-shiny, 
durable and white paper; (2) 1\1/2\ or double spaced lines in portrait 
orientation; (3) permanent ``dark'' ink typing; (4) sheets of papers of 
the same size and either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. 
by 27.9 cm. (8\1/2\ by 11 inches), with a top margin of at least 2.0 
cm. (\3/4\ inch), a left side margin of at least 2.5 cm. (1 inch), a 
right side margin of at least 2.0 cm. (\3/4\ inch), and a bottom margin 
of at least 2.0 cm. (\3/4\ inch); (5) the pages of the application 
including claims and abstract be numbered consecutively, starting with 
page one, with the numbers being centrally located above or below the 
text; (6) application papers typed on but one side; and (7) an abstract 
and claims on a separate sheet, the applicant will be given a time 
period, non-extendable under Sec. 1.136(a), in which to file a 
substitute specification in compliance with Sec. 1.125 on application 
papers in compliance with Secs. 1.52(a) and (b). The Office, however, 
does not propose to require a surcharge for the failure to comply with 
these standardizations on filing.
    Additional standardizations to the rules of practice concerning 
drawings requirements are also being proposed. Currently, Sec. 1.84(f) 
permits paper sizes of 21.6 cm. by 35.6 cm. (8\1/2\ by 14 inches), 21.6 
cm. by 33.1 cm. (8\1/2\ by 13 inches), 21.6 cm. by 27.9 cm. (8\1/2\ by 
11 inches), and 21.0 cm. by 29.7 cm. (DIN size A4). Section 1.84(f), as 
proposed, would permit paper sizes of only 21.0 cm. by 29.7 cm. (DIN 
size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches). The use of 
these paper sizes, which correspond to the paper sizes required under 
Sec. 1.52(b), as proposed, would not impact the current Automated 
Patent System (APS) database, and would permit a fully automatic 
scanning operation due to their similar size. To electronically store, 
display, and print drawings paper sheet sizes up to 21.6 cm. by 35.6 
cm. (8\1/2\ by 14 inches) would require modifications of the APS system 
hardware, software, displays, and printers. In addition, the digital 
image scanning of drawing paper sheet sizes up to 21.6 cm. by 35.6 cm. 
(8\1/2\ by 14 inches) would require a semi-automatic scanning 
operation, thus increasing scanning costs significantly. Therefore, 
Sec. 1.84(f), as proposed, would permit paper sheet sizes of only 21.0 
cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 
inches), with a top margin of at least 2.5 cm. (1 inch), a left side 
margin of at least 2.5 cm. (1 inch), a right side margin of at least 
1.5 cm. (\9/16\ inch), and a bottom margin of at least 1.0 cm. (\3/8\ 
inch), thereby leaving a sight no greater than 17.0 cm. by 26.2 on 21.0 
cm. by 29.7 cm. (DIN size A4) sheets, and a sight no greater than 17.6 
cm. by 24.4 cm. (6\15/16\ by 9\5/8\ inches) on 21.6 cm. by 27.9 cm. 
(8\1/2\ by 11 inch) sheets (PCT Rule 11.6(c)). As PCT Rule 11.6(d) 
provides that the margin requirements apply to 21.0 cm. by 29.7 cm. 
(DIN size A4) sheets such that a copy of the drawings sheet on a 21.0 
cm. by 29.7 cm. (DIN size A4) sheet leaves the required margin, the 
requirement for drawing sheet sizes of only 21.6 cm. by 27.9 cm. (8\1/
2\ by 11 inches) or 21.0 cm. by 29.7 cm. (DIN size A4) is not a 
substantive drawing limitation in excess of PCT Rule 11.
    Currently, formal drawings are not required until an application 
has been allowed. As a drawing figure will be included in the Gazette 
Entry in the Gazette of Patent Application Notices, 

[[Page 42355]]
as well as the Patent Application Notice, drawings of sufficient 
quality for digital image scanning into an electronic data base will be 
necessary for the initial processing of the application. In instances 
in which an application is filed with drawings of such poor quality as 
to preclude their digital image scanning into the electronic data base, 
it will be necessary to set a time period, non-extendable under 
Sec. 1.136(a), in which to file drawings of sufficient clarity, 
contrast, and quality and in the proper size and format for electronic 
reproduction by digital imaging.
    Currently, a complete application under Sec. 1.51(a) does not 
require an abstract on a separate sheet, claims on a separate sheet, 
application papers typed on but one side of the paper, or application 
papers or drawings of sufficient clarity, contrast, or quality or in 
the proper size or format for electronic reproduction, and, as such, an 
application may be filed under Sec. 1.60 from a prior application not 
in a format necessary for the image and/or OCR scanning of the 
application materials into an electronic data base. Therefore, an 
amendment to Sec. 1.60(d) is necessary to assure the prompt filing of 
application papers including an abstract and claims on a separate 
sheet, application papers typed on but one side of the paper, and 
application papers and drawings of sufficient clarity, contrast, and 
quality and in the proper size and format for electronic reproduction.
    Currently, the filing of the copy of the specification from the 
prior application, or a new specification, in an application filed 
under Sec. 1.62 is considered improper. As applications filed prior to 
January 1, 1996, will not have been image- or OCR-scanned into the 
electronic data base, the technical contents of an application filed 
under Sec. 1.62 in which the prior application was itself filed prior 
to January 1, 1996, will not be contained in the electronic data base. 
For applications under Sec. 1.62 which do not add additional 
disclosure, i.e., continuation or divisional applications, the Office 
will obtain the microfiche copy of the prior application and image or 
OCR scan it into the electronic data base. For applications under 
Sec. 1.62 which add additional disclosure, i.e., continuation-in-part 
applications, a substitute specification and drawings will be necessary 
for image or OCR scanning into the electronic data base. Therefore, an 
amendment has been proposed to Sec. 1.62 to provide that, where the 
application is a continuation-in-part application, a substitute 
specification in compliance with Sec. 1.125 and drawings will be 
required.
    Section 1.62 currently provides that no copy of the prior 
application or new specification is required, and further provides that 
the filing of such a copy or specification will be considered improper, 
and a petition is necessary to obtain the date of deposit of the 
request for an application under Sec. 1.62 as the filing date. Section 
1.62, as proposed, would provide that the failure to provide any 
required substitute specification would not affect the filing date of 
the application, but a time period, non-extendable under Sec. 1.136(a), 
would be set for its filing. Section 1.62, as proposed, would further 
provide that any new specification filed in an application under 
Sec. 1.62 would not be considered part of the original application 
papers, but would be treated as a substitute specification under 
Sec. 1.125. Any request to treat a new specification filed in an 
application under Sec. 1.62 as part of the original application papers 
may be by way of petition under Sec. 1.182.
    Finally, amendments to Secs. 1.77, 1.154, and 1.163 have been 
proposed to provide a standard arrangement for utility, design, and 
plant applications, respectively. This standard arrangement will 
include, inter alia, a Fee Transmittal form for utility, design, and 
plant applications, a Utility Patent Application Transmittal form, a 
Design Patent Application Transmittal form, a Plant Patent Application 
Transmittal form, and a Plant Color Coding Sheet for plant 
applications. Standardized versions of the Fee Transmittal form, 
Utility Patent Application Transmittal form, Design Patent Application 
Transmittal form, Plant Patent Application Transmittal form, Plant 
Color Coding Sheet, as well as a standard Declaration form and Plant 
Patent Application Declaration form, are included as an Appendix A to 
this notice of proposed rulemaking.
    3. Assuming that the entire application is not published, what 
information concerning the application should be published in the 
Gazette of Patent Application Notices?
    Summary: A slight majority of the comments indicated that the 
printed publication should include the entire application, or at least 
the claims, each independent claim, or a claim of each statutory class 
in the application. The remaining comments that did not oppose pre-
grant publication indicated that any Patent Application Notice should 
contain information similar to what is published in the Official 
Gazette or sufficient information to determine whether further 
investigation was warranted. Those comments that opposed any pre-grant 
publication opposed publication of any information other than the 
applicant's name, address and a ``non-enabling'' abstract of the 
invention.
    Response: The Technical Contents Publication will include a copy of 
the Patent Application Notice, and the specification, abstract, claims 
and drawings of the application-as-filed. The Technical Contents 
Publication will be available for public review through video display 
terminals in the Public Search Room and through CD-ROM collections of 
facsimile images of Patent Application Notices and Technical Contents 
Publications in the Patent and Trademark Depository Libraries. Copies 
of the Patent Application Notices and Technical Contents Publications 
will also be available for purchase under the conditions that paper 
copies of patents are currently available for purchase. When budgetary 
and process constraints permit, text searching of the Patent 
Application Notices and Technical Contents Publications will be 
implemented.
    H.R. 1733, if enacted, would not provide any appropriations to 
cover the costs of early publication, but would provide that these 
costs are to be recovered by adjusting the filing, issue and 
maintenance fees, by charging a separate publication fee, or by any 
combination of these methods, i.e., that the patent applicant is to 
bear the costs of publication. A number of comments have criticized 
this method of allocating the publication costs as pre-grant 
publication provides no benefit to the patent applicant. The Office was 
required to balance the requests for a printed publication conveying 
the greatest amount of application information with those comments 
opposing additional publication costs. To provide the maximum amount of 
application information at the lowest cost to applicant, the 
specification, abstract, claims and drawings of the application-as-
filed will be available for public review in the Technical Contents 
Publication.
    4. Should the patent applicant receive a copy of the published 
application--either published notice and/or application content at time 
of publication?
    Summary: A majority of the comments indicated that the applicant 
should receive a copy of the Patent Application Notice.
    Response: The Office proposes to provide for the delivery of the 
Patent Application Notice similar to the current delivery of patents. 

[[Page 42356]]

    5. Should the PTO permit an accelerated examination? If so, under 
what conditions?
    Summary: A majority of the comments favored permitting accelerated 
examination. A number of comments indicated that accelerated 
examination should be provided for applicants who either: (1) meet the 
current conditions for accelerated examination; or (2) pay a relatively 
high fee, i.e., that the Office should add the payment of a high 
accelerated examination fee to the current conditions for providing an 
accelerated examination. A number of comments, however, indicated that 
adding the payment of a high accelerated examination fee to those 
conditions for providing an accelerated examination would benefit large 
companies at the expense of small entities.
    Response: The Office will provide accelerated examination only 
under the current conditions set forth in Sec. 1.102, as described in 
MPEP 708.02. Accelerated examination is currently provided depending 
upon the subject matter of the invention, medical condition of the 
applicant, business circumstances, or the willingness of the applicant 
to participate in a special accelerated examination procedure. 
Increasing the number of applications receiving accelerated 
examinations could diminish the availability or speed of accelerated 
examination to an individual applicant because there will be more 
applications receiving an accelerated examination. It would further 
delay the examination of applications not provided with accelerated 
examination. Adding a condition for providing accelerated examination 
which bears no relationship to the merits of the application or 
circumstances of the applicant, i.e., for the mere payment of a fee, is 
not considered appropriate. Therefore, the Office does not propose to 
change the conditions under which the examination of an application 
will be accelerated.
    The Office, however, will continue to make special an application 
under the conditions currently set forth in MPEP 708.02 (VIII), special 
examining procedures for certain new applications--accelerated 
examination. MPEP 708.02 (VIII) provides that a new application may be 
granted special status provided that the applicant: (1) submits a 
written petition to make special accompanied by the fee set forth in 
Sec. 1.17(i); (2) presents all claims directed to a single invention, 
or if the Office determines that all the claims presented are not 
obviously directed to a single invention, will make an election without 
traverse as a prerequisite to the grant of special status; (3) submits 
a statement that a pre-examination search was made; (4) submits one 
copy each of the references deemed most closely related to the subject 
matter encompassed by the claims; (5) submits a detailed discussion of 
the references pointing out with the particularity required by 
Sec. 1.111 (b) and (c) how the claimed subject matter is 
distinguishable over the references; and (6) submits any affidavit or 
declaration under Sec. 1.131 that is necessary to overcome the 
references before the application is taken up for action, but in no 
event later than one month after request for special status. An 
application granted special status under MPEP 708.02 (VIII) will be 
taken up by the examiner before all other categories of applications 
except those clearly in condition for allowance and those with set time 
limits, such as examiner's answers, etc., and will be given a complete 
first action which will include all essential matters of merit as to 
all claims.
    6. Since the cost for publishing applications must be recovered 
from fees, how should the cost of publication be allocated among the 
various fees, including the possibility of charging a separate 
publication fee?
    Summary: The overwhelming majority of comments opposed a separate 
publication fee. Most comments indicated that the costs of publication 
should be spread over the existing fees, with the remaining comments 
indicating that these costs should be absorbed by those accessing the 
published applications or the Office.
    Response: H.R. 1733, if enacted, would not provide appropriations 
for the Office to absorb the publication cost, but provides that the 
``Commissioner shall recover the costs of early publication . . . by 
adjusting the filing, issue, and maintenance fees, by charging a 
separate publication fee, or by any combination of these methods.'' 
Notwithstanding that H.R. 1733, if enacted, would not authorize the 
Office to recover the costs of publication through those seeking access 
to the published application, the demand for publication products, 
e.g., Patent Application Notices and Technical Contents Publications, 
would not be consistent, and it would not be possible to project the 
demand for publication products with the degree of precision necessary 
to recover a substantial portion of the publication costs through the 
inclusion of such costs in the fees charged for the publication 
products. In addition, the Office will supply, inter alia, CD-ROM 
collections of facsimile images of the Patent Application Notices and 
Technical Contents Publications under the condition that CD-ROM 
collections of patent images are currently supplied. As the Office has 
no authority to control the further duplication of such images, it 
would not be practicable to attempt to recover publication costs 
through increases in the fees charged for publication products, since 
those persons desiring copies of Patent Application Notices or 
Technical Contents Publications would simply obtain them from the 
original purchasers of the CD-ROM collections, who need not include any 
publication costs in their prices. Therefore, the Office proposes to 
adjust the filing, issue, and maintenance fees to recover the costs of 
publication.
    In a Notice of Proposed Rulemaking published in the Federal 
Register at 60 FR 27934 (May 26, 1995) and in the Patent and Trademark 
Office Official Gazette at 1174 Off. Gaz. Pat Office 134-50 (May 30, 
1995), a number of changes to the rules of practice to, inter alia, 
adjust patent and trademark fees to reflect the fluctuations in the 
Consumer Price Index (CPI) pursuant to 35 U.S.C. 41(f) were proposed 
(Patent and Trademark Fee Notice of Proposed Rulemaking). The proposed 
patent and trademark fee adjustments, if adopted in final rules, would 
take effect on October 2, 1995 (October 1, 1995 being a Sunday), prior 
to the effective date of the fee increase in this notice of proposed 
rulemaking to recover the costs of publication. The proposed amendments 
to Secs. 1.19(b)(1)(i) and 1.19(b)(1)(ii) are repeated in this notice 
of proposed rulemaking for clarity.
    The Office estimates that it will cost about $9 million to publish 
applications in Fiscal Year 1996. To allocate these costs among the 
filing fees of those applications which the Office anticipates will be 
filed in Fiscal Year 1996, the issue fee for those applications for 
which the Office anticipates payment of an issue fee in Fiscal Year 
1996, and maintenance fees due at three (3) years and six (6) months, 
seven (7) years and six (6) months, and eleven (11) years and six (6) 
months for those patents for which the Office anticipates payment of 
the respective maintenance fees in Fiscal Year 1996, a further increase 
in the filing fee for an original nonprovisional (35 U.S.C. 111(a)) or 
reissue application to $780 ($390 for a small entity) and a plant 
application to $540 ($270 for a small entity), issue fee for an 
original or reissue application to $1280 ($640 for a small entity) and 
a plant application to $660 ($330 for a small entity), maintenance fee 
due at three (3) years and six (6) months to 

[[Page 42357]]
$1020 ($510 for a small entity), maintenance fee due at seven (7) years 
and six (6) months to $2020 ($1010 for a small entity), and maintenance 
fee due at eleven (11) years and six (6) months to $3020 ($1510 for a 
small entity) is necessary to recover the costs of publication in 
Fiscal Year 1996. A comparison of existing fee amounts, fee amounts 
proposed in the Patent and Trademark Fee Notice of Proposed Rulemaking, 
and fee amounts proposed in this notice of proposed rulemaking is 
included as an Appendix B to this notice of proposed rulemaking.
    7. Should the PTO require an affirmative communication from a 
patent applicant indicating that the applicant does not wish the 
application to be published, or should failure to timely submit a 
publication fee be taken as instruction not to publish the application? 
That is, should an application be published unless the applicant 
affirmatively indicates that the application is not to be published, 
regardless of whether a publication fee has been submitted? What 
latitude should the PTO permit for late submission of a publication 
fee?
    Summary: An overwhelming majority of the comments (except for those 
who opposed any pre-grant publication) favored a requirement that an 
applicant affirmatively communicate that an application is being 
expressly abandoned to avoid publication of the application at 18 
months.
    Response: The Office does not process applications as abandoned 
until seven (7) months after the mailing date of an Office action to 
allow for extensions of time under Sec. 1.136(a) and mailing delays. 
Where no response to an Office action setting a shortened statutory 
period for response of three (3) months mailed at 13 months after 
filing in an application is received, the application becomes abandoned 
by operation of 35 U.S.C. 133 at 16 months after filing, but is not 
recognized or processed by the Office as an abandoned application until 
20 months after filing, and thus would be published in regular course 
at 18 months. Therefore, an applicant intending to permit an 
application to become abandoned for failure to respond to an Office 
action mailed within seven (7) months of the projected publication date 
must take affirmative action to avoid publication of the application.
    The Office intends to indicate the projected date of publication on 
the filing receipt. Any person who wants to avoid publication of the 
application at 18 months must submit a letter of express abandonment in 
sufficient time to permit the Office to act on the letter. Likewise, 
any person who considers the projected date of publication on the 
filing receipt to be incorrect must submit a request to correct the 
projected date of publication in sufficient time to permit the Office 
to act on the request.
    Currently, the Office considers two (2) months to be the minimum 
time necessary to avoid publication of an application. Therefore, any 
letter of express abandonment or request to withdraw the application 
from publication submitted less than two (2) months from the projected 
date of publication will not be considered effective to avoid 
publication of the application at the projected date of publication. 
The Office also intends to indicate on the filing receipt the date by 
which an application must be expressly abandoned to avoid its 
publication.
    8. The delayed filing of either a claim for priority under 35 
U.S.C. 119 or 120 may result in the delayed publication of the 
application. Should priority or benefit be lost if not made within a 
reasonable time after filing? What latitude should the PTO permit for 
late claiming of priority or benefit?
    Summary: A large majority of the comments indicated that claims for 
priority under 35 U.S.C. 119 and 120 should be lost if not timely 
filed. A number of comments also indicated that there should be 
provisions for the acceptance of late claims for priority.
    Response: The submission of a claim for priority under 35 U.S.C. 
119 or 120 later than four (4) months prior to the publication date 
appropriate for an application claiming that priority date will result 
in delays in the publication of the application and will interfere with 
the publication process. Therefore, the Office proposes to change the 
rules of practice to provide that claims for priority under 35 U.S.C. 
119 or 120 must be made within two (2) months of filing, or fourteen 
(14) months from the filing date for which a benefit is desired, 
whichever is later. To avoid a potential loss of patent rights to an 
applicant who inadvertently failed to present a timely claim for 
priority, the Office further proposes to provide for the acceptance of 
late claims for priority submitted during the pendency of the 
application with a surcharge, so long as the delay in submitting the 
claim for priority was unintentional.
    9. Once the patent has issued, should the paper document containing 
information similar to that published in the Gazette of Patent 
Application Notices, i.e., the Patent Application Notice, be removed 
from the search files, and should publication information be included 
on the issued patent?
    Summary: A majority of the comments indicated that the Patent 
Application Notice should not be removed from the search files.
    Response: The Office will not remove the Patent Application Notice 
from the search files upon issuance of the patent.
    10. After publication, should access to the content of the 
application file be limited to the originally filed application papers? 
If not, what degree of access should be permitted? Should access be 
limited to the content before publication, or should it extend to 
materials added after publication?
    Summary: A majority of the comments indicated that, upon 
publication, the access to the content of the application file should 
not be limited.
    Response: The Office proposes to change the rules of practice to 
provide that, upon publication, access to the entire content of the 
application file would be permitted. To avoid undue interference with 
the examination of the application, however, the public access to the 
application file of a pending published application is proposed to be 
limited to obtaining, upon the payment of the fee set forth in 
Sec. 1.19(b)(2), a copy of the application file produced during non-
working hours by the Office when the application file is made available 
by the appropriate patent application processing organization. The 
Office also proposes to provide, upon the payment of the fee(s) set 
forth in Sec. 1.19(b)(4), as proposed, a copy of specifically 
identified document(s) contained in a pending published application.
    The Office will provide public access to a database containing 
information concerning the status of a pending published application 
and the content of the application file similar to that contained in 
the Patent Application Location and Monitoring (PALM) system. Using 
this database, interested members of the public will be able to 
ascertain the status of a pending published application to determine 
whether obtaining a copy of the file wrapper and content of the 
application or any document(s) in the file wrapper is warranted. In 
addition, this database can also be used to permit specific 
identification of the document(s) of which a copy is desired, assuming 
that obtaining a copy of the entire file wrapper and content is not 
considered warranted.
    The Office specifically proposes to provide a copy of a 
specifically identified document contained in a pending published 
application for a fee of $75.00. Each paper in the application file to 
which a separate paper number is assigned constitutes a document in 

[[Page 42358]]
the application. As the cost of obtaining a pending published 
application from its location in the various patent application 
processing organizations throughout the Office is a substantial portion 
of the cost of providing a copy of the file wrapper and content of a 
pending published application, the fee for providing a copy of the 
first requested document from a pending published application must 
recover the cost of obtaining the application. The Office, however, 
will provide copies of additional documents from the same application 
in the same request for a fee of $25.00 per document.
    11. After publication, should assignment records of a published 
application also be made accessible to the public?
    Summary: An overwhelming majority of the comments indicated that, 
upon publication, the assignment records of an application should be 
accessible to the public.
    Response: The Office proposes to change the rules of practice to 
provide that, upon publication, the assignment records of the 
application would be available by both application and Patent 
Application Notice (PAN) number and open to public inspection through 
the existing Patent Assignment Search System. The Office further 
proposes to permit applicants to indicate on the assignment cover sheet 
whether they want assignment information to be printed on the Patent 
Application Notice. The Office, however, does not propose to require 
that any assignment information be printed on the Patent Application 
Notice.
    12. After publication, should access include the deposit of 
biological materials as set forth in Sec. 1.802 et seq.?
    Summary: A majority of the comments indicated that, upon 
publication, any deposit of biological materials should be accessible 
to the public. A number of comments, however, indicated that such 
access should be limited in the manner similar to that in European or 
Japanese laws, or that such access should be limited to experimental 
use.
    Response: Section 1.809(c) currently provides that the applicant 
need not provide any necessary deposit of biological materials until 
three (3) months from the mailing of the Notice of Allowance and Issue 
Fee Due. The deposit of biological materials on filing of an 
application are often required by foreign laws. Applicants may not be 
able to claim priority under these laws based upon an earlier United 
States application filed without any necessary deposit of biological 
materials. The laws and rules of practice of the United States, 
however, do not require an applicant to make any deposit of biological 
materials until the application is allowed. See, In re Lundak, 723 F.2d 
1216, 227 USPQ 90 (Fed. Cir. 1985). Accordingly, the Office proposes to 
change the rules of practice to provide that, upon publication, any 
deposit of biological materials that has been made would be available 
after deposit under the same conditions that such deposit of biological 
material would be available for an issued patent.
    13. What types of problems will be encountered if all amendments 
must be made by (a) substitute paragraphs and claims, (b) substitute 
pages, or (c) replacement of the entire application?
    Summary: A majority of the comments indicated that, if the rules of 
practice regarding the submission of amendments were changed, a 
requirement for substitute paragraphs and claims, or substitute pages 
would be acceptable.
    Response: The Office currently considers changes in the procedures 
for entering amendments into applications to be unnecessary to the 
current planning approach to implementation of 18-month publication, 
and, as such, no change to the rules of practice to require substitute 
paragraphs and claims, substitute pages, or replacement of the entire 
application is being proposed.
    14. Should protest procedures be modified to permit the third party 
submission of prior art only prior to a specific period after 
publication of the application? What action should be taken with 
respect to untimely submissions by a third party?
    Summary: A majority of comments indicated that third party 
submissions of prior art patents and publications should be permitted 
for a limited period upon publication, but the overwhelming majority of 
comments opposed any pre-grant opposition procedure.
    Response: The Office does not intend to institute any procedures 
that would amount to pre-grant opposition. H.R. 1732 was also 
introduced in the House of Representatives on May 25, 1995, and, if 
enacted, will expand reexamination, i.e., post-grant opposition, 
proceedings to provide a third party requester with increased 
participation rights, including the right to appeal any decisions 
favorable to patentability to the Board of Patent Appeals and 
Interferences and to the courts. In view of the opposition to pre-grant 
third party participation, i.e., support for the continued ex parte 
examination of pending applications, the Office proposes to change the 
rules of practice to limit the period for filing protests and petitions 
for the institution of public use proceedings.
    The Office proposes to change the rules of practice concerning 
protests to provide that a submission by a third party in a pending 
application would be considered if: (1) it is submitted within two 
months of the date the application was published or prior to the 
mailing of a notice of allowance under Sec. 1.311, whichever occurs 
first; (2) the submission has been served on the applicant in 
accordance with Sec. 1.248 if filed after the date the application was 
published, and the submission indicates such service; (3) the 
submission is accompanied by a $220 fee if submitted after publication 
of the application; and (4) the application is still pending when the 
submission and application file is brought before the examiner.
    The $220 fee for a protest submitted after publication of the 
application is considered appropriate. Any party submitting a protest 
after publication has benefitted by the publication of the application. 
The third party should not obtain this benefit solely at the expense of 
the patent applicant, but should obtain this benefit only upon payment 
of a fee. In addition, it is expected that any protest submitted after 
publication of the application will be considered late in the 
prosecution of the application, which will cause inconvenience both to 
the patent applicant and the Office. Therefore, the requirement for the 
payment of a fee is considered appropriate to defray the costs of the 
belated consideration of any such submission and discourage the 
submission of protests having questionable merit.
    Third parties may continue to submit information concerning prior 
public use of the invention in accordance with Sec. 1.292. Currently, 
Sec. 1.292 does not set forth a time period within which a petition for 
the institution of public use proceedings must be filed. The Office 
proposes to further amend Sec. 1.292 to provide that the public use 
petition will be entered if submitted within two months of the 
publication date of the application or prior to the mailing of a notice 
of allowance under Sec. 1.311, whichever occurs first.
    The proposed changes to Secs. 1.291 and 1.292 are intended to limit 
any right of third parties to have information entered and considered 
in a pending application. They do not vest the applicant with any right 
to prevent the Office from sua sponte making such information of record 
in the application or relying upon such information in subsequent 
proceedings in the application, i.e., they do not limit the authority 
of the Office to re-open the 

