[Federal Register Volume 63, Number 192 (Monday, October 5, 1998)]
[Proposed Rules]
[Pages 53498-53530]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 98-26429]



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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



Changes To Implement the Patent Business Goals; Proposed Rule

  Federal Register / Vol. 63, No. 192 / Monday, October 5, 1998 / 
Proposed Rules  

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: 980826226-8226-01]
RIN 0651-AA98


Changes To Implement the Patent Business Goals

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Advance notice of proposed rulemaking.

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SUMMARY: The Patent and Trademark Office (PTO) has established business 
goals for the organizations reporting to the Assistant Commissioner for 
Patents (Patent Business Goals). The Patent Business Goals have been 
established in response to the Vice-President's designation of the PTO 
as an agency that has a high impact on the public, and they are 
designed to make the PTO a more business-like agency. The focus of the 
Patent Business Goals is to increase the level of service to the public 
by raising the efficiency and effectiveness of the PTO's business 
processes.
    The PTO is considering a number of changes to the rules of practice 
and procedure to support the Patent Business Goals. The PTO is 
publishing this Advance Notice of Proposed Rulemaking to allow for 
public input at an early stage in the rule making process. The PTO is 
soliciting comments on these specific changes to the rules of practice 
or procedures.

DATES: Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before December 4, 1998. While comments 
may be submitted after this date, the PTO cannot ensure that 
consideration will be given to such comments. No public hearing will be 
held.

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, D.C. 20231, or by facsimile to (703) 308-6916, 
marked to the attention of Hiram H. Bernstein. Although comments may be 
submitted by mail or facsimile, the Office prefers to receive comments 
via the Internet. Where comments are submitted by mail, the Office 
would prefer that the comments be submitted on a DOS formatted 3\1/4\ 
inch disk accompanied by a paper copy.
    The comments will be available for public inspection at the Special 
Program Law Office, Office of the Deputy Assistant Commissioner for 
Patent Policy and Projects, located at Suite 520, of One Crystal Park, 
2011 Crystal Drive, Arlington, Virginia, and will be available through 
anonymous file transfer protocol (ftp) via the Internet (address: 
ftp.uspto.gov). Since comments will be made available for public 
inspection, information that is not desired to be made public, such as 
an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: With regard to this Advance Notice of 
Proposed Rulemaking in General: Hiram H. Bernstein or Robert W. Bahr, 
by telephone at (703) 305-9285, or by mail addressed to: Box Comments--
Patents, Assistant Commissioner for Patents, Washington, DC 20231, or 
by facsimile to (703) 308-6916, marked to the attention of Mr. 
Bernstein.
    With regard to simplifying request for small entity status (Topic 
1): James E. Bryant, III, at the above telephone number.
    With regard to requiring separate surcharges and supplying filing 
receipts (Topic 2), and permitting delayed submission of an oath or 
declaration, and changing time period for submission of the basic 
filing fee and English translation (Topic 3), and creating a PTO review 
service for applicant-created forms (Topic 21): Fred A. Silverberg, at 
the above telephone number.
    With regard to limiting the number of claims in an application 
(Topic 4), providing for presumptive elections (Topic 14), and creating 
alternative review procedures for applications under appeal (Topic 18): 
Robert W. Bahr, at the above telephone number.
    With regard to harmonizing standards for patent drawings (Topic 5), 
printing patents in color (Topic 6), and reducing time for filing 
corrected or formal drawings (Topic 7): Karin L. Tyson, at the above 
telephone number.
    With regard to permitting electronic submission of voluminous 
material (Topic 8): Jay Lucas, at the above telephone number.
    With regard to imposing limits/requirements on information 
disclosure statement submissions (Topic 9), and refusing information 
disclosure statement consideration under certain circumstances (Topic 
10): Kenneth M. Schor, at the above telephone number.
    With regard to providing no cause suspension of action (Topic 11): 
Gerald A. Dost, at the above telephone number.
    With regard to requiring a handling fee for preliminary amendments 
and supplemental replies (Topic 12): Randall L. Green, at the above 
telephone number.
    With regard to changing amendment practice to replacement by 
paragraphs/claims (Topic 13), requiring identification of broadening in 
a reissue application (Topic 16), and changing multiple reissue 
application treatment (Topic 17): Joseph A. Narcavage, at the above 
telephone number.
    With regard to creating a rocket docket for design applications 
(Topic 15): Lawrence E. Anderson, at the above telephone number.
    With regard to eliminating preauthorization of payment of the issue 
fee (Topic 19), and reevaluating the Disclosure Document Program (Topic 
20): John F. Gonzales, at the above telephone number.

SUPPLEMENTARY INFORMATION:

I. Background

    For Fiscal Year 1999, the PTO is emphasizing its core business: (1) 
the granting of patents; (2) the registering of trademarks; and (3) the 
dissemination of the information contained in those documents. The 
Presidential themes of encouraging innovation and investment, enhancing 
our customers' satisfaction and seeking efficiencies through 
international cooperation are embodied in the business goals of the 
organizations reporting to the Assistant Commissioner for Patents 
(Patent Business Goals).
    President Clinton's Framework for Global Electronic Commerce 
demands that the United States make its system for protecting 
patentable innovations more efficient to meet the needs of the fast-
moving electronic age. The PTO was selected by Vice President Gore as 
one of a small group of Federal agencies, known as High Impact 
Agencies, that has a direct impact on the public. The products and 
services that the PTO provides to its customers must enable them to get 
their new inventions and new ideas into the American and global 
marketplace.
    The PTO's participation as a High Impact Agency is expressed in its 
Year 2000 Commitments, part of the Fiscal Year 1999 Annual Performance 
Plan. Some key objectives of that plan include:
    1. The PTO will reduce its processing or cycle time (i.e., the 
actual time spent by the PTO in processing an application, which does 
not include the time when the PTO is awaiting a reply or other action 
by the applicant) for inventions to twelve months by the year 2003.
    2. The PTO will test reengineered processes and automated systems, 
and

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be ready to deploy electronic processing of patent applications by the 
year 2003.
    3. The PTO will work with the World Intellectual Property 
Organization (WIPO) to achieve electronic filing of Patent Cooperation 
Treaty applications, and by the year 2000, electronically receive and 
process Patent Cooperation Treaty (PCT) applications at the PTO.
    The activities in this plan call for changes in the very nature of 
the patent prosecution activity as it currently exists. Such activities 
are reflected in the regulations of the PTO, Title 37 of the Code of 
Federal Regulations. This rulemaking is designed to be the vehicle of 
the changes to these regulations, to embody the spirit and substance of 
the PTO's activities for self-improvement.

II. Specific Patent Business Goals

    The PTO has established five specific Patent Business Goals, which 
have been adopted as part of the Fiscal Year 1999 Corporate Plan 
Submission of the President. The five Patent Business Goals are:
    Goal 1: Reduce PTO processing time (cycle time) to twelve months or 
less for all inventions.
    Goal 2: Establish fully-supported and integrated Industry Sectors.
    Goal 3: Receive applications and publish patents electronically.
    Goal 4: Exceed our customers' quality expectations, through the 
competencies and empowerment of our employees.
    Goal 5: Align fees commensurate with resource utilization and 
customer efficiency.
    The organizations reporting to the Assistant Commissioner for 
Patents have developed a business plan (Patent Business Plan) to 
achieve the Patents Business Goals. The rule and procedure changes 
currently under consideration by the PTO, and to which this Advance 
Notice of Proposed Rulemaking (Advance Notice) pertains, are in support 
of the Patent Business Plan.
    An example of how the PTO is considering changes to the rules of 
practice and procedure to meet the varied demands of its customers is 
shown by the consideration of both an expedited examination procedure 
for design applications as well as an expanded suspension of action (or 
deferred examination) procedure. Currently, all applications are, with 
limited exceptions, scheduled for examination based upon their filing 
date. See section 708.02 of the Manual of Patent Examining Procedure 
(6th ed., rev. 3, July 1997) (MPEP). While the rules of practice do 
provide for the advancement of applications for examination (37 CFR 
1.102) and suspension of action in an application (37 CFR 1.103), the 
current procedures are not sufficiently tailored to the varied needs of 
the PTO's customers.
    The PTO is considering providing a procedure under which those 
design applicants who need rapid examination due to rapid style changes 
will be able to request expedited examination of their applications. 
The PTO is also considering providing a procedure under which those 
applicants who do not need or desire examination (e.g., the cost of 
prosecution is a burden and the invention is not yet commercially 
viable) will be able to request a prolonged suspension of action. 
Obviously, applicants may be required to pay additional fees (e.g., to 
recover the PTO's costs of exception processing for an expedited 
application) or waive certain rights (e.g., agree to publication of the 
application as a condition of a prolonged suspension of action) to 
avail themselves of the benefits of these procedures.
    Finally, the changes under consideration are intended to improve 
the PTO's business processes in the context of the current legal and 
technological environment. Should these environments change (e.g., by 
adoption of an international Patent Law Treaty, enactment of H.R. 400 
or S. 507, 105th Cong., 1st Sess. (1997), or implementation of new 
automation capabilities), the PTO would have to reconsider its business 
processes and make such further changes to the rules of practice as are 
necessary.

III. Topics for Public Comment

A. Introduction

    The topics on which the PTO particularly desires public input at 
this rulemaking stage are:
    (1) Simplifying requests for small entity status (37 CFR 1.27);
    (2) Requiring separate surcharges and supplying filing receipts (37 
CFR 1.53);
    (3) Permitting delayed submission of an oath or declaration, and 
changing time period for submission of the basic filing fee and English 
translation (37 CFR 1.52, 1.53);
    (4) Limiting the number of claims in an application (37 CFR 1.75);
    (5) Harmonizing standards for patent drawings (37 CFR 1.84);
    (6) Printing patents in color (37 CFR 1.84);
    (7) Reducing time for filing corrected or formal drawings (37 CFR 
1.85);
    (8) Permitting electronic submission of voluminous material (37 CFR 
1.96, 1.821);
    (9) Imposing limits/requirements on information disclosure 
statement submissions (37 CFR 1.98);
    (10) Refusing information disclosure statement consideration under 
certain circumstances (37 CFR 1.98);
    (11) Providing no cause suspension of action (37 CFR 1.103);
    (12) Requiring a handling fee for preliminary amendments and 
supplemental replies (37 CFR 1.111);
    (13) Changing amendment practice to replacement by paragraphs/
claims (37 CFR 1.121);
    (14) Providing for presumptive elections (37 CFR 1.141);
    (15) Creating a rocket docket for design applications (37 CFR 
1.155);
    (16) Requiring identification of broadening in a reissue 
application (37 CFR 1.173);
    (17) Changing multiple reissue application treatment (37 CFR 
1.177);
    (18) Creating alternative review procedures for applications under 
appeal (37 CFR 1.192);
    (19) Eliminating preauthorization of payment of the issue fee (37 
CFR 1.311);
    (20) Reevaluating the Disclosure Document Program; and
    (21) Creating a PTO review service for applicant-created forms.
    A discussion of each of these topics is set forth below.
    The topics discussed in this Advance Notice are those for which the 
PTO is considering the greatest change from current practice. For this 
reason, the PTO is publishing this Advance Notice (rather than a Notice 
of Proposed Rulemaking) to obtain public input on these topics at the 
inception of the rulemaking process. The public is invited to submit 
written comments on any of the topics, including issues related to 
changes in practice as well as the implementation of any such change in 
practice. Certain topics do not conclude with questions; however, the 
PTO desires comments on such topics in general.
Other Considerations
    This Advance Notice is in conformity with the requirements of the 
Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order 
12612 (October 26, 1987), and the Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.). It has been determined that this rulemaking is 
significant for the purposes of Executive Order 12866 (September 30, 
1993).
    This Advance Notice involves information collection requirements 
which are subject to review by the Office of Management and Budget 
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et 
seq.). The collections of information involved in this Advance Notice 
have been reviewed and previously approved by OMB under the following 
control

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numbers: 0651-0021, 0651-0030, 0651-0031, 0651-0032, 0651-0033, 0651-
0035, and 0651-0037. Any collections of information whose requirements 
will be revised as a result of the proposed rule changes discussed in 
this Advance Notice will be submitted to OMB for approval. The 
principal impact of the changes under consideration in this Advance 
Rule is to raise the efficiency and effectiveness of the PTO's business 
processes to make the PTO a more business-like agency and increase the 
level of the PTO's service to the public.
    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.
    As required by the Paperwork Reduction Act of 1995 (44 U.S.C. 
3507(d)), the PTO has submitted a copy of this Advance Notice 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 Robert J. Spar, 
Director, Special Program Law Office, Patent and Trademark Office, 
Washington, D.C. 20231, or 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.
    The PTO has determined that this Advance Notice has no Federalism 
implications affecting the relationship between the National Government 
and the States as outlined in Executive Order 12612.

B. Discussion of Specific Topics

1. Simplifying request for small entity status (37 CFR 1.27)
    Summary: The PTO is considering simplifying applicant's request for 
small entity status. The currently used small entity statement forms 
would be eliminated as they would no longer be needed.
    Specifics of Change being Considered: Small entity status would be 
established at any time by a simple assertion of entitlement to small 
entity status without the currently required formalistic reference to 
37 CFR 1.9. Payment of the (exact) small entity basic filing fee would 
be considered an assertion of small entity status. To establish small 
entity status after payment of the basic filing fee, a written 
assertion of small entity status would be required to be submitted with 
or prior to a fee payment. There would be no change in the current 
requirement to make an investigation in order to determine entitlement 
to small entity status; the PTO would only be changing the ease with 
which small entity status can be claimed once it has been determined 
that a claim to such status is appropriate.
    Problem and Background: 37 CFR 1.27 currently requires that a 
request for small entity status be accompanied by submission of an 
appropriate statement that the party seeking small entity status 
qualifies in accordance with 37 CFR 1.9. Either a reference to 37 CFR 
1.9 or a specific statement relating to the provisions of 37 CFR 1.9 is 
mandatory. For a small business, the small business must either state 
that exclusive rights remain with the small business, or if not, 
identify the party to which some rights have been transferred so that 
the party to which rights have been transferred can submit its own 
small entity statement (37 CFR 1.27(c)(1)(iii)). This can lead to the 
submission of multiple small entity statements for each request for 
small entity status where rights in the invention are split. The 
request for small entity status and reference/statement may be 
submitted prior to paying, or at the time of paying, any small entity 
fee. In part, to ensure that at least the reference to 37 CFR 1.9 is 
complied with, the PTO has produced four types of small entity 
statement forms (including ones for the inventors, small businesses and 
non-profit organizations) that include the required reference to 37 CFR 
1.9 and specific statements as to exclusive rights in the invention. 
Additionally, the statement forms relating to small businesses and non-
profit organizations need to be signed by an appropriate official 
empowered to act on behalf of the small business or non-profit 
organization. Refunds of non-small entity fees can only be obtained if 
a refund is specifically requested within two months of the payment of 
the full (non-small entity) fee and is supported by the required small 
entity statement. See 37 CFR 1.28(a)(1). The two-month refund window is 
not extendable.
    The rigid requirements of 37 CFR 1.27 and 1.28 have led to a 
substantial number of problems. Applicants, particularly pro se 
applicants, do not always recognize that a particular reference to 37 
CFR 1.9 is required in their request to establish small entity status. 
They believe that all they have to do is pay the small entity fee and 
state that they are a small entity. Further, the time required to 
ascertain who are the appropriate officials to sign the statement and 
to have the statements (referring to 37 CFR 1.9) signed and collected 
(where more than one is necessary), results, in many instances, in 
having to pay the higher non-small entity fees and then seek a refund. 
These situations result in: (1) small entity applicants also having to 
pay additional fees (e.g., surcharges and extension(s) of time fees for 
the delayed submission of the small entity statement form); (2) 
additional correspondence with the PTO to perfect a claim for small 
entity status; and (3) the filing of petitions with petition fees to 
revive abandoned applications. This increases the pendency of the 
prosecution of the application in the PTO and, in some cases, results 
in loss of patent term. For example, under current procedures, if a pro 
se applicant files a new application with small entity fees but without 
a small entity statement, the PTO mails a notice to the pro se 
applicant requiring the full basic filing fee of a non-small entity. 
Even if the applicant timely files a small entity statement, the 
applicant must still timely pay the small entity surcharge for the 
delayed submission of the small entity statement to avoid abandonment 
of the application. A second example is a non-profit organization 
paying the basic filing fee as a non-small entity because of difficulty 
in obtaining the non-profit small entity statement form signed by an 
appropriate official. In this situation, a refund pursuant to 37 CFR 
1.26, based on establishing status as a small entity, may only be 
obtained if a statement under 37 CFR 1.27 and the request for the 
excess amount are filed within the non-extendable two-month period from 
the date of the timely payment of the full fee. A third example is an 
application filed without the basic filing fee on behalf of a small 
business by a practitioner who includes the standard authorization to 
pay additional fees. The PTO will immediately charge the non-small 
entity basic filing fee without specific notification thereof at the 
time of the charge. By the time the deposit account statement is 
received and reviewed, the two-month period for refund may have 
expired.
    Accordingly, a simpler procedure to establish small entity status 
would reduce processing time within the PTO (Patent Business Goal 1) 
and would be a tremendous benefit to small entity applicants as it 
would eliminate the time-consuming and aggravating processing 
requirements that are mandated by the current rules. Thus, the proposed 
simplification would help small entity applicants to receive patents 
sooner with fewer expenditures

