[Federal Register Volume 61, Number 161 (Monday, August 19, 1996)]
[Rules and Regulations]
[Pages 42790-42807]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 96-21073]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No: 950620162-6014-02]
RIN 0651-AA75


Miscellaneous Changes in Patent Practice

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Patent and Trademark Office (Office) is amending the rules 
of practice in patent cases to implement a number of miscellaneous 
changes proposed in the rulemaking entitled ``Changes to Implement 18-
Month Publication of Patent Applications'' (Notice of Proposed 
Rulemaking), published in the Federal Register at 60 FR 42352 (August 
15, 1995), and in the Patent and Trademark Office Official Gazette 1177 
Off. Gaz. Pat. Office 61 (August 15, 1995), that are not directly 
related to the 18-month publication of patent applications. While the 
proposed rule changes in the Notice of Proposed Rulemaking were 
designed primarily to implement the changes in practice related to the 
publication of patent applications provided for in H.R. 1733, these 
miscellaneous proposed changes clarify current rules of practice, 
without regard to the publication of patent applications.

DATES: Effective Date: September 23, 1996.

    Applicability Date: Sections 1.52 (a) and (b), 1.58, 1.72 (b), 1.75 
(g), (h) and (i), 1.77, 1.84 (c), (f), (g) and (x), 1.96, 1.154, and 
1.163 of 37 CFR apply to applications filed on or after September 23, 
1996.

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 
Assistant Commissioner for Patents, Washington, D.C. 20231. For copies 
of the forms discussed in this final rule package, contact the Customer 
Service Center of the Office of Initial Patent Examination at (703) 
308-1214.

SUPPLEMENTARY INFORMATION: This final rule package is designed to 
implement the miscellaneous changes set forth in the proposed 
rulemaking entitled ``Changes to Implement 18-Month Publication of 
Patent Applications'' (Notice of Proposed Rulemaking) that are not 
directly related to 18-month publication of patent applications and 
that are considered desirable even in the absence of an 18-month 
publication system.
    The Notice of Proposed Rulemaking indicated that, in addition to 
implementing the 18-month publication of patent applications, the 
Office also proposed to: (1) Clarify which applications claiming the 
benefit of prior applications, or which 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) provide for those instances in which 
inventions of a pending application or patent under reexamination and 
inventions of a patent held by a single party are not identical, but 
not patentably distinct; (4) clarify the practice for the delivery or 
mailing of patents; (5) expedite the entry of international 
applications into the national stage; and (6) amend a number of rules 
for consistency and clarity. The Notice of Proposed Rulemaking stated 
that these proposed rule changes may be adopted as final rules even in 
the absence of an 18-month publication system, and advised interested 
persons to comment on any proposed rule change, regardless of whether 
H.R. 1733 is enacted.
    To avoid delays in the implementation of rule changes considered 
desirable even in the absence of an 18-month publication system, this 
final rule package provides for changes to 37 CFR 1.12(c), 1.14, 1.52 
(a) and (b), 1.54, 1.58, 1.62 (e) and (f), 1.72(b), 1.75(g), 1.77, 1.78 
(a) and (c), 1.84 (c), (f), (g) and (x), 1.96, 1.97, 1.107, 1.110, 
1.131, 1.132, 1.154, 1.163, 1.291, 1.292, 1.315, 1.321 and 1.497, and 
adds new Secs. 1.5(f), 1.75 (h) and (i), and 1.130, all of which are 
based upon the changes proposed in the Notice of Proposed Rulemaking.

Implementation of 18-Month Publication Held in Abeyance Pending 
Congressional Action on H.R. 1733

    The Notice of Proposed Rulemaking also proposed changes to 37 CFR 
1.4, 1.5(a), 1.9, 1.11, 1.12 (a) and (b), 1.13, 1.16, 1.17, 1.18, 1.19, 
1.20, 1.24, 1.51, 1.52(d), 1.53, 1.55, 1.60, 1.78(a), 1.84(j), 1.85, 
1.98, 1.108, 1.136, 1.138, 1.492, 1.494, 1.495, 1.701, 1.808, 3.31, 
5.1, new Secs. 1.5(g), 1.306 through 1.308 and 5.9,

[[Page 42791]]

and further changes to Secs. 1.14, 1.54, 1.62, 1.107, 1.131, 1.132, 
1.291 and 1.292 to implement the 18-month publication of patent 
applications as contained in H.R. 1733 and provide procedures for the 
treatment of national security classified applications. The adoption of 
changes to these rules is held in abeyance pending Congressional action 
on H.R. 1733.
    The proposed rule changes in the Notice of Proposed Rulemaking to 
provide new procedures for the treatment of national security 
classified applications are also being held in abeyance. These proposed 
rule changes are separable from the implementation of 18-month 
publication; however, they are sufficiently related to the 
implementation of 18-month publication that they are also being held in 
abeyance pending Congressional action on H.R. 1733.
    In the event that H.R. 1733 is enacted, a final rule package to 
implement this legislation will be published. Final rules to implement 
18-month publication of patent applications based upon the Notice of 
Proposed Rulemaking and the comments received in response to the Notice 
of Proposed Rulemaking may be adopted without either an additional 
public hearing or an additional proposal being published for comment.

Implementation of the Miscellaneous Changes Proposed in the Notice of 
Proposed Rulemaking

    The following paragraphs of this section include: (1) A discussion 
of the rules being added or amended in this final rule package, (2) the 
reasons for those additions and amendments, and (3) an analysis of the 
comments received in response to the Notice of Proposed Rulemaking.

Changes to Proposed Rules

    These final rules contain a number of changes to the text of the 
rules as proposed for comment. The significant changes are discussed 
below. Familiarity with the Notice of Proposed Rulemaking is assumed.
    Sections 1.14 (a) and (b) have been re-written for clarity. Section 
1.14(a)(1) provides that patent applications are generally preserved in 
confidence. Section 1.14(a)(2) sets forth the circumstances under which 
status information concerning an application may be supplied, and 
Sec. 1.14(a)(3) sets forth the circumstances under which access to, or 
copies of, an application may be provided. Section 1.14(b) provides 
that abandoned applications may be destroyed after 20 years from their 
filing date. The reference to paragraph (b) in Sec. 1.14(e) has been 
deleted for consistency with the changes to paragraphs (a) and (b) of 
Sec. 1.14.
    Section 1.52(a) is being changed to provide that all papers which 
are to become a part of the permanent records of the Patent and 
Trademark Office must be legibly ``written either by a typewriter or 
mechanical printer in permanent dark ink or its equivalent,'' rather 
than ``typed in permanent dark ink.'' This change will permit the 
filing of papers printed by any computer operated printer, such as a 
laser printer which uses toner rather than ink, and will avoid a 
conflict between Sec. 1.52(a) and Patent Cooperation Treaty (PCT) Rule 
11.9. The phrase ``when required by the Office'' was also added to 
Sec. 1.52(a).
    Section 1.52(b) is being changed to provide that: (1) The 
application papers must be plainly written with each page printed on 
only one side of a sheet of paper, with the claim or claims commencing 
on a separate sheet and the abstract commencing on a separate sheet; 
(2) the lines of the specification, and any amendments to the 
specification, must be 1\1/2\ or double spaced; and (3) the pages of 
the specification including claims and abstract must be numbered 
consecutively, starting with 1, the numbers being centrally located 
above or preferably, below, the text. This change will clarify: (1) The 
separate sheet requirement for both the claims and abstract, (2) that 
the lines of the papers not comprising the specification and amendments 
thereto need not be 1\1/2\ or double spaced, and (3) that the 
specification, and not the transmittal sheets or other forms, must be 
numbered.
    Section 1.58 is being changed to provide that chemical and 
mathematical formulae and tables must be presented in compliance with 
Secs. 1.52 (a) and (b), except that chemical and mathematical formulae 
or tables may be placed in a landscape orientation if they cannot be 
presented satisfactorily in a portrait orientation. This replaces the 
requirement that ``[t]o facilitate camera copying when printing, the 
width of formulas and tables as presented should be limited normally to 
12.7 cm. (5 inches) so that it may appear as a single column in the 
printed patent.'' However, chemical and mathematical formulae and 
tables must still otherwise comply with Secs. 1.52 (a) and (b). This 
change will avoid a conflict between Sec. 1.58 and PCT Rule 11.10(d). 
Section 1.58 is also being changed to require ``0.21 cm.'' rather than 
``2.1 mm.'' to ensure consistency.
    Section 1.72 is being changed to provide that the abstract must 
commence on a separate sheet, preferably following the claims. This 
change will avoid renumbering pages of a specification submitted in the 
arrangement set forth in Sec. 1.77 when filing the application as an 
international application.
    Section 1.75(h) is being changed to provide that the claim or 
claims must commence on a separate sheet. This change will clarify that 
Sec. 1.75 requires that the claim or claims commence or begin on a 
separate sheet, rather than requiring that all of the claims must be on 
a single separate sheet or that each claim must be on a separate sheet.
    Section 1.77 is being changed to position the abstract as element 
``(12)'' following the claims, rather than element ``(3)'' prior to the 
first page of the specification to conform to Sec. 1.72.
    Section 1.78(a)(2) is being changed to replace the reference to 
Sec. 1.14(b) with a reference to Sec. 1.14(a).
    Section 1.78(c) is being changed to replace the phrase ``[w]here an 
application or a patent under reexamination and an application or a 
patent'' with the phrase ``[w]here an application or a patent under 
reexamination and at least one other application,'' since conflicting 
claims between an application or a patent under reexamination and a 
patent will be provided for in new Sec. 1.130. Section 1.78(c) is also 
being changed to delete the sentence ``[i]n addition to making said 
statement, the assignee may also explain why an interference should or 
should not be declared,'' since the Office will not, unless good cause 
is shown, declare or continue an interference when the application(s) 
and patent are owned by a single party.
    Section 1.78(d) is removed. The provisions of Sec. 1.78(d), as 
proposed, are in new Sec. 1.130(b), since Sec. 1.130 provides for 
conflicting claims between an application or a patent under 
reexamination and a patent.
    Section 1.84(x) is being changed from ``[n]o holes should be 
provided in the drawings sheets'' to ``[n]o holes should be made by the 
applicant in the drawing sheets'' to clarify that the application 
papers, including drawings, should be submitted by the applicant 
without holes provided therein, but that the Office will drill holes 
through the application papers during the pre-examination processing of 
the application.
    Section 1.96(b) is being changed to provide that a listing 
submitted as part of the specification ``must be direct printouts 
(i.e., not copies) from the computer's printer'' for clarity.
    Section 1.96(c) is being changed to substitute a reference to 36 
CFR Part

[[Page 42792]]