[[Page 42359]]
prosecution of an application to consider any information deemed 
relevant to the patentability of any claim.
    A number of miscellaneous comments concerning the 18-month 
publication of patent applications were also received.
    Comment 1: A number of comments opposed any pre-grant publication 
of pending applications as an improper limiting of the right of a 
patent applicant to maintain trade secrets, or argued that any pre-
grant publication should not occur prior to 24 or 60 months from the 
earliest filing date.
    Response: H.R. 1733, if enacted, would require the Commissioner to 
publish pending applications at 18 months. The proposed changes to the 
rules of practice concern the implementation of an 18-month publication 
system mandated by statute, not the advisability of an 18-month 
publication system. If legislation containing provisions for the 
publication of pending applications is enacted, it is not expected that 
the Office would have the discretion to determine whether or when 
pending applications are to be published. That is, it is expected that 
any legislation containing provisions for the publication of pending 
applications will mandate whether and when applications are to be 
published.
    Comment 2: A number of comments indicated that the publication of 
pending applications should be joined with provisional rights.
    Response: H.R. 1733, as proposed, provides for provisional rights. 
This issue, however, was not treated in the 18-Month Publication Notice 
or this notice of proposed rulemaking since it does not affect the way 
business is conducted with or within the Office.
    Comment 3: One comment indicated that the requirement under 35 
U.S.C. 112, first paragraph, for a disclosure of a best mode should be 
eliminated in view of 18-month publication.
    Response: The requirement in 35 U.S.C. 112, first paragraph, for a 
disclosure of a best mode is a statutory, not regulatory, requirement. 
Therefore, the Office has no authority to eliminate or limit this 
requirement of the patent statutes.
    Comment 4: One comment indicated that any publication of patent 
applications should address the situation in which: (1) an applicant 
files a continuing application prior to receiving a patent, and then 
maintains the pendency of continuing application(s), which are 
maintained in confidence, to obtain claims of various scope; (2) a 
second party invests resources in developing a product which does not 
infringe the claims of the patent, but which the applicant could draft 
claims in the continuing application(s) to cover; and (3) the applicant 
then permits a continuing application having claims which covers the 
second party's product to issue, thus checkmating the second party.
    Response: H.R. 1733, if enacted, would provide that applications 
shall be published ``as soon as possible after the expiry of a period 
of 18 months from the earliest filing date for which a benefit is 
sought.'' Any continuing application which claims priority from any 
prior application would be published either 18 months after the filing 
date of the earliest filed prior application or as soon as possible 
after filing of the continuing application, and thus would not be 
maintained in confidence.
    Comment 5: One comment indicated that applicants should obtain the 
defensive benefit of their filing date in a published application 
regardless of whether the application issues as a patent, either by 
statute or rule.
    Response: H.R. 1733, if enacted, would provide that a published 
application is prior art under 35 U.S.C. 102(e) as of its filing date. 
As prior art is defined by statute, i.e., 35 U.S.C. 102, the Office has 
no authority to promulgate regulations defining what does or does not 
constitute prior art.
    Comment 6: One comment indicated that any rulemaking should be 
postponed until there is pending legislation, and it is clear as to 
what form 18-month publication will take.
    Response: As legislation has been introduced, the form that 18-
month publication will likely take is known. As such, it is now 
appropriate to initiate the rulemaking process in light of the changes 
that would be necessitated by this legislation, the requirement for a 
rapid implementation, if enacted, and the desire on the part of the 
Office to receive public input prior to initiating the rulemaking 
process. If H.R. 1733 is amended during the legislative process, the 
final rules will comply with this legislation as enacted. If H.R. 1733 
is not enacted, the proposed rules that would implement publication of 
patent applications would be withdrawn.
    Comment 7: One comment indicated that it is unclear as to whether, 
when a restriction requirement is applied, each application will 
require a separate publication fee.
    Response: No separate publication fee has been proposed. In 
accordance with current practice, each application would require 
separate filing, issue, and maintenance fees, which fees will be 
increased to recover the costs of publication.
    Comment 8: Several comments indicated that the Office should not 
impose access fees for either copying the paper application files, or 
searching and copying a published application from any electronic data 
base.
    Response: As discussed supra, the Office intends to provide free 
public access to images of the Patent Application Notices and Technical 
Contents Publications through video display terminals in the Public 
Search Room and through CD-ROM collections of facsimile images of 
Patent Application Notices and Technical Contents Publications in the 
Patent and Trademark Depository Libraries. Copies of the Patent 
Application Notices, Technical Contents Publications, or copies of the 
file wrapper and contents of the application will be available for a 
fee. The costs of publication have been allocated primarily to those 
applicants whose applications are being published. Since publication 
primarily benefits those seeking access to the published applications, 
it is reasonable to require such persons to pay a fee for making copies 
of the Patent Application Notices and Technical Contents Publications, 
or obtaining a copy of the file wrapper and application contents of a 
published application from the Office.
    Comment 9: One comment indicated that the publication of 
applications may result in instances in which third parties will submit 
information to the applicant directly, rather than to the Office. In 
instances in which the applicant was previously aware of the 
information, but did not consider it material, the applicant cannot 
submit the information to the Office in that application (if after 
final or allowance), but will be charged with a Sec. 1.56 violation if 
they do not file a continuation application to have it considered. 
Thus, Sec. 1.56 should be amended such that an applicant in this 
situation no longer has a duty to submit information to the Office.
    Response: Section 1.56 expressly provides that there is no duty to 
submit information which is not material to the patentability of any 
existing claim. Since the applicant previously determined that the 
information was not material, the fact that a third party has provided 
this previously known material to the applicant has no effect on the 
applicant's compliance with Sec. 1.56. Second, since the applicant was 
previously aware of this information, the applicant is under a duty to 
bring such information to the attention of the Office if it is 
material, regardless of the actions of any third party, and the 
applicant is not under a duty to bring such information to the 
attention of the 

[[Page 42360]]
Office if it is not material, again regardless of the actions of any 
third party. In either instance, the third party's actions have no 
bearing on whether the applicant is in compliance with Sec. 1.56. 
Therefore, no change to Sec. 1.56 is being proposed.
    Comment 10: One comment indicated that Sec. 1.56 should be modified 
or abolished. Where information is brought to the attention of the 
applicant after allowance, the applicant should be considered to have 
met his or her duty of disclosure under Sec. 1.56 if the applicant 
simply chooses to permit the patent to issue, as the public can take 
care of itself through reexamination or whatever opposition proceedings 
are instituted.
    Response: As indicated supra, no change to Sec. 1.56 is being 
proposed. In addition, the Office is proposing to limit third party 
protest procedures, and is not proposing to develop any procedures 
amounting to pre-grant opposition. Since the Office is continuing the 
ex parte examination of applications, the proposed modification or 
abolition of Sec. 1.56 is not considered appropriate.
    Comment 11: One comment indicated that an applicant should be 
allowed to request early publication.
    Response: Section 1.306(d) is being proposed to provide for 
petitions requesting early publication.
    Comment 12: One comment indicated that the Office should require 
that the text of all applications be filed in digital form, and the 
publication of applications should be purely digital, i.e., that Office 
should not print any publication.
    Response: 35 U.S.C. 22 provides that ``[t]he Commissioner may 
require papers filed in the Patent and Trademark Office to be printed 
or typewritten.'' Therefore, the Office does not currently have the 
authority to require that application papers be submitted in digital 
form. The Office is considering the legislative and regulatory changes 
that would be necessary to permit purely digital filing of application 
papers; however, requiring all applicants to submit application papers 
in digital form at this time would place an unnecessary burden on those 
applicants lacking word-processing resources. In addition, the Office 
received a substantial number of comments requesting a printed 
publication containing more information, as well as a number of 
comments opposing the promulgation of any regulations concerning a 
standard application format which were in excess of EPO and PCT 
regulations and not necessary to 18-month publication.
    Comment 13: One comment indicated that the Office should clearly 
define or eliminate the ``formal'' pre-examination search requirement 
in MPEP 708.02.
    Response: MPEP 708.02(VIII) provides that an application may be 
granted special status under the condition that, inter alia, the 
applicant:

    Submits a statement that a pre-examination search was made, and 
specifying whether by the inventor, attorney, agent, professional 
searchers, etc., and listing the field of search by class and 
subclass, publication, Chemical Abstracts, foreign patents, etc. A 
search made by a foreign patent office satisfies this requirement.

    This definition of a pre-examination search is reasonably clear as 
to what actions are necessary for an applicant to have satisfied this 
requirement of MPEP 708.02(VIII), and the requirement for a pre-
examination search is basic to the justification for granting special 
status to an application on that basis. No changes to 37 CFR 1.102 are 
being proposed.
    Comment 14: One comment indicated that the publication of 
applications at 18 months will create a security review problem, 
especially where a nonprovisional, i.e., 35 U.S.C. 111(a), application 
claiming the benefit of a prior provisional application not subject to 
a secrecy order contains additional material which must be reviewed. 
Therefore, the Office should require that any nonprovisional 
applications claiming the benefit of a prior provisional application 
indicate any additional material by underlining and bracketing.
    Response: Provisional applications will increase the number of 
applications requiring security screening. All provisional applications 
will require security screening immediately after filing in the same 
manner as nonprovisional applications due to the licensing provision of 
35 U.S.C. 184. Any subsequent U.S. patent application claiming the 
benefit of a prior provisional application will also require security 
screening unless it is evident on its face that no additional subject 
matter is contained in the application beyond that in the provisional 
application. It would be beneficial for the applicant to provide this 
information to the Office upon filing of the nonprovisional 
application. Thus, the Office is considering suggesting that applicants 
employ a standard application transmittal letter similar to the 
standard transmittal letter for transmitting an international 
application to the United States Receiving Office (PTO-1382). This 
standard transmittal letter would indicate, inter alia: (1) any 
difference between a provisional application and a nonprovisional 
application claiming the benefit of the provisional application; (2) 
the residence of the inventor(s) to avoid the unnecessary screening of 
foreign origin applications; and (3) any Government interests in the 
application, which applications should be screened through contract 
provisions.
    Comment 15: One comment indicated that the Office should 
automatically place a secrecy order on any nonprovisional application 
in which the prior provisional application was under a secrecy order.
    Response: The Office does not have the authority to impose a 
secrecy order without a specific recommendation from a defense agency. 
35 U.S.C. 181. Additionally, all secrecy orders include the provision 
that any other patent application already or hereafter filed in this or 
any foreign country which contains any significant part of the subject 
matter of the application under secrecy order also falls within the 
scope of the secrecy order and must be brought to the immediate 
attention of Licensing and Review. See Sec. 5.2(d). All papers 
pertaining to such applications must be filed under the provisions of 
Sec. 5.33, i.e., to the attention of Licensing and Review. Thus, the 
applicant is obligated to maintain proper security of any 
nonprovisional application that claims benefit of a prior provisional 
application under a secrecy order.
    Comment 16: One comment expressed concern that the defense agencies 
may not have sufficient time to complete national security review of 
applications made available to them under 35 U.S.C. 181 prior to 
publication at 18 months from the earliest filing date for which a 
benefit is sought, and suggested that applications not be published 
until they have been cleared by the defense agencies.
    Response: H.R. 1733, if enacted, would provide for withholding an 
application from publication beyond 18 months from the earliest filing 
date for which a benefit is sought if the application is under a 
secrecy order or abandoned. There is no provision for delaying the 
publication of an application until a completion of all reviews under 
35 U.S.C. 181. In addition, 35 U.S.C. 184 authorizes foreign filing of 
an application without the need for a license once the application has 
been on file for at least six (6) months. In view of 35 U.S.C. 184, the 
defense agencies must complete all security reviews within six (6) 
months of filing to prevent public disclosure. Thus, security review 
must be completed within six (6) months of the actual U.S. filing date. 
For those 

[[Page 42361]]
applications due for publication prior to six (6) months from the 
actual filing date, e.g., those claiming the benefit of an earlier 
application filed more than 18 months prior and those which a petition 
for early publication has been granted, considerations of national 
security mandate a limited delay in publication. The Office will not 
pass an application for publication that is still under review by a 
defense agency unless it has been on file for at least six (6) months 
and the defense agency has been provided a minimum of three (3) months 
to review the application.
    Comment 17: One comment indicated that the digitized images of the 
application file contents should be available in magnetic tape form in 
the morning of the day of publication.
    Response: Digitized images of the Patent Application Notice and 
Technical Contents Publication will be available in magnetic tape form 
for a fee to all parties as soon as possible after publication similar 
to the way in which digitized images of granted patents are provided, 
assuming that there is interest in such products.
    Comment 18: One comment indicated that it is unclear as to whether 
an examiner can cite the Patent Application Notice, and whether the 
examiner will be required to supply the full application specification.
    Response: When an examiner cites a published application, a copy of 
the Technical Contents Publication will be provided with the Office 
action under the same conditions that a copy of the entire patent of 
any cited patent would currently be provided. That is, where an 
examiner would provide only those portions of a patent relied upon, 
rather than a copy of the entire patent due to its size, i.e., in 
instances of jumbo patents, the examiner would similarly be expected to 
provide only those portions of a published application relied upon in 
instances of jumbo applications.
    Comment 19: One comment indicated that the entire application as 
filed should be published, otherwise the abandoned published 
application must be permanently stored in a manner that would permit 
on-site retrieval.
    Response: The Technical Contents Publication of any published 
application will be electronically available, without any necessity for 
retrieval of the actual application file. Therefore, a printed 
publication of the application-as-filed would not provide any 
information not electronically available. Nevertheless, the actual file 
of an abandoned application may be readily obtained regardless of where 
it is stored.
    Comment 20: One comment indicated that the 18-Month Publication 
Notice did not set forth the capacity of Patent and Trademark 
Depository Libraries (PTDLs) to: (1) Collect fees, (2) provide 
librarians of assistance, and (3) house new publications.
    Response: Each PTDL sets its own service standard procedures. Any 
customer must directly contact the PTDL to ascertain its customer 
service standards and requirements. Nevertheless, as the Office 
proposes to publish only a Patent Application Notice, rather than the 
entire application-as-filed, in printed form, and further proposes to 
provide the Patent Application Notices and Technical Contents 
Publications to PTDLs through CD-ROM collections of facsimile images, 
this publication of applications would appear to alleviate, rather than 
exacerbate, any publication storage housing problems.
    Comment 21: One comment indicated that the Office should provide a 
first Office action on the merits in all patent applications within 14 
months of the actual filing date of the application in the United 
States.
    Response: The ability of the Office to process application within 
any established time frame is entirely dependent upon the staff and 
resources allocated by Congress, the Office of Management and Budget 
(OMB), and the Department of Commerce (DoC). In January of 1995, the 
first Office action was mailed within 14 months of the actual filing 
date of the application in the United States in ninety-two (92) percent 
of all applications in which a first Office action was mailed. Any 
applicant who absolutely needs a first Office action on the merits 
mailed within 14 months of the actual filing date of the application 
should consider a petition to make special using the special examining 
procedure for certain new applications set forth in MPEP 708.02(VIII). 
In addition, any independent inventor meeting the requirements set 
forth in 35 U.S.C. 122(b)(2) and Sec. 1.306(e), as proposed, may wish 
to consider filing the application with a petition under Sec. 1.306(e).
    Comment 22: One comment noted the current procedure of permitting 
applicants to submit trade secret material and later expunge the 
material if it is not necessary to patentability, and indicated that 
new procedures should be implemented in the content of pre-grant 
publication of pending applications.
    Response: The current procedures for the treatment of petitions to 
expunge trade secret, proprietary, or protective order material are set 
forth in MPEP 724.05. Applicants are cautioned, in MPEP 724.05, that in 
instances in which a decision on the petition is not made prior to the 
date on which the application issues as a patent, any material in the 
application file will remain open to public inspection, and, as such, 
petitions to expunge must be filed as soon as possible. Under an 18-
month publication system, any material in the application file on the 
date the application is published would likewise remain open to public 
inspection. However, as petitions to expunge are considered under 
Sec. 1.182, i.e., petitions not otherwise provided for, no change to 
the rules of practice regarding petitions to expunge is being proposed.
Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Parts 1, 3 and 5, are 
proposed to be amended as follows:
    Section 1.4(a), as proposed, would add Patent Application Notices 
and Technical Contents Publications to those services and facilities 
which correspondence with the Office may comprise.
    Section 1.5(a), as proposed, would provide that any letter 
concerning an application must identify on the top page in a 
conspicuous location, the application number (consisting of the series 
code and the serial number) or serial number and filing date assigned 
to that application by the Office, or the international application 
number of the international application, regardless of whether the 
application is a published application. That is, the identification 
required for a pending or abandoned application would not change due to 
its status as a published application.
    Section 1.5(f), as proposed, would provide that a paper concerning 
a provisional application must identify the application as such and by 
the application number.
    Section 1.5(g), as proposed, would provide that a paper relating to 
a Patent Application Notice should identify it as such and by the 
Patent Application Notice number. That is, a paper concerning a 
published application must identify the application by application 
number, not Patent Application Notice number; however, a paper 
concerning the Patent Application Notice per se must identify it by 
Patent Application Notice number.
    Section 1.9(a), as proposed, would define an international 
application in subparagraph (a)(4), rather than in paragraph (b).
    Section 1.9(b), as proposed, would now define a published 
application as an application for patent which has 

[[Page 42362]]
been published pursuant to 35 U.S.C. 122(b).
    A new Sec. 1.9(h), as proposed, would define national security 
classified as specifically authorized under criteria established by Act 
of Congress or Executive Order to be kept secret in the interest of 
national defense or foreign policy and in fact properly classified 
pursuant to Act of Congress or Executive Order.
    Section 1.11, as proposed, would provide that, like an issued 
patent or a statutory invention registration, the specification, 
drawings, and all papers relating to the case in the file of an 
abandoned published application would be open to inspection by the 
public. Section 1.11, as proposed, would further provide that a copy of 
the specification, drawings, and all papers relating to the case in the 
file of any published application, a patent, or statutory invention 
registration may be obtained upon the payment of the fee set forth in 
Sec. 1.19(b)(2). That is, while the actual application file of an 
abandoned published application, patent, and statutory invention 
registration would be available for public inspection, the actual 
application file of a pending published application would not be 
available for public inspection, but a copy of the specification, 
drawings, and all papers relating to a pending published application 
would, upon the payment of the fee set forth in Sec. 1.19(b)(2), be 
provided to any member of the public.
    Section 1.12, as proposed, would provide that the assignment 
records relating to published applications are available and open to 
public inspection at the Office, and copies of those assignment records 
may be obtained upon request and payment of the fee. Section 1.12 would 
further exclude the assignment records of published applications from 
those records that are preserved in confidence. Finally, Sec. 1.12, as 
proposed, would revise paragraph (c) to read ``preserved in confidence 
under Sec. 1.14'' for consistency with Sec. 1.14.
    Section 1.13, as proposed, would provide that, like an issued 
patent, certified and non-certified copies of Patent Application 
Notices, Technical Contents Publications, and the file wrapper and 
contents of published applications would, upon payment of a fee, be 
furnished to any person.
    Section 1.14, as proposed, would revise the title and paragraphs 
(a) and (e) to read ``preserved in confidence'' for consistency with 
the language in 35 U.S.C. 122.
    Section 1.14(a), as proposed, would provide that published 
applications are excluded from those pending and abandoned applications 
which are maintained in confidence. Section 1.14(a), as proposed, would 
further change ``the United States of America has been indicated as a 
Designated State in a published international application'' to ``a 
published international application in which the United States of 
America has been indicated as a Designated State'' for clarity, and add 
``U.S. published application'' to those documents in which 
identification of an application by application number or serial number 
and filing date would entitle the public to status information 
concerning the application. Section 1.14(a), as proposed, would further 
provide that reference to an application in a U.S. published 
application or patent, or identification of an application by 
application number or serial number and filing date in a published 
patent document or a published international application in which the 
United States of America has been indicated as a Designated State would 
entitle the public to the application number, filing date, and status 
information concerning any application claiming the benefit of the 
identified or referenced application. Finally, Sec. 1.14(a), as 
proposed, would replace the phrase ``serial number'' with ``application 
number or serial number and filing date'' since the mere reference to a 
serial number without the series code (application number) or filing 
date would not constitute a reference to a specific single application.
    Section 1.14(b), as proposed, would provide that published 
applications, as well as applications that are referred to in a 
published application, are excluded from those abandoned applications 
which are not open to public inspection. Section 1.14(b), as proposed, 
would further provide that applications that are referred to in 
applications open to public inspection pursuant to this section and 
applications which claim the benefit of an application open to public 
inspection pursuant to this section are also excluded from those 
abandoned applications which are not open to public inspection. 
Finally, Sec. 1.14(b), as proposed, would further remove applications 
that have been published pursuant to 35 U.S.C. 122(b) from those 
abandoned applications that may be destroyed after 20 years from their 
filing date.
    Section 1.16(a), (h) and (g), as proposed, would increase the 
filing fee for an original nonprovisional (35 U.S.C. 111(a)) or reissue 
application to $780 ($390 for small entities), and plant application to 
$540 ($270 for small entities). The filing fee for a design application 
would not be affected by this proposed rule change.
    Section 1.17(i), as proposed, would add petitions under 
Sec. 1.306(d) for early publication of an application, petitions under 
Sec. 1.306(e) for deferred publication of an application, and under 
Sec. 1.701(f) for patent term extension based upon administrative 
delays not specifically provided for to the list of petitions for which 
the fee set forth in Sec. 1.17(i) is required.
    A new Sec. 1.17(t), as proposed, would be added to establish the 
fee for submitting a protest under Sec. 1.291 after publication of an 
application.
    A new Sec. 1.17(u), as proposed, would be added to establish the 
surcharge for accepting a late claim for priority under 35 U.S.C. 
119(a)-(d) or for the benefit of a prior application under 35 U.S.C. 
119(e), 120 or 121 filed during the pendency of the application.
    Section 1.18 (a) and (c), as proposed, would increase the issue fee 
for an original or reissue application to $1280 ($640 for small 
entities), and plant application to $660 ($330 for small entities). The 
issue fee for a design application would not be affected by this 
proposed rule change.
    Section 1.19(a)(1), as proposed, would add Patent Application 
Notices to the documents that the Office would supply in the manner of 
a patent upon payment of a fee.
    A new Sec. 1.19(a)(4), as proposed, would add Technical Contents 
Publications to the documents that the Office would supply upon payment 
of a fee.
    Section 1.19(b)(2), as proposed, would add the file wrapper and 
contents of published applications to the files that the Office would 
supply a copy of upon payment of a fee.
    Current Sec. 1.19(b)(4), as proposed, would be redesignated as 
Sec. 1.19(b)(5), and would add the assignment records of published 
applications to the assignment records that the Office would supply 
upon payment of a fee.
    A new Sec. 1.19(b)(4), as proposed, would provide the fees for a 
certified or uncertified copy of documents contained in a pending 
application. Section 1.19(b)(4)(i), as proposed, would provide that the 
fee for a certified or uncertified copy of the first document contained 
in a pending application would be $75.00. Section 1.19(b)(4)(ii), as 
proposed, would provide that the fee for a copy of each commonly 
requested additional document contained in such pending application 
would be $25.00. That is, while the fee for the first document 
contained in a pending application would be $75.00, the fee for a copy 
of each additional document 