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in fees and resources and the PTO could issue the patent with fewer 
resources (Patent Business Goals 4 and 5).
    Simplified Request for Small Entity Status: The PTO is considering 
allowing small entity status to be established by the submission of an 
assertion of entitlement to small entity status. The current formal 
requirements of 37 CFR 1.27, which include a reference to either 37 CFR 
1.9, or to the exclusive rights in the invention, would be eliminated. 
If small entity status is to be requested at the time of payment of the 
basic filing fee, the payment of the (exact) small entity basic filing 
fee will be considered to be a sufficient assertion. If small entity 
status was not established when the basic filing fee was paid, a later 
claim to small entity status would be by way of a written assertion. 
Payment of a small entity fee (e.g., extension of time, or issue fee) 
without inclusion of a written assertion would not be sufficient.
    The written assertion will not be required to be presented in any 
particular form. Written assertions of small entity status or 
references to small entity fees will be liberally interpreted to 
represent the required assertion. The written assertion could be made 
in any paper filed in or with the application and need be no more than 
a simple sentence or a box checked in an application transmittal letter 
or reply cover sheet. Accordingly, small entity status could be 
established without submission of any of the current small entity 
statement forms (PTO/SB/09-12) that embody and comply with the current 
requirements of 37 CFR 1.27 and which are therefore now used to 
establish small entity status.
    An applicant filing a patent application and paying the exact small 
entity basic filing fee would automatically establish small entity 
status for the application even without any further written assertion 
of small entity status. If payment is made, but it is not the exact 
small entity basic filing fee required and a written assertion of small 
entity status is not present, the PTO would mail a notice of 
insufficient filing fees as in current practice. The PTO would not 
consider a basic filing fee submitted in an amount above the correct 
small entity basic filing fee, but below the non-small entity filing 
fee, as a request to establish small entity status unless an additional 
written assertion is also present. Of course, the submission of a basic 
filing fee below the correct small entity basic filing fee would not 
serve to establish small entity status. Where an application is 
originally filed by a party, who is in fact a small entity, with an 
authorization to charge fees (including filing fees) and no indication 
(assertion) of entitlement to small entity status, that authorization 
would not be sufficient to establish small entity status unless the 
authorization was specifically directed to small entity filing fees. 
The general authorization to charge fees would continue to be acted 
upon immediately and the full (not small entity) filing fees would be 
charged with applicant having two months to request a refund by 
asserting entitlement to small entity status. This would be so even if 
the application were a continuing application where small entity status 
had been established in the prior application.
    Once small entity status is established in an application, any 
change in status from small to non-small, would also require a specific 
written assertion to that extent, similar to current practice.
    The party who could request small entity status would be any party 
permitted by PTO regulations to pay the basic filing fee and file a 
paper in the application. This eliminates the additional requirement of 
obtaining the signature of an appropriate party other than the party 
prosecuting the application. By way of example, in the case of three 
pro se inventors for a particular application, any of the three 
inventors upon filing the application could pay a small entity basic 
filing fee and thereby establish small entity status for the 
application. For small business concerns and non-profit organizations, 
the practitioner could supply the assertion rather than the current 
requirement for an appropriate official of the organization to execute 
a small entity statement form.
    PTO policy and procedures already permit establishment of small 
entity status in certain applications through simplified procedures. 
For example, small entity status may be established in a continuing or 
reissue applications simply by payment of the small entity basic filing 
fee if the prior application/patent had small entity status. See 37 CFR 
1.28(a)(2). The instant concept of payment of the basic statutory 
filing fee to establish small entity status in a new application is 
merely a logical extension of that practice.
    There may be some concern that elimination of the small entity 
statement forms will result in applicants requesting small entity 
status who are not actually entitled to such status. On balance, it 
seems that more errors occur where small entity applicants who are 
entitled to such status run afoul of procedural hurdles formed by the 
requirements of 37 CFR 1.27 than the requirements help to prevent 
status claims for those who are not in fact entitled to such status.
    Correction of any inadvertent and incorrect establishment of small 
entity status would be by way of a paper under 37 CFR 1.28(c) as in 
current practice.
    Continued Obligations for Thorough Investigation of Small Entity 
Status: Applicants should not confuse the fact that the PTO is making 
it easier to qualify for small entity status with the need to do a 
complete and thorough investigation and to assert that they do in fact 
qualify for small entity status. It should be clearly understood that, 
even though it would be much easier to assert and thereby establish 
small entity status, applicants would continue to need to make a full 
and complete investigation of all facts and circumstances before making 
a determination of actual entitlement to small entity status. Where 
entitlement to small entity status is uncertain it should not be 
claimed. See MPEP 509.03. The assertion of small entity status (even by 
mere payment of the exact small entity basic filing fee) is not 
appropriate until such an investigation has been completed. Thus, in 
the previous example of the three pro se inventors, before one of the 
inventors could pay the small entity basic filing fee to establish 
small entity status, the inventor would need to check with the other 
two inventors to determine whether small entity status was appropriate.
    The intent of 37 CFR 1.27 is that the person making the assertion 
of small entity status is the person in a position to know the facts 
about whether or not status as a small entity can be properly 
established. That person, thus, has a duty to investigate the 
circumstances surrounding entitlement to small entity status to the 
fullest extent. Therefore, while the PTO is interested in making it 
easier to claim small entity status, it is important to note that small 
entity status must not be claimed unless the person or persons can 
unequivocally make the required self-certification.
    Consistent with 37 CFR 1.4(d)(2), which sets forth that for the 
presentation to the PTO (whether by signing, filing, submitting, or 
later advocating) of any paper by a party, whether a practitioner or 
non-practitioner, the payment of a small entity basic filing fee would 
constitute a certification under 37 CFR 10.18. Thus, a simple payment 
of the small entity basic statutory filing fee will activate the 
provisions of 37 CFR 1.4(d)(2) and, by that, provoke the self-
certification as set forth in 37 CFR 10.18(b), regardless of whether 
the party is a practitioner or non-practitioner.

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2. Requiring separate surcharges and supplying filing receipts (37 CFR 
1.53)
    Summary: The PTO is considering charging separate surcharges in a 
nonprovisional application for the delayed submission of an oath/
declaration, and the application filing fee, and issuing another filing 
receipt, without charge, to correct any errors or to update filing 
information, as needed.
    Specifics of Change Being Considered: The PTO would charge a 
separate surcharge (currently $130) for each missing part item that is 
submitted in a delayed manner. Thus, the delayed submission of both an 
oath/declaration under 37 CFR 1.63, and the payment of the basic filing 
fee in a nonprovisional application filed under 35 U.S.C. 111(a), would 
result in the imposition of two surcharges (totaling $260). The change 
under consideration would not apply to provisional applications filed 
under 35 U.S.C. 111(b) and 37 CFR 1.53(c). In addition, as the basic 
national fee must be submitted by the expiration of the applicable 
twenty- or thirty-month period in 35 U.S.C. 371(b) in a PCT 
application, the change under consideration would also be inapplicable 
to applications filed under the PCT.
    While the PTO would be charging a separate surcharge for each 
missing part submitted in a delayed manner, the PTO would also be 
providing three new user-friendly services which were requested by, and 
would provide benefits that are desired by, our customers. The three 
new user-friendly services are: (1) issuing a corrected filing receipt 
without the fee presently required by 37 CFR 1.9(h) when an oath/
declaration, and/or the payment of the application filing fee are 
submitted in a delayed manner; (2) issuing a corrected filing receipt 
without the fee presently required by 37 CFR 1.19(h), and without a 
question as to fault, for any error in the filing receipt; and (3) 
placing a copy of each filing receipt supplied to the applicant in the 
application file as evidence of issuance of the filing receipt.
    Background: Approximately thirty-one per cent of all nonprovisional 
applications filed are missing parts applications, that is, an 
application filed without an executed oath/declaration and/or the 
application filing fee, with a substantial burden being placed on the 
PTO to provide additional handling, storage and processing for these 
missing part applications. Neither the payment of the application 
filing fee nor an oath/declaration in compliance with 37 CFR 1.63 is 
needed for an application to meet the minimum requirements to be 
accorded a filing date in a nonprovisional application. See 37 CFR 
1.53(b). Currently, the PTO charges a single surcharge of $130 for the 
filing of an oath/declaration or the filing fee or both on a date later 
than the application filing date. At present, the PTO issues a filing 
receipt at the time a determination is made that an application meets 
the minimum requirements to receive a filing date. The filing receipt 
includes, among other things, bibliographic information (e.g., 
inventive entity/application identifier, title, continuing data, 
inventor's city and state address, foreign priority, attorney docket 
number), while also denoting, among other things, the application 
number, filing date and receipt of the application filing fee. A 
``Notice of Omitted Item(s)'' (form PTO-1669) or a ``Notice To File 
Missing Parts'' (PTO-1533), if needed, are mailed separately. A 
``Notice of Omitted Items'' is mailed by the PTO in an application 
wherein the application papers so deposited have been accorded a filing 
date, but a portion (e.g., some of the page(s) of or figure(s) of 
drawings described in the specification) has been omitted from the 
submitted application parts. See Change in Procedure Relating to an 
Application Filing Date; Notice, 61 FR 30041 (June 13, 1996), 1188 Off. 
Gaz. Pat. Office 48 (July 9, 1996), and MPEP 601.01(d)-(h). A ``Notice 
To File Missing Parts'' is mailed by the PTO in an application wherein 
a part of the application (e.g., the oath/declaration, or the 
appropriate application filing fee) has been omitted on filing. See 
Changes in Practice in Supplying Certified Copies and Filing Receipts; 
Notice, 1199 Off. Gaz. Pat. Office 38 (June 10, 1997), and MPEP 
601.01(a). Examination of the application does not begin until all the 
required parts (e.g., filing fee, and oath/declaration) are received. 
See 37 CFR 1.53(h).
    In addition, the PTO recently amended 37 CFR 1.41 and 1.53 
(effective December 1, 1997) to provide that the names of the inventors 
are no longer required in order for an application to meet the minimum 
requirements to be accorded a filing date. See Changes to Patent 
Practice and Procedure; Final Rule Notice, 62 FR 53131, 53186-88 
(October 10, 1997), 1203 Off. Gaz. Pat. Office 63, 111-13 (October 21, 
1997). The names of all the inventors are taken from an executed oath/
declaration timely submitted in compliance with 37 CFR 1.63, with the 
inventive entity being set at that time, 37 CFR 1.41(a)(1). The filing 
receipt is mailed even if an oath/declaration in compliance with 37 CFR 
1.63, the application filing fee, or the actual names of the inventors 
have not been submitted on filing. In an application which is entitled 
to a filing date but not naming the actual inventors on filing, an 
identifier (e.g., the attorney's docket number, or all or a part of the 
names of the actual inventors) may be used to identify the application, 
37 CFR 1.41(a)(3). In the past, upon the filing of an oath/declaration 
in compliance with 37 CFR 1.63, the PTO did not issue a corrected 
filing receipt, but only updated PTO records as to the actual inventors 
for the application. If (1) the inventive entity being submitted by the 
later filed oath/declaration was different from the identifier/
inventive entity used to identify the application on filing and (2) 
applicant(s) desired a corrected filing receipt containing the 
corrected information or correction of any other information contained 
thereon (not due to PTO error), then applicant(s) had to request such 
in a separate paper filed with the PTO along with the requisite fee 
under 37 CFR 1.19(h). Further, where a proper small entity statement 
was not submitted until after the mailing of the filing receipt and a 
corrected filing receipt was desired to show small entity status based 
on the small entity statement submitted after the mailing of the filing 
receipt, a request for such a corrected filing receipt must have been 
filed along with the requisite fee under 37 CFR 1.19(h).
    Separate surcharges: The cost for processing these missing parts 
applications has increased. Further, the separate submission of each 
missing part in a delayed manner causes the PTO to perform double the 
amount of work, as the application would be twice processed for a 
submitted missing part, with presently only one surcharge being 
required. Those who delay in submitting either of the items noted above 
should bear the costs. Patent Business Goal (5) is to assess fees 
commensurate with resource utilization and customer efficiency. In 
support of that goal, it is being considered that a separate surcharge 
be required for the filing of an oath/declaration in compliance with 37 
CFR 1.63, and for the payment of the application filing fee on a date 
later than the application filing date. Therefore, if both the oath/
declaration and the application filing fee were submitted on a date 
later than the application filing date, a payment of $260 ($130 for the 
late filing of the oath/declaration, and $130 for the late filing of 
the application filing fee) in current fees would be due on the 
application.
    No incentive currently exists for the submission of the basic 
filing fee on filing if an executed oath or declaration is not also 
available for submission.