1230 (Micrographics) for the enumerated American National Standards 
Institute (ANSI) and National Micrographics Association (NMA) 
standards. As 36 CFR Part 1230 sets forth the micrographic requirements 
for government records, it is appropriate to reference this provision, 
rather than promulgate separate standards for micrographics employed in 
patent applications.
    Section 1.97 is being changed to delete any reference to a 
reexamination proceeding or a patent owner. The submission of an 
information disclosure statement during a reexamination proceeding is 
governed by Sec. 1.555(a).
    Section 1.97(a) is being changed from ``[i]n order for an applicant 
for patent or for reissue of a patent 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'' to ``[i]n order for an applicant for a 
patent or for a reissue of a patent to have an information disclosure 
statement in compliance with Sec. 1.98 considered by the Office during 
the pendency of the application, it must satisfy paragraph (b), (c), or 
(d) of this section'' for clarity. Sections 1.97 (c) and (d) are also 
being changed to clarify the conditions in Sec. 1.97(c) under which a 
certification as specified in Sec. 1.97(e) or the fee set forth in 
Sec. 1.17(p) is required, and the conditions in Sec. 1.97(d) under 
which a certification as specified in Sec. 1.97(e), a petition, and the 
petition fee set forth in Sec. 1.17(i) are required.
    Section 1.110 is amended to change the reference to Sec. 1.78(d) to 
a reference to Sec. 1.130 for consistency.
    The proposed addition of a new Sec. 1.131(a)(3) is being withdrawn 
in this final rule package. This proposed change, as well as the 
provisions of former Sec. 1.78(d), has been re-written as a new 
Sec. 1.130. New Sec. 1.130(a) will provide a procedure for the 
disqualification of a commonly owned patent claiming a patentably 
indistinct but not identical invention. New Sec. 1.130(b) will include 
the provisions of former Sec. 1.78(d).
    Section 1.131(a) is being changed to replace the phrase ``U.S. 
patent to another'' with ``U.S. patent to another or others.''
    Section 1.154(a)(7) is being changed to add ``[f]eature'' prior to 
``[d]escription,'' and Sec. 1.154(a)(8) is being changed to add ``a 
single'' prior to ``claim.''
    Section 1.163 is being changed to position the abstract as element 
``(11)'' following the claims, rather than element ``(3)'' prior to the 
first page of the specification. This change will parallel the change 
to Sec. 1.77. In addition, Sec. 1.163(c)(10) is being changed to add 
``a single'' prior to ``claim.''
    Section 1.497(b)(2) is being changed to provide that ``[i]f the 
person making the oath or declaration is not the inventor, the oath or 
declaration shall state the relationship of the person to the inventor, 
the facts required by Secs. 1.42, 1.43 or 1.47, and, upon information 
and belief, the facts which the inventor would have been required to 
state'' to better set forth the requirements of an oath or declaration 
by a person who is not the inventor. Section 1.497(c) is being changed 
to delete the initial phrase ``[t]he oath or declaration must comply 
with the requirements of Sec. 1.63; however,'' since it is unnecessary.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1 is amended as 
follows:
    Section 1.5(f) is added to provide that a paper concerning a 
provisional application must identify the application as such and by 
the application number.
    Section 1.12 is amended to revise paragraph (c) to read ``preserved 
in confidence under Sec. 1.14'' for consistency with Sec. 1.14.
    Section 1.14 is amended to 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) is amended to add a paragraph (a)(1) to provide 
that patent applications are generally preserved in confidence pursuant 
to 35 U.S.C. 122, and that no information will be given concerning the 
filing, pendency, or subject matter of any application for patent, and 
no access will be given to, or copies furnished of, any application or 
papers relating thereto, except as set forth in Sec. 1.14.
    Section 1.14(a) is also amended to add a paragraph (a)(2) to 
provide that status may be supplied: (1) Concerning an application or 
any application claiming the benefit of the filing date of the 
application, if the application has been identified by application 
number or serial number and filing date in a published patent document; 
(2) concerning the national stage application or any application 
claiming the benefit of the filing date of a published international 
application, if the United States of America has been indicated as a 
Designated State in the international application; or (3) when it has 
been determined by the Commissioner to be necessary for the proper 
conduct of business before the Office. Status information includes 
information such as whether the application is pending, abandoned, or 
patented, as well as the application number and filing date. The 
inclusion of applications claiming the benefit of the filing date of 
applications so identified is to avoid misleading the public in 
instances in which the application identified as set forth in 
Sec. 1.14(a)(2) is abandoned, but an application claiming the benefit 
of the filing date of the identified application (e.g., a continuing 
application) is pending.
    Section 1.14(a) is also amended to add a new paragraph (a)(3) to 
provide that access to, or copies of, an application may be provided: 
(1) When the application is open to the public as provided in 
Sec. 1.11(b); (2) when written authority in that application from the 
applicant, the assignee of the application, or the attorney or agent of 
record has been granted; (3) when it has been determined by the 
Commissioner to be necessary for the proper conduct of business before 
the Office, or (4) to any person on written request, without notice to 
the applicant, when the application is abandoned and available and is: 
(a) Referred to in a U.S. patent, (b) referred to in an application 
open to public inspection, (c) an application which claims the benefit 
of the filing date of an application open to public inspection, or (d) 
an application in which the applicant has filed an authorization to lay 
open the complete application to the public.
    Section 1.14(b) is amended to provide that complete applications 
(Sec. 1.51(a)) which are abandoned may be destroyed and hence may not 
be available for access or copies as permitted by paragraph (a)(3)(iv) 
of this section after 20 years from their filing date, except those to 
which particular attention has been called and which have been marked 
for preservation. The sentence in Sec. 1.14(b) concerning the non-
return of abandoned applications is deleted as duplicative of the 
provision in Sec. 1.59, which provides that papers in an application 
which has received a filing date will not be returned, and is unrelated 
to the preservation of applications in confidence under Sec. 1.14.
    Section 1.52(a) is amended to provide that all papers which are to 
become a part of the permanent records of the Office must be legibly 
written by a typewriter or mechanical printer in permanent dark ink or 
its equivalent in portrait orientation on flexible, strong, smooth, 
non-shiny, durable and white paper. Section 1.52(a) is further amended 
to provide that the application papers must be presented in a form

[[Page 42793]]

having sufficient clarity and contrast between the paper and the 
writing thereon to permit electronic reproduction by use of digital 
imaging and optical character recognition, as well as the direct 
photocopy reproduction currently provided for. Section 1.52(a) is 
further amended to provide that substitute typewritten or mechanically 
printed papers ``will'' be required if the original application papers 
are not of the required quality. As any substitute typewritten or 
mechanically printed 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) is 
amended to include a specific reference to Sec. 1.125.
    Section 1.52(b) is amended to provide that the claim or claims must 
commence on a separate sheet and the abstract must commence on a 
separate sheet. Section 1.72(b) provides that the abstract must 
commence on a separate sheet, and Sec. 1.75(h) provides that the claim 
or claims must commence on a separate sheet. Section 1.52(b) is amended 
to provide that the sheets of paper must all 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 made in the submitted paper 
sheets. Section 1.52(b) is further amended to provide that the lines of 
the specification, and any amendments to the specification, ``must'' be 
1\1/2\ or double spaced, and that the pages of the specification 
``must'' be numbered consecutively, starting with page one, with the 
numbers being centrally located above or below the text. Finally, 
Sec. 1.52(b) is amended to 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.
    The proposed changes to Secs. 1.52 (a) and (b), 1.58, 1.72(b), 1.75 
(g), (h), and (i), 1.77, 1.84 (c), (f), (g), and (x), 1.96, 1.154, and 
1.163 pertaining to the format and standards for application papers and 
drawings in the Notice of Proposed Rulemaking are considered desirable, 
regardless of whether H.R. 1733 is enacted.
    While the vast majority of applications currently comply with 
Secs. 1.52 (a) and (b), 1.58, 1.72(b), 1.75(h), 1.84 (c), (f), (g), and 
(x), and 1.96 as adopted in this final rule, those applications which 
do not comply with Secs. 1.52 (a) and (b), 1.58, 1.84 (c), (f), (g), 
and (x), and 1.96 as adopted in this final rule (e.g., applications 
containing hand-written papers) create an inordinate administrative 
burden on the Office during the initial processing, examination, and 
publishing of the application as a patent. In addition, the Office 
plans to replace or augment the current microfilming process with 
electronic data capture of at least the technical content (i.e., the 
specification, abstract, claims and drawings) of the application-as-
filed for internal Office use, regardless of whether H.R. 1733 is 
enacted. Therefore, the Office will no longer permit these relatively 
few applicants to submit application papers and drawings that do not 
meet the standards set forth in Secs. 1.52 (a) and (b), 1.58, 1.84 (c), 
(f), (g), and (x), and 1.96 as adopted in this final rule.
    The application format set forth in Secs. 1.75 (g) and (i), 1.77, 
1.154, and 1.163 as adopted in this final rule merely expresses the 
Office's preferences for format of utility, design and plant 
applications. They do not set forth mandatory requirements for 
application papers and drawings.
    Section 1.54(b) is amended to change ``application serial number'' 
to ``application number'' for consistency with Sec. 1.5(a).
    Section 1.58(b) is removed and is reserved as unnecessary in view 
of the amendments to Secs. 1.52 (a) and (b).
    Section 1.58(c) is amended to provide that chemical and 
mathematical formulae and tables must be presented in compliance with 
Secs. 1.52 (a) and (b), except that chemical and mathematical formulae 
or tables may be placed in a landscape orientation if they cannot be 
presented satisfactorily in a portrait orientation. Section 1.58(c) is 
further amended to delete the following sentences to conform to the 
writing and paper size and orientation limitations in Secs. 1.52 (a) 
and (b): (1) ``[t]o facilitate camera copying when printing, the width 
of formulas and tables as presented should be limited normally to 12.7 
cm. (5 inches) so that it may appear as a single column in the printed 
patent''; (2) ``[i]f 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''; and (3) ``[h]and lettering must be 
neat, clean, and have a minimum character height of 0.08 inch (2.1 
mm.).'' Section 1.58(c) is further amended to insert ``chosen'' between 
``must be'' and ``from a block (nonscript) type font.'' Section 1.58(c) 
is further amended to provide metric dimensions with English 
equivalents in parentheticals, rather than vice versa.
    Section 1.62(e) is amended to change ``application serial number'' 
to ``application number'' for consistency with Sec. 1.5(a).
    Section 1.62(f) is amended to change ``secrecy'' to ``confidence'' 
as is found in 35 U.S.C. 122 and Sec. 1.14, and change ``37 CFR 1.14'' 
to ``Sec. 1.14'' for consistency.
    Section 1.72(b) is amended to provide that the abstract must 
``commence,'' rather than ``be set forth,'' on a separate sheet. This 
change will conform the ``separate sheet'' requirement for the abstract 
with that for the claims.
    Section 1.75 is amended to include an amendment to paragraph (g), 
and would add two new paragraphs. Section 1.75(g) is amended to add the 
phrase ``[t]he least restrictive claim should be presented as claim 
number 1'' to the beginning of the paragraph. Section 1.75(h) is added 
to provide that the claim or claims must commence on a separate sheet. 
Section 1.75(i) is added to 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.
    Section 1.77 is amended to 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) 
title of the invention; or an introductory portion stating the name, 
citizenship, and residence of the applicant, and the title of the 
invention; (4) cross-reference to related applications; (5) statement 
regarding federally sponsored research or development; (6) reference to 
a ``Microfiche appendix; (7) background of the invention; (8) brief 
summary of the invention; (9) brief description of the several views of 
the drawing; (10) detailed description of the invention; (11) claim or 
claims; (12) abstract of the disclosure; (13) drawings; (14) executed 
oath or declaration; and (15) sequence listing.
    The phrase ``if applicable'' is 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 is further amended to provide that the (1) 
title of the invention; (2) cross-reference to related applications; 
(3) statement regarding federally sponsored research or development; 
(4) background of the invention; (5) brief summary of the