[[Page 42363]]
contained in the same pending application and requested together with 
the first document would be $25.00. Where, however, a person requests a 
first document from a pending published application, and subsequently 
requests an additional document, the additional document was not 
commonly requested with the first document, and the fee for the 
additional document would be $75.00. Nevertheless, the fee for any 
further additional document(s) commonly requested with the additional 
document would be $25.00 per additional document.
    Section 1.19(c), as proposed, would provide that copies of all 
Technical Contents Publications published annually would also be 
provided to libraries upon payment of the fee for copies of all patents 
issued annually.
    Section 1.20(e)-(g), as proposed, would increase the fee for 
maintaining an original or reissue patent in force beyond four years, 
eight years, and twelve years, respectively, to $1020, $2020, and 
$3020, respectively ($510, $1010, and $1510, respectively, for small 
entities).
    Section 1.24, as proposed, would add the purchase of copies of 
Patent Application Notices and Technical Contents Publications to those 
documents for which the coupons set forth therein may be used.
    Section 1.51(a)(1), as proposed, would further provide that a 
complete application comprises, inter alia, an abstract.
    Section 1.52(a), as proposed, would provide that all papers which 
are to become a part of the permanent records of the Office must be 
legibly typed in permanent dark ink in portrait orientation on 
flexible, strong, smooth, non-shiny, durable and white paper. 
Currently, Sec. 1.52(a) permits such papers to be hand-written, and 
does not limit the color of the ink or paper, quality of the paper, or 
orientation of the typing. Section 1.52(a), as proposed, would further 
provide that the application papers must be presented in a form having 
sufficient clarity and contrast between the paper and the typing 
thereon to permit electronic reproduction by use of digital imaging and 
optical character recognition, as well as the direct reproduction 
currently provided for. Section 1.52(a), as proposed, would further 
provide that substitute typewritten papers ``will,'' rather than 
``may,'' be required if the original application papers are not of the 
required quality. As any substitute typewritten papers containing the 
subject matter of the originally filed application papers would 
constitute a substitute specification, the provisions of Sec. 1.125 
governing the entry of a substitute specification would be applicable, 
and Sec. 1.52(a), as proposed, would include a specific reference to 
Sec. 1.125.
    Section 1.52(b), as proposed, would provide that the claims must be 
set forth on a separate sheet. Section 1.72(b) currently provides that 
the abstract must be set forth on a separate sheet. Thus, 
Secs. 1.52(b), as proposed, and 1.72(b) would require that the abstract 
and claims be set forth on a separate sheet. Section 1.52(b), as 
proposed, would further provide that the sheets of paper must be the 
same size and either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 
27.9 cm (8\1/2\ by 11 inches), with a top margin of at least 2.0 cm. 
(\3/4\ inch), a left side margin of at least 2.5 cm. (1 inch), a right 
side margin of at least 2.0 cm. (\3/4\ inch), and a bottom margin of at 
least 2.0 cm. (\3/4\ inch), and that no holes should be provided in the 
paper sheets. Section 1.52(b) currently provides that papers must be 
written on but one side, but this phrase is proposed to be changed to 
``typed on but one side'' to conform to Sec. 1.52(a) which, as 
proposed, would no longer permit hand-written or hand-printed 
(``written or printed'') papers. Section 1.52(b), as proposed, would 
further provide that the lines ``must,'' rather than ``should,'' be 
1\1/2\ or double spaced, and that the pages ``must,'' rather than 
``should,'' be numbered consecutively, starting with page one, with the 
numbers being centrally located above or below the text. Finally, 
Sec. 1.52(b), as proposed, would specifically reference drawings to 
clarify that drawings are part of the application papers, but that the 
standards for drawings are set forth in Sec. 1.84.
    Section 1.52(d), as proposed, would provide that where an 
application is filed in a language other than English, the verified 
English translation of the non-English-language application and the fee 
set forth in Sec. 1.17(k) are required to be filed with the application 
or within such time period as may be set by the Office, and that 
extensions of time pursuant to Sec. 1.136(a) would not be available for 
submitting the English translation.
    Section 1.53(d)(1), as proposed, would further provide that the 
applicant will be given a time period within which to file an abstract 
and claims on a separate sheet, or substitute specification in 
compliance Sec. 1.125 with papers typed on but one side of the paper or 
new sheets of drawings, each of the substitute specification and sheets 
of drawings of sufficient clarity, contrast, and quality, and in a 
proper size and format for electronic reproduction in instances in 
which the application papers did not comply with Secs. 1.52 (a) and 
(b), as proposed, or the drawings were of such poor quality as to 
preclude their digital image scanning into the electronic data base. 
Section 1.53(d)(1), as proposed, would further provide that extensions 
of time pursuant to Sec. 1.136(a) would not be available for filing an 
abstract and claims on a separate sheet, and a substitute specification 
with papers typed on but one side of the paper and sheets of drawings, 
each of sufficient clarity, contrast, and quality and in the proper 
size and format for electronic reproduction.
    Section 1.54(b), as proposed, would provide that the applicant will 
be informed of the application number, filing date, and projected 
publication date on a filing receipt. The phrase ``application serial 
number'' would be changed to ``application number'' for consistency 
with Sec. 1.5(a).
    Section 1.55(a), as proposed, would provide that any claim to 
priority under 35 U.S.C. 119(a)-(d) must be stated within two months of 
filing or within fourteen months of the date of the prior foreign 
application, whichever is later, and must identify the prior foreign 
application by specifying its application number, country, and day, 
month and year of its filing. The proposed amendment to Sec. 1.55, 
however, would not affect claims to priority under 35 U.S.C. 172, and 
would not affect the time periods set forth in Sec. 1.55(a) for the 
perfection of any claim for priority under 35 U.S.C. 119 (a)-(d), i.e., 
the filing of a certified copy of the foreign application.
    Section 1.55(c), as proposed, would provide a procedure for the 
acceptance of claim to priority under 35 U.S.C. 119(a)-(d) presented 
after the time period set in Sec. 1.55(a). The procedure would require 
the filing of a petition during the pendency of the application 
requesting acceptance of the delayed claim, the surcharge set forth in 
Sec. 1.17(u), and a statement that the delay was unintentional.
    Section 1.55(d), as proposed, would provide that the time periods 
set forth in this section, i.e., two months of filing or within 
fourteen months of the filing date of the prior foreign application as 
set forth in Sec. 1.55(a), and during the pendency of the application 
as set forth in Sec. 1.55(c), cannot be extended.
    Section 1.58(b), as proposed, would be removed and reserved as 
unnecessary in view of the proposed amendments to Secs. 1.52 (a) and 
(b).
    Section 1.58(c), as proposed, would delete the sentence ``[i]f it 
is not 

[[Page 42364]]
possible to limit the width of a formula or table to 5 inches (12.7 
cm.), it is permissible to present the formula or table with a maximum 
width of 10\3/4\ inches (27.3 cm.) and to place it sideways on the 
sheet'' and ``[h]and lettering must be neat, clean, and have a minimum 
character height of 0.08 inch (2.1 mm.)'' to conform to the typing and 
paper size and orientation limitations in Secs. 1.52 (a) and (b), as 
proposed. Section 1.58(c), as proposed, would further provide metric 
dimensions with English equivalents in parentheticals, rather than vice 
versa.
    Section 1.60(d), as proposed, would provide that the applicant will 
be given a time period, which is not extendable under Sec. 1.136(a), 
within which to file an abstract and claims on a separate sheet, and a 
substitute specification in compliance with Sec. 1.125 with papers 
typed on but one side of the paper and sheets of drawings, each of 
sufficient clarity, contrast, and quality and in the proper size and 
format for electronic reproduction where the papers of the prior 
application did not comply with Secs. 1.52 (a) and (b), as proposed, or 
the drawings of the prior application were of such poor quality as to 
preclude their digital image scanning into the electronic data base.
    Section 1.62(d), as proposed, would provide that the applicant will 
be given a time period, which is not extendable under Sec. 1.136(a), 
within which to file any substitute specification and drawings required 
under Sec. 1.62(e)(2), discussed infra.
    Section 1.62(e), as proposed, would be subdivided into paragraphs 
(e)(1) and (e)(2) for clarity. Section 1.62(e)(1), as proposed, would 
contain the first two (2) sentences of Sec. 1.62(e) without change. 
Section 1.62(e)(2), as proposed, would provide that a substitute 
specification and drawings would be required when the application being 
filed under Sec. 1.62 is a continuation-in-part application. Section 
1.62(e) currently provides that no copy of the prior application or new 
specification is required, that the filing of a copy of the prior 
application or new specification is in fact considered improper, and 
that a petition with instructions to cancel the copy of the prior 
application or new specification is necessary to obtain the date of 
deposit of the request for an application under Sec. 1.62 as the filing 
date. Section 1.62(e)(2), as proposed, would provide that any new 
specification filed will not be considered part of the original 
application papers, but will be treated as a substitute specification 
in accordance with Sec. 1.125.
    Section 1.62(f), as proposed, would amend ``35 U.S.C. 122'' to read 
``35 U.S.C. 122(a)'' to reflect the changes in H.R. 1733, if enacted, 
would change ``secrecy'' to ``confidence'' as is found in Sec. 1.14, as 
proposed, and would change ``37 CFR 1.14'' to ``Sec. 1.14'' for 
consistency.
    Section 1.72(b), as proposed, would provide that the abstract 
should be prior to the first page of the specification, rather than 
following the claims, to conform to Sec. 1.77, as proposed.
    Section 1.75, as proposed, would include an amendment to paragraph 
(g), and would add two new paragraphs. Section 1.75(g), as proposed, 
would add the phrase ``the least restrictive claim should be presented 
as claim number 1'' to paragraph (g) to facilitate the selection of a 
representative claim. Section 1.75(h), as proposed, would provide that 
the claim or claims must be set forth on a separate sheet. Section 
1.75(i), as proposed, would provide that where a claim sets forth a 
plurality of elements or steps, each element or step of the claim 
should be separated by a line indentation to facilitate the digital 
image and/or OCR scanning of the claim into the electronic data base.
    Section 1.77, as proposed, would provide that the elements of the 
application, if applicable, should appear in the following order: (1) 
Utility Application Transmittal Form; (2) Fee Transmittal Form; (3) 
abstract of the disclosure; (4) title of the invention; or an 
introductory portion stating the name, citizenship, and residence of 
the applicant, and the title of the invention may be used; (5) cross-
reference to related applications; (6) statement regarding federally 
sponsored research or development; (7) reference to a ``Microfiche 
appendix; (8) background of the invention; (9), brief summary of the 
invention; (10) brief description of the several views of the drawing; 
(11), detailed description; (12) claim or claims; (13) drawings; (14) 
executed oath or declaration; and (15) sequence listing. The phrase 
``if applicable'' is proposed to be inserted in the heading, rather 
than associated with any particular listed element, to clarify that 
Sec. 1.77 does not per se require that an application include all of 
the listed elements, but merely provides that any listed element 
included in the application should appear in the order set forth in 
Sec. 1.77. Section 1.77, as proposed, would further provide that the 
(1) abstract of the disclosure; (2) title of the invention; (3) cross-
reference to related applications; (4) statement regarding federally 
sponsored research or development; (5) background of the invention; (6) 
brief summary of the invention; (7) brief description of the several 
views of the drawing; (8) detailed description; (9) claim or claims; 
and (10) sequence listing, should appear in upper case, without 
underlining or bold type, as section headings, and if no text follows 
the section heading, the phrase ``Not Applicable'' should follow the 
section heading. Finally, Sec. 1.77, as proposed, would be amended to 
change the reference to Sec. 1.96(b) in Sec. 1.77(c)(2), 
Sec. 1.77(a)(7) as proposed, to Sec. 1.96(c) for consistency with 
Sec. 1.96, as proposed.
    Section 1.78(a)(2), as proposed, would provide that any claim to 
the benefit of any prior filed copending nonprovisional application or 
international application designating the United States of America must 
be stated within two months of filing or fourteen months from the 
filing date of the prior application, whichever is later, and must 
include an identification of the prior application by application 
number.
    Section 1.78(a)(3), as proposed, would delete the sentence 
``[s]ince 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 view of the 
proposed amendment in H.R. 1733 to 35 U.S.C. 119(e), the provisions of 
Sec. 1.7 would be applicable to a nonprovisional application claiming 
the benefit of a prior provisional application.
    Section 1.78(a)(4), as proposed, would provide that any claim to 
the benefit of any prior filed copending provisional application must 
be stated within two months of filing or within fourteen months of the 
filing date of the prior application, whichever is later, and must 
include an identification of the prior application by application 
number.
    Section 1.78(a)(5), as proposed, would provide a procedure for the 
acceptance of a delayed claim to priority under 35 U.S.C. 119(e), 120 
or 121. The procedure would require the filing of a petition during the 
pendency of the application requesting acceptance of the delayed claim, 
the surcharge set forth in Sec. 1.17(u), and a statement that the delay 
was unintentional.
    Section 1.78(a)(6), as proposed, would provide that the time 
periods set forth in this paragraph, i.e., two months of filing or 
within fourteen months of the filing date of the prior application as 
set forth in Secs. 1.78 (a)(2) and (a)(4), and during the pendency of 
the application 

[[Page 42365]]
as set forth in Sec. 1.78(a)(5), cannot be extended.
    Section 1.78(c), as proposed, would change ``two or more 
applications or an application and a patent'' to ``an application or a 
patent under reexamination and an application or a patent'' such that 
the provisions of Sec. 1.78(c) will also be applicable to a patent 
under reexamination. Section 1.78(c), as proposed, would further 
correct ``inventors and owned by the same party contain conflicting 
claims'' to read ``inventors are owned by the same party and contain 
conflicting claims.''
    Section 1.78(d), as proposed, would change ``obviousness-type 
double patenting rejection'' to ``non-statutory double patenting 
rejection'' as current examining procedures authorize non-obviousness-
type double patenting rejections, as well as obviousness-type double 
patenting rejections (MPEP 804(II)), and either may be obviated by 
filing a terminal disclaimer in accordance with Sec. 1.321(b). Section 
1.78(d), as proposed, would further change each instance of 
``application'' to ``application or a patent under reexamination'' for 
consistency with Sec. 1.321(b) and to clarify that double patenting is 
a proper consideration in reexamination (Ex parte Obiaya, 227 USPQ 58, 
60-61 (Bd. Pat. App. & Inter. 1985)), and that a non-statutory double 
patenting rejection in a patent under reexamination may be obviated by 
filing a terminal disclaimer in accordance with Sec. 1.321(b).
    Section 1.84(c), as proposed, would provide that a reference to the 
application number, or, if an application number has not been assigned, 
the inventor's name, may be included in the left-hand corner of the 
drawing sheet, provided that reference appears within 1.5 cm. (\9/16\ 
inch) from the top of the sheet. As the back side of a drawing sheet 
will not be scanned into the electronic data base, an applicant can 
include other identifying indicia on the back side the drawing sheet.
    Section 1.84(f), as proposed, would provide that the size of all 
drawing sheets in an application must be either 21.0 cm. by 29.7 cm. 
(DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches) to conform 
to the requirement in Sec. 1.52(b) concerning papers in an application.
    Section 1.84(g), as proposed, would be amended to delete the margin 
requirements for the sheet sizes that would no longer be acceptable if 
the proposed change to Sec. 1.84(f) were adopted. Section 1.84(g), as 
proposed, would be further amended to provide that, to facilitate 
digital image scanning of the drawing sheets, the sheets should have 
scan targets (cross-hairs) on two cater-corner margin corners. Finally, 
Sec. 1.84(g), as proposed, would increase the bottom and side margins 
such that each sheet must include a top margin of at least 2.5 cm. (1 
inch), a left side margin of at least 2.5 cm. (1 inch), a right side 
margin of at least 1.5 cm. (\9/16\ inch), and a bottom margin of at 
least 1.0 cm. (\3/8\ inch), thereby leaving a sight no greater than 
17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing 
sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6\15/16\ by 
9\5/8\ inches) on 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inch) drawing 
sheets.
    Section 1.84(j), as proposed, would provide that one of the views 
should be suitable for publication in the Patent Application Notice, 
and the Gazette of Patent Application Notices, as well as the Official 
Gazette, as the illustration of the invention.
    Section 1.84(x), as proposed, would be amended to delete the 
provisions indicating the proper location for holes in a drawing sheet, 
and provide that no holes should be provided in the drawing sheets.
    Section 1.85, as proposed, would provide that drawings must be 
suitable for ``electronic'' reproduction ``by digital imaging'' before 
being admitted for examination. As discussed supra, as a drawing figure 
will be included in the Gazette Entry in the Gazette of Patent 
Application Notices and the Patent Application Notice, drawings 
suitable for electronic reproduction by digital imaging would be 
necessary for the initial processing of the application.
    Section 1.96, as proposed, would be amended to designate the text 
preceding current paragraph (a) as paragraph (a), and would redesignate 
current paragraphs (a) and (b) as paragraphs (b) and (c), respectively. 
New Sec. 1.96(a), as proposed, would be further amended to insert a 
period between ``specification'' and ``[a] computer,'' to change 
``these rules'' to ``this section,'' and to change ``may be submitted 
in patent applications in the following forms'' to ``may be submitted 
in patent applications as set forth in paragraphs (b) and (c) of this 
section.
    New Sec. 1.96(b), as proposed, would be further amended to change 
the sentences ``[t]he listing may be submitted as part of the 
specification in the form of computer printout sheets (commonly 14 by 
11 inches in size) for use as ``camera ready copy'' when a patent is 
subsequently printed'' and ``[s]uch computer printout sheets must be 
original copies from the computer with dark solid black letters not 
less than 0.21 cm high, on white, unshaded and unlined paper, the 
printing on each sheet must be limited to an area 9 inches high by 13 
inches wide, and the sheets should be submitted in a protective cover'' 
to ``[a]ny listing submitted as part of the specification must be 
original copies from the computer with dark solid black letters not 
less than 0.21 cm high, on white, unshaded and unlined paper, and the 
sheets should be submitted in a protective cover,'' to delete the 
sentence ``[w]hen printed in patents, such computer printout sheets 
will appear at the end of the description but before the claims and 
will usually be reduced about \1/2\ in size with two printout sheets 
being printed as one patent specification page,'' and to delete the 
phrase ``if the copy is to be used for camera ready copy.'' Section 
1.96(a)(1), new Sec. 1.96(b)(1) as proposed, currently provides that 
the requirements of Sec. 1.84 apply to computer program listings 
submitted as sheets of drawings, and Sec. 1.96(a)(2), new 
Sec. 1.96(b)(2) as proposed, currently provides that the requirements 
of Sec. 1.52 apply to computer program listings submitted as part of 
the specification. Section 1.52(b), as proposed, would require that the 
sheets of paper be the same size and either 21.0 cm. by 29.7 cm. (DIN 
size A4) or 21.6 cm. by 27.9 cm (8\1/2\ by 11 inches), with a top 
margin of at least 2.0 cm. (\3/4\ inch), a left side margin of at least 
2.5 cm. (1 inch), a right side margin of at least 2.0 cm. (\3/4\ inch), 
and a bottom margin of at least 2.0 cm. (\3/4\ inch), and Sec. 1.52(a), 
as proposed, would require that application papers be legibly typed in 
permanent dark ink in portrait orientation.
    New Sec. 1.96(c), as proposed, would be amended to change the 
references to Sec. 1.77(c)(2) in new Sec. 1.96(c) to Sec. 1.77(a)(7) 
for consistency with Sec. 1.77, as proposed, to change ``may'' and 
``should'' to ``must,'' to delete the sentence ``[a]ll computer program 
listings submitted on paper will be printed as part of the patent,'' to 
relocate the phrase ``except as modified or clarified below'' in 
subsection (c)(2), to change the phrase ``computer-generated 
information submitted as an appendix to an application for patent shall 
be in the form of microfiche in accordance with the standards'' to 
``computer-generated information submitted as a ``microfiche appendix'' 
to an application shall be in accordance with the standards'' for 
clarity, to change to sentences ``[e]ither Computer-Output-Microfilm 
(COM) ouput or copies of photographed paper copy may be submitted'' and 
``[i] the former case, NMA standards MS1 and MS2 apply; in 

[[Page 42366]]
the latter case, standard MS5 applies'' to ``[c]omputer-Output-
Microfilm (COM) ouput may be submitted in accordance with either NMA 
standard MS1 or MS2,'' to change ``serial number'' to ``application 
number,'' and to provide metric dimensions with English equivalents in 
parentheticals, rather than vice versa.
    Section 1.97(a)-(d), as proposed, would be amended to include the 
phrase ``for an applicant for patent or for reissue of a patent, or an 
owner of a patent under reexamination'' in paragraph (a) and ``by the 
applicant or patent owner'' to clarify that Sec. 1.97 is not available 
for any third party seeking to have information considered in a pending 
application. Any third party seeking to have information considered in 
a pending application must proceed under Secs. 1.291 or 1.292, both 
discussed infra. Section 1.97(c), as proposed, would be further amended 
to correct the phrase ``certification as specified in paragraph (3) of 
this section'' to read ``certification as specified in paragraph (e) of 
this section.''
    Section 1.98, as proposed, would provide that any Patent 
Application Notice or Technical Contents Publication listed in an 
information disclosure statement must be identified by applicant, 
Patent Application Notice number or Technical Contents Publication 
number and publication date. Section 1.98, as proposed, would also 
limit those U.S. patent applications of which a copy need not be 
included to unpublished applications.
    Section 1.107, as proposed, would provide that if domestic 
published applications are cited by the examiner, their Technical 
Contents Publication number, publication date, the names of the 
applicants must be stated. Section 1.107, as proposed, would be amended 
to delete the phrase ``and the classes of inventions.''
    Section 1.108, as proposed, would further except published 
applications from those abandoned applications that will not be cited 
as references.
    Section 1.131(a), as proposed, would include pending or patented 
U.S. published applications which substantially show or describe but do 
not claim the same patentable invention, as defined in Sec. 1.601(n), 
and abandoned U.S. published applications as references to which the 
provisions of Sec. 1.131 apply. Pending or patented U.S. applications 
would be treated in the same manner that U.S. patents are currently 
treated, i.e., Sec. 1.131 would apply only if the pending or patented 
application does not claim the same patentable invention. Abandoned 
U.S. published applications would be treated in the manner that foreign 
patents or printed publications are currently treated. As U.S. 
published applications, either pending, abandoned or patented, may 
constitute prior art under 35 U.S.C. 102(a) or (e), this change, and 
the change to Sec. 1.132 infra, are necessary to accommodate such 
references.
    In a Notice of Proposed Rulemaking published in the Federal 
Register at 59 FR 49876 (September 30, 1994) and in the Official 
Gazette at 1167 Off. Gaz. Pat. Office 96-97 (October 25, 1994) 
(Sec. 1.131 Notice of Proposed Rulemaking), Sec. 1.131(a) was proposed 
to be amended to, inter alia, broaden its application to instances in 
which inventions of a pending application or patent under reexamination 
and a patent held by a single party are not identical as set forth in 
35 U.S.C. 102, but not patentably distinct, and changes to Sec. 1.131 
were adopted as a final rule. 60 FR 21043 (May 1, 1995); 1174 Off. Gaz. 
Pat Office 155 (May 30, 1995). An amendment to Sec. 1.131(a) was 
proposed in the Sec. 1.131 Notice of Proposed Rulemaking to avoid a 
potential conflict between Sec. 1.131(a) and Sec. 1.602(a) in instances 
in which Sec. 1.131(a) prohibits the filing of affidavits or 
declarations thereunder when the same patentable invention as defined 
in Sec. 1.601(n) is being claimed, but Sec. 1.602(a) prohibits, unless 
good cause is shown, the declaration or continuance of an interference 
when the application(s) and patent are owned by a single party. While 
this conflict between two pending applications can be avoided by filing 
a continuation-in-part application merging the conflicting inventions 
into a single application, this conflict can result in hardship where 
there is a pending application and an issued patent that can no longer 
be merged by filing a continuation-in-part application.
    Specifically, the proposed amendment to Sec. 1.131(a) in the 
Sec. 1.131 Notice of Proposed Rulemaking would have permitted the 
filing of an affidavit or declaration thereunder in a pending 
application or patent under reexamination to avoid a rejection under 35 
U.S.C. 103 based upon a patent which qualifies as prior art only under 
35 U.S.C. 102(a) or (e) where the pending application or patent under 
reexamination and patent upon which the rejection was based were owned 
by a single party. This proposed amendment to Sec. 1.131(a) in the 
Sec. 1.131 Notice of Proposed Rulemaking, however, was withdrawn in the 
final rule to permit further study.
    Section 1.131(a), as currently proposed, would permit a showing of 
prior invention in a pending application or patent under reexamination 
to avoid a rejection under 35 U.S.C. 103 based upon a patent which 
qualifies as prior art only under 35 U.S.C. 102(a) or (e), where the 
application or patent under reexamination and the patent upon which the 
rejection is based are both owned by a single party, so long as the 
invention claimed in the pending application or patent under 
reexamination and in the other patent are not identical as set forth in 
35 U.S.C. 102. Section 1.131(a)(3), as proposed, would not require 
common ownership at the time the latter invention was made, but 
consistent with Sec. 1.602(a), would require only that there be common 
ownership when the Sec. 1.131 affidavit or declaration is under 
consideration.
    Where the patent upon which the rejection is based is not prior art 
under 35 U.S.C. 102 (a) or (e), but is prior art only under 35 U.S.C. 
102(f) or (g), to the pending application or patent under 
reexamination, and the invention claimed in the pending application or 
patent under reexamination is not identical as set forth in 35 U.S.C. 
102, the issue is whether the subject matter of the other patent and 
the invention claimed in the pending application or patent under 
reexamination were, at the time the invention was made, owned by the 
same person or subject to an obligation of assignment to the same 
person, i.e., whether the patent upon which the rejection is based is 
disqualified as prior art under the second paragraph of 35 U.S.C. 103, 
and Secs. 1.78 (c) and (d) are applicable to this issue. Where, 
however, the patent upon which the rejection is based is prior art 
under 35 U.S.C. 102(a) or (e), it cannot be disqualified as prior art 
under the second paragraph of 35 U.S.C. 103, and as such Secs. 1.78 (c) 
and (d) are inapplicable. Section 1.131(a)(3), as currently proposed, 
would permit a showing of prior invention in an application or patent 
under reexamination where the application or patent under reexamination 
and patent upon which the rejection was based were owned by a single 
party.
    As the conflict between two pending applications can be avoided by 
filing a continuation-in-part application merging the conflicting 
inventions into a single application, Sec. 1.131(a)(3), as proposed, 
provides only for a showing of prior invention to avoid a rejection 
based upon a patent. In situations in which two pending applications 
claiming patentably indistinct but not identical inventions are held by 
a single party but cannot be merged into a single application, 
petitions under Sec. 1.183 will be entertained for waiver of the 
Sec. 1.131 

