[Federal Register Volume 61, Number 185 (Monday, September 23, 1996)]
[Proposed Rules]
[Pages 49820-49868]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 96-23665]


      

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Part II





Department of Commerce





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Patent and Trademark Office



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37 CFR Part 1, et al.



1996 Changes to Patent Practice and Procedure; Proposed Rule

  Federal Register / Vol. 61, No. 185 / Monday, September 23, 1996 / 
Proposed Rules  

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 3, 5, and 7

[Docket No. 960606163-6163-01]
RIN 0651-AA80


1996 Changes to Patent Practice and Procedure

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The Patent and Trademark Office (Office) is proposing to amend 
the rules of practice in patent cases to simplify the requirements of 
the rules, rearrange portions of the rules for better context, and 
eliminate unnecessary rules or portions thereof as part of a 
government-wide effort to reduce the regulatory burden on the American 
public. The procedure for filing of continuation and divisional 
applications would be simplified. Another type of simplification being 
proposed that would affect several rules is the acceptance of a 
statement that errors were made without deceptive intent, unaccompanied 
by any further showing of facts and circumstances. The naming of 
inventors would no longer be required on filing of the application in 
order to obtain a filing date, which would eliminate the need for 
certain petitions to correct inventorship.

DATES: Written comments must be received on or before November 22, 
1996, to ensure consideration.
    Comments will be available for public inspection after receipt and 
will be available on the Internet (address: [email protected]). 
Commentators should note that since their comments will be made 
publicly available, information that is not desired to be made public, 
such as the address and phone number of the commentator, should not be 
included in the comments. A public hearing will not be conducted.

ADDRESSES: Comments should be sent by mail message over the Internet 
addressed to [email protected].
    Comments may also be submitted by mail addressed to: Box Comments--
Patents, Assistant Commissioner for Patents, Washington, DC 20231, 
Attention: Jeffrey V. Nase or by FAX to (703) 308-6916. Although 
comments may be submitted by mail or FAX, the Office prefers to receive 
comments via the Internet. Where comments are submitted by mail, the 
Office would appreciate the comments to be electronically filed on a 
DOS formatted 3\1/4\ inch disk along with a paper copy of the comments.
    The comments will be available for public inspection in Suite 520, 
of One Crystal Park, 2011 Crystal Drive, Arlington, Virginia.

FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein, by telephone at 
(703) 305-9285 or by mail addressed to: Box Comments--Patents, 
Assistant Commissioner for Patents, Washington, DC 20231 marked to the 
attention of Mr. Bernstein or by FAX to (703) 308-6916.

SUPPLEMENTARY INFORMATION: This proposed rule change seeks to implement 
President Clinton's program of reducing the regulatory burden on the 
American public, which program is supported by the Office as published 
in the Official Gazette on June 6, 1995. 1175 Off. Gaz. Pat. Office 19, 
20 and 22. The proposed changes are directed towards: (1) 
Simplification of procedures for filing continuation and divisional 
applications, establishing lack of deceptive intent in reissues, 
petition practice, and in the filing of papers correcting improperly 
requested small entity status; (2) elimination of unnecessary 
requirements, such as certain types of petitions to correct 
inventorship under Sec. 1.48; (3) removal of rules and portions thereof 
that merely represent instructions as to the internal affairs of the 
Office more appropriate for inclusion in the Manual of Patent Examining 
Procedure (MPEP); (4) rearrangement of portions of rules to improve 
their context; and (5) clarification of rules to aid in understanding 
of the requirements that they set forth.
    The Office is particularly interested in comments as to whether the 
proposed rules if adopted should be applied to already pending reissue 
oaths or declarations under the new proposed standards of Sec. 1.175 as 
it is to be amended under the final rule and already pending petitions 
and papers under Secs. 1.28(c)(2), 1.48 and 1.324 as they are to be 
amended under the final rule for such papers submitted prior to the 
effective date of any final rule change, i.e., should the advantages 
proposed by these suggested rule changes that are incorporated into the 
final rule be applied retroactively to papers submitted prior to the 
effective date of the final rule.

Discussion of Specific Rules

    If Title 37 of the Code of Federal Regulations, Parts 1, 3, 5 and 7 
are amended as proposed:
    Section 1.4(d) paragraphs (1) and (2) would be amended to place the 
current subject matter of both paragraphs into paragraphs (d)(1) (i) 
and (ii) with a clarifying reference in paragraph (d)(1)(ii) to the 
submission of a copy of a copy.
    Paragraph (d)(2) of Sec. 1.4 would be amended so that the 
certifications set forth in the rule would be automatically made upon 
presenting any paper to the Office by the party presenting the paper 
and in an added paragraph (d)(3)(ii) identifying by the statute, 18 
U.S.C. 1001 that sets forth the required standards of conduct. 
Sanctions would be set forth in a Sec. 1.4(d)(3)(i) for violation of 
the certifications in Sec. 1.4(d)(2) and for violations of the 
standards of conduct in Sec. 1.4(d)(3)(ii).
    The proposed amendments to Sec. 1.4(d) would support proposed 
amendments to Secs. 1.6, 1.8, 1.10, 1.27, 1.28, 1.48, 1.52, 1,55, 1.69, 
1.102, 1.125, 1.137, 1.377, 1.378, 1.804, 1.805, (1.821 and 1.825 will 
be reviewed at a later date in connection with other matters), 3.26, 
and 5.4 that would delete the requirement for verification (MPEP 602) 
of statements of facts by applicants and other parties who are not 
registered to practice before the Office. The absence of a required 
verification has been a source of delay in the prosecution of 
applications, particularly where such absence is the only defect noted. 
The proposed change to Sec. 1.4(d) would automatically incorporate 
required averments thereby eliminating the necessity for a separate 
verification for each statement of facts that is to be presented, 
except for those instances where the verification requirement is 
retained. Similarly, the proposed amendments to Sec. 1.4(d) would 
support a proposed amendment to Secs. 1.97 (Secs. 1.637 and 1.673 will 
be reviewed at a later date in connection with other matters) that 
would change the requirements for certifications to requirements for 
statements. The oath or declaration under Secs. 1.63 and affidavits 
under Secs. 1.131 and 1.132 would not be affected. The requirement in 
Sec. 5.25(a)(3) for a verified statement would be maintained, as the 
required explanation must include a showing of facts (evidence), not 
mere allegations, which will be weighed by the official deciding the 
petition for retroactive license. The statements in Secs. 1.494(e) and 
1.495(f) that verification of translations of documents filed in a 
language other than English may be required would be maintained, as 
such requirements are made rarely and only when deemed necessary (when 
persons persist in translations which appear on their face to be 
inaccurate, for example). The requirements for certification of service 
on parties in Secs. 1.248, 1.510, 1.637 and 10.142 would be maintained.

[[Page 49821]]

    Section 1.4 would also have a new paragraph (g) related to an 
applicant who has not made of record a registered attorney or agent 
being required to state whether assistance was received in the 
preparation or prosecution of a patent application. This is proposed to 
be transferred from Sec. 1.33(b) for consistent contextual purposes.
    Section 1.6 paragraph (e)(2) would be amended to remove the 
requirement that the statement be verified in accordance with the 
proposed change to Sec. 1.4(d)(2).
    Section 1.8 paragraph (b)(3) would be amended to remove the 
requirement that the statement be verified in accordance with the 
proposed change to Sec. 1.4(d)(2).
    Section 1.10 would be amended to remove the requirement for a 
statement that is verified. See comments to Sec. 1.4(d). It is also 
proposed to clarify the section by substitution of ``averring to the 
fact'' with ``stating.''
    Section 1.14 would have the title and paragraphs (a) and (e) 
amended to replace the term ``secrecy'' by ``confidence'' to conform to 
the usage in 35 U.S.C. 122. Paragraph (a) of Sec. 1.14 would have a 
reference to serial number changed to application number. Section 1.14 
would also be amended to have paragraph (f) added to recognize the 
proposed change to Sec. 1.47 (a) and (b) that are also exceptions to 
maintaining pending applications in confidence by providing public 
notice of the prospective issuance of a pending application to 
nonsigning inventors.
    Section 1.17 (and Sec. 1.136(a)) would add a recitation to an 
extension of time fee payment for a reply filed within a fifth month 
after a nonstatutory or shortened statutory period for reply was set. 
Section 1.17(a) is specifically proposed to be subdivided into 
paragraphs (a)(1) through (a)(5), with paragraphs (a)(1) through (a)(4) 
setting forth the amounts for one-month through four-month extension 
fees proposed in Revision of Patent Fees for Fiscal Year 1997, 1186 
Off. Gaz. Pat. Office 14 (May 7, 1996); 61 FR 19224 (May 1, 1996). 
Paragraph (a)(5) would provide the small and other than small entity 
amounts for the newly proposed fifth-month extension fee. Sections 1.17 
(b), (c) and (d) are proposed to be removed as unnecessary in view of 
proposed Sec. 1.17 (a)(1) through (a)(5).
    Fee levels, as proposed by the Revision of Patent Fees for Fiscal 
Year 1997, were used in establishing the fifth-month extension of time 
fees for large and small entities for paragraph (a)(5) of Sec. 1.17. A 
shortened statutory period for reply of one month may be set, thereby 
allowing a fifth month for reply within the six-month statutory period 
for response. Section 1.17(a) is being amended to recognize the 
availability of a fifth-month extension of time when a one-month or a 
thirty-day shortened statutory period is set (e.g., in a written 
requirement for restriction). The addition of a fifth-month would then 
also become available for replies with nonstatutory periods of time 
set, such as for replies to Notices to File Missing Parts of 
Applications.
    Section 1.17(i), as proposed, would: add a petition fee under 
Sec. 1.59 for expungement and return of papers, delete the references 
to petitions under Secs. 1.60 and 1.62 to accord a filing date in view 
of the proposed deletion of Secs. 1.60 and 1.62, and to change 
``divisional reissues'' to ``multiple reissue applications.'' Moreover, 
Sec. 1.17, as well as Secs. 1.103, 1.112, 1.113, 1.133, 1.134, 1.135, 
1.136, 1.142, 1.144, 1.146, 1.191, 1.192, 1.291, 1.294, 1.484, 1.485, 
1.488, 1.494, 1.495, 1.530, 1.550, 1.560, (1.605, 1.617, 1.640, and 
1.652 will be reviewed at a later date in connection with other 
matters), 1.770, 1.785, (1.821 will be reviewed at a later date in 
connection with other matters), and 5.3, would replace the phrases 
``response'' and ``respond'' with ``reply'' for consistency with 
Sec. 1.111.
    Section 1.21(n), as proposed, would delete the reference to an 
improper application under Secs. 1.60 or 1.62 in view of the proposed 
deletion of Secs. 1.60 and 1.62.
    Section 1.26(a) is proposed to be amended to better track the 
statutory language of 35 U.S.C. 42(d) by deleting ``[m]oney'' and 
``actual,'' adding ``fee'' and adding back language relating to refunds 
of fees paid that were not ``required'' that was inadvertently dropped 
in the July 1, 1993, publication of title 37 CFR, and from subsequent 
publications.
    Section 1.27 (a) through (d) would be amended to remove the 
requirement that a statement filed thereunder be ``verified.'' See 
comments relating to Sec. 1.4(d). Section 1.27(b) is proposed to be 
amended for clarification with the movement of a clause relating to 
``any verified statement'' within a sentence.
    Section 1.28(a) would be amended to remove the requirement for a 
statement that is ``verified.'' See comments relating to Sec. 1.4(d).
    Section 1.28(a) would also be amended to provide that a new small 
entity statement would not be required for reissue or continued 
prosecution (Sec. 1.53(b)(3)) applications where small entity status is 
still proper and reliance is had on a reference to a small entity 
statement filed in a prior application or patent or a copy thereof is 
supplied.
    Section 1.28(a) would be further amended to state that the payment 
of a small entity basic statutory filing fee in a nonprovisional 
continuing application, which claims benefit under 35 U.S.C. 119(e), 
120, 121, or 365(c) of a prior application or in a continuing 
prosecution application, or in a reissue application, wherein the prior 
application or the patent has small entity status, will substitute for 
the reference in the continuing or reissue application to the small 
entity statement in the prior application or in the patent, thereby 
establishing small entity status in such nonprovisional application.
    Section 1.28(a) is also amended to require a new determination of 
continued entitlement to small entity status for continued prosecution 
applications filed under Sec. 1.53(b)(3) and to clarify that the 
refiling of applications as continuations, divisions and continuation-
in-part applications and the filing of reissue applications also 
require a new determination of continued entitlement to small entity 
status prior to reliance on small entity status in a prior application 
or patent.
    Section 1.28(c) would have the requirement removed for a statement 
of facts explaining how an error in payment of small entity fees 
occurred in good faith and how and when the error was discovered. A fee 
deficiency payment based on the difference between fees originally paid 
as a small entity and the current large entity amount at the time of 
full payment of the fee deficiency will be deemed to constitute a 
belief by the party submitting the deficiency payment that small entity 
status was established in good faith and that the original payment of 
small entity fees was made in good faith. Any paper submitted under 
Sec. 1.28(c) will be placed in the appropriate file without review 
after the processing of any check or the charging of any fee deficiency 
payment specifically authorized.
    Section 1.33 would no longer provide that the required residence 
and post office address of the applicant can appear elsewhere than in 
the oath or declaration under Sec. 1.63. Section 1.63(a)(3) would be 
amended to require that the post office address as well as the 
residence be identified therein and not elsewhere. Permitting the 
residence to be elsewhere in the application other than the oath or 
declaration, as in current Sec. 1.33(a), is inconsistent with current 
Sec. 1.63(c) that states the residence must appear in the oath or 
declaration. The requirement for placement of the post office address 
is proposed to be made equivalent to the requirement for the residence 
to

[[Page 49822]]

eliminate confusion between the two, which often are the same 
destination and are usually provided in the oath or declaration. The 
reference in Sec. 1.33(a) to the assignee providing a correspondence 
address has been moved within Sec. 1.33(a) for clarification. Other 
clarifying language including a reference to Sec. 1.34(b), use of the 
terms ``provided,'' ``furnished'' rather than ``notified,'' and 
``application'' rather than ``case,'' while ``of which the Office'' 
would be deleted.
    Section 1.33(b) would be removed and the subject matter transferred 
to new Sec. 1.4(g).
    Section 1.41(a) (and Sec. 1.53) would no longer require that a 
patent be applied for in the name of the actual inventors for an 
application for patent to receive a filing date. The requirement for 
use of full names would be moved to Sec. 1.63(a) for better context. 
The requirement for naming of the inventor or inventors would be 
replaced with only a request that such names or an identifying name be 
submitted on filing of the application. The use of very short 
identifiers should be avoided to prevent confusion. Without supplying 
at least an identifying name that is specific the Office may have no 
ability or only a delayed ability to match any papers submitted after 
filing of the application and before issuance of an identifying 
Application number with the application file. Any identifier used that 
is not an inventor's name must be specific, alphanumeric characters of 
reasonable length, and must be presented in such a manner that it is 
clear to application processing personnel what the identifier is and 
where it is to be found. It is strongly suggested that applications 
filed without an executed oath or declaration under Sec. 1.63 or 1.175 
continue to use an inventor's name for identification purposes. Failure 
to apprise the Office of the application identifier being used will 
result in applicants having to resubmit papers that could not be 
matched with the application and proof of the earlier receipt of such 
papers where submission was time dependent.
    Paragraph (a) of Sec. 1.41 would also be amended to recite that the 
actual inventor or inventors of an application are set forth in an 
executed Sec. 1.63 oath or declaration to correspond to the proposed 
change in Sec. 1.53(b)(1)(iii). Hence, the recitation of the 
inventorship in an application submitted under Sec. 1.53(d) without an 
executed oath or declaration for purposes of identification may be 
changed merely by the later submission of an oath or declaration 
executed by a different inventive entity without recourse to a petition 
under Sec. 1.48.
    Section 1.47 would be amended to provide for publication in the 
Official Gazette of a notice of filing for all applications submitted 
under this section rather than only when notice to the nonsigning 
inventor(s) is returned to the Office undelivered or when the address 
of the nonsigning inventor(s) is unknown. The information to be 
published includes: The Application number, filing date, invention 
title and inventors identifying the missing inventor.
    Section 1.47 would also be amended for clarification purposes. A 
reference to an ``omitted inventor'' in Sec. 1.47(a) would be replaced 
with ``nonsigning inventor.'' Statements in Secs. 1.47 (a) and (b) that 
a patent will be granted upon a satisfactory showing to the 
Commissioner would be deleted as unnecessary. Section 1.47(b) is 
proposed to be amended to clarify that it applies only where none of 
the inventors are willing or can be found to sign the Declaration by 
substitution of ``an inventor'' by ``all the inventors.'' The use of 
``must state'' in regard to the last known address would be deleted as 
redundant in view of the explicit requirement for such address in the 
rule. The sentence in Sec. 1.47(b) referring to the filing of the 
assignment, written agreement to assign or other evidence of 
proprietary interest would be deleted as redundant in view of the 
requirement appearing earlier in Sec. 1.47(b) calling for ``proof of 
pertinent facts.''
    Section 1.48 for inventorship corrections in an application 
(Sec. 1.324, for inventorship corrections in a patent, and Sec. 1.175, 
for reissue declarations) would no longer require factual showings to 
establish a lack of deceptive intent. All that will be needed is a 
statement to that effect.
    Section 1.48 would be amended in its title to clarify that the 
section is related to patent applications as opposed to patents.
    Section 1.48(a) would not require correction of the inventorship if 
the inventorship or other identification under Sec. 1.41 was set forth 
in error on filing of the application. Section 1.48(a) is proposed to 
be amended to apply only to correction of inventor or inventors from 
that named in an originally filed executed oath or declaration and not 
to the naming of inventors or others for identification purposes as is 
currently proposed under Sec. 1.41. The statement to be submitted would 
be required only from the person named in error as an inventor or from 
the person who through error was not named as an inventor rather than 
from all the original named inventors so as to comply with 35 U.S.C. 
116. The present requirement that any amendment of the inventorship 
under Sec. 1.48(a) be ``diligently'' made would be removed. The 
applicability of a rejection under 35 U.S.C. 102(f)/(g) against an 
application with the wrong inventorship set forth therein and any 
patent that would issue thereon is deemed to provide sufficient 
motivation for prompt correction of the inventorship without the need 
for a separate requirement for diligence.
    A clarifying reference to Sec. 1.634 would be added in Sec. 1.48(a) 
for instances when inventorship correction is necessary during an 
interference and has been moved from Sec. 1.48(a)(4) for improved 
contextual purposes.
    The Sec. 1.48(a)(1) statement would require a statement only as to 
the lack of deceptive intent rather than a statement of facts to 
establish how the inventorship error was discovered and how it 
occurred, since the latter is proposed to be deleted. Additionally, the 
persons from whom a statement is required now includes any person not 
named in error as an inventor but limits statements from the original 
named inventors to only those persons named in error as inventors 
rather than all persons originally named as inventors including those 
correctly named. The paragraph would be amended to remove the 
requirement that the statement be verified in accordance with the 
proposed change to Sec. 1.4(d)(2).
    Section 1.48(a)(2) would be amended for clarification purposes to 
indicate the availability of Secs. 1.42, 1.43 or 1.47 in meeting the 
requirement for an executed oath or declaration under Sec. 1.63 from 
each actual inventor. Section 1.47 would only be applicable to the 
person to be added as an inventor (inventors named in an application 
transmittal letter can be deleted without petition). For those persons 
already having submitted an executed oath or declaration under 
Sec. 1.63, a petition under Sec. 1.183, requesting waiver of 
reexecution of an oath or declaration, may be an appropriate remedy. 
The requirement for an oath or declaration is maintained in 
Sec. 1.48(a) notwithstanding its replacement in Sec. 1.324 for issued 
patents by a statement of agreement or lack of disagreement with the 
requested change in view of the need to satisfy the duty of disclosure 
requirement in a pending application that is set forth in a Sec. 1.63 
oath or declaration.
    Section 1.48(a)(4) would be amended to include a citation to 
Sec. 3.73(b) to clarify the requirements for submitting a written 
consent of assignee, which is subject to the requirement under 
Sec. 3.73(b), and to delete the reference to an application involved in 
an interference, which is being moved to

[[Page 49823]]

Sec. 1.48(a). Section 1.48(a)(4) would also be amended to clarify that 
the assignee required to submit its written consent is only the 
existing assignee of the original named inventors at the time the 
petition is filed and not any party that would become an assignee based 
on the grant of the inventorship correction.
    Section 1.48(b) would also be amended to remove the requirement 
that a petition thereunder be diligently filed. The applicability of a 
rejection under 35 U.S.C. 102(f)/(g) against an application with the 
wrong inventorship set forth therein and any patent that would issue 
thereon is deemed to provide sufficient motivation for prompt 
correction of the inventorship without the need for a separate 
requirement for diligence.
    Section 1.48(b) would have a clarifying reference to Sec. 1.634 
added for instances when inventorship correction is necessary during an 
interference.
    Section 1.48(c) would be amended so that a petition thereunder no 
longer need meet the current requirements of Sec. 1.48(a), which are 
also proposed to be changed. A statement from each inventor being added 
that the inventorship amendment is necessitated by amendment of the 
claims and that the error occurred without deceptive intent would be 
required under Sec. 1.48(c)(1) rather than the previous requirement of 
a statement from each original named inventor. The previous 
requirements under Sec. 1.48(a) for an oath or declaration, the written 
consent of an assignee and the written consent of any assignee are 
retained, but are now separately set forth in Secs. 1.48(c)(2) through 
(c)(4). The particular circumstances of a petition under this 
paragraph, adding an inventor due to an amendment of the claims that 
incorporates material attributable to the inventor to be added, is seen 
to be indicative of a lack of deceptive intent in the original naming 
of inventors. Accordingly, all that must be averred to is that an 
amendment of the claims has necessitated correction of the inventorship 
and that the inventorship error existing in view of the claim amendment 
occurred without deceptive intent. The current requirement for 
diligence in filing the petition based on an amendment to the claims 
would not be retained as applicants have the right, prior to final 
rejection or allowance, to determine when particular subject matter is 
to be claimed. Applicants should note that any petition under Sec. 1.48 
submitted after allowance is subject to the requirements of Sec. 1.312, 
and a petition submitted after final rejection is not entered as a 
matter of right. The statement of facts must be a verified statement if 
made by a person not registered to practice before the Patent and 
Trademark Office.
    Section 1.48(c)(2) would clarify the availability of Secs. 1.42, 
1.43 and 1.47 in meeting the requirement for an executed oath or 
declaration under Sec. 1.63. Section 1.47 would only be applicable to 
the person to be added as an inventor. For those persons already having 
an executed oath or declaration under Sec. 1.63 a petition under 
Sec. 1.183, requesting waiver of reexecution of an oath or declaration, 
may be an appropriate remedy.
    Section 1.48(c)(4) would clarify that the assignee required to 
submit its written consent is only the existing assignee of the 
original named inventors at the time the petition is filed and not any 
party that would become an assignee based on the grant of the 
inventorship correction. A citation to Sec. 3.73(b) would be presented.
    Section 1.48(d) would be amended by addition of ``their part'' to 
replace ``the part of the actual inventor or inventors'' and of 
``omitted'' to replace ``actual'' to require statements from the 
inventors to be added rather than from all the actual inventors so as 
to comply with 35 U.S.C 116. Section 1.48(d)(1) would also be clarified 
to identify the error to be addressed is the inventorship error. It is 
not expected that the party filing a provisional application will 
normally need to correct an error in inventorship under this paragraph 
by adding an inventor therein except when necessary under Sec. 1.78 to 
establish an overlap of inventorship with a continuing application. 
Automatic correction of the inventorship is not possible as is the case 
for nonprovisional applications when an executed oath or declaration 
under Sec. 1.63 with the correct inventorship is later filed; since an 
oath or declaration is not to be submitted in provisional applications, 
Sec. 1.51(a)(2).
    Section 1.48(d)(1) would be amended to remove the requirement that 
the statement be verified in accordance with the proposed change to 
Sec. 1.4(d)(2).
    Section 1.48(e)(1) would be amended to replace a requirement in 
provisional applications that the required statement be one ``of 
facts'' directed towards ``establishing that the error'' being 
corrected ``occurred without deceptive intention,'' thereby requiring 
only a statement that the inventorship error occurred without deceptive 
intent. Paragraph (e)(1) would also be amended to remove the 
requirement that the statement be verified in accordance with the 
proposed change to Sec. 1.4(d)(2). It is not expected that the party 
filing a provisional application would need to file a petition under 
this paragraph since the application will go abandoned by operation of 
law, Sec. 1.53(e)(2), and the need to delete an inventor will not 
affect the overlap of inventorship needed to claim priority under 
Sec. 1.78(a)(3) for any continuing application.
    Section 1.48(e)(3) would be amended to clarify that the assignee 
required to submit its written consent is only the prior existing 
assignee before correction of the inventorship is granted and not any 
party that would become an assignee based on the grant of the 
inventorship correction and a reference to Sec. 3.73(b) would be added.
    Section 1.48(f) would be added to provide that the later filing of 
an executed oath or declaration would act to correct the inventorship 
without a specific petition for such correction and would be used to 
issue a filing receipt and process the application notwithstanding any 
inventorship or other identification name earlier presented.
    Section 1.48(g) would be added to specifically recognize that the 
Office may require such other information as may be deemed appropriate 
under the particular circumstances surrounding a correction of the 
inventorship.
    Section 1.51(c) covering the use of an authorization to charge a 
deposit account is proposed to be removed as unnecessary in view of 
Sec. 1.25(b).
    Section 1.52 paragraphs (a) and (d) would be amended to remove the 
requirement that the translation be verified in accordance with the 
proposed change to Sec. 1.4(d)(2). Paragraphs (a) and (d) of this 
section would also be amended to clarify the need for a statement that 
the translation being offered is an accurate translation, as is also 
proposed in Sec. 1.69 paragraph (b).
    Section 1.53(b)(1), as proposed, would remove: (1) The phrase ``in 
the name of the actual inventor or inventors as required by 
Sec. 1.41,'' and (2) the sentence ``[i]f all the names of the actual 
inventor or inventors are not supplied when the specification and any 
required drawing are filed, the application will not be given a filing 
date earlier than the date upon which the names are supplied unless a 
petition with the fee set forth in Sec. 1.17(i) is filed which sets 
forth the reasons the delay in supplying the names should be excused.'' 
These proposed changes are consistent with the proposed change to 
Sec. 1.41. Section 1.53(b)(1) (and Sec. 1.41(a)) would no longer 
require that a patent be applied for in the name of the actual 
inventors for an application for patent to receive a filing date.
    Section 1.53(b)(1), as proposed, would change (1) ``[a] 
continuation or

[[Page 49824]]

divisional application (filed under the conditions specified in 35 
U.S.C. 120, 121 or 365(c) and Sec. 1.78(a)) may be filed under this 
section, Sec. 1.60 or Sec. 1.62'' and (2) ``[a] continuation-in-part 
application may also be filed under this section or Sec. 1.62'' to (1) 
[a] continuation or divisional application (filed under the conditions 
specified in 35 U.S.C. 120, 121 or 365(c) and Sec. 1.78(a)) may be 
filed under this paragraph or paragraph (b)(3) of this section'' and 
(2) ``[a] continuation-in-part application must be filed under this 
paragraph, respectively. Upon the deletion of Secs. 1.60 and 1.62, any 
continuation-in-part applications must be filed under Sec. 1.53(b)(1), 
but a continuation or divisional application may be filed under 
Secs. 1.53(b)(1) or (b)(3).
    Section 1.53(b)(1), as proposed, would also add a new paragraph 
(b)(1)(i) expressly providing that any continuation or divisional 
application may be filed by all or by less than all of the inventors 
named in a prior application, and that a newly executed oath or 
declaration is not required pursuant to Secs. 1.51(a)(1)(ii) and 
1.53(d) in a continuation or divisional application filed by all or by 
less than all of the inventors named in a prior application, provided 
that one of the following is submitted: (1) A copy of the executed oath 
or declaration filed to complete (Sec. 1.51(a)(1)) the most immediate 
prior national application for which priority is claimed under 35 
U.S.C. 120, 121 or 365(c), or (2) a copy of an unexecuted oath or 
declaration, and a statement that the copy is a true copy of the oath 
or declaration that was subsequently executed and filed to complete 
(Sec. 1.51(a)(1)) the most immediate prior national application for 
which priority is claimed under 35 U.S.C. 120, 121 or 365(c). The 
phrase ``most immediate prior national application'' is proposed rather 
than ``prior application'' to accommodate those situations in which the 
prior application was filed under current Secs. 1.60 or 1.62, or where 
the prior application was itself a continuation or divisional 
application and filed with a copy of the executed oath or declaration 
from a prior application pursuant to Sec. 1.53(b)(1)(i). As is 
currently the situation under Secs. 1.60 and 1.62, the applicant's duty 
of candor and good faith including compliance with the duty of 
disclosure requirements of Sec. 1.56 is continuous and applies to the 
continuation, divisional or continued prosecution (Sec. 1.53(b)(3)) 
application, notwithstanding the lack of a newly executed oath or 
declaration. Therefore, applicants should be informed of the intent to 
file a continuation, divisional or continued prosecution application 
with a copy of the proposed claimed supplied. New Sec. 1.53(b)(1)(i), 
as proposed, would also reference Sec. 1.53(d) for the filing of a 
continuation or divisional application without the concomitant 
submission of a newly executed oath or declaration or a copy of the 
oath or declaration for the most immediate prior national application 
for which priority is claimed under 35 U.S.C. 120, 121 or 365(c).
    Section 1.53(b)(1), as proposed, would also add a new paragraph 
(b)(1)(i)(A) providing that the copy of the executed or unexecuted oath 
or declaration for the most immediate prior national application for 
which priority is claimed under 35 U.S.C. 120, 121 or 365(c) must be 
accompanied by a statement from applicant, counsel for applicant or 
other authorized party requesting the deletion of the names of the 
person or persons who are not inventors in the continuation or 
divisional application. Where the continuation or divisional 
application and copy of the oath or declaration from the prior 
application is filed without a statement from an authorized party 
requesting deletion of the names of any person or persons named in the 
prior application, the continuation or divisional application will be 
treated as naming as inventors the person or persons named in the prior 
application, taking into account any petition for correction of 
inventorship pursuant to Sec. 1.48 in the prior application that has 
been granted prior to the filing of the continuation or divisional 
application. For situations where an inventor or inventors are to be 
added in a continuation or divisional application see paragraph (ii) 
under this section.
    The statement requesting the deletion of the names of the person or 
persons who are not inventors in the continuation or divisional 
application must be signed by person(s) authorized pursuant to 
Sec. 1.33(a) to sign an amendment in the continuation or divisional 
application. That is, such a statement must be signed by: (1) All of 
the inventors in the continuation or divisional application (see MPEP 
714.01(a)), (2) the assignee of record of the entire interest in the 
continuation or divisional application in compliance with Sec. 3.73(b) 
(see MPEP 324), (3) an attorney or agent of record, or (4) a registered 
attorney or agent acting in a representative capacity pursuant to 
Sec. 1.34(a).
    Section 1.53(b)(1)(i), as proposed, would add a new paragraph (B) 
providing that where the power of attorney or correspondence address 
was changed during the prosecution of the prior application, the change 
in power of attorney or correspondence address must be identified in 
the continuation or divisional application.
    Section 1.53(b)(1), as proposed, would add a new paragraph (ii) 
providing that a newly executed oath or declaration must be filed in a 
continuation or divisional application naming an inventor not named in 
the prior application. For situations where an inventor or inventors 
are to be added in a continuation or divisional application the Office 
will not require a petition pursuant to Sec. 1.48, but will require 
only the newly executed oath or declaration naming the correct 
inventorship in the continuation or divisional application under 
Sec. 1.53. For deletion of inventors in a continuation or divisional 
application see Sec. 1.53(b)(1)(i) and (b)(3). New Sec. 1.53(b)(1)(ii), 
as proposed, would also provide that a newly executed oath or 
declaration must be filed in a continuation-in-part application, which 
application may name all, more, or less than all of the inventors named 
in the prior application.
    Section 1.53(b)(1)(iii), as proposed, would clarify that the 
inventorship is not set forth in an application until an executed oath 
or declaration is submitted therein in accordance with the proposed 
change to Sec. 1.41(a). Where the inventorship was voluntarily set 
forth on filing an application without an executed oath or declaration 
pursuant to Sec. 1.53(d) for purposes of identification, the actual 
inventorship of the application will be controlled by the later 
submission of an executed oath or declaration which may change what was 
originally identified as the inventorship without recourse to a 
petition under Sec. 1.48 in accordance with the proposed change to 
Sec. 1.41(a).
    Section 1.53(b)(2), as proposed, would remove the phrase ``in the 
name of the actual inventor or inventors as required by Sec. 1.41'' and 
the sentence ``[i]f all the names of the actual inventor or inventors 
are not supplied when the specification and any required drawing are 
filed, the provisional application will not be given a filing date 
earlier than the date upon which the names are supplied unless a 
petition with the fee set forth in Sec. 1.17(q) is filed which sets 
forth the reasons the delay in supplying the names should be excused.'' 
Section 1.53(b)(2) (and Sec. 1.41(a)) would no longer require that a 
patent be applied for in the name of the actual inventors for an 
application for patent to receive a filing date.
    Section 1.53(b)(2)(ii), as proposed, would change the phrase 
``treated as'' to ``converted to'' for clarity.