[[Page 42794]]

invention; (6) brief description of the several views of the drawing; 
(7) detailed description of the invention; (8) claim or claims; (9) 
abstract of the disclosure; 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 is amended to 
change the reference to Sec. 1.96(b) in Sec. 1.77(a)(6) to Sec. 1.96(c) 
for consistency with Sec. 1.96.
    Section 1.78(a)(2) is amended to replace the reference to 
Sec. 1.14(b) with a reference to Sec. 1.14(a) for consistency with 
Secs. 1.14 (a) and (b) as amended.
    Section 1.78(c) is amended to change ``two or more applications, or 
an application and a patent'' to ``an application or a patent under 
reexamination and at least one other application'' such that the 
provisions of Sec. 1.78(c) will also be applicable to a patent under 
reexamination. Section 1.78(c) is also amended to 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(c) is also amended to delete the sentence ``[i]n 
addition to making said statement, the assignee may also explain why an 
interference should or should not be declared.''
    Section 1.78(d) is removed. The provisions of former Sec. 1.78(d), 
as proposed, are in new Sec. 1.130(b).
    Section 1.84(c) is amended to 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.
    Section 1.84(f) is amended to 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) is amended to delete the margin requirements for 
the sheet sizes that are no longer acceptable in view of the changes to 
Sec. 1.84(f). Section 1.84(g) is further amended to provide that the 
sheets should have scan targets (cross-hairs) on two catercorner margin 
corners. Finally, Sec. 1.84(g) is amended to 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(x) is 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 1.96 is amended to designate the text preceding current 
paragraph (a) as paragraph (a) ``General,'' and would redesignate 
current paragraphs (a) and (b) as paragraphs (b) and (c), respectively. 
New Sec. 1.96(a) is 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) is further amended to: (1) 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 direct printouts (i.e., 
not copies) from the computer's printer with dark solid black letters 
not less than 0.21 cm. high, on white, unshaded and unlined paper, and 
the sheets should be submitted in a protective cover''; (2) 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 (3) delete the 
phrase ``if the copy is to be used for camera ready copy.'' New 
Sec. 1.96(b)(1) provides that the requirements of Sec. 1.84 apply to 
computer program listings submitted as sheets of drawings, and new 
Sec. 1.96(b)(2) provides that the requirements of Sec. 1.52 apply to 
computer program listings submitted as part of the specification.
    New Sec. 1.96(c) is amended to: (1) Change the references to 
Sec. 1.77(c)(2) in Sec. 1.96(c) to Sec. 1.77(a)(6) for consistency with 
Sec. 1.77; (2) change ``may'' and ``should'' to ``must''; (3) delete 
the sentence ``[a]ll computer program listings submitted on paper will 
be printed as part of the patent''; (4) relocate the phrase ``except as 
modified or clarified below'' in subsection (c)(2); (5) 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; (6) change the references to the specific 
American National Standards Institute (ANSI) or National Micrographics 
Association (NMA) standards with 36 CFR Part 1230; (7) change ``serial 
number'' to ``application number''; and (8) provide metric dimensions 
with English equivalents in parentheticals, rather than vice versa.
    Section 1.97(a) is amended to include the phrase ``for an applicant 
for patent or for reissue of a patent.'' Paragraphs (a)-(d) are amended 
to include the phrase ``by the applicant'' 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. As discussed supra, Secs. 1.97 (a), (c) and (d) 
are also being amended for clarity. Section 1.97(c) is 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 1.107 is amended to delete the phrase ``and the classes of 
inventions.''
    Section 1.110 is amended to change the reference to Sec. 1.78(d) to 
a reference to Sec. 1.130 for consistency with the removal of 
Sec. 1.78(d), and the location of the provisions of former Sec. 1.78(d) 
in Sec. 1.130(b).
    A new paragraph (a)(3) in Sec. 1.131 was proposed in the Notice of 
Proposed Rulemaking to 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. Upon further 
study, it is considered

[[Page 42795]]

appropriate to disqualify such patents, and provide for the obviation 
of judicially created double patenting rejections in an application or 
a patent under reexamination by the filing of a terminal disclaimer in 
accordance with Sec. 1.321(c), in a separate Sec. 1.130.
    New Sec. 1.130(a) provides that when any claim of an application or 
a patent under reexamination is rejected under 35 U.S.C. 103 on a U.S. 
patent to another or others which is not prior art under 35 U.S.C. 
102(b), and the inventions defined by the claims in the application or 
patent under reexamination and by the claims in the patent are 
patentably indistinct but not identical as set forth in 35 U.S.C. 101, 
and the inventions are owned by the same party, the applicant or owner 
of the patent under reexamination may disqualify the patent as prior 
art. Section 1.130(a) specifically provides that the patent can be 
disqualified as prior art by submission of: (1) A terminal disclaimer 
in accordance with Sec. 1.321(c), and (2) an oath or declaration 
stating that the application or patent under reexamination and the 
patent are currently owned by the same party, and that the inventor 
named in the application or patent under reexamination is the prior 
inventor under 35 U.S.C. 104.
    Where inventions defined by the rejected claims in the application 
or a patent under reexamination and by the claims in the patent upon 
which the rejection is based are patentably distinct, the rejection may 
be overcome pursuant to Sec. 1.131. Since Sec. 1.130 applies only when 
inventions defined by the claims in an application or a patent under 
reexamination and by the claims in the patent are patentably 
indistinct, Sec. 1.130 expressly provides that an oath or declaration 
submitted pursuant to Sec. 1.130 to disqualify a patent must be 
accompanied by a terminal disclaimer in accordance with Sec. 1.321(c).
    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. 1.130 is limited to 
rejections based upon a patent.
    New Sec. 1.130(b) includes the provisions of former Sec. 1.78(d), 
as proposed in the Notice of Proposed Rulemaking. Former Sec. 1.78(d) 
was proposed to be amended to change ``obviousness-type double 
patenting rejection'' to ``non-statutory double patenting rejections'' 
as current examining procedures authorize non-obviousness-type double 
patenting rejections, as well as obviousness-type double patenting 
rejections (See section 804(II) of the Manual of Patent Examining 
Procedure (MPEP)), and either may be obviated by filing a terminal 
disclaimer in accordance with Sec. 1.321(c). The phrase ``non-statutory 
double patenting rejection,'' however, is being replaced with 
``judicially created double patenting rejection'' to better set forth 
the legal basis for the rejection.
    Section 1.78(d) was also proposed to be amended to change each 
instance of ``application'' to ``application or a patent under 
reexamination'' for consistency with Sec. 1.321 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 
judicially created double patenting rejection in a patent under 
reexamination may be obviated by filing a terminal disclaimer in 
accordance with Sec. 1.321(c).
    New Sec. 1.130(b) specifically provides that 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 or a different inventive entity, a double 
patenting rejection will be made in the application or a patent under 
reexamination, and that a judicially created double patenting rejection 
may be obviated by filing a terminal disclaimer in accordance with 
Sec. 1.321(c).
    Section 1.131 is amended to change ``U.S. patent to another'' to 
``U.S. patent to another or others'' to parallel the language in 35 
U.S.C. 102(a), as well as 35 U.S.C. 102(e).
    Section 1.132 is amended to change ``domestic patent'' to ``U.S. 
patent,'' and ``does not claim the invention'' to ``does not claim the 
same patentable invention, as defined in Sec. 1.601(n)'' for 
consistency with Sec. 1.131.
    Section 1.154 is amended to 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) feature description; (8) a single 
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 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. This amendment to 
Sec. 1.154, however, does not modify the current requirement that an 
application for a design patent have but a single claim.
    A new Sec. 1.163(c) is 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) 
title of the invention; (4) cross-reference to related applications; 
(5) statement regarding federally sponsored research or development; 
(6) background of the invention; (7) brief summary of the invention; 
(8) brief description of the drawing; (9) detailed botanical 
description; (10) a single claim; (11) abstract of the disclosure; (12) 
drawings (in duplicate); (13) executed oath or declaration; and (14) 
Plant Color Coding Sheet. The phrase ``if applicable'' is 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. This amendment to Sec. 1.163, however, does not 
modify the current requirement that an application for a plant patent 
have but a single claim.
    A new Sec. 1.163(d) is 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 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 in a systematic manner will facilitate the examination 
of the application.
    Section 1.291 is amended to provide that a protest must be filed 
prior to the mailing of a Notice of Allowance to be considered timely. 
As a protest cannot be considered subsequent to issuance of the 
application as a patent, Sec. 1.291(b) is amended to provide that the 
protest will be considered if the application is still pending when the 
protest and application file are provided to the examiner (i.e., that 
the application was pending at the time the protest was filed would be 
immaterial to its ultimate consideration). Finally, the sentences

[[Page 42796]]

``[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 Sec. 1.291 are changed to ``[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 
returned to the protestor and will not be further considered by the 
Office,'' respectively, and are located in paragraph (b). The Office 
will acknowledge protests prior to their entry into the application 
file or return to the protestor, as appropriate.
    Section 1.292 is amended to delete the phrase ``is filed by one 
having information of the pendency of an application'' as unnecessary, 
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 is amended to further require that any petition be served 
on the applicant in accordance with Sec. 1.248, or be filed with the 
Office in duplicate in the event that service on the applicant is not 
possible. Finally, Sec. 1.292 is amended to provide that a petition to 
institute public use proceedings to be considered timely must be filed 
prior to the mailing of a Notice of Allowance.
    Section 1.315 is amended to change ``the attorney or agent of 
record, if there be one; or if the attorney or agent so request, 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 request'' to ``the correspondence address of record. 
See Sec. 1.33(a).'' This change is to simplify Sec. 1.315, and because 
patents are currently mailed to the patentee at the correspondence 
address of record.
    Section 1.321(c) is amended to change ``double patenting 
rejection'' to ``judicially created double patenting rejection'' for 
consistency with Sec. 1.78(c) and to clarify that the filing of a 
terminal disclaimer is ineffective to overcome a statutory double 
patenting rejection.
    Section 1.497(a) is 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) is amended to 
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) is subdivided into paragraphs (b)(1) and (b)(2). 
Section 1.497(b)(1) is amended to 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) is amended to 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, the oath 
or declaration shall state the relationship of the person to the 
inventor, the facts required by Secs. 1.42, 1.43 or 1.47, and, upon 
information and belief, the facts which the inventor would have been 
required to state.''
    Section 1.497(c) is added to provide that the oath or declaration 
must comply with the requirements of Sec. 1.63. Section 1.497(c) 
further provides that in instances where the oath or declaration does 
not comply with Sec. 1.63, but meets the requirements of Sec. 1.497 (a) 
and (b), 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.