[[Page 42367]]
requirement that the rejection be based upon a patent.
    Section 1.131, as proposed, would not affect a statutory or non-
statutory double patenting rejection. Specifically, affidavits or 
declarations under Sec. 1.131 will continue to be ineffective where the 
claims of the pending application or the patent undergoing 
reexamination are rejected under 35 U.S.C. 101 for double patenting and 
the claims of the pending application or the patent under reexamination 
claim the identical invention of a patent. However, where patentably 
indistinct but not identical inventions are claimed, a non-statutory 
double patenting rejection can be overcome by filing an appropriate 
terminal disclaimer.
    Section 1.132, as proposed, would change ``domestic'' to ``U.S.'' 
for consistency with Sec. 1.131, and would include U.S. pending 
published applications which substantially show or describe but do not 
claim the invention, and abandoned published applications as references 
to which the provisions of Sec. 1.132 apply for the reasons discussed 
supra.
    Section 1.136(a), as proposed, would provide that extensions under 
Sec. 1.136(a) are not available where the response is to a requirement 
for an English translation, an abstract or claims on a separate sheet, 
or substitute specification or sheets of drawings of sufficient 
clarity, contrast, and quality and in the proper size and format for 
electronic reproduction submitted pursuant to Secs. 1.52(d), 1.53(d), 
1.60(d), 1.62(d), 1.494(c), or 1.495(c), or an oath or declaration 
submitted pursuant to Secs. 1.494(c) or 1.495(c).
    Section 1.138, as proposed, would add ``or publication'' to the end 
of the sentence that ``express abandonment of the application may not 
be recognized by the Office unless it is actually received by 
appropriate officials in time to act thereon before the date of issue'' 
to clarify that the express abandonment must be filed in sufficient 
time to permit its correlation with the application file and the 
termination of the publication process. Section 1.138, as proposed, 
would further provide that an applicant seeking to abandon an 
application to avoid publication of the application must submit a 
proper letter of express abandonment at least two months prior to the 
projected date of publication to allow sufficient time to permit the 
appropriate officials to recognize the abandonment and remove the 
application from the publication process, and that unless an applicant 
receives written acknowledgement of the letter of express abandonment 
prior to the projected date of publication, applicant should expect 
that the application will be published in due course.
    Section 1.154, as proposed, would provide that the elements of a 
design application, if applicable, should appear in the following 
order: (1) Design Application Transmittal Form; (2) Fee Transmittal 
Form; (3) preamble, stating name of the applicant and title of the 
design; (4) cross-reference to related applications; (5), statement 
regarding federally sponsored research or development; (6) description 
of the figure or figures of the drawing; (7) description; (8) claim; 
(9) drawings or photographs; and (10) executed oath or declaration. The 
phrase ``[t]he following order of arrangement should be observed in 
framing design specifications'' is proposed to be changed to ``[t]he 
elements of the design application, if applicable, should appear in the 
following order'' to clarify that Sec. 1.154 does not per se require 
that an application include all of the listed elements, but merely 
provides that any listed element included in the application should 
appear in the order set forth in Sec. 1.154.
    A new Sec. 1.163(c), as proposed, would be added to provide that 
the elements of a plant application, if applicable, should appear in 
the following order: (1) Plant Application Transmittal Form; (2) Fee 
Transmittal Form; (3) abstract of the disclosure; (4) title of the 
invention; (5) cross-reference to related applications; (6) statement 
regarding federally sponsored research or development; (7) background 
of the invention; (8) brief summary of the invention; (9) brief 
description of the drawing; (10) detailed botanical description; (11) 
claim; (12) drawings (in duplicate); (13) executed oath or declaration; 
and (14) Plant Color Coding Sheet. The phrase ``if applicable'' is 
proposed to be included in the heading, rather than associated with any 
particular listed element, to clarify that Sec. 1.163 does not per se 
require that an application include all of the listed elements, but 
merely provides that any listed element included in the application 
should appear in the order set forth in Sec. 1.163.
    A new Sec. 1.163(d), as proposed, would be added to define a plant 
color coding sheet. A plant color coding sheet is a sheet that 
specifies a color coding system as designated in a recognized color 
dictionary, and lists every plant structure to which color is a 
distinguishing feature and the corresponding color code which best 
represents that plant structure. The plant color coding sheet will 
provide a means for applicants to uniformly convey detailed color 
characteristics of the plant. Providing this information is a 
systematic manner will facilitate the examination of the application.
    Section 1.291, as proposed, would provide that a protest must be 
filed within two months of the date the application is published or 
prior to the mailing of a Notice of Allowance, whichever occurs first, 
to be considered timely, and that any protest submitted after 
publication must be accompanied by the fee set forth in Sec. 1.17(t). 
In addition, Sec. 1.291(a)(2), as proposed, would require that any 
protest filed after the date the application was published be served 
upon the applicant in accordance with Sec. 1.248, i.e., filing two 
copies of the protest in the Office would not be acceptable. As a 
protest cannot be considered subsequent to issuance of the application 
as a patent, Sec. 1.291(b), as proposed, would provide that the protest 
will be considered if the application is still pending when the protest 
and application file is brought before the examiner, i.e., that the 
application was pending at the time the protest was filed would be 
immaterial to its ultimate consideration. Finally, Sec. 1.291, as 
proposed, would further locate the sentences ``[p]rotests raising fraud 
or other inequitable conduct issues will be entered in the application 
file, generally without comment on those issues'' and [p]rotests which 
do not adequately identify a pending patent application will be 
disposed of and will not be considered by the Office'' in paragraph 
(b).
    Section 1.292, as proposed, would be amended to delete the phrase 
``is filed by one having information of the pendency of an 
application'' as applications will no longer necessarily be maintained 
in confidence throughout their entire pendency, and would move the 
requirement for the fee set forth in Sec. 1.17(j) from paragraph (a) to 
paragraph (b) where the conditions for entry of a petition for the 
institution of public use proceedings are set forth. Section 1.292, as 
proposed, would further require that any petition filed after the date 
the application was published be served on the applicant in accordance 
with Sec. 1.248. Finally, Sec. 1.292, as proposed, would provide that a 
petition to institute public use proceedings must be filed within two 
months of the date the application is published or prior to the mailing 
of a Notice of Allowance, whichever occurs first, to be considered 
timely.
    Sections 1.305 through 1.309 are proposed to be added to set forth 
the procedures for the 18-month publication of patent applications.
    Section 1.305, as proposed, would provide that applications may be 

[[Page 42368]]
    withdrawn from publication at the initiative of the Office or upon 
request by the applicant. The basis for the withdrawal of an 
application from publication would be limited to: (1) A mistake on the 
part of the Office, e.g., the application is abandoned or has issued as 
a patent, or the projected publication date is not at 18 months from 
the earliest filing date for which a benefit is sought; (2) the 
application is either national security classified or subject to a 
secrecy order pursuant to 35 U.S.C. 181; or (3) express abandonment of 
the application.
    Section 1.306(a), as proposed, would provide that applications 
under 35 U.S.C. 111(a), 161 or 371 will be published as soon as 
possible after the expiration of a period of 18 months from the filing 
date, including the earliest filing date for which a benefit is sought, 
but excludes applications that: (1) Are national security classified or 
subject to a secrecy order pursuant to 35 U.S.C. 181; (2) have issued 
as a patent; (3) are recognized by the Office as no longer pending, 
i.e., are abandoned; or (4) were previously published through early 
publication.
    Section 1.306(b), as proposed, would provide that the publication 
of an application will include a notice designated as a ``Gazette 
Entry'' containing information such as the application number, filing 
date, title, inventor's name, abstract, a drawing figure, a 
representative claim, and U.S. and IPC classification in a Gazette of 
Patent Application Notices, and a printed publication designated as a 
Patent Application Notice or PAN containing information such as the 
application number, filing date, title, inventor's name, correspondence 
address, abstract, a drawing figure, a representative claim, and U.S. 
and IPC classification. In addition, Sec. 1.306(b), as proposed, would 
provide that the publication of an application will include a document 
designated as a Technical Contents Publication containing the Patent 
Application Notice, and the specification, abstract, claims, and 
drawings of the original application papers. Finally, Sec. 306(b), as 
proposed, would provide that publication would include public access to 
a copy of the specification, drawings, and all papers relating to the 
application file in accordance with Sec. 1.11.
    Section 1.306(c), as proposed, would provide that provisional 
applications under 35 U.S.C. 111(b) shall not be published, and that 
design applications under 35 U.S.C. 171 and reissue applications under 
35 U.S.C. 251 shall not be published pursuant to Sec. 1.306. H.R. 1733, 
if enacted, would not authorize the publication of design applications 
(prior to their issuance as patents) or provisional applications. 
Reissue applications are currently published through the announcement 
in the Official Gazette of the filing of the reissue application, and 
the opening of the application to public inspection in accordance with 
Sec. 1.11(b).
    Section 1.306(d), as proposed, would provide for the early 
publication of applications. Any request for early publication of an 
application should be filed as soon as possible, and must be by way of 
petition, including the fee set forth in Sec. 1.17(i). In addition, any 
application must include an abstract and claims on a separate sheet, 
any substitute specification or drawings required pursuant to 
Secs. 1.53(d), 1.60(d), or 1.62(d), and any English translation 
required pursuant to Sec. 1.52(d). The Office cannot assure publication 
of an application on any certain date, and, as such, requests for 
publication on a date certain will be treated as a request for 
publication as soon as possible. Finally, as H.R. 1733, if enacted, 
would not authorize the publication of provisional applications, no 
consideration will be given to any request for the early publication of 
a provisional application.
    Section 1.306(e), as proposed, would implement the provisions in 
H.R. 1733 (35 U.S.C. 122(b)(2)) for, under limited circumstances, not 
publishing an application under 35 U.S.C. 122(b) until three months 
after an Office action under 35 U.S.C. 132. Section 1.306(e), as 
proposed, would specifically provide that an applicant who is an 
independent inventor and has been accorded status under 35 U.S.C. 41(h) 
in an application that does not claim the benefit of an earlier filing 
date under 35 U.S.C. 119, 120, 121, 365(a) or 365(c) may request that 
the application not be published until three months after an action on 
the merits, and that a petition requesting that the application not be 
published until three months after an action on the merits must be 
submitted on filing, and accompanied by the petition fee set forth in 
Sec. 1.17(i) and a certification that the invention disclosed in the 
application was not or will not be the subject of an application filed 
in a foreign country, which certification must be verified if made by a 
person not registered to practice before the Patent and Trademark 
Office.
    Section 1.307, as proposed, would provide for the delivery of the 
printed publication, i.e., the Patent Application Notice or PAN, to the 
correspondence address of record, which is the manner in which a patent 
is currently delivered to the patentee.
    Section 1.308, as proposed, would provide for the correction of the 
printed publication, but such correction would be granted only for a 
significant mistake made by the Office which is apparent from Office 
records.
    Section 1.315, as proposed, would change ``the attorney or agent of 
record, if there be one; or if the attorney or agent so requests, to 
the patentee or assignee of an interest therein; or, if there be no 
attorney or agent, to the patentee or to the assignee of the entire 
interest, if he so requests'' to ``the correspondence address of 
record. See Sec. 1.33(a)'' for simplicity as patents are currently 
mailed to the patentee at the correspondence address of record.
    Section 1.321(c), as proposed, would change ``double patenting 
rejection'' to ``non-statutory double patenting rejection'' for 
consistency with Sec. 1.78(c), as proposed, and to clarify that the 
filing of a terminal disclaimer is ineffective to overcome a statutory 
double patenting rejection.
    Section 1.492(a), as proposed, would increase the basic national 
fee for international applications entering the national stage under 35 
U.S.C. 371 to: (1) $710 ($355 for a small entity) where an 
international preliminary examination fee as set forth in Sec. 1.482 
has been paid on the international application to the Office; (2) $780 
($390 for a small entity) where no international preliminary 
examination fee as set forth in Sec. 1.482 has been paid to the Office, 
but an international search fee as set forth in Sec. 1.445(a)(2) has 
been paid on the international application to the Office as an 
International Searching Authority; (3) $1040 ($520 for a small entity) 
where no international preliminary examination fee as set forth in 
Sec. 1.482 has been paid and no international search fee as set forth 
in Sec. 1.445(a)(2) has been paid on the international application to 
the Office; (4) $120 ($60 for a small entity) where the international 
preliminary examination fee as set forth in Sec. 1.482 has been paid to 
the Office and the international preliminary examination report states 
that the criteria of novelty, inventive step (non-obviousness), and 
industrial applicability, as defined in PCT Article 33(1) to (4) have 
been satisfied for all the claims presented in the application entering 
the national stage (see Sec. 1.496(b)); and (5) $910 ($455 for a small 
entity) where a search report on the international application has been 
prepared by the European Patent Office or the Japanese Patent Office.
    Section 1.494 (c) and (g), as proposed, would provide that the 
applicant will be given a time period within which to file an abstract 
and claims on a separate 

[[Page 42369]]
sheet, or substitute specification in compliance Sec. 1.125 with papers 
typed on but one side of the paper or new sheets of drawings, each of 
the substitute specification and sheets of drawings of sufficient 
clarity, contrast, and quality, and in a proper size and format for 
electronic reproduction in instances in which the application papers 
did not comply with Secs. 1.52 (a) and (b), as proposed, or the 
drawings were of such poor quality as to preclude their digital image 
scanning into the electronic data base. Section 1.494(c), as proposed, 
would further provide that extensions of time pursuant to Sec. 1.136(a) 
would not be available for filing an English translation, oath or 
declaration, abstract and claims on a separate sheet, and a substitute 
specification with papers typed on but one side of the paper and sheets 
of drawings, each of sufficient clarity, contrast, and quality and in 
the proper size and format for electronic reproduction.
    Section 1.495 (c) and (h), as proposed, would provide that the 
applicant will be given a time period within which to file an abstract 
and claims on a separate sheet, or substitute specification in 
compliance Sec. 1.125 with papers typed on but one side of the paper or 
new sheets of drawings, each of the substitute specification and sheets 
of drawings of sufficient clarity, contrast, and quality, and in a 
proper size and format for electronic reproduction in instances in 
which the application papers did not comply with Secs. 1.52 (a) and 
(b), as proposed, or the drawings were of such poor quality as to 
preclude their digital image scanning into the electronic data base. 
Section 1.495(c), as proposed, would further provide that extensions of 
time pursuant to Sec. 1.136(a) would not be available for filing an 
English translation, oath or declaration, abstract and claims on a 
separate sheet, and a substitute specification with papers typed on but 
one side of the paper and sheets of drawings, each of sufficient 
clarity, contrast, and quality and in the proper size and format for 
electronic reproduction.
    The proposed rules to implement 18-month publication provide that 
extensions of time pursuant to Sec. 1.136(a) are not available for 
submissions which will affect the publication of the application. 
Section 1.53(d)(1), as proposed, does not exclude extensions of time 
pursuant to Sec. 1.136(a) for the filing of an oath or declaration as 
the absence of an oath or declaration for an application filed under 35 
U.S.C. 111(a) does not affect the publication of the application. 
Section 1.306(a), as proposed, does not provide for the publication of 
a national application for patent which resulted from an international 
application until after compliance with 35 U.S.C. 371, and an 
international application is not in compliance with 35 U.S.C. 371 until 
an oath or declaration is filed. See 35 U.S.C. 371(c)(4). Therefore, 
the absence of an oath or declaration will affect the publication of an 
application under 35 U.S.C. 371. Accordingly, Secs. 1.494(c) and 
1.495(c), unlike Sec. 1.53(d)(1), provide that the period for filing 
the oath or declaration cannot be extended pursuant to Sec. 1.136(a) to 
consistently provide that extensions of time pursuant to Sec. 1.136(a) 
are not available for submissions which will affect the publication of 
the application.
    Section 1.497(a), as proposed, would be amended to provide that an 
applicant in an international application must file an oath or 
declaration that: (1) is executed in accordance with either Secs. 1.66 
or 1.68, (2) identifies the specification to which it is directed, (3) 
identifies each inventor and the country of citizenship of each 
inventor, and (4) states that the person making the oath or declaration 
believes the named inventor or inventors to be the original and first 
inventor or inventors of the subject matter which is claimed and for 
which a patent is sought, rather than an oath or declaration in 
accordance with Sec. 1.63, to enter the national stage pursuant to 
Secs. 1.494 or 1.495. Currently, the failure to file an oath or 
declaration in strict compliance with Sec. 1.63 results in non-
compliance with Sec. 1.497, and thus 35 U.S.C. 371, which in turn 
delays the entry of the international application into the national 
stage. To expedite the entry of international applications into the 
national stage, Sec. 1.497(a), as proposed, would require only an oath 
or declaration that is properly executed, identifies the specification 
to which it is directed, and, as required by 35 U.S.C. 115, identifies 
each inventor and the country of citizenship of each inventor and 
states that the person making the oath or declaration believes the 
named inventor or inventors to be the original and first inventor or 
inventors of the subject matter which is claimed and for which a patent 
is sought.
    Section 1.497(b), as proposed, would be subdivided into paragraphs 
(b)(1) and (b)(2). Section 1.497(b)(1), as proposed, would provide that 
the oath or declaration must be made by all of the actual inventors 
except as provided for in Secs. 1.42, 1.43 or 1.47. Section 
1.497(b)(2), as proposed, would change ``[i]f the international 
application was made as provided in Secs. 1.422, 1.423 or 1.425, the 
applicant shall state his or her relationship to the inventor and, upon 
information and belief, the facts which the inventor is required by 
Sec. 1.63 to state'' to ``[i]f the person making the oath or 
declaration is not the inventor (Secs. 1.42, 1.43 or 1.47), the oath or 
declaration shall state the relationship of the person to the inventor 
and, upon information and belief, the facts which the inventor is 
required to state'' such that Sec. 1.497(b), as proposed, would be 
parallel to Sec. 1.64.
    Section 1.497(c), as proposed, would be added to provide that the 
oath or declaration must comply with the requirements of Sec. 1.63. 
Section 1.497(c), as proposed, would further provide that in instances 
in which the oath or declaration does not comply with Sec. 1.63, but 
meets the requirements of Sec. 1.497 (a) and (b), as proposed, the oath 
or declaration will be accepted as complying with 35 U.S.C. 371(c)(4) 
and Secs. 1.494(c) or 1.495(c), thus permitting the application to 
enter the national stage and the assignment of dates under 35 U.S.C. 
102(e) and 371(c). A supplemental oath or declaration in compliance 
with Sec. 1.63, however, will be required in accordance with Sec. 1.67.
    Section 1.701(a), as proposed, would add ``an unusual 
administrative delay by the Office'' to the bases for extension of 
patent term due to prosecution delay. H.R. 1733 provides that the 
Commissioner shall prescribe regulations to govern the particular 
circumstances deemed to be an unusual administrative delay. Section 
1.701(a)(4)(i), as proposed, would set forth the failure to act on a 
reply under Sec. 1.111 or appeal brief under Sec. 1.192 within six 
months of the date it was filed; the failure to act on an application 
within six months of the date of a decision under Sec. 1.196 by the 
Board of Patent Appeals and Interferences where claims stand allowed in 
an application or the nature of the decision requires further action by 
the examiner; and the failure to issue a patent within six months of 
the date that the issue fee was paid and all outstanding requirements 
were satisfied as circumstances constituting a prima facie unusual 
administrative delay. In an application entitled to an extension under 
Sec. 1.701(a)(3), however, any unusual administrative delay during the 
appellate proceeding would be disregarded under Sec. 1.701(a)(4) in 
accordance with the ``not overlapping'' provision in Sec. 1.701(b). 
Requests for patent term extension based upon circumstances not 
specifically set forth in Sec. 1.701(a)(4)(i) as a prima facie unusual 
administrative delay must be specifically requested by petition and 
would be considered on a case-by-case basis. Section 1.701(a), as 
proposed, 

[[Page 42370]]
would further add ``subject to the provisions of this section'' and 
delete the phrase ``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'' from paragraph (a)(3).
    Section 1.701(b), as proposed, would add paragraph (c)(4) to those 
paragraphs summed in calculating the period of extension, and change 
the maximum extension from five years to ten years in accordance with 
H.R. 1733.
    Section 1.701(c), as proposed, would provide that the period of 
delay is the sum of the number of days, if any, in the period of 
unusual delay by the Office. That is, the ordinary delay in processing 
and examining an application would not be included under Sec. 1.701(c), 
as proposed, in determining the extension under Sec. 1.701(b). For 
example, (1) where there was a failure to act on a reply under 
Sec. 1.111 within six months of the date it was filed, the period of 
delay is the number of days in excess of six months, if any, in the 
period beginning on the date a reply under Sec. 1.111 was filed and 
ending on the mailing date of an action in response thereto, (2) where 
there was a failure to act on an appeal brief under Sec. 1.192 within 
six months of the date it was filed, and the application is not 
entitled to an extension under Sec. 1.701(a)(3), the period of delay is 
the number of days in excess of six months, if any, in the period 
beginning on the date an appeal brief under Sec. 1.192 was filed and 
ending on the mailing date of either a notification under Sec. 1.192(d) 
or examiner's answer under Sec. 1.193, and (3) where there was a 
failure to issue a patent within six months of the date that the issue 
fee was paid and all outstanding requirements were satisfied, 
Sec. 1.701(a)(3), the period of delay is the number of days in excess 
of six months, if any, in the period beginning on the date the issue 
fee was paid or all outstanding requirements were satisfied, whichever 
is later, and the date the patent was issued.
    Section 1.701(d), as proposed, would change ``[t]he period of delay 
set forth in paragraph (c)(3)'' to ``[t]he period set forth in 
paragraph (c),'' as the limitation on patent term extension in H.R. 
1733 based upon an applicant's failure to engage in reasonable efforts 
to conclude processing or examination of the application is not limited 
to extension under 35 U.S.C. 154(b)(2), i.e., delays during appellate 
proceedings. Section 1.701(d), as proposed, would further delete ``any 
time during the period of appellate review that occurred before three 
years from the filing date of the first national application for a 
patent presented for examination.'' Public Law 103-465 provides that 
extensions under 35 U.S.C. 154(b)(2) 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, where H.R. 1733 provides only that no patent 
shall be extended under 35 U.S.C. 154(b) that has issued before the 
expiration of three years after the filing date of the application or 
entry of the application into the national stage under 35 U.S.C. 371, 
whichever is later, not taking into account any claim to the benefit of 
the filing date of any application under 35 U.S.C. 120, 121, or 365(c).
    Section 1.701(d), as proposed, would further change ``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'' and ``[i]n 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'' to ``any time during the 
processing or examination of the application, as determined by the 
Commissioner, during which the applicant for patent failed to engage in 
reasonable efforts to conclude processing or examination of the 
application,'' ``[i]n determining whether an applicant failed to engage 
in reasonable efforts to conclude processing or examination of the 
application, the Commissioner may examine the facts and circumstances 
of the applicant's actions during the entire prosecution of the 
application to determine whether the applicant exhibited that degree of 
timeliness as may reasonably be expected from, and which is ordinarily 
exercised by, an applicant for patent seeking to conclude the 
processing or examination of the application,'' and ``[c]ircumstances 
constituting a failure to engage in reasonable efforts to conclude 
processing or examination of the application include: (1) requesting 
suspension of action under Sec. 1.103, and (2) abandonment of the 
application.''
    H.R. 1733 provides that the period of extension under 35 U.S.C. 
154(b) shall be reduced by a period equal to the time during the 
processing or examination of the application leading to the patent in 
which the applicant failed to engage in reasonable efforts to conclude 
processing or examination of the application and that the Commissioner 
shall prescribe regulations establishing the circumstances that 
constitute a failure of an applicant to engage in reasonable efforts to 
conclude processing or examination of an application. Section 
Sec. 1.701(d) specifically sets forth requesting suspension of action 
under Sec. 1.103 and abandonment of the application as examples of 
prima facie failures to engage in reasonable efforts to conclude 
processing or examination of the application. In determining whether an 
applicant engaged in reasonable efforts to conclude processing or 
examination of the application, however, the facts and circumstances of 
applicant's actions during the entire prosecution of the application 
will be considered on a case-by-case basis to determine whether the 
applicant exhibited that degree of timeliness as may reasonably be 
expected from, and which is ordinarily exercised by, an applicant for 
patent seeking to conclude the processing or examination of the 
application. As such, it is not possible to list all of the specific 
circumstances in Sec. 1.701(d). That is, circumstances other than the 
examples specifically set forth Sec. 1.701(d) may, on a case-by-case 
basis, be considered the failure to engage in reasonable efforts to 
conclude the processing or examination of the application.
    A new Sec. 1.701(e), as proposed, would provide that no patent 
shall be extended under this section: (1) beyond the expiration date 
specified in a terminal disclaimer in a patent whose term has been 
disclaimed in such terminal disclaimer, or (2) an instance in which the 
patent issued before the expiration of three years after the filing 
date of the application or entry of the application into the national 
stage under 35 U.S.C. 371, whichever is later, not taking into account 
any claim to the benefit of the filing date of any application under 35 
U.S.C. 120, 121, or 365(c). H.R. 1733 provides these limitations on 
extensions under 35 U.S.C. 154(b).
    A new Sec. 1.701(f), as proposed, would provide that any extension 
of patent term under Sec. 1.701(a)(4) on the basis of an administrative 
delay other than one specifically set forth in Secs. 1.701(a)(4)(i)(A)-
(C) must be requested by petition. Due to the necessity for 
individualized determinations of patent term extensions based upon 
prosecution delay due to an unusual administrative delay by the Office 
not specifically provided for, such extensions of patent term under 
Sec. 1.701(a)(4) must be specifically requested by petition in a timely 
manner. Section 1.701(f), as proposed, would specifically provide 

[[Page 42371]]
that any petition for patent term extension based upon Sec. 1.701(a)(4) 
for an unusual administrative delay by the Office other than one 
specifically set forth in Secs. 1.701(a)(4)(i)(A)-(C) cannot be filed 
prior to the mailing of a notice of allowance under Sec. 1.311 and must 
be accompanied by a statement of the facts involved, the administrative 
delay by the Office to be reviewed, the period of extension requested, 
and the fee set forth in Sec. 1.17(i). The petition may include a 
request that the petition fee be refunded if an extension of the patent 
term under Sec. 1.701(a)(4) is granted.
    Section 1.808(a), as proposed, would provide that upon the 
publishing of the application, all restrictions imposed by the 
depositor on the availability to the public of the deposited material 
will be irrevocably removed, subject to provisions of Sec. 1.808(b).
    Section 3.31, as proposed, would provide that the assignment cover 
sheet may, but need not, include an indication that the assignment 
information is to be printed on the Patent Application Notice. Section 
3.31, as proposed, would further provide that, due to constraints in 
the publication process, any such indication not submitted within two 
months of filing or fourteen months from the earliest filing date for 
which a benefit is claimed, whichever is later, may result in the 
assignment information not being printed on the Patent Application 
Notice.
    Section 5.1, as proposed, would include a new paragraph (c) which 
would provide defense agencies adequate time to complete national 
security review under 35 U.S.C. 181 before an application would be 
released for publication under Sec. 1.306. Specifically, the period for 
completion of a defense agency review would be six (6) months from the 
actual U.S. filing date for applications filed under 35 U.S.C. 111(a) 
or three (3) months from the date the application was made available to 
the defense agency for review, whichever is later.
    Section 5.1, as proposed, would further include a new paragraph (d) 
which would set forth the current practice that applications on 
inventions not made in the United States and on inventions in which the 
Federal Government has a known property interest are not made available 
to defense agencies under Sec. 5.2(b).
    A new Sec. 5.9, as proposed, would set forth the procedures for the 
treatment of national security classified applications. The procedures 
set forth in this section, except for those pertaining to the 
publication of applications pursuant to Sec. 1.306, are the current 
procedures for the treatment of national security classified 
applications. It is, however, considered appropriate to implement these 
procedures through the rulemaking process.
    35 U.S.C. 181 authorizes the withholding of the grant of a patent 
on an application that has been placed under a secrecy order; however, 
title 35, United States Code, does not specifically authorize the 
withholding of the grant of a patent on an application that is national 
security classified, but not placed under a secrecy order. 
Nevertheless, the Office is prohibited by Executive Order and statute 
from disclosing a national security classified application. Therefore, 
procedures for obtaining a secrecy order pursuant to 35 U.S.C. 181 on a 
national security classified application, or the declassification of 
such application, are necessary.
    Section 5.9(a), as proposed, would provide that patent applications 
and papers that are national security classified and contain authorized 
national security markings of ``Confidential,'' ``Secret'' or ``Top 
Secret'' are accepted by the Office, that national security classified 
documents mailed to the Office must be addressed in compliance with 
Sec. 5.33, and that national security classified documents may be hand-
carried to Licensing and Review.
    Section 5.9(b), as proposed, would provide that a national security 
classified patent application will not be published pursuant to 
Sec. 1.306 or allowed pursuant to Sec. 1.311 of this chapter until the 
application is declassified.
    Section 5.9(c), as proposed, would clarify that, in a national 
security classified application, it is the applicant's responsibility 
to either obtain a secrecy order pursuant to Sec. 5.2, or have the 
application declassified by the relevant department or agency. Section 
5.9(c), as proposed, would further provide that in a national security 
classified patent application filed without a notification pursuant to 
Sec. 5.2(a), i.e., a recommendation for imposition of a secrecy order 
from the relevant department or agency, the Office will set a time 
period within which the application must be declassified, a secrecy 
order must be obtained, or evidence of a good faith effort to obtain a 
secrecy from the relevant department or agency must be presented in 
order to prevent abandonment of the application.
    Section 5.9(d), as proposed, would provide for instances in which, 
after an effort to obtain a secrecy order, the national security 
classified application has not been declassified and a secrecy order 
has not been obtained. Section 5.9(d), as proposed, would specifically 
provide that in each instance in which the national security classified 
application has not been declassified and a secrecy order has not been 
obtained, but the applicant has presented evidence of a good faith 
effort to obtain a secrecy order, the Office will again set a time 
period within which the application must be declassified, a secrecy 
order pursuant to Sec. 5.2 must be obtained, or evidence of a good 
faith effort to again obtain a secrecy order pursuant to Sec. 5.2 from 
the relevant department or agency must be presented in order to prevent 
abandonment of the application. This process will reiterate until the 
application becomes abandoned, e.g., through a lack of a good faith 
effort to obtain a secrecy order or failure to prosecute under 35 
U.S.C. 133, the application is declassified, or a secrecy order is 
obtained.