[[Page 53503]]

This change would encourage applicants to submit the basic filing fee 
on filing, even if an executed oath or declaration is not available for 
submission. Patent Business Goal (1) is to reduce PTO processing time 
to twelve months or less for all inventions. This change, in 
combination with the change under consideration in topic 3, would 
reduce pre-examination processing time, since it would encourage the 
submission on filing of an application in condition for examination, 
even if an executed oath or declaration is not available for submission 
on filing.
    Three new services: While the PTO would be charging a separate 
surcharge for each missing part submitted in a delayed manner, the PTO 
would also be providing three new user-friendly services which were 
requested by our customers and provide benefits that are desired by our 
customers. As a first new service, in addition to the filing receipt 
being mailed at the time the application is accorded a filing date, a 
corrected filing receipt would always be mailed to reflect receipt of 
the oath/declaration in compliance with 37 CFR 1.63, and/or the payment 
of the application filing fee when they are submitted. No longer would 
applicant have to file a request for a new filing receipt, to pay a 
separate fee for it per 37 CFR 1.19(h), or submit a status letter to 
see if PTO records were updated due to the filing of the oath/
declaration. The corrected filing receipt should reflect the actual 
inventive entity of the application, if it was mailed in response to 
the receipt of the oath/declaration in compliance with 37 CFR 1.63. 
Patent Business Goal (4) is to exceed our customers' quality 
expectations, through the competencies and empowerment of our 
employees. This new service would be in support of that goal. The PTO 
has begun this first new service in anticipation of the increase in 
surcharge fees and to better serve our customers' needs.
    As a second new service, if there is an error in the data printed 
on the filing receipt and a request for a corrected receipt is 
submitted, the PTO would issue a corrected filing receipt without a fee 
and without a question as to fault. Patent Business Goal (1) is to 
reduce PTO processing time to twelve months or less for all inventions. 
Patent Business Goal (4) is to exceed our customers' quality 
expectations, through the competencies and empowerment of our 
employees. Without having to determine who caused the error in the 
filing receipt, corrected filing receipts would be issued faster and 
with less inconvenience to all, which would be in support of those 
goals. Further, the PTO has received substantial feedback that timely 
receipt of an accurate filing receipt is of great importance to our 
customers. This second new service is in direct response to this 
repeated message. Again, the PTO has already begun this second new 
service in anticipation of the increase in surcharge fees and to better 
serve our customers' needs.
    As a third new service, every time a filing receipt is issued, the 
PTO would place a copy of the filing receipt in the application file as 
evidence thereof. Today, a copy of a filing receipt is not placed in 
the application file, irrespective of the reasons for its issuance. By 
always placing a copy of the filing receipt in the application file, it 
will be easier to later determine whether there is still an error in 
the filing receipt in question, or whether a filing receipt or a 
corrected filing receipt was actually mailed. Further, since a copy of 
the filing receipt would now be located in the application file, the 
time for the PTO to answer questions regarding a particular filing 
receipt would be greatly reduced. Patent Business Goal (4) is to exceed 
our customer's quality expectations, through the competencies and 
empowerment of our employees. This would be in support of that goal.
3. Permitting delayed submission of an oath or declaration, and 
changing the time period for submission of the basic filing fee and 
English translation (37 CFR 1.52, 1.53)
    Summary: The PTO is considering amending 37 CFR 1.53 to provide 
that an executed oath or declaration for a nonprovisional application 
would not be required until the expiration of a period that would be 
set in a ``Notice of Allowability'' (PTOL-37). The PTO is also 
considering amending 37 CFR 1.52 and 1.53 to provide that the basic 
filing fee and an English translation (if necessary) for a 
nonprovisional application must be submitted within one month (plus any 
extensions under 37 CFR 1.136) from the filing date of the application.
    Specifics of Change Being Considered: The PTO is considering 
amending 37 CFR 1.53 to provide that an executed oath or declaration 
for a nonprovisional application would not be required until the 
applicant is notified that it must be submitted within a one-month 
period that would be set in a ``Notice of Allowability,'' provided that 
the following are submitted within one month (plus any extensions under 
37 CFR 1.136) from the filing date of the application: (1) the name(s), 
residence(s), and citizenship(s) of the person(s) believed to be the 
inventor(s); (2) all foreign priority claims; and (3) a statement 
submitted by a registered practitioner that: (a) an inventorship 
inquiry has been made, (b) the practitioner has sent a copy of the 
application (as filed) to each of the person(s) believed to be the 
inventor(s), (c) the practitioner believes that the inventorship of the 
application is as indicated by the practitioner, and (d) the 
practitioner has given the person(s) believed to be the inventor(s) 
notice of their obligations under 37 CFR 1.63(b). In addition, the PTO 
is considering requiring an applicant to file a continuing application 
to file an executed oath or declaration naming an inventorship 
different from that previously stated by the practitioner once 
prosecution in an application is closed.
    The PTO is also considering amending 37 CFR 1.52 and 1.53 to 
provide, by rule, that the basic filing fee and an English translation 
(if the application was filed in a language other than English) for a 
nonprovisional application must be submitted within one month (plus any 
extensions under 37 CFR 1.136) from the filing date of the application. 
Applicants will not be given a notice (e.g., a ``Notice To File Missing 
Parts'' (PTO-1533)) that the basic filing fee is missing or 
insufficient, unless the application is filed with an insufficient 
basic filing fee that at least equals the basic filing fee that was in 
effect the previous fiscal year. Finally, the filing receipt will 
indicate the amount of filing fee received and remind applicants that 
the basic filing fee must be submitted within one month (plus any 
extensions under 37 CFR 1.136) from the filing date of the application.
    These changes will permit the PTO to virtually eliminate the 
current practice of mailing notices (e.g., a ``Notice To File Missing 
Parts'') during the initial processing of a nonprovisional application 
to require submission of an oath or declaration, basic filing fee, or 
an English translation.
    Background: As discussed above, 37 CFR 1.53(b), as amended 
effective December 1, 1997, does not require that a nonprovisional 
application under 35 U.S.C. 111(a) include an executed oath or 
declaration under 37 CFR 1.63, the names of the inventor(s), any filing 
fee, or English language application papers for the application to meet 
the minimum requirements to be accorded a filing date. The PTO, 
however, does not examine the application until an executed oath or 
declaration under 37 CFR 1.63 (naming the inventor(s)), the filing fee, 
and English language application papers are submitted. If an

[[Page 53504]]

executed oath or declaration under 37 CFR 1.63, filing fee, or English 
language application papers are not submitted with the filing of a 
nonprovisional application, the PTO will mail a notice requiring that 
they be filed (with a surcharge) within two months from the mail date 
of the notice (plus any extensions under 37 CFR 1.136) to avoid 
abandonment.
    The PTO has received numerous comments from the public indicating 
that there is great difficulty in filing an executed oath or 
declaration (e.g., at times it is difficult to determine the names of 
the actual inventor(s) or it may be difficult to locate the 
inventor(s)), and that pre-examination processing of a nonprovisional 
application is a long burdensome process. Difficulty in obtaining the 
signatures of all the inventor(s) has often resulted in a petition (and 
fee) under 37 CFR 1.47 (filing when an inventor refuses to sign or 
cannot be reached). The PTO cannot eliminate the requirement for an 
oath or declaration in a nonprovisional application without a statutory 
change. See 35 U.S.C. 111(a)(2)(C) and 115. The Commissioner, however, 
has latitude as to when an oath or declaration and the filing fee must 
be submitted for a nonprovisional application. See 35 U.S.C. 111(a)(3).
    Discussion: The PTO is considering amending 37 CFR 1.53 to provide 
that an executed oath or declaration for a nonprovisional application 
is not required until the expiration of a period that would be set in a 
``Notice of Allowability'' (plus extensions under 37 CFR 1.136), rather 
than prior to examination of the application. Permitting delayed 
submission of the oath or declaration until the expiration of a period 
set in the mailing of a ``Notice of Allowability'' would allow 
practitioners additional time to have the oath or declaration executed 
by all the inventor(s). In addition, if the invention turns out to be 
unpatentable, no signatures for the oath or declaration would ever be 
needed.
    If an oath or declaration is not submitted within one month (plus 
any extensions under 37 CFR 1.136) from the filing date of the 
application, the PTO will require that within this period a registered 
practitioner: (1) submit the name(s), residence(s), and citizenship(s) 
of the person(s) believed to be the inventor(s); (2) submit all foreign 
priority claims; and (3) make and submit a statement that he or she has 
made an inventorship inquiry (i.e., ascertain the inventorship of the 
application to the best of his or her knowledge) and that he or she 
believes that the inventorship is in fact those person(s) so identified 
as the person(s) believed to be the inventor(s). In addition, the 
practitioner must state that he or she has sent such person(s) a copy 
of the application (specification, including claims, and drawings) 
filed in the PTO, and given such person(s) notice of their obligations 
to review and understand the contents of the application and of their 
duty to disclose to the PTO all information known to the person to be 
material to patentability under 37 CFR 1.56. See 37 CFR 1.63(b).
    The surcharge set forth in 37 CFR 1.16(e) would also be required if 
the oath or declaration is submitted on a date later than the filing 
date of the application, regardless of whether the oath or declaration 
is filed before a ``Notice of Allowability'' is mailed.
    For examination purposes, it would be presumed that the inventive 
entity is that set forth by the practitioner in the application as 
forwarded to the examiner. As discussed above, all claims for foreign 
priority benefits under 35 U.S.C. 119 or 365 would be submitted prior 
to examination. The examiner needs this foreign priority claim 
information to determine whether an additional ``back-up'' rejection is 
appropriate. See MPEP 904.02. If an oath or declaration is omitted on 
filing, the first Office action would inform applicant(s) (e.g., 
through an attached Notice of Informal Application, PTO-152 ) that an 
oath or declaration is outstanding.
    37 CFR 1.48(f)(1) would continue to provide that, in an application 
not including an executed oath or declaration, the submission of an 
executed oath or declaration (such as in reply to a ``Notice of 
Allowability'') naming an inventorship different from that previously 
indicated by the practitioner as the person(s) believed to be the 
inventor(s) would operate to correct the inventorship without the need 
for the filing of a petition under 37 CFR 1.48. Nevertheless, this 
action may cause examination-related problems with the application, in 
that upon entry of such an oath or declaration the examiner would have 
to consider whether new rejection(s) are necessary under, for example, 
35 U.S.C. 102(a) (``invention * * * by others''), or 102(e) 
(``invention * * * by another''), or 103/102(a) or (e). Therefore, the 
PTO is considering requiring a processing fee (in addition to the 
surcharge) for submission of such an oath or declaration after the 
first Office action but before the close of prosecution on the merits. 
In addition, if such an oath or declaration necessitates that a new 
ground of rejection be made, the next Office action containing the new 
ground of rejection, absent anything to the contrary, may be made 
final. See MPEP 706.07(a). The PTO is also considering prohibiting the 
submission of such an oath or declaration that names an inventorship 
different from that previously indicated by the practitioner as the 
person(s) believed to be the inventor(s) after prosecution on the 
merits has closed (e.g., after a final Office action, allowance, or 
action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11 (1935)), and 
requiring that a continuing application be filed in order to permit 
entry of such an oath or declaration.
    The right to prosecute an application (e.g., appoint a 
representative by a power of attorney or authorization of agent) flows 
from ownership of the application, which in turn flows from 
inventorship. In the absence of an assignment the inventor has the 
right to conduct prosecution of the application (even if the 
application was prepared and filed by the company for whom the inventor 
works). Where there is an assignment, the assignee may intervene 
pursuant to 37 CFR 3.71 and conduct the prosecution to the exclusion of 
the named inventors. In a large percentage of applications, inventors 
execute an assignment when the oath or declaration under 37 CFR 1.63 is 
executed, and appoint representatives as part of the oath or 
declaration.
    Delaying execution of the oath or declaration will, most likely, 
also encourage delaying execution of the assignment. 37 CFR 3.71 
requires an actual assignee of record and does not provide a right of 
prosecution for parties having an expectation of assignment (e.g., 
based on an employment contract or a shop right). Hence, since a delay 
in executing the oath or declaration under 37 CFR 1.63 will probably 
cause a delay in executing an assignment, an assignee may be unable to 
avail itself of controlling prosecution under 37 CFR 3.71.
    A registered practitioner may take some actions in a patent 
application by providing his registration number on the paper. See 37 
CFR 1.34(b). However, only an attorney or agent that is of record, the 
inventor, or the assignee of the entire interest can take certain 
actions in an application. For example, only an attorney or agent that 
is of record can change the correspondence address. See 37 CFR 1.33(a). 
In addition, only an attorney or agent that is of record may execute a 
power to inspect. See 37 CFR 1.14(e)(2).
    The PTO is also considering amending 37 CFR 1.34(b) to include in 
the definition of ``attorney or agent of record'' the attorney or agent 
that filed

[[Page 53505]]

the application. With such a change, an appointment as a representative 
would not be required before the attorney could change the address in 
the application file or authorize another to inspect the patent 
application file, among other things. In addition, 37 CFR 1.34(b) would 
be amended to provide that a pro se inventor who signs a transmittal 
letter for an application is considered to represent all inventors for 
the purposes of prosecuting the patent application. Pro se inventors 
frequently do not realize that all inventors need to sign each piece of 
correspondence to the Office (e.g., each amendment, see MPEP 714.01(a)) 
and a pro se inventor will frequently have difficulty obtaining the 
other inventor's signature during the time provided. With such a 
change, pro se applicants that do not have the foresight of appointing 
a single representative will have an easier time filing a response to 
Office actions.
    Additionally, the PTO is considering amending 37 CFR 1.52(d) and 
1.53 to provide that an English language translation (if the 
application was filed in a language other than English) and the basic 
filing fee be submitted no later than one month from the filing date of 
the nonprovisional application. This one-month period would be 
extendable under 37 CFR 1.136. The current process of mailing notices 
(e.g., a ``Notice To File Missing Parts'' (PTO-1533)) which gives a 
period (e.g., two months) for submitting the basic filing fee or 
English translation in a nonprovisional application would be 
eliminated, as: (1) the basic filing fee would be due on filing, or 
required with the surcharge under 37 CFR 1.16(e) within one month (plus 
extensions under 37 CFR 1.136) from the filing date of the application; 
and (2) any English translation (if the application was filed in a 
language other than English) would be required with the processing fee 
set forth in 37 CFR 1.17(k) within one month (plus extensions under 37 
CFR 1.136) from the filing date of the application. Except for the 
situation discussed below, there is no apparent justification for the 
PTO continuing to mail notices to advise applicants of that which they 
should already know: (1) that they did not submit the basic filing fee 
with the application; or (2) that they did not file the application in 
English.
    For example: (1) if the basic filing fee is submitted on filing, no 
surcharge under 37 CFR 1.16(e) or extension fee under 37 CFR 1.17(a) is 
required; (2) if the basic filing fee is not submitted on filing but is 
submitted within one month of the application filing date, the 
surcharge under 37 CFR 1.16(e) is required but no extension fee under 
37 CFR 1.17(a) is required; and (3) if the basic filing fee is not 
submitted on filing or within one month of the application filing date, 
but is submitted within six months (the one month that would be 
provided by rule plus five additional months that may be obtained 
pursuant to 37 CFR 1.136) of the application filing date, the surcharge 
under 37 CFR 1.16(e) and appropriate extension fee under 37 CFR 1.17(a) 
are required. The processing fee set forth in 37 CFR 1.17(k) is 
required whenever the original application is filed in a language other 
than English, regardless of when the English translation is submitted.
    Exception: In the situation in which an application is filed with 
an insufficient basic filing fee (due to a fee increase) that at least 
equals the basic filing fee that was in effect the previous Fiscal 
Year, the applicant will be given a filing fee deficiency notice, which 
notice will set a one-month period (extendable under 37 CFR 1.136) 
within which the balance of the current basic filing fee and the 
surcharge under 37 CFR 1.16(e) must be filed to avoid abandonment. In 
all other situations, the current basic filing fee, if not submitted on 
filing, must be submitted with the surcharge under 37 CFR 1.16(e) 
within one month (plus any extensions under 37 CFR 1.136) from the 
filing date of the application to avoid abandonment of the application. 
The filing receipt will indicate the filing fee received and would be 
modified to include language reminding applicants that the basic filing 
fee must be submitted within one month (plus any extensions under 37 
CFR 1.136) from the filing date of the application.
    For PCT international applications: The PTO is considering amending 
37 CFR 1.494 and 1.495 to provide that an English translation of the 
international application, if filed in a language other than English 
(35 U.S.C. 371(c)(2)), would be required within one month of the 
expiration of the applicable twenty-or thirty-month period in 35 U.S.C. 
371(b), which one-month period may be extended under 37 CFR 1.136. The 
PTO is also considering amending 37 CFR 1.494 and 1.495 to provide that 
an oath or declaration (35 U.S.C. 371(c)(4)) would not be required 
until the applicant is notified that it must be submitted within a one-
month period that would be set in a ``Notice of Allowability,'' 
provided that the following are submitted within one month (which one-
month period may be extended under 37 CFR 1.136) of the expiration of 
the applicable twenty-or thirty-month period in 35 U.S.C. 371(b): (1) 
the residence of each inventor (the name and citizenship of each 
inventor must be provided on the PCT Request); and (2) a statement 
submitted by a registered practitioner that: (a) the practitioner has 
sent a copy of the application (as filed) to each of the inventors, and 
(b) the practitioner has given the inventor(s) notice of their 
obligations under 37 CFR 1.63(b). The basic national fee (35 U.S.C. 
371(c)(1)) would continue to be required by the expiration of the 
applicable twenty-or thirty-month period in 35 U.S.C. 371(b), which 
period is non-extendable.
    Patent Business Goal (1) is to reduce PTO processing time to twelve 
months or less for all inventions. Reducing pre-examination cycle time 
of an application and forwarding applications for examination in a 
shorter period of time would be consistent with that goal. This change 
(in combination with the change to the period within which an oath or 
declaration must be submitted) will greatly reduce the number of 
notices that the PTO must issue during the pre-examination processing 
of new applications. These changes will also result in applications 
being initially processed and forwarded for examination in a shorter 
period of time, and reduce the amount of storage space used for and 
ease the tracking of applications in pre-examination processing.
    The PTO considers the changes to permit delayed submission of an 
oath or declaration and to require the basic filing fee and any 
necessary translation within one month of the application filing date 
to be linked, in that together they will permit a great reduction in 
the number of notices that the PTO must issue during the pre-
examination processing of new applications. Thus, comments opposing any 
change to require the basic filing fee and any necessary translation 
within one month of the application filing date should consider that 
the PTO will probably not adopt the change to permit delayed submission 
of an oath or declaration if the PTO does not also adopt the change to 
require the basic filing fee and any necessary translation within one 
month of the application filing date.
    Questions: The PTO is specifically requesting comments on the 
following issues:
    1. The submission of an oath or declaration after the first Office 
action which changes the names of the inventor(s) from those originally 
indicated by the practitioner may cause additional work to be performed 
by the PTO, in particular, by an examiner, as set forth above. As a 
result, the PTO is considering charging an additional processing fee 
for the submission of