Response to Comments

    Two hundred and forty-two written comments were received in 
response to the Notice of Proposed Rulemaking. A public hearing was 
held on September 19, 1995. Eight persons testified at the public 
hearing.
    The written comments, and the testimony at the public hearing, have 
been analyzed. In the event that H.R. 1733 is enacted, the comments 
directed to the proposed changes to the rules of practice to implement 
the 18-month publication of patent applications will be considered and 
addressed in the final rule package to implement 18-month publication. 
Responses to the comments germane to the changes in this final rule 
package follow.
    Comment (1): One comment suggested that, in the absence of an 18-
month publication system, the proposed rules relating to application 
format and standardization of applications be republished to give the 
public an opportunity to comment on the desirability of these changes 
in the absence of an 18-month publication system.
    Response: The Notice of Proposed Rulemaking specifically stated 
that the proposed rules relating to application format and 
standardization of applications may be adopted as final rules even in 
the absence of an 18-month publication system, and specifically advised 
interested members of the public to comment on the advisability of the 
proposed rules relating to application format and standardization of 
applications, regardless of the legislative action on H.R. 1733. Thus, 
the public was given an opportunity to comment on the desirability of 
these changes in the absence of an 18-month publication system. Because 
the standardization of applications is generally favored and will 
substantially improve the Office's ability to efficiently and 
effectively process applications, delaying their adoption as final 
rules is not justified.
    Comment (2): One comment stated that the Office has the authority 
to require that applications be submitted in computer-readable form, 
and in fact requires sequence listings to be submitted in such form. 
The comment suggested that the cost of electronically scanning 
application papers, as well as errors in scanning the application 
papers, can be avoided by requiring applicants to provide the 
specification in computer-readable form. Another comment stated that 
the Office has the authority to permit electronic filing, and 
electronic filing should be permitted. Several other comments indicated 
that

[[Page 42797]]

scanning an application into a data base, rather than permitting 
applicants to provide a copy of the application on an electronic 
medium, is more costly, and is further more likely to introduce errors 
that could render text searching unreliable. And, several comments 
suggested that the scanning and typesetting costs associated with the 
current publication process for issued patents could be reduced by the 
acceptance of electronic media in place of or in addition to the paper 
medium currently provided for in the rules of practice. These comments 
further suggested that the Office should establish fees that reflect 
the reduced cost to the Office when a copy of an application is 
provided on an electronic medium (i.e., should establish reduced fees 
for those who submit a copy of their application on an electronic 
medium), which fee structure would provide an incentive to supply a 
copy of an application on an electronic medium.
    Response: As discussed in the Notice of Proposed Rulemaking, while 
the Office is considering the legislative and regulatory changes that 
would be necessary to permit purely electronic filing of application 
papers, it does not currently have in place an automated system for the 
acceptance and processing of application papers in electronic form, 
other than for sequence listings. Moreover, the Office does not 
currently have the statutory authority to rebate statutory patent 
filing fees to reflect any reduced cost to the Office due to the 
submission of a copy of an application on an electronic medium. The 
Office will give the comments further consideration as it designs and 
develops the Patent Application Management (PAM) system.
    Comment (3): Several comments noted that Secs. 1.52 (a) and (b) 
impose a standard on applicants not currently observed by the Office, 
and questioned whether papers in the application file prepared by the 
Office will comply with Secs. 1.52 (a) and (b).
    Response: Sections 1.52 (a) and (b) apply to the application 
papers, and amendments or corrections thereto. As such, Secs. 1.52 (a) 
and (b) do not apply to those papers in the application file prepared 
by the Office, since they do not become part of the printed patent.
    Comment (4): One comment noted that proposed Sec. 1.52 appears to 
be neutral with regard to numbering the lines (e.g., a line number 
every five lines) of the specification, and suggested that line 
numbering is a beneficial practice which should be permitted, and even 
encouraged.
    Response: Section 1.52 neither requires nor prohibits line 
numbering. Applicants are encouraged, but not required, to number the 
lines of the specification. The Office will give the suggestion further 
study and consideration in future rulemaking.
    Comment (5): One comment noted that when paragraphs are separated 
by a blank line only (i.e., no indentation) and end between pages, it 
is not possible to tell that a paragraph break occurred. The comment 
suggested that the application format requirements should additionally 
require an indentation at the beginning of each new paragraph.
    Response: It is desirable that a specification include an 
indentation at the beginning of a new paragraph. This requirement, 
however, was not proposed for comment in the Notice of Proposed 
Rulemaking. In addition, PCT Rule 11 does not require that the 
beginning of each new paragraph in the specification be indented.
    Comment (6): One comment noted that Sec. 1.52(a) would prohibit 
handwriting or hand-printing on papers which are to become permanent 
Office records. The comment questioned whether this requirement would 
also apply to papers issued in the Office. The comment suggested 
revising Office practice to prohibit an examiner from handwriting 
comments on official papers (e.g., advisory actions or interview 
summary records) because: (1) The handwriting is not always 
decipherable, and (2) the handwriting as it comes through on the carbon 
copies furnished to applicants is frequently too light at least in part 
to be decipherable.
    Response: The Office's goal is to create a readable administrative 
record of the prosecution of every application. The Office is currently 
designing, testing and implementing electronic forms and Office action 
writing software to avoid or minimize the need for hand-writing/
printing in Office communications. Any applicant receiving an Office 
communication in which the handwriting is not decipherable, or does not 
adequately appear on the carbon copies to be decipherable, should 
request a legible copy of such communication from the Office.
    Comment (7): Several comments noted that the limitations in 
Sec. 1.52 (a) and (b) regarding ``typed'' and ``ink'' appear to exclude 
computer and laser printers, as well as commercially or mechanically 
printed papers such as declaration forms. Another comment noted that 
the limitations in Secs. 1.52 (a) and (b) regarding ``typed'' and 
``ink'' are more restrictive than PCT Rule 11.9 (a) and (d).
    Response: The phrase ``printed'' was proposed to be deleted since 
it could be read to mean that hand-printing is acceptable. Section 
1.52(a) will require, in part, that ``[a]ll papers which are to become 
a part of the permanent records of the Patent and Trademark Office must 
be legibly written either by a typewriter or mechanical printer in 
permanent dark ink or its equivalent in portrait orientation on 
flexible, strong, smooth, non-shiny, durable, and white paper.'' This 
will clarify that papers printed by a computer-operated laser, or any 
mechanical printer are acceptable, but that hand-printed papers are 
not. This change will also avoid inconsistencies with the requirements 
of PCT Rule 11.9.
    Comment (8): One comment noted that the proposed changes to 
Sec. 1.52(a) did not include any limitations regarding permissible type 
fonts. The comment questioned, since the purpose of the proposed rule 
change was to permit optical character recognition (OCR) scanning of 
the application papers, whether script fonts would be permissible.
    Response: Section 1.52(a) does not include any express prohibition 
against the use of script fonts. Nevertheless, Sec. 1.52(a) requires 
that ``the application papers must be presented in a form having 
sufficient clarity and contrast between the paper and the writing 
thereon to permit * * * electronic reproduction by use of digital 
imaging and optical character recognition.'' Any application papers, 
including application papers containing a script font, that are not in 
a form having sufficient clarity and contrast between the paper and the 
writing thereon to permit electronic reproduction by use of digital 
imaging and optical character recognition will be objected to as not in 
compliance with Sec. 1.52(a). Therefore, the Office cautions applicants 
not to submit application papers having script fonts.
    Comment (9): One comment noted that Sec. 1.52(b) would require that 
all papers (including drawings per proposed Sec. 1.84) be limited to 
either DIN size A4 or 8\1/2\ by 11 inches, which would eliminate the 
currently allowed paper sizes of 8\1/2\ by 13 or 14 inches. The comment 
questioned whether this would also apply to the official papers issued 
by the Office, noting that the Office currently issues papers having a 
paper size mix of 8\1/2\ by 11, 13, and 14 inches, which presents 
problems for applicants. The comment suggested that the Office should 
not issue papers of a size not permitted in Sec. 1.52.
    Response: The Office is currently in the process of standardizing 
to either

[[Page 42798]]

21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 
11 inches).
    Comment (10): One comment suggested that the Office should not 
issue papers with writing on the back side in accordance with 
Sec. 1.52(b).
    Response: The Office currently includes informational language on 
the back side of certain forms. The alternatives to issuing such forms 
with writing on the back side are: (1) Not providing this information 
to applicants, (2) reducing the print size to permit all of the 
information to be located on the front of the form, or (3) routinely 
providing multiple page forms. Since none of the alternatives are 
preferable to simply including informational language on the back side 
of certain forms, the Office will continue to include information 
language on the back of papers issued by the Office, until it fully 
transforms all of its forms to electronically generated forms.
    Comment (11): One comment questioned whether the phrase ``claims on 
a separate sheet'' in Sec. 1.52(b) means that: (1) All of the claims 
must appear on a single separate sheet, (2) each claim must appear on a 
separate sheet, or (3) the claims (claim 1) must begin or commence on a 
separate sheet. The comment suggested the PCT wording that the claims 
shall commence on a separate sheet if the rule is intended to require 
that the claims (claim 1) must begin or commence on a separate sheet.
    Response: The phrase has been changed to ``the claim or claims 
commencing on a separate sheet'' to clarify that the claims must begin 
or commence on a separate sheet to parallel PCT requirements. Thus, 
Secs. 1.52(b) and 1.75(h) require that the claims (claim 1) must begin 
or commence on a separate sheet. Sections 1.52(b) and 1.75(h) do not 
require that all of the claims be set forth on a single sheet, or that 
each claim be set forth on a separate sheet.
    Comment (12): One comment questioned whether the phrase ``abstract 
and claims on a separate sheet'' in Sec. 1.52(b) means that the 
abstract is to be on one separate sheet, and the claims are to be (or 
commence) on another separate sheet.
    Response: The phrase has been changed to ``the claim or claims 
commencing on a separate sheet and abstract commencing on a separate 
sheet'' to clarify that the claims must commence on one separate sheet 
and the abstract must commence on another separate sheet.
    Comment (13): One comment noted that the requirement in 
Sec. 1.52(b), as proposed, will require that the lines in the oath or 
declaration, as well as quotations from the rules, the MPEP, and court 
decisions in subsequently filed amendments, be 1\1/2\ or double spaced, 
and is inconsistent with the forms included for comment with the Notice 
of Proposed Rulemaking.
    Response: Section 1.52(b) has been changed to require, inter alia, 
that ``[t]he lines of the specification, and any amendments to the 
specification, must be 1\1/2\ or double spaced.'' The requirement for 
1\1/2\ or double spacing will not apply to oaths or declarations, pre-
printed forms, or all of the statements in the ``Remarks'' section of 
an amendment. Applicants are nevertheless requested to submit papers 
with lines 1\1/2\ or double spaced, except in standardized forms or 
where single-spacing may be stylistically necessary (e.g., block 
quotations).
    Comment (14): One comment questioned whether the requirement in 
Sec. 1.52(b), as proposed, that papers have lines 1\1/2\ or double 
spaced will apply to Office actions. The comment suggested that not 
placing block quotations from the statutes and regulations in single 
spacing will decrease the readability of Office actions.
    Response: As discussed supra, Secs. 1.52 (a) and (b) are designed 
to facilitate patent printing and do not apply to Office actions. 
Section 1.52(b) has been changed to require, inter alia, that ``[t]he 
lines of the specification, and any amendments to the specification, 
must be 1\1/2\ or double spaced.'' Therefore, the requirement for 1\1/
2\ or double spaced lines will not apply to Office actions.
    Comment (15): Several comments objected to the requirement that 
tables be in portrait orientation as inconsistent with PCT rules, and 
as causing tables to be split over multiple pages.
    Response: The suggestions are adopted. Section 1.58 will state that 
``[c]hemical and mathematical formulae and tables must be presented in 
compliance with Secs. 1.52 (a) and (b), except that chemical and 
mathematical formulae or tables may be placed in a landscape 
orientation if they cannot be presented satisfactorily in a portrait 
orientation,'' rather than ``[t]o facilitate camera copying when 
printing, the width of formulae and tables as presented should be 
limited normally to 12.7 cm. (5 inches) so that it may appear as a 
single column in the printed patent.''
    Comment (16): One comment stated that Sec. 1.72 is contrary to PCT 
Rule 11.4(a), and will require renumbering of the application pages for 
later filing of that application in the European Patent Office (EPO) or 
under the PCT.
    Response: Section 1.72, as proposed in the Notice of Proposed 
Rulemaking, provided that the abstract be ``preferably prior to the 
first page of the specification,'' and, as such, merely expressed the 
Office's preference for the location of the abstract as prior to the 
first page of the specification. Nevertheless, to avoid the undesirable 
result of requiring an applicant who submitted an application in the 
format set forth in Sec. 1.77 to renumber the specification pages for 
filing that application in the EPO or under the PCT, Sec. 1.72 is 
changed to state that the preferable location of the abstract is 
following the claims.
    Comment (17): One comment stated that requiring that the rarely 
used section headings (e.g., statement regarding federally sponsored 
research and development) be followed by the phrase ``not-applicable'' 
is confusing.
    Response: Section 1.77 is permissive rather than mandatory. As 
such, any applicant finding the format suggested therein to be 
confusing is at liberty to simply include those section headings 
applicable to the particular application. The use of each section 
heading, even when the section is ``not-applicable,'' is desirable in 
that it apprises the Office that the section at issue has been 
considered and deemed inapplicable. Simply not providing a section 
heading is ambiguous as to whether the applicant considers the section 
inapplicable or has not considered whether the section is applicable to 
the application. In addition, the use of such section headings will be 
of greater benefit when the Office implements procedures to permit the 
electronic filing of patent applications.
    Comment (18): One comment stated that the requirements set forth in 
Sec. 1.77 are in addition to those required by the PCT. The comment 
argued that the Office cannot require international applications 
entering the national stage under 35 U.S.C. 371 to comply with these 
requirements.
    Response: As discussed supra, Sec. 1.77 merely expresses the 
Office's preference for the arrangement of the application elements. 
The Office may advise an applicant that the application does not comply 
with the format set forth in Sec. 1.77, and suggest this format for the 
applicant's consideration; however, the Office will not require any 
application to comply with the format set forth in Sec. 1.77. 
Therefore, there is no conflict between Sec. 1.77 and the PCT.
    Comment (19): One comment noted that Secs. 1.154 and 1.163 apply to 
design and plant applications, and, as such, they are not in conflict 
with PCT Rules. The comment suggested that it would,