[[Page 49825]]

    Section 1.53(b)(3) is proposed to be added to provide for the 
filing of a continued prosecution application.
    Section 532 of the Uruguay Round Agreement Act (Pub. L. 103-465, 
section 532, 108 Stat. 4809 (1994)) amended 35 U.S.C. 154 to provide 
that the term of patent protection begins on the date of patent grant 
and ends on the date 20 years from the filing date of the application. 
As any delay in the prosecution of the application will reduce the term 
of patent protection, reducing unnecessary delays in the prosecution of 
applications is a mutual interest of patent applicants and the Office.
    An applicant in a nonprovisional application filed on or after June 
8, 1995, must file a continuing application to obtain further 
examination subsequent to a final rejection or other final action. The 
current continuing practice under Secs. 1.60 and 1.62 of processing an 
application filed thereunder with a new application number and filing 
date delays the examination of such continuing applications. Therefore, 
the Office proposes to eliminate this delay by: (1) Not assigning a new 
application number to an application filed under Sec. 1.53(b) (3), and 
(2) not processing the application filed under Sec. 1.53(b)(3) with a 
filing date of the request for an application under Sec. 1.53(b)(3). 
Rather, a continued prosecution application would retain the 
application number and the filing date of the prior application to 
which it relates for identification purposes thereby allowing 
examination to proceed without the delays that would be caused by the 
current need to assign to applications filed under Secs. 1.60 and 1.62 
a new application number and filing date as of the date the Rule 60 or 
62 application was requested (submitted).
    Section 1.53(b)(3), as proposed, would specifically provide that: 
(1) In a complete nonprovisional application (Sec. 1.51(a)(1)) filed on 
or after June 8, 1995, a continuation or divisional application that 
discloses and claims only subject matter disclosed in that prior 
complete application and names as inventors the same or less than all 
the inventors named in that prior complete application may be filed 
under this paragraph, and (2) the filing date of the continued 
prosecution application, such as for continuity purposes under 35 
U.S.C. 120 and Sec. 1.78, is the date on which a request for an 
application under this paragraph, including identification of the prior 
application number is filed.
    The specific reference to the prior application required by 35 
U.S.C. 120 and Sec. 1.78(a)(2) will be satisfied by a sentence that the 
continued prosecution application is a continuation or divisional, as 
appropriate, of prior application number ##/###,###, filed ##/##/##, 
now abandoned, notwithstanding that the so identified application 
number and filing date are also the application number and filing date 
assigned to the continued prosecution application under this paragraph. 
Where the continued prosecution application derives from a chain of 
Sec. 1.53(b)(3) applications assigned a common application number and 
filing date, a sentence that the application is a continuation or 
divisional, as appropriate, of the common application number and filing 
date will constitute a specific reference (35 U.S.C. 120 and 
Sec. 1.78(a)(2)) to each application assigned that application number 
and filing date. Since Sec. 1.53(b)(3) is proposed to be limited to 
continuations and divisionals, the actual filing date of the request 
for an application under Sec. 1.53(b)(3) will be relevant only to the 
copendency requirement of 35 U.S.C. 120 and Sec. 1.78 and patent term 
vis-a-vis Pub. L. 103-465. Nevertheless, Sec. 1.53(b)(3) is proposed to 
be limited to a continuation or divisional of a complete application 
filed on or after June 8, 1995, so as to avoid any dispute as to 
whether the application is subject to 20-year patent term as set forth 
in Pub. L. 103-465. That is, any continuation or divisional of an 
application filed prior to June 8, 1995, as well as any continuation-
in-part, must be filed under Sec. 1.53(b)(1).
    Section 1.53(b)(3)(i)(A), as proposed, would provide that an 
application under Sec. 1.53(b)(3) (a continued prosecution application) 
will use the specification, drawings and oath or declaration from the 
prior complete application and will be assigned its application number 
for identification purposes.
    Section 1.53(b)(3)(i)(B), as proposed, would provide that the 
filing of a request for a continued prosecution application is a 
request to expressly abandon the prior application as of the filing 
date granted the application under Sec. 1.53(b)(3).
    Section 1.53(b)(3)(i)(C), as proposed, would provide that a 
continued prosecution application must be filed before the payment of 
the issue fee, abandonment of, or termination of proceedings on the 
prior application with the filing date of a request for a continued 
prosecution application being the date on which a request for a 
continued prosecution application including identification of the 
application number of the prior complete application is filed.
    Section 1.53(b)(3)(ii) (A) and (B), as proposed, would provide that 
filing fee for a continued prosecution application is the statutory 
basic filing fee as set forth in Sec. 1.16 and any additional fee due 
based on the number of claims remaining in the application after entry 
of any amendment accompanying the request for an application under this 
section and entry of any amendments under Sec. 1.116 unentered in the 
prior application which applicant has requested to be entered in the 
new application.
    In instances in which a continued prosecution application is 
submitted without the basic statutory filing fee or any additional 
claims fee due, the Office will continue to mail a ``Notice of Missing 
Parts'' under Sec. 1.53(d)(1) and give the applicant a period of time 
within which to file the fee and to pay the surcharge under 
Sec. 1.16(e) to prevent abandonment of the application (see 
Sec. 1.53(d)(1)). Thus, the filing of a continued prosecution 
application without the basic statutory filing fee or any additional 
claims fee due will result in a delay in the initial processing of the 
application. An applicant, however, may eliminate or limit this delay 
by either filing the request for a continued prosecution application 
with the appropriate filing fee or not delaying the submission of the 
appropriate filing fee until the mailing of or expiration of the period 
for response to the ``Notice of Missing Parts.''
    Section 1.53(b)(3)(iii), as proposed, would provide that if a 
continued prosecution application is filed by less than all the 
inventors named in the prior application, a statement must accompany 
the application when filed requesting deletion of the names of the 
person or persons who are not inventors of the invention being claimed 
in the continued prosecution application. Where an application is filed 
under Sec. 1.53(b)(3) without a statement requesting deletion of the 
names of any person or persons named in the prior application, the 
application will be treated as naming as inventors the person or 
persons named in the prior application, taking into account any grant 
of a petition correcting inventorship in the prior application pursuant 
to Sec. 1.48. To correct the inventorship in the continued prosecution 
application, the Office will not require a petition pursuant to 
Sec. 1.48 as the application is to be filed without a newly executed 
oath or declaration, but will require only a newly executed oath or 
declaration naming the correct inventorship in the continued

[[Page 49826]]

prosecution application, which is similar to the requirements for 
correction of the inventorship in applications filed under 
Sec. 1.53(b)(1) without a newly executed oath or declaration.
    Section 1.53(b)(3)(iv), as proposed, would require that any new 
change be made in the form of an amendment to the prior application, 
and would provide that any new specification filed with the request for 
an application under Sec. 1.53(b)(3) would not be considered part of 
the original application papers, but would be treated as a substitute 
specification in accordance with Sec. 1.125. In the event that 
legislation mandating the 18-month publication of patent applications 
(e.g., H.R. 1733) is enacted, it will be necessary to amend proposed 
Sec. 1.53(b)(3)(iii) to require a substitute specification in 
compliance with Sec. 1.125 and drawings including only those changes to 
the prior application during the prosecution of the prior application.
    Section 1.53(b)(3)(v), as proposed, would provide that the filing 
of a continued prosecution application 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 application filed under the provisions of 
Sec. 1.53(b)(3) may be given similar access to, or similar information 
concerning, the other application(s) in the file wrapper.
    Section 1.53(b)(3)(vi) (A) through (D), as proposed, would provide 
that the applicant is urged to furnish in the request for an 
application under Sec. 1.53(b)(3) the following information relating to 
the prior application to the best of his or her ability: (A) Title as 
originally filed and as last amended, (B) name of applicant as 
originally filed and as last amended, (C) current correspondence 
address of applicant, and (D) identification of prior foreign 
application and any priority claim under 35 U.S.C. 119.
    Section 1.53(b)(3)(vii), as proposed, would provide that envelopes 
containing only requests and fees for filing an application under 
Sec. 1.53(b)(3) should be marked ``Box CPA.''
    Section 1.53(c), as proposed, would replace its current language 
with three paragraphs treating: (1) Applications found to be improper 
or incomplete, (2) any requests for review of a notification that an 
application has been found to be improper or incomplete, and (3) 
termination of proceedings in an application for failure to timely 
correct a filing error or seek review of a notification that an 
application has been found to be improper or incomplete.
    Section 1.53(c)(1), as proposed, would specifically provide that 
``[i]f any application filed under paragraph (b) of this section is 
found to be incomplete or improper, applicant will be so notified and 
given a time period within which to correct the filing error.''
    Section 1.53(c)(2), as proposed, would specifically provide that 
``[a]ny request for review of a notification pursuant to paragraph 
(c)(1) of this section, or a notification that the original application 
papers lack a portion of the specification or drawing(s), must be by 
way of a petition pursuant to this paragraph,'' ``[a]ny petition under 
this paragraph must be accompanied by the fee set forth in Sec. 1.17(i) 
in an application filed under paragraphs (b)(1) or (b)(3) of this 
section, and the fee set forth in Sec. 1.17(q) in an application filed 
under paragraph (b)(2) of this section,'' and ``[i]n the absence of a 
timely (Sec. 1.181(f)) petition pursuant to this paragraph, the filing 
date of an application in which the applicant was notified of a filing 
error pursuant to paragraph (c)(1) of this section will be the date the 
filing error is corrected.''
    Section 1.53(c)(3), as proposed, would specifically provide that 
``[i]f an applicant is notified of a filing error pursuant to paragraph 
(c)(1) of this section, but fails to correct the filing error within 
the given time period or otherwise timely (Sec. 1.181(f)) take action 
pursuant to paragraph (c)(2) of this section, proceedings in the 
application will be considered terminated'' and ``[w]here proceedings 
in an application are terminated pursuant to this paragraph, the 
application may be returned or otherwise disposed of, and any filing 
fees, less the handling fee set forth in Sec. 1.21(n), will be 
refunded.'' Section 1.53(c)(3), as proposed would not provide that 
proceedings in the application will be considered terminated for 
failure to timely respond to a notification that the original 
application papers lack a portion of the specification or drawing(s). 
Thus, the failure to timely seek review of a notification that the 
original application papers lack a portion of the specification or 
drawing(s) will not result in termination of proceedings in (or 
abandonment of) the application, but will simply result in such portion 
of the specification or drawing(s) not being considered part of the 
original disclosure of the application.
    Section 1.53(d)(1), as proposed, would change ``paragraph (b)(1) of 
this section'' to ``paragraphs (b)(1) or (b)(3) of this section,'' such 
that Sec. 1.53(d)(1) would be applicable to applications filed under 
Secs. 1.53 (b)(1) and (b)(3), where Sec. 1.53(d)(2) would be applicable 
to applications filed under Sec. 1.53(b)(2) (i.e., provisional 
applications). While Sec. 1.53(d)(1) addresses both the filing fee and 
the oath or declaration, the oath or declaration of an application 
under Sec. 1.53(b)(3) will be the oath or declaration of the prior 
complete (Sec. 1.51(a)(1)) application. As such, an oath or declaration 
will not be required under Sec. 1.53(d)(1) for a proper application 
under Sec. 1.53(b)(3).
    Section 1.53(d)(1), as proposed, would be further amended to add 
the phrases ``including a continuation, divisional, or continuation-in-
part application'' and ``pursuant to Secs. 1.63 or 1.175, which may be 
a copy of the executed oath or declaration filed to complete 
(Sec. 1.51(a)(1)) the most immediate prior national application for 
which priority is claimed under 35 U.S.C. 120, 121 or 365(c), or a copy 
of an unexecuted oath or declaration, and a statement that the copy is 
a true copy of the oath or declaration that was subsequently executed 
and filed to complete (Sec. 1.51(a)(1)) the most immediate prior 
national application for which priority is claimed under 35 U.S.C. 120, 
121 or 365(c), in a continuation or divisional application'' for 
clarity and consistency with Sec. 1.53(b)(1). A reference to submission 
of a copy of a Notice to File Missing Parts would be removed.
    Section 1.54(b), as proposed, would add the phrase ``unless the 
application is an application filed under Sec. 1.53(b)(3).'' To 
minimize application processing delays in applications filed under 
Sec. 1.53(b)(3), as proposed, such applications will not be processed 
by the Office of Initial Patent Examination as new applications.
    Section 1.55 paragraph (a) would be amended to remove the 
requirement that the statement be verified in accordance with the 
proposed change to Sec. 1.4(d)(2).
    Section 1.59 would be amended: By revising the title to indicate 
that expungement of information from an application file would come 
under this section, by revising the existing paragraph and designating 
it as paragraph (a)(1), and by adding paragraphs (a)(2), (b) and (c). 
Paragraph (a)(1) would retain the general prohibition on the return of 
information submitted in an application which has a filing date. The 
portion of the paragraph relating to the Office furnishing copies of 
application papers has been shifted to new paragraph (c). Paragraph 
(a)(2) would make explicit that information, forming part of the 
original disclosure, i.e., written

[[Page 49827]]

specification, drawings, claims and any preliminary amendment 
specifically incorporated into an executed oath or declaration under 
Secs. 1.63 and 1.175, will not be expunged from the application file.
    Paragraph (b) of Sec. 1.59 would provide an exception to the 
general prohibition of paragraph (a) on the expungement and return of 
information and would allow for such when it is established to the 
satisfaction of the Commissioner that the requested expungement and 
return is appropriate.
    Paragraph (b) of Sec. 1.59 is intended to cover the current 
practice set forth in MPEP 724.05 where the submitted information has 
initially been identified as trade secret, proprietary, and/or subject 
to a protective order and where applicant may file a petition for its 
expungement and return that will be granted upon a determination by the 
examiner that the information is not material to patentability. Any 
such petition should be submitted in response to an Office action 
closing prosecution so that the examiner can make a determination of 
materiality based on a closed record. Any petition submitted earlier 
than close of prosecution may be returned unacted upon. In the event 
pending legislation for pre-grant publication of applications, which 
provides public access to the application file, is enacted, then the 
timing of petition submissions under this section will be reconsidered. 
A result of the proposed amendment to this section would be to have a 
petition to expunge decided under the instant rule by the examiner who 
determines the materiality of the information to be expunged rather 
than by the Office of Petitions under Sec. 1.182, which prior to 
rendering a decision on the petition consults with the examiner on 
materiality of the information at issue.
    Paragraph (b) of Sec. 1.59 is also intended to cover information 
that was unintentionally submitted in an application, provided that: 
(i) The Office can effect such return prior to the issuance of any 
patent on the application in issue, (ii) that it is stated that the 
information submitted was unintentionally submitted and the failure to 
obtain its return would cause irreparable harm to the party who 
submitted the information or to the party in interest on whose behalf 
the information was submitted, (iii) the information has not otherwise 
been made public, (iv) there is a commitment on the part of the 
petitioner to retain such information for the period of any patent with 
regard to which such information is submitted, and (v) it is 
established to the satisfaction of the Commissioner that the 
information to be returned is not material information under Sec. 1.56. 
Requests to return information that have not been clearly identified as 
information that may be later subject to such request by marking and 
placement in a separate sealed envelope or container shall be treated 
on a case-by-case basis. It should be noted that the Office intends to 
start electronic scanning of all papers filed in an application, and 
the practicality of expungement from the electronic file created by a 
scanning procedure is not as yet determinable. Applicants should also 
note that unidentified information that is a trade secret, proprietary, 
or subject to a protective order that is submitted in an Information 
Disclosure Statement may inadvertently be placed in an Office prior art 
search file by the examiner due to the lack of such identification and 
may not be retrievable.
    Paragraph (b) of Sec. 1.59 is also intended to cover the situation 
where an unintended heading has been placed on papers so that they are 
present in an incorrect application file. In such situation, a petition 
should request return of the papers rather than transfer of the papers 
to the correct application file. The grant of such a petition will be 
governed by the factors enumerated above in regard to the unintentional 
submission of information. Where the Office can determine the correct 
application file that the papers were actually intended for, based on 
identifying information in the heading of the papers, e.g., Application 
number, filing date, title of invention and inventor(s) name(s), the 
Office will transfer the papers to the correct application file for 
which they were intended without need of a petition.
    Added paragraph (c) of Sec. 1.59 retains the practice that copies 
of application papers will be furnished by the Office upon request and 
payment of the cost for supplying such copies.
    Section 1.60 is proposed to be removed and reserved.
    In the notice of proposed rulemaking entitled ``Changes to 
Implement 20-Year Patent Term and Provisional Application'' (20-Year 
Term Notice of Proposed Rulemaking) published in the Federal Register 
at 59 FR 63951 (December 12, 1994), and in the Patent and Trademark 
Office Official Gazette at 1170 Off. Gaz. Pat. Office 377 (January 3, 
1995), Sec. 1.60 was proposed to be removed due to the rule change to 
Sec. 1.4(d), which permits the filing of a copy of an oath or 
declaration. The proposed removal of Sec. 1.60 in the 20-Year Term 
Notice of Proposed Rulemaking, however, was withdrawn in the final rule 
to permit further study.
    A continuation or divisional application may be filed under 35 
U.S.C. 111(a) using the procedures set forth in Sec. 1.53, by providing 
a copy of the prior application, including a copy of the oath or 
declaration in such prior application, as filed. The patent statutes 
and rules of practice do not require that an oath or declaration 
include a recent date of execution, and the Examining Corps has been 
directed not to object to an oath or declaration as lacking either a 
recent date of execution or any date of execution. This change in 
examining practice will appear in the next revision of the MPEP. As 
discussed supra, the applicant's duty of candor and good faith 
including compliance with the duty of disclosure requirements of 
Sec. 1.56 is continuous and applies to the continuing application.
    Sections 1.60(b)(4) and 1.62(a) currently permit the filing of a 
continuation or divisional application by all or by less than all of 
the inventors named in a prior application without a newly executed 
oath or declaration. To continue this practice, Sec. 1.53 is proposed 
to be amended to provide that any continuation or divisional 
application may be filed by all or by less than all of the inventors 
named in a prior application, but where a newly executed oath or 
declaration is not submitted for a continuation or divisional 
application filed by less than all the inventors named in the prior 
application, the copy of the oath or declaration for the most immediate 
prior national application for which priority is claimed under 35 
U.S.C. 120, 121 or 365(c) must be accompanied by a statement requesting 
the deletion of the names of the person or persons who are not 
inventors in the continuation or divisional application. A newly 
executed oath or declaration will continue to be required in a 
continuation or divisional application naming an inventor not named in 
the prior application, or a continuation-in-part application.
    Section 1.60 is now unnecessary due to: (1) The rule change to 
Sec. 1.4(d), (2) the proposed addition of Sec. 1.53(b)(1)(i) to 
expressly permit the filing of either a newly executed oath or 
declaration, or a copy of the executed oath or declaration filed to 
complete pursuant to Sec. 1.51(a)(1) the most immediate prior national 
application for which priority is claimed under 35 U.S.C. 120, 121 or 
365(c), in a continuation or divisional application, (3) the proposed 
addition of Sec. 1.53(b)(1)(i) to permit the filing of a continuation 
or divisional application by all or by less than all the inventors

[[Page 49828]]

named in a prior application, using a copy of the executed oath or 
declaration filed to complete the prior application, and (4) the 
proposed addition of Sec. 1.53(b)(3) to permit the filing of a 
continued prosecution application.
    A new application containing a copy of an oath or declaration under 
Sec. 1.63 referring to an attached specification is indistinguishable 
from a continuation or divisional application containing a copy of an 
oath or declaration from a prior application submitted pursuant to 
Sec. 1.53(b)(1)(i), as proposed. Unless an application is submitted 
with a statement that the application is a continuation or divisional 
application (Sec. 1.78(a)(2)), the Office will process such a new 
application without requiring a new oath or declaration. Applicants are 
advised to clearly designate any continuation or divisional application 
as such to avoid the issuance of a filing receipt that does not 
indicate that the application is a continuation or division.
    Section 1.62 is proposed to be removed and reserved.
    In the proposed rulemaking entitled ``Changes to Implement 18-Month 
Publication of Patent Applications'' (18-Month Publication 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 at 1177 Off. Gaz. Pat. Office 61 (August 15, 1995), 
Sec. 1.62(e) was proposed to be amended to require a substitute 
specification in compliance with Sec. 1.125 and drawings where the 
application filed under Sec. 1.62 is a continuation-in-part 
application. The 18-Month Publication Notice of Proposed Rulemaking 
proposed to digital image and/or optical character recognition (OCR) 
scan application material into an electronic data base, which data base 
would be used to publish the application (e.g., for producing copies of 
the technical contents of the application-as-filed). The 18-Month 
Publication Notice of Proposed Rulemaking indicated that as 
applications filed prior to the implementation of 18-month publication 
will not have been image- or OCR-scanned into the electronic data base, 
the technical contents of an application filed under Sec. 1.62 in which 
the prior application was itself filed prior to the implementation of 
18-month publication will not be contained in the electronic data base.
    The solution proposed in the 18-Month Publication Notice of 
Proposed Rulemaking was for the Office to obtain the microfiche copy of 
the prior application for applications under Sec. 1.62 which do not add 
additional disclosure (i.e., continuation or divisional applications) 
and image or OCR scan it into the electronic data base, and to amend 
Sec. 1.62 to provide that, where the application adds additional 
disclosure (i.e., is a continuation-in-part application), a substitute 
specification in compliance with Sec. 1.125 and drawings will be 
required.
    The proposal in the 18-Month Publication Notice of Proposed 
Rulemaking to obtain the microfiche copy of prior continuation or 
divisional applications is now considered unfeasible. A number of 
applications filed under Sec. 1.62 derive from a chain of applications 
filed under Sec. 1.62. The information pertaining to such an 
application's chain of prior applications contained within the Patent 
Application Location and Monitoring (PALM) system is not sufficiently 
comprehensive to readily and reliably indicate the prior application 
that contains a specification and drawings, and is not sufficiently 
reliable to avoid the occasional inclusion of an unrelated application 
in the chain of prior applications. This could result in the 
inadvertent publication of the specification and drawings of the wrong 
application.
    In addition, the microfiche copy of the prior application may be a 
microfiche of sheets of specification and/or drawings on 8\1/2\ by 14-
inch paper, which paper size is not technically useable by the 
equipment which will be employed for pre-grant publication of patent 
applications. Attempts to reduce such sheets of specification and/or 
drawings to a paper size processible by pre-grant publication equipment 
results in electronic files which contain illegible text and figures. 
Moreover, the microfilming process under pre-grant publication differs 
from the previous microfilming process, and as such, the microfiche 
copy of such a prior application is sufficiently dissimilar from the 
microfiche copy of an application under pre-grant publication that it 
causes accurate technical date capture difficulties.
    In the event that legislation mandating the 18-month publication of 
patent application is enacted, it will be necessary to require a 
substitute specification in compliance with Sec. 1.125 and drawings 
including any changes to the prior application during the prosecution 
of the prior application or pursuant to Sec. 1.62(e) to continue 
Sec. 1.62 practice.
    Section 1.62 is now unnecessary due to: (1) The rule change to 
Sec. 1.4(d), (2) the proposed change to Sec. 1.53(b)(1) to expressly 
permit the filing of either a newly executed oath or declaration, or a 
copy of the executed oath or declaration filed to complete pursuant to 
Sec. 1.51(a)(1) the most immediate prior national application for which 
priority is claimed under 35 U.S.C. 120, 121 or 365(c), in a 
continuation or divisional application, (3) the proposed change to 
Sec. 1.53(b)(1) to permit the filing of a continuation or divisional 
application by all or by less than all the inventors named in a prior 
application, using a copy of the executed oath or declaration filed to 
complete the prior application, and (4) the proposed addition of 
Sec. 1.53(b)(3) to permit the filing of a continued prosecution 
application.
    The Office currently receives a number of petitions requesting that 
an application filed under Secs. 1.60 and 1.62 be accepted even though 
at the time of filing of the application, the application did not 
comply with all the requirements of Secs. 1.60 or 1.62 due to 
inadvertent error on the part of the applicant. The examination of 
these improper applications under Secs. 1.60 and 1.62 is delayed until 
a petition to accept the application is filed and granted. The large 
majority of the applications filed under Sec. 1.60, however, complied 
at the time of filing with the requirements of Sec. 1.53(b)(1), and the 
copy of the oath or declaration from the prior application is now 
acceptable as the oath or declaration for the application, regardless 
of whether the application is an application under Sec. 1.53 or 
Sec. 1.60. The removal of Sec. 1.60 and simplification of Sec. 1.62 
will reduce the number of these types of petitions and will simplify 
the procedures for filing an application for both the Office and patent 
practitioners.
    It is anticipated that, subsequent to the removal of Secs. 1.60 and 
1.62, applications purporting to be applications filed under Secs. 1.60 
or 1.62 will be filed until the deletion of Secs. 1.60 and 1.62 become 
well known among patent practitioners. Applications purporting to be an 
application filed under Sec. 1.60 will simply be treated as a new 
application filed under Sec. 1.53 (i.e., the reference to Sec. 1.60 
will simply be ignored).
    Applications purporting to be an application filed under Sec. 1.62 
will be treated as continued prosecution applications under 
Sec. 1.53(b)(3), and those applications that do not meet the 
requirements of Sec. 1.53(b)(3) (e.g., continuation-in-part 
applications or continuations or divisional of applications filed 
before June 8, 1995) will be treated as improper continued prosecution 
applications under Sec. 1.53(b)(3). Such improper applications under 
Sec. 1.53(b)(3) may be corrected by

[[Page 49829]]

way of petition under Sec. 1.53(b)(c) (and $130 fee pursuant to 
Sec. 1.17(i)).
    Such a Sec. 1.53(c) petition in a continuation or divisional 
application will be granted on the condition that the applicant file: 
(1) The $130 petition fee, and (2) a true copy of the complete 
application designated as the prior application in the purported 
Sec. 1.62 application papers as filed, or, if the prior application was 
an application filed under Sec. 1.62, a true copy of its most immediate 
parent application which contained a specification and drawings as 
filed. Such a Sec. 1.53(c) petition in a continuation-in-part 
application will be granted on condition that the applicant file: (1) 
The $130 petition fee, and (2) a true copy of the complete application 
designated as the prior application in the purported Sec. 1.62 
application papers as filed, or, if the prior application was an 
application filed under Sec. 1.62, a true copy of its most immediate 
parent application which contained a specification and drawings as 
filed, and any amendments submitted during the prosecution of the prior 
application.
    Section 1.63(a)(3) is proposed to be amended by requiring the post 
office address to appear in the oath or declaration and having the 
requirement from Sec. 1.41(a) for the full names of the inventors 
placed therein.
    Section 1.69, paragraph (b), would be amended to remove the 
requirement that the translation be verified in accordance with the 
proposed change to Sec. 1.4(d)(2). Paragraph (b) of this section is 
also being amended to clarify the need for a statement that the 
translation being offered is an accurate translation, as is proposed 
for Sec. 1.52, paragraph (a) and (d).
    Section 1.78(a)(1)(ii), as proposed, would remove the references to 
Secs. 1.60 and 62 in view of the proposed deletion of Secs. 1.60 and 
62.
    Section 1.84, paragraph (b), is proposed to be amended by removing 
references to the filing of black and white photographs in design 
applications as unnecessary in view of the reference in Sec. 1.152 to 
Sec. 1.84(b).
    Section 1.91 is proposed to be amended for clarification purposes 
by additionally reciting ``Exhibits'' as well as models. The section is 
proposed to be amended to state that a model, working model or other 
physical exhibit may be required by the Office if deemed necessary for 
any purpose in examination of the application. This language is moved 
from Sec. 1.92.
    Section 1.92 is proposed to be removed and reserved and the 
language, as stated above, transferred to Sec. 1.91 for improved 
contextual purposes.
    Section 1.97 (c) through (e) are proposed to be amended by 
replacement of ``certification'' by ``statement,'' see comments 
relating to Sec. 1.4(d), and by clarifying the current use of 
``statement'' by the terms ``information disclosure.'' Section 
1.97(e)(2) is further amended to replace ``or'' by ``and'' to require 
that: No item of information contained in the information disclosure 
statement was cited in a communication from a foreign patent office in 
a counterpart foreign application and that no item of information 
contained in the information disclosure statement to the knowledge of 
the person signing the statement, after making reasonable inquiry, was 
known to any individual designated in Sec. 1.56(c) more than three 
months prior to the filing of the information disclosure statement. The 
use of ``and'' rather than ``or'' is in keeping with the intent of the 
rule as expressed in the MPEP 609, page 600-91, that the conjunction be 
conjunctive rather than disjunctive. The mere absence of an item of 
information from a foreign patent office communication was clearly not 
intended to represent an opportunity to delay the submission of the 
item when known more than three months prior to the filing of an 
information disclosure statement to an individual having a duty of 
disclosure under Sec. 1.56.
    Section 1.101 is proposed to be removed and reserved as relating to 
internal Office instructions.
    Section 1.102, paragraph (a), would be amended to remove the 
requirement that the showing be verified in accordance with the 
proposed change to Sec. 1.4(d)(2).
    Section 1.103, paragraph (a), would be amended by replacement of 
``response'' with ``reply'' in accordance with the proposed change to 
Sec. 1.111.
    Section 1.104 is proposed to be removed and reserved as relating to 
internal Office instructions (the material of paragraph (c) would be 
present in the MPEP).
    Section 1.105 is proposed to be removed and reserved as relating to 
internal Office instructions.
    Section 1.108 is proposed to be removed and reserved as relating to 
internal Office instructions.
    Section 1.111(b) is proposed to be amended to explicitly recognize 
that a reply must be reduced to a writing which must point out the 
specific distinctions believed to render the claims, including any 
newly presented claims, patentable. It is noted that an examiner's 
amendment reducing a telephone interview to writing would comply with 
Sec. 1.2.
    In Sec. 1.112 it is proposed to remove as being unnecessary the 
statement that ``any amendments after a second Office action must 
ordinarily be restricted to the rejection, objections or requirements 
made in the office action'' to reflect actual practice wherein an 
unrestricted right of entry exists prior to a final rejection and that 
an application or patent under reexamination be considered repeatedly 
unless a final action is rendered. It is proposed to amend the section 
for clarification purposes by addition of a reference to 
reconsideration ``before final action.''
    Section 1.113(a), as proposed, would add ``by the examiner'' after 
``examination or consideration,'' change ``objections to form'' to 
``objections as to form'' for clarity, and would replace ``response'' 
with ``reply'' in accordance with the proposed change to Sec. 1.111.
    Section 1.113(b), as proposed, would change ``clearly stating the 
reasons therefor'' to ``clearly stating the reasons in support 
thereof'' for clarity.
    A new Sec. 1.113(c) would be added to provide that the first action 
in an application will not be made final. See comments to Secs. 1.116 
and 1.191.
    Section 1.115 is proposed to be replaced by new Sec. 1.115 that 
would contain material to be deleted from Secs. 1.117 through 1.119, 
1.123 and 1.124. No change in substance is contemplated with the 
material of deleted sections being rearranged and edited for clarity 
and contextual purposes in the new section. The reference to 
``application'' is intended to include reissue applications.
    Section 1.116(a), as proposed, would limit amendments after a final 
rejection or other final action (Sec. 1.113) to those amendments 
cancelling claims or complying with any requirement of form set forth 
in a previous Office action, and would replace the phrase ``any 
proceedings relative thereto'' with ``any related proceedings'' for 
clarity.
    Section 1.116(b), as proposed, would provide that any amendment not 
in compliance with Sec. 1.116(a) must be submitted with a request for 
an application under Sec. 1.53(b)(3) to ensure consideration of the 
amendment.
    Under Sec. 1.116, as proposed, amendments after final rejection or 
other final action would be limited to cancelling claims or complying 
with any requirement of form expressly set forth in a previous Office 
action. Currently, amendments after final which concern the merits of 
an application may, upon a showing of good and sufficient reasons why 
they are necessary and were not earlier presented, be entered and 
amendments after final which present rejected claims

[[Page 49830]]

in better form for consideration on appeal may be entered. This 
procedure causes delays in the ultimate issuance of the application as 
a patent, since applicants will await a ruling on whether such 
amendment will be entered prior to deciding whether to obtain the entry 
of such amendment through the filing of a continuing application. In 
addition, the expedited handling of numerous amendments after final, 
and the expedited consideration of whether there is an adequate showing 
of good and sufficient reasons why an amendment after final concerning 
the merits of an application is necessary and not earlier presented, or 
whether an amendment after final presents rejected claims in better 
form for consideration on appeal, places a significant burden on Office 
resources.
    Section 1.113(c), as proposed, would eliminate first action final 
practice, and, as such, would eliminate the necessity to submit an 
amendment after final simply to avoid a first action final in a 
continuing application. In view of this safeguard, and the delay and 
burden of the current practice for the treatment of amendments after 
final, Sec. 1.116 is proposed to be amended to limit those amendments 
that may be presented as a matter of right after a final rejection or 
other final action. Put simply, the proposed elimination of first 
action final practice by the Office is the quid pro quo for the 
proposed strict limitation of after final practice. Persons submitting 
comments objecting to this proposed limitation of after final practice 
should frame such comments in the context that the proposed elimination 
of first action final practice by the Office is coupled to the proposed 
limitation of after final practice.
    Section 1.116, as proposed, would not affect the authority of an 
examiner to enter in an application under final an amendment that 
places the application in condition for allowance, but does not 
strictly meet the requirements of Sec. 1.116(a). That is, in instances 
in which the applicant and examiner agree on an amendment that would 
place the application in condition for allowance, the examiner would 
retain the authority to enter the amendment, notwithstanding the 
requirements of Sec. 1.116(a). Where, however, the applicant and the 
examiner do not agree on whether an amendment would place an 
application in condition for allowance, and the amendment does not meet 
the requirements of Sec. 1.116(a), the applicant could not require the 
examiner to consider the amendment as a matter of right.
    Section 1.117 is proposed to be removed and reserved as the subject 
matter was transferred to proposed Sec. 1.115.
    Section 1.118 is proposed to be removed and reserved and its 
subject matter transferred to proposed Sec. 1.115.
    Section 1.119 is proposed to be removed and reserved and its 
subject matter transferred to proposed Sec. 1.115.
    Section 1.121 paragraphs (a) through (f) are proposed to be 
replaced with paragraphs (a) through (c), which separately treat 
amendments in non-reissue applications (paragraph (a)), amendments in 
reissue applications (paragraph (b)) and amendments in reexamination 
proceedings (paragraph (c)). Paragraphs (a) and (b) each separately 
treat amendment of the specification (paragraphs (a)(1) and (b)(1)) and 
of the claims (paragraphs (a)(2) and (b)(2)). In comparing amendment 
practice to the specificat'ion for non-reissue and reissue 
applications: When making an amendment to the specification of a non-
reissue application a copy of all previous amendments would not be 
required, whereas for reissue applications a copy of all previous 
amendments to the patent specification would be required. In comparing 
amendment practice to the claims for non-reissue and reissue 
applications: When making an amendment to the claims of a non-reissue 
application or when new claims are added, a copy of all pending claims, 
including original claims that have never been amended, would be 
required, whereas for reissue applications a copy of only claims that 
are being amended or added would be required.
    Paragraph (a) of Sec. 1.121 would relate to amendments in non-
reissue applications and retains a reference to Sec. 1.52. Paragraph 
(a)(1) would relate to the manner of making amendments in the 
specification other than in the claims. Paragraph (a)(1)(i) would 
require the precise point to be indicated where an amendment is made. 
Paragraph (a)(1)(ii) would allow amendments that are deletions only to 
be done by a direction to cancel rather than presenting the 
sentence(s), paragraph(s) and/or page(s) with brackets. This should be 
compared to cancellation of material from the patent specification in a 
reissue application (paragraph (b)((1)((ii)) or in a reexamination 
proceedings (Sec. 1.530(d)(1)(ii)--by way of a copy of the rewritten 
material). Paragraph (a)(1)(iii) would require all other amendments, 
such as additions or deletions mixed with additions, to be made by 
submission of a copy of the rewritten sentence(s), paragraph(s) and/or 
page(s) to permit the examiner to more readily recognize the changes 
that are being made. Current practice does not require the marking of 
an amendment to the specification in non-reissue applications. A change 
in one sentence, paragraph or page that results in only format changes 
to other pages not being amended are not to be submitted. Paragraph 
(a)(1)(iv) would identify the type of markings required by paragraph 
(a)(1)(iii), single underlining for added material and single brackets 
for material deleted. The marking would also be required to be applied 
in reference to the material as previously rewritten and not as 
originally presented if that differed from the previous presentation.
    Paragraph (a)(2) of Sec. 1.121 would relate to the manner of making 
amendments in the claims of a non-reissue application. Paragraph 
(a)(2)(i)(A) would permit cancellation of a claim by a direction to do 
so or by simply omitting a copy of the claim when a complete copy of 
all pending claims are presented pursuant to paragraph (a)(2)(ii) of 
this section. Paragraph (a)(2)(i)(B) would permit amendment of a 
previously submitted claim, other than mere cancellation by submission 
of a copy of the claim completely rewritten with markings pursuant to 
paragraph (a)(2)(iii) of this section rather than continuing to permit 
requests that the Office hand-enter changes of five or less words, 
Sec. 1.121(c)(2). Such rewriting would be construed as a direction that 
the rewritten claim be a replacement for the previously submitted 
claim. Paragraph (a)(2)(i)(C) sets forth that a new claim may only be 
added by the submission of a clean copy of the new claim.
    Paragraph (a)(2)(ii) of Sec. 1.121 would require that when a 
previously submitted claim is amended, or when a new claim is added, 
applicant must submit a separate copy of all pending claims to include 
all newly rewritten claims, all newly added claims, all previously 
rewritten claims that are still pending and any unamended claims that 
are still pending. This would enable the examiner to more quickly 
identify the claims that must be reviewed for the next Office action 
and would enable the printer to have a current version of the allowed 
claims for printing should the application be allowed. Compare with 
amendment of claims in reissue applications wherein only a copy of an 
amended patent claim or added claim is required, paragraph (b)(2)(i)(A) 
of this section, but not of previous claims (patent and added claims) 
that are not currently being amended. Current practice does not require 
a complete copy of all pending claims but only those claims being 
amended or added.