Other Considerations

    The proposed rule changes are in conformity with the requirements 
of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive 
Order 12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et 
seq. It has been determined that this rulemaking is significant for the 
purposes of Executive Order 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 proposed rule changes will 
not have a significant economic impact on a substantial number of small 
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal 
impact of these proposed changes is to require that application papers 
be filed in a format which permits their digital image and OCR scanning 
into an electronic data base, and that claims for the benefit of the 
filing date of prior foreign and domestic applications be submitted 
promptly to permit publication of the application at 18 months from the 
earliest filing date for which a benefit is sought.
    The Office has also determined that this notice has no Federalism 
implications affecting the relationship between the National Government 
and the States as outlined in Executive Order 12612.
    These proposed rule changes contain a collection of information 
requirements subject to the Paperwork Reduction Act of 1980, 44 U.S.C. 
3501 et seq. The initial patent application filing is 

[[Page 42372]]
currently approved by the Office of Management and Budget under Control 
No. 0651-0032. Public reporting burden for the collection of 
information for filing the initial patent application is estimated to 
average 11 hours 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.
    The Fee Transmittal form, Utility Patent Application Transmittal 
form, Design Patent Application Transmittal form, Plant Patent 
Application Transmittal form, Plant Color Coding Sheet, Declaration 
form, and Plant Patent Application Declaration form will reduce the 
burden and uncertainty associated with the submission of an application 
and related information, and enhance the Office's ability to use 
standardized automation routines (optical character recognition, etc.) 
to record and process information concerning applications. Public 
reporting burden for these collections of information is estimated to 
average: (1) 12 minutes per response for the Fee Transmittal form, (2) 
12 minutes per response for the Utility Patent Application Transmittal 
form, (3) 12 minutes per response for the Design Patent Application 
Transmittal form, (4) 12 minutes per response for the Plant Patent 
Application Transmittal form, (5) 12 minutes per response for the Plant 
Color Coding Sheet, (6) 24 minutes per response for the Declaration 
form, and (7) 24 minutes per response for the Plant Patent Application 
Declaration. These estimates include the time for reviewing 
instructions, searching existing data sources, gathering and 
maintaining the data needed, and completing and reviewing the 
collections of information.
    The assignment cover sheet is currently approved by the Office of 
Management and Budget under Control No. 0651-0027. Public reporting 
burden for the collection of information on the assignment cover sheet 
is estimated to average 30 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 this 
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, DC 20503 (ATTN: Paperwork Reduction Act Projects 0651-0027 
and 0651-0032). The Fee Transmittal form, Utility Patent Application 
Transmittal form, Design Patent Application Transmittal form, Plant 
Patent Application Transmittal form, Plant Color Coding Sheet, 
Declaration form, and Plant Patent Application Declaration form have 
been submitted to the Office of Management and Budget for clearance 
under the Paperwork Reduction Act. See 60 FR 35174 (July 6, 1995). 
Written comments and recommendations for the proposed information 
collection should be sent to Maya A. Bernstein, OMB Desk Officer, room 
10236, New Executive Office Building, Washington, D.C. 20230.
    Notice is hereby given that pursuant to the authority granted to 
the Commissioner of Patents and Trademarks by 35 U.S.C. 6, the Patent 
and Trademark Office proposes to amend Title 37, Chapter I, of the Code 
of Federal Regulations as set forth below.

List of Subjects

37 CFR Part 1

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

37 CFR Part 3

    Administrative practice and procedure, Inventions and patents, 
Reporting and record keeping requirements.

37 CFR Part 5

    Classified information, foreign relations, inventions and patents.

    For the reasons set forth in the preamble, 37 CFR parts 1, 3 and 5 
are proposed to be amended as follows, with removals indicated by 
brackets ([]) and additions by arrows (><):

PART 1--RULES OF PRACTICE IN PATENT CASES

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

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

    2. Section 1.4 is proposed to be amended by revising paragraph 
(a)(1) to read as follows:


Sec. 1.4  Nature of correspondence and signature requirements.

    (a) Correspondence with the Patent and Trademark Office comprises:
    (1) Correspondence relating to services and facilities of the 
Office, such as general inquiries, requests for publications supplied 
by the Office, orders for printed copies of patents >, patent 
application notices, technical contents publications< or trademark 
registrations, orders for copies of records, transmission of 
assignments for recording, and the like; and
* * * * *
    3. Section 1.5 is proposed to be amended by revising paragraph (a) 
and adding paragraphs (f) and (g) to read as follows:


Sec. 1.5  Identification of application, patent or registration.

    (a) No correspondence relating to an application should be filed 
prior to when notification of the application number is received from 
the Patent and Trademark Office. When a letter directed to the Patent 
and Trademark Office concerns a previously filed application for a 
patent, >including a published application,< it must identify on the 
top page in a conspicuous location, the application number (consisting 
of the series code and the serial number; e.g., 07/123,456), or the 
serial number and filing date assigned to that application by the 
Patent and Trademark Office, or the international application number of 
the international application. Any correspondence not containing such 
identification will be returned to the sender where a return address is 
available. The returned correspondence will be accompanied with a cover 
letter which will indicate to the sender that if the returned 
correspondence is resubmitted to the Patent and Trademark Office within 
two weeks of the mail date on the cover letter, the original date of 
receipt of the correspondence will be considered by the Patent and 
Trademark Office as the date of receipt of the correspondence. 
Applicants may use either the Certificate of Mailing or Transmission 
procedure under Sec. 1.8 or the Express Mail procedure under Sec. 1.10 
for resubmissions of returned correspondence if they desire to have the 
benefit of the date of deposit in the United States Postal Service. If 
the returned correspondence is not resubmitted within the two-week 
period, the date of receipt of the resubmission will be considered to 
be the date of receipt of the correspondence. The two-week period to 
resubmit the returned correspondence will not be extended. If for some 
reason, returned correspondence is resubmitted with proper 
identification later than two weeks after the return mailing by the 
Patent and Trademark Office, the resubmitted correspondence will be 

[[Page 42373]]
accepted but given its date of receipt. In addition to the application 
number, all letters directed to the Patent and Trademark Office 
concerning applications for patents should also state ``PATENT 
APPLICATION,'' the name of the applicant, the title of the invention, 
the date of filing the same, and, if known, the group art unit or other 
unit within the Patent and Trademark Office responsible for considering 
the letter and the name of the examiner or other person to which it has 
been assigned.
* * * * *
    >(f) When a paper concerns a provisional application, it should 
identify the application as such and include the application number.
    (g) A paper relating to a patent application notice should identify 
it as such and include the patent application notice number.<
    4. Section 1.9 is proposed to be amended by revising paragraphs (a) 
and (b) and adding a paragraph (h) to read as follows:


Sec. 1.9  Definitions.

    (a)(1) A national 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, or which entered the national stage from an 
international application after compliance with 35 U.S.C. 371.
    (2) A provisional application as used in this chapter means a U.S. 
national application for patent filed in the Office under 35 U.S.C. 
111(b).
    (3) A nonprovisional application as used in this chapter means a 
U.S. national application for patent which was either filed in the 
Office under 35 U.S.C. 111(a), or which entered the national stage from 
an international application after compliance with 35 U.S.C. 371.
    >(4)<[(b)] An international application as used in this chapter 
means an international application for patent filed under the Patent 
Cooperation Treaty prior to entering national processing at the 
Designated Office stage.
    >(b) A published application as used in this chapter means an 
application for patent which has been published pursuant to 35 U.S.C. 
122(b).<
* * * * *
    >(h) National security classified as used in this chapter means 
specifically authorized under criteria established by Act of Congress 
or Executive order to be kept secret in the interest of national 
defense or foreign policy and in fact properly classified pursuant to 
Act of Congress or Executive order.<
    5. Section 1.11 is proposed to be amended by revising paragraph (a) 
to read as follows:


Sec. 1.11  Files open to the public.

    (a) [After a patent has been issued or a statutory invention 
registration has been published, the] >The< specification, drawings, 
and all papers relating to the case in the file of >an abandoned 
published application, a< [the] patent >,< or >a< statutory invention 
registration are open to inspection by the public >.< [, and copies may 
be obtained upon paying the fee therefor.] >A copy of the 
specification, drawings, and all papers relating to the case in the 
file of a published application, a patent, or statutory invention 
registration may be obtained upon the payment of the fee set forth in 
Sec. 1.19(b)(2).< See Sec. 2.27 for trademark files.
* * * * *
    6. Section 1.12 is proposed to be amended by revising paragraphs 
(a)-(c) to read as follows:
Sec. 1.12  Assignment records open to public inspection.

    (a)(1) Separate assignment records are maintained in the Patent and 
Trademark Office for patents and trademarks. The assignment records, 
relating to original or reissue patents, including digests and indexes, 
for assignments recorded on or after May 1, 1957, >published 
applications,< and assignment records relating to pending or abandoned 
trademark applications and to trademark registrations, for assignments 
recorded on or after January 1, 1955, are open to public inspection at 
the Patent and Trademark Office, and copies of those assignment records 
may be obtained upon request and payment of the fee set forth in 
Sec. 1.19 and Sec. 2.6 of this chapter.
    (2) All records of assignments of patents recorded before May 1, 
1957, and all records of trademark assignments recorded before January 
1, 1955, are maintained by the National Archives and Records 
Administration (NARA). The records are open to public inspection. 
Certified and uncertified copies of those assignment records are 
provided by NARA upon request and payment of the fees required by NARA.
    (b) Assignment records, digests, and indexes relating to any 
pending or abandoned application >which has not been published pursuant 
to 35 U.S.C. 122(b)< are not available to the public. Copies of any 
such assignment records and information with respect thereto shall be 
obtainable only upon written authority of the applicant or applicant's 
assignee or attorney or agent or upon a showing that the person seeking 
such information is a bona fide prospective or actual purchaser, 
mortgagee, or licensee of such application, unless it shall be 
necessary to the proper conduct of business before the Office or as 
provided by these rules.
    (c) Any request by a member of the public seeking copies of any 
assignment records of any pending or abandoned patent application 
preserved in >confidence< [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.
* * * * *
    7. Section 1.13 is proposed to be revised to read as follows:


Sec. 1.13  Copies and certified copies.

    (a) Non-certified copies of patents >, patent application notices, 
technical contents publications, file wrapper and contents of published 
applications,< and trademark registrations and of any records, books, 
papers, or drawings within the jurisdiction of the Patent and Trademark 
Office and open to the public, will be furnished by the Patent and 
Trademark Office to any person, and copies of other records or papers 
will be furnished to persons entitled thereto, upon payment of the fee 
therefor.
    (b) Certified copies of the patents >, patent application notices, 
technical contents publications, file wrapper and contents of published 
applications,< and trademark registrations and of any records, books, 
papers, or drawings within the jurisdiction of the Patent and Trademark 
Office and open to the public or persons entitled thereto will be 
authenticated by the seal of the Patent and Trademark Office and 
certified by the Commissioner, or in his name attested by an officer of 
the Patent and Trademark Office authorized by the Commissioner, upon 
payment of the fee for the certified copy.
    8. Section 1.14 is proposed to be amended by revising the section 
heading, paragraphs (a)-(b) and (e) to read as follows:


Sec. 1.14  Patent applications preserved in >confidence< [secrecy].

    (a) Except as provided in Sec. 1.11(b) >,< pending patent 
applications >which have not been published pursuant to 35 U.S.C. 
122(b)< are preserved in >confidence.< [secrecy.] No information 

[[Page 42374]]
will be given by the Office respecting the filing by any particular 
person of an application for a patent, the pendency of any particular 
case before it, or the subject matter of any particular application, 
nor will access be given to or copies furnished of any pending 
application or papers relating thereto, without written authority in 
that particular application from the applicant or his assignee or 
attorney or agent of record, unless the application has been identified 
by >application number or< serial number >and filing date< in a 
published patent document >, a U.S. published application,< or >a 
published international application in which< the United States of 
America has been indicated as a Designated State [in a published 
international application], in which case status information such as 
whether it is pending, abandoned, or patented may be supplied, >or 
unless the application claims the benefit of the filing date of an 
application that has been referred to in a U.S. published application 
or patent, or identified by application number or serial number and 
filing date in a published patent document or a published international 
application in which the United States of America has been indicated as 
a Designated State, in which case the application number, filing date, 
and status information such as whether it is pending, abandoned, or 
patented may be supplied,< or unless it shall be necessary to the 
proper conduct of business before the Office or as provided by this 
part. Where an application has been patented, the patent number and 
issue date may also be supplied.
    (b) [Except as provided in Sec. 1.11(b), abandoned] >Abandoned< 
applications >which have not been published pursuant to 35 U.S.C. 
122(b)< are likewise not open to public inspection, except >as provided 
in Sec. 1.11(b) and as set forth below.< [that if] >If< an application 
referred to in a U.S. >published application or< patent, >application 
open to public inspection pursuant to this section, application which 
claims the benefit of the filing date of an application open to public 
inspection pursuant to this section,< or in an application in which the 
applicant has filed an authorization to open the complete application 
to the public, is abandoned and is available, it may be inspected or 
copies obtained by any person on written request, without notice to the 
applicant. Complete applications (Sec. 1.51(a)) which are abandoned 
>and have not been published pursuant to 35 U.S.C. 122(b)< may be 
destroyed after 20 years from their filing date, except those to which 
particular attention has been called and which have been marked for 
preservation. Abandoned applications will not be returned.
* * * * *
    (e) Any request by a member of the public seeking access to, or 
copies of, any pending or abandoned application preserved in 
>confidence< [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.
* * * * *
    9. Section 1.16 is proposed to be amended by revising paragraphs 
(a) and (g)-(h) 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 cases:

By a small entity (Sec. 1.9(f))
>$390.00< [$365.00]
By other than a small entity
>780.00< [730.00]
* * * * *
    (g) Basic fee for filing each plant application, except provisional 
applications:

By a small entity (Sec. 1.9(f))
>270.00< [245.00]
By other than a small entity
>540.00< [490.00]

    (h) Basic fee for filing each reissue application:

By a small entity (Sec. 1.9(f))
>390.00< [365.00]
By other than a small entity
>780.00< [730.00]
* * * * *
    10. Section 1.17 is proposed to be amended by revising paragraph 
(i) and adding new paragraphs (t) and (u) to read as follows:


Sec. 1.17  Patent application processing fees.

* * * * *
(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.
    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. 1.306(d)--for early publication of an application.
    Sec. 1.306(e)--to defer publication of an application.<
    Sec. 1.314--to defer issuance of a patent.
    Sec. 1.666(b)--for access to interference settlement agreement.
    >Sec. 1.701(f)--for patent term extension based upon administrative 
delay not specifically provided for.<
    Sec. 3.81--for patent to issue to assignee, assignment submitted 
after payment of the issue fee.
* * * * *
>(t) For filing a protest under Sec. 1.291 in an application after the 
date the application was published
220.00

(u) For the acceptance of a late claim for priority under 35 U.S.C. 
119(a)-(d) or for acceptance of a late claim for the benefit of a prior 
application under 35 U.S.C. 119(e), 120 or 121 filed during the 
pendency of the application
1500.00<

    11. Section 1.18 is proposed to be amended by revising paragraphs 
(a) and (c) to read as follows:


Sec. 1.18  Patent issue fees.

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

By a small entity (Sec. 1.9(f))
>$640.00< [$605.00]
By other than a small entity
>1280.00< [1210.00]
* * * * *
    (c) Issue fee for issuing a plant patent:

By a small entity (Sec. 1.9(f))
>330.00< [305.00]
By other than a small entity
>660.00< [610.00]

    12. Section 1.19 is proposed to be amended by revising paragraphs 
(a)-(d) to read as follows:


Sec. 1.19  Document supply fees.

* * * * *
    (a) Uncertified copies of patents >, patent application notices, 
and technical contents publications<:
    (1) Printed copy of a >patent application notice,< patent, 
including a design patent, statutory invention registration, or 
defensive publication document, except plant or statutory invention 
registration containing color drawing:

(i) Regular service
$3.00
(ii) Overnight delivery to PTO Box or 

[[Page 42375]]
overnight fax
6.00
(iii) Expedited service for copy ordered by expedited mail or fax 
delivery service and delivered to the customer within two workdays
25.00
(2) Printed copy of a plant patent in color
12.00
(3) Copy of a utility patent or statutory invention registration 
containing color drawing (see Sec. 1.84(a)(2))
24.00
>(4) Copy of a technical contents publication
9.00<

    (b) Certified and uncertified copies of Office documents:
    (1) Certified or uncertified copy of patent application as filed:

(i) Regular service
>15.00< [12.00]
(ii) Expedited local service
>30.00< [24.00]

(2) Certified or uncertified copy of >published application or< patent-
related file wrapper and contents
150.00
(3) Certified or uncertified copy of Office records, per document >,< 
except >those contained in a pending application and< as otherwise 
provided in this section
25.00

    >(4) Certified or uncertified copy of documents contained in a 
pending application:

(i) First document contained in a pending application
75.00
(ii) For each commonly requested additional document contained in such 
pending application
25.00
(5)< [(4)] For assignment records, abstract of title and certification, 
per >published application or< patent
25.00
(c) Library service (35 U.S.C. 13): For providing to libraries copies 
of all patents issued annually >and technical contents publications 
published annually<, per annum
50.00
(d) For list of all United States >published applications,< patents and 
statutory invention registrations in a subclass
3.00
* * * * *
    13. Section 1.20 is proposed to be amended by revising paragraphs 
(e)-(g) to read as follows:


Sec. 1.20  Post-issuance fees.

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

By small entity (Sec. 1.9(f))
>510.00< [480.00]
By other than a small entity
>1020.00< [960.00]

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

By a small entity (Sec. 1.9(f))
>1010.00< [965.00]
By other than a small entity
>2020.00< [1930.00]

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

By a small entity (Sec. 1.9(f))
>1510.00< [1450.00]
By other than a small entity
>3020.00< [2900.00]
* * * * *
    14. Section 1.24 is proposed to be revised to read as follows:


Sec. 1.24  Coupons.

    Coupons in denominations of three dollars, for the purchase of 
patents, >patent application notices and technical contents 
publications,< designs, defensive publications, statutory invention 
registrations, and trademark registrations are sold by the Patent and 
Trademark Office for the convenience of the general public; these 
coupons may not be used for any other purpose. The three-dollar coupons 
are sold individually and in books of 50 for $150.00. These coupons are 
good until used; they may be transferred but cannot be redeemed.
    15. Section 1.51 is proposed to be amended by revising paragraph 
(a)(1) to read as follows:
Sec. 1.51  General requisites of an application.

    (a) * * *
    (1) A complete application filed under Sec. 1.53(b)(1) comprises:
    (i) A specification, including >an abstract and< 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
    (iv) The prescribed filing fee, see Sec. 1.16.
* * * * *
    16. Section 1.52 is proposed to be amended by revising paragraphs 
(a)-(b) and (d) to read as follows:


Sec. 1.52  Language, paper, writing, margins.

    (a) The application, any amendments or corrections thereto, and the 
oath or declaration must be in the English language except as provided 
for in Sec. 1.69 and paragraph (d) of this section, or be accompanied 
by a verified translation of the application and a translation of any 
corrections or amendments into the English language. All papers which 
are to become a part of the permanent records of the Patent and 
Trademark Office must be legibly [written,] typed [, or printed] in 
permanent >dark< ink >in portrait orientation on flexible, strong, 
smooth, non-shiny, durable and white paper.< [or its equivalent in 
quality.]
    All of the application papers must be presented in a form having 
sufficient clarity and contrast between the paper and the [writing,] 
typing [, or printing] thereon to permit the direct reproduction of 
readily legible copies in any number by use of photographic, 
electrostatic, photo-offset, and microfilming processes >and electronic 
reproduction by use of digital imaging and optical character 
recognition<. If the papers are not of the required quality, substitute 
typewritten [or printed] papers of suitable quality >will< [may] be 
required. >See Sec. 1.125 for filing substitute typewritten papers 
constituting a substitute specification.<
    (b) >Except for drawings, the< [The] application papers 
(specification, including claims, abstract, oath or declaration, and 
papers as provided for in Secs. 1.42, 1.43, 1.47, etc.) and also papers 
subsequently filed, must be plainly >typed< [written] on but one side 
of the paper >, with the abstract and claims set forth on a separate 
sheet. See Secs. 1.72(b) and 1.75(h)<. The [size of all] sheets of 
paper >must be the same size and either 21.0 cm. by 29.7 cm. (DIN size 
A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches).< [should be 8 to 
8\1/2\ by 10\1/2\ to 13 inches (20.3 to 21.6 cm. by 26.6 to 33.0 cm.).] 
>Each sheet must include a top margin of at least 2.0 cm. (\3/4\ inch), 
a left side margin of at least 2.5 cm. (1 inch), a right side margin of 
at least 2.0 cm. (\3/4\ inch), and a bottom margin of at least 2.0 cm. 
(\3/4\ inch), and no holes should be provided in the sheets.< [A margin 
of at least approximately one inch (2.5 cm.) must be reserved on the 
left-hand of each page. The top of each page of the application, 
including claims, must have a margin of at least approximately \3/4\ 
inch (2 cm.).] The lines must [not be crowded too closely together; 
typewritten lines should] be 1\1/2\ or double spaced. The pages of the 
application including claims and abstract >must< [should] be numbered 
consecutively, starting with 1, the numbers being centrally located 
above or preferably, below, the text. >See Sec. 1.84 for drawings.<
* * * * *
    (d) An application may be filed in a language other than English. A 
verified 

[[Page 42376]]
English translation of the non-English-language application and the fee 
set forth in Sec. 1.17(k) are required to be filed with the application 
or within such time >period< as may be set by the Office. >The period 
for filing the verified English translation cannot be extended pursuant 
to Sec. 1.136(a).<
    17. Section 1.53 is proposed to be amended by revising the section 
heading and paragraph (d)(1) to read as follows:


Sec. 1.53  Serial Number, filing date, and completion of application.

* * * * *
    (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, >an abstract on a separate sheet, claims on a separate 
sheet, papers typed on but one side of the paper, or application papers 
or sheets of drawings of sufficient clarity, contrast, and quality, and 
in the proper size and format for electronic reproduction,< applicant 
will be so notified, if a correspondence address has been provided >. 
The applicant will be< [and] given a period of time within which to 
>correct the deficiencies< [file the fee, oath or declaration] and to 
pay the surcharge as set forth in Sec. 1.16(e) >if the application did 
not include the basic filing fee or the oath or declaration by the 
applicant< 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 >, abstract or claims on a separate sheet, 
papers typed on but one side of the paper, papers and sheets of 
drawings of sufficient clarity, contrast, and quality and in the proper 
size and format for electronic reproduction,< and to pay the surcharge 
as set forth in Sec. 1.16(e) >if the application did not include the 
basic filing fee or the oath or declaration by the applicant< in order 
to prevent abandonment of the application; or, if no basic filing fee 
has been paid, one year from the filing date to pay the processing and 
retention fee set forth in Sec. 1.21(l) to prevent disposal of the 
application. >The period for filing an abstract and claims on a 
separate sheet, and a substitute specification and sheets of drawings 
of sufficient clarity, contrast, and quality and in the proper size and 
format for electronic reproduction cannot be extended pursuant to 
Sec. 1.136(a).<
* * * * *
    18. Section 1.54 is proposed to be amended by revising paragraph 
(b) to read as follows:


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

* * * * *
    (b) Applicant will be informed of the application [serial] number 
>,< [and] filing date >, and projected publication date< by a filing 
receipt.
    19. Section 1.55 is proposed to be amended by revising paragraph 
(a) and adding paragraphs (c)-(d) 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 a prior foreign application under the 
conditions specified in 35 U.S.C. 119 (a)-(d) and 172. The claim to 
priority >under 35 U.S.C. 172< 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 to 
priority under 35 U.S.C. 119(a)-(d) must be presented within two months 
of filing or fourteen months from the filing date of the prior foreign 
application, whichever is later, must identify the prior foreign 
application by specifying its application number, country, and the day, 
month and year of its filing, 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.
* * * * *
    >(c) If a claim to priority under 35 U.S.C. 119(a)-(d) is presented 
after the time period provided by paragraph (a) of this section, the 
claim may be accepted if the claim identifying the prior foreign 
application by specifying its application number, country, and the day, 
month and year of its filing is filed during the pendency of the 
application and the delay in stating the claim was unintentional. A 
petition to accept a delayed claim to priority under 35 U.S.C. 119(a)-
(d) must be accompanied by:
    (1) The surcharge set forth in Sec. 1.17(u); and
    (2) 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.
    (d) The time periods set forth in this section cannot be extended.<
    20. Section 1.58 is proposed to be amended by removing and 
reserving paragraph (b) and revising paragraph (c) to read as follows:


Sec. 1.58  Chemical and mathematical formulas and tables.