[[Page 53506]]

such an oath or declaration, and prohibiting the submission of such an 
oath or declaration after the close of prosecution. Would the benefits 
gained by the ability to delay the filing of the oath or declaration 
outweigh the drawbacks resulting from: (1) the PTO charging a fee for 
the submission of such an oath or declaration after the first Office 
action but before close of prosecution; and (2) the PTO prohibiting the 
submission of an oath or declaration that names an inventorship 
different from that previously indicated by the practitioner as the 
person(s) believed to be the inventor(s) after the close of 
prosecution?
    2. Over time, obtaining an executed oath or declaration from all of 
the inventors becomes increasingly difficult: inventors may forget 
about or lose interest in an application; they may leave the 
corporation; and they may become disgruntled. While delaying obtaining 
the inventor's signature on an oath or declaration may be initially 
beneficial to the practitioner, it would be more difficult for the 
practitioner to obtain all of the inventors' signatures on an oath or 
declaration at the time of allowance (which may be years after filing). 
National applications resulting from a PCT application entering the 
national stage have a higher incidence of petitions under 37 CFR 1.47 
than national applications filed under 35 U.S.C. 111(a). This may be 
caused by delay in filing the oath or declaration, which could be 
thirty months after the filing of the PCT application. Therefore, 
permitting applicants to delay the submission of an oath or declaration 
until the expiration of a period set in a ``Notice of Allowability'' 
may result in an increase in the number of petitions filed under 37 CFR 
1.47. Would the benefits gained by delaying the filing of the oath or 
declaration outweigh the drawbacks resulting from the increased 
difficulty in obtaining the inventor(s)' signatures on the oath or 
declaration, and an increased number of petitions under 37 CFR 1.47 due 
to the inability to obtain an inventor's signature? Is it a concern to 
applicants that these petitions under 37 CFR 1.47 will be filed during 
the publishing (and not pre-examination) process?
    3. Delaying submission of the oath or declaration in a PCT 
application until the mailing of a ``Notice of Allowability'' would 
delay its entry into the national stage. A PCT application is not 
accorded a 35 U.S.C. 102(e) date until the applicant fulfills the 
requirements of 35 U.S.C. 371(c)(1), (2) and (4), which include filing 
an oath or declaration in compliance with 35 U.S.C. 115 and 37 CFR 
1.497. See 35 U.S.C. 371(c)(4). Is it a concern that, if an applicant 
in a PCT application delays submission of the oath or declaration until 
the period set in a ``Notice of Allowability,'' the PCT application 
would be accorded a 35 U.S.C. 102(e) date as of the date the oath or 
declaration is submitted?
    4. Assuming the above-noted change to 37 CFR 1.34(b) is made giving 
control of the prosecution to the filer (the attorney or agent that 
filed the patent application) and the attorney or agent's client is not 
the inventor, can the client (a potential assignee) take actions 
allowed an assignee, such as filing a reissue application under 37 CFR 
1.172 and submitting a 37 CFR 3.73 statement establishing the right of 
an assignee to take action?
    5. Assuming the above-noted change to 37 CFR 1.34(b) is made, how 
should an attempt by the inventor(s) to appoint another representative 
be treated? Should the inventor(s) first be required to file an oath or 
declaration under 37 CFR 1.63? Should an actual assignee of the 
inventor(s) be allowed to take action in an application and revoke the 
attorney of record if an executed oath or declaration of the 
inventor(s) has not been filed?
    6. Notwithstanding any change to 37 CFR 1.34(a), where the 
inventors execute an assignment but not an oath or declaration under 37 
CFR 1.63, is the assignment effective so that the assignee can control 
prosecution under 37 CFR 3.71 and take necessary action in accordance 
with 37 CFR 3.73? Note that if status under 37 CFR 1.47 is accorded, if 
the inventor who originally refused to execute the oath or declaration 
assigns his interest, the non-signing inventor's assignee cannot 
control prosecution of the application even if the inventor executes a 
declaration. Who should the attorney or agent be understood to 
represent absent an express authorization to act as a representative in 
the application, the persons indicated as the inventors or an actual or 
potential assignee?
4. Limiting the number of claims in an application (37 CFR 1.75)
    Summary: The PTO is considering a change to 37 CFR 1.75 to limit 
the number of total and independent claims that will be examined (at 
one time) in an application.
    Specific Change Being Considered: The PTO is considering a change 
to the rules of practice to: (1) limit the number of total claims that 
will be examined (at one time) in an application to forty; and (2) 
limit the number of independent claims that will be examined (at one 
time) in an application to six. In the event that an applicant 
presented more than forty total claims or six independent claims for 
examination at one time, the PTO would withdraw the excess claims from 
consideration, and require the applicant to cancel the excess claims. 
This change would apply to all non-reissue utility applications filed 
on or after the effective date of the rule change, to all reissue 
utility applications in which the application for the original patent 
was subject to this change, and to national applications filed under 35 
U.S.C. 111(a), as well as national applications that resulted from a 
PCT international application.
    Discussion: Applications containing an excessive number of claims 
present a specific and significant obstacle to the PTO's meeting its 
business goals of reducing PTO processing time to twelve months or less 
for all inventions. While the applications that contain an excessive 
number of claims are relatively few in percentage (less than 5%), these 
applications impose a severe burden on PTO clerical and examining 
resources, as they are extremely difficult to properly process and 
examine. The extra time and effort spent on these applications has a 
negative ripple effect, resulting in delays in the processing and 
examination of all applications, which, in turn, results in an increase 
in pendency for all applications. In view of the patent term provisions 
of 35 U.S.C. 154, as amended by the Uruguay Round Agreements Act 
(URAA), Pub. L. 103-465, 108 Stat. 4809 (1994), PTO processing time and 
pendency are concerns to the PTO and all applicants. Thus, the PTO 
considers it inappropriate to continue to permit the proclivity of a 
relatively low number of applicants (less than 5%) for excessive claim 
presentation to result in delays in examination and unnecessary 
pendency for the vast majority of applicants.
    Approximately 215,000 utility applications were filed in the PTO in 
Fiscal Year 1997. PTO computer records indicate that the approximate 
number and percentage of applications filed in Fiscal Year 1997 
containing the following ranges of independent and total claims breaks 
down as follows:

[[Page 53507]]



------------------------------------------------------------------------
                                                           Percentage FY
Applications filed in FY 1997 containing      Number       1997 filings
------------------------------------------------------------------------
Over 50 independent claims..............              11          00.005
Between 41 and 50 independent claims....              23          00.011
Between 31 and 40 independent claims....              77          00.358
Between 21 and 30 independent claims....             275          00.128
Between 16 and 20 independent claims....             536          00.249
Between 11 and 15 independent claims....           1,887          00.878
Between 7 and 10 independent claims.....           7,024          03.267
Between 4 and 6 independent claims......          27,147          12.627
Over 6 independent claims...............           9,833           4.896
Over 500 total claims...................               5          00.002
Between 201 and 500 total claims........              88          00.041
Between 101 and 200 total claims........             652          00.303
Between 61 and 100 total claims.........           2,514          01.169
Between 51 and 60 total claims..........           2,143          00.997
Between 41 and 50 total claims..........           4,056          01.887
Between 31 and 40 total claims..........           8,631          04.014
Between 21 and 30 total claims..........          23,323          10.848
Over 40 total claims....................           9,458           4.399
------------------------------------------------------------------------

    These numbers indicate that over 95% of all applications filed in 
Fiscal Year 1997 contained fewer than forty total claims and over 95% 
of all applications filed in Fiscal Year 1997 contained fewer than six 
independent claims. Thus, the rule change under consideration should 
not prevent the overwhelming majority of applicants from presenting the 
desired number of total and independent claims for examination. In 
addition, the rule change under consideration will benefit the 
overwhelming majority of applicants, since it will stop a relatively 
small number of applicants from occupying an inordinate amount of PTO 
resources.
    While the problem with applications containing an excessive number 
of claims is now reaching a critical stage, this problem has long 
confronted the PTO. In 1926, Commissioner Robertson remarked that 
applications containing an excessive number of claims constitute the 
greatest abuse confronting the PTO (then the Patent Office). See Ex 
parte McCullough, 1927 Dec. Comm'r Pat. 12, 13 (1926). The issuance of 
patents containing an excessive number of claims has also long been 
considered an abuse of the courts and the public. See Carlton v. Bokee, 
84 U.S. (17 Wall) 463, 471-72 (1873) (needless multiplication of 
nebulous claims deemed calculated to deceive and mislead the public); 
Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1551 n.6, 10 
USPQ2d 1201, 1206 n.6 (Fed. Cir. 1989) (presentation of the 
infringement issue on an overgrown claims jungle to a jury and judge at 
trial is an unprofessional exercise in obfuscation). Put simply, 
applications (and the resulting patents) that contain an excessive 
number of claims are a problem that has long confronted the PTO, the 
courts, and the public.
    Historically, this problem (applications containing an excessive 
number of claims) has been dealt with on a case-by-case basis, in that 
the presentation of an unreasonable number of claims in an application 
may result in an undue multiplicity rejection. See MPEP 2173.05(n). The 
CCPA has affirmed rejections based upon undue multiplicity when the 
degree of repetition and multiplicity'' in the claims ``beclouds 
definition in a maze of confusion.'' See In re Chandler, 319 F.2d 211, 
225, 138 USPQ 138, 148 (CCPA 1963); see also In re Chandler, 254 F.2d 
396, 117 USPQ 361 (CCPA 1958). In subsequent decisions, however, the 
CCPA has declined to hold that the presentation of any particular 
number of claims is so excessive as to confuse or obscure the 
inventions defined by the claims. See In re Wakefield, 422 F.2d 897, 
164 USPQ 636 (CCPA 1970); and In re Flint, 411 F.2d 1353, 162 USPQ 228 
(CCPA 1969). These subsequent decisions have severely cut back on the 
use of rejections based upon undue multiplicity. See Ex parte Sheldon, 
172 USPQ 319 (BPAI 1972).
    After the 1970s, the PTO balanced the difficulty of making and 
defending undue multiplicity rejections with likelihood of its success 
on appeal against the burden of just examining applications containing 
an excessive number of claims, and generally chose to simply suffer the 
burden of examining such applications. Recently, however, this problem 
(applications containing an excessive number of claims) has been 
exacerbated by the advent of word-processing equipment, which 
significantly reduces the skill and effort required to draft and 
present a seemingly endless number of claims in an application. The 
change during the last twenty years to the index of claims in the 
application file wrapper illustrates this point: the file wrapper for 
the 1979 series (the 06 series) applications had an index for fifty 
claims; the file wrapper for the 1987 series (the 07 series) and 1993 
series (the 08 series) applications had an index for 100 claims; the 
file wrapper for the 1998 series (the 09 series) now has an index for 
150 claims.
    For these reasons, it is now time for the PTO to act to limit the 
use of excessive numbers of claims in an application. The PTO is 
specifically proposing to deal with this problem now on a systemic 
basis by limiting, via rulemaking, the number of claims that will be 
examined in an application. This proposal supports the PTO business 
goals of reducing PTO processing time to twelve months or less for all 
inventions, and aligning fees to be commensurate with resource 
utilization and customer efficiency.
    A rule limiting the number of claims in an application is within 
the PTO's rulemaking authority under 35 U.S.C. 6(a) if it ``is within 
the [PTO's] statutory authority and is reasonably related to the 
purposes of the enabling legislation * * * and does no violence to due 
process.'' See Patlex Corp. v. Mossinghoff, 758 F.2d 594, 606, 225 USPQ 
543, 252 (Fed. Cir. 1985) (citations omitted).
    35 U.S.C. 41(a)(1)(B) provides that an applicant must pay an 
additional fee for the presentation of each independent claim in excess 
of three and each claim in excess of twenty. This implies that an 
applicant is entitled to present more than three independent claims, 
and

[[Page 53508]]