[[Page 42799]]

however, be preferable that all types of U.S. applications maintain the 
same order of application elements, and that this order be the order 
set forth by the PCT Rules.
    Response: As discussed supra, the arrangement of the elements of an 
application set forth in Sec. 1.77 is not mandatory, and, as such, 
Sec. 1.77 is not in conflict with the PCT or PCT Rules. Section 1.77 
merely expresses the Office's preference for the arrangement of the 
elements of an application. The Office's preference for the format of 
design applications (Sec. 1.154) and plant applications (Sec. 1.163) is 
the same as the Office's preference for utility applications 
(Sec. 1.77).
    Comment (20): One comment stated that in the absence of statutory 
requirements for the application elements proposed in Secs. 1.77, 
1.154, and 1.163, the rule should clearly state that these application 
elements or arrangements are preferred but not mandatory.
    Response: Sections 1.77, 1.154, and 1.163 employ the phrase 
``should'' rather than ``must,'' which is the language of a precatory 
statement. Therefore, Secs. 1.77, 1.154, and 1.163 currently state that 
these application elements or arrangements are preferred, but are not 
mandatory.
    Comment (21): One comment questioned whether the Application 
Transmittal Form, and Fee Transmittal Form set forth in Sec. 1.77 
should be numbered pages 1 and 2 pursuant to Sec. 1.52, and further 
questioned where the drawings and oath or declaration are to be 
numbered.
    Response: Section 1.52 has been changed to provide that the pages 
of the specification, not the application, should be consecutively 
numbered beginning with page 1. The Application Transmittal Form, and 
Fee Transmittal Form set forth in Sec. 1.77 are not part of the 
specification. As such, they should not be numbered as pages 1 and 2, 
respectively. Likewise, the drawings and oath or declaration are not 
part of the specification, and need not be numbered.
    Comment (22): One comment stated that the failure to include the 
phrase ``not applicable'' by all of the application elements not 
required by statute or regulation rendered it unclear as to whether the 
Office would object to the lack of an application element for which the 
phrase ``not applicable'' is not included.
    Response: The Office anticipates that an applicant choosing to use 
the Transmittal forms provided by the Office will arrange his or her 
application in the format suggested by the Office. The patent statutes 
and regulations set forth the requirements for a complete application, 
as well as the requirements for obtaining a filing date in an 
application. Applications are examined for compliance with the patent 
statutes and regulations, not for consistency with any particular 
transmittal form.
    Comment (23): One comment noted, in regard to Sec. 1.84(c), that 
the drawings of an international application, which are often used for 
processing in the Office, will have the World Organization (WO) 
publication number and International Bureau (IB) publication date on 
the top of the drawing.
    Response: The WO publication number and IB publication date placed 
on the top of the drawing of an international application is not 
objectionable under Sec. 1.84(c).
    Comment (24): One comment stated that the scan target points 
conflict with PCT Rule 11.6(e). As such, the scan target points would 
have to be removed from applications to be filed as an international 
application. The comment further stated that these target points are 
unnecessary in view of the paper size and margin requirements.
    Response: Section 1.84(g) states that drawings ``should,'' and not 
``must,'' have scan target points printed on two catercorner margin 
corners. Thus, Sec. 1.84(g) merely expresses the Office's preference 
for scan target points on the drawings for filming and printing 
purposes, which are considered desirable due to the different sights on 
21.0 cm. by 29.7 cm. (DIN size A4) and 21.6 cm. by 27.9 cm. (8\1/2\ by 
11 inch) drawing sheets. An applicant wishing to provide scan target 
points on drawings that will later be filed in the EPO may simply copy 
the drawings to be filed in the EPO, place the scan target points only 
on the Office copy of the drawings, and submit the copy of the drawings 
containing the scan target points to the Office. Likewise, applicants 
filing drawings that were previously filed in the EPO should simply add 
scan target points only to the copy of the drawings to be filed in the 
Office. Nevertheless, as Sec. 1.84(g) merely expresses a preference for 
scan target points for Office filming and printing purposes, an 
applicant intending to later file the application in the EPO, or any 
applicant, is at liberty to not include such scan target points on the 
drawings. The Office will not object to the absence of scan target 
points on any drawings filed in the Office. Therefore, Sec. 1.84(g) 
does not include a requirement in excess of, or inconsistent, with PCT 
Rules.
    Comment (25): One comment stated that the term ``catercorner'' is 
slang, and suggested that it be replaced in Sec. 1.84(g) with a phrase 
such as ``diagonally opposite.''
    Response: The term ``catercorner'' is not slang. While there are a 
number of acceptable English phrases to denote diagonally opposite, the 
term ``catercorner'' was selected to avoid using a multiple word phrase 
where a single word will suffice.
    Comment (26): One comment stated that the language proposed to be 
added to Sec. 1.97 regarding a reexamination or patent owner is 
inconsistent with Sec. 1.533 and suggested that it be deleted.
    Response: The suggestion is adopted.
    Comment (27): One comment stated that Sec. 1.131 does not specify 
whether the phrase ``application'' includes provisional applications. 
The comment suggested that Sec. 1.131 be amended to state ``unless the 
date of such patent or publication is more than one year prior to the 
earliest date on which the inventor's or patent owner's application or 
provisional application from which that application claims priority 
therefrom was filed in this country.''
    Response: The proposed change to Sec. 1.131 is not adopted. It is 
well established that the filing date of any abandoned application co-
pending with and referred to in a patent is the effective date of the 
patent with respect to the common subject matter disclosed in the 
patent and abandoned application. See In re Switzer, 166 F.2d 827, 77 
USPQ 156 (CCPA 1948). Section 1.131 does not make a specific reference 
to nonprovisional applications for which a benefit is claimed under 35 
U.S.C. 120; however, it is understood that the effective date of any 
patent sought to be antedated pursuant to Sec. 1.131 is the earliest 
filing date of any application to which the patent is entitled to under 
35 U.S.C. 120 with respect to the common subject matter disclosed in 
the patent and the application. The provisions of title 35, except for 
35 U.S.C. 115, 131, 135 and 157, apply to provisional applications. 35 
U.S.C. 111(b)(8). It is therefore likewise unnecessary to specifically 
reference provisional applications in Sec. 1.131.
    Comment (28): Several comments objected to Secs. 1.291 and 1.292 as 
pre-grant opposition, especially in view of the pre-grant publication 
of pending applications that would be provided for in H.R. 1733, if 
enacted, and the expanded reexamination that would be provided for in 
H.R. 1732, if enacted. The comments either suggested that the protest 
and public use proceeding

[[Page 42800]]

provisions of Secs. 1.291 and 1.292 be severely limited or abolished.
    Response: The changes to Secs. 1.291 and 1.292 place greater 
obligations on third parties seeking to use these sections. As such, 
this rule change does not add to any third party's ability to 
participate in the prosecution of a pending application. Nevertheless, 
as neither H.R. 1732 nor H.R. 1733 has presently been enacted, analysis 
of whether modification of Secs. 1.291 and 1.292 in addition to that 
proposed in the Notice of Proposed Rulemaking is desirable in a pre-
grant publication or expanded reexamination system is held in abeyance 
pending enactment of H.R. 1733 or 1732.
    Comment (29): One comment noted that any standardization of patent 
applications should not include pre-printed forms taking eleven hours 
to complete. The comment further suggested that word-processor versions 
of any collection of information, rather than pre-printed forms, would 
be of greater assistance to members of the public.
    Response: Initially, the Notice of Proposed Rulemaking indicated 
that the initial patent application (e.g., the specification, drawings, 
as well as the standard forms), not merely the proposed standardized 
forms, is a collection of information estimated to average eleven hours 
to complete. The Notice of Proposed Rulemaking stated that the public 
reporting burden for these collections of information is estimated to 
average: (1) Twelve minutes per response for the Fee Transmittal form, 
(2) twelve minutes per response for the Utility Patent Application 
Transmittal form, (3) twelve minutes per response for the Design Patent 
Application Transmittal form, (4) twelve minutes per response for the 
Plant Patent Application Transmittal form, (5) twelve minutes per 
response for the Plant Color Coding Sheet, (6) twenty-four minutes per 
response for the Declaration form, and (7) twenty-four minutes per 
response for the Plant Patent Application Declaration. Nevertheless, 
the final rules do not require the use of any standardized form. The 
Office publishes standardized forms only as an aid to practitioners and 
applicants.
    Comment (30): One comment questioned whether use of the 
standardized versions of the various forms would be required. Another 
comment stated that the Office has no authority to require the use of 
the published forms in the absence of statutory authority.t
    Response: Use of the forms included for comment with the Notice of 
Proposed Rulemaking is not mandatory. That is, an applicant need not 
use the 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, Declaration form and Plant Patent Application 
Declaration form, and need not use any fee transmittal form, 
application transmittal form, or plant color coding sheet. These forms 
were created to assist applicants in filing a patent application and to 
help ensure the filing of a complete application accompanied by the 
appropriate fees, thereby avoiding unnecessary delays in the 
examination of the application.
    Comment (31): One comment stated that the Office should not require 
the use of mandated forms, and if the Office requires the use of 
mandated forms, the Office should revise the forms to render them 
readily reproducible by conventional software, and should arrange for 
versions of these forms in various formats to be distributed by the 
Internet, bulletin board, or floppy disk. Another comment suggested 
that the Office should make its form or templates available for 
electronic copying.
    Response: Copies of the standard forms provided by the Office may 
be obtained by contacting the Customer Service Center of the Office of 
Initial Patent Examination at (703) 308-1214. Also, many standardized 
forms have been loaded on the Office's Internet Website and may be 
electronically copied via the Internet through anonymous file transfer 
protocol (ftp) (address: ftp.uspto.gov). Nevertheless, use of the forms 
included for comment with the Notice of Proposed Rulemaking is not 
mandatory.
    Comment (32): One comment questioned why there is a box with an 
instruction to type a plus sign in the box at the very top of the 
standardized forms.
    Response: As discussed supra, the Office plans to replace or 
augment the current microfilming process with an electronic data base 
which captures at least the technical content of the application-as-
filed for internal Office use. Typing a plus sign (+) into this box 
will facilitate the image scanner in aligning the remaining typing on 
the form during the scanning process.
    Comment (33): One comment questioned: (1) Why the application 
transmittal forms do not have a place for applicant to indicate the 
type of new utility application being transmitted (e.g., a provisional, 
original, continuation, division, continuation-in-part, reissue), and 
(2) how the Office official will obtain this information for entry in 
the official use ``application type'' box.
    Response: The Utility Patent Application Transmittal form sets 
forth instructions for filing utility applications under Sec. 1.53 in 
the arrangement set forth in Sec. 1.77. All non-reissue, nonprovisional 
utility applications (i.e., original, continuation, divisional, and 
continuation-in-part applications) filed under Sec. 1.53 should be 
submitted using the Utility Patent Application Transmittal form. The 
Design Patent Application Transmittal form sets forth instructions for 
filing design applications in the arrangement set forth in Sec. 1.154. 
All non-reissue design applications should be submitted using the 
Design Patent Application Transmittal form. The Plant Patent 
Application Transmittal form sets forth instructions for filing plant 
applications in the arrangement set forth in Sec. 1.163. All non-
reissue, nonprovisional plant applications should be submitted using 
the Plant Patent Application Transmittal form.
    A Reissue Patent Application Transmittal form is also available, 
and all applications for the reissue of a patent should be submitted 
using the Reissue Patent Application Transmittal form. The cover sheet 
provided for in Sec. 1.53(b)(2)(i) for a provisional application 
functions as a transmittal sheet for a provisional application. As 
such, the standardized Provisional Application Cover Sheet is the 
transmittal form for a provisional application. The provisional 
application cover sheet was published in the rulemaking entitled 
``Changes to Implement 20-Year Patent Term and Provisional 
Applications,'' in the Federal Register at 60 FR 20230-31 (April 25, 
1995), and in the Patent and Trademark Office Official Gazette at 1174 
Off. Gaz. Pat Office 45-46 (May 2, 1995).
    To provide a place on the Application Transmittal form for claims 
under 35 U.S.C. 119, 120, or 121 would require the use of an 
unacceptably smaller font on the Application Transmittal form. The 
Declaration forms provide a place for stating claims under 35 U.S.C. 
119, 120 or 121. The inclusion on filing of an executed or unexecuted 
Declaration form containing this information would assist the Office in 
ascertaining whether the application is an original, continuation, 
divisional, or continuation-in-part application. In addition, in the 
event that H.R. 1733 is enacted, and the proposed changes to 
Secs. 1.55(a) and 1.78(a)(2) are adopted substantially as proposed, the 
routine