* * * * *
    (b) >[Reserved]< [All tables and chemical and mathematical formulas 
in the specification, including claims, and amendments thereto, must be 
on paper which is flexible, strong, white, smooth, non-shiny, durable 
in order to permit use as camera copy when printing any patent which 
may issue. A good grade of bond paper is acceptable; watermarks should 
not be prominent. India ink or its equivalent, or solid black 
typewriter, should be used to secure perfectly black solid lines.]
    (c) To facilitate camera copying when printing, the width of 
formulas and tables as presented should be limited normally to >12.7 
cm. (5 inches)< [5 inches (12.7 cm.)] so that it may appear as a single 
column in the printed patent. 

[[Page 42377]]
[If it is not possible to limit the width of a formula or table to 5 
inches (12.7 cm.), it is permissible to present the formula or table 
with a maximum width of 10\3/4\ inches (27.3 cm.) and to place it 
sideways on the sheet.] Typewritten characters used in such formulas 
and tables must be from a block (nonscript) type font or lettering 
style having capital letters which are at least >2.1 mm. (0.08 inch)< 
[0.08 inch (2.1 mm.)] high (e.g., elite type). [Hand lettering must be 
neat, clean, and have a minimum character height of 0.08 inch (2.1 
mm.)]. A space at least >.64 cm. (\1/4\ inch)< [\1/4\ inch (6.4 mm.)] 
high should be provided between complex formulas and tables and the 
text. Tables should have the lines and columns of data closely spaced 
to conserve space, consistent with high degree of legibility.
    21. Section 1.60 is proposed to be amended by revising the section 
heading and paragraph (d) to read as follows:


Sec. 1.60  Continuation or divisional application for invention 
disclosed in a prior application.

* * * * *
    (d) If an application filed pursuant to paragraph (b) of this 
section is otherwise complete, but does not include the appropriate 
filing fee, a true copy of the oath or declaration from the prior 
complete application, showing the signature or an indication it was 
signed, >or the prior application did not include an abstract and 
claims on a separate sheet, and application papers typed on but one 
side of the paper with application papers or sheets of drawings of 
sufficient clarity, contrast, or quality in the proper size and format 
for electronic reproduction,< a filing date will be granted and 
applicant will be so notified and given a period of time within which 
to file the fee, or the true copy of the oath or declaration >, an 
abstract and claims on a separate sheet, substitute specification in 
compliance with Sec. 1.125 with papers typed on but one side of the 
paper and sheets of drawings, each of the substitute specification and 
sheets of drawings of sufficient clarity, contrast, and quality and in 
the proper size and format for electronic reproduction,< and to pay the 
surcharge as set forth in Sec. 1.16(e) >if the application did not 
include the basic filing fee or the copy of the oath or declaration 
from the prior application< in order to prevent abandonment of the 
application. The notification pursuant to this paragraph may be made 
simultaneously with any notification pursuant to paragraph (c) of this 
section. >The period for filing an abstract and claims on a separate 
sheet and a substitute specification and sheets of drawings of 
sufficient clarity, contrast, and quality for electronic reproduction 
cannot be extended pursuant to Sec. 1.136(a).<
    22. Section 1.62 is proposed to be amended by revising paragraphs 
(d)-(f) to read as follows:


Sec. 1.62  File wrapper continuing procedure.

* * * * *
    (d) If an application which has been accorded a filing date 
pursuant to paragraph (a) of this section does not include the 
appropriate basic filing fee pursuant to paragraph (b) of this section, 
or an oath or declaration by the applicant in the case of a 
continuation-in-part application pursuant to paragraph (c) of this 
section, >or any substitute specification and drawings pursuant to 
paragraph (e)(2) of this section,< applicant will be so notified and 
given a period of time within which to file the fee, oath [,] or 
declaration >, substitute specification, and drawings< and to pay the 
surcharge as set forth in Sec. 1.16(e) >if the application did not 
include the basic filing fee or oath or declaration< in order to 
prevent abandonment of the application. The notification pursuant to 
this paragraph may be made simultaneously with any notification of a 
defect pursuant to paragraph (a) of this section. >The period for 
filing a substitute specification cannot be extended pursuant to 
Sec. 1.136(a).<
    (e)>(1)< An application filed under this section will utilize the 
file wrapper and contents of the prior application to constitute the 
new continuation, continuation-in-part, or divisional application but 
will be assigned a new application [serial] number. Changes to the 
prior application must be made in the form of an amendment to the prior 
application as it exists at the time of filing the application under 
this section.
    >(2)< No copy of the prior [application or new] specification >or 
drawings< is required >, unless the application is a continuation-in-
part application containing any additional disclosure, in which case a 
substitute specification in compliance with Sec. 1.125 and drawings are 
required. Any new specification filed will not be considered part of 
the original application papers, but will be treated as a substitute 
specification in accordance with Sec. 1.125<. [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.]
    (f) The filing of an application under this section will be 
construed to include a waiver of >confidence< [secrecy] by the 
applicant under 35 U.S.C. 122>(a)< to the extent that any member of the 
public who is entitled under the provisions of >Sec. < [37 CFR] 1.14 to 
access to, or information concerning either the prior application or 
any continuing application filed under the provisions of this section 
may be given similar access to, or similar information concerning, the 
other application(s) in the file wrapper.
* * * * *
    23. Section 1.72 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 1.72  Title and abstract.

* * * * *
    (b) A brief abstract of the technical disclosure in the 
specification must be set forth on a separate sheet, preferably >prior 
to the first page of the specification< [following the claims] under 
the heading ``Abstract of the Disclosure''. The purpose of the abstract 
is to enable the Patent and Trademark Office and the public generally 
to determine quickly from a cursory inspection the nature and gist of 
the technical disclosure. The abstract shall not be used for 
interpreting the scope of the claims.
    24. Section 1.75 is proposed to be amended by revising paragraph 
(g) and adding paragraphs (h) and (i) to read as follows:


Sec. 1.75  Claim(s).

* * * * *
    (g) >The least restrictive claim should be presented as claim 
number 1, and all< [All] dependent claims should be grouped together 
with the claim or claims to which they refer to the extent possible.
    >(h) The claim or claims must be set forth on a separate sheet.
    (i) Where a claim sets forth a plurality of elements or steps, each 
element or step of the claim should be separated by a line 
indentation.<
    25. Section 1.77 is proposed to be revised to read as follows:


Sec. 1.77  Arrangement of application elements.

    >(a)< The elements of the application >, if applicable,< should 
appear in the following order:
    [(a)] >(1) Utility Application Transmittal Form.
    (2) Fee Transmittal Form.
    (3) Abstract of the disclosure.
    (4)< Title of the invention; or an introductory portion stating the 
name, 

[[Page 42378]]
citizenship, and residence of the applicant, and the title of the 
invention may be used.
    >(5)<[(c)(1)] Cross-reference to related applications [, if any].
    >(6)< [(2)] >Statement regarding federally sponsored research or 
development.
    (7)< Reference to a ``Microfiche appendix'' [if any]. (See 
Sec. 1.96 >(c)< [(b)]). The total number of microfiche and total number 
of frames should be specified.
    >(8)< [(d)] >Background of the invention.
    (9)< Brief summary of the invention.
    >(10)< [(e)] Brief description of the several views of the drawing 
[, if there are drawings].
    >(11)< [(f)] Detailed description.
    >(12)< [(g)] Claim or claims.
    >(13)< [(h) Abstract of the disclosure.
    (i) Signed oath or declaration.
    (j)] Drawings.
    >(14) Executed oath or declaration.
    (15) Sequence Listing (See Sec. 1.821 et seq.).
    (b) The elements set forth in paragraphs (a)(3) through (a)(6), 
(a)(8) through (a)(12) and (a)(15) of this section should appear in 
upper case, without underlining or bold type, as section headings. If 
no text follows the section heading, with the phrase ``Not Applicable'' 
should follow the section heading.<
    26. Section 1.78 is proposed to be amended by revising paragraphs 
(a) and (c)-(d) 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 >, within 
two months of filing or within fourteen months of the filing date of 
the prior application, whichever is later,< 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 >, within two 
months of filing or within fourteen months of the filing date of the 
prior application, whichever is later,< contain or be amended to 
contain in the first sentence of the specification following the title 
a reference to each such prior provisional application, identifying it 
as a provisional application, and including the provisional application 
number (consisting of series code and serial number).
    >(5) If a claim to the benefit of any prior filed copending 
nonprovisional application or international application designating the 
United States of America is presented in a nonprovisional application 
after the time period provided by paragraph (a)(2) of this section, or 
if a claim to the benefit of any prior filed copending provisional 
application is presented in a nonprovisional application other than for 
a design patent after the time period provided by paragraph (a)(4) of 
this section, the claim may be accepted in the application if the claim 
identifying the prior application by application number or 
international application number and international filing date is filed 
during the pendency of the application and the delay in stating the 
claim was unintentional. A petition to accept a delayed claim to the 
benefit of a prior filed copending application must be accompanied by:
    (i) The surcharge set forth in Sec. 1.17(u); and
    (ii) 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.
    (6) The time periods set forth in paragraphs (a)(2), (4) and (5) of 
this section cannot be extended.<
* * * * *
    (c) Where >an< [two or more] application [s,] >or a patent under 
reexamination< [or an application] and >an application or< a patent 
naming different inventors >are< [and] owned by the same party >and< 
contain conflicting claims, and there is no statement of record 
indicating that the claimed inventions were commonly owned or subject 
to an obligation of assignment to the same person at the time the later 
invention was made, the assignee may be called upon to state whether 
the claimed inventions were commonly owned or subject to an obligation 
of assignment to the same person at the time the later invention was 
made, and if not, indicate which named inventor is the prior inventor. 
In addition to making said statement, the assignee may also explain why 
an interference should or should not be declared.
    (d) Where an application >or a patent under reexamination< claims 
an invention which is not patentably distinct from an invention claimed 
in a commonly owned patent with the same 

[[Page 42379]]
or a different inventive entity, a double patenting rejection will be 
made in the application >or a patent under reexamination<. >A non-
statutory< [An obviousness-type] double patenting rejection may be 
obviated by filing a terminal disclaimer in accordance with 
Sec. 1.321(b).
    27. Section 1.84 is proposed to be amended by revising paragraphs 
(c), (f)-(g), (j) and (x) to read as follows:


Sec. 1.84  Standards for drawings.

* * * * *
    (c) Identification of drawings. Identifying indicia, if provided, 
should include the application number or the title of the invention, 
inventor's name, docket number (if any), and the name and telephone 
number of a person to call if the Office is unable to match the 
drawings to the proper application. This information should be placed 
on the back of each sheet of drawings a minimum distance of 1.5 cm. 
(\5/8\ inch) down from the top of the page. >In addition, a reference 
to the application number, or, if an application number has not been 
assigned, the inventor's name, may be included in the left-hand corner, 
provided that the reference appears within 1.5 cm. (\9/16\ inch) from 
the top of the sheet.<
* * * * *
    (f) Size of paper. All drawing sheets in an application must be the 
same size. One of the shorter sides of the sheet is regarded as its 
top. The size of the sheets on which drawings are made must be:
    [(1) 21.6 cm. by 35.6 cm. (8\1/2\ by 14 inches),
    (2) 21.6 cm. by 33.1 cm. (8\1/2\ by 13 inches),
    (3) 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches), or
    (4)] >(1)< 21.0 cm. by 29.7 cm. (DIN size A4) >; or
    (2) 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches)<.
    (g) Margins. The sheets must not contain frames around the sight; 
i.e., the usable surface [.] >, but should have scan target points, 
i.e., cross-hairs, printed on two catercorner margin corners.< [The 
following margins are required:
    (1) On 21.6 cm. by 35.6 cm. (8\1/2\ by 14 inches) drawing sheets, 
each sheet must include a top margin of 5.1 cm. (2 inches), and bottom 
and side margins of .64 cm. (\1/4\ inch) from the edges, thereby 
leaving a sight no greater than 20.3 cm. by 29.8 cm. (8 by 11\3/4\ 
inches).
    (2) On 21.6 cm. by 33.1 cm. (8\1/2\ by 13 inches) drawing sheets, 
each sheet must include a top margin of 2.5 cm. (1 inch) and bottom and 
side margins of .64 cm. (\1/4\ inch) from the edges, thereby leaving a 
sight no greater than 20.3 cm. by 29.8 cm. (8 by 11\3/4\ inches).
    (3) On 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inch) drawing sheets, 
each sheet must include a top margin of 2.5 cm. (1 inch) and bottom and 
side margins of .64 cm. (\1/4\ inch) from the edges, thereby leaving a 
sight no greater than 20.3 cm. by 24.8 cm. (8 by 9\3/4\ inches).
    (4) On 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, each] 
>Each< sheet must include a top margin of at least 2.5 cm. >(1 inch)<, 
a left side margin of >at least< 2.5 cm. >(1 inch)<, a right side 
margin of >at least< 1.5 cm. >(\9/16\ inch)<, and a bottom margin of 
>at least< 1.0 cm. >(\3/8\ inch)<, thereby leaving a sight no greater 
than 17.0 cm. by 26.2 cm >on 21.0 cm. by 29.7 cm. (DIN size A4) drawing 
sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6\15/16\ by 
9\5/8\ inches) on 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inch) drawing 
sheets<.
* * * * *
    (j) View for Official Gazette. One of the views should be suitable 
for publication in the Official Gazette >, the patent application 
notice, and the Gazette of Patent Application Notices< as the 
illustration of the invention.
* * * * *
    (x) Holes. >No holes should be provided in the drawing sheets.< 
[The drawing sheets may be provided with two holes in the top margin. 
The holes should be equally spaced from the respective side edges, and 
their center lines should be spaced 7.0 cm. (2\3/4\ inches) apart.]
    (See Sec. 1.152 for design drawings, Sec. 1.165 for plant drawings, 
and Sec. 1.174 for reissue drawings.)
    28. Section 1.85 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.85  Corrections to drawings.

    (a) The requirements of Sec. 1.84 relating to drawings will be 
strictly enforced. A drawing not executed in conformity thereto, if 
suitable for >electronic< reproduction >by digital imaging< , may be 
admitted for examination but in such case a new drawing must be 
furnished.
* * * * *
    29. Section 1.96 is proposed to be revised to read as follows:
Sec. 1.96  Submission of computer program listings.

    >(a) General.< Descriptions of the operation and general content of 
computer program listings should appear in the description portion of 
the specification >.< A computer program listing for the purpose of 
>this section< [these rules] is defined as a printout that lists in 
appropriate sequence the instructions, routines, and other contents of 
a program for a computer. The program listing may be either in machine 
or machine-independent (object or source) language which will cause a 
computer to perform a desired procedure or task such as solve a 
problem, regulate the flow of work in a computer, or control or monitor 
events. Computer program listings may be submitted in patent 
applications >as set forth in paragraphs (b) and (c) of this section.< 
[in the following forms:]
    >(b)< [(a)] Material which will be printed in the patent. If the 
computer program listing is contained on 10 printout pages or less, it 
must be submitted either as drawings or as part of the specification.
    (1) Drawings. The listing may be submitted in the manner and 
complying with the requirements for drawings as provided in Sec. 1.84. 
At least one figure numeral is required on each sheet of drawing.
    (2) Specification. (i) The listing may be submitted as part of the 
specification in accordance with the provisions of Sec. 1.52, at the 
end of the description but before the claims.
    (ii) >Any< [The] listing [may be] submitted as part of the 
specification [in the form of computer printout sheets (commonly 14 by 
11 inches in size) for use as ``camera ready copy'' when a patent is 
subsequently printed. Such computer printout sheets] must be original 
copies from the computer with dark solid black letters not less than 
0.21 cm high, on white, unshaded and unlined paper, [the printing on 
each sheet must be limited to an area 9 inches high by 13 inches wide,] 
and the sheets should be submitted in a protective cover. [When printed 
in patents, such computer printout sheets will appear at the end of the 
description but before the claims and will usually be reduced about \1/
2\ in size with two printout sheets being printed as one patent 
specification page.] Any amendments must be made by way of submission 
of a substitute sheet >.< [if the copy is to be used for camera ready 
copy.]
    >(c)< [(b)] As an appendix which will not be printed. If a computer 
program listing printout is 11 or more pages long, applicants >must< 
[may] submit such listing in the form of microfiche, referred to in the 
specification (see Sec. 1.77 >(a)(7)< [(c)(2)]). Such microfiche filed 
with a patent application is to be referred to as a ``microfiche 
appendix.'' The ``microfiche appendix'' will not be part of the printed 
patent. Reference in the application to the ``microfiche appendix'' 
>must< [should] be made at the beginning of the specification at the 

[[Page 42380]]
location indicated in Sec. 1.77 >(a)(7)< [(c)(2)]. Any amendments 
thereto must be made by way of revised microfiche. [All computer 
program listings submitted on paper will be printed as part of the 
patent.]
    (1) Availability of appendix. Such computer program listings on 
microfiche will be available to the public for inspection, and 
microfiche copies thereof will be available for purchase with the file 
wrapper and contents, after a patent based on such application is 
granted or the application is otherwise made publicly available.
    (2) Submission requirements. >Except as modified or clarified 
below, computer-generated< [Computer-generated] information submitted 
as >a ``microfiche appendix''< [an appendix] to an application [for 
patent] shall be in [the form of microfiche in] accordance with the 
standards set forth in the following American National Standards 
Institute (ANSI) or National Micrographics Association (NMA) standards 
[(Note: As new editions of these standards are published, the latest 
shall apply)]:
    ANSI PH 1.28-1976--Specifications for Photographic Film for 
Archival records, Silver-Gelatin Type, on Cellulose Ester Base.
    ANSI PH 1.41-1976 Specifications for Photographic Film for Archival 
Records, Silver-Gelatin Type, on Polyester Base.
    NMA-MSI (1971) Quality Standards for Computer Output Microfilm.
    ANSI/NMA MS2 (1978) Format and Coding Standards for Computer Output 
Microfilm.
    NMA MS5 (ANSI PH 5.9-1975) Microfiche of Documents.
    ANSI PH 2.19 (1959)--Diffuse Transmission Density. [Except as 
modified or clarified below:]
    (i) [Either] Computer-Output-Microfilm (COM) output [or copies of 
photographed paper copy] may be submitted >in accordance with either< 
[. In the former case,] NMA >standard< [standards] MS1 >or< [and] MS2 
>.< [apply; in the latter case, standard MS5 applies.]
    (ii) Film submitted shall be first generation (camera film) 
negative appearing microfiche (with emulsion on the back side of the 
film when viewed with the images right reading).
    (iii) Reduction ratio of microfiche submitted should be 24:1 or a 
similar ratio where variation from said ratio is required in order to 
fit the documents into the image area of the microfiche format used.
    (iv) Film submitted shall have a thickness of at least >0.13 mm 
(.005 inches)< [.005 inches (0.13 mm)] and not more than >0.23 mm (.009 
inches)< [.009 inches (0.23 mm)] for either cellulose acetate base or 
polyester base type.
    (v) Both microfiche formats A1 (98 frames, 14 columns x 7 rows) and 
A3 (63 frames, 9 columns x 7 rows) which are described in NMA standard 
MS2 (A1 is also described in MS5) are acceptable for use in preparation 
of microfiche submitted.
    (vi) At least the left-most \1/3\ (50 mm x 12 mm) of the header or 
title area of each microfiche submitted shall be clear or positive 
appearing so that the Patent and Trademark Office can apply 
>application< [serial] number and filing date thereto in an eye-
readable form. The middle portion of the header shall be used by 
applicant to apply an eye-readable application identification such as 
the title and/or the first inventor's name. The attorney's docket 
number may be included. The final right-hand portion of the microfiche 
shall contain sequence in-formation for the microfiche, such as 1 of 4, 
2 of 4, etc.
    (vii) Additional requirements which apply specifically to 
microfiche of filmed paper copy:
    (A) The first frame of each microfiche submitted shall contain a 
standard test target which contains five NBS Micro- copy Resolution 
Test Charts (No. 1010A), one in the center and one in each corner. See 
illustration on page 2 of NMA Recommended Practice MS104, Inspection 
and Quality Control of First Generation Silver Halide Microfilm. See 
also paragraph 7 of NMA-MS5.
    (B) The second frame of each microfiche submitted must contain a 
fully descriptive title and the inventor's name as filed.
    (C) The pages or lines appearing on the microfiche frames should be 
consecutively numbered.
    (D) Pagination of the microfiche frames shall be from left to right 
and from top to bottom.
    (E) At a reduction of 24:1 resolution of the original microfilm 
shall be at least 120 lines per mm (5.0 target) so that reproduction 
copies may be expected to comply with provisions of paragraph 7.1.4 of 
NMA Standard MS5.
    (F) Background density of negative appearing camera master 
microfiche of filmed paper documents shall be within the range of 0.9 
to 1.2 and line density should be no greater than 0.08. The density 
shall be visual diffuse density as measured using the method described 
in ANSI Standard PH 2.19.
    (G) An index, when included, should appear in the last frame (lower 
right hand corner when data is right-reading) of each microfiche. See 
NMA-MS5, paragraph 6.6.
    (viii) Microfiche generated by Computer Output Microfilm (COM).
    (A) Background density of negative-appearing COM-generated camera 
master microfiche shall be within the range of 1.5 to 2.0 and line 
density should be no greater than 0.2. The density shall be visual 
diffuse density as described in ANSI PH2.19.
    (B) The first frame of each microfiche submitted should contain a 
resolution test frame in conformance with NMA standard MS1.
    (C) The second frame of each microfiche submitted must contain a 
fully descriptive title and the inventor's name as filed.
    (D) The pages or lines appearing on the microfiche frames should be 
consecutively numbered.
    (E) It is preferred that pagination of the microfiche frames be 
from left to right and top to bottom but the alternative, i.e., from 
top to bottom and from left to right, is also acceptable.
    (F) An index, when included, should appear on the last frame (lower 
right hand corner when data is right reading) of each microfiche.
    (G) Amendment of microfiche must be made by way of replacement 
microfiche.
    30. Section 1.97 is proposed to be amended by revising paragraphs 
(a)-(d) to read as follows:


Sec. 1.97  Filing of an information disclosure statement.

    (a) In order >for an applicant for patent or for reissue of a 
patent, or an owner of a patent under reexamination< to have 
information considered by the Office during the pendency of a patent 
application, an information disclosure statement in compliance with 
Sec. 1.98 should be filed in accordance with this section.
    (b) An information disclosure statement shall be considered by the 
Office if filed >by the applicant or patent owner<:
    (1) Within three months of the filing date of a national 
application;
    (2) Within three months of the date of entry of the national stage 
as set forth in Sec. 1.491 in an international application; or
    (3) Before the mailing date of a first Office action on the merits, 
whichever event occurs last.
    (c) An information disclosure statement shall be considered by the 
Office if filed >by the applicant or patent owner< after the period 
specified in paragraph (b) of this section, but before the mailing date 
of either:
    (1) A final action under Sec. 1.113; or
    (2) A notice of allowance under Sec. 1.311, whichever occurs first, 
provided the statement is accompanied 

[[Page 42381]]
by either a certification as specified in paragraph >(e)< [(3)] of this 
section or the fee set forth in Sec. 1.17(p).
    (d) An information disclosure statement shall be considered by the 
Office if filed >by the applicant or patent owner< after the mailing 
date of either:
    (1) A final action under Sec. 1.113; or
    (2) A notice of allowance under Sec. 1.311, whichever occurs first, 
but before payment of the issue fee, provided the statement is 
accompanied by:
    (i) A certification as specified in paragraph (e) of this section;
    (ii) A petition requesting consideration of the information 
disclosure statement; and
    (iii) The petition fee set forth in Sec. 1.17(i).
* * * * *
    31. Section 1.98 is proposed to be amended by revising paragraphs 
(a)-(b) to read as follows:


Sec. 1.98  Content of information disclosure statement.

    (a) Any information disclosure statement filed under Sec. 1.97 
shall include:
    (1) list of all patents, publications or other information 
submitted for consideration by the Office;
    (2) A legible copy of:
    (i) Each U.S. >patent application notice, technical contents 
publication and U.S.< and foreign patent;
    (ii) Each publication or that portion which caused it to be listed; 
and
    (iii) All other information or that portion which caused it to be 
listed, except that no copy of >an unpublished< [a] U.S. patent 
application need be included; and
    (3) A concise explanation of the relevance, as it is presently 
understood by the individual designated in Sec. 1.56(c) most 
knowledgeable about the content of the information, of each patent, 
publication, or other information listed that is not in the English 
language. The concise explanation may be either separate from the 
specification or incorporated therein.
    (b) Each U.S. patent listed in an information disclosure statement 
shall be identified by patentee, patent number and issue date. >Each 
U.S. patent application notice or technical contents publication listed 
in an information disclosure statement shall be identified by 
applicant, patent application notice number or technical contents 
publication number and publication date.< Each foreign patent or 
published foreign patent application shall be identified by the country 
or patent office which issued the patent or published the application, 
an appropriate document number, and the publication date indicated on 
the patent or published application. Each publication shall be 
identified by author (if any), title, relevant pages of the 
publication, date, and place of publication.
* * * * *
    32. Section 1.107 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.107  Citation of references.