[[Page 49831]]

    Paragraph (a)(2)(iii) of Sec. 1.121 would identify the type of 
marking required by paragraph (a)(2)(i)(B), single underlining for 
added material and single brackets for material deleted.
    Paragraph (a)(2)(iv) of Sec. 1.121 would provide that the failure 
to submit a copy of any previously submitted claim would be construed 
as a direction to cancel that claim.
    Paragraph (a)(3) of Sec. 1.121 would clarify that amendments to the 
original application drawings for non-reissue applications are not 
permitted and are to be made by way of a substitute sheet for each 
original drawing sheet that is to be amended.
    Paragraph (a)(4) of Sec. 1.121 would require that any amendment 
presented in a substitute specification must be presented under the 
provision of this section either prior to or concurrent with the 
submission of the substitute specification.
    Paragraph (b) of Sec. 1.121 would apply to amendments in reissue 
applications. Paragraph (b)(1) of Sec. 1.121 would relate to the manner 
of making amendments to the specification other than in the claims in 
reissue applications. Paragraph (b)(1)(i) would require the precise 
point to be indicated where an amendment is made. Paragraph (b)(1)(ii) 
would require that all amendments including deletions be made by 
submission of a copy of the rewritten paragraph(s) with markings. A 
change in one sentence, paragraph or page that results in only format 
changes to other pages not being amended are not to be submitted. 
Compare to amendments to the specification other than in the claims of 
non-reissue applications wherein deletions are permitted, paragraph 
(a)(1)(ii) of this section. Paragraph (b)(1)(iii) sets forth that each 
amendment to the specification must include all amendments to the 
specification relative to the patent as of the date of the submission. 
Compare to amendments to the specification other than claims in 
nonreissue applications wherein previous amendments to the 
specification are not required to accompany the current amendment to 
the specification, paragraph (a)(1)(iii). Paragraph (b)(1)(iv) would 
define the marking set forth in paragraph (b)(1)(ii) of section.
    Paragraph (b)(2) of Sec. 1.121 would relate to the manner of making 
amendments to the claims in reissue applications. Paragraph 
(b)(2)(i)(A) of Sec. 1.121 would require the entire text of each patent 
claim that is being amended and of each added claim rather than 
continuing to permit requests that the Office hand-enter changes of 
five or less words, Sec. 1.121(c)(2), but not of all pending claims, 
such as patent claims that have not been amended. Compare paragraph 
(a)(2)((ii). Additionally, provision would be made for the cancellation 
of a patent claim by a direction to cancel without the need for marking 
by brackets. Paragraph (b)(2)(i)(B) would require that patent claims 
not be renumbered. Paragraph (b)(2)(i)(C) would identify the type of 
marking required by paragraph (b)(2)(i)(A), single underlining for 
added material and single brackets for material deleted.
    Paragraph (b)(2)(ii) of Sec. 1.121 would require that each 
amendment submission set forth the status of all patent claims and all 
added claims as of the date of the submission, as not all claims (non-
amended claims) are to be presented with each submission, paragraph 
(b)(2)(iv). The absence of submission of the claim status would result 
in an incomplete response, 35 U.S.C. 135.
    Paragraph (b)(2)(iii) of Sec. 1.121 would require that each claim 
amendment be accompanied by an explanation of the support in the 
disclosure of the patent for the amendment. The absence of an 
explanation would result in an incomplete response, 35 U.S.C. 135.
    Paragraph (b)(2)(iv) of Sec. 1.121 would require that each 
submission of an amendment to any claim (patent claim or added claim) 
requires copies of all amendments to the claims as of the date of the 
submission. A copy of a previous amendment would not meet the 
requirement of this section in that all amendments must be represented, 
as only the last amendment will be used for printing.
    Paragraph (b)(2)(v) of Sec. 1.121 would provide that the failure to 
submit a copy of any added claim would be construed as a direction to 
cancel that claim.
    Paragraph (b)(2)(vi) of Sec. 1.121 would clarify that: (1) No 
reissue patent would be granted enlarging the scope of the claims 
unless applied for within two years from the grant of the original 
patent (additional broadening outside the two-year limit is appropriate 
as long as some broadening occurred within the two-year period), and 
(2) no amendment may introduce new matter or be made in an expired 
patent.
    Paragraph (b)(3) of Sec. 1.121 clarify that amendments to the 
patent drawings are not permitted and that any change must be by way of 
a new sheet of drawings with the amended figures being identified as 
``amended'' and with added figures identified as ``new'' for each sheet 
that has changed.
    Paragraph (c) of Sec. 1.121 would clarify that amendments in 
reexamination proceedings are to be made in accordance with Sec. 1.530.
    Section 1.121 as applied both to non-reissue and reissue 
applications does not provide for replacement pages whereby a new page 
would be physically substituted for a currently existing page. However, 
an applicant can direct that Page ______ be cancelled and the following 
inserted in its place. The wide availability of word processing should 
enable applicants to more easily submit updated material providing 
greater accuracy and thereby eliminating the need for the Office to 
hand-enter amendments. To that end, Sec. 1.125 is proposed to be 
amended to provide that a substitute specification may be submitted at 
any point up to payment of the issue fee as a matter of right.
    The proposed changes to Sec. 1.121 relate in part to the method of 
presenting amendments in reissue and reexamination proceedings, that 
would more closely parallel each other. The Office seeks guidance on 
the usefulness of bringing reissue and reexamination proceedings in 
closer harmony. Currently, both practitioners and Office personnel must 
retain a working knowledge of these infrequently used but vital avenues 
for review of an issued patent. The Office has identified the following 
areas for possible harmonization and would like comments as to the 
appropriateness of these areas, identification of other suitable areas 
for consideration and specific means to achieve harmonization in the 
identified areas, e.g., whether a concept or practice in one area 
should be applied to the other area or a new practice for both should 
be started:

--Procedures for amending claims and the specification, Sec. 1.121
--To utilize a reissue certificate (similar to a reexamination 
certificate) attached to a copy of the original patent as the reissued 
patent. This procedure would eliminate the need to reprint the entire 
reissued patent.
--Whether the special dispatch provisions of re-examination should be 
applied to reissue applications.

    Section 1.122 is proposed to be removed and reserved as 
representing internal Office instruction.
    Section 1.123 is proposed to be removed and reserved and its 
subject matter transferred to proposed Sec. 1.115 for better context.
    Section 1.124 is proposed to be removed and reserved and its 
subject matter transferred to proposed Sec. 1.115 for better context.
    Section 1.125 is proposed to be amended by addition of paragraphs 
(a)

[[Page 49832]]

through (d). Paragraph (a) would retain the current practice that a 
substitute specification may be required by the examiner and would be 
clarified to note that if the legibility of the application papers 
shall render it difficult to consider the case, the Office may require 
a substitute specification.
    Paragraph (b) of Sec. 1.125 would provide for the right of filing a 
substitute specification in an application other than a reissue 
application, at any point up to payment of the issue fee, if it is 
accompanied by a statement that the substitute specification includes 
no new matter and does not introduce any amendments unless they have 
been submitted in accordance with the requirements of Sec. 1.121(a) 
either prior to or concurrent with the submission of the substitute 
specification. In view of the proposed continued prosecution 
application under Sec. 1.53(b)(3) and the need to submit sentence, 
paragraph, and/or page changes under Sec. 1.121(a), liberalization of 
the substitute specification requirements is desirable. The requirement 
for a lack of new matter statement being verified would be deleted. See 
comments to Sec. 1.4(d).
    Paragraph (c) of Sec. 1.125 would clarify that a substitute 
specification is to be submitted without markings as to amended 
material.
    Paragraph (d) of Sec. 1.125 would not permit a substitute 
specification in reissue or reexamination proceedings as markings for 
changes from the patent are required therein.
    Section 1.133, paragraph (b), would be amended by replacement of 
``response'' with ``reply'' in accordance with the proposed change to 
Sec. 1.111.
    Section 1.134 would be amended by replacement of ``response'' with 
``reply'' in accordance with the proposed change to Sec. 1.111.
    Section 1.135, paragraphs (a) and (c), would be amended by 
replacement of ``response'' with ``reply'' in accordance with the 
proposed change to Sec. 1.111. Paragraph (b) is proposed to be amended 
to clarify that the admission of or refusal to admit any amendment 
after final rejection, and not just an amendment not responsive to the 
last Office action, shall not operate to save the application from 
abandonment.
    Section 1.135, paragraph (c), is proposed to be amended to provide 
that a new ``time period'' under Sec. 1.134 may be given if a reply to 
a non-final Office action is substantially complete but consideration 
of some matter or compliance with some requirement has been 
inadvertently omitted. This would replace the current practice whereby 
applicant may be given an opportunity to supply the omission through 
the setting of a ``time limit'' of one month that is not currently 
extendable. Generally, a new one month shortened statutory time period 
would be utilized enabling an applicant to petition for extensions of 
time under Sec. 1.136(a). Where 35 U.S.C. 133 requires a period longer 
than one month, i.e., actions mailed in the month of February, a 
shortened statutory period of 30 days will be set. The setting of a 
time period for reply under Sec. 1.134 rather than a time limit would 
result in the date of abandonment (when no further reply is filed) 
being the expiration of the new time period rather than, at present, 
the date of expiration of the period of reply set in the original 
Office action for which an incomplete reply was filed. Thus, the 
proposed amendment to paragraph (c) of Sec. 1.135 would permit the 
refiling of a continuing application as an alternative to completing 
the reply, whereas the current rule only permits an applicant to 
complete the reply that was held to be incomplete.
    Section 1.135, paragraph (c), is also proposed to be amended to 
remove an unnecessary reference to consideration of the question of 
abandonment and to clarify that the reply for which applicant may be 
given a new time period to reply to must be a ``non-final'' Office 
action.
    Section 1.136, paragraph (a)(1), is proposed to be amended to 
recite the availability of a maximum of five (5) rather than four (4) 
months as an extension of time when only a one (1) month or 30 day 
shortened statutory period or a non-statutory period for reply is set. 
Paragraph (a)(1) is would also be amended by replacement of ``respond'' 
with ``reply'' in accordance with the proposed change to Sec. 1.111.
    Section 1.136, paragraph (a)(2), would be amended by replacement of 
``respond'' with ``reply'' in accordance with the proposed change to 
Sec. 1.111 and other clarification changes.
    Section 1.136 is proposed to be amended by addition of paragraph 
(a)(3) that would now provide for the filing in an application a 
general authorization to treat any reply requiring a petition for an 
extension of time for its timely submission as containing a request 
therefor for the appropriate length of time. The authorization may be 
filed at any time prior to or with the submission of a reply that would 
require an extension of time for its timely submission, including 
submission with the application papers. Currently, the mere presence of 
a general authorization, submitted prior to or with a reply requiring 
an extension of time, to charge all required fees does not amount to a 
petition for an extension of time for that reply (MPEP 201.06 and 
714.17) and under the proposed amended rule the submission of a reply 
requiring an extension of time for its timely submission would not be 
treated as an inherent petition for an extension of time absent an 
authorization for all necessary extensions of time. The Office will 
continue to treat all petitions for an extension of time as requesting 
the appropriate extension period notwithstanding an inadvertent 
reference to a shorter period for extension and will liberally 
interpret comparable papers as petitions for an extension of time. 
Applicants are advised to file general authorizations for payment of 
fees and petitions for extensions of times as separate papers rather 
than as sentences buried in papers directed to other matters (such as 
an application transmittal letter). The use of individual papers 
directed only to an extension of time or to a general authorization for 
payment of fees would permit the Office to more readily identify the 
presence of such items and list them individually on the application 
file jacket thereby providing ready future identification of these 
authorizations.
    Clarifying language is proposed for Sec. 1.136(a)(3) to reflect 
current practice that general authorizations to charge fees are 
effective to meet the requirement for the extension of time fee for 
responses filed concurrent or subsequent to the authorization. However, 
a general authorization to charge additional fees does not represent a 
petition for an extension of time, which petition must be separately 
requested.
    Section 1.137 is proposed to be amended by moving language 
presently codified, elsewhere to, inter alia, incorporate revival of 
abandoned applications and lapsed patents for the failure: (1) To 
timely reply to an Office requirement in a provisional application 
(Sec. 1.139), (2) to timely pay the issue fee for a design application 
(Sec. 1.155 paragraphs (b)-(f)), (3) to timely pay the issue fee for a 
utility or plant application (Sec. 1.316 paragraphs (b)-(f)), or to 
timely pay the full amount of the issue fee (Sec. 1.317 paragraphs (b)-
(f)) (lapsed patents). Cites in parentheses reference where subject 
matter is contained in current rules.
    Section 1.137(a), as proposed, would further move into paragraph 
(a)(3) the requirement that a petition thereunder be ``promptly filed 
after the applicant is notified of, or otherwise becomes aware of, the 
abandonment.'' 35 U.S.C. 133 requires that ``it be shown * * * that 
such delay was unavoidable.'' This

[[Page 49833]]

requirement is regarded as requiring not only a showing that the delay 
which resulted in the abandonment of the application was unavoidable, 
but also a showing of unavoidable delay from the time an applicant 
becomes aware of the abandonment of the application until the filing of 
a petition to revive. See In re Application of Takao 17 USPQ2d 1155 
(Comm'r Pat. 1990). The burden of continuing the process of presenting 
a grantable petition in a timely manner likewise remains with the 
applicant until the applicant is informed that the petition is granted. 
Id. An applicant seeking to revive an ``unavoidably'' abandoned 
application is expected to cause a petition under Sec. 1.137(a) to be 
filed without delay (i.e., promptly upon becoming notified, or 
otherwise becoming aware, of the abandonment of the application). As 
such, the placement of the requirement that a petition pursuant to 
Sec. 1.137(a) be filed promptly upon becoming notified, or otherwise 
becoming aware, of the abandonment of the application is appropriately 
located in paragraph (a)(3), since Sec. 1.137(a)(3) includes the 
requirement for a showing of unavoidable delay.
    The requirement that an applicant seeking to revive an application 
as ``unavoidably'' abandoned ``promptly'' file a petition under 
Sec. 1.137 is regarded as a requirement that a petition pursuant to 
Sec. 1.137(a) be filed without delay upon the applicant or his or her 
representative being notified of, or otherwise becoming aware of, the 
abandonment. Thus, under the current and proposed practice, the failure 
to file a petition under Sec. 1.137(a) within three months of the date 
the applicant or his or her representative is notified of, or otherwise 
becomes aware of, the abandonment would generally be regarded as a 
failure to ``promptly'' file a petition pursuant to Sec. 1.137.
    Providing a time period based upon the date of abandonment during 
which a petition pursuant to Sec. 1.137(b) must be filed to be timely, 
but providing no comparable time period within which a petition 
pursuant to Sec. 1.137(a) must be filed to be timely, results in the 
misapplication of Sec. 1.137 on the part of practitioners, which in 
turn results in an inordinate administrative burden to the Office. The 
Office is proposing to either: (1) Eliminate the time period 
requirement for filing a petition pursuant to Sec. 1.137(b), or (2) 
provide comparable time period requirements for filing either a 
petition pursuant to Sec. 1.137(a) and/or Sec. 1.137(b), which time 
period will be based upon the date of the first Office notification 
that the application had become abandoned or that the patent had 
lapsed. Interested persons are advised to comment on each of these 
proposals, since, depending upon further consideration by the Office 
and the comments received in response to this notice of proposed 
rulemaking, either proposal may be adopted in the final rule.
    Providing the period of ``within one year of the date on which the 
application became abandoned'' as the period during which a petition 
under Sec. 1.137(b) may be timely filed has had the undesirable effect 
of inducing applicants, or their representatives, to delay the filing 
of a petition under Sec. 1.137(b) until the end of this one year 
period. This deliberate delay in filing a petition under Sec. 1.137(b), 
or use of this one year period as an extension of time, is considered 
an abuse of Sec. 1.137(b). See In re Application of S., 8 USPQ2d 1630, 
1632 (Comm'r Pats 1988). In addition, Sec. 1.137(b) was recently 
amended to require that any petition thereunder include a statement 
that the delay (i.e., the entire delay), and not merely the 
abandonment, was unintentional. See Final Rule, ``Changes in Procedures 
for Revival of Patent Applications and Reinstatement of Patents,'' 
published in the Federal Register at 58 FR 44277 (August 20, 1993) and 
in the Patent and Trademark Office Official Gazette at 1154 Off. Gaz. 
Pat Office 4 (September 14, 1993). As such, any intentional delay in 
filing a petition under Sec. 1.137(b) is prohibited by the current 
terms of the rule.
    Under current rules, in instances in which an applicant, or his or 
her representative, intentionally delays the filing of a petition under 
Sec. 1.137(b) until the end of this one year period, but files a 
petition under Sec. 1.137(b) within this one year period, the petition 
is timely under Sec. 1.137(b)(4), but the statement that ``the delay 
was unintentional'' is not appropriate.
    In instances in which the filing of a petition under Sec. 1.137(b) 
is intentionally delayed until the end of this one year period, and the 
applicant, or his or her representative, miscalculates the actual date 
of abandonment, or otherwise misdockets the end of this one year 
period, the statement that ``the delay was unintentional'' is likewise 
not appropriate, but the petition is also barred by the terms of the 
rule. In addition, subsequent petitions under Sec. 1.137(a) are, 
regardless of the original cause of the abandonment, barred due to the 
applicant's failure to cause a petition under Sec. 1.137(a) to be 
``promptly filed after the applicant is notified of, or otherwise 
becomes aware of, the abandonment.'' See Application of S., 8 USPQ2d at 
1632.
    Where the applicant deliberately permits an application to become 
abandoned (e.g., due to a conclusion that the claims are unpatentable 
(e.g., that a rejection in an Office action cannot be overcome), or 
that the invention lacks sufficient commercial value to justify 
continued prosecution), the abandonment of such application is 
considered a deliberately chosen course of action, and the resulting 
delay cannot be considered ``unintentional'' within the meaning of 37 
CFR 1.137(b). See In re Application of G., 11 USPQ2d 1378, 1380 (Comm'r 
Pat. 1989). Likewise, where the applicant deliberately chooses not to 
either seek or persist in seeking the revival of an abandoned 
application, the resulting delay in seeking revival of the application 
cannot be considered ``unintentional'' within the meaning of 37 CFR 
1.137. The correctness or propriety of the rejection, or other 
objection, requirement, or decision, by the Office, the appropriateness 
of the applicant's decision to abandon the application or to not seek 
or persist in seeking revival, or the discovery of new information or 
evidence, or other change in circumstances subsequent to the 
abandonment or decision not to seek or persist in seeking revival, are 
immaterial to such intentional delay caused by the deliberate course of 
action chosen by the applicant.
    The intentional abandonment of an application, or an intentional 
delay in seeking either the withdrawal of a holding of abandonment in 
or the revival of an abandoned application, precludes a finding of 
unavoidable or unintentional delay pursuant to Sec. 1.137. See In re 
Maldague, 10 USPQ2d 1477, 1478 (Comm'r Pat. 1988).

Proposed Elimination of the Time Period Requirement for Filing a 
Petition Pursuant to Sec. 1.137(b)

    Under this proposal, an intentional delay in the filing of a 
petition under Sec. 1.137(b) will not result in an untimely petition 
pursuant to Sec. 1.137(b). The statement that ``the delay was 
unintentional,'' however, will continue to be inappropriate. That is, 
where there is an intentional delay in the filing of a petition under 
Sec. 1.137(b), the statement that ``the delay was unintentional'' will 
continue to be inappropriate (i.e., the applicant, or his or her 
representative cannot properly make this statement, and thus cannot 
properly request revival of the application), but Sec. 1.137(b) would 
no longer include an additional time period requirement. It is 
anticipated that the effects of prosecution delay due to abandonment on 
patent term under Public Law 103-465, and the proposed

[[Page 49834]]

changes to Sec. 1.137(c), will eliminate any incentive to intentionally 
delay the revival of an abandoned application.
    An applicant, assignee, or his or her representative, desiring the 
revival of an application that has inadvertently or unintentionally 
become abandoned is expected to act without intentional delay in 
seeking revival of the application. The Office does not question 
whether there has been an intentional or otherwise impermissible delay 
when a petition pursuant to Sec. 1.137 is filed within three months of 
the date the applicant is first notified by the Office that the 
application is abandoned. Where, however, there is a greater delay 
between the date the applicant is first notified by the Office that the 
application is abandoned and the filing of a petition pursuant to 
Sec. 1.137(b), the Office may raise the question as to whether the 
delay was unintentional, and may require more than a mere statement 
that the delay was unintentional. The Office may question whether the 
delay was unintentional in instances in which an applicant fails to 
timely seek reconsideration of a decision refusing to revive an 
abandoned application (see Sec. 1.137(d)).
    Regardless of whether the time period requirement in Sec. 1.137(b) 
is eliminated, applicants seeking revival of an abandoned application 
are advised to file a petition pursuant to Sec. 1.137 within three 
months of first notification that the application is abandoned to avoid 
the question of intentional delay being raised by the Office or third 
parties seeking to challenge any patent issuing from the application.
    While this proposal would permit revival pursuant to Sec. 1.137(b) 
without regard to the period of abandonment, Sec. 1.137(a) currently 
permits revival pursuant thereto without regard to the period of 
abandonment. In addition, the Office currently entertains petitions 
pursuant to Sec. 1.183, albeit under strictly limited conditions, to 
waive the time period requirement in Sec. 1.137(b). Since an 
application may currently be revived pursuant to Sec. 1.137 without 
regard to the period of abandonment, any current reliance upon the 
period of abandonment to ensure that the application will never issue 
as a patent is misplaced. Thus, the proposed elimination of the time 
period requirement in Sec. 1.137(b) would not significantly decrease 
the relationship between the period of abandonment of an application 
and the likelihood that such application would ever issue as a patent.
    In the event that the proposed elimination of the time period 
requirement for filing a petition pursuant to Sec. 1.137(b) is adopted, 
public comment is also requested on the application of this rule change 
to applications that were abandoned prior to the effective date of this 
rule change. This provision could be made effective as to petitions 
filed on or after the effective date of the rule change, which would 
permit the revival pursuant to Sec. 1.137(b) of applications abandoned 
for extended periods of time, provided that the entire delay was 
unintentional. This provision could also be made effective as to 
applications abandoned on or after the effective date, with the 
provisions of current Sec. 1.137(b) being applied to applications 
abandoned prior to the effective date of the rule change. This 
provision could also be made effective as to applications abandoned 
within and/or having a petition to revive filed within a specified 
period preceding the effective date of the rule change.

Proposed Comparable Time Period Requirements Each of Secs. 1.137 (a) 
and (b) Based Upon the Date of the First Office Notification That the 
Application Had Become Abandoned or That the Patent Had Lapsed

    The Office is also considering amending each of Secs. 1.137 (a) and 
(b) to include an express requirement that a petition thereunder be 
filed within a time certain. Specifically, the Office is also 
considering amending Sec. 1.137(a) to include the express requirement 
that a petition thereunder be filed within three months of the date of 
the first Office notification that the application had become abandoned 
or that the patent had lapsed and amending Sec. 1.137(b) to include the 
requirement that a petition thereunder be filed within three months of 
the date of the first Office notification that the application had 
become abandoned or that the patent had lapsed, or within three months 
of the date of the first decision on a timely petition pursuant to 
Sec. 1.137(a).
    The ``promptly filed'' requirement in Sec. 1.137(a) is the subject 
of various interpretations by applicants seeking revival pursuant to 
Sec. 1.137(a). To avoid misunderstandings as to the timeliness with 
which the Office expects an applicant seeking revival pursuant to 
Sec. 1.137(a) to file a petition thereunder, the Office is considering 
amending Sec. 1.137(a) to include the express requirement that a 
petition thereunder be filed within a time certain. Providing a period 
during which a timely petition pursuant to Sec. 1.137 (a) and/or (b) 
may be filed based upon the date of the first Office notification that 
the application had become abandoned or that the patent had lapsed, 
rather than the date of abandonment or patent lapse, is considered a 
better measure of timeliness. In addition, providing such a period will 
reduce uncertainty as to the expiration of the period during which a 
timely petition pursuant to Sec. 1.137(b), as well as Sec. 1.137(a), 
may be filed.
    Therefore, the Office is also considering basing the period during 
which a timely petition under Sec. 1.137 (b), as well as Sec. 1.137(a), 
may be filed on the date of notification of the abandonment, rather 
than the date of abandonment, and considers that a period of within 
three months of the date of the first Office notification that the 
application had become abandoned or that the patent had lapsed to be 
the appropriate period.
    Under the appropriate circumstances, petitions under Sec. 1.183 to 
waive any time period requirement in Secs. 1.137(a) and/or (b) would be 
available. Waiver of any requirement of Sec. 1.137 will, in accordance 
with Sec. 1.183, be strictly limited to an ``extraordinary situation'' 
in which ``justice requires'' such waiver.
    Section 1.137(a)(1), as proposed, would replace the phrase ``a 
proposed response to continue prosecution of that application, or the 
filing of a continuing application, unless either has been previously 
filed'' with ``accompanied by the required reply, unless previously 
filed. In a nonprovisional application abandoned for failure to 
prosecute, the proposed reply requirement may be met by the filing of a 
continuing application. In an abandoned application or a lapsed patent, 
for failure to pay any portion of the required issue fee, the proposed 
reply must be the issue fee or any outstanding balance thereof.''
    Section 1.137(b)(1), as proposed, would likewise replace the phrase 
``Accompanied by a proposed response to continue prosecution of that 
application, or filing of a continuing application, unless either has 
been previously filed'' with ``accompanied by the required reply, 
unless previously filed. In a nonprovisional application abandoned for 
failure to prosecute, the proposed reply requirement may be met by the 
filing of a continuing application. In an abandoned application or a 
lapsed patent, for failure to pay any portion of the required issue 
fee, the proposed reply must be the issue fee or any outstanding 
balance thereof.''
    While the revival of applications abandoned for failure to timely 
prosecute and for failure to timely pay the issue fee are proposed to 
be incorporated together in Sec. 1.137, the statutory provisions for 
the revival of an application abandoned for failure to timely prosecute 
and for failure to

[[Page 49835]]

timely submit the issue fee are mutually exclusive. See Brenner v. 
Ebbert, 398 F.2d 762, 157 USPQ 609 (D.C. Cir.), cert. denied 393 U.S. 
926, 159 USPQ 799 (1968). 35 U.S.C. 151 authorizes the acceptance of a 
delayed payment of the issue fee, if the issue fee ``is submitted * * * 
and the delay in payment is shown to have been unavoidable.'' 35 U.S.C. 
41(a)(7) likewise authorizes the acceptance of an ``unintentionally 
delayed payment of the fee for issuing each patent.'' Thus, 35 U.S.C. 
41(a)(7) and 151 each require payment of the issue fee as a condition 
of reviving an application abandoned or patent lapsed for failure to 
pay the issue fee. Therefore, the filing of a continuing application 
without payment of the issue fee or any outstanding balance thereof is 
not an acceptable proposed reply in an application abandoned or patent 
lapsed for failure to pay any portion of the required issue fee.
    The Notice of Allowance requires the timely payment of the issue 
fee in effect on the date of its mailing to avoid abandonment of the 
application. In instances in which there is an increase in the issue 
fee by the time of payment of the issue fee required in the Notice of 
Allowance, the Office will mail a notice requiring payment of the 
balance of the issue fee then in effect. The phrase ``for failure to 
pay any portion of the required issue fee'' applies to those instances 
in which the applicant fails to pay either the issue fee required in 
the Notice of Allowance or the balance of the issue fee required in a 
subsequent notice. In such instances, the proposed reply must be the 
issue fee then in effect, if no portion of the issue fee was previously 
submitted, or any outstanding balance of the issue fee then in effect, 
if a portion of the issue fee was previously submitted.
    These proposed changes to Secs. 1.137 (a)(1) and (b)(1) are 
necessary to incorporate into Sec. 1.137 the revival of abandoned 
applications and lapsed patents for the failure to timely reply to an 
Office requirement in a provisional application, to timely pay the 
issue fee, or to timely pay the full amount of the issue fee.
    Sections 1.137 (a) and (b), as proposed, would each include a new 
paragraph, paragraphs (a)(4) and (b)(4), respectively, providing that 
any petition thereunder must be accompanied by any terminal disclaimer 
(and fee as set forth in Sec. 1.20(d)) required pursuant to 
Sec. 1.137(c), to include in Secs. 1.137 (a) and (b) an explicit 
reference to the terminal disclaimer requirement in Sec. 1.137(c).
    Section 1.137(c), as proposed, would change the phrase ``any 
petition pursuant to paragraph (a) of this section'' to ``any petition 
pursuant to this section.'' As the period for the timely filing of a 
petition under Sec. 1.137(b) would no longer be based upon the period 
of abandonment, administrative convenience no longer justifies not 
requiring, for all design applications and all other nonprovisional 
utility applications filed prior to June 8, 1995, a terminal disclaimer 
under Sec. 1.137(c) for all petitions pursuant to Sec. 1.137.
    In addition, the phrase ``not filed within six months of the date 
of abandonment of the application'' is proposed to be removed from 
Sec. 1.137(c). The only justification for the current six month 
limitation on the terminal disclaimer requirement in Sec. 1.137(c) is 
administrative convenience in treating a petition pursuant to 
Sec. 1.137(a) filed within six months of the date of abandonment. Since 
the date of abandonment is miscalculated in a significant number of 
instances, this provision of Sec. 1.137(c) leads to errors in 
determining when a terminal disclaimer is required pursuant to 
Sec. 1.137(c), and thus leads to delays in continuing prosecution of 
the abandoned application. In any event, administrative convenience is 
no longer considered an adequate justification for the effective 
different treatment that would result by operation of Pub. L. 103-465 
of: (1) Applications filed on or after June 8, 1995, except for design 
applications, and (2) applications filed prior to June 8, 1995 and all 
design applications.
    Section 1.137(d), as proposed, would change ``application'' to 
``abandoned application or lapsed patent'' to incorporate into 
Sec. 1.137 the revival of lapsed patents.
    Section 1.137(e), as proposed, would provide that the time periods 
set forth in Sec. 1.137 may be extended under the provisions of 
Sec. 1.136.
    Section 1.137(f), as proposed, will expressly provide that a 
provisional application, abandoned for failure to timely reply to an 
Office requirement, may be revived pursuant to Sec. 1.137 (a) or (b) so 
as to be pending for a period of no longer than twelve months from its 
filing date. In accordance with 35 U.S.C. 111(b)(5), Sec. 1.137(f), as 
proposed, will clearly indicate that ``[u]nder no circumstances will a 
provisional application be regarded as pending after twelve months from 
its filing date.'' Sections 1.139 (a) and (b) each currently provide 
that a provisional application may be revived so as to be pending for a 
period of no longer than twelve months from its filing date, and that 
under no circumstances will a provisional application be regarded as 
pending after twelve months from its filing date.
    Section 1.139 is proposed to be removed and reserved and its 
subject matter added to Sec. 1.137.
    Section 1.142 would be amended by replacement of ``response'' with 
``reply'' in accordance with the proposed change to Sec. 1.111.
    Section 1.144 is proposed to be amended for clarification purposes.
    Section 1.146 is proposed to be amended for clarification purposes.
    Section 1.152 is proposed to be amended by removing the prohibition 
against color drawings and color photographs in design applications. 
Section 1.152 would be amended to permit the use of color photographs 
and color drawings in design applications subject to the petition 
requirements of Sec. 1.84(a)(2) inasmuch as color may be an integral 
element of the ornamental design. While pen and ink drawings may be 
lined for color, a clear showing of the configuration of the design may 
be obscured by this drafting method. New technologies, such as 
holographic designs, fireworks and laser light displays may not be 
accurately disclosed without the use of color.
    The term ``article'' of Sec. 1.152 would be replaced by the term 
``design'' as 35 U.S.C. 171 requires that the claim be directed to the 
``design for an article'' not the article, per se. Therefore, to comply 
with the requirements of 35 U.S.C. 112, first paragraph, it is only 
necessary that the design as embodied in the article be fully disclosed 
and not the article itself. The term ``must'' would be replaced by the 
term ``should'' to allow for latitude in the illustration of articles 
whose configuration may be understood without surface shading. 
Clarification language would be added to note that the use of solid 
black surfaces would be permitted for representation of the color black 
as well as color contrast and that photographs and ink drawings must 
not be combined as formal drawings in one application.
    Section 1.154 paragraph (a) would be amended to clarify that a 
voluntary submission (see comments under Sec. 1.152 relating to 
substitution of ``design'' for ``article'') may and should be made of 
``a brief description of the nature and intended use of the article in 
which the design is embodied.'' It is current practice for design 
examiners, in appropriate cases, to inquire as to the nature and 
intended use of the article in which a claimed design is embodied. The 
submission of such description will allow for a more accurate initial 
classification, and aid in providing a proper and complete search at 
the time of the first action on the merits. In those

[[Page 49836]]

instances where this feature description is necessary to establish a 
clear understanding of the article in which the design is embodied, 
provision of the feature description would help in reducing pendency by 
eliminating the necessity for time consuming correspondence. 
Specifically, requests for information prior to first action would be 
avoided. Absent an amendment requesting deletion of the description it 
would be printed on any patent that would issue.
    Sections 1.155 (b) through (f) are proposed to be removed in view 
of the proposed amendments to Sec. 1.137.
    Section 1.163 is proposed to be amended to remove an unnecessary 
and outmoded reference to a ``legible carbon copy of the original'' 
specification for plant applications.
    Section 1.165 is proposed to be amended by removing a reference to 
the artistic and competent execution of plant patent drawings which is 
unnecessary in view of the reference to Sec. 1.84.
    Section 1.167 is proposed to be amended by removing and reserving 
paragraph (b) as unnecessary in view of Sec. 1.132.
    Section 1.171 would no longer require an order for a title report 
in reissue applications as the requirement for a certification on 
behalf of all the assignees under concomitantly amended Sec. 1.172(a) 
obviates the need for a title report and fee therefor. Section 1.171 is 
also proposed to be amended by deletion of the requirement for an offer 
to surrender the patent, which offer is seen to be redundant in view of 
Sec. 1.178.
    Section 1.172 is proposed to be amended to require that all 
assignees establish their ownership interest by submission of evidence 
of the chain of title or by specifying where such evidence is recorded 
in the Office.
    Section 1.175 relating to the content of the reissue oath or 
declaration (MPEP 1414), as well as Secs. 1.48 and 1.324 relating to 
correction of inventorship in an application and in a patent, 
respectively, are proposed to be amended to remove the requirement for 
a showing of a lack of deceptive intent based on facts and 
circumstances. As the Office no longer investigates fraud and 
inequitable conduct issues and a reissue applicant's statement of a 
lack of deceptive intent is normally accepted on its face (See MPEP 
1448), the current requirement in Sec. 1.175(a)(5) that it be shown how 
the error(s) being relied upon arose or occurred without deceptive 
intent on the part of the applicant appears to be unduly burdensome 
upon applicants and the Office, and is proposed to be deleted. This 
would apply to the initially identified error(s), under paragraph (a), 
and any subsequently identified error(s) under paragraph (b). An 
initial reissue oath or declaration would be required to be filed 
pursuant to Sec. 1.175(a) limited to identification of the cause(s) of 
the reissue, and stating generally that all errors being corrected in 
the reissue application at the time of filing of the oath or 
declaration arose without deceptive intent. The current practice under 
Sec. 1.175(a)(3) and (a)(5) of specifically identifying all errors 
being corrected at the time of filing the initial oath or declaration 
would not be retained.
    Paragraph (b)(1) of Sec. 1.175 would require a supplemental reissue 
oath or declaration for errors corrected that were not covered by an 
earlier presented reissue oath or declaration, such as the initial oath 
or declaration pursuant to paragraph (a) of this section or one 
submitted subsequent thereto (a supplemental oath or declaration under 
this paragraph), stating generally that all errors being corrected 
which are not covered by an earlier presented oath or declaration 
pursuant to paragraphs (a) and (b) of this section arose without any 
deceptive intention on the part of the applicant. A supplemental oath 
or declaration that refers to all errors that are being corrected, 
including errors covered by a reissue oath or declaration submitted 
pursuant to paragraph (a) of this section, would be acceptable. The 
specific requirement for a supplemental reissue oath or declaration to 
cover errors sought to be corrected subsequent to the filing of an 
initial reissue oath or declaration is not a new practice, but merely 
recognition of a current requirement for a supplemental reissue oath or 
declaration when additional errors are to be corrected. However, the 
current practice of specifically identifying all supplemental errors 
being corrected in a supplemental reissue oath or declaration would not 
be retained.
    A supplemental oath or declaration under paragraph (b)(1) would be 
required to be submitted prior to allowance. The supplemental oath or 
declaration may be submitted with any amendment prior to allowance, 
paragraph (b)(1)(i), or in order to overcome a rejection under 35 
U.S.C. 251 made by the examiner where there are errors sought to be 
corrected that are not covered by a previously filed reissue oath or 
declaration, paragraph (b)(1)(ii). Any such rejection by the examiner 
will include a statement that the rejection may be overcome by 
submission of a supplemental oath or declaration, which oath or 
declaration states that the errors in issue arose without any deceptive 
intent on the part of the applicant. A supplemental oath or declaration 
under paragraph (b) would only be required for errors sought to be 
corrected during prosecution of the reissue application. Where an 
Office action contains only a rejection under 35 U.S.C. 251 and 
indicates that a supplemental oath or declaration under this paragraph 
would overcome the rejection, applicants are encouraged to authorize 
the payment of the issue fee at the time the supplemental reissue oath 
or declaration is submitted in view of the clear likelihood that the 
reissue application will be allowed on the next Office action. Such 
authorization will reduce the delays in the Office awaiting receipt of 
the issue fee. Where there are no errors to be corrected over those 
already covered by an oath or declaration submitted under paragraphs 
(a) and (b)(1) of this section, e.g., the application is allowed on 
first action, or where a supplemental oath or declaration has been 
submitted prior to allowance and no further errors have been corrected, 
a supplemental oath or declaration under this paragraph, or additional 
supplemental oath or declaration under paragraph (b)(1), would not be 
required.
    Paragraph (b)(2) would provide that for any error sought to be 
corrected after allowance, e.g., under Sec. 1.312, a supplemental oath 
or declaration must accompany the requested correction stating that the 
error(s) to be corrected arose without any deceptive intent on the part 
of the applicant.
    The quotes around lack of deceptive intent in Sec. 1.175(a)(6) 
would be removed as the exact language would not be required. Section 
1.175(a)(7), referencing Sec. 1.56, is proposed to be removed as 
unnecessary in view of the reference to Sec. 1.56 in Sec. 1.63 that is 
also referred to by Sec. 1.175(a). Section 1.175(b) noting the ability 
of applicant to file affidavits or declarations of others and the 
ability of the examiner to require additional information would be 
deleted as unnecessary in view of Sec. 1.132 and 35 U.S.C 132. A 
reference to Sec. 1.53(b) would be inserted in newly proposed 
Sec. 1.175(c) to clarify that the initial oath or declaration under 
Sec. 1.175(a) including those requirements under Sec. 1.63 need not be 
submitted (with the specification, drawing and claims) in order to 
obtain a filing date.
    37 CFR 1.176 would be amended to permit the Office to require 
restriction between claims added in a reissue application and the 
original patent claims, where the claims added in the reissue 
application are separate and distinct from the original patent claims.