more than twenty total claims, but it does not imply that the PTO may 
place no limit on the number of claims that an applicant may present. 
See Ex parte Jenkins, 1930 Dec. Comm'r Pat. 8 (1930) (that the patent 
statute now requires a fee for additional claims does not mean that 
there is no end to the number of claims that the applicant may 
present). In addition, PCT Rule 6.1 specifically states that ``[t]he 
number of claims shall be reasonable in consideration of the nature of 
the invention claimed.'' Placing a reasonable limit (e.g., no more than 
six independent claims and no more than forty total claims) will: (1) 
permit the PTO to more equitably distribute its resources among the 
vast number of applications that must be examined each year (35 U.S.C. 
131 and 132); and (2) assist the PTO, public, and the courts in 
ascertaining what it is that the applicant considers to be the 
invention (35 U.S.C. 112, para. 2).
    35 U.S.C. 131 and 132 require the PTO to examine the more than two 
hundred thousand applications that are filed each year, and 35 U.S.C. 
282 provides that each claim of the patents resulting from these 
applications is presumed to be valid, each independently of the others. 
It is the PTO's goal to issue patents containing claims whose validity 
is based not solely upon presumptions resulting from the patent statute 
and PTO regulations, but based upon the actuality that each claim of 
the applications resulting in such issued patents has been subjected to 
an effective, high-quality examination. In view of the ever increasing 
number of applications filed each year, the PTO has determined that it 
must place some limits on the number of total claims and independent 
claims that an applicant may present in a single application to ensure 
that the PTO continues to issue patents that contain only claims that 
have been subjected to such effective, high-quality examination.
    Such a rule would bear a reasonable relationship to the provisions 
of 35 U.S.C. 112, para. 2, that an application conclude with one or 
more claims particularly pointing out and distinctly claiming the 
subject matter which the applicant regards as his invention. While 35 
U.S.C. 112, para. 2, provides that the claims describe ``the subject 
matter which the applicant regards as his invention'' (emphasis added), 
it does not preclude the PTO from limiting the claims in regard to 
matters of form. See Fressola v. Manbeck, 36 USPQ2d 1211, 1214 (D.D.C. 
1995).
    As discussed above, the historical basis for undue multiplicity 
rejections was that the presentation of an excessive number of claims 
in an application generally operated to confuse or obscure the 
invention. This problem existed in the nineteenth century (Carlton) and 
remains a problem today (Wahpeton Canvas). Limiting the number of 
claims in an application will discourage applicants from presenting 
claims that confuse or obscure the point of the invention. Thus, such a 
rule would advance the statutory goal of 35 U.S.C. 112, para. 2, that 
an application or patent conclude with one or more claims particularly 
pointing out and distinctly claiming the subject matter which the 
applicant regards as his invention. See Fressola, 36 USPQ2d at 1214.
    Any change to 37 CFR 1.75 to limit the number of claims in an 
application must also take into account the situation in which a single 
claim is, in actuality, a plurality of claims (e.g., multiple dependent 
claims, Markush claims (see Ex parte Markush, 1925 Dec. Comm'r Pat. 126 
(1924)), claims referencing plural sequence listings (see MPEP 
2422.04), and claims setting forth (non-Markush) alternative 
limitations (see MPEP 2173.05(h)). A multiple dependent claim will be 
counted as the number of claims to which direct reference is made in 
that multiple dependent claim. See 37 CFR 1.75(c). Limits (for a claim 
to be counted as a single claim) would also be placed on: (1) the 
number of species that may be embraced within a Markush claim; (2) the 
number of sequence listings that may be referenced in a single claim; 
and (3) the number of alternative limitations that may be included in a 
claim.
    The PTO is considering only a limit on the number of claims that 
will be examined in a single application, not a limit of the number of 
claims that may be presented for the invention(s) disclosed in an 
application. Forty total claims with six independent claims should be 
sufficient for an applicant to obtain adequate coverage for an 
invention. An applicant who is unable to limit him or herself to forty 
total or six independent claims in a single application may effectively 
obtain examination of additional claims in another application. As the 
PTO would expend more of its scarce processing and examination 
resources on ten applications containing forty claims each than the PTO 
would expend on a single application containing four hundred claims, 
the PTO's objective is not to have applicants to spread-out excessive 
numbers of claims among multiple applications to increase fee revenue. 
The PTO's objective is to encourage the few applicants who currently 
present an excessive number of claims in an application to place 
reasonable limits on the number of claims presented for examination.
    Nevertheless, an applicant would effectively be permitted to 
present any number of claims for examination by filing any number of 
continuing applications, each application presenting no more than forty 
total or six independent claims for examination. Thus, the PTO's 
refusal to examine more than forty total or six independent claims in a 
single application is not tantamount to a rejection of such claims, as 
the excess claims would be examined if presented in another 
application. See In re Fressola, 22 USPQ2d 1828, 1831-32 (Comm'r Pat. 
1992) (an objection or other requirement is not a rejection if it does 
not interfere with applicant's substantive right of expression).
    In the extraordinary situation in which it would be more beneficial 
to the PTO, the public, and the applicant to permit the applicant to 
maintain more than forty claims in a single application (e.g., numerous 
species claims depending from a single allowable genus claim), the 
applicant may file a petition under 37 CFR 1.183 requesting a waiver of 
this limitation. Such petitions would be decided on a case-by-case 
basis, and would be subject to such other requirements as may be 
imposed. See 37 CFR 1.183.
5. Harmonizing standards for patent drawings (37 CFR 1.84)
    Summary: The PTO is considering harmonizing the requirements for 
patent drawings in 37 CFR 1.84 with the requirements for drawings in 
the Patent Cooperation Treaty (PCT).
    Specifics of Change Being Considered: Amending 37 CFR 1.84 to be 
more similar to PCT Rule 11.13.
    Discussion: The PTO is considering amending 37 CFR 1.84 to 
harmonize the standards for drawings in U.S. national applications with 
the standards for drawings in Patent Cooperation Treaty (PCT) 
applications, which is a well-known and widely accepted standard. The 
PTO has received a number of comments complaining that the same 
drawings which were approved and printed in PCT published applications 
have been objected to under 37 CFR 1.84 in U.S. national applications. 
This inconsistency is not understood by patent applicants who feel that 
a drawing that is acceptable for publication of a PCT application 
should also be acceptable for publication in a U.S. patent. Making 
corrections to drawings to comply with unnecessary requirements 
increases the cost to the applicant and the time required to respond to 
an Office action, both of

[[Page 53509]]

which patent applicants would like to reduce. In response to these 
comments, the PTO is looking into replacing 37 CFR 1.84 with the PCT 
standards for drawing requirements.
    The requirements for drawings in a PCT application are set forth in 
four places, namely: (1) PCT Article 7; (2) PCT Rules 7, 9, 10, 11, and 
12; (3) the PCT Applicant's Guide, Vol. I/A, pages 24-25 (paragraphs 
133-141); and (4) the ``Guidelines for Drawings Under the Patent 
Cooperation Treaty (PCT),'' published in the PCT Gazette (No. 7/1978).
    Current PTO processing of applications with drawings results in 
some unnecessary delays in the handling of those applications contrary 
to Patent Business Goal 1 (reducing PTO processing time). For example, 
petitions are now required in order to accept black and white 
photographs, color drawings or color photographs, and the PTO 
processing of these petitions delays the handling of the application by 
the examiner. The PCT permits black and white photographs, but does not 
permit color photographs or color drawings. Thus, to harmonize with the 
PCT, which does not require a petition to allow black and white 
photographs, the PTO is considering deleting the requirement for a 
petition while providing instead that black and white and color 
photographs and color drawings would be permitted where it is 
impossible to present in a drawing what is to be shown (e.g., 
crystalline structures). The examiner, however, may require drawings, 
where it is possible to present the subject matter in a drawing. For 
example, a syringe may be drawn. Thus, an examiner would require an 
applicant who has submitted an application for a syringe and which 
included a photograph of the syringe to submit a drawing to replace the 
photograph. The PTO does not currently envision an examiner requiring 
color drawings or photographs in a design or utility application where 
black and white drawings or photographs have been submitted.
    Question: The drawing standards for PCT applications may not be 
clearly understood or known because the requirements are set forth in 
the previously identified four different documents, and not everyone 
has easy access to these documents. Nonetheless, it is apparent that 
compliance with the PCT is easier given the experience of many patent 
applicants of having drawings approved in a PCT application, but 
objected to in a United States application. Accordingly, if adoption of 
the PCT standards for drawings is not supported, comments are requested 
as to whether the PTO should keep 37 CFR 1.84 as is, or how it should 
be modified, or should the PTO adopt some other standard for the 
drawings?
6. Printing patents in color (37 CFR 1.84)
    Summary: The PTO is considering printing design and utility patents 
that have color drawings or color photographs in color, along with 
imposing a fee to cover the extra processing and publication costs.
    Specifics of Change Being Considered: The PTO is considering 
deleting the current requirement for a petition (and $130 petition fee) 
to accept color drawings or photographs. The PTO is also considering 
printing in color design and utility patents with color drawings or 
color photographs, and charging a fee to recover the PTO's cost of 
processing and printing design and utility patents with such color 
drawings or color photographs. The cost to the public for ordering 
color copies would continue to be governed by 37 CFR 1.19(a)(2) (for 
plant patents) and 1.19(a)(3) (for utility patents).
    Discussion: The PTO is considering amending 37 CFR 1.84(a) and (b) 
to delete the current requirement for a petition (and $130 petition 
fee) to accept color drawings or photographs. The PTO is also 
considering amending 37 CFR 1.84 to provide for processing and printing 
design and utility patents having color drawings or color photographs 
in color rather than in black and white. A fee will be required. 
Utility and design patents with color drawings or color photographs are 
currently printed in black and white, with a note indicating that color 
drawings or photographs were present in the application. Where color is 
part of applicant's invention, such as where color is a feature of the 
claimed invention in a design application, a member of the public 
seeking to understand the subject matter that is claimed or an examiner 
seeking to understand the invention disclosed in evaluating the patent 
as prior art during examination of another application would have to 
order a color copy of the patent drawings, thereby incurring delays for 
the special handling required. If design and utility applications were 
to be printed in color in the same manner as plant patents are printed 
in color, the copy of the patent in the search files would be a color 
copy and members of the public and examiners would not have to take 
additional steps to understand the disclosure of the patent and the 
scope of the claims. Patents printed in color would continue to have 
legends indicating that drawings are in color so that a person 
inspecting a black and white copy thereof would have notice as to the 
existence of the color drawings.
    Processing a patent in color would incur costs separate from those 
incurred in the printing process in that identification of applications 
filed in color would need to be made so that the printing contractor 
would know the color printing was required. The PTO currently scans the 
originally filed application papers in black-and-white images, and may 
begin scanning color drawings or photographs included with originally 
filed application paper in color images. The examination process may 
also be more complex due to questions relating to the accuracy of the 
color depiction in color photographs. In addition, printing a patent in 
color would currently require an expensive photographic process to 
ensure the proper coloring of the drawings, as is currently required 
for plant patents. Pursuant to 35 U.S.C. 41(d), the PTO may recover the 
cost of the service of making color copies of color drawings or 
photographs included in an application as originally filed available as 
scanned images and preparing color drawings or photographs as part of 
the patent publication process. Charging a fee for such additional 
costs (as compared to the normal patent publication process) would be 
consistent with Business Goal 5 (assess fees commensurate with resource 
utilization).
    Accordingly, if design and utility patents are to be printed in 
color, patentees would be required to pay the additional fee, and would 
not be allowed to not pay the fee or request that the patent be printed 
only in black and white. In addition, the two-tier fee system, in which 
a higher fee is charged for color copies of a patent (37 CFR 
1.19(a)(3)) than for a copy without color (37 CFR 1.19(a)(1)(i)), for 
patent copy sales would continue so that customers could obtain a black 
and white copy of a patent with color drawings for a reduced fee.
    While plant patents are currently printed in color, electronic 
copies of plant patents currently displayed with the Automated Patent 
System or from CD ROM products are in black and white. The Office has 
an ongoing project to create color images of plant patents for 
electronic searching and dissemination. Accordingly, if design and 
utility patents are printed in color, they also would be available in 
color electronically.

[[Page 53510]]

7. Reducing time for filing corrected or formal drawings (37 CFR 1.85)
    Summary: The PTO is considering reducing the time period for 
submitting corrected or formal drawings from three months to one month 
from the mailing of the ``Notice of Allowability'' (extensions of time 
under 37 CFR 1.136 being permitted). The PTO is also requesting comment 
on the advisability of requiring submission of corrected or formal 
drawings upon an indication of allowable subject matter.
    Specifics of Change Being Considered: The PTO is considering 
amending 37 CFR 1.85(c) to require either that: (1) corrected or formal 
drawings be submitted within one month of the mailing of the ``Notice 
of Allowability'' (extensions of time under 37 CFR 1.136 being 
permitted); or (2) formal drawings be submitted in reply to any Office 
action indicating allowable subject matter, and, if a drawing 
correction has been required, requiring that corrected drawings be 
submitted in reply to the next Office action indicating allowable 
subject matter.
    Discussion: Currently, 37 CFR 1.85(c) requires corrected or formal 
drawings to be filed within a period of three months of the mailing 
date of the ``Notice of Allowability,'' which period may be extended up 
to six months under 37 CFR 1.136. This causes many problems. First, 
permitting corrected or formal drawings to be filed as late as six 
months after the mailing of the ``Notice of Allowability'' leads to a 
lengthy delay in issuance of patents. Second, the corrected or formal 
drawings may be submitted after the payment of the issue fee (which 
must be paid within three months from the mail date of the ``Notice of 
Allowance and Issue Fee Due''). Thus, if formal or corrected drawings 
are not filed before payment of the issue fee, the application must 
still be stored and tracked to await the required drawings. This 
results in increased processing costs to the PTO, as greater storage 
space is needed along with continued tracking and monitoring functions. 
Thus, the current process not only causes delays in issuing patents 
which is inconsistent with Patent Business Goal 1, reducing PTO 
processing to twelve months or less, but it also increases our costs 
which is inconsistent with Patent Business Goal 5, assessing fees 
commensurate with resource use.
    The PTO hopes to address these problems in the following three 
ways. First, as discussed with regard to 37 CFR 1.84, the PTO would 
like to make drawing requirements consistent with those of the PCT so 
as to make it easier to submit drawings which will be approved by the 
PTO draftspersons and thereby reduce the burden on the applicant. If 
drawing requirements are consistent with those of the PCT, as proposed 
with respect to 37 CFR 1.84, applicants would be more likely to submit 
formal drawings upon filing or while the application is being examined, 
but prior to allowance. These formal drawings should have a greater 
chance of being approved by the PTO Draftsperson. Thus, this should 
reduce the number of applications that are allowed with drawings that 
are not accepted by the PTO Draftsperson. Second, the PTO intends to 
encourage drawing corrections and/or formal drawings to be submitted 
earlier in the examination process. This is because the PTO intends to 
deploy draftspersons into each of the technology centers where it will 
be easier for the Draftsperson to review such corrected or formal 
drawings without interrupting the examination process. Thus, this 
should also reduce the number of applications with drawings that have 
not been approved by the PTO Draftsperson. Third, with the current 
proposal, the PTO proposes to reduce the time for submitting drawings 
to one month from the Notice of Allowability. By reducing the window 
for submitting drawings to one month, and then charging for extension 
of time fees, applicants will be encouraged to quickly submit the 
drawings within the one month period and, more than likely, before 
payment of the issue fee, in order to avoid extension of time fees, 
which rapidly increase as more extensions are requested. Thus, the 
change in the period for submitting corrected/formal drawings under 
consideration should have the effect of reducing the number of 
applications that have drawing corrections or formal drawings submitted 
after the payment of the issue fee.
    Question: Should the PTO require corrected or formal drawings to be 
filed in reply to an Office action indicating allowable subject matter?
8. Permitting electronic submission of voluminous material (37 CFR 
1.96, 1.821)
    Summary: The PTO is considering rule changes to permit the 
voluntary submission of large computer program listings and nucleotide 
and/or amino acid sequence listings in only a machine-readable form. 
This would save the handling of heavy and voluminous paper listings.
    Specifies of Change Being Considered: Suitable changes would be 
made to 37 CFR 1.96 and 1.821 et seq. to: (1) permit machine readable 
computer program listings to be submitted as the official copy provided 
it is submitted in an appropriate archival medium; (2) permit a 
machine-readable submission of the nucleotide and/or amino acid 
sequence listings as the official copy provided it is submitted in an 
appropriate archival medium; and (3) no longer require the voluminous 
paper submissions of computer program listings or nucleotide and/or 
amino acid sequence listings.
    Background: Since 1990, the PTO has required the submission of the 
nucleotide and/or amino acid sequence listings (sequence listings) 
associated with biotechnology applications to be presented in computer 
readable form on floppy disks, as well as in paper. The sequence 
listings, which are often over ten thousand bases in length, are not 
susceptible to human eye-searching. The magnetic storage and processing 
is therefore the only practical means for examining this very important 
branch of technology, which grew by fifty percent in 1997 and is 
expected to undergo sustained growth. Not only are the number of 
pending applications multiplying, but the number of sequence listings 
per application and the size of the sequence listings themselves have 
grown by one-hundred percent each year. The PTO recently received a 
submission containing twenty-two thousand sequence listings, which 
required eight boxes of paper for the sequence listing. The PTO is also 
starting to see very long individual sequence listings of over one 
million residues. As the genome projects complete more of the genomes 
of various organisms, the PTO will see more of these voluminous 
applications.
    This sequence size expansion has had a significant effect on 
electronic storage, but even worse has created paper files of gross 
size which are very difficult to manage. The paper printouts are often 
over five thousand pages in length, and require boxes to contain them. 
Carts carry the applications to the examiners for processing. For 
example, the Expressed Sequence Tags (EST) applications include up to 
several thousand sequence listings and may be over a foot thick. In 
some applications, the file wrappers are falling apart and contain only 
the sequence listing, with the specification separately preserved. 
Physically storing the applications becomes problematic because the 
entire file takes up several cubic feet of space. Since each examiner 
may have twenty or more of these applications, the applications may 
take up the bulk of an examiner's office. The magnitude of these 
problems is expected to increase. For example, an application with ten