    (a) If domestic patents are cited by the examiner, their numbers 
and dates, and the names of the patentees [, and the classes of 
inventions] must be stated. >If domestic published applications are 
cited by the examiner, their technical contents publication number, 
publication date, and the names of the applicants must be stated.< If 
foreign published applications or patents are cited, their nationality 
or country, numbers and dates, and the names of the patentees must be 
stated, and such other data must be furnished as may be necessary to 
enable the applicant, or in the case of a reexamination proceeding, the 
patent owner, to identify the published applications or patents cited. 
In citing foreign published applications or patents, in case only a 
part of the document is involved, the particular pages and sheets 
containing the parts relied upon must be identified. If printed 
publications are cited, the author (if any), title, date, pages or 
plates, and place of publication, or place where a copy can be found, 
shall be given.
* * * * *
    33. Section 1.108 is proposed to be revised to read as follows:


Sec. 1.108  Abandoned applications not cited.

    Abandoned applications as such will not be cited as references >,< 
except those which >are published applications or< have been opened to 
inspection by the public following a defensive publication.
    34. Section 1.131 is proposed to be amended by revising paragraph 
(a) to read as follows:


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

    (a)(1) When any claim of an application or a patent under 
reexamination is rejected under 35 U.S.C. 102(a) or (e), or 35 U.S.C. 
103 based on a U.S. patent >or pending or patented published 
application< to another which is prior art under 35 U.S.C. 102 (a) or 
(e) and which substantially shows or describes but does not claim the 
same patentable invention, as defined in Sec. 1.601(n), or on reference 
to a foreign patent >, an abandoned U.S. published application,< or to 
a printed publication, the inventor of the subject matter of the 
rejected claim, the owner of the patent under reexamination, or the 
party qualified under Secs. 1.42, 1.43, or 1.47, may submit an 
appropriate oath or declaration to overcome the patent >, published 
application< or publication. The oath or declaration must include facts 
showing a completion of the invention in this country or in a NAFTA or 
WTO member country before the filing date of the >U.S. published 
application or the< application on which the U.S. patent issued, or 
before the date of the foreign patent, or before the date of the 
printed publication. When an appropriate oath or declaration is made, 
the patent >, published application< or publication cited shall not bar 
the grant of a patent to the inventor or the confirmation of the 
patentability of the claims of the patent, unless the date of such 
patent >, published application< or publication is more than one year 
prior to the date on which the inventor's or patent owner's application 
was filed in this country.
    (2) A date of completion of the invention may not be established 
under this section before December 8, 1993, in a NAFTA country, or 
before January 1, 1996, in a WTO member country other than a NAFTA 
country.
    >(3) Notwithstanding the provisions of paragraph (a)(1) of this 
section, a showing may be made under this section where the inventions 
defined by a claim in an application or a patent under reexamination 
and by a claim in U.S. patent or pending or patented published 
application are not identical as set forth in 35 U.S.C. 102, and where 
the inventions are owned by the same party, unless the date of such 
patent or published application is more than one year prior to the date 
on which the inventor's or patent owner's application was filed in this 
country.<
* * * * *
    35. Section 1.132 is proposed to be revised to read as follows:


Sec. 1.132  Affidavits or declarations traversing grounds of rejection.

    When any claim of an application or a patent under reexamination is 
rejected on reference to a [domestic] >U.S.< patent >or pending U.S. 
published application< which substantially shows or describes but does 
not claim the invention, or on reference to a foreign patent, >an 
abandoned U.S. published application,< or to a printed publication, or 
to facts within the personal knowledge of an employee of the Office, or 
when rejected upon a 

[[Page 42382]]
mode or capability of operation attributed to a reference, or because 
the alleged invention is held to be inoperative or lacking in utility, 
or frivolous or injurious to public health or morals, affidavits or 
declarations traversing these references or objections may be received.
    36. Section 1.136 is proposed to be amended by revising paragraph 
(a) to read as follows:
Sec. 1.136  Filing of timely responses with petition and fee for 
extension of time and extensions of time for cause.

    (a)(1) If an applicant is required to respond within a nonstatutory 
or shortened statutory time period, applicant may respond up to four 
months after the time period set if a petition for an extension of time 
and the fee set in Sec. 1.17 are filed prior to or with the response, 
unless:
    (i) Applicant is notified otherwise in an Office action;
    (ii) >The response is to a requirement for an English translation, 
an abstract or claims on a separate sheet, or substitute specification 
or sheets of drawings of sufficient clarity, contrast, and quality and 
in the proper size and format for electronic reproduction submitted 
pursuant to Secs. 1.52(d), 1.53(d), 1.60(d), 1.62(d), 1.494(c) or 
1.495(c), or an oath or declaration submitted pursuant to 
Secs. 1.494(c) or 1.495(c);
    (iii)< The response is a reply brief submitted pursuant to 
Sec. 1.193(b);
    >(iv)< [(iii)] The response is a request for an oral hearing 
submitted pursuant to Sec. 1.194(b);
    >(v)< [(iv)] The response is to a decision by the Board of Patent 
Appeals and Interferences pursuant to Sec. 1.196, Sec. 1.197 or 
Sec. 1.304; or
    >(vi)< [(v)] The application is involved in an interference 
declared pursuant to Sec. 1.611.
    (2) The date on which the response, the petition, and the fee have 
been filed is the date of the response and also the date for purposes 
of determining the period of extension and the corresponding amount of 
the fee. The expiration of the time period is determined by the amount 
of the fee paid. In no case may an applicant respond later than the 
maximum time period set by statute, or be granted an extension of time 
under paragraph (b) of this section when the provisions of this 
paragraph are available. See Sec. 1.136(b) for extensions of time 
relating to >the filing of an English translation pursuant to 
Secs. 1.52(d), 1.494(c) or 1.495(c), the filing of an abstract or 
claims on a separate sheet, substitute specification or sheets of 
drawings of sufficient clarity, contrast, and quality and in the proper 
size and format for electronic reproduction pursuant to Secs. 1.53(d), 
1.60(d), 1.62(d), 1.494(c), or 1.495(c), the filing of an oath or 
declaration pursuant to Secs. 1.494(c) or 1.495(c), or< proceedings 
pursuant to Secs. 1.193(b), 1.194, 1.196 or 1.197. See Sec. 1.304 for 
extension of time to appeal to the U.S. Court of Appeals for the 
Federal Circuit or to commence a civil action. See Sec. 1.550(c) for 
extension of time in reexamination proceedings and Sec. 1.645 for 
extension of time in interference proceedings.
    37. Section 1.138 is proposed to be revised to read as follows:


Sec. 1.138  Express abandonment.

    An application may be expressly abandoned by filing in the Patent 
and Trademark Office a written declaration of abandonment signed by the 
applicant and the assignee of record, if any, and identifying the 
application. An application may also be expressly abandoned by filing a 
written declaration of abandonment signed by the attorney or agent of 
record. A registered attorney or agent acting under the provision of 
Sec. 1.34(a), or of record, may also expressly abandon a prior 
application as of the filing date granted to a continuing application 
when filing such a continuing application. Express abandonment of the 
application may not be recognized by the Office unless it is actually 
received by appropriate officials in time to act thereon before the 
date of issue >or publication. An applicant seeking to abandon an 
application to avoid publication of the application must submit a 
proper letter of express abandonment more than two months prior to the 
projected date of publication to allow sufficient time to permit the 
appropriate officials to recognize the abandonment and remove the 
application from the publication process, and unless an applicant 
receives written acknowledgement of the letter of express abandonment 
prior to the projected date of publication, applicant should expect 
that the application will be published in regular course<.
    38. Section 1.154 is proposed to be revised to read as follows:


Sec. 1.154  Arrangement of specification.

    >(a) The elements of the design application, if applicable, should 
appear in the following order< [The following order of arrangement 
should be observed in framing design specifications]:
    >(1) Design Application Transmittal Form.
    (2) Fee Transmittal Form.
    (3)< [(a)] Preamble, stating name of the applicant and title of the 
design.
    >(4) Cross-reference to related applications.
    (5) Statement regarding federally sponsored research or 
development.<
    >(6)< [(b)] Description of the figure or figures of the drawing.
    >(7)< [(c)] Description [, if any].
    >(8)< [(d)] Claim.
    >(9) Drawings or photographs
    (10)< [(e)] Executed oath or declaration (See Sec. 1.153(b)).
    (b) [Reserved]
    39. Section 1.163 is proposed to be amended by adding new 
paragraphs (c) and (d) to read as follows:


Sec. 1.163  Specification.

* * * * *
    >(c) The elements of the plant application, if applicable, should 
appear in the following order:
    (1) Plant Application Transmittal Form.
    (2) Fee Transmittal Form.
    (3) Abstract of the disclosure.
    (4) Title of the invention.
    (5) Cross-reference to related applications.
    (6) Statement regarding federally sponsored research or 
development.
    (7) Background of the invention.
    (8) Brief summary of the invention.
    (9) Brief description of the drawing.
    (10) Detailed Botanical Description.
    (11) Claim.
    (12) Drawings (in duplicate).
    (13) Executed oath or declaration.
    (14) Plant color coding sheet.
    (d) A plant color coding sheet as used in this section means a 
sheet that specifies a color coding system as designated in a 
recognized color dictionary, and lists every plant structure to which 
color is a distinguishing feature and the corresponding color code 
which best represents that plant structure.<
    40. Section 1.291 is proposed to be amended by revising paragraphs 
(a)-(b) to read as follows:


Sec. 1.291  Protests by the public against pending applications.

    (a) Protests by a member of the public against pending applications 
will be referred to the examiner having charge of the subject matter 
involved. A protest specifically identifying the application to which 
the protest is directed will be entered in the application file if:
    (1) The protest is [timely] submitted >:
    (i) prior to the date the application was published or the mailing 
of a notice of allowance under Sec. 1.311, whichever occurs first; or
    (ii) within two months of the date the application was published or 
prior to 

[[Page 42383]]
the mailing of a notice of allowance under Sec. 1.311, whichever occurs 
first, if accompanied by the fee set forth in Sec. 1.17(t)<; and
    (2) The protest is either served upon the applicant in accordance 
with Sec. 1.248, or >, if submitted prior to the date the application 
was published,< filed with the Office in duplicate in the event service 
is not possible.
    [Protests raising fraud or other inequitable conduct issues will be 
entered in the application file, generally without comment on those 
issues. Protests which do not adequately identify a pending patent 
application will be disposed of and will not be considered by the 
Office.]
    (b) >Protests raising fraud or other inequitable conduct issues 
will be entered in the application file, generally without comment on 
those issues. Protests which do not adequately identify a pending 
patent application will be disposed of and will not be considered by 
the Office.< A protest submitted in accordance with the second sentence 
of paragraph (a) of this section will be considered by the Office if 
>the application is still pending when the protest and application file 
are brought before the examiner and< it includes:
    (1) A listing of the patents, publications, or other information 
relied upon;
    (2) A concise explanation of the relevance of each listed item;
    (3) A copy of each listed patent or publication or other item of 
information in written form or at least the pertinent portions thereof; 
and
    (4) An English language translation of all the necessary and 
pertinent parts of any non-English language patent, publication, or 
other item of information in written form relied upon.
* * * * *
    41. Section 1.292 is proposed to be amended by revising paragraphs 
(a)-(b) to read as follows:


Sec. 1.292  Public use proceedings.

    (a) When a petition for the institution of public use proceedings, 
supported by affidavits or declarations [and the fee set forth in 
Sec. 1.17(j), is filed by one having information of the pendency of an 
application and] is found, on reference to the examiner, to make a 
prima facie showing that the invention claimed in an application 
believed to be on file had been in public use or on sale more than one 
year before the filing of the application, a hearing may be had before 
the Commissioner to determine whether a public use proceeding should be 
instituted. If instituted, the Commissioner may designate an 
appropriate official to conduct the public use proceeding, including 
the setting of times for taking testimony, which shall be taken as 
provided by Secs. 1.671 through 1.685. The petitioner will be heard in 
the proceedings but after decision therein will not be heard further in 
the prosecution of the application for patent.
    (b) The petition and accompanying papers [should either: (1) 
Reflect that a copy of the same has been served upon the applicant or 
upon his attorney or agent of record; or (2) be filed with the Office 
in duplicate in the event service is not possible. The petition and 
accompanying papers], or a notice that such a petition has been filed, 
shall be entered in the application file [.] >if:
    (1) The petition is accompanied by the fee set forth in 
Sec. 1.17(j);
    (2) The petition is served on the applicant in accordance with 
Sec. 1.248, or, if submitted prior to the date the application was 
published, filed with the Office in duplicate in the event service is 
not possible; and
    (3) The petition is submitted within two months of the date the 
application was published or prior to the mailing of a notice of 
allowance under Sec. 1.311, whichever occurs first.<
* * * *
    42. A new, undesignated center heading and new sections 1.305 
through 1.308 are proposed to be added to Subpart B-National Processing 
Provisions to read as follows:

>Publication of Applications


Sec. 1.305  Withdrawal from publication.

    Applications may be withdrawn from publication at the initiative of 
the Office or upon request by the applicant. An application will not be 
withdrawn from publication for any reason except:
    (a) A mistake on the part of the Office;
    (b) The application is either national security classified (see 
Sec. 5.9(b)) or subject to a secrecy order pursuant to 35 U.S.C. 181; 
or
    (c) Express abandonment of the application pursuant to Sec. 1.138.


Sec. 1.306  Publication of application.

    (a) A U.S. national application for patent which was either filed 
in the Office under 35 U.S.C. 111(a) or which resulted from an 
international application after compliance with 35 U.S.C. 371, or an 
application filed in the Office under 35 U.S.C. 161 will be published 
as soon as possible after the expiration of a period of 18 months from 
the filing date, including the earliest filing date for which a benefit 
is sought, unless:
    (1) The application is national security classified (see 
Sec. 5.9(b)) or subject to a secrecy order pursuant to 35 U.S.C. 181;
    (2) The application has issued as a patent;
    (3) The application is recognized by the Office as no longer 
pending; or
    (4) The application was previously published pursuant to paragraph 
(d) of this section.
    (b) The publication of an application shall consist of:
    (1) A notice designated as a ``Gazette Entry'' containing 
information such as the application number, filing date, title, 
inventor's name, abstract, a drawing figure (if appropriate), a 
representative claim, and U.S. and International Patent Classification 
(IPC) classification(s) in a Gazette of Patent Application Notices;
    (2) A printed publication designated as a ``patent application 
notice'' containing information such as the application number, filing 
date, title, inventor's name, correspondence address, abstract, a 
drawing figure (if appropriate), a representative claim, and U.S. and 
International Patent Classification (IPC) classification(s);
    (3) A document designated as a ``technical contents publication'' 
containing the patent application notice and the specification, 
abstract, claim(s), and drawing(s); and
    (4) Public access to a copy of the specification, drawings, and all 
papers relating to the application file in accordance with 
Sec. 1.11(a).
    (c) Provisional applications filed in the Office under 35 U.S.C. 
111(b) shall not be published, and design applications filed in the 
Office under 35 U.S.C. 171 and reissue applications filed in the Office 
under 35 U.S.C. 251 shall not be published pursuant to this section.
    (d) Applications that will be published pursuant to paragraph (a) 
of this section may be published earlier than as set forth in paragraph 
(a) of this section upon petition by the applicant. Any petition 
requesting early publication of an application must be accompanied by 
the fee set forth in Sec. 1.17(i) and filed as soon as possible. No 
consideration will be given to requests for early publication in an 
application lacking an abstract or claims on a separate sheet, any 
English translation required pursuant to Sec. 1.52(d), or substitute 
specification or drawings required pursuant to Secs. 1.53(d), 1.60(d), 
or 1.62(d). No consideration will be given to requests for publication 
on a certain date, and such requests will be treated as a request for 
publication as soon as possible.
    (e) An applicant who is an independent inventor and has been 

[[Page 42384]]
    accorded status under 35 U.S.C. 41(h) in an application that will be 
published pursuant to paragraph (a) of this section and does not claim 
the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, 
365(a) or 365(c) may request that the application not be published 
until three months after an action on the merits. A petition requesting 
that the application not be published until three months after an 
action on the merits must be submitted with the filing of the 
application and be accompanied by:
    (1) The petition fee set forth in Sec. 1.17(i); and
    (2) A certification that the invention disclosed in the application 
was not or will not be the subject of an application filed in a foreign 
country. The certification must be verified if made by a person not 
registered to practice before the Patent and Trademark Office.


Sec. 1.307  Delivery of the printed publication.

    The patent application notice will be delivered or mailed on the 
day of its publication to the correspondence address of record. See 
Sec. 1.33(a).


Sec. 1.308  Correction of the printed publication.

    A request for a certificate of correction for the patent 
application notice will only be granted when the Office makes a 
significant mistake which is apparent from Office records.<
    43. Section 1.315 is proposed to be revised to read as follows:
Sec. 1.315  Delivery of patent.

    The patent will be delivered or mailed >upon issuance< [on the day 
of its date] to >the correspondence address of record. See 
Sec. 1.33(a).< [the attorney or agent of record, if there be one; or if 
the attorney or agent so requests, to the patentee or assignee of an 
interest therein; or, if there be no attorney or agent, to the patentee 
or to the assignee of the entire interest, if he so requests.]
    44. Section 1.321 is proposed to be amended by revising paragraph 
(c) to read as follows:


Sec. 1.321  Statutory disclaimers, including terminal disclaimers.

* * * * *
    (c) A terminal disclaimer, when filed to obviate a >non-statutory< 
double patenting rejection in a patent application or in a 
reexamination proceeding, must:
    (1) Comply with the provisions of paragraphs (b)(2) through (b)(4) 
of this section;
    (2) Be signed in accordance with paragraph (b)(1) of this section 
if filed in a patent application or in accordance with paragraph (a)(1) 
of this section if filed in a reexamination proceeding; and
    (3) Include a provision that any patent granted on that application 
or any patent subject to the reexamination proceeding shall be 
enforceable only for and during such period that said patent is 
commonly owned with the application or patent which formed the basis 
for the rejection.
    45. Section 1.492 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.492  National stage fees.

* * * * *
    (a) The basic national fee:
    (1) Where an international preliminary examination fee as set forth 
in Sec. 1.482 has been paid on the international application to the 
United States Patent and Trademark Office:

By a small entity (Sec. 1.9(f))-->$355.00< [$330.00]
By other than a small entity-->710.00< [660.00]

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

By a small entity (Sec. 1.9(f))-->390.00< [365.00]
By other than a small entity-->780.00< [730.00]

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

By a small entity (Sec. 1.9(f))-->520.00< [490.00]
By other than a small entity-->1040.00< [980.00]

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

By a small entity (Sec. 1.9(f))-->60.00< [46.00]
By other than a small entity-->120.00< [92.00]

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

By a small entity (Sec. 1.9(f))-->455.00< [425.00]
By other than a small entity-->910.00< [850.00]
* * * * *
    46. Section 1.494 is proposed to be amended by revising paragraphs 
(c) and (g) to read as follows:


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

* * * * *
    (c) If applicant complies with paragraph (b) of this section before 
expiration of 20 months from the priority date but omits:
    (1) A translation of the international application, as filed, into 
the English language, if it was originally filed in another language 
(35 U.S.C. 371(c)(2)) >;< [and/or]
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see Sec. 1.497);
    >(3) An abstract or claims on a separate sheet (see Secs. 1.72(b) 
and 1.75(h));
    (4) Papers typed on but one side of the paper (see Sec. 1.52(b)); 
and/or
    (5) Application papers or sheets of drawings of sufficient clarity, 
contrast, and quality, and in the proper size and format for electronic 
reproduction (see Secs. 1.52(a) and (b) and 1.85(a)),< applicant will 
be so notified and given a period of time within which to file the 
>English< translation >,< [and/or] oath or declaration >, abstract or 
claims on a separate sheet, and a substitute specification in 
compliance with Sec. 1.125 with papers typed on but one side of the 
paper and sheets of drawings, each of the substitute specification and 
sheets of drawings of sufficient clarity, contrast, and quality and in 
the proper size and format for electronic reproduction< in order to 
prevent abandonment of the application. The payment of the processing 
fee set forth in Sec. 1.492(f) is required for acceptance of an English 
translation later than the expiration of 20 months after the priority 
date. The payment of the surcharge set forth in Sec. 1.492(e) is 
required for acceptance of the oath or declaration of the inventor 
later than the expiration of 20 months after the priority date. >The 
period for filing the English translation, oath or declaration, an 
abstract and claims on a separate sheet, and a substitute specification 
and sheets of drawings of sufficient clarity, contrast, and quality and 
in the proper size and format for electronic reproduction cannot be 
extended pursuant to Sec. 1.136(a).< A copy of the notification mailed 
to 

[[Page 42385]]
applicant should accompany any response thereto submitted to the 
Office.
* * * * *
    (g) An international application becomes abandoned as to the United 
States 20 months from the priority date if the requirements of 
paragraph (b) of this section have not been complied with within 20 
months from the priority date where the United States has been 
designated but not elected by the expiration of 19 months from the 
priority date. If the requirements of paragraph (b) of this section are 
complied with within 20 months from the priority date but any required 
translation of the international application as filed >,< [and/or] the 
oath or declaration >,abstract or claims on a separate sheet, and/or 
substitute specification in compliance with Sec. 1.125 with papers 
typed on but one side of the paper and sheets of drawings, each of the 
substitute specification and sheets of drawings of sufficient clarity, 
contrast, and quality and in the proper size and format for electronic 
reproduction< are not timely filed, an international application will 
become abandoned as to the United States upon expiration of the time 
period set pursuant to paragraph (c) of this section.
    47. Section 1.495 is proposed to be amended by revising paragraphs 
(c) and (h) to read as follows:


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

* * * * *
    (c) If applicant complies with paragraph (b) of this section before 
expiration of 30 months from the priority date but omits:
    (1) A translation of the international application, as filed, into 
the English language, if it was originally filed in another language 
(35 U.S.C. 371(c)(2)) >;< [and/or]
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see Sec. 1.497);
    >(3) An abstract or claims on a separate sheet (see Secs. 1.72(b) 
and 1.75(h));
    (4) Papers typed on but one side of the paper (see Sec. 1.52(b)); 
and/or
    (5) Application papers or sheets of drawings of sufficient clarity, 
contrast, and quality, and in the proper size and format for electronic 
reproduction (see Secs. 1.52(a) and (b) and 1.85(a)),< applicant will 
be so notified and given a period of time within which to file the 
>English< translation >,< [and/or] oath or declaration >, abstract or 
claims on a separate sheet, and a substitute specification in 
compliance with Sec. 1.125 with papers typed on but one side of the 
paper and sheets of drawings, each of the substitute specification and 
sheets of drawings of sufficient clarity, contrast, and quality and in 
the proper size and format for electronic reproduction< in order to 
prevent abandonment of the application. The payment of the processing 
fee set forth in Sec. 1.492(f) is required for acceptance of an English 
translation later than the expiration of 30 months after the priority 
date. The payment of the surcharge set forth in Sec. 1.492(e) is 
required for acceptance of the oath or declaration of the inventor 
later than the expiration of 30 months after the priority date. >The 
period for filing the English translation, oath or declaration, an 
abstract and claims on a separate sheet, and a substitute specification 
and sheets of drawings of sufficient clarity, contrast, and quality and 
in the proper size and format for electronic reproduction cannot be 
extended pursuant to Sec. 1.136(a).< A copy of the notification mailed 
to applicant should accompany any response thereto submitted to the 
Office.
* * * * *
    (h) An international application becomes abandoned as to the United 
States 30 months from the priority date if the requirements of 
paragraph (b) of this section have not been complied with within 30 
months from the priority date where the United States has been elected 
by the expiration of 19 months from the priority date. If the 
requirements of paragraph (b) of this section are complied with within 
30 months from the priority date but any required translation of the 
international application as filed >,< [and/or] the oath or declaration 
>,abstract or claims on a separate sheet, and/or a substitute 
specification in compliance with Sec. 1.125 with papers typed on but 
one side of the paper and sheets of drawings, each of the substitute 
specification and sheets of drawings of sufficient clarity, contrast, 
and quality and in the proper size and format for electronic 
reproduction< are not timely filed, an international application will 
become abandoned as to the United States upon expiration of the time 
period set pursuant to paragraph (c) of this section.
    48. Section 1.497 is proposed to be revised to read as follows:


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

    (a) When an applicant of an international application [, if the 
inventor,] desires to enter the national stage under 35 U.S.C. 371 
pursuant to Secs. 1.494 or 1.495, he or she must file an oath or 
declaration >that:
    (1) Is executed in accordance with either Secs. 1.66 or 1.68;
    (2) Identifies the specification to which it is directed;
    (3) Identifies each inventor and the country of citizenship of each 
inventor; and
    (4) States that the person making the oath or declaration believes 
the named inventor or inventors to be the original and first inventor 
or inventors of the subject matter which is claimed and for which a 
patent is sought.< [in accordance with Sec. 1.63.]
    (b) >(1) The oath or declaration must be made by all of the actual 
inventors except as provided for in Secs. 1.42, 1.43 or 1.47.
    (2)< If the >person making the oath or declaration is not the 
inventor (Secs. 1.42, 1.43 or 1.47),< [international application was 
made as provided in Secs. 1.422, 1.423 or 1.425,] the >oath or 
declaration shall state the relationship of the person< [applicant 
shall state his or her relationship] to the inventor and, upon 
information and belief, the facts which the inventor is required [by 
Sec. 1.63] to state.
    >(c) The oath or declaration must comply with the requirements of 
Sec. 1.63; however, if the oath or declaration meets the requirements 
of paragraphs (a) and (b) of this section, the oath or declaration will 
be accepted as complying with 35 U.S.C. 371(c)(4) and Secs. 1.494(c) or 
1.495(c). If the oath or declaration does not meet the requirements of 
Sec. 1.63, a supplemental oath or declaration in compliance with 
Sec. 1.63 will be required in accordance with Sec. 1.67.<
    49. Section 1.701 is proposed to be revised 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 >, subject to the provisions of this 
section,< 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/or< [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.] 