[[Page 49837]]

This change is provided to deal with the added examination burden which 
results when new inventions are added via the reissue application. The 
Office would continue to not require restriction between original 
claims of the patent, i.e., between claims that were in the patent 
prior to filing the reissue application. In order for restriction to be 
required between the original patent claims and the newly added claims, 
the newly added claims must be separate and distinct from the original 
patent claims. Restriction between multiple inventions in the newly 
added claims would also be possible provided the newly added claims are 
drawn towards separate and distinct inventions.
    Section 1.177 is proposed to be amended to discontinue the current 
practice that copending reissue applications must be issued 
simultaneously unless ordered otherwise by the Commissioner pursuant to 
petition.
    Section 1.177 is proposed to be further amended by creating 
paragraphs (a) through (d) to clarify when multiple reissue patents may 
be issued and the conditions that applicant must comply with in order 
to have the Commissioner exercise his or her discretion and authorize 
issuance of multiple reissue patents. The Commissioner has discretion 
pursuant 35 U.S.C. 251 to permit the issuance of multiple reissue 
patents for distinct and separate parts of the thing patented. The 
Commissioner will exercise his or her statutory discretion under the 
limited conditions set forth in paragraph (a) of this section. Absent 
compliance with the provisions of paragraph (a) of this section, as 
defined by paragraphs (b) and (c) of this section, the Commissioner 
will not exercise his or her discretion under the statute and will not 
permit the issuance of multiple reissue applications, as is set forth 
in paragraph (d) of this section.
    The conditions for the Commissioner to exercise his or her 
discretion and permit multiple reissue patents to be issued for 
distinct and separate parts of the thing patented set forth in 
paragraph (a) of this section are as follows: (1) Copending reissue 
applications for distinct and separate parts of the thing patented have 
been filed, (2) Applicant has filed in each copending reissue 
application a timely demand by way of petition for multiple reissue 
patents, (3) The required filing and issue fees for each copending 
reissue application have been paid, and (4) The petition for multiple 
reissue patents is granted prior to issuance of a reissue patent on any 
of the copending reissue applications.
    Paragraph (b) of Sec. 1.177 would set forth the requirements of the 
petition provided for in paragraph (a)(2) of this section, which 
requirements are: (1) A request for the issuance of multiple reissue 
patents for distinct and separate parts of the thing patented, (2) The 
petition fee pursuant to Sec. 1.17(i), (3) An identification of the 
other copending reissue application(s), (4) A statement that the 
inventions as claimed in the copending reissue applications are 
distinct and separate parts of the thing patented, and (5) A showing 
sufficient to establish to the satisfaction of the Commissioner that 
the claimed subject matter of the thing patented is in fact being 
divided into distinct and separate parts.
    The ``distinct and separate parts of the thing patented'' means two 
things: (1) That the thing patented is being proposed to be divided 
into separate parts, i.e., the claims in the original patent are being 
separated into different reissue applications, and (2) that the divided 
claims are distinct as set forth in MPEP 802.01.
    Items (4) and (5) are intended to cover those situations where the 
Commissioner can and has determined, based on material and/or 
information supplied by applicant, or otherwise, that the subject 
matter of the thing patented is in fact being separated into parts that 
are distinct.
    The Commissioner intends to delegate the authority for decisions on 
the petitions required under this section to the Group Directors of the 
groups where the copending reissue applications are pending.
    Paragraph (c) of Sec. 1.177 would define the timeliness 
requirements for submission of the petitions set forth in paragraph 
(a)(1) of this section. When the copending reissue applications are 
filed at the same time, the petitions must be filed no later than the 
earliest submission of the reissue oath or declaration under 
Sec. 1.175(a) for any of the copending reissue applications. When the 
copending reissue applications are filed at different times, the 
petitions must be filed no later than the earliest of: (1) Payment of 
the issue fee for any of the copending reissue applications, or (2) 
submission of the reissue oath or declaration under Sec. 1.175 in the 
later filed copending reissue application.
    Paragraph (d) of Sec. 1.177 sets forth that the Commissioner will 
not permit multiple reissue patents to be issued if the requirements of 
this section are not met.
    It is contemplated that where the requirements of paragraphs (a) 
and (b) of Sec. 1.177 are capable of being perfected, the Office will 
give a one-month time period for perfection, with extensions of time 
available under Sec. 1.136(a). Where a first copending reissue 
application has issued, however, perfection would not be possible. It 
is not the intent of the Commissioner to provide any possibility of 
review by way of appeal to the Board of Patent Appeals and 
Interferences from his or her determination that the requirements of 
this section have not been complied with. Review of determinations on 
questions as to whether it has been established that the copending 
reissue applications are for distinct and separate parts of the thing 
patented will be by way of petition under Sec. 1.181(a)(3) and 
subsequently to court as to whether the Commissioner, or his or her 
designate, has properly exercised the discretion provided by 35 U.S.C. 
251 as is now proposed to be implemented in Sec. 1.177.
    The proposed changes are not intended to affect the type of errors 
that are or are not appropriate for correction under 35 U.S.C. 251, 
e.g., a patent granted on elected claims will not be considered to be 
partially inoperative by reason of claiming less than they had a right 
to claim and applicant's failure to timely file a divisional 
application is not considered to be the type of error that can be 
corrected by a reissue. MPEP 1402 and 1450.
    Section 1.177 is also proposed to be clarified by a new more 
descriptive title in view of the substantive amendments and a reference 
to the statutory authority.
    Section 1.181 is proposed to be amended by removing paragraphs (d), 
(e) and (g) as unnecessary and at most representing internal 
instructions.
    Section 1.182 is proposed to be amended by providing that a 
petition under the section may be granted ``subject to such other 
requirements as may be imposed'' by the Commissioner, language similar 
to that appearing for petitions under Sec. 1.183. The section would 
have removed as unnecessary a statement that a decision on a petition 
thereunder will be communicated to interested parties in writing.
    Section 1.184 is proposed to be removed and reserved as 
representing internal instructions.
    Section 1.191 would be amended, to provide for an appeal only after 
the claims of an applicant or a patent owner of a patent under 
reexamination are twice rejected, by deletion of appeal after having 
received a final rejection. The reference to a final rejection is 
deemed unnecessary in view of the proposed amendment to Sec. 1.113 by 
addition of paragraph (c) prohibiting a first action final rejection. 
An appeal

[[Page 49838]]

would not then be appropriate in any application including reissue and 
continued prosecution (Sec. 1.53(b)(3)) applications or in a patent 
under reexamination unless that application or that patent under 
reexamination in which an appeal is filed has been twice rejected, 
particularly in view of the elimination of first action final 
rejections. A second rejection need not be a final rejection for an 
appeal to be taken as is currently the practice. However, an applicant 
or patent owner of a patent under reexamination would not be able to 
appeal after a first action rejection in a continuation, divisional or 
continued prosecution application as no first action would be a final 
rejection and the only basis to appeal would be that the claims of an 
applicant or patent owner of a patent under reexamination have been 
twice rejected in the same application or the same patent under 
reexamination.
    Section 1.191, paragraph (a), would be amended for conformance with 
the language of 35 U.S.C. 134 by replacement of ``the claims of which 
have'' by ``whose claims have.'' Section 1.191 would also be amended by 
replacement of ``response'' with ``reply'' in accordance with the 
proposed change to Sec. 1.111.
    Sections 1.192, 1.193, 1.194, 1.196, and 1.197 are proposed to be 
amended to change ``the appellant'' to ``appellant'' for consistency. 
Paragraph (a) of Sec. 1.192 would be amended by replacement of 
``response'' with ``reply'' in accordance with the proposed change to 
Sec. 1.111.
    Section 1.193 would be amended in its title by addition of ``and 
substitute brief'' to more accurately reflect the section's contents. 
Section 1.193 would also be amended, by revision of paragraph (a) into 
paragraphs (a)(1) and (a)(2) and revision of paragraph (b) into 
paragraphs (b)(1) and (b)(2). Paragraph (a)(1) would retain the subject 
matter of current paragraph (a). Paragraph (a)(2) would specifically 
prohibit the inclusion of a new ground of rejection in an examiner's 
answer.
    Paragraph (b)(1) would remove the current discretion under existing 
paragraph (b) of this section of the examiner to enter a new ground of 
rejection in an examiner's answer responding to an appeal in 
conformance with proposed paragraph (a)(2). Paragraph (b)(1) would 
require the examiner to reopen prosecution to enter any new ground of 
rejection. Reopening of prosecution would require entering of any 
previously submitted paper that has been refused entry.
    Paragraph (b)(1) of Sec. 1.193 would also provide appellant with a 
right to file a substitute appeal brief in compliance with Sec. 1.192 
in reply to an examiner's answer where the right to file a substitute 
appeal brief would not be dependent upon a new point of argument being 
present in the examiner's answer. The current practice of permitting 
reply briefs based solely on a finding of a new point of argument, as 
set forth in current paragraph (b), would be eliminated thereby 
preventing present controversies as to whether a new point of argument 
has been made by the primary examiner. Appellant would be assured of 
having the last submission prior to review by the Board. Upon receipt 
of a substitute appeal brief the examiner would either acknowledge its 
receipt and entry or reopen prosecution to respond to any new issues 
raised in the substitute appeal brief. Should the Board desire to 
remand the appeal to the primary examiner for comment on the latest 
submission by appellant or to clarify an examiner's answer, MPEP 
1211,1211.01, and 1212, appellant would be entitled to submit a 
substitute appeal brief in response to the reply by the examiner to the 
Board's inquiry, which reply would be by way of a substitute examiner's 
answer. The use of substitute appeal briefs and substitute examiner's 
answers is intended to provide the Board with a single most current 
paper from each party.
    Paragraph (b)(2) of Sec. 1.193 would provide that if appellant 
desires that the appeal process be reinstated in reply to the 
examiner's reopening of prosecution under paragraph (b)(1) of this 
section, appellant would be able to file a new appeal brief under 
Sec. 1.192 and a request to reinstate the appeal. Amendments, 
affidavits or other new evidence would not be entered if submitted with 
a request to reinstate the appeal. Reinstatement of the appeal would 
constitute a new notice of appeal but no additional appeal fees would 
be required, since such fees have been previously paid. The intent of 
the rule change is to give appellant (rather than the examiner) the 
option to continue the appeal if desired (particularly under a 20 year 
term), or to continue prosecution before the examiner in the face of a 
new ground of rejection. Should an appeal brief be elected as the 
response to the examiner reopening prosecution based on a new ground of 
rejection under paragraph (b)(1) of this section, the examiner may 
under paragraph (a)(1) of this section issue an examiner's answer.
    Section 1.194, paragraph (b), is proposed to be amended to provide 
that a request for an oral hearing must be filed in a separate paper.
    Section 1.194, paragraph (c), is proposed to be amended to provide 
that appellant will be notified when a requested oral hearing is 
unnecessary, e.g., a remand is required.
    Section 1.196, paragraphs (b) and (d), are proposed to be combined 
by amending paragraph (b) to specifically provide in paragraph (b) for 
a new ground of rejection for both appealed claims and for allowed 
claims present in an application containing claims that have been 
appealed rather than the current practice under paragraph (d) of 
recommending a rejection of allowed claims that is binding on the 
examiner. The effect of an explicit rejection of an allowed claim by 
the Board of Patent Appeals and Interferences is not seen to differ 
from a recommendation of a rejection and would serve to advance the 
prosecution of the application by having the rejection made at an 
earlier date by the Board of Patent Appeals and Interferences rather 
than waiting for the application to be forwarded and acted upon by the 
examiner. The current practice, that the examiner is not bound by the 
rejection should appellant elect to proceed under paragraph (b)(1) and 
an amendment or showing of facts not previously of record in the 
opinion of the examiner overcomes the new ground of rejection, is not 
proposed to be changed. A period of two months would now explicitly be 
set forth for a reply to a decision by the Board of Patent Appeals and 
Interferences containing a new ground of rejection pursuant to 
Sec. 1.196(b), which would alter the one month now set forth for 
replies to recommended rejections of previously allowed claims. MPEP 
1214.01, page 1200-28. Extensions of time would continue to be governed 
by Sec. 1.196(f) and Sec. 1.136(b) (and not by Sec. 1.136(a)).
    The last sentence of paragraph (b)(2) of Sec. 1.196 would be 
amended to clarify that appellants do not have to both appeal and file 
request for reconsideration where only a reconsideration of a portion 
of the decision is sought in that a decision on a request for 
reconsideration will incorporate the earlier decision for purposes of 
appeal of the earlier decision for which only a partial request for 
reconsideration may have been filed. Additionally it is clarified that 
decisions on reconsideration are final unless noted otherwise in the 
decision in that under some circumstances it may not be appropriate to 
make a decision on reconsideration final as is currently automatically 
provided for.
    Section 1.196 would have a new paragraph (d) providing the Board of 
Patent Appeals and Interferences with explicit authority to have an 
appellant

[[Page 49839]]

clarify the record in addition to what is already provided by way of 
remand to the examiner, MPEP 1211, and appellant's compliance with the 
requirements of an appeal brief, Sec. 1.192(d). Paragraph (d)(1) would 
provide that an appellant may be required to address any matter that is 
deemed appropriate for a reasoned decision on the pending appeal. Such 
matters would include:
    (1) The applicability of particular case law that has not been 
previously identified as relevant to an issue in the appeal,
    (2) The applicability of prior art that has not been made of 
record, and
    (3) The availability of particular test data that would be 
persuasive in rebutting a ground of rejection.
    Paragraph (d)(2) would provide that appellant would be given a time 
limit within which to reply to any inquiry under paragraph (d)(1) of 
this section. Time limits, unlike time periods for reply, are not 
extendable under Sec. 1.136(a).
    Section 1.197, paragraph (b), is proposed to be amended to provide 
a period of two months, rather than the one month currently provided, 
for the single request for reconsideration or modification of the Board 
decision as provided for in Sec. 1.197(b).
    Section 1.291, paragraph (c), is proposed to be amended by removing 
the blanket limitation of one protest per protestor and would provide 
for a second or subsequent submission in the form of additional prior 
art. Mere argument that is later submitted by an initial protestor 
would continue not to be entered and returned unless it is shown that 
the argument relates to a new issue that could not have been earlier 
raised. MPEP 1907(b). Although, later submitted prior art would be made 
of record by a previous protestor without a showing that it relates to 
a new issue, it should be noted that entry of later submitted prior art 
in the file record does not assure its consideration by the examiner if 
submitted late in the examination process. Accordingly, initial 
protests should be as complete as possible when first filed.
    In view of the proposed change to Sec. 1.291(a) of this section in 
the 18-Month Publication Notice of Proposed Rulemaking, discussed 
supra, e.g., at Sec. 1.62 of the preamble, limiting the filing of 
protests to the issuance of patents to particular time periods (none 
after the notice of allowance is mailed, none after two months from 
publication or the filing of protests with a fee during the two-month 
period from publication where a notice of allowance has not been 
mailed), the restriction of protests by number is deemed unnecessary 
and is recognized as ineffective in that the current rule may allow for 
more than one protest to be filed on behalf of a party.
    Section 1.291 paragraph (c) would be amended by replacement of 
``response'' with ``reply'' in accordance with the proposed change to 
Sec. 1.111.
    Section 1.294 paragraph (b) would be amended by replacement of 
``response'' with ``reply'' in accordance with the proposed change to 
Sec. 1.111.
    Section 1.304(a)(1) is proposed to be amended to replace 
``consideration'' by ``reconsideration,'' an error that resulted from 
mistyping when it first appeared in the Federal Register.
    Section 1.312, paragraph (b), is proposed to have a reference to 
Sec. 1.175(b) added in view of the proposed change in Sec. 1.175(b) 
referencing Sec. 1.312(b).
    Section 1.313 is proposed to be amended by the addition of 
paragraph (c) informing applicants that unless written notification is 
received that the application has been withdrawn from issue at least 
two weeks prior to the projected date of issue, applicants should 
expect that the application will issue as a patent. Once an application 
has issued, the Office is without authority to grant a request under 
Sec. 1.313 notwithstanding submission of the request prior to issuance 
of the patent.
    Sections 1.316 (b) through (f) are proposed to be removed as they 
would be combined in proposed Sec. 1.137.
    Sections 1.317 (b) through (f) are proposed to be removed as they 
would be combined in proposed Sec. 1.137.
    Section 1.318 is proposed to be removed and reserved as being an 
internal Office instruction.
    Section 1.324 is proposed to be amended by creating paragraphs (a) 
and (b). The requirement for factual showings to establish a lack of 
deceptive intent would be deleted, with a statement to that effect 
being sufficient, paragraph (a).
    As Office practice (MPEP 1481) is to require the same type and 
character of proof of facts as in petitions under Sec. 1.48(a), a 
showing of diligence proposed to be deleted in Sec. 1.48 would not be 
continued in either Sec. 1.48 or Sec. 1.324, which currently follows 
the requirements of Sec. 1.48. The applicability of a rejection under 
35 U.S.C. 102(f)/(g) against a patent with the wrong inventorship set 
forth therein is deemed to provide sufficient motivation for prompt 
correction of the inventorship without the need for a separate 
requirement for diligence.
    The parties set forth in 35 U.S.C. 256 are interpreted to be only 
the person named as an inventor or not named as an inventor through 
error. Accordingly, Sec. 1.324 is proposed to be amended, paragraph 
(b)(1), to explicitly require a statement relating to the lack of 
deceptive intent only from each person who is being added or deleted as 
an inventor, as opposed to the current practice of requiring a 
statement from each original named inventor and any inventor to be 
added.
    The current requirements for an oath or declaration under Sec. 1.63 
by each actual inventor would be replaced, paragraph (b)(2) of 
Sec. 1.324, by a statement from the current named inventors who have 
not submitted a statement under paragraph (b)(1) of Sec. 1.324 either 
agreeing to the change of inventorship or stating that they have no 
disagreement in regard to the requested change. Not every original 
named inventor would necessarily have knowledge of each of the 
contributions of the other inventors and/or how the inventorship error 
occurred, in which case their lack of disagreement to the requested 
change would be sufficient.
    Paragraph (b)(3) of Sec. 1.324 would require the written consent of 
the assignees of all parties who submitted a statement under paragraph 
(b)(1) and (b)(2) of this section similar to the current practice of 
consents by the assignees of all the existing patentees. A 
clarification reference to Sec. 3.73(b) has been added.
    Paragraph (b)(4) of Sec. 1.324 states the requirement for a 
petition fee as set forth in Sec. 1.20(b).
    Section 1.325 relating to mistakes not corrected is proposed to be 
removed and reserved as unnecessary in that mistakes cannot be 
corrected unless a basis for their correction is found.
    Sections 1.351 and 1.352 are proposed to be removed and reserved as 
unnecessary in that they are internal instructions.
    Section 1.366, paragraph (b), would have the term ``certificate'' 
removed as unnecessary. Paragraph (c) would be clarified by changing 
``serial number'' to ``application number'' which consists of the 
serial number and the series code (e.g., ``08/''). Paragraph (d) would 
have the suggested requirements for the patent issue date and the 
application filing date removed as unnecessary in that the patent 
number is sufficient to identify the file and the change parallels an 
intended deletion of these dates from forms PTO/SB/45 and PTO/SB/47. 
The term ``serial'' would be removed from paragraph (d).
    Section 1.377, paragraph (c), would be amended to remove the 
requirement

[[Page 49840]]

that the petition be verified in accordance with the proposed change to 
Sec. 1.4(d)(2).
    Section 1.378, paragraph (d), would be amended to remove the 
requirement that the statement be verified in accordance with the 
proposed change to Sec. 1.4(d)(2).
    Section 1.425 would be amended by removing paragraph (a) and its 
requirement for: Proof of the pertinent facts, which relates to the 
lack of cooperation or unavailability of the inventor for which status 
is sought and by deleting paragraph (b) and its requirements for: Proof 
of the pertinent facts, the presence of a sufficient proprietary 
interest, and a showing that such action is necessary to preserve the 
rights of the parties or to prevent irreparable damage. Additionally, 
the requirement that the last known address of the non-signing inventor 
be stated would be removed. The current requirements are thought to be 
unnecessary in view of the need for submission of the same information 
in a petition under 37 CFR 1.47 during the national stage. The 
paragraph to be added would parallel the requirement in PCT Rule 4.15 
for a statement explaining to the satisfaction of the Commissioner the 
lack of the signature concerned.
    Section 1.484, paragraphs (d) through (f), would be amended by 
replacement of ``response'' and ``respond'' with ``reply'' in 
accordance with the proposed change to Sec. 1.111.
    Section 1.485 paragraph (a) would be amended by replacement of 
``response'' with ``reply'' in accordance with the proposed change to 
Sec. 1.111.
    Section 1.488, paragraph (b), would be amended by replacement of 
``response'' with ``reply'' in accordance with the proposed change to 
Sec. 1.111.
    Section 1.492 proposed to be amended to add new paragraph (g).
    Section 1.494, paragraph (c), would be amended by replacement of 
``response'' with ``reply'' in accordance with the proposed change to 
Sec. 1.111.
    Section 1.495, paragraph (c)(2), would be amended by replacement of 
``response'' with ``reply'' in accordance with the proposed change to 
Sec. 1.111.
    Section 1.510, paragraph (e), would be amended to replace a 
reference to Sec. 1.121(f), in view of it proposed removal, with a 
reference to Sec. 1.530(d) in view of its proposed revision.
    Section 1.530 the title and paragraph (a) would be amended by 
replacement of ``amendment'' and ``response'' with ``reply'' in 
accordance with the proposed change to Sec. 1.111.
    Section 1.530, paragraph (d), would be replaced by paragraphs 
(d)(1) through (d)(6) removing the reference to Sec. 1.121(f) in 
accordance with the proposed deletion of Sec. 1.121(f). The manner of 
making amendments in reexamination proceeding under the current 
reexamination practice is governed by Sec. 1.530 (d)(1) through (d)(6). 
Paragraph (d) would apply to proposed amendments in reexamination 
proceedings. Paragraph (d)(1) would be directed to the manner of 
proposing amendments in the specification other than in the claims. 
Paragraph (d)(1)(i) would require the precise point to be indicated 
where a proposed amendment is to be made. Paragraph (d)(1)(ii) would 
require that all amendments including deletions be made by submission 
of a copy of the rewritten paragraph(s) with markings. A change in one 
sentence, paragraph, or page that results in only format changes to 
other pages not being amended are not to be submitted. Paragraph 
(d)(1)(iii) would require proposed amendments to the specification to 
be made by rewritten relative to the patent specification and not 
relative to a previous proposed amendment. Paragraph (d)(1)(iv) would 
define the markings set forth in paragraph (d)(1)(ii).
    Paragraph (d)(2) of Sec. 1.530 would relate to the manner of 
proposing amendment of the claims in reexamination proceedings. 
Paragraph (d)(2)(i)(A) would require that a proposed amendment include 
the entire text of each patent claim which is proposed to be amended, 
but not all pending claims, such as patent claims that have not been 
proposed to be amended. Additionally, provision would be made for the 
cancellation of patent or of a proposed claim by a direction to cancel 
without the need for marking by brackets. Compare with deletion of 
claims in reissue applications where only patent claims and not added 
claims may be cancelled by direction, paragraph (b)(2)(i)(A). Paragraph 
(b)(2)(i)(B) would prohibit the renumbering of the patent claims and 
require that any proposed added claims follow the number of the highest 
numbered patent claim. Paragraph (b)(2)(i)(C) would identify the type 
of markings required by paragraph (d)(2)(i)(A), single underlining for 
added material and single brackets for material deleted.
    Paragraph (d)(2)(ii) would require the patent owner to set forth 
the status of all patent claims, of all currently proposed claims, and 
of all previously proposed claims that are no longer being proposed as 
of the date of submission of each proposed amendment. Compare with 
Sec. 1.121(b)(2)(ii), which does not require the status of patent 
claims that were not amended or of added claims that were cancelled.
    Paragraph (d)(2)(iii) of Sec. 1.530 would require an explanation of 
the support in the disclosure for any proposed first-time amendments to 
the claims on pages separate from the amendments along with any 
additional comments. The absence of an explanation would result in an 
incomplete reply, 35 U.S.C. 135.
    Paragraph (d)(2)(iv) of Sec. 1.530 would require that each 
submission of a proposed amendment to any claim (patent claims and all 
proposed claims) requires copies of all proposed amendments to the 
claims as of the date of the submission. A copy of a previous amendment 
would not meet the requirement of this section in that all amendments 
must be represented, as only the last amendment will be used for 
printing. A copy of a patent claim that has not been proposed to be 
amended is not to be presented.
    Paragraph (d)(2)(v) of Sec. 1.530 would provide that the failure to 
submit a copy of any proposed added claim would be construed as a 
direction to cancel that claim.
    Paragraph (d)(3) of Sec. 1.530 would clarify that: (1) A proposed 
amendment may not enlarge the scope of the claims of the patent, (2) 
that no amendment may be proposed in an expired patent, and (3) no 
amendment will be incorporated into the patent by certificate issued 
after the expiration of the patent.
    Paragraph (d)(4) of Sec. 1.530 would clarify that amendments 
proposed to a patent during reexamination proceedings will not be 
effective until a reexamination certificate is issued.
    Paragraph (d)(5) of Sec. 1.530 would provide the specifications 
that the form of papers must comply with in reexamination proceedings, 
e.g., paper size must be either letter size or A4 size (and not legal 
size).
    Paragraph (d)(6) of Sec. 1.530 would clarify that proposed 
amendments to the patent drawings are not permitted and that any change 
must be by way of a new sheet of drawings with the proposed amended 
figures being identified as ``amended'' and with proposed added figures 
identified as ``new'' for each sheet that has changed.
    Section 1.550, paragraphs (a), (b), and (d), would be amended by 
replacement of ``response,'' ``responses'' and ``respond'' with 
``reply'' in accordance with the proposed change to Sec. 1.111.
    Section 1.560, paragraph (b), would be amended by replacement of 
``response'' with ``reply'' in accordance with the proposed change to 
Sec. 1.111.
    Section 1.770 would be amended by replacement of ``response'' with 
``reply''

[[Page 49841]]

in accordance with the proposed change to Sec. 1.111.
    Section 1.785 would be amended by replacement of ``response'' with 
``reply'' in accordance with the proposed change to Sec. 1.111.
    Section 1.804, paragraph (b), would be clarified grammatically by 
changing ``shall state'' to ``stating'' and would be amended to delete 
the requirement that the statement be verified in accordance with the 
proposed change to Sec. 1.4(d)(2).
    Section 1.805, paragraph (c), would be amended by replacement of 
``verified'' with ``statement'' in accordance with the proposed change 
to Sec. 1.111 and removing unnecessary language noting that an attorney 
or agent registered to practice need not verify their statements.
    Portions of part 3 are proposed to be amended to incorporate part 7 
that is proposed to be removed and reserved.
    Section 3.11(a) is proposed to be created for the current subject 
matter and a new paragraph (b) would be added citing Executive Order 
9424 and its requirements by several departments and other executive 
agencies of the Government for forwarding items for recording.
    Section 3.26 would be amended to remove the requirement that 
English language translation be verified in accordance with the 
proposed change to Sec. 1.4(d)(2).
    Section 3.27(a) is proposed to be added to include current subject 
matter and an exception for Sec. 3.27(b) that would be added citing 
Executive Order 9424 and a mailing address therefor.
    Section 3.31(c) is proposed to be added to require that the cover 
sheet must indicate that the document is to be recorded on the 
governmental register and if applicable that the document is to be 
recorded on the Secret Register and that the document will not affect 
title.
    Section 3.41(a) is proposed to be added for the current subject 
matter and a Sec. 3.41(b) added to note when no recording fee is 
required in Sec. 3.41(b)(1) through (3) when it is required by 
Executive Order 9424.
    Section 3.51 is proposed to be amended by removing the term 
``certification'' as unnecessary in accordance with the proposed change 
to Sec. 1.4(d)(2).
    Section 3.58 is proposed to be added to provide for the maintaining 
of a Department Register to record Government interests required by 
Executive Order 9424 in Sec. 3.58(a). New Sec. 3.58(b) would provide 
that the Office maintain a Secret Register to record Government 
interests also required by the Executive Order.
    Section 3.73(b) is proposed to be amended to remove the sentence 
requiring an assignee to specifically state that the evidentiary 
documents have been reviewed and to certify that title is in the 
assignee seeking to take action. The sentence is deemed to be 
unnecessary in view of the proposed amendment to Sec. 1.4(d). Section 
3.73(b) has been clarified by addition of a reference to an example of 
documentary evidence that can be submitted.
    Section 5.1 is proposed to be amended by removing the current 
subject matter as being duplicative of material in the other sections 
of this part and to be replaced by subject matter proposed to be 
deleted from Sec. 5.33.
    Section 5.2(b) through (d) are proposed to be removed as repetitive 
of material in the sections following with Sec. 5.2(b) being replaced 
with subject matter of the first sentence from Sec. 5.7.
    Section 5.3 would be amended by replacement of ``response'' with 
``reply'' in accordance with the proposed change to Sec. 1.111.
    Section 5.4 is proposed to be amended by removing unnecessary 
subject matter from paragraph (a), eliminating, in paragraph (d), the 
requirement that the petition be verified in accordance with the 
proposed amendment to Sec. 1.4(d)(2) and by adding the first sentence 
of Sec. 5.8 to paragraph (d).
    Section 5.5 is proposed to be amended by removing unnecessary 
subject matter from paragraph (b) and by replacing current Sec. 5.5(e) 
with subject matter proposed to be removed from Sec. 5.6(a).
    Section 5.6 is proposed to be removed and reserved with the subject 
matter of Sec. 5.6(a) being placed in proposed Sec. 5.5(e).
    Section 5.7 is proposed to be removed and reserved with the first 
sentence thereof being placed in proposed Sec. 5.2(b).
    Section 5.8 is proposed to be removed and reserved with the subject 
matter from the first sentence thereof being placed in proposed 
Sec. 5.4(e).
    Sections 5.11 (b) and (c) are proposed to be amended to update the 
references to other parts of the Code of Federal Regulations.
    Section 5.13 is proposed to be amended by removing the last two 
sentences which are considered to be unnecessary.
    Section 5.14(a) is proposed to be amended by removing unnecessary 
subject matter and replacing ``serial number'' with the more 
appropriate designation ``application number''.
    Section 5.15(a) is proposed to be amended by removing unnecessary 
subject matter and to update the references to other parts of the Code 
of Federal Regulations.
    Section 5.16 is proposed to be removed and reserved as unnecessary.
    Section 5.17 is proposed to be removed and reserved as unnecessary.
    Section 5.18 is proposed to be amended to update the references to 
other parts of the Code of Federal Regulations.
    Sections 5.19 (a) and (b) are proposed to be amended to update the 
references to other parts of the Code of Federal Regulations. Section 
5.19(c) is proposed to be removed as unnecessary.
    Section 5.20(b) is proposed to be removed as unnecessary.
    Section 5.25(c) is proposed to be removed as unnecessary.
    Section 5.31 is proposed to be removed and reserved as unnecessary.
    Section 5.32 is proposed to be removed and reserved as unnecessary.
    Section 5.33 is proposed to be removed and reserved and the subject 
matter added to Sec. 5.1.
    Part 7 is proposed to be removed and reserved as the substance 
thereof has been incorporated into part 3.

Compilation of Inquiries to Public

    The Supplementary Information portion and the preamble portion of 
Sec. 1.137 request comments on the advisability of applying 
retroactively provisions in the final rules to papers submitted prior 
to the effective date of the final rule changes.
    The Sec. 1.121 portion of the preamble requests comments regarding 
the advisability of harmonizing reissue practice with reexamination 
practice.
    The Sec. 1.137(b) portion of the preamble requests comments on 
alternatives as to the time period for submitting a petition 
thereunder.

Review Under the Paperwork Reduction Act of 1995

    This proposed rule contains information collection requirements 
which are subject to review by the Office of Management and Budget 
(OMB) under the Paperwork Reduction Act of 1995. The title, description 
and respondent description of each of the information collections are 
shown below with an estimate of each of the annual reporting burdens. 
The collections of information in this proposed rule have been reviewed 
and approved by, or are pending approval by the OMB under the following 
control numbers: 0651-0035, 0651-0033, 0651-0031, 0651-0016, 0651-0032 
and 0651-0027. Included in each estimate is the time for reviewing 
instructions, gathering and maintaining the data

[[Page 49842]]

needed, and completing and reviewing the collection of information.
    With respect to the following collections of information, the 
Office invites comments on: (1) Whether the proposed collection of 
information is necessary for the proper performance of the Office's 
functions, including whether the information will have practical 
utility; (2) The accuracy of the Office's estimate of the burden of the 
proposed collection of information, including the validity of the 
methodology and assumptions used; (3) Ways to enhance the quality, 
utility, and clarity of the information to be collected; and (4) Ways 
to minimize the burden of the collection of information on respondents, 
including through the use of automated collection techniques, when 
appropriate, and other forms of information technology.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

    OMB Number: 0651-0035.
    Title: Address-Affecting Provisions.
    Form Numbers: PTO/SB/82/83.
    Type of Review: Pending OMB approval.
    Affected Public: Individuals or Households, Business or Other Non-
Profit, Not-for-Profit Institutions and Federal Government.
    Estimated Number of Respondents: 44,850.
    Estimated Time Per Response: 0.2 hour.
    Estimated Total Annual Burden Hours: 8,970 hours.
    Needs and Uses: Under existing law, a patent applicant or assignee 
may appoint, revoke or change a representative to act in a 
representative capacity. Also, an appointed representative may withdraw 
from acting in a representative capacity. This collection includes the 
information needed to ensure that Office correspondence reaches the 
appropriate individual.

    OMB Number: 0651-0033.
    Title: Post Allowance and Refiling.
    Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
    Type of Review: Pending OMB approval.
    Affected Public: Individuals or Households, Business or Other Non-
Profit, Not-for-Profit Institutions and Federal Government.
    Estimated Number of Respondents: 165,900.
    Estimated Time Per Response: 0.382 hour.
    Estimated Total Annual Burden Hours: 63,400 hours.
    Needs and Uses: This collection of information is required to 
administer the patent laws pursuant to Title 35 of the U.S. Code 
concerning the issuance of patents and related actions including 
correcting errors in printed patents, refiling of patent applications, 
requesting reexamination of a patent, and requesting a reissue patent 
to correct an error in a patent. The affected public includes any 
individual or institution whose application for a patent has been 
allowed or who takes action as covered by the applicable rules.

    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08-12/21-26/31/32/42/43/61-64/67-69/91-93/96/
97.
    Type of Review: Pending OMB approval.
    Affected Public: Individuals or Households, Business or Other Non-
Profit Institutions, Not-for-Profit Institutions and Federal 
Government.
    Estimated Number of Respondents: 364,000.
    Estimated Time Per Response: 1.779 hours.
    Estimated Total Annual Burden Hours: 647,720 hours.
    Needs and Uses: During the processing for an application for a 
patent, the applicant/agent may be required or desire to submit 
additional information to the Office concerning the examination of a 
specific application. The specific information required or which may be 
submitted includes: Information Disclosure Citations; Terminal 
Disclaimers; Petitions to Revive; Express Abandonment; Appeal Notice; 
Small Entity; Petition for Access; Power to Inspect; Certificate of 
Mailing; Amendment Transmittal Letter; Deposit Account Order Form.

    OMB Number: 0651-0016.
    Title: Rules for Patent Maintenance Fees.
    Form Numbers: PTO/SB/45/46/47/65/66.
    Type of Review: Pending OMB approval.
    Affected Public: Individuals or Households, Business or Other Non-
Profit, Not-for-Profit Institutions and Federal Government.
    Estimated Number of Respondents: 273,800.
    Estimated Time Per Response: .08 hour.
    Estimated Total Annual Burden Hours: 22,640 hours.
    Needs and Uses: Maintenance fees are required to maintain a patent 
in force under Title 35 of the U.S. Code. Payment of maintenance fees 
are required at 3\1/2\, 7\1/2\ and 11\1/2\ years after the grant of the 
patent. A patent number and serial number of the patent on which 
maintenance fees are paid are required in order to ensure proper 
crediting of such payments.

    OMB Number: 0651-0032.
    Title: Initial Patent Application.
    Form Number: PTO/SB/01-07/17-20/101-109.
    Type of Review: Currently approved through 9/98.
    Affected Public: Individuals or Households, Business or Other Non-
Profit, Not-for-Profit Institutions and Federal Government.
    Estimated Number of Respondents: 221,000.
    Estimated Time Per Response: 10.8 hours.
    Estimated Total Annual Burden Hours: 2,387,000 hours.
    Needs and Uses: The purpose of this information collection is to 
permit the Office to determine whether an application meets the 
criteria set forth in the patent statutes and regulations. The standard 
Fee Transmittal form, New Utility Patent Application Transmittal form, 
New Design Patent Application Transmittal form, New Plant Patent 
Application Transmittal form, Plant Color Coding Sheet, Declaration, 
and Plant Patent Application Declaration will assist applicants in 
complying with the requirements of the patent statutes and regulations, 
and will further assist the Office in processing and examination of the 
application.