[[Page 53511]]

thousand sequence listings could result in one thousand applications of 
ten sequence listings each. See MPEP 803.04. Considering that the 
growth rate of sequence listings is such that they now approach one 
foot per application, this would require one thousand linear feet of 
shelf space. With each rack holding twenty-four linear feet, the PTO 
would need forty-two (1000/24) racks for the applications resulting 
from that one application. Clearly, something needs to be done to 
address this onslaught of paper.
    The current regulations at 37 CFR 1.821(e) indicate that the 
electronic version of the sequence listing is a ``copy'' of the paper 
sequence listing, and that the paper sequence listing is the official 
copy. In practice, however, the electronic version is the one that 
enters the computer database of references, and serves as the basis for 
examination, printing and copies. The concurrence of the electronic and 
paper version is assured only by a statement of the registered attorney 
or agent, and cannot be readily checked without the expensive and 
laborious effort usually reserved only for litigation.
    Considering the difficulty of maintaining the two independent 
versions of the sequence listing, and the irony that the official paper 
copy is effectively ignored while the unofficial electronic copy is the 
only one that is used, the PTO is proposing that the paper copy be 
eliminated in favor of the useful, handy and verifiable computer 
readable version.
    Difficulties with massive amounts of paper also plague the computer 
arts. One of the major problems facing the computer areas is the filing 
of applications having several boxes of printed material, which may 
include computer program listings, appendices and boxes of prior art. 
Often a single examiner may have several similar applications 
containing multiple boxes of paper (i.e., programs, appendices and 
prior art). Just the short-term storage of these boxes is becoming more 
of a headache. For example, if an examiner has three or four of these 
applications, he or she may be required to store six to eight boxes of 
paper. These boxes are stored either in the examiner's office or in an 
empty room if one is available. The examiner is expected to: (1) keep 
track of these boxes of materials; (2) physically haul them to his or 
her office; and (3) consider and be familiar with thousands of sheets 
of paper. Often when related applications are transferred to another 
Art Unit, these boxes of materials are misplaced and the applicant is 
forced to resubmit the boxes of papers.
    Computer program listings often come to the office on numerous 
sheets of microfiche. However, the microfiche films are often copied to 
paper before printing when a patent is allowed. Since the copies from 
the microfiche are not copied to the standards of 37 CFR 1.52, the 
applications are often sent back to the examiner as a printer rush, 
slowing the publication of the patent.
    The PTO may accept electronically filed material in a patent 
application, regardless of whether it is considered ``essential'' or 
``nonessential.'' The patent statute requires that ``[a]n application 
for patent shall be made * * * in writing to the Commissioner.'' 35 
U.S.C. 111(a)(1) (emphasis added). With regard to the meaning of the 
``in writing'' requirement of 35 U.S.C. 111(a)(1), ``[i]n determining 
any Act of Congress, unless the context indicates otherwise * * *, 
`writing' includes printing and typewriting and reproduction of visual 
symbols by photographing, multigraphing, mimeographing, manifolding, or 
otherwise.'' 1 U.S.C. 1 (emphasis added); see also Fed. R. Evid. 
1001(1) (writing defined as including magnetic impulse and electronic 
recording). An electronic document (or an electronic transmission of a 
document) is a ``reproduction of visual symbols,'' and the ``in 
writing'' requirement of 35 U.S.C. 111(a)(1) does not preclude the PTO 
from accepting an electronically filed document. Likewise, there is 
nothing in the patent statute that precludes the PTO from designating 
an ``electronic'' record of an application file as the PTO's 
``official'' copy of the application.
    The recognition of the electronically stored version of the 
sequence listings as the official copy is expected to have a minor 
consequence on our processing of these applications. Sequence listings 
are already required to be submitted in electronic form, and a receipt 
system is already in place to handle the acceptance and storage of the 
electronic versions. Currently the machine-readable version is the copy 
of choice for search, for printing and for reference purposes.
    The submission of machine readable versions of computer program 
listings, or other voluminous materials, would require the PTO to 
establish an appropriate system for accepting and using such 
submissions such that the paper versions of such information will no 
longer be needed. The submitted archival media may be transferred to 
centralized electronic office systems to facilitate in-house processing 
of the information.
    Discussion of change under consideration: The PTO is considering 
revising 37 CFR 1.821 et seq. to permit the voluntary submission of a 
machine readable version of the sequence listings to be the official 
copy provided it is presented in an appropriate archival medium. The 
PTO cannot simply make the current submissions of diskettes the 
official copy in view of the regulations requiring a true archival 
medium (36 CFR 1228.28(3) and 1234.30). In addition, the PTO is 
considering revising 37 CFR 1.96 to permit the voluntary submission of 
all computer program listings in machine readable form provided they 
are in an appropriate archival medium.
    The changes contemplated for sequence listings and computer program 
listings would eliminate the need for submissions of voluminous paper 
sequence listings and hard to handle and reproduce microfiche computer 
program listings. To focus specifically on the PTO's difficult paper 
handling problem, and to simplify this project so it can be deployed in 
a short time span, only the nucleotide and/or amino acid sequences and 
the computer program listings would be accepted in machine readable 
format. The rest of the specification of a nonprovisional application 
will be submitted in paper in the conventional manner, subject to 37 
CFR 1.52 and other applicable regulations.
    In addition to permitting the above-mentioned submissions in 
nonprovisional applications, the PTO is also considering changing the 
rules of practice to permit provisional applications to be submitted in 
toto in a machine readable format, again provided that it is presented 
in an appropriate archival medium.
    This initiative is in support of the Patent Business Goal to reduce 
PTO processing time to twelve months or less for all inventions (Goal 
1) and to receive applications and publish patents electronically (Goal 
3). Specifically, it would reduce the time and effort required to scan 
into our electronic archival systems the text of sequence listings and 
of computer program listings included in the applications as filed.
    Appropriate Archival Media: Regulations promulgated by National 
Archives and Records Administration define the acceptable archival 
media and formats for transfer and storage of information. See 36 CFR 
1234.30 and 1228.28.
    Relationship to PTO automation plans: These changes being 
considered are understood to be temporary

[[Page 53512]]

solutions to a difficult PTO paper-handling problem.
    It should be noted that the PTO is planning for full electronic 
submission of applications and related documents by Fiscal Year 2003. 
The changes described above are a smaller step in that direction, 
permitting the essential, but bulky parts of some applications to be 
submitted on an acceptable archival medium.
    Question: Other materials may also be subject to these large 
submissions, and part of this endeavor would be the identification and 
inclusion of definable entities from other technologies that are of a 
similar nature. The PTO is requesting the public to suggest examples. 
In considering responses to this question, issues of practical 
implementation will be given weight. For example, elements of Technical 
Appendices or documents of an Information Disclosure Statement may be 
flowcharts, bound books or other items not suitable yet for electronic 
submission.
9. Imposing limits/requirements on information disclosure statement 
submissions (37 CFR 1.98)
    Summary: The PTO is considering revising 37 CFR 1.98 to establish 
new requirements and/or limits on information submitted as part of an 
Information Disclosure Statement (IDS).
    Specifics of Change Being Considered: In order to limit IDS 
submissions to relevant information and to ensure full consideration of 
an IDS by the PTO, the PTO is considering imposing the following 
additional requirements for IDS submissions: (1) a statement in the IDS 
that each citation has been personally reviewed by the registered 
practitioner who represents applicant, or by at least one inventor 
where applicant is not represented by a registered practitioner; (2) a 
copy of each cited U.S. application; and (3) a unique description of 
each citation's importance relative to each independent claim, or 
specific dependent claim(s) if that is why it was cited, except that a 
description would not be required for: (a) any ten citations, and (b) 
any item cited in a corresponding application by a foreign patent 
office, PCT international searching authority (ISA), or PCT 
international preliminary examining authority (IPEA), provided the 
search report or office action in the English language is also 
submitted.
    The description of each citation would have to set forth a teaching 
or showing of a feature relative to the claimed invention which is not 
taught or shown by other citations in the IDS or is taught in a 
different manner. The description of each citation must be unique to 
that citation, in that an applicant would not be permitted to provide a 
description of a citation that is merely cumulative to that of other 
citations.
    Background: Under the current rules (37 CFR 1.56, 1.97 and 1.98), 
the PTO is being overwhelmed with voluminous IDS submissions which, in 
many situations, make it very difficult, if not impossible, for an 
examiner to fully evaluate all of the citations that have been 
submitted. This is especially true when the citations involved are 
large in size and/or when large numbers of citations have been 
submitted. The submission of large numbers of citations and of the 
entire content of large citations may be due to the public's perception 
that it must submit, in order to ensure compliance with the duty to 
disclose requirements of 37 CFR 1.56, even questionable or marginally 
related citations (i.e., cited items that are clearly not material to 
patentability). The public appears to have taken the view that it 
should submit, in compliance with 37 CFR 1.97 and 1.98, even 
questionable citations in order to ensure that applicant is viewed by 
the courts as having satisfied the duty of disclosure requirements. 
MPEP 2001.04 points out as to noncompliance with 37 CFR 1.97 and 1.98 
that ``the applicant will have assumed the risk that the failure to 
submit the information in a manner that will result in its being 
considered by the examiner may be held to be a violation'' by the 
courts. MPEP 2004 adds: ``When in doubt, it is desirable and safest to 
submit information. Even though the attorney, agent, or applicant 
doesn't consider it necessarily material, someone else may see it 
differently and embarrassing questions can be avoided''. Thus, an 
environment has been established that promotes submission of citations 
which might in some way be considered to be sufficiently relevant to 
breach the duty of disclosure (once applicant or applicant's counsel 
becomes aware of the citation) in order to avoid an inference of 
intentional noncompliance. Applicant presumably does not wish to be 
placed in a position (in court) of having to explain why a particular 
document of which applicant was aware was not deemed relevant enough to 
submit. Therefore, even a document of very questionable relationship to 
the claims may very well be submitted by applicants (the public), in 
order to err on the side of caution.
    This approach has created an enormous burden on the PTO and 
seriously jeopardizes the PTO's ability to examine applications in a 
timely and efficient manner, or achieve its Business Goal to reduce PTO 
processing time (cycle time) to twelve months or less for all 
inventions (Goal 1). Applicants frequently cite large numbers of 
unrelated documents in citation ``dumps'' where applicant does not wish 
to expend the time to weed out the unrelated documents from large 
groups of documents (for example those obtained by a pre-search or 
found in a related U.S. application). In addition, large citations such 
as compendiums are submitted where only one or two small unidentified 
portions are relevant.
    While it may have been intended under 37 CFR 1.97 and 1.98 that 
applicant submit questionably related citations, it was never intended 
that large numbers of unrelated documents be submitted solely to save 
applicant the effort of reviewing each of them to determine their 
relevance. Likewise, it was not intended that the entire volume of a 
large citation be submitted so that applicant need not take the trouble 
to target the one or two relevant portions.
    A further concern arises in those situations where current 37 CFR 
1.98 permits applicants to not supply copies of cited U.S. 
applications. It is a real burden on the examiner to locate and copy 
one or more pending applications, and this activity (removal of a cited 
application for copying) has the potential for interfering with the 
processing and examination of the cited application.
    The following are examples of IDS submissions which have placed 
inordinate demands on the PTO:

    (1) For one family of related applications (of several hundred 
applications), applicants have cited almost three thousand items in 
each of the several hundred applications.
    (2) In another family of five related applications, more than 
one thousand items were cited in IDS submissions in each of the 
applications. The items cited were not the same for each 
application. The five related applications are the children of 
numerous other applications, each of which had IDS submissions 
citing at least seven hundred items. The examiner presently has in 
his office sixteen containers of cited items for these applications, 
and stacks of cited items which would fill at least eight more 
containers.
    (3) A pending application contains a citation of ten related 
U.S. applications. Additionally, about eighty-five documents were 
cited, including text citations which included sixty-nine pages from 
one text book and 137 pages from another. The Examiner noted in his 
Office action that these texts appeared to be background related to 
the general area of the invention. In addition, some of the cited 
documents were listed in more than one of multiple IDSs submitted, 
and the additional listings had to be located and crossed through on 
the appropriate form PTO-1449 accompanying the IDS.


[[Page 53513]]


    While these three examples represent some of the more extreme IDS 
submissions, submissions of this nature are not infrequent nor are they 
isolated occurrences. Also, the PTO frequently receives IDS submissions 
which are not only large submissions, but they contain unrelated or 
non-relevant material, thereby making it difficult to identify and 
evaluate the more significant citations. In conjunction with this, 
there is a practical limit to the number of citations an examiner can 
effectively consider, especially where the citations have not been 
described and copies have not been supplied (and the more significant 
citations are scattered throughout the lengthy IDS submission).
    Although the PTO remains sensitive to the need for applicants to 
comply with their duty of disclosure under 37 CFR 1.56, the PTO must 
deal with the growing burden on PTO resources to handle IDS 
submissions. The PTO obviously does not desire to receive bulky, 
irrelevant IDSs and ``dumps'' of citations in an application. Also, to 
the extent that these burdensome submissions are in fact received, it 
is the intent of the PTO to make the information contained in them as 
useful to the examiner as is effectively possible. Accordingly, the PTO 
is considering imposing new limitations to (a) reduce both the number 
as well as the size of citations that are submitted in IDSs, and (b) 
impose requirements as to the citations which will make them more 
usable by the examiner.
    Proposal: The PTO is considering revising 37 CFR 1.98 to impose 
three new requirements/limitations as follows:

I. A Statement of Personal Review of Each Citation Submitted in the 
IDS Would Be Required

    The IDS submitter would be required to state that he/she has 
personally reviewed each submitted IDS citation to determine whether or 
not that citation is relevant to the claimed invention(s) and is 
appropriate to cite to the PTO in the IDS. This statement of personal 
review would have to be made by:

    A registered practitioner, where applicant is represented by a 
registered practitioner, or
    At least one of the inventors where applicant is not represented 
by a registered practitioner.

II. A Copy of Each Cited U.S. Application Would Have To Be Supplied

    The current exception in 37 CFR 1.98(a)(2)(iii) for pending U.S. 
applications would be eliminated. Accordingly, 37 CFR 1.98(a)(2) would 
require that an IDS include a legible copy of each cited pending U.S. 
application.

III. Each Citation Submitted in the IDS Would Have To Be Uniquely 
Described

    Applicant would have to compare each of the citations to each of 
the independent claims, or specific dependent claim(s), in a meaningful 
way that is unique to each citation. The description of each citation 
would have to point out why applicant believes the citation to be 
unique in its teaching/showing relative to the claimed invention(s).
    Exceptions to the unique description requirement for each of the 
citations are:

    (a) An item does not have to be described if--
    The item was previously cited (i) by a foreign patent office, 
and/or (ii) in a PCT ISA search report or IPEA office action, in a 
corresponding application; and
    Applicant submits a copy of the search report or office action 
where the item was cited (issued by the foreign patent office or 
PCT) in the English language;
    (b) In addition, up to ten citations do not have to be 
described.

    It should be noted that no exception to the unique description 
requirement will be made for items which were cited in a related U.S. 
application, even if that related application claims 35 U.S.C. 120 
priority from, or provides 35 U.S.C. 120 priority to, the application 
in which the IDS is submitted. In addition, an exception will not be 
made for items cited in litigation related to the application.
    As to the exception to the unique description requirement made for 
ten citations of any type: Where more than one IDS submission is made 
in one application, all of the submitted IDS documents will be taken 
together as one consolidated IDS. Thus, applicant would not be able to 
circumvent the exception for up to ten citations by submitting multiple 
but separate IDS submissions. For example, if six U.S. applications and 
four patents are cited without descriptions in a first IDS submission, 
then all additional items included in any subsequent IDS submission 
must be described or they will not be considered by the PTO.
    It should be noted that the choice of which ten citations would be 
submitted without the unique description is that of the IDS submitter, 
and there should be no negative inference as to compliance with the 
provisions of 37 CFR 1.56 where it is chosen to submit the more 
relevant citations without any description.

Copies of Citations Contain Confidential Information

    Pending U.S. applications are an example of items containing 
confidential information which might be submitted in an IDS. In 
accordance with MPEP 724.02, IDS citations containing confidential 
information (e.g., that which is considered by the party submitting 
same to be either trade secret material or proprietary material, and 
any such information which is subject to a protective order) are to be 
clearly labeled as such and are to be filed in a sealed, clearly 
labeled, envelope or container. The party submitting an IDS citation 
containing information which is confidential may subsequently petition 
to expunge that citation from the record as set forth in MPEP 724.05.