[[Page 42801]]

inclusion of claims for priority under 35 U.S.C. 119, 120, or 121 in an 
executed or unexecuted declaration form accompanying the application 
papers would be an excellent mechanism for avoiding an inadvertent 
failure to timely submit a claim for priority under 35 U.S.C. 119, 120, 
or 121.
    Comment (34): One comment noted that the heading ``DECLARATION'' 
does not state the types of applications with which the declaration 
form could be used. The comment questioned whether it is intended to be 
used with any type of nonprovisional application except plant 
applications for which a separate form is proposed.
    Response: The declaration form containing the heading 
``DECLARATION'' is intended to be used with any type of nonprovisional 
application except plant applications, for which a separate Plant 
Declaration form is provided.
    Comment (35): One comment suggested that in the foreign priority 
claim section of the Declaration form, the last line, the phrase 
``having a filing date before that of the application on which priority 
is claimed'' should be changed to ``for which priority is not 
claimed,'' to cover those foreign applications which have a filing date 
after that of the application on which priority is claimed and the 
benefit of which applicant does not want to claim. The comment also 
indicated that, frequently, an application is filed after the 
Convention Year.
    Response: The suggestion is not adopted. Section 1.63(c) requires 
that an oath or declaration in any application in which a claim for 
priority is made pursuant to Sec. 1.55 identify * * * ``any foreign 
application having a filing date before that of the application on 
which priority is claimed, by specifying the application number, 
country, day, month, and year of its filing.'' Thus, the language in 
the Declaration form aids applicants in submitting a declaration in 
compliance with Sec. 1.63(c). Any foreign application having a filing 
date before that of the application on which priority is claimed is, by 
definition, a foreign application for which priority is not claimed.
    Comment (36): One comment suggested that in the foreign priority 
claim section, the right hand columns, the heading should be corrected 
to ``Certified Copy Attached'' since the Office does not routinely want 
uncertified copies.
    Response: The suggestion is adopted. The Declaration form has been 
modified accordingly.
    Comment (37): One comment noted that the Fee Calculation and 
Application Transmittal are currently on a single sheet/form, where the 
proposed forms provide a separate sheet/form for each. The comment also 
noted that the current Declaration form is a single sheet, where the 
proposed Declaration form contains multiple sheets.
    Response: The Office currently receives application transmittals, 
fee calculations/transmittals and declarations in a variety of forms 
and in a multitude of formats. The proposed forms were developed as a 
result of an analysis of the current practices and requirements of 
applicants, as well as the Office's plans to scan application data from 
these forms into an electronic data base. The Fee Transmittal form was 
created to aid applicants in submitting the fees due on filing a new 
patent application, as well as the fees that may be due throughout the 
prosecution of the application. The Application Transmittal serves to 
both aid applicants in filing a complete application, and simplify the 
pre-examination processing of the application. To permit the inclusion 
of additional fee calculation and application transmittal information 
on the standardized forms, and to provide a Fee Transmittal form for 
use throughout the prosecution of the application, a separate Fee 
Transmittal form and Application Transmittal form were developed. A 
multi-page Declaration form is necessary to accommodate the Office's 
plans to scan application data from this Declaration form into an 
electronic data base.
    Comment (38): One comment indicated that the meaning or purpose of 
``suffix'' in the inventor signature block is unclear, and requested an 
explanation as to whether it refers to ``Jr.'' or ``II,'' or whether it 
is a place to put the mother's name for those inventors whose family 
name is followed by their mother's name.
    Response: The field on the Declaration form labeled (inventor) 
``suffix'' is intended to provide the applicant with an option to 
indicate family position relative to age. Examples of an inventor's 
suffix are: Jr., Sr., and III. This information is tracked by the 
Office and is necessary to print patents which accurately reflect 
bibliographic information about the inventor. The use of this field and 
the data expected will be clarified and specified in the form 
instructions.
    Comment (39): One comment questioned the meaning or purpose of 
``Applicant Authority'' in the last line of the inventor data block.
    Response: The phrase ``Applicant Authority'' indicates the 
authority that the applicant has in executing the application (e.g., 
inventor, executor (Sec. 1.42), assignee (Sec. 1.47(b)). This field is 
an optional field for the applicant to complete. The electronic 
versions of the proposed standard declaration forms would provide the 
applicant with directions and a list of valid codes that correspond 
with a specific identification of the authority the applicant retains 
(e.g., the Authority Code for an executor will be ``04'').
    Comment (40): One comment stated that due to the spacing and small 
fonts on the fee transmittal form, this sheet cannot be used with a 
conventional word processor.
    Response: To accommodate all the fee descriptions on a one-page fee 
transmittal it was necessary to use smaller fonts in the form's design. 
These fonts are available in Word and WordPerfect. An electronic 
version of the fee transmittal will be available from the Office soon.
    Comment (41): One comment stated that the ``one form fits all'' 
mentality of the fee transmittal form should be reconsidered since 
certain fees are submitted only once during the prosecution of an 
application.
    Response: The proposed standard one-page fee form is primarily to 
facilitate and simplify the fee payment process. The one-page fee 
transmittal is intended to aid applicants in providing complete fee 
information to the Office for each application and paper submission. 
This will enable the Office to more efficiently process and record fee 
payments, which will avoid delays in the prosecution of an application.

Other Considerations

    This final rule change is in conformity with the requirements of 
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order 
12612, and the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq. 
It has been determined that this final rule is not 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 this rule change 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 effect of 
this rule change is to simplify and clarify the rules governing the 
form of patent application papers.
    The Office has also determined that this notice has no Federalism 
implications affecting the relationship between the National Government 
and

[[Page 42802]]

the States as outlined in Executive Order 12612.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall any person be subject to a penalty for failure 
to comply with a collection of information subject to the requirements 
of the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.
    This final rule package contains a collection of information 
subject to the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq. 
This collection of information is currently approved by the Office of 
Management and Budget under Control No. 0651-0032. This collection of 
information includes the initial patent application filing, the Fee 
Transmittal form, the Utility Patent Application Transmittal form, the 
Design Patent Application Transmittal form, the Plant Patent 
Application Transmittal form, the Plant Color Coding Sheet, the 
Declaration form, and the Plant Patent Application Declaration form. 
The above-mentioned forms 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 techniques (optical character recognition, etc.) to record 
and process information concerning applications. The public reporting 
burden for these collections of information is estimated to average: 
(1) Ten hours per response for the specification and drawings of an 
application, (2) twelve minutes per response for the Fee Transmittal 
form, (3) twelve minutes per response for the Utility Patent 
Application Transmittal form, (4) twelve minutes per response for the 
Design Patent Application Transmittal form, (5) twelve minutes per 
response for the Plant Patent Application Transmittal form, (6) twelve 
minutes per response for the Plant Color Coding Sheet, (7) twenty-four 
minutes per response for the Declaration form, and (8) twenty-four 
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.
    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 System Quality and Enhancement, Data 
Administration Division, Patent and Trademark Office, Washington, DC 
20231, and to the Office of Information and Regulatory Affairs, Office 
of Management and Budget, Washington, DC 20503 (ATTN: Paperwork 
Reduction Act Project 0651-0032).

List of Subjects in 37 CFR Part 1

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

    For the reasons set forth in the preamble, 37 CFR Part 1 is amended 
as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

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

    2. Section 1.5 is amended by adding paragraph (f) to read as 
follows:


Sec. 1.5  Identification of application, patent or registration.

* * * * *
    (f) When a paper concerns a provisional application, it should 
identify the application as such and include the application number.
    3. Section 1.12 is amended by revising paragraph (c) to read as 
follows:


Sec. 1.12  Assignment records open to public inspection.

* * * * *
    (c) Any request by a member of the public seeking copies of any 
assignment records of any pending or abandoned patent application 
preserved in confidence under Sec. 1.14, or any information with 
respect thereto, must:
    (1) Be in the form of a petition accompanied by the petition fee 
set forth in Sec. 1.17(i); or
    (2) Include written authority granting access to the member of the 
public to the particular assignment records from the applicant or 
applicant's assignee or attorney or agent of record.
* * * * *
    4. Section 1.14 is amended by revising the section heading and 
paragraphs (a), (b), and (e) to read as follows:


Sec. 1.14  Patent applications preserved in confidence.