    OMB Number: 0651-0027.
    Title: Changes in Patent and Trademark Assignment Practices.
    Form Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41.
    Type of Review: Currently approved through 9/98.
    Affected Public: Individuals or households and businesses or other 
for-profit institutions.
    Estimated Number of Respondents: 170,000.
    Estimated Time Per Response: 0.5 hour.
    Estimated Total Annual Burden Hours: 85,000 hours.
    Needs and Uses: The Office records about 170,000 assignments or 
documents related to ownership of patent and trademark cases each year. 
The Office requires a cover sheet to expedite the processing of these 
documents and to ensure that they are properly recorded.
    As required by the Paperwork Reduction Act of 1995 (44 U.S.C.

[[Page 49843]]

3507(d)), the Office has submitted a copy of this proposed rulemaking 
to OMB for its review of these information collections. Interested 
persons are requested to send comments regarding these information 
collections, including suggestions for reducing this burden, to the 
Office of Information and Regulatory Affairs of OMB, New Executive 
Office Bldg., 725 17th St. NW, rm. 10235, Washington, DC 20503, Attn: 
Desk Officer for the Patent and Trademark Office.
    OMB is required to make a decision concerning the collections of 
information contained in these proposed regulations between 30 and 60 
days after publication of this document in the Federal Register. 
Therefore, a comment to OMB is best assured of having its full effect 
if OMB receives it within 30 days of publication. This does not affect 
the deadline for the public to comment to the Office on the proposed 
regulations.

Other Considerations

    This proposed 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 rulemaking 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 the proposed rule change would not 
have a significant impact on a substantial number of small entities 
(Regulatory Flexibility Act, Pub. L. 96-354). The principal impact of 
these proposed changes is to reduce the regulatory burden on the public 
in filing patent applications and petitions therein.
    The PTO has determined that this proposed rule change has no 
Federalism implications affecting the relationship between the National 
Government and the States as outlined in Executive Order 12612.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Deceptive intent, Inventions 
and patents.

37 CFR Part 3

    Administrative practice and procedure, Inventions and patents.

37 CFR Part 5

    Inventions and patents, Licenses and exports, Secrecy.

37 CFR Part 7

    Inventions and patents.

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

PART 1-- RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for part 1 continues to read as follows:

    Authority: 35 U.S.C. 6, 23, unless otherwise noted.

    1a. Section 1.4 is proposed to be amended by revising paragraph (d) 
and by adding paragraph (g) to read as follows:


Sec. 1.4  Nature of correspondence and signature requirements.

* * * * *
    (d)>(1)< Each piece of correspondence, except as provided for in 
paragraphs (e) and (f) of this section, filed in a patent or trademark 
application, reexamination proceeding, patent file or trademark 
registration file, trademark opposition proceeding, trademark 
cancellation proceeding, or trademark concurrent use proceeding, which 
requires a person's signature, must either:
    [(1)]>(i)< Be an original, that is, have an original signature 
personally signed in permanent ink by that person; or
    [(2)]>(ii)< Be a copy, such as a photocopy or facsimile 
transmission (Sec. 1.6(d)), of an original >or of a copy of a copy<. In 
the event that a copy of the original is filed, the original should be 
retained as evidence of authenticity. If a question of authenticity 
arises, the Patent and Trademark Office may require submission of the 
original.
    >(2) By presenting to the Office any paper the party submitting 
such paper is certifying that to the best of the person's knowledge, 
information and belief, formed after an inquiry reasonable under the 
circumstances that:
    (i) The paper is not being presented for any improper purpose, such 
as to harass someone or to cause unnecessary delay or needless increase 
in the cost of prosecution before the Office;
    (ii) The claims and other legal contentions therein are warranted 
by existing law or by a nonfrivolous argument for the extension, 
modification, or reversal of existing law or the establishment of new 
law;
    (iii) The allegations and other factual contentions have 
evidentiary support or, if specifically so identified, are likely to 
have evidentiary support after a reasonable opportunity for further 
investigation or discovery; and
    (iv) The denials of factual contentions are warranted on the 
evidence, or if specifically so identified, are reasonably based on a 
lack of information or belief.
    (3) Sanctions:
    (i) Violations of paragraphs (d)(2)(i) to (iv) of this section 
after notice and reasonable opportunity to respond are subject to such 
sanctions as are deemed appropriate by the Commissioner including 
issuance of a Notice of Termination of Proceedings or return of papers; 
and
    (ii) Whoever, in any matter within the jurisdiction of the Patent 
and Trademark Office knowingly and willfully falsifies, conceals, or 
covers up by any trick, scheme, or device a material fact, or makes any 
false, fictitious or fraudulent statements or representations, or makes 
or uses any false writing or document knowing the same to contain any 
false, fictitious or fraudulent statement or entry, shall be subject to 
the penalties set forth in 18 U.S.C. 1001, and may jeopardize the 
validity or enforceability of the application or any patent issuing 
thereon.<
* * * * *
    >(g) An applicant who has not made of record a registered attorney 
or agent may be required to state whether assistance was received in 
the preparation or prosecution of the patent application, for which any 
compensation or consideration was given or charged, and if so, to 
disclose the name or names of the person or persons providing such 
assistance. Assistance includes the preparation for the applicant of 
the specification and amendments or other papers to be filed in the 
Patent and Trademark Office, as well as other assistance in such 
matters, but does not include merely making drawings by draftsmen or 
stenographic services in typing papers.<
    2. Section 1.6 is proposed to be amended by revising paragraph (e) 
to read as follows:


Sec. 1.6   Receipt of correspondence.

* * * * *
    (e) Interruptions in U.S. Postal Service. If interruptions or 
emergencies in the United States Postal Service which have been so 
designated by the Commissioner occur, the Patent and Trademark Office 
will consider as filed on a particular date in the Office any 
correspondence which is:
    (1) Promptly filed after the ending of the designated interruption 
or emergency; and
    (2) Accompanied by a statement indicating that such correspondence 
would have been filed on that particular

[[Page 49844]]

date if it were not for the designated interruption or emergency in the 
United States Postal Service. [Such statement must be a verified 
statement if made by a person other than a practitioner as defined in 
Sec. 10.1(r) of this chapter.]
    3. Section 1.8 is proposed to be amended by revising paragraph (b) 
to read as follows:


Sec. 1.8   Certificate of mailing or transmission.

* * * * *
    (b) In the event that correspondence is considered timely filed by 
being mailed or transmitted in accordance with paragraph (a) of this 
section, but not received in the Patent and Trademark Office, and the 
application is held to be abandoned or the proceeding dismissed, 
terminated, or decided with prejudice, the correspondence will be 
considered timely if the party who forwarded such correspondence:
    (1) Informs the Office of the previous mailing or transmission of 
the correspondence promptly after becoming aware that the Office has no 
evidence of receipt of the correspondence,
    (2) Supplies an additional copy of the previously mailed or 
transmitted correspondence and certificate, and
    (3) Includes a statement which attests on a personal knowledge 
basis or to the satisfaction of the Commissioner to the previous timely 
mailing or transmission. [Such statement must be a verified statement 
if made by a person other than a practitioner as defined in 
Sec. 10.1(r) of this chapter.] If the correspondence was sent by 
facsimile transmission, a copy of the sending unit's report confirming 
transmission may be used to support this statement.
* * * * *
    4. Section 1.10 is proposed to be amended by revising paragraph (c) 
to read as follows:


Sec. 1.10   Filing of papers and fees by ``Express Mail'' with 
certificate.

* * * * *
    (c) The Patent and Trademark Office will accept the certificate of 
mailing by ``Express Mail'' and accord the paper or fee the certificate 
date under 35 U.S.C. 21(a) (unless the certificate date is a Saturday, 
Sunday, or Federal holiday within the District of Columbia--see 
Sec. 1.6(a)) without further proof of the date on which the mailing by 
``Express Mail'' occurred unless a question is present regarding the 
date of mailing. If more than a reasonable time has elapsed between the 
certificate date and the Patent and Trademark Office receipt date or if 
other questions regarding the date of mailing are present, the person 
mailing the paper or fee may be required to file a copy of the 
``Express Mail'' receipt showing the actual date of mailing and a 
statement from the person who mailed the paper or fee [averring to the 
fact] >stating< that the mailing occurred on the date certified. [Such 
statement must be a verified statement if made by a person not 
registered to practice before the Patent and Trademark Office.]
    5. Section 1.14 is proposed to be amended by revising paragraphs 
(a) and (e) and by adding paragraph (f) to read as follows:


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

    (a) Except as provided in Sec. 1.11(b) pending patent applications 
are preserved in [secrecy] >confidence<. No information will be given 
by the Office respecting the filing by any particular person of an 
application for a patent, the pendency of any particular case before 
it, or the subject matter of any particular application, nor will 
access be given to or copies furnished of any pending application or 
papers relating thereto, without written authority in that particular 
application from the applicant or his >or her< assignee or attorney or 
agent of record, unless the application has been identified by [serial] 
>application< number in a published patent document or the United 
States of America has been indicated as a Designated State in a 
published international application, in which case status information 
>,< such as whether it is pending, abandoned, or patented >,< may be 
supplied, or unless it shall be necessary to the proper conduct of 
business before the Office or as provided by this part. Where an 
application has been patented, the patent number and issue date may 
also be supplied.
* * * * *
    (e) Any request by a member of the public seeking access to, or 
copies of, any pending or abandoned application preserved in [secrecy] 
>confidence< pursuant to paragraphs (a) and (b) of this section, or any 
papers relating thereto, must >:<
    (1) Be in the form of a petition and be accompanied by the petition 
fee set forth in Sec. 1.17(i), or
    (2) Include written authority granting access to the member of the 
public in that particular application from the applicant or the 
applicant's assignee or attorney or agent of record.
    >(f) Information as to the filing of an application will be 
published in the Official Gazette as required by Sec. 1.47(a) and (b).<
    6. Section 1.17 is proposed to be amended by removing and reserving 
paragraphs (b) through (d) and revising paragraphs (a) and (i) to read 
as follows:


Sec. 1.17   Patent application processing fees.

    (a) Extension fee>s pursuant to Sec. 1.136(a):< [for response 
within first month pursuant to Sec. 1.136(a):

By a small entity (Sec. 1.9(f))..................................$55.00
By other than a small entity...................................$110.00]
    >(1) For reply within first month:

By a small entity (Sec. 1.9(f))..................................$55.00
By other than a small entity....................................$110.00
    (2) For reply within second month:

By a small entity (Sec. 1.9(f)).................................$195.00
By other than a small entity
  ..............................................................$390.00
    (3) For reply within third month:

By a small entity (Sec. 1.9(f)).................................$465.00
By other than a small entity....................................$930.00
    (4) For reply within fourth month:

By a small entity (Sec. 1.9(f)).................................$735.00
By other than a small entity..................................$1,470.00
    (5) For reply within fifth month:

By a small entity (Sec. 1.9(f))...............................$1,005.00
By other than a small entity.................................$2,010.00<
    (b) >Removed< [Extension fee for response within second month 
pursuant to Sec. 1.136(a):

By a small entity (Sec. 1.9(f)).................................$190.00
By other than a small entity...................................$380.00]
    (c) >Removed< [Extension fee for response within third month 
pursuant to Sec. 1.136(a):

By a small entity (Sec. 1.9(f)).................................$450.00
By other than a small entity...................................$900.00]
    (d) >Removed< [Extension fee for response within fourth month 
pursuant to Sec. 1.136(a):

By a small entity (Sec. 1.9(f)).................................$700.00
By other than a small entity.................................$1,400.00]
* * * * *
(i) For filing a petition to the Commissioner under a section of 
this part listed below which refers to this paragraph...........$130.00

    Sec. 1.12--for access to an assignment record.
    Sec. 1.14--for access to an application.
    Sec. 1.53--to accord a filing date, except in provisional 
applications.
    Sec. 1.55--for entry of late priority papers.
    >Sec. 1.59--for expungement and return of information.<
    [Sec. 1.60--to accord a filing date.
    Sec. 1.62--to accord a filing date.]
    Sec. 1.97(d)--to consider an information disclosure statement.
    Sec. 1.102--to make an application special.
    Sec. 1.103--to suspend action in application.
    Sec. 1.177>(a)<--for [divisional] >multiple reissue 
applications< [reissues to issue separately].
    Sec. 1.312--for amendment after payment of issue fee.
    Sec. 1.313--to withdraw an application from issue.
    Sec. 1.314--to defer issuance of a patent.
    Sec. 1.666(b)--for access to an interference settlement 
agreement.
    Sec. 3.81--for a patent to issue to assignee, [where the] 
assignment [was] submitted after payment of the issue fee.
* * * * *

[[Page 49845]]

    7. Section 1.21 is proposed to be amended by revising paragraph (n) 
to read as follows:


Sec. 1.21  Miscellaneous fees and charges.

* * * * *
(n) For handling an incomplete or improper application under 
Sec. 1.53(c) [, Sec. 1.60 or Sec. 1.62].........................$130.00
* * * * *
    8. Section 1.26 is proposed to be amended by revising paragraph (a) 
to read as follows:


Sec. 1.26  Refunds.

    (a) [Money] >Any fee< paid by [actual] mistake or in excess >of 
that required< will be refunded, but a mere change of purpose after the 
payment of money, as when a party desires to withdraw an application, 
an appeal, or a request for oral hearing, will not entitle a party to 
demand such a return. Amounts of twenty-five dollars or less will not 
be returned unless specifically requested within a reasonable time, nor 
will the payer be notified of such amounts; amounts over twenty-five 
may be returned by check or, if requested, by credit to a deposit 
account.
* * * * *
    9. Section 1.27 is proposed to be revised to read as follows:


Sec.  1.27  Statement of status as small entity.

    (a) Any person seeking to establish status as a small entity 
(Sec. 1.9(f) of this part) for purposes of paying fees in an 
application or a patent must file a [verified] statement in the 
application or patent prior to or with the first fee paid as a small 
entity. Such a [verified] statement need only be filed once in an 
application or patent and remains in effect until changed.
    (b) >When establishing status as a small entity< [Any verified 
statement filed] pursuant to paragraph (a) of this section >, any 
statement filed< on behalf of an independent inventor must be signed by 
the independent inventor except as provided in Sec. 1.42, Sec. 1.43, or 
Sec. 1.47 of this part and must aver that the inventor qualifies as an 
independent inventor in accordance with Sec. 1.9(c) of this part. Where 
there are joint inventors in an application, each inventor must file a 
[verified] statement establishing status as an independent inventor in 
order to qualify as a small entity. Where any rights have been 
assigned, granted, conveyed, or licensed, or there is an obligation to 
assign, grant, convey, or license, any rights to a small business 
concern, a nonprofit organization, or any other individual, a 
[verified] statement must be filed by the individual, the owner of the 
small business concern, or an official of the small business concern or 
nonprofit organization empowered to act on behalf of the small business 
concern or nonprofit organization averring to their status. For 
purposes of a [verified] statement under this paragraph, a license to a 
Federal agency resulting from a funding agreement with that agency 
pursuant to 35 U.S.C. 202(c)(4) does not constitute a license as set 
forth in Sec. 1.9 of this part.
    (c) Any [verified] statement filed pursuant to paragraph (a) of 
this section on behalf of a small business concern must (1) be signed 
by the owner or an official of the small business concern empowered to 
act on behalf of the concern; (2) aver that the concern qualifies as a 
small business concern as defined in Sec. 1.9(d); and (3) aver that the 
exclusive rights to the invention have been conveyed to and remain with 
the small business concern or, if the rights are not exclusive, that 
all other rights belong to small entities as defined in Sec. 1.9. Where 
the rights of the small business concern as a small entity are not 
exclusive, a [verified] statement must also be filed by the other small 
entities having rights averring to their status as such. For purposes 
of a [verified] statement under this paragraph, a license to a Federal 
agency resulting from a funding agreement with that agency pursuant to 
35 U.S.C. 202(c)(4) does not constitute a license as set forth in 
Sec. 1.9 of this part.
    (d) Any [verified] statement filed pursuant to paragraph (a) of 
this section on behalf of a nonprofit organization must
    (1) be signed by an official of the nonprofit organization 
empowered to act on behalf of the organization;
    (2) aver that the organization qualifies as a nonprofit 
organization as defined in Sec. 1.9(e) of this part specifying under 
which one of Sec. 1.9(e) (1), (2), (3), or (4) of this part the 
organization qualifies; and
    (3) aver that exclusive rights to the invention have been conveyed 
to and remain with the organization or if the rights are not exclusive 
that all other rights belong to small entities as defined in Sec. 1.9 
of this part. Where the rights of the nonprofit organization as a small 
entity are not exclusive, a [verified] statement must also be filed by 
the other small entities having rights averring to their status as 
such. For purposes of a [verified] statement under this paragraph, a 
license to a Federal agency pursuant to 35 U.S.C. 202(c)(4) does not 
constitute a conveyance of rights as set forth in this paragraph.
    10. Section 1.28 is proposed to be amended by revising paragraphs 
(a) and (c) to read as follows:


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

    (a) The failure to establish status as a small entity (Secs. 1.9(f) 
and 1.27 of this part) in any application or patent prior to paying, or 
at the time of paying, any fee precludes payment of the fee in the 
amount established for small entities. A refund pursuant to Sec. 1.26 
of this part, based on establishment of small entity status, of a 
portion of fees timely paid in full prior to establishing status as a 
small entity may only be obtained if a [verified] statement under 
Sec. 1.27 and a request for a refund of the excess amount are filed 
within two months of the date of the timely payment of the full fee. 
The two-month time period is not extendable under Sec. 1.136. Status as 
a small entity is waived for any fee by the failure to establish the 
status prior to paying, at the time of paying, or within two months of 
the date of payment of, the fee. Status as a small entity must be 
specifically established in each application or patent in which the 
status is available and desired. Status as a small entity in one 
application or patent does not affect any other application or patent, 
including applications or patents which are directly or indirectly 
dependent upon the application or patent in which the status has been 
established. >The refiling of an application under Sec. 1.53 as a 
continuation, division, continuation-in-part or continued prosecution 
application or the filing of a reissue application requires a new 
determination as to continued entitlement to small entity status for 
the refiled application or the reissue application.< A nonprovisional 
application claiming benefit under 35 U.S.C. 119(e), 120, 121, or 
365(c) of a prior application, >a continued prosecution application, or 
a reissue application< may rely on a [verified] statement filed in the 
prior application >or in the patent< if the nonprovisional application 
>, the continued prosecution application or the reissue application< 
includes a reference to the [verified] statement in the prior 
application >or in the patent< or includes a copy of the [verified] 
statement in the prior application >or in the patent< and status as a 
small entity is still proper and desired. >The payment of a small 
entity basic statutory filing fee will substitute for the reference.< 
Once status as a small entity has been established in an application or 
patent, the status remains in that application or patent without the 
filing of a further [verified] statement

[[Page 49846]]

pursuant to Sec. 1.27 of this part unless the Office is notified of a 
change in status.
* * * * *
    (c) If status as a small entity is established in good faith, and 
fees as a small entity are paid in good faith, in any application or 
patent, and it is later discovered that such status as a small entity 
was established in error or that through error the Office was not 
notified of a change in status as required by paragraph (b) of this 
section, the error will be excused [(1) if any deficiency between the 
amount paid and the amount due is paid within three months after the 
date the error occurred or (2) if any] >upon payment of the< deficiency 
between the amount paid and the amount due [is paid more than three 
months after the date the error occurred and the payment is accompanied 
by a statement explaining how the error in good faith occurred and how 
and when the error was discovered. The statement must be a verified 
statement if made by a person not registered to practice before the 
Patent and Trademark Office]. The deficiency is based on the amount of 
the fee, for other than a small entity, in effect at the time the 
deficiency is paid in full.
* * * * *
    11. Section 1.33 is proposed to be amended by revising paragraph 
(a) to read as follows and to remove and reserve paragraph (b):


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

    (a) [The residence and post office address of the applicant must 
appear in the oath or declaration if not stated elsewhere in the 
application.] The applicant [may also specify and] >, the assignee(s) 
of the entire interest (see Secs.  3.71 and 3.73) or< an attorney or 
agent of record >(see Sec. 1.34(b))< may specify a correspondence 
address to which communications about the application are to be 
directed. All notices, official letters, and other communications in 
the [case] >application< will be directed to the correspondence address 
or, if no such correspondence address is specified, to an attorney or 
agent of record (see Sec. 1.34(b)), or, if no attorney or agent is of 
record, to the applicant [, or to any assignee of record of the entire 
interest if the applicant or such assignee so requests, or to an 
assignee of an undivided part if the applicant so requests, at the] 
>provided a< post office address [of which the Office] has been 
[notified] >furnished< in the [case] >application<. Amendments and 
other papers filed in the application must be signed:
    (1) by the applicant, or
    (2) if there is an assignee of record of an undivided part 
interest, by the applicant and such assignee, or
    (3) if there is an assignee of record of the entire interest, by 
such assignee, or
    (4) by an attorney or agent of record, or
    (5) by a registered attorney or agent not of record who acts in a 
representative capacity under the provisions of Sec. 1.34(a). Double 
correspondence with an applicant and [his] >an< attorney or agent, or 
with more than one attorney or agent, will not be undertaken. If more 
than one attorney or agent [be] >is< made of record and a 
correspondence address has not been specified, correspondence will be 
held with the one last made of record.
    (b) >[Reserved]<
* * * * *
    12. Section 1.41 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.41  Applicant for patent.

    (a) A patent [must be] >is< applied for in the name of the actual 
inventor or inventors. >The inventorship of an application is set forth 
in the oath or declaration that is executed in accordance with 
Sec. 1.63.< [Full names must be stated, including the family name, and 
at least one given name without abbreviation together with any other 
given name or initial.] >For identification purposes, the name of the 
actual inventor or inventors should be supplied when the specification 
and any required drawing are filed. If the name of the actual inventor 
or inventors are not supplied when the specification and any required 
drawing are filed, the application should include an applicant 
identification consisting of alphanumeric characters.<
* * * * *
    13. Section 1.47 is proposed to be revised to read as follows:


Sec. 1.47  Filing when an inventor refuses to sign or cannot be 
reached.

    (a) If a joint inventor refuses to join in an application for 
patent or cannot be found or reached after diligent effort, the 
application may be made by the other inventor on behalf of himself or 
herself and the [omitted] >nonsigning< inventor. The oath or 
declaration in such an application must be accompanied by a petition 
including proof of the pertinent facts >,< [and] by the [required] fee 
>set forth in< [(]Sec. 1.17(h)[)]>,< and [must state] the last known 
address of the [omitted ]>nonsigning< inventor. The Patent and 
Trademark Office shall forward notice of the filing of the application 
to the [omitted] >nonsigning< inventor at said address[. Should such 
notice be returned to the Office undelivered, or should the address of 
the omitted inventor be unknown,] >and< notice of the filing of the 
application shall be published in the Official Gazette. The [omitted] 
>nonsigning< inventor may subsequently join in the application on 
filing an oath or declaration [of the character required by] >complying 
with< Sec. 1.63. [A patent may be granted to the inventor making the 
application, upon a showing satisfactory to the Commissioner, subject 
to the same rights which the omitted inventor would have had if he or 
she had been joined.]
    (b) Whenever [an] >all the< [inventor] >inventors< [refuses] 
>refuse< to execute an application for patent, or cannot be found or 
reached after diligent effort, a person to whom [the] >an< inventor has 
assigned or agreed in writing to assign the invention or who otherwise 
shows sufficient proprietary interest in the matter justifying such 
action may make application for patent on behalf of and as agent for 
>all< the [inventor] >inventors<. The oath or declaration in such an 
application must be accompanied by a petition including proof of the 
pertinent facts >,< [and] a showing that such action is necessary to 
preserve the rights of the parties or to prevent irreparable damage, 
[and by] the [required] fee > set forth in< [(]Sec. 1.17(h)[)]>,< and 
[must state] the last known address of >all< the [inventor] 
>inventors<. [The assignment, written agreement to assign or other 
evidence of proprietary interest, or a verified copy thereof, must be 
filed in the Patent and Trademark Office.] The Office shall forward 
notice of the filing of the application to >all< the [inventor] 
>inventors< at the [address] >addresses< stated in the application[. 
Should such notice be returned to the Office undelivered, or should the 
address of the inventor be unknown] >and< notice of the filing of the 
application shall be published in the Official Gazette. [The] >An< 
inventor may subsequently join in the application on filing an oath or 
declaration [of the character required by] >complying with< Sec. 1.63. 
[A patent may be granted to the inventor upon a showing satisfactory to 
the Commissioner.]
    14. Section 1.48 is proposed to be revised to read as follows:


Sec. 1.48   Correction of inventorship >in a patent application<.

    (a) [If the correct inventor or inventors are not named in a 
nonprovisional application through error without any

[[Page 49847]]

deceptive intention on the part of the actual inventor or inventors,] 
>If the inventive entity is set forth in error in an executed Sec. 1.63 
or Sec. 1.175 oath or declaration and such error arose without any 
deceptive intention on the part of the person named as an inventor in 
error or on the part of the person who through error was not named as 
an inventor<, the application may be amended to name only the actual 
inventor or inventors. >When the application is involved in an 
interference, the amendment shall comply with the requirements of this 
section and shall be accompanied by a motion under Sec. 1.634.< Such 
amendment must be [diligently made and must be] accompanied by:
    (1) A petition including a statement [of facts verified by the 
original named inventor or inventors establishing when the error 
without deceptive intention was discovered and how it occurred] >from 
each person who is being added as an inventor and from each person who 
is being deleted as an inventor that the error in inventorship occurred 
without deceptive intention on their part<;
    (2) An oath or declaration by each actual inventor or inventors as 
required by Sec. 1.63 >or as permitted by Secs. 1.42, 1.43 or 1.47<;
    (3) The fee set forth in Sec. 1.17(h); and
    (4) >If an assignment has been executed by any of the original 
named inventors the,< [The] written consent of [any] >the< assignee >, 
see Sec. 3.73(b)<. [When the application is involved in an 
interference, the petition shall comply with the requirements of this 
section and shall be accompanied by a motion under Sec. 1.634.]
    (b) If the correct inventors are named in [the] >a< nonprovisional 
application when filed and the prosecution of the application results 
in the amendment or cancellation of claims so that less than all of the 
originally named inventors are the actual inventors of the invention 
being claimed in the application, an amendment shall be filed deleting 
the names of the person or persons who are not inventors of the 
invention being claimed. >When the application is involved in an 
interference, the amendment shall comply with the requirements of this 
section and shall be accompanied by a motion under Sec. 1.634. Such< 
[The] amendment must be [diligently made and shall be] accompanied by:
    (1) A petition including a statement identifying each named 
inventor who is being deleted and acknowledging that the inventor's 
invention is no longer being claimed in the application; and
    (2) The fee set forth in Sec. 1.17(h).
    (c) If a nonprovisional application discloses unclaimed subject 
matter by an inventor or inventors not named in the application, the 
application may be amended [pursuant to paragraph (a) of this section] 
to add claims to the subject matter and name the correct inventors for 
the application. >When the application is involved in an interference, 
the amendment shall comply with the requirements of this section and 
shall be accompanied by a motion under Sec. 1.634. Such amendment must 
be accompanied by:
    (1) A petition including a statement from each person being added 
as an inventor that the amendment is necessitated by amendment of the 
claims and that the inventorship error occurred without deceptive 
intention on their part;
    (2) An oath or declaration by each actual inventor or inventors as 
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or 1.47;
    (3) The fee set forth in Sec. 1.17(h); and
    (4) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee, see Sec. 3.73(b)<.
    (d) If the name or names of an inventor or inventors were omitted 
in a provisional application through error without any deceptive 
intention on >their part< [the part of the actual inventor or 
inventors], the provisional application may be amended to add the name 
or names of the [actual] >omitted< inventor or inventors. Such 
amendment must be accompanied by:
    (1) A petition including a statement that the >inventorship< error 
occurred without deceptive intention on the part of the [actual] 
>omitted< inventor or inventors[, which statement must be a verified 
statement if made by a person not registered to practice before the 
Patent and Trademark Office]; and
    (2) The fee set forth in Sec. 1.17(q).
    (e) If a person or persons were named as an inventor or inventors 
in a provisional application through error without any deceptive 
intention >on their part<, an amendment may be filed in the provisional 
application deleting the name or names of the person or persons who 
were erroneously named. Such amendment must be accompanied by:
    (1) A petition including a statement [of facts verified] by the 
person or persons whose name or names are being deleted [establishing] 
that the >inventorship< error occurred without deceptive intention >on 
their part<;
    (2) The fee set forth in Sec. 1.17(q); and
    (3) [The written consent of any assignee.] >If an assignment has 
been executed by any of the original named inventors, the written 
consent of the assignee, see Sec. 3.73(b).
    (f) If the correct inventor or inventors are not named on filing a 
nonprovisional application without an executed oath or declaration 
under Sec. 1.63, the later submission of an executed oath or 
declaration under Sec. 1.63 will act to correct the earlier 
identification of inventorship.
    (g) The Office may require such other information as may be deemed 
appropriate under the particular circumstances surrounding the 
correction of inventorship.<
    15. Section 1.51 is proposed to be amended by removing paragraph 
(c).


Sec. 1.51   General requisites of an application.

* * * * *
    (c) [Removed]
    16. Section 1.52 is proposed to be amended by revising paragraphs 
(a) and (d) 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 >together with a 
statement that the translation is accurate<. All papers which are to 
become a part of the permanent records of the Patent and Trademark 
Office must be legibly written, typed, or printed in permanent ink or 
its equivalent in quality. All of the application papers must be 
presented in a form having sufficient clarity and contrast between the 
paper and the writing, typing, or printing thereon to permit the direct 
reproduction of readily legible copies in any number by use of 
photographic, electrostatic, photo-offset, and microfilming processes. 
If the papers are not of the required quality, substitute typewritten 
or printed papers of suitable quality may be required.
* * * * *
    (d) An application may be filed in a language other than English. 
[A verified] >An< English translation of the non-English-language 
application >, a statement that the translation is accurate,< and the 
fee set forth in Sec. 1.17(k) are required to be filed with the 
application or within such time as may be set by the Office.
    17. Section 1.53 is proposed to be amended by revising paragraphs 
(b) through (d) as follows:

[[Page 49848]]

Sec. 1.53   Application number, filing date, and completion of 
application.

* * * * *
    (b)(1) The filing date of an application for patent filed under 
this section, except for a provisional application >under paragraph 
(b)(2) of this section or a continued prosecution application under 
paragraph (b)(3) of this section<, is the date on which: a 
specification containing a description pursuant to Sec. 1.71 and at 
least one claim pursuant to Sec. 1.75; and any drawing required by 
Sec. 1.81(a), are filed in the Patent and Trademark Office [in the name 
of the actual inventor or inventors as required by Sec. 1.41]. No new 
matter may be introduced into an application after its filing date 
>(1.115(b)(1))< [(Sec. 1.118)]. [If all the names of the actual 
inventor or inventors are not supplied when the specification and any 
required drawing are filed, the application will not be given a filing 
date earlier than the date upon which the names are supplied unless a 
petition with the fee set forth in Sec. 1.17(i) is filed which sets 
forth the reasons the delay in supplying the names should be excused.] 
A continuation or divisional application (filed under the conditions 
specified in 35 U.S.C. 120, 121 or 365(c) and Sec. 1.78(a)) may be 
filed under this >paragraph or paragraph (b)(3) of this< section [, 
Sec. 1.60 or Sec. 1.62]. A continuation-in-part application >must< [may 
also] be filed under this >paragraph< [section or Sec. 1.62].
    >(i) Any continuation or divisional application may be filed by all 
or by less than all of the inventors named in a prior application. A 
newly executed oath or declaration is not required 
(Sec. 1.51(a)(1)(ii)) and paragraph (d) of this section in a 
continuation or divisional application filed by all or by less than all 
of the inventors named in a prior application, provided that one of the 
following is submitted: A copy of the executed oath or declaration 
filed to complete (Sec. 1.51(a)(1)) the most immediate prior national 
application for which priority is claimed under 35 U.S.C. 120, 121 or 
365(c), or a copy of an unexecuted oath or declaration, and a statement 
that the copy is a true copy of the oath or declaration that was 
subsequently executed and filed to complete (Sec. 1.51(a)(1)) the most 
immediate prior national application for which priority is claimed 
under 35 U.S.C. 120, 121 or 365(c). See paragraph (d) of this section 
for the filing of a continuation or divisional application without the 
submission of a newly executed oath or declaration or a copy of the 
oath or declaration for the most immediate prior national application 
for which priority is claimed under 35 U.S.C. 120, 121 or 365(c).
    (A) The copy of the executed or unexecuted oath or declaration for 
the most immediate prior national application for which priority is 
claimed under 35 U.S.C. 120, 121 or 365(c) must be accompanied by a 
statement requesting the deletion of the names of the person or persons 
who are not inventors in the continuation or divisional application.
    (B) Where the power of attorney or correspondence address was 
changed during the prosecution of the prior application, the change in 
power of attorney or correspondence address must be identified in the 
continuation or divisional application.
    (ii) A newly executed oath or declaration must be filed in a 
continuation or divisional application naming an inventor not named in 
the prior application. A newly executed oath or declaration must be 
filed in a continuation-in-part application, which application may name 
all, more, or less than all of the inventors named in the prior 
application.
    (iii) The inventorship of an application is set forth in the oath 
or declaration that is executed in accordance with Sec. 1.63.<
    (2) The filing date of a provisional application is the date on 
which: A specification as prescribed by 35 U.S.C. 112, first paragraph; 
and any drawing required by Sec. 1.81(a), are filed in the Patent and 
Trademark Office [in the name of the actual inventor or inventors as 
required by Sec. 1.41]. No amendment, other than to make the 
provisional application comply with all applicable regulations, may be 
made to the provisional application after the filing date of the 
provisional application. [If all the names of the actual inventor or 
inventors are not supplied when the specification and any required 
drawing are filed, the provisional application will not be given a 
filing date earlier than the date upon which the names are supplied 
unless a petition with the fee set forth in Sec. 1.17(q) is filed which 
sets forth the reasons the delay in supplying the names should be 
excused.]
    (i) A provisional application must also include a cover sheet 
identifying the application as a provisional application. Otherwise, 
the application will be treated as an application filed under 
>paragraph (b)(1) of this section< [Sec. 1.53(b)(1)].
    (ii) An application for patent filed under >paragraph (b)(1) of 
this section< [Sec. 1.53(b)(1)] may be [treated as] >converted to< a 
provisional application and be accorded the original filing date 
provided that a petition requesting the conversion, with the fee set 
forth in Sec. 1.17(q), is filed prior to the earlier of the abandonment 
of the [Sec. 1.53(b)(1)] application >under paragraph (b)(1) of this 
section<, the payment of the issue fee, the expiration of 12 months 
after the filing date of the [Sec. 1.53(b)(1)] application >under 
paragraph (b)(1) of this section<, or the filing of a request for a 
statutory invention registration under Sec. 1.293. The grant of any 
such petition will not entitle applicant to a refund of the fees which 
were properly paid in the application filed under >paragraph (b)(1) of 
this section< [Sec. 1.53(b)(1)].
    (iii) A provisional application shall not be entitled to the right 
of priority under Sec. 1.55 or 35 U.S.C. 119 or 365(a) or to the 
benefit of an earlier filing date under Sec. 1.78 or 35 U.S.C. 120, 121 
or 365(c) of any other application. No claim for priority under 
Sec. 1.78(a)(3) may be made in a design application based on a 
provisional application. No request under Sec. 1.293 for a statutory 
invention registration may be filed in a provisional application. The 
requirements of Secs. 1.821 through 1.825 regarding application 
disclosures containing nucleotide and/or amino acid sequences are not 
mandatory for provisional applications.
    >(3) In a nonprovisional application that is complete as defined by 
Sec. 1.51(a)(1) and filed on or after June 8, 1995, a continuation or 
divisional application that discloses and claims only subject matter 
disclosed in and names as inventors the same or less than all the 
inventors named in that prior complete application may be filed as a 
continued prosecution application under this paragraph. The filing date 
of a continued prosecution application is the date on which a request 
for an application under this paragraph including identification of the 
prior application number is filed.
    (i) An application filed under this paragraph:
    (A) Will utilize the file jacket and contents of the prior 
application, including the specification, drawings and oath or 
declaration, from the prior complete application (Sec. 1.51(a)) to 
constitute the new application, and will be assigned the application 
number of the prior application for identification purposes,
    (B) Is a request to expressly abandon the prior application as of 
the filing date of the request for an application under this paragraph, 
and
    (C) Must be filed before the payment of the issue fee, abandonment 
of, or termination of proceedings on the prior application, or after 
payment of the