Explanation of the Unique Description Requirement for Each Citation

    Each item must be individually and uniquely described relative to 
each of the independent claims, or, if appropriate, to one or more of 
the dependent claims, in a meaningful way. When determining whether 
reexamination may be ordered in compliance with In re Portola 
Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), the PTO 
would consider a citation described in this manner during a prior 
related PTO proceeding to have had ``its relevance to patentability of 
any claim discussed.'' See Request for Comments on Interim Guidelines 
for Reexamination of Cases in View of In re Portola Packaging, Inc., 
110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997); Notice and Request for 
Public Comments; 63 FR 32646, 32646, 1212 Off. Gaz. Pat. Office 13, 13 
(July 7, 1998).
    Examples of ways to describe a citation (any of which would be 
acceptable) are as follows:

    (1) For the closest or most related citation(s): Point out the 
features of the citation which are similar to the features of each 
independent claim. For example--``Of the six ingredients recited in 
the claim 1 breakfast beverage, Citation A teaches beverage 
ingredients which are similar to the claimed protein, salt and gum. 
Citation B teaches beverage ingredients which are similar to claimed 
protein, sugar and carbonating agent.''
    (2) Point out how the citation contains or teaches the general 
inventive concept of each independent claim. For example--``Citation 
C teaches the coating method of claim 4 using light to cure the 
coating shortly after it is cooled in a wind tunnel.''
    (3) Point out how the citation represents the invention upon 
which the independent claim is an improvement. For example--
``Citation D shows the entire conveying

[[Page 53514]]

system of claim 7, except for the inventive friction roller placed 
between the two mergers.''
    (4) Indicate how the citation teaches at least one feature which 
is similar to a claim feature that is not already taught. For 
example--``Citation E shows a valve that is the same type of valve 
set forth in dependent claim 7.''
    (5) Indicate where the citation teaches, in a different way, an 
already-taught feature which is similar to a claim feature. For 
example--``Citation F teaches a force-cooling of the exiting 
material (similar to that of dependent claim 8) as opposed to 
citation X which taught the cooling as an inherent result of the 
material exiting into the air.''

    In each situation, an additional explanation would be required of 
how each independent claim (or dependent claim(s), if the citation was 
for same) patentably defines over the citation.
    It is not necessary that the description for each citation be given 
as related to all claims of the application. Rather, each citation 
would be described as to its relevance vis-a-vis each independent claim 
(or specific dependent claim(s) if that is why it was cited). Further, 
it is contemplated that the closest citations would be described in the 
greatest detail, and the remaining citations compared to the closest 
citations.

Impact of Compliance With 37 CFR 1.98, as it Would be Amended

    The examiner will fully consider each citation in an IDS which is 
in compliance with 37 CFR 1.97 and with 1.98 as it would be amended. 
Conversely, the examiner would not be required to consider any citation 
in an IDS where the citation is not presented in compliance with 37 CFR 
1.97 and 1.98 as it would be amended. It should be noted that the three 
requirements set forth above would apply to any citation in an IDS. 
Thus, for example, if a related U.S. application is cited in an IDS and 
a copy of the specification, including the claims, and the drawings are 
not provided, the examiner would not be required to consider that U.S. 
application. Further, the PTO will discard copies of any citations that 
are submitted where a unique description is required but is not 
supplied, or where the statement of personal review is not made.
    Prior to discarding the citations, the PTO would notify applicant 
that the citations have been refused further consideration. In the 
notice to applicant, the PTO would point out why consideration has been 
refused and how the submission of the citations could be corrected. As 
is currently the practice, the notice may, at the examiner's option, be 
set forth in the next Office action on the merits issued by the 
examiner or be provided in a separate notice giving the applicant an 
opportunity to correct the IDS. See MPEP 609. Thus, the examiner could 
delay action on the merits until the corrected IDS is received or the 
time for correction has expired. If the notice is included in the next 
Office action on the merits, then the application status would advance 
with the issuance of that action on the merits. Thus, the timeliness of 
the citations (and refusal of consideration for lack of timeliness) 
would quite possibly become dependent on a more limiting subsection of 
37 CFR 1.97. For example, if the action on the merits is a first Office 
action, 37 CFR 1.97(b) will apply to the corrected IDS submission, 
while 37 CFR 1.97(a) would have applied to the original IDS submission 
(had it been in order). If appropriate correction is made and the 
submission is considered timely under 37 CFR 1.97, the citations will 
then be considered. If not, the citations would be removed from the 
record and discarded. In such a situation, the list of citations (e.g., 
PTO-1449) which was submitted with the IDS (the citations which were 
not considered being lined through by the examiner) would be retained 
in the application file to serve as a permanent record of what item(s) 
was/were cited.

Rationale as to the Contemplated Revision:

I. Statement of personal review of each citation submitted in the IDS
    With the requirement for personal review of each citation, 
applicants must review an item so that applicant can then make an 
informed decision that the item is relevant and appropriate to cite to 
the PTO. This would be effected by requiring the attorney, or where 
there is no attorney, at least one of the inventors, to do the personal 
review. In addition, the examiner should only be required to consider a 
citation where the person submitting the citation to the PTO has first 
reviewed that citation and determined that the citation is relevant to 
the claimed invention(s). If the submitter reviews the citation in its 
entirety and determines that the citation is relevant to the claimed 
invention(s), then the examiner should consider that citation in its 
entirety. If only a portion of the citation is pertinent and thus only 
that portion of the citation has been reviewed by the IDS submitter, 
then that portion alone should be cited to the PTO, and that portion 
alone will be considered by the examiner.
    The personal review of each citation is a subjective and individual 
determination of which citations the submitter wishes to make of 
record, and the reason for doing so is not subject to review. It is 
envisioned, however, that the very act of making this determination 
should function as a screening process to effectively filter out 
marginally related and unrelated citations. As to the requirement to 
describe each citation relative to the claims, the PTO believes that 
imposing this requirement is reasonable and fair, and is also highly 
desirable, because this requirement (coupled with a requirement for 
personal review of each citation) would enable the PTO to achieve the 
relief it desires by:

    (1) Providing meaningful, useful and relevant information to the 
examiner, which would greatly facilitate the examiner's evaluation 
of each IDS citation and the examiner's making a patentability 
determination on each of the independent and dependent claims. Thus, 
it would improve the quality of examination, while improving the 
efficiency of the examination process;
    (2) Providing an incentive to cite only the most relevant 
citations (to avoid having to describe marginally related and 
unrelated citations). Thus, the citation of large numbers of 
marginally related and unrelated items would be diminished or 
eliminated; and
    (3) Reducing the overall number of IDS citations that are 
submitted by eliminating the marginally related and the unrelated 
citations.

II. A copy of each U.S. application would have to be supplied
    Applicants often do not submit copies of cited pending U.S. 
applications listed in IDSs. Applicant may list multiple application 
citations in an IDS (sometimes as many as ten or twenty are listed), 
and if no copies are supplied, the examiner must make a time-consuming 
effort to obtain and copy all of the cited pending applications so that 
they can be considered. This will interrupt the examination of the 
application whenever the file of a cited pending application is not 
available for inspection and copying. In addition, obtaining and 
removing the cited application for copying will also interrupt the 
examination of the cited application.
III. IDS citations would have to be uniquely described
    The present proposal would permit filers of small IDSs (i.e., ten 
or less citations) to continue filing IDSs without any description, as 
they are currently filed under 37 CFR 1.98. While it is believed to be 
unreasonably burdensome for the PTO to consider unduly large numbers of 
IDS citations which are not described, the PTO is amenable to dealing 
with ten (or less)

[[Page 53515]]

IDS citations which are not described, even though the examiner has no 
guidance from applicant as to what is actually shown or disclosed in 
the ten citations.
    PTO Goals to be Furthered: The proposal being considered is 
important to the PTO Goals of reducing PTO processing time (PTO Goal 1) 
and enhancing the quality of examination (PTO Goal 4). Requiring copies 
of all citations will reduce delays and help the PTO meet its twelve-
month pendency goal. The presence of the copies of cited documents will 
permit those citations to be considered by the examiner at the earliest 
possible point after their submission and thereby enhance the quality 
of the examination. The descriptions of citations will provide for 
better quality because the examiner will have a better understanding of 
why applicant considers the citation to be relevant (i.e., the citation 
will be made more useful to the examiner). Imposing a requirement of a 
statement of personal review of the citations will force applicants to 
evaluate all possible items being considered for citation to the PTO 
such that only the most relevant items will be cited to the PTO, and 
correspondingly, it should cut down on or eliminate the large dumps of 
citations that the PTO is now receiving. This will save the examiner 
time which is presently expended to read and evaluate cumulative and 
minimally relevant citations. This time can be better spent evaluating 
the more relevant citations, thus resulting in a higher quality of 
examination.
    The PTO has determined that it must do something to reduce the size 
of the voluminous IDS submissions. Suggestions of other options are 
welcomed. If another option is suggested, it should explain why and how 
that option would be better.
    The PTO expects that many will oppose the above-described proposal 
for a variety of reasons. These reasons may include, for example, 
concerns as to the burden being imposed on applicant to prepare the 
IDS, the conflicting time requirements that will create problems (the 
need to submit the IDS by a certain date conflicts with the extra time 
needed to prepare the descriptions which would be required before the 
IDS could be submitted), and concerns about not properly analyzing or 
describing a citation (or all the features, embodiments or parts of the 
entire disclosure of the citation) or even overlooking a relevant 
citation. The comments, however, should be constructive and address how 
(and why) some other option(s) would be better, or as effective, while 
being more acceptable to the public.
10. Refusing information disclosure statement consideration under 
certain circumstances (37 CFR 1.98)
    Summary: The PTO is considering revising 37 CFR 1.98 to reserve the 
PTO's authority to not consider submissions of an Information 
Disclosure Statement (IDS) in unduly burdensome circumstances, even 
where all the stated requirements of 37 CFR 1.98 are met.
    Specifics of Change Being Considered: An unduly burdensome IDS 
submission may be denied consideration even though it complies with 37 
CFR 1.98. For example, extremely large documents and compendiums may 
not be accepted if submitted. Applicant will, however, be notified and 
given an opportunity to modify the submission to eliminate the 
burdensome aspect of the IDS.
    Background: 37 CFR 1.97 states that information will be considered 
by the PTO if it satisfies the provisions of 37 CFR 1.97 and 1.98. In 
the above proposal to revise 37 CFR 1.98 (see above), the PTO is 
contemplating revision of 37 CFR 1.98 to deal with unduly burdensome 
IDS submissions by imposing new requirements/limitations.
    It should be noted that even if the rules of practice are revised 
as per the above proposal for 37 CFR 1.98, applicants may still cite 
compendiums, such as compilations of individual articles, entire 
magazines, journals, encyclopedia or technical dictionary volumes, 
textbooks, and volumes of technical abstracts. In addition, if a 
compendium is submitted as one of the ``excepted ten citations,'' no 
description would be required as to the entire compendium. Even though 
such a submission might comply with the letter of 37 CFR 1.98, 
consideration of the submission would be unduly burdensome to the 
examiner. It clearly would not further the PTO mission and goals to 
have the examiner consider the entire text of the compendium. Rather, 
applicant should be required to submit and describe the specific 
section(s) or portion(s) of the compendium which applicant deems to 
provide the basis for making the citation, and such a specific citation 
would be acceptable.
    Therefore, the PTO should have a mechanism to deal with unusual IDS 
circumstances where consideration of all or some part of an IDS would 
be unduly burdensome to the examiner.
    Proposal: The PTO is contemplating revision of 37 CFR 1.98 to 
reserve the authority of the examiner to refuse consideration of an IDS 
submission, or any part of it, where such consideration would be unduly 
burdensome to the examiner (such that the PTO mission and goals would 
not be furthered by requiring the examiner to provide consideration).
    When an unduly burdensome IDS is submitted, the PTO would notify 
applicant that the IDS, or a particular portion of it, has been refused 
further consideration. In the notice to applicant, the PTO would point 
out why it would be unduly burdensome for the examiner to consider the 
IDS (or portion thereof) and how the IDS could be modified to eliminate 
its burdensome aspect. As is currently the practice, the notice may, at 
the examiner's option, be set forth in the next Office action on the 
merits issued by the examiner or be provided in a separate notice 
giving the applicant an opportunity to correct the IDS. See MPEP 609. 
Thus, the examiner could delay action on the merits until the corrected 
IDS is received or the time for correction has expired. If the notice 
is included in the next Office action on the merits, then the 
application status would advance with the issuance of that action on 
the merits. Thus, the timeliness of the citations (and refusal of 
consideration for lack of timeliness) would quite possibly become 
dependent on a more limiting subsection of 37 CFR 1.97. For example, if 
the action on the merits is a first Office action, 37 CFR 1.97(b) will 
apply to the corrected IDS submission, while 37 CFR 1.97(a) would have 
applied to the original IDS submission (had it been in order). If 
appropriate correction is made and the submission is considered timely 
under 37 CFR 1.97, the re-submitted citations will then be considered. 
If not, the IDS documents objected to as unduly burdensome would be 
removed from the record and discarded. In such a situation, the list of 
citations (e.g., PTO-1449) which was submitted with the IDS (the 
citations which were not considered being lined through by the 
examiner) would be retained in the application file to serve as a 
permanent record of what item(s) was/were cited.
    Examples: Presented are some examples of IDS submissions (in 
addition to the compendium submission which is discussed above) that 
comply with the letter of 37 CFR 1.98, yet the PTO would, most likely, 
regard as unduly burdensome to the examiner:

    (1) An IDS presents ten or less citations; however, one or more 
of the presented citations is a patent containing more than one 
hundred pages. There is no explanation as to the nature of the 
relevance of the patent(s) and no specific columns with lines are 
identified.
    (2) An IDS presents ten related U.S. applications with copies of 
voluminous

[[Page 53516]]

records (including litigation documents) and there is no explanation 
as to the nature of the relevance nor is there an identification of 
specific parts of the application records.
    (3) An IDS presents five hundred citations, each uniquely 
described relative to the carving-member feature of claim 5 in a 
slightly different manner.
    (4) Applicant submits five hundred citations to a foreign patent 
office in a foreign application. Applicant then submits the five 
hundred citations in the corresponding U.S. application as citations 
previously cited by a foreign patent office (see the above 
discussion of 37 CFR 1.98) together with a copy of the foreign 
patent office search report that does not identify relevancy as to 
the citations, and without any citation description in the IDS.