    (a) (1) Patent applications are generally preserved in confidence 
pursuant to 35 U.S.C. 122. No information will be given concerning the 
filing, pendency, or subject matter of any application for patent, and 
no access will be given to, or copies furnished of, any application or 
papers relating thereto, except as set forth in this section.
    (2) Status information, which includes information such as whether 
the application is pending, abandoned, or patented, as well as the 
application number and filing date, may be supplied:
    (i) Concerning an application or any application claiming the 
benefit of the filing date of the application, if the application has 
been identified by application number or serial number and filing date 
in a published patent document,
    (ii) Concerning the national stage application or any application 
claiming the benefit of the filing date of a published international 
application, if the United States of America has been indicated as a 
Designated State in the international application, or
    (iii) When it has been determined by the Commissioner to be 
necessary for the proper conduct of business before the Office.
    (3) Access to, or copies of, an application may be provided:
    (i) When the application is open to the public as provided in 
Sec. 1.11(b),
    (ii) When written authority in that application from the applicant, 
the assignee of the application, or the attorney or agent of record has 
been granted,
    (iii) When it has been determined by the Commissioner to be 
necessary for the proper conduct of business before the Office, or
    (iv) To any person on written request, without notice to the 
applicant, when the application is abandoned and available and is:
    (A) Referred to in a U.S. patent,
    (B) Referred to in an application open to public inspection,
    (C) An application which claims the benefit of the filing date of 
an application open to public inspection, or
    (D) An application in which the applicant has filed an 
authorization to lay open the complete application to the public.
    (b) Complete applications (Sec. 1.51(a)) which are abandoned may be 
destroyed and hence may not be available for access or copies as 
permitted by paragraph (a)(3)(iv) of this section after 20 years from 
their filing date, except those to which particular attention has been 
called and which have been marked for preservation.
* * * * *
    (e) Any request by a member of the public seeking access to, or 
copies of, any pending or abandoned application preserved in confidence 
pursuant to paragraph (a) of this section, or any papers relating 
thereto, must:

[[Page 42803]]

    (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.
    5. Section 1.52 is amended by revising paragraphs (a) and (b) 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 either by a typewriter or 
mechanical printer in permanent dark ink or its equivalent in portrait 
orientation on flexible, strong, smooth, non-shiny, durable, and white 
paper. All of the application papers must be presented in a form having 
sufficient clarity and contrast between the paper and the writing 
thereon to permit the direct reproduction of readily legible copies in 
any number by use of photographic, electrostatic, photo-offset, and 
microfilming processes and electronic reproduction by use of digital 
imaging and optical character recognition. If the papers are not of the 
required quality, substitute typewritten or mechanically printed papers 
of suitable quality will be required. See Sec. 1.125 for filing 
substitute typewritten or mechanically printed papers constituting a 
substitute specification when required by the Office.
    (b) Except for drawings, the application papers (specification, 
including claims, abstract, oath or declaration, and papers as provided 
for in this part and also papers subsequently filed, must have each 
page plainly written on only one side of a sheet of paper, with the 
claim or claims commencing on a separate sheet and the abstract 
commencing on a separate sheet. See Secs. 1.72(b) and 1.75(h). The 
sheets of paper must be the same size and either 21.0 cm. by 29.7 cm. 
(DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches). Each sheet 
must include a top margin of at least 2.0 cm. (\3/4\ inch), a left side 
margin of at least 2.5 cm. (1 inch), a right side margin of at least 
2.0 cm. (\3/4\ inch), and a bottom margin of at least 2.0 cm. (\3/4\ 
inch), and no holes should be made in the sheets as submitted. The 
lines of the specification, and any amendments to the specification, 
must be 1\1/2\ or double spaced. The pages of the specification 
including claims and abstract must be numbered consecutively, starting 
with 1, the numbers being centrally located above or preferably, below, 
the text. See Sec. 1.84 for drawings.
* * * * *
    6. Section 1.54 is 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 number and filing 
date by a filing receipt.
    7. Section 1.58 is amended by removing and reserving paragraph (b) 
and revising the section heading and paragraph (c) to read as follows:


Sec. 1.58  Chemical and mathematical formulae and tables.

* * * * *
    (b) [Reserved]
    (c) Chemical and mathematical formulae and tables must be presented 
in compliance with Sec. 1.52 (a) and (b), except that chemical and 
mathematical formulae or tables may be placed in a landscape 
orientation if they cannot be presented satisfactorily in a portrait 
orientation. Typewritten characters used in such formulae and tables 
must be chosen from a block (nonscript) type font or lettering style 
having capital letters which are at least 0.21 cm. (0.08 inch) high 
(e.g., elite type). A space at least 0.64 cm. (\1/4\ inch) high should 
be provided between complex formulae and tables and the text. Tables 
should have the lines and columns of data closely spaced to conserve 
space, consistent with a high degree of legibility.
    8. Section 1.62 is amended by revising paragraphs (e) and (f) to 
read as follows:


Sec. 1.62  File wrapper continuing procedure.

* * * * *
    (e) An application filed under this section will utilize the file 
wrapper and contents of the prior application to constitute the new 
continuation, continuation-in-part, or divisional application but will 
be assigned a new application number. Changes to the prior application 
must be made in the form of an amendment to the prior application as it 
exists at the time of filing the application under this section. No 
copy of the prior application or new specification is required. The 
filing of such a copy or specification will be considered improper, and 
a filing date as of the date of deposit of the request for an 
application under this section will not be granted to the application 
unless a petition with the fee set forth in Sec. 1.17(i) is filed with 
instructions to cancel the copy or specification.
    (f) The filing of an application under this section will be 
construed to include a waiver of confidence by the applicant under 35 
U.S.C. 122 to the extent that any member of the public who is entitled 
under the provisions of Sec. 1.14 to access to, 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.
* * * * *
    9. Section 1.72 is 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 commence on a separate sheet, preferably following 
the claims, under the heading ``Abstract of the Disclosure.'' The 
purpose of the abstract is to enable the Patent and Trademark Office 
and the public generally to determine quickly from a cursory inspection 
the nature and gist of the technical disclosure. The abstract shall not 
be used for interpreting the scope of the claims.
    10. Section 1.75 is 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 dependent claims should be grouped together with the claim 
or claims to which they refer to the extent practicable.
    (h) The claim or claims must commence on a separate sheet.
    (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.
    11. Section 1.77 is 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:
    (1) Utility Application Transmittal Form.
    (2) Fee Transmittal Form.
    (3) Title of the invention; or an introductory portion stating the 
name, citizenship, and residence of the applicant, and the title of the 
invention.

[[Page 42804]]

    (4) Cross-reference to related applications.
    (5) Statement regarding federally sponsored research or 
development.
    (6) Reference to a ``Microfiche appendix.'' (See Sec. 1.96 (c)). 
The total number of microfiche and total number of frames should be 
specified.
    (7) Background of the invention.
    (8) Brief summary of the invention.
    (9) Brief description of the several views of the drawing.
    (10) Detailed description of the invention.
    (11) Claim or claims.
    (12) Abstract of the Disclosure.
    (13) Drawings.
    (14) Executed oath or declaration.
    (15) Sequence Listing (See Secs. 1.821 through 1.825).
    (b) The elements set forth in paragraphs (a)(3) through (a)(5), 
(a)(7) through (a)(12) and (a)(15) of this section should appear in 
upper case, without underlining or bold type, as section headings. If 
no text follows the section heading, the phrase ``Not Applicable'' 
should follow the section heading.
    12. Section 1.78 is amended by removing paragraph (d) and revising 
paragraphs (a)(2) and (c) to read as follows:


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

    (a) * * *
    (2) Any nonprovisional application claiming the benefit of one or 
more prior filed copending nonprovisional applications or international 
applications designating the United States of America must contain or 
be amended to contain in the first sentence of the specification 
following the title a reference to each such prior application, 
identifying it by application number (consisting of the series code and 
serial number) or international application number and international 
filing date and indicating the relationship of the applications. Cross-
references to other related applications may be made when appropriate. 
(See Sec. 1.14(a)).
* * * * *
    (c) Where an application or a patent under reexamination and at 
least one other application naming different inventors are owned by the 
same party and contain conflicting claims, and there is no statement of 
record indicating that the claimed inventions were commonly owned or 
subject to an obligation of assignment to the same person at the time 
the later invention was made, the assignee may be called upon to state 
whether the claimed inventions were commonly owned or subject to an 
obligation of assignment to the same person at the time the later 
invention was made, and if not, indicate which named inventor is the 
prior inventor.
    13. Section 1.84 is amended by revising paragraphs (c), (f), (g), 
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) 21.0 cm. by 29.7 cm. (DIN size A4), or
    (2) 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches).
    (g) Margins. The sheets must not contain frames around the sight; 
i.e., the usable surface, but should have scan target points, i.e., 
cross-hairs, printed on two catercorner margin corners. Each sheet must 
include a top margin of at least 2.5 cm. (1 inch), a left side margin 
of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. 
(\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.
* * * * *
    (x) Holes. No holes should be made by applicant in the drawing 
sheets. (See Sec. 1.152 for design drawings, Sec. 1.165 for plant 
drawings, and Sec. 1.174 for reissue drawings.)
    14. Section 1.96 is 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 is defined as a printout that lists in appropriate sequence the 
instructions, routines, and other contents of a program for a computer. 
The program listing may be either in machine or machine-independent 
(object or source) language which will cause a computer to perform a 
desired procedure or task such as solve a problem, regulate the flow of 
work in a computer, or control or monitor events. Computer program 
listings may be submitted in patent applications as set forth in 
paragraphs (b) and (c) of this section.
    (b) Material which will be printed in the patent. If the computer 
program listing is contained on ten printout pages or less, it must be 
submitted either as drawings or as part of the specification.
    (1) Drawings. If the listing is submitted as drawings, it must be 
submitted in the manner and complying with the requirements for 
drawings as provided in Sec. 1.84. At least one figure numeral is 
required on each sheet of drawing.
    (2) Specification. (i) If the listing is submitted as part of the 
specification, it must be submitted in accordance with the provisions 
of Sec. 1.52, at the end of the description but before the claims.
    (ii) Any listing submitted as part of the specification must be 
direct printouts (i.e., not copies) from the computer's printer with 
dark solid black letters not less than 0.21 cm. high, on white, 
unshaded and unlined paper, and the sheets should be submitted in a 
protective cover. Any amendments must be made by way of submission of 
substitute sheets.
    (c) As an appendix which will not be printed. If a computer program 
listing printout is eleven or more pages long, applicants must submit 
such listing in the form of microfiche, referred to in the 
specification (see Sec. 1.77(a)(6)). Such microfiche filed with a 
patent application is to be referred to as a ``microfiche appendix.'' 
The ``microfiche appendix'' will not be part of the printed patent. 
Reference in the application to the ``microfiche appendix'' must be 
made at the beginning of the specification at the location indicated in 
Sec. 1.77(a)(6). Any amendments thereto must be made by way of revised 
microfiche.
    (1) Availability of appendix. Such computer program listings on

[[Page 42805]]

microfiche will be available to the public for inspection, and 
microfiche copies thereof will be available for purchase with the file 
wrapper and contents, after a patent based on such application is 
granted or the application is otherwise made publicly available.
    (2) Submission requirements. Except as modified or clarified in 
this paragraph (c)(2), computer-generated information submitted as a 
``microfiche appendix'' to an application shall be in accordance with 
the standards set forth in 36 CFR part 1230 (Micrographics).
    (i) Film submitted shall be a first generation (camera film) 
negative appearing microfiche (with emulsion on the back side of the 
film when viewed with the images right-reading).
    (ii) Reduction ratio of microfiche submitted should be 24:1 or a 
similar ratio where variation from said ratio is required in order to 
fit the documents into the image area of the microfiche format used.
    (iii) At least the left-most third (50 mm. x 12 mm.) of the header 
or title area of each microfiche submitted shall be clear or positive 
appearing so that the Patent and Trademark Office can apply an 
application number and filing date thereto in an eye-readable form. The 
middle portion of the header shall be used by applicant to apply an 
eye-readable application identification such as the title and/or the 
first inventor's name. The attorney's docket number may be included. 
The final right-hand portion of the microfiche shall contain sequence 
information for the microfiche, such as 1 of 4, 2 of 4, etc.
    (iv) Additional requirements which apply specifically to microfiche 
of filmed paper copy:
    (A) The first frame of each microfiche submitted shall contain a 
test target.
    (B) The second frame of each microfiche submitted must contain a 
fully descriptive title and the inventor's name as filed.
    (C) The pages or lines appearing on the microfiche frames should be 
consecutively numbered.
    (D) Pagination of the microfiche frames shall be from left to right 
and from top to bottom.
    (E) At a reduction of 24:1, resolution of the original microfilm 
shall be at least 120 lines per mm. (5.0 target).
    (F) An index, when included, should appear in the last frame (lower 
right-hand corner when data is right-reading) of each microfiche.
    (v) Microfiche generated by Computer Output Microfilm.
    (A) The first frame of each microfiche submitted should contain a 
resolution test frame.
    (B) The second frame of each microfiche submitted must contain a 
fully descriptive title and the inventor's name as filed.
    (C) The pages or lines appearing on the microfiche frames should be 
consecutively numbered.
    (D) It is preferred that pagination of the microfiche frames be 
from left to right and top to bottom but the alternative, i.e., from 
top to bottom and from left to right, is also acceptable.
    (E) An index, when included, should appear on the last frame (lower 
right-hand corner when data is right-reading) of each microfiche.
    15. Section 1.97 is amended by revising paragraphs (a) through (d) 
to read as follows:


Sec. 1.97  Filing of information disclosure statement.