[[Page 49849]]

issue fee if a petition under Sec. 1.313(b)(5) is granted in the prior 
application.
    (ii) The filing fee for a continued prosecution application filed 
under this paragraph is:
    (A) The basic filing fee as set forth in Sec. 1.16(a), and
    (B) Any additional Sec. 1.16 fee due based on the number of claims 
remaining in the application after entry of any amendment accompanying 
the request for an application under this paragraph and entry of any 
amendments under Sec. 1.116 unentered in the prior application which 
applicant has requested to be entered in the continued prosecution 
application.
    (iii) If an application filed under this paragraph is filed by less 
than all the inventors named in the prior application, a statement must 
accompany the application when filed requesting deletion of the names 
of the person or persons who are not inventors of the invention being 
claimed in the new application.
    (iv) Any new change must be made in the form of an amendment to the 
prior application. Any new specification filed with the request for an 
application under this paragraph will not be considered part of the 
original application papers, but will be treated as a substitute 
specification in accordance with Sec. 1.125.
    (v) The filing of a continued prosecution application under this 
paragraph 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 
application filed under the provisions of this paragraph may be given 
similar access to, or similar information concerning, the other 
application(s) in the file jacket.
    (vi) In addition to identifying the application number of the prior 
application, applicant is urged to furnish in the request for an 
application under this paragraph the following information relating to 
the prior application to the best of his or her ability:
    (A) Title of invention;
    (B) Name of applicant(s);
    (C) Correspondence address;
    (D) Identification of any priority claim under 35 U.S.C. 119, 120 
and 121.
    (vii) Envelopes containing only requests and fees for filing an 
application under this paragraph should be marked ``Box CPA.''<
    (c)>(1) If any application filed under paragraph (b) of this 
section is found to be incomplete or improper, applicant will be so 
notified and given a time period within which to correct the filing 
error.
    (2) Any request for review of a notification pursuant to paragraph 
(c)(1) of this section, or a notification that the original application 
papers lack a portion of the specification or drawing(s), must be by 
way of a petition pursuant to this paragraph. Any petition under this 
paragraph must be accompanied by the fee set forth in Sec. 1.17(i) in 
an application filed under paragraphs (b)(1) or (b)(3) of this section, 
and the fee set forth in Sec. 1.17(q) in an application filed under 
paragraph (b)(2) of this section. In the absence of a timely 
(Sec. 1.181(f)) petition pursuant to this paragraph, the filing date of 
an application in which the applicant was notified of a filing error 
pursuant to paragraph (c)(1) of this section will be the date the 
filing error is corrected.
    (3) If an applicant is notified of a filing error pursuant to 
paragraph (c)(1) of this section, but fails to correct the filing error 
within the given time period or otherwise timely (Sec. 1.181(f)) take 
action pursuant to paragraph (c)(2) of this section, proceedings in the 
application will be considered terminated. Where proceedings in an 
application are terminated pursuant to this paragraph, the application 
may be returned or otherwise disposed of, and any filing fees, less the 
handling fee set forth in Sec. 1.21(n), will be refunded.< [If any 
application is filed without the specification, drawing or name, or 
names, of the actual inventor or inventors required by paragraph (b)(1) 
or (b)(2) of this section, applicant will be so notified and given a 
time period within which to submit the omitted specification, drawing, 
name, or names, of the actual inventor, or inventors, in order to 
obtain a filing date as of the date of filing of such submission. A 
copy of the ``Notice of Incomplete Application'' form notifying the 
applicant should accompany any response thereto submitted to the 
Office. If the omission is not corrected within the time period set, 
the application will be returned or otherwise disposed of; the fee, if 
submitted, will be refunded less the handling fee set forth in 
Sec. 1.21(n). Any request for review of a refusal to accord an 
application a filing date must be by way of a petition accompanied by 
the fee set forth in Sec. 1.17(i), if the application was filed under 
Sec. 1.53(b)(1), or by the fee set forth in Sec. 1.17(q), if the 
application was filed under Sec. 1.53(b)(2).]
    (d)(1) If an application which has been accorded a filing date 
pursuant to [paragraph] >paragraphs< (b)(1) >or (b)(3)< of this section 
>, including a continuation, divisional, or continuation-in-part 
application,< does not include the appropriate filing fee or an oath or 
declaration by the applicant [,] >pursuant to Secs. 1.63 or 1.175, 
which may be a copy of the executed oath or declaration filed to 
complete, pursuant to Sec. 1.51(a)(1), the most immediate prior 
national application for which priority is claimed under 35 U.S.C. 120, 
121 or 365(c), or a copy of an unexecuted oath or declaration, and a 
statement that the copy is a true copy of the oath or declaration that 
was subsequently executed and filed to complete (Sec. 1.51(a)(1)) the 
most immediate prior national application for which priority is claimed 
under 35 U.S.C. 120, 121 or 365(c), in a continuation or divisional 
application,< applicant will be so notified, if a correspondence 
address has been provided, given a period of time within which to file 
the fee, oath [,] or declaration and to pay the surcharge as set forth 
in Sec. 1.16(e) in order to prevent abandonment of the application. [A 
copy of the ``Notice to File Missing Parts'' form mailed to applicant 
should accompany any response thereto submitted to the Office.] If the 
required filing fee is not timely paid, or if the processing and 
retention fee set forth in Sec. 1.21(l) is not paid within one year of 
the date of mailing of the notification required by this paragraph, the 
application will be disposed of. No copies will be provided or 
certified by the Office of an application which has been disposed of or 
in which neither the required basic filing fee nor the processing and 
retention fee has been paid. The notification pursuant to this 
paragraph may be made simultaneously with any notification pursuant to 
paragraph (c) of this section. If no correspondence address is included 
in the application, applicant has two months from the filing date to 
file the basic filing fee, oath or declaration and to pay the surcharge 
as set forth in Sec. 1.16(e) in order to prevent abandonment of the 
application; or, if no basic filing fee has been paid, one year from 
the filing date to pay the processing and retention fee set forth in 
Sec. 1.21(l) to prevent disposal of the application.
* * * * *
    18. Section 1.54 is proposed to be amended by revising paragraph 
(b) to read as follows:


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

* * * * *
    (b) Applicant will be informed of the application number and filing 
date by a filing receipt >, unless the application is an application 
filed under Sec. 1.53(b)(3)<.

[[Page 49850]]

    19. Section 1.55 is proposed to be amended revising paragraph (a) 
to read as follows:


Sec. 1.55  Claim for foreign priority.

    (a) An applicant in a nonprovisional application may claim the 
benefit of the filing date of one or more prior foreign applications 
under the conditions specified in 35 U.S.C. 119 (a) through (d) and 
172. The claim to priority need be in no special form and may be made 
by the attorney or agent if the foreign application is referred to in 
the oath or declaration as required by Sec. 1.63. The claim for 
priority and the certified copy of the foreign application specified in 
35 U.S.C. 119(b) must be filed in the case of an interference 
(Sec. 1.630), when necessary to overcome the date of a reference relied 
upon by the examiner, when specifically required by the examiner, and 
in all other cases, before the patent is granted. If the certified copy 
is not in the English language, a translation need not be filed except 
in the case of interference; or when necessary to overcome the date of 
a reference relied upon by the examiner; or specifically required by 
the examiner, in which event an English language translation must be 
filed together with a statement that the translation of the certified 
copy is accurate. [The statement must be a verified statement if made 
by a person not registered to practice before the Patent and Trademark 
Office.]
* * * * *
    20. Section 1.59 is proposed to be revised to read as follows:


Sec. 1.59  >Expungement of information or copy of papers in application 
file< [Papers of application with filing date not to be returned].

    >(a)(1) Information< [Papers] in an application which has received 
a filing date pursuant to Sec. 1.53 will not be >expunged and< returned 
[for any purpose whatever] >, except as provided in paragraph (b) of 
this section<. [If applicants have not preserved copies of the papers, 
the Office will furnish copies at the usual cost of any application in 
which either the required basic filing fee (Sec. 1.16) or, if the 
application was filed under Sec. 1.53(b)(1), the processing and 
retention fee Sec. 1.21(l) has been paid.] See Sec. 1.618 for return of 
unauthorized and improper papers in interferences.
    >(2) Information forming part of the original disclosure, i.e., 
written specification, drawings, claims and any preliminary amendment 
specifically incorporated into an executed oath or declaration under 
Secs. 1.63 and 1.175, will not be expunged from the application file.
    (b) Information, other than what is excluded by paragraph (a)(2) of 
this section, may be requested to be expunged and returned to applicant 
upon petition under this paragraph and payment of the petition fee set 
forth in Sec. 1.17(i). Any petition to expunge and return information 
from an application must establish to the satisfaction of the 
Commissioner that the return of the information is appropriate.
    (c) If applicants have not preserved copies of any application 
papers, the Office will furnish copies upon request, at the usual cost, 
for any application in which either the required basic filing fee 
(Sec. 1.16) or, if the application was filed under Sec. 1.53(b)(1), the 
processing and retention fee (Sec. 1.21(l)) has been paid.<


Sec. 1.60  [Removed and reserved]

    21. Section 1.60 is proposed to be removed and reserved.


Sec. 1.62  [Removed and reserved]

    22. Section 1.62 is proposed to be removed and reserved.
    23. Section 1.63 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.63  Oath or declaration.

    (a) An oath or declaration filed under Sec. 1.51(a)(1)(ii) as a 
part of an application must:
    (1) Be executed in accordance with either Sec. 1.66 or Sec. 1.68;
    (2) Identify the specification to which it is directed;
    (3) Identify each inventor >by: full name, including the family 
name, and at least one given name without abbreviation together with 
any other given name or initial,< and the residence >, post office 
address< and country of citizenship of each inventor; and
    (4) State whether the inventor is a sole or joint inventor of the 
invention claimed.
* * * * *
    24. Section 1.69 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 1.69  Foreign language oaths and declarations.

* * * * *
    (b) Unless the text of any oath or declaration in a language other 
than English is a form provided or approved by the Patent and Trademark 
Office, it must be accompanied by [a verified] >an< English translation 
>together with a statement that the translation is accurate<, except 
that in the case of an oath or declaration filed under Sec. 1.63 the 
translation may be filed in the Office no later than two months from 
the date applicant is notified to file the translation.
    25. Section 1.78 is proposed to be amended by revising paragraph 
(a)(1) as follows:


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

    (a)(1) A nonprovisional application may claim an invention 
disclosed in one or more prior filed copending nonprovisional 
applications or international applications designating the United 
States of America. In order for a nonprovisional application to claim 
the benefit of a prior filed copending nonprovisional application or 
international application designating the United States of America, 
each prior application must name as an inventor at least one inventor 
named in the later filed nonprovisional application and disclose the 
named inventor's invention claimed in at least one claim of the later 
filed nonprovisional application in the manner provided by the first 
paragraph of 35 U.S.C. 112. In addition, each prior application must 
be:
    (i) Complete as set forth in Sec. 1.51(a)(1); or
    (ii) Entitled to a filing date as set forth in Sec. >Sec. < 
1.53(b)(1) >or (b)(3)< [, Sec. 1.60 or Sec. 1.62] and include the basic 
filing fee set forth in Sec. 1.16; or
    (iii) Entitled to a filing date as set forth in Sec. 1.53(b)(1) and 
have paid therein the processing and retention fee set forth in 
Sec. 1.21(l) within the time period set forth in Sec. 1.53(d)(1).
* * * * *
    26. Section 1.84 is proposed to be amended by revising paragraph 
(b) as follows:


Sec. 1.84  Standards for drawings.

* * * * *
    (b) Photographs.
    (1) Black and white. Photographs are not ordinarily permitted in 
utility [and design] applications. However, the Office will accept 
photographs in utility [and design] applications only after >the< 
granting of a petition filed under this paragraph which requests that 
photographs be accepted. Any such petition must include the following:
    (i) The appropriate fee set forth in Sec. 1.17(h); and
    (ii) Three (3) sets of photographs. Photographs must either be 
developed on double weight photographic paper or be permanently mounted 
on bristol board. The photographs must be of sufficient quality so that 
all details in the drawings are reproducible in the printed patent.

[[Page 49851]]

    (2) Color. Color photographs will be accepted in utility patent 
applications if the conditions for accepting color drawings have been 
satisfied. See paragraph (a)(2) of this section.
* * * * *
    27. Section 1.91 is proposed to be revised to read as follows:


Sec. 1.91  Models >and exhibits< not generally required as part of 
application or patent.

    Models >and exhibits< [were once required in all cases admitting a 
model, as a part of the application, and these models became a part of 
the record of the patent. Such models are no longer generally required 
(the description of the invention in the specification, and the 
drawings, must be sufficiently full and complete, and capable of being 
understood, to disclose the invention without the aid of a model), and] 
will not be admitted unless specifically [called for.] >required by the 
Office. A model, working model, or other physical exhibit may be 
required if deemed necessary for any purpose in examination of the 
application.<


Sec. 1.92  [Removed and reserved]

    28. Section 1.92 is proposed to be removed and reserved.
    29. Section 1.97 is proposed to be amended by revising paragraphs 
(c) through (e) to read as follows:


Sec. 1.97  Filing of information disclosure statement.

* * * * *
    (c) An information disclosure statement shall be considered by the 
Office if filed after the period specified in paragraph (b) of this 
section, but before the mailing date of either:
    (1) A final action under Sec. 1.113>;< or
    (2) A notice of allowance under Sec. 1.311, whichever occurs first, 
provided the >information disclosure< statement is accompanied by 
either a [certification] >statement< as specified in paragraph (e) of 
this section or the fee set forth in Sec. 1.17(p).
    (d) An information disclosure statement shall be considered by the 
Office if filed after the mailing date of either:
    >(1) A< [a] final action under Sec. 1.113>;< or
    >(2) A< [a] notice of allowance under Sec. 1.311, whichever occurs 
first, but before payment of the issue fee, provided the >information 
disclosure< statement is accompanied by:
    [(1) >(i)< A [certification] >statement< as specified in paragraph 
(e) of this section,
    [2] >(ii)< A petition requesting consideration of the information 
disclosure statement, and
    [3] >(iii)< The petition fee set forth in Sec. 1.17(i)(1).
    (e) A [certification] >statement< under this section must state 
either:
    (1) That each item of information contained in the information 
disclosure statement was cited in a communication from a foreign patent 
office in a counterpart foreign application not more than three months 
prior to the filing of the >information disclosure< statement [,] >;< 
or
    (2) That no item of information contained in the information 
disclosure statement was cited in a communication from a foreign patent 
office in a counterpart foreign application [or] >and<, to the 
knowledge of the person signing the [certification] >statement< after 
making reasonable inquiry, was known to any individual designated in 
Sec. 1.56(c) more than three months prior to the filing of the 
>information disclosure< statement.
* * * * *


Sec. 1.101  [Removed and reserved]

    30. Section 1.101 is proposed to be removed and reserved.
    31. Section 1.102 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.102  Advancement of examination.

    (a) Applications will not be advanced out of turn for examination 
or for further action except as provided by this part, or upon order of 
the Commissioner to expedite the business of the Office, or upon filing 
of a request under paragraph (b) of this section or upon filing a 
petition under paragraphs (c) or (d) of this section with a [verified] 
showing which, in the opinion of the Commissioner, will justify so 
advancing it.
* * * * *
    32. Section 1.103 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.103  Suspension of action.

    (a) Suspension of action by the Office will be granted for good and 
sufficient cause and for a reasonable time specified upon petition by 
the applicant and, if such cause is not the fault of the Office, the 
payment of the fee set forth in Sec. 1.17(i)(1). Action will not be 
suspended when a >reply< [response] by the applicant to an Office 
action is required.
* * * * *


Sec. 1.104  [Removed and reserved].

    33. Section 1.104 is proposed to be removed and reserved.


Sec. 1.105  [Removed and reserved].

    34. Section 1.105 is proposed to be removed and reserved.


Sec. 1.108  [Removed and reserved].

    35. Section 1.108 is proposed to be removed and reserved.
    36. Section 1.111 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 1.111  Reply by applicant or patent owner.

* * * * *
    (b) In order to be entitled to reconsideration or further 
examination, the applicant or patent owner must [make request therefor 
in writing] >reply<. The reply by the applicant or patent owner must 
>be reduced to a writing which< distinctly and specifically [point] 
>points< out the supposed errors in the examiner's action and must 
[respond] >reply< to every ground of objection and rejection in the 
prior Office action. >The reply must present arguments pointing out the 
specific distinctions believed to render the claims, including any 
newly presented claims, patentable over the applied references.< If the 
reply is with respect to an application, a request may be made that 
objections or requirements as to form not necessary to further 
consideration of the claims be held in abeyance until allowable subject 
matter is indicated. The applicant's or patent owner's reply must 
appear throughout to be a bona fide attempt to advance the case to 
final action. A general allegation that the claims define a patentable 
invention without specifically pointing out how the language of the 
claims patentably distinguishes them from the references does not 
comply with the requirements of this section.
* * * * *
    37. Section 1.112 is proposed to be revised to read as follows:


Sec. 1.112  Reconsideration >before final action<.

    After [response] >reply< by applicant or patent owner (Sec. 1.111) 
>to a non-final action<, the application or patent under reexamination 
will be reconsidered and again examined. The applicant or patent owner 
will be notified if claims are rejected, or objections or requirements 
made, in the same manner as after the first examination. Applicant or 
patent owner may [respond] >reply< to such Office action in the same 
manner provided in Sec. 1.111, with or without amendment. [Any 
amendments after the second Office action must ordinarily be restricted 
to the rejection or to the objections or requirements made. The 
application or patent under

[[Page 49852]]

reexamination will be again considered, and so on repeatedly, unless 
the examiner has indicated that the action is final.]
    38. Section 1.113 is proposed to be revised to read as follows:


Sec. 1.113  Final rejection or action.

    (a) On the second or any subsequent examination or consideration 
>by the examiner< the rejection or other action may be made final, 
whereupon applicant's or patent owner's >reply< [response] is limited 
to appeal in the case of rejection of any claim (Sec. 1.191), or to 
amendment as specified in Sec. 1.116. Petition may be taken to the 
Commissioner in the case of objections or requirements not involved in 
the rejection of any claim (Sec. 1.181). >Reply< [Response] to a final 
rejection or action must include cancellation of, or appeal from the 
rejection of, each rejected claim. If any claim stands allowed, the 
>reply< [response] to a final rejection or action must comply with any 
requirements or objections >as< to form.
    (b) In making such final rejection, the examiner shall repeat or 
state all grounds of rejection then considered applicable to the claims 
in the case, clearly stating the reasons >in support thereof< 
[therefor].
    >(c) The first action in an application will not be made final.<
    39. Section 1.115 is proposed to be revised to read as follows:


Sec. 1.115  Amendment.

    [The applicant may amend before or after the first examination and 
action and also after the second or subsequent examination or 
reconsideration as specified in 1.112 or when and as specifically 
required by the examiner. The patent owner may amend in accordance with 
1.510(e) and 1.530(b) prior to reexamination and during reexamination 
proceedings in accordance with 1.112 and 1.116.]
    >(a) The applicant or the patent owner may amend the disclosure 
(e.g., specification, claims, drawings and abstract) of an application 
before final action as indicated in Sec. 1.121, except for 
nonprovisional applications which are subject to Sec. 1.53(b)(2). The 
patent owner may amend the patent in a reexamination proceeding in 
accordance with Sec. Sec. 1.510(e) and 1.530(d).
    (b)(1) No amendment shall introduce new matter into the disclosure 
of an application.
    (2) If it is determined that an amendment filed after the filing 
date of the application introduces new matter into the disclosure, the 
claims containing the new matter will be rejected and deletion of the 
new matter in the description and drawings will be required.
    (c) Claims may be amended by canceling particular claims, by 
presenting new claims, or by rewriting particular claims as indicated 
in Sec. 1.121(b). If an amendment is in reply to an Office action note 
Sec. 1.111.
    (d) The disclosure must be amended when required to correct 
inaccuracies of description and definition, and to secure 
correspondence between the claims, the specification, and the drawing.
    (e) No amendment to the drawing may be made except with permission 
of the Office. Permissible changes in the construction shown in any 
drawing may be made only by the submission of a substitute drawing by 
applicant. A sketch in permanent ink showing proposed changes in red, 
to become part of the record, must be filed for approval by the 
examiner and should be in a separate paper.
    (f) To amend a clause that was previously amended, the clause 
should be wholly rewritten so that no interlineations or deletions 
shall appear in the clause as finally presented. Matter canceled by 
amendment can be reinstated only by a subsequent amendment presenting 
the canceled matter as a new insertion.<
    40. Section 1.116 is proposed to be amended by revising paragraphs 
(a) and (b) to read as follows:


Sec. 1.116   Amendments after final action.

    (a) After >a< final rejection or >other final< action (Sec. 1.113) 
>,< amendments >are limited to< [may be made] cancelling claims or 
complying with any requirement of form >expressly set forth in a 
previous Office action.< [which has been made. Amendments presenting 
rejected claims in better form for consideration on appeal may be 
admitted.] The admission of, or refusal to admit, any amendment after 
final rejection, and any >related< proceedings [relative thereto], 
shall not operate to relieve the application or patent under 
reexamination from its condition as subject to appeal or to save the 
application from abandonment under Sec. 1.135.
    (b) >Any amendment not in compliance with paragraph (a) of this 
section must be submitted with a request for an application under 
Sec. 1.53(b)(3) to ensure its consideration.< [If amendments touching 
the merits of the application or patent under reexamination are 
presented after final rejection, or after appeal has been taken, or 
when such amendment might not otherwise be proper, they may be admitted 
upon a showing of good and sufficient reasons why they are necessary 
and were not earlier presented.]
* * * * *


Sec. 1.117   [Removed and reserved]

    41. Section 1.117 is proposed to be removed and reserved


Sec. 1.118   [Removed and reserved]

    42. Section 1.118 is proposed to be removed and reserved


Sec. 1.119   [Removed and reserved]

    43. Section 1.119 is proposed to be removed and reserved
    44. Section 1.121 is proposed to be revised to read as follows:


Sec. 1.121   Manner of making amendments.

    [(a) Erasures, additions, insertions, or alterations of the Office 
file of papers and records must not be physically entered by the 
applicant. Amendments to the application (excluding the claims) are 
made by filing a paper (which should conform to Sec. 1.52) directing or 
requesting that specified amendments be made. The exact word or words 
to be stricken out or inserted by said amendment must be specified and 
the precise point indicated where the deletion or insertion is to be 
made.
    (b) Except as otherwise provided herein, a particular claim may be 
amended only by directions to cancel or by rewriting such claim with 
underlining below the word or words added and brackets around the word 
or words deleted. The rewriting of a claim in this form will be 
construed as directing the cancellation of the original claim; however, 
the original claim number followed by the parenthetical word must be 
used for the rewritten claim. If a previously rewritten claim is 
rewritten, underlining and bracketing will be applied in reference to 
the previously rewritten claim with the parenthetical expression 
``twice amended,'' ``three times amended,'' etc., following the 
original claim number.
    (c) A particular claim may be amended in the manner indicated for 
the application in paragraph (a) of this section to the extent of 
corrections in spelling, punctuation, and typographical errors. 
Additional amendments in this manner will be admitted provided the 
changes are limited to (1) deletions and/or (2) the addition of no more 
than five words in any one claim. Any amendment submitted with 
instructions to amend particular claims but failing to conform to the 
provisions of paragraphs (b) and (c) of this section may be considered 
nonresponsive and treated accordingly.
    (d) Where underlining or brackets are intended to appear in the 
printed patent

[[Page 49853]]

or are properly part of the claimed material and not intended as 
symbolic of changes in the particular claim, amendment by rewriting in 
accordance with paragraph (b) of this section shall be prohibited.
    (e) In reissue applications, both the descriptive portion and the 
claims are to be amended by either (1) submitting a copy of a portion 
of the description or an entire claim with all matter to be deleted 
from the patent being placed between brackets and all matter to be 
added to the patent being underlined, or (2) indicating the exact word 
or words to be stricken out or inserted and the precise point where the 
deletion or insertion is to be made. Any word or words to be inserted 
must be underlined. See 1.173.
    (f) Proposed amendments presented in patents involved in 
reexamination proceedings must be presented in the form of a full copy 
of the text of: (1) Each claim which is amended and (2) each paragraph 
of the description which is amended. Matter deleted from the patent 
shall be placed between brackets and matter added shall be underlined. 
Copies of the printed claims from the patent may be used with any 
additions being indicated by carets and deleted material being placed 
between brackets. Claims must not be renumbered and the numbering of 
the claims added for reexamination must follow the number of the 
highest numbered patent claim. No amendment may enlarge the scope of 
the claims of the patent. No new matter may be introduced into the 
patent.]
    >(a) Amendments in non-reissue applications: Amendments in 
applications excluding reissue applications are made by filing a paper, 
in compliance with Sec. 1.52, directing that specified amendments be 
made.
    (1) Specification other than claims: Amendments to the 
specification other than claims may only be made as follows:
    (i) The precise point in the specification must be indicated where 
an amendment is to be made.
    (ii) If the only changes to the specification are deletions, 
amendments may only be made by precise directions to delete.
    (iii) Except as provided by paragraph (a)(1)(ii) of this section, 
amendments must be made by submission of a copy of the rewritten 
sentence(s), paragraph(s) and/or page(s) with marking pursuant to 
paragraph (a)(1)(iv) of this section.
    (iv) Underlining below the subject matter added and brackets around 
the subject matter deleted are to be used to mark the amendments being 
made. If a previously rewritten sentence(s), paragraph(s) or page(s) is 
again rewritten, marking will be applied in reference to the 
sentence(s), paragraph(s) or page(s) as previously rewritten.
    (2) Claims: Amendments to the claims may only be made as follows:
    (i)(A) A claim may be cancelled by a direction to cancel the claim 
or by omitting the claim when submitting a complete copy of all pending 
claims as required by (a)(2)(ii) of this section.
    (B) A previously submitted claim may only be amended, other than by 
cancellation pursuant to paragraph (a)(2)(i)(A) of this section, by 
submitting a copy of the claim completely rewritten with markings, 
pursuant to paragraph (a)(2)(iii) of this section, of the subject 
matter added and/or deleted. The rewriting of a claim in this form will 
be construed as directing that the rewritten claim be a replacement for 
the previously submitted claim; however, the previously submitted claim 
number followed by the parenthetical word ``amended'' must be used for 
the rewritten claim.
    (C) A new claim may only be added by submitting a clean copy of the 
new claim. The numbering of any new claims added must follow the number 
of the highest numbered previously submitted claim.
    (ii) Whenever a previously submitted claim is amended by rewriting 
pursuant to paragraph (a)(2)(i)(B) of this section or a new claim is 
added pursuant to paragraph (a)(2)(i)(C) of this section, applicant 
must submit a separate complete copy of all pending claims. Such 
separate complete copy must include all newly rewritten, all newly 
added, all previously rewritten claims that are still pending, and any 
unamended claims that are still pending. For all claims, other than 
those claims being newly rewritten, the copy must be submitted in clean 
form without markings as to previous amendments.
    (iii) Underlining below the subject matter added and brackets 
around the subject matter deleted relative to the previously submitted 
claim are to be used to mark the amendments being made. If a previously 
rewritten claim is again rewritten, marking will be applied in 
reference to the claim as previously rewritten, and the parenthetical 
expression will be ``twice amended,'' ``three times amended,'' etc., 
following the original claim number.
    (iv) The failure to include a copy of any previously submitted 
claim with the separate complete copy of all pending claims required by 
paragraph (a)(2)(ii) of this section will be construed as a direction 
to cancel that claim.
    (3) Drawings: Amendments to the original application drawings are 
not permitted. Any change to the application drawings must be by way of 
a substitute sheet of drawings for each sheet changed submitted in 
compliance with Sec. 1.84.
    (4) Any amendment to an application that is present in a substitute 
specification submitted pursuant to Sec. 1.125 must be presented under 
the provisions of Sec. 1.121(a)(1) either prior to or concurrent with 
submission of the substitute specification.
    (b) Amendments in reissue applications: Amendments in reissue 
applications are made by filing a paper, in compliance with Sec. 1.52, 
directing that specified amendments be made.
    (1) Specification other than claims: Amendments to the 
specification other than claims may only be made as follows:
    (i) The precise point in the specification must be indicated where 
an amendment is to be made.
    (ii) Amendments must be made by submission of the entire text of 
the rewritten paragraph(s) with markings pursuant to paragraph 
(b)(1)(iv) of this section.
    (iii) Each submission of an amendment to the specification must 
include all amendments to the specification relative to the patent as 
of the date of the submission. This would include amendments to the 
specification of the patent submitted for the first time as well as any 
previously submitted amendments that are still desired. Any previously 
submitted amendments to the specification that are no longer desired 
must not be included in the submission.
    (iv) Underlining below the subject matter added to the patent and 
brackets around the subject matter deleted from the patent are to be 
used to mark the amendments being made.
    (2) Claims: Amendments to the claims are made as follows:
    (i)(A) The amendment must include the entire text of each patent 
claim which is amended and of each added claim with marking pursuant to 
paragraph (b)(2)(i)(C), of this section except a patent claim should be 
cancelled by a statement cancelling the patent claim without 
presentation of the text of the patent claim.
    (B) Patent claims must not be renumbered and the numbering of any 
claims added to the patent must follow the number of the highest 
numbered patent claim.
    (C) Underlining below the subject matter added to the patent and 
brackets around the subject matter deleted from the patent are to be 
used to mark the

[[Page 49854]]

amendments being made. If a claim is amended pursuant to paragraph 
(b)(2)(i)(A) of this section, a parenthetical expression ``amended,'' 
``twice amended,'' etc., should follow the original claim number.
    (ii) Each amendment submission must set forth the status, as of the 
date of the amendment, of all patent claims and of all added claims.
    (iii) Each amendment when originally submitted must be accompanied 
by an explanation of the support in the disclosure of the patent for 
the amendment along with any additional comments on page(s) separate 
from the page(s) containing the amendment.
    (iv) Each submission of an amendment to any claim (patent claims 
and all added claims) must include all pending amendments to the claims 
as of the date of the submission. This would include amendments to the 
claims submitted for the first time as well as any previously submitted 
amendments to the claims that are still desired. Any previously 
submitted amendments to the claims that are no longer desired must not 
be included in the submission. A copy of any patent claims that have 
not been amended are not to be presented with each amendment 
submission.
    (v) The failure to submit a copy of any added claim, as required by 
paragraph (b)(2)(iv) of this section, will be construed as a direction 
to cancel that claim.
    (vi) No reissue patent shall be granted enlarging the scope of the 
claims of the original patent unless applied for within two years from 
the grant of the original patent, pursuant to 35 U.S.C. 251. No 
amendment to the patent claims may introduce new matter or be made in 
an expired patent.
    (3) Drawings: Amendments to the original patent drawings are not 
permitted. Any change to the patent drawings must be by way of a new 
sheet of drawings with the amended figures identified as ``amended'' 
and with added figures identified as ``new'' for each sheet changed 
submitted in compliance with Sec. 1.84.
    (c) Amendments in reexamination proceedings: Any proposed amendment 
to the description and claims in patents involved in reexamination 
proceedings must be made in accordance with Sec. 1.530.<


Sec. 1.122  [Removed and reserved]

    45. Section 1.122 is proposed to be removed and reserved.


Sec. 1.123  [Removed and reserved]

    46. Section 1.123 is proposed to be removed and reserved.


Sec. 1.124  [Removed and reserved]

    47. Section 1.124 is proposed to be removed and reserved.


Sec. 1.125  Substitute specification.

    48. Section 1.125 is proposed to be revised as follows:
    >(a)< If the number or nature of the amendments > or the legibility 
of the specification< [shall] render it difficult to [consider the 
case, or to arrange the papers for printing or copying] >process an 
application<, the Office may require the entire specification, 
including the claims, or any part thereof, to be rewritten in clean 
form incorporating all amendments.
    >(b)< A substitute specification for an application other than a 
reissue application may [not be accepted unless it has been required by 
the examiner or unless it is clear to the examiner that acceptance of a 
substitute specification would facilitate processing of the 
application. Any substitute specification] >be< filed [must be] >at any 
point up to payment of the issue fee if it is< accompanied by a 
statement that the substitute specification>:
    (1)< includes no new matter >, and
    (2) includes only amendments submitted in accordance with the 
requirements of Sec. 1.121(a) either prior to or concurrent with 
submission of the substitute specification<. [Such statement must be a 
verified statement if made by a person not registered to practice 
before the Office.].
    >(c) A substitute specification submitted under this section must 
be submitted in clean form without markings as to amended material.
    (d) A substitute specification under this section is not permitted 
in reissue applications or in reexamination proceedings.<
    49. Section 1.133 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 1.133  Interviews.

* * * * *
    (b) In every instance where reconsideration is requested in view of 
an interview with an examiner, a complete written statement of the 
reasons presented at the interview as warranting favorable action must 
be filed by the applicant. An interview does not remove the necessity 
for >reply< [response] to Office actions as specified in Sec. 1.111, 
Sec. 1.135.
    50. The undesignated center heading in Subpart B-National 
processing Provisions, following Sec. 1.133 is proposed to be revised 
to read as follows:

Time for >Reply< [Response] by Applicant; Abandonment of Application

    51. Section 1.134 is proposed to be revised as follows:


Sec. 1.134  Time period for >reply< [response] to an Office action.

    An Office action will notify the applicant of any non-statutory or 
shortened statutory time period set for >reply< [response] to an Office 
action. Unless the applicant is notified in writing that [response] >a 
reply< is required in less than six months, a maximum period of six 
months is allowed.
    52. Section 1.135 is proposed to be revised to read as follows:


Sec. 1.135  Abandonment for failure to >reply< [respond] within time 
period.

    (a) If an applicant of a patent application fails to >reply< 
[respond] within the time period provided under Sec. 1.134 and 
Sec. 1.136, the application will become abandoned unless an Office 
action indicates otherwise.
    (b) Prosecution of an application to save it from abandonment 
pursuant to paragraph (a) of this section must include such complete 
and proper action as the condition of the case may require. The 
admission of >, or refusal to admit, any amendment after final 
rejection, and any related proceedings,< an amendment not responsive to 
the last Office action, or refusal to admit the same, and any 
proceedings relative thereto, shall not operate to save the application 
from abandonment.
    (c) When action by the applicant is a bona fide attempt to >reply< 
[respond] and to advance the case to final action, and is substantially 
a complete [response] >reply< to the >non-final< Office action, but 
consideration of some matter or compliance with some requirement has 
been inadvertently omitted, >applicant< [opportunity to explain and 
supply the omission] may be given >a new time period for reply under 
Sec. 1.134 to supply the omission or to file a continuing application< 
[before the question of abandonment is considered].
    53. Section 1.136 is proposed to be amended by revising the heading 
and paragraph (a) to read as follows:


Sec. 1.136  Filing of timely >replies< [responses] with petition and 
fee for extension of time and extensions of time for cause.

    (a)(1) If an applicant is required to >reply< [respond] within a 
nonstatutory or shortened statutory time period, applicant may >reply< 
[respond] up to [four] >five< months after the time

[[Page 49855]]

period set >and within the statutory period, if applicable,< if a 
petition for an extension of time and the fee set in Sec. 1.17>(a)< are 
filed [prior to or with the response], unless:
    (i) Applicant is notified otherwise in an Office action,
    (ii) The >reply< [response] is a reply brief submitted pursuant to 
Sec. 1.193(b),
    (iii) The >reply< [response] is a request for an oral hearing 
submitted pursuant to Sec. 1.194(b),
    (iv) The >reply< [response] is to a decision by the Board of Patent 
Appeals and Interferences pursuant to Sec. 1.196, Sec. 1.197 or 
Sec. 1.304, or
    (v) The application is involved in an interference declared 
pursuant to Sec. 1.611.
    (2) The date on which the [response, the] petition [,] and the fee 
have been filed is the date [of the response and also the date] for 
purposes of determining the period of extension and the corresponding 
amount of the fee. The expiration of the time period is determined by 
the amount of the fee paid. >A reply must be filed prior to the 
expiration of the period of extension to avoid abandonment of the 
application (Sec. 1.135), but in< [In] no case may an applicant >reply< 
[respond] later than the maximum time period set by statute, or be 
granted an extension of time under paragraph (b) of this section when 
the provisions of this paragraph are available. See Sec. 1.136(b) for 
extensions of time relating to proceedings pursuant to Secs. 1.193(b), 
1.194, 1.196 or 1.197. See Sec. 1.304 for extension of time to appeal 
to the U.S. Court of Appeals for the Federal Circuit or to commence a 
civil action. See Sec. 1.550(c) for extension of time in reexamination 
proceedings and Sec. 1.645 for extension of time in interference 
proceedings.
    >(3) A paper may be submitted in an application with an 
authorization to treat any concurrent or future reply requiring a 
petition for an extension of time under paragraph (a) of this section 
for its timely submission as incorporating such petition for the 
appropriate length of time. An authorization to charge all required 
fees, fees under Sec. 1.17, or all required extension of time fees will 
be treated as a constructive petition for an extension of time in any 
concurrent or future reply requiring a petition for an extension of 
time under paragraph (a) of this section for its timely submission.<
* * * * *
    54. Section 1.137 is proposed to be revised to read as follows:


Sec. 1.137  Revival of abandoned application >or lapsed patent<.