[[Page 42386]]

    >(4) An unusual administrative delay by the Office.
    (i) Circumstances constituting an unusual administrative delay by 
the Office include the failure to:
    (A) Act on a reply under Sec. 1.111 or appeal brief under 
Sec. 1.192 within six months of the date it was filed;
    (B) Act on an application within six months of the date of a 
decision under Sec. 1.196 by the Board of Patent Appeals and 
Interferences where claims stand allowed in an application or the 
nature of the decision requires further action by the examiner 
(Sec. 1.197); and
    (C) Issue a patent within six months of the date that the issue fee 
was paid or all outstanding requirements were satisfied, whichever is 
later.<
    (ii) [Reserved]
    (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) >, (c)(4)< and (d) 
of this section, to the extent that these periods are not overlapping, 
up to a maximum of >ten< [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) >of this chapter< 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.
    >(4) The period of delay under paragraph (a)(4) of this section is 
the sum of the number of days, if any, in the period of unusual delay 
by the Office.<
    (d) The period [of delay] set forth in paragraph (c)[(3)] shall be 
reduced by >any time during the processing or examination of the 
application, as determined by the Commissioner, during which the 
applicant for patent failed to engage in reasonable efforts to conclude 
processing or examination of the application. In determining whether an 
applicant failed to engage in reasonable efforts to conclude processing 
or examination of the application, the Commissioner may examine the 
facts and circumstances of the applicant's actions during the entire 
prosecution of the application to determine whether the applicant 
exhibited that degree of timeliness as may reasonably be expected from, 
and which is ordinarily exercised by, an applicant for patent seeking 
to conclude the processing or examination of the application. 
Circumstances constituting a failure to engage in reasonable efforts to 
conclude processing or examination of the application include:
    (1) Requesting suspension of action under Sec. 1.103; and
    (2) Abandonment of the application.< [:
    (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.]
    >(e) No patent term shall be extended under this section:
    (1) Beyond the expiration date specified in a terminal disclaimer 
in a patent whose term has been disclaimed in such terminal disclaimer; 
or
    (2) In a patent issued before the expiration of three years after 
the filing date of the application or entry of the application into the 
national stage under 35 U.S.C. 371, whichever is later, not taking into 
account any claim to the benefit of the filing date of any application 
under 35 U.S.C. 120, 121, 365(c).
    (f) Any extension of patent term under paragraph (a)(4) of this 
section on the basis of an administrative delay other than one 
specifically set forth in paragraphs (a)(4)(i)(A) through (C) of this 
section must be requested by petition. A petition for an extension of 
patent term based upon unusual administrative delay by the Office other 
than one specifically set forth in paragraphs (a)(4)(i)(A) through (C) 
of this section cannot be filed prior to the mailing of a notice of 
allowance under Sec. 1.311 and must be accompanied by:
    (1) A statement of the facts involved, the administrative delay by 
the Office to be reviewed, and the period of extension requested; and
    (2) The fee set forth in Sec. 1.17(i). The petition may include a 
request that the petition fee be refunded if an extension of the patent 
term under paragraph (a)(4) of this section is granted.<
    50. Section 1.808 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.808  Furnishing of samples.

    (a) A deposit must be made under conditions that assure that:
    (1) Access to the deposit will be available during pendency of the 
patent application making reference to the deposit to one determined by 
the Commissioner to be entitled thereto under Sec. 1.14 and 35 U.S.C. 
122>(a)<, and
    (2) Subject to paragraph (b) of this section, all restrictions 
imposed by the depositor on the availability to the public of the 
deposited material will be irrevocably removed upon the >publication of 
the application under Sec. 1.306 or< granting of the patent.
* * * * * 

[[Page 42387]]


PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

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

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

    52. Section 3.31 is proposed to be amended by redesignating 
paragraph (b) as paragraph (c) and adding a new paragraph (b) to read 
as follows:


Sec. 3.31  Cover sheet content.

* * * * *
    (b) >For a patent application, the cover sheet may include an 
indication that the assignment information is to be printed on the 
patent application notice. If the assignment and cover sheet containing 
the above-mentioned indication is not submitted within two months of 
filing or fourteen months from the earliest filing date for which a 
benefit is claimed, whichever is later, the assignment information may 
not be printed on the patent application notice.<
* * * * *
PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND 
FILE APPLICATIONS IN FOREIGN COUNTRIES

    53. The authority citation for 37 CFR part 5 would continue to read 
as follows:

    Authority: 35 U.S.C. 6, 41, 181-188, as amended by the Patent 
Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102 
Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C. 2751 
et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011 
et seq.; and the Nuclear Non-Proliferation Act of 1978, 22 U.S.C. 
3201 et seq.; and the delegations in the regulations under these 
Acts to the Commissioner (15 CFR 370.10(j), 22 CFR 125.04, and 10 
CFR 810.7).

    54. Section 5.1 is proposed to be amended by adding new paragraphs 
(c) and (d) to read as follows:


Sec. 5.1  Defense inspection of certain applications.

* * * * *
    >(c) Defense agency inspection must be promptly completed to enable 
those applications due for publication under Sec. 1.306 of this chapter 
to be published in regular course. Applications under defense agency 
review will be released for publication six months from the actual U.S. 
filing date or three months from the date the application was made 
available to a defense agency under paragraph (b) of this section, 
whichever is later.
    (d) Applications on inventions not made in the United States and on 
inventions in which the U.S. Government has a property interest will 
not be made available to defense agencies under Sec. 5.2(b).<
    55. A new Sec. 5.9 is proposed to be added under the undesignated 
center heading ``Secrecy Orders'' to read as follows:


>Sec. 5.9  National security classified applications.

    (a) Patent applications and papers relating thereto that are 
national security classified and contain authorized national security 
markings of ``Confidential,'' ``Secret'' or ``Top Secret,'' as 
appropriate, are accepted by the Office. National security classified 
documents mailed to the Office must be addressed in compliance with 
Sec. 5.33. National security classified documents may be hand-carried 
to Licensing and Review.
    (b) A national security classified patent application will not be 
published pursuant to Sec. 1.306 of this chapter or allowed pursuant to 
Sec. 1.311 of this chapter until the application is declassified.
    (c) The applicant in a national security classified patent 
application must obtain a secrecy order pursuant to Sec. 5.2. In a 
national security classified patent application filed without a 
notification pursuant to Sec. 5.2(a), the Office will set a time period 
within which the application must be declassified, a secrecy order 
pursuant to Sec. 5.2 must be obtained, or evidence of a good faith 
effort to obtain a secrecy order pursuant to Sec. 5.2 from the relevant 
department or agency must be presented in order to prevent abandonment 
of the application.
    (d) Where evidence of a good faith effort to obtain a secrecy order 
pursuant to Sec. 5.2 from the relevant department or agency is 
presented within the time period set by the Office, but the application 
has not been declassified and a secrecy order pursuant to Sec. 5.2 has 
not been obtained, the Office will again set a time period within which 
the application must be declassified, a secrecy order pursuant to 
Sec. 5.2 must be obtained, or evidence of a good faith effort to again 
obtain a secrecy order pursuant to Sec. 5.2 from the relevant 
department or agency must be presented in order to prevent abandonment 
of the application.<

    Dated: July 27, 1995.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.

    Note: The following appendixes will not appear in the Code of 
Federal Regulations.

BILLING CODE 3510-16-P

[[Page 42388]]


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BILLING CODE 3510-16-C

                                                                        

[[Page 42402]]
                                               Appendix B--Comparison of Existing and Revised Fee Amounts                                               
                                                                                                                                                        
                                                                                                                     Pre-Oct                            
           37 CFR sec.                                               Description                                       1995       Oct 1995     Jan 1996 
                                                                                                                                                        
1.16(a)..........................  Basic Filing Fee..............................................................         $730         $750         $780
1.16(a)..........................  Basic Filing Fee (Small Entity)...............................................          365          375          390
1.16(b)..........................  Independent Claims............................................................           76           78           --
1.16(b)..........................  Independent Claims (Small Entity).............................................           38           39           --
1.16(c)..........................  Claims in Excess of 20........................................................           22           --           --
1.16(c)..........................  Claims in Excess of 20 (Small Entity).........................................           11           --           --
1.16(d)..........................  Multiple Dependent Claims.....................................................          240          250           --
1.16(d)..........................  Multiple Dependent Claims (Small Entity)......................................          120          125           --
1.16(e)..........................  Surcharge--Late Filing Fee....................................................          130           --           --
1.16(e)..........................  Surcharge--Late Filing Fee (Small Entity).....................................           65           --           --
1.16(f)..........................  Design Filing Fee.............................................................          300          310           --
1.16(f)..........................  Design Filing Fee (Small Entity)..............................................          150          155           --
1.16(g)..........................  Plant Filing Fee..............................................................          490          510          540
1.16(g)..........................  Plant Filing Fee (Small Entity)...............................................          245          255          270
1.16(h)..........................  Reissue Filing Fee............................................................          730          750          780
1.16(h)..........................  Reissue Filing Fee (Small Entity).............................................          365          375          390
1.16(i)..........................  Reissue Independent Claims....................................................           76           78           --
1.16(i)..........................  Reissue Independent Claims (Small Entity).....................................           38           39           --
1.16(j)..........................  Reissue Claims in Excess of 20................................................           22           --           --
1.16(j)..........................  Reissue Claims in Excess of 20 (Small Entity).................................           11           --           --
1.16(k)..........................  Provisional Application Filing Fee............................................          150           --           --
1.16(k)..........................  Provisional Application Filing Fee (Small Entity).............................           75           --           --
1.16(l)..........................  Surcharge--Incomplete Provisional App. Filed..................................           50           --           --
1.16(l)..........................  Surcharge--Incomplete Provisional App. Filed (Small Entity)...................           25           --           --
1.17(a)..........................  Extension--First Month........................................................          110           --           --
1.17(a)..........................  Extension--First Month (Small Entity).........................................           55           --           --
1.17(b)..........................  Extension--Second Month.......................................................          370          380           --
1.17(b)..........................  Extension--Second Month (Small Entity)........................................          185          190           --
1.17(c)..........................  Extension--Third Month........................................................          870          900           --
1.17(c)..........................  Extension--Third Month (Small Entity).........................................          435          450           --
1.17(d)..........................  Extension--Fourth Month.......................................................        1,360        1,400           --
1.17(d)..........................  Extension--Fourth Month (Small Entity)........................................          680          700           --
1.17(e)..........................  Notice of Appeal..............................................................          280          290           --
1.17(e)..........................  Notice of Appeal (Small Entity)...............................................          140          145           --
1.17(f)..........................  Filing a Brief................................................................          280          290           --
1.17(f)..........................  Filing a Brief (Small Entity).................................................          140          145           --
1.17(g)..........................  Request for Oral Hearing......................................................          240          250           --
1.17(g)..........................  Request for Oral Hearing (Small Entity).......................................          120          125           --
1.17(h)..........................  Petition--Not All Inventors...................................................          130           --           --
1.17(h)..........................  Petition--Correction of Inventorship..........................................          130           --           --
1.17(h)..........................  Petition--Decision on Questions...............................................          130           --           --
1.17(h)..........................  Petition--Suspend Rules.......................................................          130           --           --
1.17(h)..........................  Petition--Expedited License...................................................          130           --           --
1.17(h)..........................  Petition--Scope of License....................................................          130           --           --
1.17(h)..........................  Petition--Retroactive License.................................................          130           --           --
1.17(h)..........................  Petition--Refusing Maintenance Fee............................................          130           --           --
1.17(h)..........................  Petition--Refusing Maintenance Fee--Expired Patent............................          130           --           --
1.17(h)..........................  Petition--Interference........................................................          130           --           --
1.17(h)..........................  Petition--Reconsider Interference.............................................          130           --           --
1.17(h)..........................  Petition--Late Filing of Interference.........................................          130           --           --
1.20(b)..........................  Petition--Correction of Inventorship..........................................          130           --           --
1.17(h)..........................  Petition--Refusal to Publish SIR..............................................          130           --           --
1.17(i)..........................  Petition--For Assignment......................................................          130           --           --
1.17(i)..........................  Petition--For Application.....................................................          130           --           --
1.17(i)..........................  Petition--Late Priority Papers................................................          130           --           --
1.17(i)..........................  Petition--Suspend Action......................................................          130           --           --
1.17(i)..........................  Petition--Divisional Reissues to Issue Separately.............................          130           --           --
1.17(i)..........................  Petition--For Interference Agreement..........................................          130           --           --
1.17(i)..........................  Petition--Amendment After Issue...............................................          130           --           --
1.17(i)..........................  Petition--Withdrawal After Issue..............................................          130           --           --
1.17(i)..........................  Petition--Defer Issue.........................................................          130           --           --
1.17(i)..........................  Petition--Issue to Assignee...................................................          130           --           --
1.17(i)..........................  Petition--Accord a Filing Date Under Sec.  1.53...............................          130           --           --
1.17(i)..........................  Petition--Accord a Filing Date Under Sec.  1.62...............................          130           --           --
1.17(i)..........................  Petition--Make Application Special............................................          130           --           --
1.17(j)..........................  Petition--Public Use Proceeding...............................................        1,390        1,430           --
1.17(k)..........................  Non-English Specification.....................................................          130           --           --
1.17(l)..........................  Petition--Revive Abandoned Application........................................          110           --           --
1.17(l)..........................  Petition--Revive Abandoned Application (Small Entity).........................           55           --           --
1.17(m)..........................  Petition--Revive Unintentionally Abandoned Application........................        1,210        1,250           --
1.17(m)..........................  Petition--Revive Unintent Abandoned Application (Small Entity)................          605          625          -- 

[[Page 42403]]
                                                                                                                                                        
1.17(n)..........................  SIR--Prior to Examiner's Action...............................................          840          870           --
1.17(o)..........................  SIR--After Examiner's Action..................................................        1,690        1,740           --
1.17(p)..........................  Submission of an Information Disclosure Statement (Sec.  1.97)................          210          220           --
1.17(q)..........................  Petition--Correction of Inventorship (Provisional Application)................           50           --           --
1.17(q)..........................  Petition--Accord a filing date (Prov. App.)...................................           50           --           --
1.17(r)..........................  Filing a submission after final rejection (1.129(a))..........................          730          750           --
1.17(r)..........................  Filing a submission after final rejection (1.129(a)) (Small Entity)...........          365          375           --
1.17(s)..........................  Per add'l invention to be examined (1.129(b)).................................          730          750           --
1.17(s)..........................  Per add'l invention to be examined (1.129(b)) (Small Entity)..................          365          375           --
1.17(t)..........................  For filing a protest in an application after publication (1.291)..............           --           --          220
1.17(u)..........................  Acceptance of a late claim for priority (119(a)-(d))..........................           --           --        1,500
1.17(u)..........................  Acceptance of a late claim for benefit of prior application (119(e))..........           --           --        1,500
1.18(a)..........................  Issue Fee.....................................................................        1,210        1,250        1,280
1.18(a)..........................  Issue Fee (Small Entity)......................................................          605          625          640
1.18(b)..........................  Design Issue Fee..............................................................          420          430           --
1.18(b)..........................  Design Issue Fee (Small Entity)...............................................          210          215           --
1.18(c)..........................  Plant Issue Fee...............................................................          610          630          660
1.18(c)..........................  Plant Issue Fee (Small Entity)................................................          305          315          330
1.19(a)(1)(i)....................  Copy of Patent................................................................            3           --           --
1.19(a)(1)(ii)...................  Patent Copy--Overnight delivery to PTO Box or overnight fax...................            6           --           --
1.19(a)(1)(iii)..................  Patent Copy Ordered by Expedited Mail or Fax--Expedited service...............           25           --           --
1.19(a)(2).......................  Plant Patent Copy.............................................................           12           --           --
1.19(a)(3)(i)....................  Copy of Utility Patent or SIR in Color........................................           24           --           --
1.19(a)(4).......................  Copy of a technical contents publication......................................           --           --            9
1.19(b)(1)(i)....................  Certified Copy of Patent Application as Filed.................................           12           15           --
1.19(b)(1)(ii)...................  Certified Copy of Patent Application as Filed, Expedited......................           24           30           --
1.19(b)(2).......................  Certified or Uncertified Copy of pub. app. or patent-related file wrapper.....          150           --           --
1.19(b)(3).......................  Cert. or Uncert. Copies of Office Records, per Document.......................           25           --           --
1.19(b)(4)(i)....................  Certified or uncertified copy of first doc. contained in pending application..           --           --           75
1.19(b)(4)(ii)...................  Certified or uncertified copy of second and subsequent doc. in pending                   --           --           25
                                    application.                                                                                                        
1.19(b)(5).......................  For Assignment Records, Abstract of Title and Certification...................           25           --           --
1.19(c)..........................  Library Service...............................................................           50           --           --
1.19(d)..........................   List of Patents and Published Applications in Subclass.......................            3           --           --
1.19(e)..........................  Uncertified Statement-Status of Maintenance Fee Payment.......................           10           --           --
1.19(f)..........................  Copy of Non-U.S. Patent Document..............................................           25           --           --
1.19(g)..........................  Comparing and Certifying Copies, Per Document, Per Copy.......................           25           --           --
1.19(h)..........................  Duplicate or Corrected Filing Receipt.........................................           25           --           --
1.20(a)..........................  Certificate of Correction.....................................................          100           --           --
1.20(c)..........................  Reexamination.................................................................        2,320        2,390           --
1.20(d)..........................  Statutory Disclaimer..........................................................          110           --           --
1.20(d)..........................  Statutory Disclaimer (Small Entity)...........................................           55           --           --
1.20(e)..........................  Maintenance Fee--3.5 Years....................................................          960          990        1,020
1.20(e)..........................  Maintenance Fee--3.5 Years (Small Entity).....................................          480          495          510
1.20(f)..........................  Maintenance Fee--7.5 Years....................................................        1,930        1,990        2,020
1.20(f)..........................  Maintenance Fee--7.5 Years (Small Entity).....................................          965          995        1,010
1.20(g)..........................  Maintenance Fee--11.5 Years...................................................        2,900        2,990        3,020
1.20(g)..........................  Maintenance Fee--11.5 Years (Small Entity)....................................        1,450        1,495        1,510
1.20(h)..........................  Surcharge--Maintenance Fee--6 Months..........................................          130           --           --
1.20(h)..........................  Surcharge--Maintenance Fee--6 Months (Small Entity)...........................           65           --           --
1.20(i)(1).......................  Surcharge--Maintenance After Expiration--Unavoidable..........................          640          660           --
1.20(i)(2).......................  Surcharge--Maintenance After Expiration--Unintentional........................        1,500        1,550           --
1.20(j)..........................  Extension of Term of Patent...................................................        1,030        1,060           --
1.21(a)(1).......................  Admission to Examination......................................................          300          310           --
1.21(a)(2).......................  Registration to Practice......................................................          100           --           --
1.21(a)(3).......................  Reinstatement to Practice.....................................................           15           --           --
1.21(a)(4).......................  Certificate of Good Standing..................................................           10           --           --
1.21(a)(4).......................  Certificate of Good Standing, Suitable Framing................................           20           --           --
1.21(a)(5).......................  Review of Decision of Director, OED...........................................          130           --           --
1.21(a)(6).......................  Regrading of Examination......................................................          130           --           --
1.21(b)(1).......................  Establish Deposit Account.....................................................           10           --           --
1.21(b)(2).......................  Service Charge Below Minimum Balance..........................................           25           --           --
1.21(b)(3).......................  Service Charge Below Minimum Balance..........................................           25           --           --
1.21(c)..........................  Filing a Disclosure Document..................................................           10           --           --
1.21(d)..........................  Box Rental....................................................................           50           --           --
1.21(e)..........................  International Type Search Report..............................................           40           --           --
1.21(g)..........................  Self-Service Copy Charge......................................................          .25           --           --
1.21(h)..........................  Recording Patent Property.....................................................           40           --           --
1.21(i)..........................  Publication in the OG.........................................................           25           --          -- 

[[Page 42404]]
                                                                                                                                                        
1.21(j)..........................  Labor Charges for Services....................................................           30           --           --
1.21(k)..........................  Unspecified Other Services....................................................        (\1\)           --           --
1.21(k)..........................  Terminal Use APS-CSIR (per hour)..............................................           50           --           --
1.21(m)..........................  Processing Returned Checks....................................................           50           --           --
1.21(n)..........................  Handling Fee--Incomplete Application..........................................          130           --           --
1.21(o)..........................  Terminal Use APS-TEXT.........................................................           40           --           --
1.24.............................  Coupons for Patent and Trademark Copies.......................................            3           --           --
1.296............................  Handling Fee--Withdrawal SIR..................................................          130           --           --
1.445(a)(1)......................  Transmittal Fee...............................................................          210          220           --
1.445(a)(2)(i)...................  PCT Search Fee--No U.S. Application...........................................          640          660           --
1.445(a)(2)(ii)..................  PCT Search Fee--Prior U.S. Application........................................          420          430           --
1.445(a)(3)......................  Supplemental Search...........................................................          180          190           --
1.482(a)(1)(i)...................  Preliminary Exam Fee..........................................................          460          470           --
1.482(a)(1)(ii)..................  Preliminary Exam Fee..........................................................          690          710           --
1.482(a)(2)(i)...................  Additional Invention..........................................................          140           --           --
1.482(a)(2)(ii)..................  Additional Invention..........................................................          240          250           --
1.492(a)(1)......................  Preliminary Examining Authority...............................................          660          680          710
1.492(a)(1)......................  Preliminary Examining Authority (Small Entity)................................          330          340          355
1.492(a)(2)......................  Searching Authority...........................................................          730          750          780
1.492(a)(2)......................  Searching Authority (Small Entity)............................................          365          375          390
1.492(a)(3)......................  PTO Not ISA nor IPEA..........................................................          980        1,010        1,040
1.492(a)(3)......................  PTO Not ISA nor IPEA (Small Entity)...........................................          490          505          520
1.492(a)(4)......................  Claims--IPEA..................................................................           92           94          120
1.492(a)(4)......................  Claims--IPEA (Small Entity)...................................................           46           47           60
1.492(a)(5)......................  Filing with EPO/JPO Search Report.............................................          850          880          910
1.492(a)(5)......................  Filing with EPO/JPO Search Report (Small Entity)..............................          425          440          455
1.492(b).........................  Claims--Extra Independent (Over 3)............................................           76           78           --
1.492(b).........................  Claims--Extra Independent (Over 3) (Small Entity).............................           38           39           --
1.492(c).........................  Claims--Extra Total (Over 20).................................................           22           --           --
1.492(c).........................  Claims--Extra Total (Over 20) (Small Entity)..................................           11           --           --
1.492(d).........................  Claims--Multiple Dependents...................................................          240          250           --
1.492(d).........................  Claims--Multiple Dependents (Small Entity)....................................          120          125           --
1.492(e).........................  Surcharge.....................................................................          130           --           --
1.492(e).........................  Surcharge (Small Entity)......................................................           65           --           --
1.492(f).........................  English Translation--After 20 Months..........................................          130           --           --
2.6(a)(1)........................  Application for Registration, Per Class.......................................          245           --           --
2.6(a)(2)........................  Amendment to Allege Use, Per Class............................................          100           --           --
2.6(a)(3)........................  Statement of Use, Per Class...................................................          100           --           --
2.6(a)(4)........................  Extension for Filing Statement of Use, Per Class..............................          100           --           --
2.6(a)(5)........................  Application for Renewal, Per Class............................................          300           --           --
2.6(a)(6)........................  Surcharge for Late Renewal, Per Class.........................................          100           --           --
2.6(a)(7)........................  Publication of Mark Under Sec.  12(c), Per Class..............................          100           --           --
2.6(a)(8)........................  Issuing New Certificate of Registration.......................................          100           --           --
2.6(a)(9)........................  Certificate of Correction of Registrant's Error...............................          100           --           --
2.6(a)(10).......................  Filing Disclaimer to Registration.............................................          100           --           --
2.6(a)(11).......................  Filing Amendment to Registration..............................................          100           --           --
2.6(a)(12).......................  Filing Affidavit Under Section 8, Per Class...................................          100           --           --
2.6(a)(13).......................  Filing Affidavit Under Section 15, Per Class..................................          100           --           --
2.6(a)(14).......................  Filing Affidavit Under Sections 8 & 15, Per Class.............................          200           --           --
2.6(a)(15).......................  Petitions to the Commissioner.................................................          100           --           --
2.6(a)(16).......................  Petition to Cancel, Per Class.................................................          200           --           --
2.6(a)(17).......................  Notice of Opposition, Per Class...............................................          200           --           --
2.6(a)(18).......................  Ex Parte Appeal to the TTAB, Per Class........................................          100           --           --
2.6(a)(19).......................  Dividing an Application, Per New Application Created..........................          100           --           --
2.6(b)(1)(i).....................  Copy of Registered Mark.......................................................            3           --           --
2.6(b)(1)(ii)....................  Copy of Registered Mark, overnight delivery to PTO box or fax.................            6           --           --
2.6(b)(1)(iii)...................  Copy of Reg. Mark Ordered Via Exp. Mail or Fax, Exp. Svc......................           25           --           --
2.6(b)(2)(i).....................  Certified Copy of TM Application as Filed.....................................           12           15           --
2.6(b)(2)(ii)....................  Certified Copy of TM Application as Filed, Expedited..........................           24           30           --
2.6(b)(3)........................  Cert. or Uncert. Copy of TM-Related File Wrapper/Contents.....................           50           --           --
2.6(b)(4)(i).....................  Cert. Copy of Registered Mark, Title or Status................................           10           --           --
2.6(b)(4)(ii)....................  Cert. Copy of Registered Mark, Title or Status--Expedited.....................           20           --           --
2.6(b)(5)........................  Certified or Uncertified Copy of TM Records...................................           25           --           --
2.6(b)(6)........................  Recording Trademark Property, Per Mark, Per Document..........................           40           --           --
2.6(b)(6)........................  For Second and Subsequent Marks in Same Document..............................           25           --           --
2.6(b)(7)........................  For Assignment Records, Abstracts of Title and Cert...........................           25           --           --
2.6(b)(8)........................  Terminal Use X-SEARCH.........................................................           40           --           --
                                                                                                                                                        

[[Page 42405]]
                                                                                                                                                        
2.6(b)(9)........................  Self-Service Copy Charge......................................................         0.25           --           --
2.6(b)(10).......................  Labor Charges for Services....................................................           30           --           --
2.6(b)(11).......................  Unspecified Other Services....................................................        (\1\)           --          -- 
                                                                                                                                                        
\1\ Actual cost.                                                                                                                                        


[FR Doc. 95-18886 Filed 8-14-95; 8:45 am]
BILLING CODE 3510-16-P