    (a) In order for an applicant for a patent or for a reissue of a 
patent to have an information disclosure statement in compliance with 
Sec. 1.98 considered by the Office during the pendency of the 
application, it must satisfy paragraph (b), (c), or (d) of this 
section.
    (b) An information disclosure statement shall be considered by the 
Office if filed by the applicant:
    (1) Within three months of the filing date of a national 
application;
    (2) Within three months of the date of entry of the national stage 
as set forth in Sec. 1.491 in an international application; or
    (3) Before the mailing date of a first Office action on the merits, 
whichever event occurs last.
    (c) An information disclosure statement shall be considered by the 
Office if filed by the applicant after the period specified in 
paragraph (b) of this section, provided that the statement is 
accompanied by either a certification as specified in paragraph (e) of 
this section or the fee set forth in Sec. 1.17(p), and is filed 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.
    (d) An information disclosure statement shall be considered by the 
Office if filed by the applicant after the period specified in 
paragraph (c) of this section, provided that the statement is filed on 
or before payment of the issue fee and is accompanied by:
    (1) A certification as specified in paragraph (e) of this section;
    (2) A petition requesting consideration of the information 
disclosure statement; and
    (3) The petition fee set forth in Sec. 1.17(i).
* * * * *
    16. Section 1.107 is 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 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.
* * * * *
    17. Section 1.110 is revised to read as follows:


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

    When more than one inventor is named in an application or patent, 
the Patent and Trademark Office, when necessary for purposes of an 
Office proceeding, may require an applicant, patentee, or owner to 
identify the inventive entity of the subject matter of each claim in 
the application or patent. Where appropriate, the invention dates of 
the subject matter of each claim and the ownership of the subject 
matter on the date of invention may be required of the applicant, 
patentee or owner. See also Secs. 1.78(c) and 1.130.
    18. A new Sec. 1.130 is added after the undesignated center heading 
``Affidavits Overcoming Rejections'' to read as follows:


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

    (a) When any claim of an application or a patent under 
reexamination is rejected under 35 U.S.C. 103 in view of a U.S. patent 
which is not prior art under 35 U.S.C. 102(b), and the inventions 
defined by the claims in the application or patent under reexamination 
and by the claims in the patent are not identical but are not 
patentably distinct, and the inventions are owned by the same party, 
the applicant or owner of the patent under reexamination may disqualify 
the patent as prior art. The patent can be disqualified as prior art by 
submission of:

[[Page 42806]]

    (1) A terminal disclaimer in accordance with Sec. 1.321(c), and
    (2) An oath or declaration stating that the application or patent 
under reexamination and the patent are currently owned by the same 
party, and that the inventor named in the application or patent under 
reexamination is the prior inventor under 35 U.S.C. 104.
    (b) When an application or a patent under reexamination claims an 
invention which is not patentably distinct from an invention claimed in 
a commonly owned patent with the same or a different inventive entity, 
a double patenting rejection will be made in the application or a 
patent under reexamination. A judicially created double patenting 
rejection may be obviated by filing a terminal disclaimer in accordance 
with Sec. 1.321(c).
    19. Section 1.131 is 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 to another or others which is prior art 
under 35 U.S.C. 102 (a) or (e) and which substantially shows or 
describes but does not claim the same patentable invention, as defined 
in Sec. 1.601(n), or on reference to a foreign patent or to a printed 
publication, the inventor of the subject matter of the rejected claim, 
the owner of the patent under reexamination, or the party qualified 
under Secs. 1.42, 1.43, or 1.47, may submit an appropriate oath or 
declaration to overcome the patent or publication. The oath or 
declaration must include facts showing a completion of the invention in 
this country or in a NAFTA or WTO member country before the filing date 
of the application on which the U.S. patent issued, or before the date 
of the foreign patent, or before the date of the printed publication. 
When an appropriate oath or declaration is made, the patent or 
publication cited shall not bar the grant of a patent to the inventor 
or the confirmation of the patentability of the claims of the patent, 
unless the date of such patent or printed publication is more than one 
year prior to the date on which the inventor's or patent owner's 
application was filed in this country.
    (2) A date of completion of the invention may not be established 
under this section before December 8, 1993, in a NAFTA country, or 
before January 1, 1996, in a WTO member country other than a NAFTA 
country.
* * * * *
    20. Section 1.132 is 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 U.S. patent which substantially shows or 
describes but does not claim the same patentable invention, as defined 
in Sec. 1.601(n), on reference to a foreign patent, on reference to a 
printed publication, or on reference to facts within the personal 
knowledge of an employee of the Office, or when rejected upon a mode or 
capability of operation attributed to a reference, or because the 
alleged invention is held to be inoperative, lacking in utility, 
frivolous, or injurious to public health or morals, affidavits or 
declarations traversing these references or objections may be received.
    21. Section 1.154 is 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:
    (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) Feature Description.
    (8) A single claim.
    (9) Drawings or photographs.
    (10) Executed oath or declaration (See Sec. 1.153(b)).
    (b) [Reserved]
    22. Section 1.163 is 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) Title of the invention.
    (4) Cross-reference to related applications.
    (5) Statement regarding federally sponsored research or 
development.
    (6) Background of the invention.
    (7) Brief summary of the invention.
    (8) Brief description of the drawing.
    (9) Detailed Botanical Description.
    (10) A single claim.
    (11) Abstract of the Disclosure.
    (12) Drawings (in duplicate).
    (13) Executed oath or declaration.
    (14) Plant color coding sheet.
    (d) A plant color coding sheet as used in this section means a 
sheet that specifies a color coding system as designated in a color 
dictionary, and lists every plant structure to which color is a 
distinguishing feature and the corresponding color code which best 
represents that plant structure.
    23. Section 1.291 is amended by revising paragraphs (a) and (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 submitted prior to the mailing of a notice of 
allowance under Sec. 1.311; and
    (2) The protest is either served upon the applicant in accordance 
with Sec. 1.248, or filed with the Office in duplicate in the event 
service is not possible.
    (b) Protests raising fraud or other inequitable conduct issues will 
be entered in the application file, generally without comment on those 
issues. Protests which do not adequately identify a pending patent 
application will be returned to the protestor and will not be further 
considered by the Office. A protest submitted in accordance with the 
second sentence of paragraph (a) of this section will be considered by 
the Office if the application is still pending when the protest and 
application file are brought before the examiner and it includes:
    (1) A listing of the patents, publications, or other information 
relied upon;
    (2) A concise explanation of the relevance of each listed item;
    (3) A copy of each listed patent or publication or other item of 
information in written form or at least the pertinent portions thereof; 
and
    (4) An English language translation of all the necessary and 
pertinent parts of any non-English language patent, publication, or 
other item of information in written form relied upon.
* * * * *
    24. Section 1.292 is amended by revising paragraphs (a) and (b) to 
read as follows:

[[Page 42807]]

Sec. 1.292  Public use proceedings.

    (a) When a petition for the institution of public use proceedings, 
supported by affidavits or declarations is found, on reference to the 
examiner, to make a prima facie showing that the invention claimed in 
an application believed to be on file had been in public use or on sale 
more than one year before the filing of the application, a hearing may 
be had before the Commissioner to determine whether a public use 
proceeding should be instituted. If instituted, the Commissioner may 
designate an appropriate official to conduct the public use proceeding, 
including the setting of times for taking testimony, which shall be 
taken as provided by Secs. 1.671 through 1.685. The petitioner will be 
heard in the proceedings but after decision therein will not be heard 
further in the prosecution of the application for patent.
    (b) The petition and accompanying papers, or a notice that such a 
petition has been filed, shall be entered in the application file if:
    (1) The petition is accompanied by the fee set forth in 
Sec. 1.17(j);
    (2) The petition is served on the applicant in accordance with 
Sec. 1.248, or filed with the Office in duplicate in the event service 
is not possible; and
    (3) The petition is submitted prior to the mailing of a notice of 
allowance under Sec. 1.311.
* * * * *
    25. Section 1.315 is revised to read as follows:


Sec. 1.315  Delivery of patent.

    The patent will be delivered or mailed upon issuance to the 
correspondence address of record. See Sec. 1.33(a).
    26. Section 1.321 is 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 judicially 
created double patenting rejection in a patent application or in a 
reexamination proceeding, must:
    (1) Comply with the provisions of paragraphs (b)(2) through (b)(4) 
of this section;
    (2) Be signed in accordance with paragraph (b)(1) of this section 
if filed in a patent application or in accordance with paragraph (a)(1) 
of this section if filed in a reexamination proceeding; and
    (3) Include a provision that any patent granted on that application 
or any patent subject to the reexamination proceeding shall be 
enforceable only for and during such period that said patent is 
commonly owned with the application or patent which formed the basis 
for the rejection.
    27. Section 1.497 is 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 desires to 
enter the national stage under 35 U.S.C. 371 pursuant to Secs. 1.494 or 
1.495, he or she must file an oath or declaration that:
    (1) Is executed in accordance with either Secs. 1.66 or 1.68;
    (2) Identifies the specification to which it is directed;
    (3) Identifies each inventor and the country of citizenship of each 
inventor; and
    (4) States that the person making the oath or declaration believes 
the named inventor or inventors to be the original and first inventor 
or inventors of the subject matter which is claimed and for which a 
patent is sought.
    (b)(1) The oath or declaration must be made by all of the actual 
inventors except as provided for in Secs. 1.42, 1.43 or 1.47.
    (2) If the person making the oath or declaration is not the 
inventor, the oath or declaration shall state the relationship of the 
person to the inventor, the facts required by Secs. 1.42, 1.43 or 1.47, 
and, upon information and belief, the facts which the inventor would 
have been required to state.
    (c) If the oath or declaration meets the requirements of paragraphs 
(a) and (b) of this section, the oath or declaration will be accepted 
as complying with 35 U.S.C. 371(c)(4) and Secs. 1.494(c) or 1.495(c). 
However, if the oath or declaration does not also meet the requirements 
of Sec. 1.63, a supplemental oath or declaration in compliance with 
Sec. 1.63 will be required in accordance with Sec. 1.67.

    Dated: August 13, 1996.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 96-21073 Filed 8-16-96; 8:45 am]
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