    (a) An >abandoned< application [abandoned for failure to prosecute] 
may be revived as a pending application >or a lapsed patent may be 
revived as a patent< if it is shown to the satisfaction of the 
Commissioner that the delay >in prosecution or payment of any portion 
of the required issue fee< was unavoidable. A petition to revive an 
>unavoidably< abandoned application >or unavoidably lapsed patent< must 
be [promptly filed after the applicant is notified of, or otherwise 
becomes aware of, the abandonment, and must be] accompanied by:
    [(1) A proposed response to continue prosecution of that 
application, or the filing of a continuing application, unless either 
has been previously filed;]
    >(1) The required reply, unless previously filed. In a 
nonprovisional application abandoned for failure to prosecute, the 
proposed reply requirement may be met by the filing of a continuing 
application. In an abandoned application or a lapsed patent, for 
failure to pay any portion of the required issue fee, the proposed 
reply must be the issue fee or any outstanding balance thereof;<
    (2) The petition fee as set forth in Sec. 1.17(l); [and]
    (3) A showing that the delay was unavoidable >and that the petition 
was promptly filed after the applicant was notified of, or otherwise 
became aware of, the abandonment or lapse; and< [The showing must be a 
verified showing if made by a person not registered to practice before 
the Patent and Trademark Office.]
    >(4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d)) 
required pursuant to paragraph (c) of this section.<
    (b) An >abandoned< application [unintentionally abandoned for 
failure to prosecute] may be revived as a pending application >or 
lapsed patent may be revived as a patent< if the delay >in prosecution 
or payment of any portion of the required issue fee< was unintentional. 
A petition to revive an unintentionally abandoned application >or 
lapsed patent< must be >accompanied by<:
    >(1) The required reply, unless previously filed. In a 
nonprovisional application abandoned for failure to prosecute, the 
proposed reply requirement may be met by the filing of a continuing 
application. In an abandoned application or a lapsed patent, for 
failure to pay any portion of the required issue fee, the proposed 
reply must be the issue fee or any outstanding balance thereof;<
    [(1) Accompanied by a proposed response to continue prosecution of 
that application, or filing of a continuing application, unless either 
has been previously filed;]
    (2) [Accompanied by the] The petition fee as set forth in 
Sec. 1.17(m);
    (3) [Accompanied by a] A statement that the delay was 
unintentional. [The statement must be a verified statement if made by a 
person not registered to practice before the Patent and Trademark 
Office.] The Commissioner may require additional information where 
there is a question whether the delay was unintentional; and
    (4) >Any terminal disclaimer (and fee as set forth in Sec. 1.20(d)) 
required pursuant to paragraph (c) of this section.< [Filed either:
    (i) Within one year of the date on which the application became 
abandoned; or
    (ii) Within three months of the date of the first decision on a 
petition to revive under paragraph (a) of this section which was filed 
within one year of the date on which the application became abandoned.]
    (c) >In all design applications and in all nonprovisional utility 
or plant applications filed before June 8, 1995< [In all applications 
filed before June 8, 1995, and all design applications filed on or 
after June 8, 1995], any petition pursuant to [paragraph (a) of] this 
section [not filed within six months of the date of abandonment of the 
application,] must be accompanied by a terminal disclaimer with fee 
under Sec. 1.321 dedicating to the public a terminal part of the term 
of any patent granted thereon equivalent to the period of abandonment 
of the application. The terminal disclaimer must also apply to any 
patent granted on any continuing application entitled under 35 U.S.C. 
120 to the benefit of the filing date of the application for which 
revival is sought.
    (d) Any request for reconsideration or review of a decision 
refusing to revive an >abandoned< application >or lapsed patent< upon 
petition filed pursuant to paragraphs (a) or (b) of this section, to be 
considered timely, must be filed within two months of the decision 
refusing to revive or within such time as set in the decision.
    (e) The time periods set forth in this section [cannot be extended, 
except that the three-month period set forth in paragraph (b)(4)(ii) 
and the time period set forth in paragraph (d) of this section] may be 
extended under the provisions of Sec. 1.136.
    >(f) A provisional application, abandoned for failure to timely 
reply to an Office requirement, may be revived pursuant to paragraphs 
(a) or (b) this

[[Page 49856]]

section so as to be pending for a period of no longer than twelve 
months from its filing date. Under no circumstances will a provisional 
application be regarded as pending after twelve months from its filing 
date.<


Sec. 1.139   [Removed and reserved]

    55. Section 1.139 is proposed to be removed and reserved.
    56. Section 1.142 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.142   Requirement for restriction.

    (a) If two or more independent and distinct inventions are claimed 
in a single application, the examiner in [his] >an Office< action shall 
require the applicant in [his] >a reply< [response] to that action to 
elect [that] >an< invention to which [his] >the< [claim] >claims< shall 
be restricted, this official action being called a requirement for 
restriction (also known as a requirement for division). [If the 
distinctness and independence of the inventions be clear, such] >Such< 
requirement will >normally< be made before any action on the merits; 
however, it may be made at any time before final action [in the case at 
the discretion of the examiner].
* * * * *
    57. Section 1.144 is proposed to be revised to read as follows:


Sec. 1.144   Petition from requirement for restriction.

    After a final requirement for restriction, the applicant, in 
addition to making any >reply< [response] due on the remainder of the 
action, may petition the Commissioner to review the requirement. 
Petition may be deferred until after final action on or allowance of 
claims to the invention elected, but must be filed not later than 
appeal. A petition will not be considered if reconsideration of the 
requirement was not requested.
    58. Section 1.146 is proposed to be revised to read as follows:


Sec. 1.146   Election of species.

    In the first action on an application containing a [generic] claim 
>to a generic invention (genus)< and claims [restricted separately to 
each of] >to< more than one >patentably distinct< species embraced 
thereby, the examiner may require the applicant in his >or her reply< 
[response] to that action to elect [that] >a< species of his or her 
invention to which his or her claim shall be restricted if no [generic] 
claim >to the genus< is [held] >found to be< allowable. However, if 
such application contains claims directed to more than a reasonable 
number of species, the examiner may require restriction of the claims 
to not more than a reasonable number of species before taking further 
action in the case.
    59. Section 1.152 is proposed to be revised to read as follows:


Sec. 1.152   Design drawings.

    The design must be represented by a drawing that complies with the 
requirements of Sec. 1.84, and must contain a sufficient number of 
views to constitute a complete disclosure of the appearance of the 
[article] >design<. Appropriate >and adequate< surface shading [must] 
>should< be used to show the character or contour of the surfaces 
represented. Solid black surface shading is not permitted except when 
used to represent >the color black as well as< color contrast. Broken 
lines may be used to show visible environmental structure, but may not 
be used to show hidden planes and surfaces which cannot be seen through 
opaque materials. Alternate positions of a design component, 
illustrated by full and broken lines in the same view are not permitted 
in a design drawing. >Color photographs and color drawings will be 
permitted in design applications only after the granting of a petition 
filed under Sec. 1.84(a)(2).< Photographs and ink drawings must not be 
combined >as formal drawings< in one application. Photographs submitted 
in lieu of ink drawings in design patent applications must comply with 
Sec. 1.84(b) and must not disclose environmental structure but must be 
limited to the design for the article claimed. [Color drawings and 
color photographs are not permitted in design patent applications.]
    60. Section 1.154 is proposed to be amended by revising paragraph 
(a) as follows:


Sec. 1.154   Arrangement of specification.

* * * * *
    (a) Preamble, stating name of the applicant>,< [and] title of the 
designn>, and a brief description of the nature and intended use of the 
article in which the design is embodied<.
* * * * *
    61. Section 1.155 is proposed to be amended by removing paragraphs 
(b) through (f).


Sec. 1.155   Issue and term of design patents.

* * * * *
    (b) [Removed].
    (c) [Removed].
    (d) [Removed].
    (e) [Removed].
    (f) [Removed].
    62. Section 1.163 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 1.163   Specification.

* * * * *
    (b) Two copies of the specification (including the claim) must be 
submitted, but only one signed oath or declaration is required. [The 
second copy of the specification may be a legible carbon copy of the 
original.]
    63. Section 1.165 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.165   Plant drawings.

    (a) Plant patent drawings [should be artistically and competently 
executed and] must comply with the requirements of Sec. 1.84. View 
numbers and reference characters need not be employed unless required 
by the examiner. The drawing must disclose all the distinctive 
characteristics of the plant capable of visual representation.
* * * * *
    64. Section 1.167(b) is proposed to be removed and reserved.


Sec. 1.167   Examination.

* * * * *
    (b) [Reserved].
    65. Section 1.171 is proposed to be revised to read as follows:


Sec. 1.171   Application for reissue.

    An application for reissue must contain the same parts required for 
an application for an original patent, complying with all the rules 
relating thereto except as otherwise provided, and in addition, must 
comply with the requirements of the rules relating to reissue 
applications. [The application must be accompanied by a certified copy 
of an abstract of title or an order for a title report accompanied by 
the fee set forth in Sec. 1.19(b)(4), to be placed in the file, and by 
an offer to surrender the original patent (Sec. 1.178).]
    66. Section 1.172 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.172   Applicants, assignees.

    (a) A reissue oath must be signed and sworn to or declaration made 
by the inventor or inventors except as otherwise provided (see 
Secs. 1.42, 1.43, 1.47), and must be accompanied by the written 
[assent] >consent< of all assignees, if any, owning an undivided 
interest in the patent, but a reissue oath may be made and sworn to or 
declaration made by the assignee of the entire interest if the 
application does not seek to enlarge the scope of the claims of the 
original patent. >All assignees consenting to the reissue must 
establish their ownership interest in the patent to the satisfaction of 
the Commissioner. Ownership is

[[Page 49857]]

established by submitting to the Office documentary evidence of a chain 
of title from the original owner to the assignee or by specifying 
(e.g., reel and frame number, etc.) where such evidence is recorded in 
the Office. Documents submitted to establish ownership may be required 
to be recorded.<
* * * * *
    67. Section 1.175 is proposed to be revised to read as follows:


Sec. 1.175   Reissue oath or declaration.

    (a) [Applicants for reissue,] >The reissue oath or declaration< in 
addition to complying with the requirements of Sec. 1.63, must also 
[file with their applications] >include< [a statement] >statement(s)< 
[under oath or declaration] as follows:
    (1) [When] >That< the applicant [verily] believes the original 
patent to be wholly or partly inoperative or invalid [, stating such 
belief and the reasons why.
    (2) When it is claimed that such patent is so inoperative or 
invalid ``] by reason of a defective specification or drawing, [`` 
particularly specifying such defects.
    (3) When it is claimed that such patent is inoperative or invalid 
``] >or< by reason of the patentee claiming more or less than [he] 
>patentee< had the right to claim in the patent, ['' distinctly 
specifying the excess or insufficiency in the claims.] >and<
    [(4)] [Reserved]
    [(5) Particularly] >(2) stating< [specifying at least one error 
relied upon, and how they arose or occurred] >that all errors being 
corrected in the reissue application up to the time of filing of the 
oath or declaration under this paragraph arose without deceptive 
intention on the part of the applicant<.
    [(6)] >(b)(1) For any error corrected not covered by the oath or 
declaration submitted under paragraph (a) of this section, applicant 
must submit a supplemental oath or declaration< [Stating] >stating< 
that> every such error< [said errors] arose [``] without any deceptive 
intention [''] on the part of the applicant. >Any supplemental oath or 
declaration required by this paragraph must be submitted before 
allowance and may be submitted:
    (i) With any amendment prior to allowance, or
    (ii) In order to overcome a rejection under 35 U.S.C 251 made by 
the examiner where it is indicated that the submission of a 
supplemental oath or declaration as required by this paragraph will 
overcome the rejection.
    (2) For any error sought to be corrected after allowance, a 
supplemental oath or declaration must accompany the requested 
correction stating that the error(s) to be corrected arose without any 
deceptive intention on the part of the applicant.
    (c) Other than as set forth in paragraphs (a)(2) and (b) of this 
section, an oath or declaration under this section need not 
specifically identify the error or errors that are being corrected.<
    [(7) Acknowledging the duty to disclose to the Office all 
information known to applicants to be material to patentability as 
defined in Sec. 1.56.
    (b) Corroborating affidavits or declarations of others may be filed 
and the examiner may, in any case, require additional information or 
affidavits or declarations concerning the application for reissue and 
its object.]
    >(d) The oath or declaration required by paragraph (a) of this 
section may be submitted under the provisions of Sec. 1.53(d)(1).<
    68. Section 1.176 is proposed to be revised to read as follows:


Sec. 1.176   Examination of reissue.

    [An original claim, if re-presented in the reissue application, is 
subject to reexamination, and the] >The< entire >reissue< application 
will be examined in the same manner as original applications, subject 
to the rules relating thereto, excepting that division will not be 
required >between the original claims of the patent<. Applications for 
reissue will be acted on by the examiner in advance of other 
applications, but not sooner than two months after the announcement of 
the filing of the reissue application has appeared in the Official 
Gazette.
    69. Section 1.177 is proposed to be revised to read as follows:


Sec. 1.177   >Multiple reissue applications< [Reissue in divisions].

    >(a)< The Commissioner [may] >will pursuant to< [, in] his or her 
discretion, >under 35 U.S.C. 251,< [cause several] >permit multiple 
reissue< patents to be issued for distinct and separate parts of the 
thing patented[,upon] >if the following conditions are met:
    (1) Copending reissue applications for distinct and separate parts 
of the thing patented have been filed,
    (2) Applicant has filed in each copending application a timely< 
demand [of the applicant] >by way of petition for multiple reissue 
patents,
    (3)< [upon payment of the] >The< required >filing and issue< 
[fee]>fees< for each [division] >copending reissue application have 
been paid, and
    (4) Each petition for multiple reissue patents is granted prior to 
issuance of a reissue patent on any of the copending reissue 
applications.
    (b) Each petition under paragraph (a) of this section must be 
accompanied by:
    (1) A request for the issuance of multiple reissue patents for 
distinct and separate parts of the thing patented,
    (2) The petition fee pursuant to Sec. 1.17(i),
    (3) An identification of the other copending reissue 
application(s),
    (4) A statement that the inventions as claimed in the copending 
reissue applications are distinct and separate parts of the thing 
patented, and
    (5) A showing sufficient to establish to the satisfaction of the 
Commissioner that the claimed subject matter of the thing patented is 
in fact being divided into distinct and separate parts<. [Each division 
of a reissue constitutes the subject of a separate specification 
descriptive of the part or parts of the invention claimed in such 
division; and the drawing may represent only such part or parts, 
subject to the provisions of Secs. 1.83 and 1.84.]
    >(c) When the copending reissue applications are filed at the same 
time, each petition under paragraph (a) of this section, must be filed 
no later than the earliest submission of the reissue oath or 
declaration under Sec. 1.175(a) for any of the copending reissue 
applications. When the copending reissue applications are filed at 
different times, each petition under paragraph (a) of this section must 
be filed no later than the earliest of:
    (1) Payment of the issue fee for any of the copending reissue 
applications, or
    (2) Submission of the reissue oath or declaration under 
Sec. 1.175(a) in the later filed copending reissue application.< [On 
filing divisional reissue applications, they shall be referred to the 
Commissioner. Unless otherwise ordered by the Commissioner upon 
petition and payment of the fee set forth in Sec. 1.17(i), all the 
divisions of a reissue will issue simultaneously, if there is any 
controversy as to one division, the others will be withheld from issue 
until the controversy is ended, unless the Commissioner orders 
otherwise].
    >(d) Where the requirements of this section have not been complied 
with, the Commissioner will not permit multiple reissue patents to be 
issued.<
    70. Section 1.181 is proposed to be amended by removing paragraphs 
(d), (e) and (g).


Sec. 1.181   Petition to the Commissioner.

* * * * *
    (d) [Removed].
    (e) [Removed].
* * * * *
    (g) [Removed].
    71. Section 1.182 is proposed to be revised to read as follows:

[[Page 49858]]

Sec. 1.182   Questions not specifically provided for.

    All cases not specifically provided for in the regulations of this 
part will be decided in accordance with the merits of each case by or 
under the authority of the Commissioner, >subject to such other 
requirements as may be imposed< [and such decision will be communicated 
to the interested parties in writing]. Any petition seeking a decision 
under this section must be accompanied by the petition fee set forth in 
Sec. 1.17(h).


Sec. 1.184   [Removed and reserved]

    72. Section 1.184 is proposed to be removed and reserved.
    73. Section 1.191 is proposed to be amended by revising paragraphs 
(a) and (b) to read as follows:


Sec. 1.191   Appeal to Board of Patent Appeals and Interferences.

    (a) Every applicant for a patent or for reissue of a patent, or 
every owner of a patent under reexamination[, any of] >whose claims 
have< [the claims of which have] been twice rejected >in a particular 
application or patent under reexamination< [or who has been given a 
final rejection (Sec. 1.113)], may >file an< [, upon the payment of the 
fee set forth in Sec. 1.17(e),] appeal from the decision of the 
examiner to the Board of Patent Appeals and Interferences >by filing a 
notice of appeal and paying the fee set forth in Sec. 1.17(e)< within 
the time allowed for >reply< [response].
    (b) The >notice of< appeal in an application or reexamination 
proceeding must identify the rejected claim or claims appealed, and 
must be signed by the applicant, patent owner or duly authorized 
attorney or agent.
* * * * *
    74. Section 1.192 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.192   Appellant's brief.

    (a) >Appellant< [The appellant] shall, within [2] >two< months from 
the date of the notice of appeal under Sec. 1.191 in an application, 
reissue application, or patent under reexamination, or within the time 
allowed for >reply< [response] to the action appealed from, if such 
time is later, file a brief in triplicate. The brief must be 
accompanied by the requisite fee set forth in Sec. 1.17(f) and must set 
forth the authorities and arguments on which the appellant will rely to 
maintain the appeal. Any arguments or authorities not included in the 
brief may be refused consideration by the Board of Patent Appeals and 
Interferences.
* * * * *
    75. Section 1.193 is proposed to be revised to read as follows:


Sec. 1.193   Examiner's answer >and substitute brief<.

    (a)>(1)< The primary examiner may, within such time as may be 
directed by the Commissioner, furnish a written statement in answer to 
[the] appellant's brief including such explanation of the invention 
claimed and of the references and grounds of rejection as may be 
necessary, supplying a copy to [the] appellant. If the primary examiner 
shall find that the appeal is not regular in form or does not relate to 
an appealable action, [he] >the primary examiner< shall so state [and a 
petition from such decision may be taken to the Commissioner as 
provided in Sec. 1.181].
    >(a)(2) An examiner's answer may not include a new ground of 
rejection.<
    (b)>(1) Appellant< [The appellant] may file a [reply] >substitute 
appeal< brief [directed only to such new points of argument as may be 
raised in the] >under Sec. 1.192 to an< examiner's answer, within two 
months from the date of [such answer] >the examiner's answer.< [The new 
points or argument shall be specifically identified in the reply brief. 
If the examiner determines that the reply brief is not directed only to 
new points of argument raised in the examiner's answer, the examiner 
may refuse entry of the reply brief and will so notify the appellant. 
If the examiner's answer expressly states that it includes a new ground 
of rejection, appellant must file a reply thereto within two months 
from the date of such answer to avoid dismissal of the appeal as to the 
claims subject to the new ground of rejection; such reply may be 
accompanied by any amendment or material appropriate to then new 
ground.] See Sec. 1.136(b) for extensions of time for filing a [reply] 
>substitute< brief in a patent application and Sec. 1.550(c) for 
extensions of time in a reexamination proceeding. >The primary examiner 
may either acknowledge receipt and entry of the substitute appeal brief 
or reopen prosecution to respond to any new issues raised in the 
substitute appeal brief. A substitute examiner's answer is not 
permitted, except where the application has been remanded by the Board 
of Patent Appeals and Interferences for such purpose.<
    >(2) Where prosecution is reopened by the primary examiner after an 
appeal brief has been filed, an appeal brief under Sec. 1.192 is an 
appropriate reply by an applicant to the reopening of prosecution if it 
is accompanied by a request that the appeal be reinstated. If 
reinstatement of the appeal is elected, no amendments, affidavits 
(Secs. 1.131 or 1.132) or other new evidence are permitted. If 
reinstatement of the appeal is not elected, amendments, affidavits and 
other new evidence are permitted.<
    76. Section 1.194 is proposed to be revised to read as follows:


Sec. 1.194  Oral hearing.

    (a) An oral hearing should be requested only in those circumstances 
in which [the] appellant considers such a hearing necessary or 
desirable for a proper presentation of [his] >the< appeal. An appeal 
decided without an oral hearing will receive the same consideration by 
the Board of Patent Appeals and Interferences as appeals decided after 
oral hearing.
    (b) If appellant desires an oral hearing, appellant must file>, in 
a separate paper,< a written request for such hearing accompanied by 
the fee set forth in Sec. 1.17(g) within two months after the date of 
the examiner's answer. If appellant requests an oral hearing and 
submits therewith the fee set forth in Sec. 1.17(g), an oral argument 
may be presented by, or on behalf of, the primary examiner if 
considered desirable by either the primary examiner or the Board. See 
Sec. 1.136(b) for extensions of time for requesting an oral hearing in 
a patent application and Sec. 1.550(c) for extensions of time in a 
reexamination proceeding.
    (c) If no request and fee for oral hearing have been timely filed 
by [the] appellant, the appeal will be assigned for consideration and 
decision. If [the] appellant has requested an oral hearing and has 
submitted the fee set forth in Sec. 1.17(g), a day of hearing will be 
set, and due notice thereof given to [the] appellant and to the primary 
examiner. >A< [Hearing] >hearing< will be held as stated in the notice, 
and oral argument will be limited to twenty minutes for [the] appellant 
and fifteen minutes for the primary examiner unless otherwise ordered 
before the hearing begins. >If the Board decides that a hearing is not 
necessary, the Board will so notify appellant.<
    77. Section 1.196 is proposed to be amended by revising paragraphs 
(b) and (d) to read as follows:


Sec. 1.196  Decision by the Board of Patent Appeals and Interferences.

* * * * *
    (b) Should the Board of Patent Appeals and Interferences have 
knowledge of any grounds not involved in the appeal for rejecting any 
[appealed] >pending< claim, it may include in the decision a statement 
to that effect with its reasons for so holding, which statement shall

[[Page 49859]]

constitute a new >ground of< rejection of the [claims] >claim<. A new 
>ground of< rejection shall not be considered final for purposes of 
judicial review. When the Board of Patent Appeals and Interferences 
makes a new >ground of< rejection [of an appealed claim], the 
appellant>, within two months from the date of the decision,< may 
exercise [any one] >either< of the following two options with respect 
to the new ground >of rejection<:
    (1) The appellant may submit an appropriate amendment of the claims 
so rejected or a showing of facts >relating to the claims so rejected<, 
or both, and have the matter reconsidered by the examiner in which 
event the application will be remanded to the examiner. The [statement] 
>new ground of rejection< shall be binding upon the examiner unless an 
amendment or showing of facts not previously of record be made which, 
in the opinion of the examiner, overcomes the new ground [for] >of< 
rejection stated in the decision. Should the examiner [again reject the 
application] >reject the claims, appellant< [the applicant] may again 
appeal >pursuant to Secs. 1.191 through 1.195< to the Board of Patent 
Appeals and Interferences.
    (2) The appellant may have the case reconsidered under 
Sec. 1.197(b) by the Board of Patent Appeals and Interferences upon the 
same record. The request for reconsideration [shall] >must< address the 
new ground [for] >of< rejection and state with particularity the points 
believed to have been misapprehended or overlooked in rendering the 
decision and also state all other grounds upon which reconsideration is 
sought. Where request for such reconsideration is made, the Board of 
Patent Appeals and Interferences shall reconsider the new ground [for] 
>of< rejection and, if necessary, render a new decision which shall 
include all grounds >of rejection< upon which a patent is refused. The 
decision on reconsideration is deemed to incorporate the earlier 
decision >for purposes of appeal<, except for those portions 
specifically withdrawn on reconsideration, and is final for the purpose 
of judicial review>, except when noted otherwise in the decision<.
* * * * *
    [(d) Although the Board of Patent Appeals and Interferences 
normally will confine its decision to a review of rejections made by 
the examiner, should it have knowledge of any grounds for rejecting any 
allowed claim it may include in its decision a recommended rejection of 
the claim and remand the case to the examiner. In such event, the Board 
shall set a period, not less than one month, within which the appellant 
may submit to the examiner an appropriate amendment, a showing of facts 
or reasons, or both, in order to avoid the grounds set forth in the 
recommendation of the Board of Patent Appeals and Interferences. The 
examiner shall be bound by the recommendation and shall enter and 
maintain the recommended rejection unless an amendment or showing of 
facts not previously of record is filed which, in the opinion of the 
examiner, overcomes the recommended rejection. Should the examiner make 
the recommended rejection final the applicant may again appeal to the 
Board of Patent Appeals and Interferences.]
    >(1) The Board of Patent Appeals and Interferences may require 
Appellant to address any matter that is deemed appropriate for a 
reasoned decision on the pending appeal.
    (2) Appellant will be given a time limit within which to reply to 
the inquiry made under paragraph (d)(1) of this section.<
* * * * *
    78. Section 1.197 is proposed to be amended by revising paragraphs 
(a) and (b) to read as follows:


Sec. 1.197  Action following decision.

    (a) After decision by the Board of Patent Appeals and 
Interferences, the case shall be returned to the examiner, subject to 
[the] appellant's right of appeal or other review, for such further 
action by [the] appellant or by the examiner, as the condition of the 
case may require, to carry into effect the decision.
    (b) A single request for reconsideration or modification of the 
decision may be made if filed within >two months< [one month] from the 
date of the original decision, unless the original decision is so 
modified by the decision on reconsideration as to become, in effect, a 
new decision, and the Board of Patent Appeals and Interferences so 
states. The request for reconsideration shall state with particularity 
the points believed to have been misapprehended or overlooked in 
rendering the decision and also state all other grounds upon which 
reconsideration is sought. See Sec. 1.136(b) for extensions of time for 
seeking reconsideration in a patent application and Sec. 1.550(c) for 
extensions of time in a reexamination proceeding.
* * * * *
    79. Section 1.291 is proposed to be amended by revising paragraph 
(c) to read as follows:


Sec. 1.291  Protests by the public against pending applications.

* * * * *
    (c) A member of the public filing a protest in an application under 
paragraph (a) of this section will not receive any communications from 
the Office relating to the protest, other than the return of a self-
addressed postcard which the member of the public may include with the 
protest in order to receive an acknowledgment by the Office that the 
protest has been received. The Office may communicate with the 
applicant regarding any protest and may require the applicant to 
>reply< [respond] to specific questions raised by the protest. In the 
absence of a request by the Office, an applicant has no duty to, and 
need not, >reply< [respond] to a protest. The limited involvement of 
the member of the public filing a protest pursuant to paragraph (a) of 
this section ends with the filing of the protest, and no further 
submission on behalf of the protestor will be considered >,except for 
additional prior art, or< unless such submission raises new issues 
which could not have been earlier presented.
    80. Section 1.294 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 1.294  Examination of request for publication of a statutory 
invention registration and patent application to which the request is 
directed.

* * * * *
    (b) Applicant will be notified of the results of the examination 
set forth in paragraph (a) of this section. If the requirements of 
Sec. 1.293 and this section are not met by the request filed, the 
notification to applicant will set a period of time within which to 
comply with the requirements in order to avoid abandonment of the 
application. If the application does not meet the requirements of 35 
U.S.C. 112, the notification to applicant will include a rejection 
under the appropriate provisions of 35 U.S.C. 112. The periods for 
>reply< [response] established pursuant to this section are subject to 
the extension of time provisions of Sec. 1.136. After >reply< 
[response] by the applicant, the application will again be considered 
for publication of a statutory invention registration. If the 
requirements of Sec. 1.293 and this section are not timely met, the 
refusal to publish will be made final. If the requirements of 35 U.S.C. 
112 are not met, the rejection pursuant to 35 U.S.C. 112 will be made 
final.
* * * * *

[[Page 49860]]

    81. Section 1.304 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.304  Time for appeal or civil action.

    (a)(1) The time for filing the notice of appeal to the U.S. Court 
of Appeals for the Federal Circuit (Sec. 1.302) or for commencing a 
civil action (Sec. 1.303) is two months from the date of the decision 
of the Board of Patent Appeals and Interferences. If a request for 
[consideration] >reconsideration< or modification of the decision is 
filed within the time period provided under Sec. 1.197(b) or 
Sec. 1.658(b), the time for filing an appeal or commencing a civil 
action shall expire two months after action on the request. In 
interferences, the time for filing a cross-appeal or cross-action 
expires:
    (i) 14 days after service of the notice of appeal or the summons 
and complaint, or
    (ii) Two months after the date of decision of the Board of Patent 
Appeals and Interferences, whichever is later.
* * * * *
    82. Section 1.312 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 1.312  Amendments after allowance.

* * * * *
    (b) Any amendment pursuant to paragraph (a) of this section filed 
after the date the issue fee is paid must be accompanied by a petition 
including the fee set forth in Sec. 1.17(i) and a showing of good and 
sufficient reasons why the amendment is necessary and was not earlier 
presented. >For reissue applications, see Sec. 1.175(b), which requires 
a supplemental oath or declaration to accompany the amendment.<
    83. Section 1.313 is proposed to be amended by adding a new 
paragraph (c) to read as follows:


Sec. 1.313  Withdrawal from issue.

* * * * *
    >(c) Unless an applicant receives written notification that the 
application has been withdrawn from issue at least two weeks prior to 
the projected date of issue, applicant should expect that the 
application will issue as a patent.<
    84. Section 1.316 paragraphs (b) through (f) are proposed to be 
removed.


Sec. 1.316  Application abandoned for failure to pay issue fee.

* * * * *
    (b) [Removed].
    (c) [Removed].
    (d) [Removed].
    (e) [Removed].
    (f) [Removed].
    85. Section 1.317 paragraphs (b) through (f) are proposed to be 
removed.


Sec. 1.317  Lapsed patents; delayed payment of balance of issue fee.

* * * * *
    (b) [Removed].
    (c) [Removed].
    (d) [Removed].
    (e) [Removed].
    (f) [Removed].


Sec. 1.318  [Removed and reserved].

    86. Section 1.318 is proposed to be removed and reserved.
    87. Section 1.324 is proposed to be revised to read as follows:


Sec. 1.324  Correction of inventorship in patent.

    >(a) Whenever through error a person is named in an issued patent 
as the inventor, or through error an inventor is not named in an issued 
patent and such error arose without any deceptive intention on his or 
her part, < [Whenever a patent is issued and it appears that the 
correct inventor or inventors were not named through error without 
deceptive intention on the part of the actual inventor or inventors,] 
the Commissioner may, on petition [of all the parties and the assignees 
and satisfactory proof of the facts and payment of the fee set forth in 
Sec. 1.20(b)], or on order of a court before which such matter is 
called in question, issue a certificate naming only the actual inventor 
or inventors. A >petition< [request] to correct inventorship of a 
patent involved in an interference shall comply with the requirements 
of this section and shall be accompanied by a motion under Sec. 1.634.
    >(b) Any petition pursuant to paragraph (a) of this section must be 
accompanied by:
    (1) A statement from each person who is being added as an inventor 
and from each person who is being deleted as an inventor that the 
inventorship error occurred without any deceptive intention on their 
part;
    (2) A statement from the current named inventors who have not 
submitted a statement under paragraph (b)(1) of this section either 
agreeing to the change of inventorship or stating that they have no 
disagreement in regard to the requested change;
    (3) A statement from all assignees of the parties submitting a 
statement under paragraphs (b)(1) and (b)(2) of this section agreeing 
to the change of inventorship in the patent; such statement must comply 
with the requirements of Sec. 3.73(b); and
    (4) The fee set forth in Sec. 1.20(b).<


Sec. 1.325  [Removed and reserved]

    88. Section 1.325 is proposed to be removed and reserved.


Sec. 1.351  [Removed and reserved]

    89. Sections 1.351 is proposed to be removed and reserved.


Sec. 1.352  [Removed and reserved]

    90. Section 1.352 is proposed to be removed and reserved.
    91. Section 1.366 is proposed to be amended by revising paragraphs 
(b) through (d) to read as follows:


Sec. 1.366  Submission of maintenance fees.

* * * * *
    (b) A maintenance fee and any necessary surcharge submitted for a 
patent must be submitted in the amount due on the date the maintenance 
fee and any necessary surcharge are paid and may be paid in the manner 
set forth in Sec. 1.23 or by an authorization to charge a deposit 
account established pursuant to Sec. 1.25. Payment of a maintenance fee 
and any necessary surcharge or the authorization to charge a deposit 
account must be submitted within the periods set forth in 
Sec. 1.362(d), (e), or (f). Any payment or authorization of maintenance 
fees and surcharges filed at any other time will not be accepted and 
will not serve as a payment of the maintenance fee except insofar as a 
delayed payment of the maintenance fee is accepted by the Commissioner 
in an expired patent pursuant to a petition filed under Sec. 1.378. Any 
authorization to charge a deposit account must authorize the immediate 
charging of the maintenance fee and any necessary surcharge to the 
deposit account. Payment of less than the required amount, payment in a 
manner other than that set forth in the filing of an authorization to 
charge a deposit account having insufficient funds will not constitute 
payment of a maintenance fee or surcharge on a patent. The 
[certificate] procedures of either Sec. 1.8 or Sec. 1.10 may be 
utilized in paying maintenance fees and any necessary surcharges.
    (c) In submitting maintenance fees and any necessary surcharges, 
identification of the patents for which maintenance fees are being paid 
must include the following:
    (1) The patent number, and
    (2) The [serial] >application< number of the United States 
application for the patent on which the maintenance fee is being paid.
    (d) Payment of maintenance fees and any surcharges should identify 
the fee being paid for each patent as to whether it is the 3\1/2\-,7\1/
2\-, or 11\1/2\-year fee, whether small entity status is being

[[Page 49861]]

changed or claimed, the amount of the maintenance fee and any surcharge 
being paid, and any assigned payor number[, the patent issue date and 
the United States application filing date]. If the maintenance fee and 
any necessary surcharge is being paid on a reissue patent, the payment 
must identify the reissue patent by reissue patent number and reissue 
application [serial] number as required by paragraph (c) of this 
section and should also include the original patent number[, the 
original patent issue date, and the original United States application 
filing date].
* * * * *
    92. Section 1.377 is proposed to be amended by revising paragraph 
(c) to read as follows:


Sec. 1.377  Review of decision refusing to accept and record payment of 
a maintenance fee filed prior to expiration of patent.

* * * * *
    (c) Any petition filed under this section must comply with the 
requirements of paragraph (b) of Sec. 1.181 and must be signed by an 
attorney or agent registered to practice before the Patent and 
Trademark Office, or by the patentee, the assignee, or other party in 
interest. [Such petition must be in the form of a verified statement if 
made by a person not registered to practice before the Patent and 
Trademark Office.]
    93. Section 1.378 is proposed to be amended by revising paragraph 
(d) to read as follows:


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

* * * * *
    (d) Any petition under this section must be signed by an attorney 
or agent registered to practice before the Patent and Trademark Office, 
or by the patentee, the assignee, or other party in interest. [Such 
petition must be in the form of a verified statement if made by a 
person not registered to practice before the Patent and Trademark 
Office.]
* * * * *
    94. Section 1.425 is proposed to be revised to read as follows:


Sec. 1.425  Filing by other than inventor.

    [(a) If a joint inventor refuses to join in an international 
application which designates the United States of America or cannot be 
found or reached after diligent effort, the international application 
which designates the United States of America may be filed by the other 
inventor on behalf of himself or herself and the omitted inventor. Such 
an international application which designates the United States of 
America must be accompanied by proof of the pertinent facts and must 
state the last known address of the omitted inventor. The Patent and 
Trademark Office shall forward notice of the filing of the 
international application to the omitted inventor at said address.
    (b) Whenever an inventor refuses to execute an international 
application which designates the United States of America, or cannot be 
found or reached after diligent effort, a person to whom the inventor 
has assigned or agreed in writing to assign the invention or who 
otherwise shows sufficient proprietary interest in the matter 
justifying such action may file the international application on behalf 
of and as agent for the inventor. Such an international application 
which designates the United States of America must be accompanied by 
proof of the pertinent facts and a showing that such action is 
necessary to preserve the rights of the parties or to prevent 
irreparable damage and must state the last known address of the 
inventor. The assignment, written agreement to assign or other evidence 
of proprietary interest, or a verified copy thereof, must be filed in 
the Patent and Trademark Office. The Office shall forward notice of the 
filing of the application to the inventor at the address stated in the 
application.] Where an international application which designates the 
United States of America is filed and where one or more inventors 
refuse to sign the request for the international application or could 
not be found or reached after diligent effort, the request need not be 
signed by such inventor if it is signed by another applicant. Such 
international application must be accompanied by a statement explaining 
to the satisfaction of the Commissioner the lack of the signature 
concerned.
    95. Section 1.484 is proposed to be amended by revising paragraphs 
(d) through (f) to read as follows:


Sec. 1.484  Conduct of international preliminary examination.

* * * * *
    (d) The International Preliminary Examining Authority will 
establish a written opinion if any defect exists or if the claimed 
invention lacks novelty, inventive step or industrial applicability and 
will set a non-extendable time limit in the written opinion for the 
applicant to >reply< [respond].
    (e) If no written opinion under paragraph (d) of this section is 
necessary, or after any written opinion and the >reply< [response] 
thereto or the expiration of the time limit for >reply< [response] to 
such written opinion, an international preliminary examination report 
will be established by the International Preliminary Examining 
Authority. One copy will be submitted to the International Bureau and 
one copy will be submitted to the applicant.
    (f) An applicant will be permitted a personal or telephone 
interview with the examiner, which must be conducted during the non-
extendable time limit for >reply< [response] by the applicant to a 
written opinion. Additional interviews may be conducted where the 
examiner determines that such additional interviews may be helpful to 
advancing the international preliminary examination procedure. A 
summary of any such personal or telephone interview must be filed by 
the applicant as a part of the >reply< [response] to the written 
opinion or, if applicant files no >reply< [response], be made of record 
in the file by the examiner.
    96. Section 1.485 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.485  Amendments by applicant during international preliminary 
examination.

    (a) The applicant may make amendments at the time of filing of the 
Demand and within the time limit set by the International Preliminary 
Examining Authority for >reply< [response] to any notification under 
Sec. 1.484(b) or to any written opinion. Any such amendments must:
    (1) Be made by submitting a replacement sheet for every sheet of 
the application which differs from the sheet it replaces unless an 
entire sheet is cancelled, and
    (2) Include a description of how the replacement sheet differs from 
the replaced sheet.
* * * * *
    97. Section 1.488 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 1.488  Determination of unity of invention before the 
International Preliminary Examining Authority.

* * * * *
    (b) If the International Preliminary Examining Authority considers 
that the international application does not comply with the requirement 
of unity of invention, it may:
    (1) Issue a written opinion and/or an international preliminary 
examination report, in respect of the entire international application 
and indicate that unity of invention is lacking and specify the reasons 
therefor without extending an invitation to restrict or pay additional 
fees. No international preliminary examination will be conducted on 
inventions not previously

[[Page 49862]]

searched by an International Searching Authority.
    (2) Invite the applicant to restrict the claims or pay additional 
fees, pointing out the categories of the invention found, within a set 
time limit which will not be extended. No international preliminary 
examination will be conducted on inventions not previously searched by 
an International Preliminary Examining Authority, or
    (3) If applicant fails to restrict the claims or pay additional 
fees within the time limit set for >reply< [response], the 
International Preliminary Examining Authority will issue a written 
opinion and/or establish an international preliminary examination 
report on the main invention and shall indicate the relevant facts in 
the said report. In case of any doubt as to which invention is the main 
invention, the invention first mentioned in the claims and previously 
searched by an International Searching Authority shall be considered 
the main invention.
* * * * *
    98. Section 1.492 is proposed to be amended by adding a new 
paragraph (g) to read as follows:


Sec. 1.492  National stage fees.

* * * * *
    >(g) If the additional fees required by paragraphs (b), (c), and 
(d) are not paid on presentation of the claims for which the additional 
fees are due, they must be paid or the claims cancelled by amendment, 
prior to the expiration of the time period set for reply by the Office 
in any notice of fee deficiency.<
    99. Section 1.494 is proposed to be amended by revising paragraph 
(c) to read as follows:


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

* * * * *
    (c) If applicant complies with paragraph (b) of this section before 
expiration of 20 months from the priority date but omits:
    (1) A translation of the international application, as filed, into 
the English language, if it was originally filed in another language 
(35 U.S.C. 371(c)(2)) and/or
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see Sec. 1.497), applicant will be so notified and given a period of 
time within which to file the translation and/or oath or declaration in 
order to prevent abandonment of the application. The payment of the 
processing fee set forth in Sec. 1.492(f) is required for acceptance of 
an English translation later than the expiration of 20 months after the 
priority date. The payment of the surcharge set forth in Sec. 1.492(e) 
is required for acceptance of the oath or declaration of the inventor 
later than the expiration of 20 months after the priority date. A copy 
of the notification mailed to applicant should accompany any >reply< 
[response] thereto submitted to the Office.
* * * * *
    100. Section 1.495 is proposed to be amended by revising paragraph 
(c) to read as follows:


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

* * * * *
    (c) If applicant complies with paragraph (b) of this section before 
expiration of 30 months from the priority date but omits:
    (1) A translation of the international application, as filed, into 
the English language, if it was originally filed in another language 
(35 U.S.C. 371(c)(2)) and/or
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see Sec. 1.497), applicant will be so notified and given a period of 
time within which to file the translation and/or oath or declaration in 
order to prevent abandonment of the application. The payment of the 
processing fee set forth in Sec. 1.492(f) is required for acceptance of 
an English translation later than the expiration of 30 months after the 
priority date. The payment of the surcharge set forth in Sec. 1.492(e) 
is required for acceptance of the oath or declaration of the inventor 
later than the expiration of 30 months after the priority date. A copy 
of the notification mailed to applicant should accompany any >reply< 
[response] thereto submitted to the Office.
* * * * *
    101. Section 1.510 is proposed to be amended by revising paragraph 
(e) to read as follows:


Sec. 1.510  Request for reexamination.

* * * * *
    (e) A request filed by the patent owner may include a proposed 
amendment in accordance with [Sec. 1.121(f)] >Sec. 1.530(d)<.
    102. Section 1.530 is proposed to be amended by revising the 
heading and paragraphs (a) and (d) to read as follows:


Sec. 1.530  Statement and [amendment] >reply< by patent owner.

    (a) Except as provided in Sec. 1.510(e), no statement or other 
>reply< [response] by the patent owner shall be filed prior to the 
determinations made in accordance with Secs. 1.515 or 1.520. If a 
premature statement or other >reply< [response] is filed by the patent 
owner it will not be acknowledged or considered in making the 
determination.
* * * * *
    [(d) Any proposed amendment to the description and claims must be 
made in accordance with Sec. 1.121(f). No amendment may enlarge the 
scope of the claims of the patent or introduce new matter. No amended 
or new claims may be proposed for entry in an expired patent. Moreover, 
no amended or new claims will be incorporated into the patent by 
certificate issued after the expiration of the patent.]
    >(d) Amendments in reexamination proceedings: Amendments in 
reexamination proceedings are made by filing a paper, in compliance 
with paragraph (d)(5) of this section, directing that specified 
amendments be made.
    (1) Specification other than claims: Amendments to the 
specification other than claims may only be made as follows:
    (i) The precise point in the specification must be indicated where 
an amendment is to be made.
    (ii) Amendments must be made by submission of the entire text of 
the rewritten paragraph(s) with markings pursuant to paragraph 
(d)(1)(iv) of this section.
    (iii) Each submission of an amendment to the specification of the 
patent must include all amendments to the specification relative to the 
patent as of the date of the submission. This would include amendments 
to the specification of the patent submitted for the first time as well 
as any previously submitted amendments that are still desired. Any 
previously submitted amendments to the specification that are no longer 
desired must not be included in the submission.
    (iv) Underlining below the subject matter added to the patent and 
brackets around the subject matter deleted from the patent are to be 
used to mark the amendments being made.
    (2) Claims: Amendments to the claims are made as follows:
    (i)(A) The amendment must include the entire text of each patent 
claim which is amended and each proposed claim with marking pursuant to 
paragraph (d)(2)(i)(C) of this section, except a patent or proposed 
claim should be cancelled by a statement cancelling the patent or 
proposed claim without presentation of the text of the patent or 
proposed claim.
    (B) Patent claims must not be renumbered and the numbering of any

[[Page 49863]]

claims proposed to be added to the patent must follow the number of the 
highest numbered patent claim.
    (C) Underlining below the subject matter added to the patent and 
brackets around the subject matter deleted from the patent are to be 
used to mark the amendments being made. If a claim is amended pursuant 
to paragraph (d)(2)(i)(A) of this section, a parenthetical expression 
``amended,'' ``twice amended,'' etc., should follow the original claim 
number.
    (ii) Each amendment submission must set forth the status, as of the 
date of the amendment, of all patent claims, of all claims currently 
proposed, and of all previously proposed claims that are no longer 
being proposed.
    (iii) Each amendment when originally submitted must be accompanied 
by an explanation of the support in the disclosure of the patent for 
the amendment along with any additional comments on page(s) separate 
from the page(s) containing the amendment.
    (iv) Each submission of an amendment to any claim (patent claims 
and all proposed claims) must include all amendments to the claims as 
of the date of the submission. This would include amendments to the 
claims submitted for the first time as well as any previously submitted 
amendments to the claims that are still desired. Any previously 
submitted amendments to the claims that are no longer desired must not 
be included in the submission. A copy of any patent claims that have 
not been amended are not to be presented with each amendment 
submission.
    (v) The failure to submit a copy of any proposed claim will be 
construed as a direction to cancel that claim.
    (3) No amendment may enlarge the scope of the claims of the patent 
or introduce new matter. No amendment may be proposed for entry in an 
expired patent. Moreover, no amendment will be incorporated into the 
patent by certificate issued after the expiration of the patent.
    (4) Amendments made to a patent during a reexamination proceeding 
will not be effective until a reexamination certificate is issued.
    (5) The form of replies, amendments, briefs, appendices and other 
papers must be in accordance with the following requirements. All 
documents, including any amendments or corrections thereto, must be in 
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 printed matter must 
appear in at least 11 point type. All of the 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. The papers, 
including the drawings, must have each page plainly written on only one 
side of a sheet of paper. 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 must be 1\1/2\ or double spaced. The 
pages must be numbered consecutively, starting with 1, the numbers 
being centrally located above or preferably, below, the text.
    (6) Drawings: The original patent drawing sheets may not be 
altered. Any proposed change to the patent drawings must be by way of a 
new sheet of drawings with the amended figures identified as 
``amended'' and with added figures identified as ``new'' for each sheet 
changed submitted in compliance with Sec. 1.84<
* * * * *
    103. Section 1.550 is proposed to be amended by revising paragraphs 
(a), (b) and (d) to read as follows:


Sec. 1.550  Conduct of reexamination proceedings.

    (a) All reexamination proceedings, including any appeals to the 
Board of Patent Appeals and Interferences, will be conducted with 
special dispatch within the Office. After issuance of the reexamination 
order and expiration of the time for submitting any >replies< 
[responses] thereto, the examination will be conducted in accordance 
with Secs. 1.104 through 1.116 and will result in the issuance of a 
reexamination certificate under Sec. 1.570.
    (b) The patent owner will be given at least [30] >thirty< days to 
>reply< [respond] to any Office action. Such >reply< [response] may 
include further statements in >reply< [response] to any rejections and/
or proposed amendments or new claims to place the patent in a condition 
where all claims, if amended as proposed, would be patentable.
* * * * *
    (d) If the patent owner fails to file a timely and appropriate 
>reply< [response] to any Office action, the reexamination proceeding 
will be terminated and the Commissioner will proceed to issue a 
certificate under Sec. 1.570 in accordance with the last action of the 
Office.
* * * * *
    104. Section 1.560 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 1.560  Interviews in reexamination proceedings.

* * * * *
    (b) In every instance of an interview with an examiner, a complete 
written statement of the reasons presented at the interview as 
warranting favorable action must be filed by the patent owner. An 
interview does not remove the necessity for >reply< [response] to 
Office actions as specified in Sec. 1.111.
    105. Section 1.770 is proposed to be revised to read as follows:


Sec. 1.770  Express withdrawal of application for extension of patent 
term.

    An application for extension of patent term may be expressly 
withdrawn before a determination is made pursuant to Sec. 1.750 by 
filing in the Office, in duplicate, a written declaration of withdrawal 
signed by the owner of record of the patent or its agent. An 
application may not be expressly withdrawn after the date permitted for 
>reply< [response] to the final determination on the application. An 
express withdrawal pursuant to this section is effective when 
acknowledged in writing by the Office. The filing of an express 
withdrawal pursuant to this section and its acceptance by the Office 
does not entitle applicant to a refund of the filing fee Sec. 1.20(j)) 
or any portion thereof.
    106. Section 1.785 is proposed to be amended by revising paragraph 
(d) to read as follows:


Sec. 1.785   Multiple applications for extension of term of the same 
patent or different patents for the same regulatory review period for a 
product.

* * * * *
    (d) An application for extension shall be considered complete and 
formal regardless of whether it contains the identification of the 
holder of the regulatory approval granted with respect to the 
regulatory review period or express and exclusive authorization from 
the holder of the regulatory

[[Page 49864]]

approval to rely on the regulatory review period for extension. When an 
application contains such information, or is amended to contain such 
information, it will be considered in determining whether an 
application is eligible for an extension under this section. A request 
may be made of any applicant to supply such information within a non-
extendable period of not less than one [(1)] month whenever multiple 
applications for extension of more than one patent are received and 
rely upon the same regulatory review period. Failure to provide such 
information within the period for >reply< [response] set shall be 
regarded as conclusively establishing that the applicant is not the 
holder of the regulatory approval and is not expressly and exclusively 
authorized by the holder of the regulatory approval to seek the 
extension being sought.
* * * * *
    107. Section 1.804 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 1.804   Time of making an original deposit.

* * * * *
    (b) When the original deposit is made after the effective filing 
date of an application for patent, the applicant shall promptly submit 
a [verified] statement from a person in a position to corroborate the 
fact, [and shall state] >stating<, that the biological material which 
is deposited is a biological material specifically identified in the 
application as filed[, except if the person is an attorney or agent 
registered to practice before the Office, in which case the statement 
need not be verified].
    108. Section 1.805 is proposed to be amended by revising paragraph 
(c) to read as follows:


Sec. 1.805   Replacement or supplement of deposit.

* * * * *
    (c) A request for a certificate of correction under this section 
shall not be granted unless the request is made promptly after the 
replacement or supplemental deposit has been made and:
    (1) Includes a [verified] statement of the reason for making the 
replacement or supplemental deposit;
    (2) Includes a [verified] statement from a person in a position to 
corroborate the fact, and [shall state] >stating<, that the replacement 
or supplemental deposit is of a biological material which is identical 
to that originally deposited;
    (3) Includes a [verified] showing that the patent owner acted 
diligently[-]>:<
    (i) In the case of a replacement deposit, in making the deposit 
after receiving notice that samples could no longer be furnished from 
an earlier deposit, or
    (ii) In the case of a supplemental deposit, in making the deposit 
after receiving notice that the earlier deposit had become contaminated 
or had lost its capability to function as described in the 
specification;
    (4) Includes a [verified] statement that the term of the 
replacement or supplemental deposit expires no earlier than the term of 
the deposit being replaced or supplemented; and
    (5) Otherwise establishes compliance with these regulations[, 
except that if the person making one or more of the required statements 
or showing is an attorney or agent registered to practice before the 
Office, that statement or showing need not be verified].
* * * * *

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

    The authority citation for part 3 continues to read as follows:

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

    109a. Section 3.11 is proposed to be revised to read as follows:


Sec. 3.11   Documents which will be recorded.

    >(a)< Assignments of applications, patents, and registrations, 
accompanied by completed cover sheets as specified in Secs. 3.28 and 
3.31, will be recorded in the Office. Other documents, accompanied by 
completed cover sheets as specified in Secs. 3.28 and 3.31, affecting 
title to applications, patents, or registrations, will be recorded as 
provided in this part or at the discretion of the Commissioner.
    >(b) Executive Order 9424 (3 CFR 1943--1948 Comp.) requires the 
several departments and other executive agencies of the Government, 
including Government-owned or Government-controlled corporations, to 
forward promptly to the Commissioner of Patents and Trademarks for 
recording all licenses, assignments, or other interests of the 
Government in or under patents or patent applications. Assignments and 
other documents affecting title to patents or patent applications and 
documents not affecting title to patents or patent applications 
required by Executive order 9424 (3 CFR 1943--1948 Comp.) to be filed 
will be recorded as provided in this Part.<
    110. Section 3.26 is proposed to be revised to read as follows:


Sec. 3.26   English language requirement.

    The Office will accept and record non-English language documents 
only if accompanied by [a verified] >an< English translation signed by 
the individual making the translation.
    110a. Section 3.27 is proposed to be revised to read as follows:


Sec. 3.27   Mailing address for submitting documents to be recorded.

    >(a) Except as provided in paragraph (b) of this section, 
documents< [Documents] and cover sheets to be recorded should be 
addressed to the Commissioner of Patents and Trademarks, Box 
Assignments, Washington, DC 20231, unless they are filed together with 
new applications or with a petition under Sec. 3.81(b).
    >(b) A document required by Executive Order 9424 (3 CFR 1943--1948 
Comp.) to be filed which does not affect title and is so identified in 
the cover sheet (see Sec. 3.31(c)(2)) must be addressed and mailed to 
the Commissioner of Patents and Trademarks, Box Government Interest, 
Washington, DC 20231.<
    111. Section 3.31 is proposed to be amended by adding paragraph (c) 
to read as follows:


Sec. 3.31   Cover sheet content.

* * * * *
    >(c) Each patent cover sheet required by Sec. 3.28 seeking to 
record a governmental interest as provided by Sec. 3.11(b) must:
    (1) Indicate that the document is to be recorded on the 
governmental register, and, if applicable, that the document is to be 
recorded on the Secret Register (see Sec. 3.58), and
    (2) Indicate, if applicable, that the document to be recorded is 
not a document affecting title (see Sec. 3.41(b)).<
    112. Section 3.41 is proposed to be revised to read as follows:


Sec. 3.41   Recording fees.

    >(a)< All requests to record documents must be accompanied by the 
appropriate fee. >Except as provided in paragraph (b) of this section, 
a< [A] fee is required for each application, patent and registration 
against which the document is recorded as identified in the cover 
sheet. The recording fee is set in Sec. 1.21(h) of this [Chapter] 
>chapter< for patents and in Sec. 2.6(q) of this [Chapter] >chapter< 
for trademarks.
    >(b) No fee is required for each patent application and patent 
against which a document required by Executive Order 9424 (3 CFR 1943-
1948 Comp.) is to be filed if:
    (1) The document does not affect title and is so identified in the 
cover sheet (see Sec. 3.31(c)(2));

[[Page 49865]]

    (2) The cover sheet is filed in a format approved by the Office; 
and
    (3) The document and cover sheet are mailed to the Office in 
compliance with Sec. 3.27(b).<
    113. Section 3.51 is proposed to be revised to read as follows:


Sec. 3.51   Recording date.

    The date of recording of a document is the date the document 
meeting the requirements for recording set forth in this [Part] >part< 
is filed in the Office. A document which does not comply with the 
identification requirements of 3.21 will not be recorded. Documents not 
meeting the other requirements for recording, for example, a document 
submitted without a completed cover sheet or without the required fee, 
will be returned for correction to the sender where a correspondence 
address is available. The returned papers, stamped with the original 
date of receipt by the Office, will be accompanied by a letter which 
will indicate that if the returned papers are corrected and resubmitted 
to the Office within the time specified in the letter, the Office will 
consider the original date of filing of the papers as the date of 
recording of the document. The [certification] procedure under either 
Sec. 1.8 or Sec. 1.10 of this [Chapter] >chapter< may be used for 
resubmissions of returned papers to have the benefit of the date of 
deposit in the United States Postal Service. If the returned papers are 
not corrected and resubmitted within the specified period, the date of 
filing of the corrected papers will be considered to be the date of 
recording of the document. The specified period to resubmit the 
returned papers will not be extended.
    114. Section 3.58 is proposed to be added to read as follows:


Sec. 3.58   Governmental registers.

    (a) The Office will maintain a Departmental Register to record 
governmental interests required to be recorded by Executive Order 9424 
(3 CFR 1943-1948 Comp.). This Departmental Register will not be open to 
public inspection but will be available for examination and inspection 
by duly authorized representatives of the Government. Governmental 
interests recorded on the Departmental Register will be available for 
public inspection as provided in Sec. 1.12.
    (b) The Office will maintain a Secret Register to record 
governmental interests required to be recorded by Executive Order 9424 
(3 CFR 1943-1948 Comp.). Any instrument to be recorded will be placed 
on this Secret Register at the request of the department or agency 
submitting the same. No information will be given concerning any 
instrument in such record or register, and no examination or inspection 
thereof or of the index thereto will be permitted, except on the 
written authority of the head of the department or agency which 
submitted the instrument and requested secrecy, and the approval of 
such authority by the Commissioner of Patents and Trademarks. No 
instrument or record other than the one specified may be examined, and 
the examination must take place in the presence of a designated 
official of the Patent and Trademark Office. When the department or 
agency which submitted an instrument no longer requires secrecy with 
respect to that instrument, it must be recorded anew in the 
Departmental Register.<
    115. Section 3.73 is proposed to be amended by revising paragraph 
(b) to read as follows:


Sec. 3.73   Establishing right of assignee to prosecute.

* * * * *
    (b) When the assignee of the entire right, title and interest seeks 
to take action in a matter before the Office with respect to a patent 
application, trademark application, patent registration, or 
reexamination proceeding, the assignee must establish its ownership of 
the property to the satisfaction of the Commissioner. Ownership is 
established by submitting to the Office documentary evidence of a chain 
of title from the original owner to the assignee >(e.g., copy of an 
executed assignment submitted for recording, etc.)< or by specifying 
(e.g., reel and frame number, etc.) where such evidence is recorded in 
the Office. Documents submitted to establish ownership may be required 
to be recorded as a condition to permitting the assignee to take action 
in a matter pending before the Office. [In addition, the assignee of a 
patent application or patent must submit a statement specifying that 
the evidentiary documents have been reviewed and certifying that, to 
the best of assignee's knowledge and belief, title is in the assignee 
seeking to take the action.]

PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND 
FILE APPLICATIONS IN FOREIGN COUNTRIES

    116. The authority citation for Part 5 is proposed to be revised to 
read as follows:

    Authority: 35 U.S.C. 6, 41, 181-188; 22 U.S.C. 2751 et seq.; 22 
U.S.C. 3201 et seq.; 42 U.S.C. 2011 et seq..

    117. Section 5.1 is proposed to be revised to read as follows:


Sec. 5.1   [Defense inspection of certain 
applications]>Correspondence<.

    [(a) The provisions of this part shall apply to both national and 
international applications filed in the Patent and Trademark Office 
and, with respect to inventions made in the United States, to 
applications filed in any foreign country or any international 
authority other than the United States Receiving Office. The
    (1) filing of a national or an international application in a 
foreign country or with an international authority other than the 
United States Receiving Office, or
    (2) transmittal of an international application to a foreign agency 
or an international authority other than the United States Receiving 
Office is considered to be a foreign filing within the meaning of 
Chapter 17 of Title 35, United States Code.
    (b) In accordance with the provisions of 35 U.S.C. 181, patent 
applications containing subject matter the disclosure of which might be 
detrimental to the national security are made available for inspection 
by defense agencies as specified in said section. Only applications 
obviously relating to national security, and applications within fields 
indicated to the Patent and Trademark Office by the defense agencies as 
so related, are made available. The inspection will be made only by 
responsible representatives authorized by the agency to review 
applications. Such representatives are required to sign a dated 
acknowledgment of access accepting the condition that information 
obtained from the inspection will be used for no purpose other than the 
administration of 35 U.S.C. 181-188. Copies of applications may be made 
available to such representatives for inspection outside the Patent and 
Trademark Office under conditions assuring that the confidentiality of 
the applications will be maintained, including the conditions that: (1) 
All copies will be returned to the Patent and Trademark Office promptly 
if no secrecy order is imposed, or upon rescission of such order if one 
is imposed, and (2) no additional copies will be made by the defense 
agencies. A record of the removal and return of copies made available 
for defense inspection will be maintained by the Patent and Trademark 
Office. Applications relating to atomic energy are made available to 
the Department of Energy as specified in 1.14 of this chapter.]
    > All correspondence in connection with this part, including 
petitions, must

[[Page 49866]]

be addressed to ``Assistant Commissioner for Patents (Attention 
Licensing and Review), Washington, DC 20231.''<
    118. Section 5.2 proposed to be amended by revising paragraph (b) 
and removing paragraphs (c) and (d) to read as follows:


Sec. 5.2  Secrecy order.

* * * * *
    (b) [The secrecy order is directed to the applicant, his 
successors, any and all assignees, and their legal representatives; 
hereinafter designated as principals.] >Any request for compensation as 
provided in 35 U.S.C. 183 must not be made to the Patent and Trademark 
Office, but directly to the department or agency which caused the 
secrecy order to be issued.<
    [(c) A copy of the secrecy order will be forwarded to each 
principal of record in the application and will be accompanied by a 
receipt, identifying the particular principal, to be signed and 
returned.
    (d) The secrecy order is directed to the subject matter of the 
application. Where any other application in which a secrecy order has 
not been issued discloses a significant part of the subject matter of 
the application under secrecy order, the other application and the 
common subject matter should be called to the attention of the Patent 
and Trademark Office. Such a notice may include any material such as 
would be urged in a petition to rescind secrecy orders on either of the 
applications.]
    119. Section 5.3 is proposed to be amended by revising paragraph 
(c) to read as follows:


Sec. 5.3  Prosecution of application under secrecy orders; withholding 
patent.

* * * * *
    (c) When the national application is found to be in condition for 
allowance except for the secrecy order the applicant and the agency 
which caused the secrecy order to be issued will be notified. This 
notice (which is not a notice of allowance under Sec. 1.311 of this 
chapter) does not require >reply< [response] by the applicant and 
places the national application in a condition of suspension until the 
secrecy order is removed. When the secrecy order is removed the Patent 
and Trademark Office will issue a notice of allowance under Sec. 1.311 
of this chapter, or take such other action as may then be warranted.
* * * * *
    120. Section 5.4 is proposed to be amended by revising paragraphs 
(a) and (d) to read as follows:


Sec. 5.4  Petition for rescission of secrecy order.

    (a) A petition for rescission or removal of a secrecy order may be 
filed by, or on behalf of, any principal affected thereby. Such 
petition may be in letter form, and it must be in duplicate. [The 
petition must be accompanied by one copy of the application or an order 
for the same, unless a showing is made that such a copy has already 
been furnished to the department or agency which caused the secrecy 
order to be issued.]
* * * * *
    (d) [Unless based upon facts of public record, the petition must be 
verified.] > Appeal to the Secretary of Commerce, as provided by 35 
U.S.C. 181, from a secrecy order cannot be taken until after a petition 
for rescission of the secrecy order has been made and denied.<
    121. Section 5.5 is proposed to be amended by revising paragraphs 
(b) and (e) to read as follows:


Sec. 5.5  Permit to disclose or modification of secrecy order.

* * * * *
    (b) Petitions for a permit or modification must fully recite the 
reason or purpose for the proposed disclosure. Where any proposed 
disclosee is known to be cleared by a defense agency to receive 
classified information, adequate explanation of such clearance should 
be made in the petition including the name of the agency or department 
granting the clearance and the date and degree thereof. The petition 
must be filed in duplicate [and be accompanied by one copy of the 
application or an order for the same, unless a showing is made that 
such a copy has already been furnished to the department or agency 
which caused the secrecy order to be issued].
* * * * *
    (e) [The permit or modification may contain conditions and 
limitations.] >Organizations requiring consent for disclosure of 
applications under secrecy order to persons or organizations in 
connection with repeated routine operation may petition for such 
consent in the form of a general permit. To be successful such 
petitions must ordinarily recite the security clearance status of the 
disclosees as sufficient for the highest classification of material 
that may be involved.<


Sec. 5.6  [Removed and reserved]

    122. Section 5.6 is proposed to be removed and reserved.


Sec. 5.7  [Removed and reserved]

    123. Section 5.7 is proposed to be removed and reserved.


Sec. 5.8  [Removed and reserved]

    124. Section 5.8 is proposed to be removed and reserved.
    125. Section 5.11 is proposed to be amended by revising paragraphs 
(b) and (c) to read as follows:


Sec. 5.11  License for filing in a foreign country an application on an 
invention made in the United States or for transmitting international 
application.

* * * * *
    (b) The license from the Commissioner of Patents and Trademarks 
referred to in paragraph (a) of this section would also authorize the 
export of technical data abroad for purposes relating to the 
preparation, filing or possible filing and prosecution of a foreign 
patent application without separately complying with the regulations 
contained in 22 CFR Parts [121] >120< through 130 (International 
Traffic in Arms Regulations of the Department of State), 15 CFR [Part 
379 (Regulations of the Bureau of Export Administration, Department of 
Commerce)] >Parts 768-799 (Export Administration Regulations of the 
Department of Commerce)< and 10 CFR Part 810 [(Foreign Atomic Energy 
Programs of the Department of Energy)] >(Assistance to Foreign Atomic 
Energy Activities--Regulations of the Department of Energy)<.
    (c) Where technical data in the form of a patent application, or in 
any form, is being exported for purposes related to the preparation, 
filing or possible filing and prosecution of a foreign patent 
application, without the license from the Commissioner of Patents and 
Trademarks referred to in paragraphs (a) or (b) of this section, or on 
an invention not made in the United States, the export regulations 
contained in 22 CFR Parts [121] >120< through 130 (International 
Traffic in Arms Regulations of the Department of State), 15 CFR [Part 
379 (Regulations of the Bureau of Export Administration, Department of 
Commerce)] >Parts 768-799 (Export Administration Regulations of the 
Department of Commerce)< and 10 CFR Part 810 [(Foreign Atomic Energy 
Programs of the Department of Energy)] >(Assistance to Foreign Atomic 
Energy Activities--Regulations of the Department of Energy)< must be 
complied with unless a license is not required because a United States 
application was on file at the time of export for at least six months 
without a secrecy order under Sec. 5.2 being placed thereon. The term 
``exported'' means export as it is defined in 22 CFR [Parts 121 through 
130] >Part 120<, 15 CFR

[[Page 49867]]

Part [379] >779< and >activities covered by< 10 CFR Part 810.
* * * * *
    126. Section 5.13 is proposed to be revised to read as follows:


Sec. 5.13  Petition for license; no corresponding application.

    If no corresponding national or international application has been 
filed in the United States, the petition for license under Sec. 5.12(b) 
must be accompanied by the required fee (Sec. 1.17(h)), if expedited 
handling of the petition is also sought, and a legible copy of the 
material upon which a license is desired. This copy will be retained as 
a measure of the license granted. [For assistance in the identification 
of the subject matter of each license so issued, it is suggested that 
the petition be submitted in duplicate and provide a title and other 
description of the material. The duplicate copy of the petition will be 
returned with the license or other action on the petition.]
    127. Section 5.14 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 5.14  Petition for license; corresponding U.S. application.

    (a) When there is a corresponding United States application on 
file, a petition for license under Sec. 5.12(b) must include the 
required fee (Sec. 1.17(h)), if expedited handling of the petition is 
also sought, and must identify this application by [serial] 
>application< number, filing date, inventor, and title, but a copy of 
the material upon which the license is desired is not required. The 
subject matter licensed will be measured by the disclosure of the 
United States application. [Where the title is not descriptive, and the 
subject matter is clearly of no interest from a security standpoint, 
time may be saved by a short statement in the petition as to the nature 
of the invention.]
* * * * *
    128. Section 5.15 is proposed to be amended by revising paragraph 
(a) to read as follows.


Sec. 5.15  Scope of license.

    (a) Applications or other materials reviewed pursuant to Secs. 5.12 
through 5.14, which were not required to be made available for 
inspection by defense agencies under 35 U.S.C. 181 and Sec. 5.1, will 
be eligible for a license of the scope provided in this paragraph. This 
license permits subsequent modifications, amendments, and supplements 
containing additional subject matter to, or divisions of, a foreign 
patent application, if such changes to the application do not alter the 
general nature of the invention in a manner which would require the 
United States application to have been made available for inspection 
under 35 U.S.C. 181 and Sec. 5.1. [This license also covers the 
inventions disclosed in foreign applications which have been granted a 
license under this part prior to April 4, 1984, and which were not 
subject to security inspection under 35 U.S.C. 181 and Sec. 5.1.] Grant 
of this license authorizing the export and filing of an application in 
a foreign country or the transmitting of an international application 
to any foreign patent agency when the subject matter of the foreign or 
international application corresponds to that of the domestic 
application. This license includes authority:
    (1) To export and file all duplicate and formal application papers 
in foreign countries or with international agencies;
    (2) To make amendments, modifications, and supplements, including 
divisions, changes or supporting matter consisting of the illustration, 
exemplification, comparison, or explanation of subject matter disclosed 
in the application; and
    (3) To take any action in the prosecution of the foreign or 
international application provided that the adding of subject matter of 
taking of any action under paragraphs (a)(1) or (2) of this section 
does not change the general nature of the invention disclosed in the 
application in a manner which would require such application to have 
been made available for inspection under 35 U.S.C. 181 and Sec. 5.1 by 
including technical data pertaining to:
    (i) Defense services or articles designated in the United States 
Munitions List applicable at the time of foreign filing, the unlicensed 
exportation of which is prohibited pursuant to the Arms Export Control 
Act, as amended and 22 CFR Parts [121] >120< through 130; or
    (ii) Restricted Data, sensitive nuclear technology or technology 
useful for the production or utilization of special nuclear material or 
atomic energy, dissemination of which is subject to restrictions of the 
Atomic Energy Act of 1954, as amended, and the Nuclear Non-
Proliferation Act of 1978, as implemented by the regulations [for 
Unclassified Activities in Assistance to Foreign Atomic Energy 
Activities] >of the Department of Energy for assistance to foreign 
energy activities<, 10 CFR Part 810, in effect at the time of foreign 
filing.
* * * * *


Sec. 5.16  [Removed and reserved]

    129. Section 5.16 is proposed to be removed and reserved.


Sec. 5.17  [Removed and reserved]

    130. Section 5.17 is proposed to be revised and removed.
    131. Section 5.18 is proposed to be revised to read as follows:


Sec. 5.18  Arms, ammunition, and implements of war.

    (a) The exportation of technical data relating to arms, ammunition, 
and implements of war generally is subject to the International Traffic 
in Arms Regulations of the Department of State (22 CFR Parts [121] 
>120< through [128] >130<); the articles designated as arms, 
ammunition, and implements of war are enumerated in the U.S. Munitions 
List, 22 CFR [121.01] >Part 121<. However, if a patent applicant 
complies with regulations issued by the Commissioner of Patents and 
Trademarks under 35 U.S.C. 184, no separate approval from the 
Department of State is required unless the applicant seeks to export 
technical data exceeding that used to support a patent application in a 
foreign country. This exemption from Department of State regulations is 
applicable regardless of whether a license from the Commissioner is 
required by the provisions of Secs. 5.11 and [5.15 (22 CFR 125.04(b), 
125.20(b))] >5.12 (22 CFR Part 125)<.
    (b) When a patent application containing subject matter on the 
Munitions List (22 CFR [121.01] >Part 121<) is subject to a secrecy 
order under Sec. 5.2 and a petition is made under Sec. 5.5 for a 
modification of the secrecy order to permit filing abroad, a separate 
request to the Department of State for authority to export classified 
information is not required (22 CFR [125.05(d)] >Part 125<).
    132. Section 5.19 is proposed to be revised to read as follows:


Sec. 5.19   Export of technical data.

    (a) Under regulations (15 CFR 770.10(j)) established by the [U.S.] 
Department of Commerce, [Bureau of Export Administration, Office of 
Export Licensing,] a [validated export] license is not required in any 
case to file a patent application or part thereof in a foreign country 
if the foreign filing is in accordance with the regulations (37 CFR 
5.11 through 5.33) of the Patent and Trademark Office.
    (b) [A validated] >An< export license is not required for data 
contained in a patent application prepared wholly from foreign-origin 
technical data where such application is being sent to the foreign 
inventor to be executed and

[[Page 49868]]

returned to the United States for subsequent filing in the U.S. Patent 
and Trademark Office (15 CFR 779A.3(e)).
    (c) [Removed].
    133. Section 5.20, paragraph (b), is proposed to be removed.


Sec. 5.20  Export of technical data relating to sensitive nuclear 
technology.

* * * * *
    (b) [Removed].
    134. Section 5.25, paragraph (c), is proposed to be removed.


Sec. 5.25  Petition for retroactive license.

* * * * *
    (c) [Removed].


Sec. 5.31  [Removed and reserved]

    135. Section 5.31 is proposed to be removed and reserved.


Sec. 5.32  [Removed and reserved]

    136. Section 5.32 is proposed to be removed and reserved.


Sec. 5.33  [Removed and reserved]

    137. Section 5.33 is proposed to be removed and reserved.

PART 7--[REMOVED AND RESERVED]

    138. Part 7 is proposed to be removed and reserved.

    Dated: September 10, 1996.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 96-23665 Filed 9-20-96; 8:45 am]
BILLING CODE 3510-16-P