    The above are non-limiting examples of burdensome IDS submissions 
where consideration would be appropriately denied by the examiner.
    PTO Goals to be Furthered: This revision being considered is 
important to PTO Goals of reducing PTO processing time (PTO Goal 1) and 
enhancing the quality of the examination (PTO Goal 4). At present, non-
conforming and unduly burdensome IDSs are interfering with the PTO 
effectively carrying out its function of fully considering IDS 
documents. This second proposal for revision of 37 CFR 1.98 (coupled 
with the above-presented first proposal) would enable the PTO to reject 
abusive IDSs and thus permit examination of others in greater detail.
11. Providing no cause suspension of action (37 CFR 1.103)
    Summary: The PTO is considering adding an additional suspension of 
action practice, under which an applicant may request deferred 
examination of an application without a showing of ``good and 
sufficient cause,'' and for an extended period of time. The applicant 
would be required to waive the confidential status of the application 
under 35 U.S.C. 122, and agree to publication of the application.
    Specifics of Change Being Considered: Prior to the first Office 
action of an application, the applicant may request deferred 
examination provided the application is entitled to a filing date, the 
filing fee has been paid, any needed English-language translation of 
the application has been filed, and all ``outstanding requirements'' 
have been satisfied, except that the oath or declaration need not be 
submitted. If an oath or declaration has not been submitted, the names 
of all of the persons believed to be the inventors must, in good faith, 
have been identified. Upon request by the applicant, the PTO may defer 
examination for a period not to exceed three years. Applicant would be 
required to waive his or her right to have the application kept in 
confidence under 35 U.S.C. 122, and pay a fee for publication of the 
application.
    Discussion: Under 37 CFR 1.103(a), an applicant may request 
suspension of action of an application ``for good and sufficient cause 
and for a reasonable time specified.'' There may be times, however, 
when suspension of action is desired by the applicant even though 
``good and sufficient cause'' is not present, and also for a period 
greater than the six months permitted under MPEP 709. For example, an 
applicant may desire deferred examination to obtain time to align 
funding, or to resolve ownership or potential licensing issues. To 
provide applicants some flexibility in their business affairs, and a 
degree of relief from any business constraints due to the ongoing 
pendency of an application, the PTO is considering permitting applicant 
to request deferred examination solely at the discretion of the 
applicant, and for a period of extended length. A showing of ``good and 
sufficient cause'' would not be required.
    This program is intended to provide better service to the public by 
making it possible to defer action on an application merely by asking, 
and paying a fee for it to be deferred. The PTO would benefit as well 
as the PTO would be better able to redirect its limited examining and 
processing resources to other applications in need of more immediate 
processing. The suspension may also allow search and/or examination 
results on counterpart cases in other countries to be received and 
considered.
    In contrast to suspension of action under 37 CFR 1.103(a), which 
may not be granted for a period exceeding six months without approval 
of the group director (see MPEP 709), deferred examination under this 
option would continue until applicant requests resumption of 
prosecution, or the maximum time permitted for such deferral has 
expired.
    A request for deferred examination under this option would only be 
granted if, in addition to satisfying the formal requirements and 
paying the required fee (set to recover PTO costs), applicant waives 
his or her right to have the application kept in confidence under 35 
U.S.C. 122 and agrees to publication of the application.
The PTO is considering imposing the following requirements for this 
deferred examination program
    (1) The application must be entitled to a filing date.
    (2) The basic application filing fee must have been paid.
    (3) Any needed English-language translation of the application must 
have been filed.
    (4) All ``outstanding requirements'' (e.g., requirements to a 
Notice to File Missing Parts) must have been satisfied, except that the 
oath or declaration need not be submitted. See the related discussion 
on 37 CFR 1.53 where it is indicated that the PTO is considering 
changing the rules of practice to permit submission of the oath or 
declaration to be deferred until payment of the issue fee.
    (5) If an oath or declaration has not been submitted, the names of 
all of the persons believed to be the inventors must, in good faith, 
have been identified.
    (6) A first Office action on the merits must not have been mailed 
in the application, or any prior application assigned the same 
application number if the application is continued prosecution 
application under 37 CFR 1.53(d).
    (7) Applicant must submit ``A Request for Deferred Examination'' 
under this program which includes:
    (a) A waiver of his or her right to have the application kept in 
confidence under 35 U.S.C. 122, and payment of the fee for publication 
of the application;
    (b) Payment of the required fee for deferred examination; and,
    (c) In a design application, a utility application filed before 
June 8, 1995, or a plant application filed before June 8, 1995, a 
terminal disclaimer dedicating to the public a terminal part of the 
term of any patent granted thereon equivalent to the period of 
suspension of the application (this terminal disclaimer must also apply 
to any patent granted on any continuing design application that 
contains a specific reference under 35 U.S.C. 120, 121, or 365(c) to 
the suspended application).
    The PTO considered not making this suspension of action provision 
inapplicable to any application not subject to the twenty-year patent 
term provisions of 35 U.S.C. 154(a)(2). Rather than excluding such 
applications from this program, the PTO is considering simply requiring 
that a terminal disclaimer for the period of suspension be filed as a 
condition of granting a suspension of action under this program in an 
application not subject to the twenty-year patent term provisions of 35 
U.S.C. 154(a)(2).

[[Page 53517]]

The PTO is further considering the establishment of the following 
program guidelines
    1. Maximum period of suspension. Because deferral of action would 
delay development of final claim form, and in view of the public's 
right to early knowledge of patent rights, a maximum time for 
suspension would be set. The maximum time period of suspension would be 
measured from the filing date of the application, not the date a 
request for suspension is granted. The PTO favors a maximum period of 
three years from the filing date or earliest filing date for which a 
benefit is claimed under 35 U.S.C. 119, 120, 121, or 365. A longer 
period would seem excessive, and is seen as permitting an applicant to 
unduly delay issuance of the patent.
    2. Time of publication. The PTO favors publication as soon as 
practicable after the PTO grants the request. This would make the 
specification a publication at the earliest possible time.
    3. Form of publication. The PTO intends to publish a notice of the 
application, and of the suspension of action in the Official Gazette. 
The notice would include bibliographic information, an abstract of the 
invention, a drawing figure and at least one representative claim. A 
copy of the application, as filed, will be produced and made available 
to the public in a manner similar to the present Statutory Invention 
Registration (SIR) publications. This would include placement in the 
PTO's Automated Patent System (APS) and classified search files. Copies 
would be fully available to the public.
    4. Effect of Publication. The application would be open to the 
public on the date of publication. An application, indexed or 
classified according to a classification system, and open to public 
inspection, with a publication document including an abstract and claim 
arranged with other such documents according to the classification 
system is available as a prior art publication under 35 U.S.C. 102/103 
(i.e., is ``published''). See In re Wyer, 655 F.2d 221, 210 USPQ 790 
(CCPA 1981); see also In re Hall, 781 F.2d 897, 900, 228 USPQ 453, 456 
(Fed. Cir. 1986) (a dissertation in a library open to public inspection 
by the general public, and indexed and cataloged with the other 
documents in the library, is available as a publication under 35 U.S.C. 
102/103). The published application would not be prior art under 35 
U.S.C. 102(e) effective from the filing date of the so-published 
application. Obviously, if the application is subsequently issued as a 
patent, the patent would be available as prior art under 35 U.S.C. 
102(e).

Comments on the Following Questions Are Solicited

    1. Should a maximum period for suspension be set for a period of 
other than three years?
    2. Should the application be required to include an executed oath 
or declaration before a request for suspension of action may be 
granted? It is noted that the Office is also considering changing 37 
CFR 1.53 to permit submission of the oath or declaration to be 
deferred.
    3. Would publication of the application, coupled with the knowledge 
that a patent may be issued in the future, have a chilling effect on 
others active in the same field so as to freeze their activities in 
this area?
12. Requiring a handling fee for preliminary amendments and 
supplemental replies (37 CFR 1.111)
    Summary: The PTO is considering imposing a handling fee for certain 
preliminary amendments and for all supplemental replies.
    Specifics of Change Being Considered: The PTO is considering 
replacing the current practice of allowing unlimited preliminary 
amendments and multiple supplemental replies to be filed without 
requiring any fee with a new practice where a handling fee would be 
charged for each preliminary amendment filed later than a specified 
time period after the filing date of the application, and for each 
supplemental reply that is filed after the initial reply to an Office 
action has been filed.
    Background: Preliminary amendments and supplemental replies cause 
the PTO to perform administrative processing, the cost of which is not 
covered by the filing fee. Some preliminary amendments and supplemental 
replies cause the PTO to perform examiner rework resulting in increased 
pendency time for the application when such submissions are timely 
filed but do not reach the examiner prior to the examiner acting on the 
application. For example, if a preliminary amendment or supplemental 
reply crosses in the mail with a PTO Office action, the PTO must 
perform rework including technical support processing of the 
submission, and further examination of the application by the examiner, 
and a new or supplemental Office action will most likely have to be 
prepared and mailed. If the preliminary amendment or supplemental reply 
is received by the examiner after the examiner has begun to examine the 
application, or even after the examiner's action has been prepared, but 
before the Office action was mailed, the examiner would still have to 
reconsider, and then revise or even redo the action, whether it was 
ready to be mailed or not, in light of the preliminary amendment or 
supplemental reply. This may also require an additional search or that 
the previous search be redone. See MPEP 714.05. Accordingly, the PTO is 
considering revising its patent rules of practice to impose a handling 
fee for the filing of certain preliminary amendments and for 
supplemental replies to recover the costs associated with these 
activities.
    Such a change to the patent rules of practice would support the 
PTO's business goals of reducing the PTO processing time to twelve 
months or less for all inventions, and assessing fees commensurate with 
resource utilization and customer efficiency. Processing time in the 
PTO would be reduced in that applicants would have an incentive to 
promptly file preliminary amendments and to timely file complete 
replies to Office actions. The assessment of a handling fee for each 
preliminary amendment filed outside of a specified time period, and 
each supplemental reply, will offset the costs accrued by the PTO for 
extra technical support and examination processing, including the time 
spent by the examiner to reconsider, and (re)process, such submissions. 
The PTO anticipates that charging a handling fee for such preliminary 
amendments and supplemental replies will discourage such filings, thus 
resulting in a reduction in the amount of time it normally takes to 
complete the examination of an application, which now includes delays 
associated with such preliminary amendments and supplemental replies.
    The PTO is therefore considering charging a handling fee for each 
preliminary amendment filed later than a specified time period after 
the filing date of the application and each supplemental reply rather 
than banning them in their entirety.
    Preliminary Amendments: Current practice permits an applicant to 
file preliminary amendments any time prior to the mailing of a first 
Office action. This practice often results in a preliminary amendment 
crossing in the mail with an Office action. Current practice has also 
resulted in complaints (petitions) by applicants when the PTO has 
refused to issue a new Office action when a preliminary amendment is 
not filed in the PTO before the mailing date of an Office action, but 
was mailed to the PTO before the applicant received

[[Page 53518]]

the Office action, since such a preliminary amendment did not cross in 
the mail within the meaning of MPEP 714.05. Another area of concern 
with preliminary amendments is that some preliminary amendments are 
received at the PTO before the mail date of the first Office action, 
but not far enough in advance of such mail date that the amendment can 
be associated with the application file before the examiner has 
completed the first Office action (i.e., filed a few weeks before the 
mail date of the Office action). In either scenario, a hardship is 
caused on both the Office and applicant due to the preliminary 
amendments not being considered. Preliminary amendments also cause the 
Office to incur extra expenses in technical support processing of the 
amendments, and in most instances, the examiner having to modify and 
mail a new Office action. The applicant suffers by having to inquire 
about the preliminary amendment not acted upon by the examiner and from 
having to request a new examiner's action when a timely filed 
preliminary amendment did not reach the file before the examiner's 
action was mailed.
    An application should be ready for examination when filed, and an 
applicant may expect the PTO to take up an application for examination 
shortly thereafter. When the PTO reduces its cycle time to twelve 
months, applications will receive a first Office action in less than 
six months after filing. Therefore an effort should be made to have all 
preliminary amendments before the examiner at the time the application 
is filed. In the case of a continuing prosecution application (CPA), 
since the application could be ready for the examiner to review in as 
little as one day from the date the CPA is filed, the timely submission 
of a preliminary amendment is of even greater importance.
    Accordingly, the PTO is considering charging a handling fee for 
each preliminary amendment filed: (1) later than one month from the 
expiration of the applicable twenty-or thirty-month period in 35 U.S.C. 
371(b) in a PCT application ; (2) later than one month from the filing 
date of the application in an application filed under 37 CFR 1.53(b); 
and (3) later than the filing date of the application in a continued 
prosecution application (CPA) filed under 37 CFR 1.53(d). These time 
periods would not be extendable. This handling fee will offset the 
handling costs incurred by the PTO, and act as an incentive for 
applicants to file an application in condition for examination. If the 
handling fee is not paid, the preliminary amendment would merely be 
made of record in the file but would not be entered.
    Exceptions: Not every preliminary amendment filed outside this time 
period would require a handling fee. For example, no handling fee would 
be required for any paper submitted in reply to a requirement by the 
PTO, either written or oral, such as a request to submit a signed copy 
of a paper previously submitted, but which was not signed. Another 
example would be when a preliminary amendment is required (e.g., filing 
of an English translation from a foreign filed application) as a result 
of a ``Notice To File Missing Parts of Application'' (37 CFR 1.53(f)). 
Any amendments filed in reply to a ``Notice To File Correct Application 
Papers'' would also not require a handling fee. It should be noted, 
however, that if any other type of amendment were to be submitted with 
the reply to the PTO requirement, which was not specifically required, 
then a handling fee would be required for that reply. No handling fee 
would be required for any preliminary amendment which is filed solely 
for the purpose of reducing the number of claims in an application to 
be examined, but amendments deleting some claims and adding new, or 
substitute, claims would have to pay a handling fee even if the net 
result of the amendment is that fewer claims would be present.
    Supplemental Replies: Under current practice, an applicant must 
file a timely reply to avoid abandonment under 35 U.S.C. 133 and 37 CFR 
1.135, but may then file one or more supplemental replies (which may 
include additional arguments, amendments, evidence, or other material) 
up until the mailing of the next Office action. This practice 
encourages the filing of a reply that, while satisfying the 
requirements of 37 CFR 1.111, may not include all of the amendments or 
evidence that the applicant seeks to be considered, since the original 
reply may be supplemented. 37 CFR 1.111(b), however, provides that a 
proper reply by an applicant to an Office action ``must reply to every 
ground of objection and rejection in the prior Office action.'' Thus, 
no more than one reply to an Office action should be necessary in most 
situations.
    Accordingly, the PTO is considering a change to the patent rules of 
practice to require that all supplemental replies to a non-final Office 
action must be filed with a handling fee to be entitled to 
consideration. Under this practice, an applicant would still be 
permitted to file supplemental replies to an Office action but all 
additional costs associated with the processing of the supplemental 
reply would be offset by the handling fee that would have to be paid. 
If the handling fee is not paid, the supplemental reply would merely be 
made of record in the file but would not be entered.
    Exceptions: A handling fee would not be required for supplemental 
replies filed after a final Office action as such replies are not 
automatically entitled to entry. A handling fee would also not be 
required when the supplemental reply is filed after reaching an 
agreement for such with the examiner.
    An example in which a handling fee would not be required would be 
when a supplemental reply is filed in response to an agreement reached 
with an examiner. In this situation the examiner's interview summary 
record should indicate that the filing of a supplemental reply was 
approved, and the supplemental reply should clearly indicate that it 
was filed after receiving approval from the examiner in order to not be 
subject to payment of the handling fee. It should be noted that the 
examiner will not be under any obligation to permit the submission of a 
supplemental reply without a handling fee.
    Handling Fee: As earlier indicated, the PTO is taking the approach 
of charging a handling fee for certain preliminary amendments filed 
after the application was filed and for each supplemental reply rather 
than considering banning them in their entirety.
    The PTO incurs costs associated with processing preliminary 
amendments and supplemental replies. Depending on when such papers are 
filed the costs include not only technical support processing time, but 
also additional time on the part of the examiner. In order to offset 
the costs accrued by the PTO in processing certain preliminary 
amendments filed after the application was filed, or supplemental 
replies, the handling fee will be set at the aggregate cost to the PTO 
for both administrative and examiner processing time required for the 
average preliminary amendment or supplemental reply. It is important to 
note that the paying of the handling fee does not guarantee that the 
submission forwarded therewith will be considered by the examiner, as 
all submissions must still meet the timeliness limitations which 
currently exist.
13. Changing amendment practice to replacement by paragraphs/claims (37 
CFR 1.121)
    Summary: The PTO is considering changing the manner of making 
amendments to require that all amendments to the specification 
including the claims be presented in the

[[Page 53519]]

form of replacement paragraphs and claims, respectively.
    Specifics of Change Being Considered: The PTO is considering 
replacing the current system for making amendments in non-reissue 
applications with amendment to the specification by replacement 
paragraphs and amendment to a claim by a replacement claim. This would 
eliminate the PTO's need to enter changes by handwriting in red ink. 
Deletions of a paragraph or a claim would be by instruction to cancel. 
Replacement paragraphs and claims would be a clean copy that is 
printer-ready, which can be optical character recognition (OCR) scanned 
during the publishing process. A marked-up copy of the changed 
paragraphs or claims, using the applicant's choice of mark-up system, 
would also be supplied as an aid to the examiner. All paragraphs in the 
specification, including charts, tables, equations, etc., would have to 
be numbered. An option to provide substitute specifications would be 
retained for submission of extensive changes.
    Background: 37 CFR 1.121(a) permits an applicant to amend the 
specification, and to a limited degree, the claims, by instructing the 
PTO to make insertions or deletions at precise points in the 
specification or claims. Alternatively, applicant may choose to cancel 
a claim or rewrite a claim in amended form with underlining and 
bracketing, designating additions or deletions, respectively. Under 
these rules, amendments are often many pages long, involve extensive 
and numerous changes to the specification and/or claims, have complex 
entry instructions, and sometimes include typographical errors. Entry 
of these amendments, especially when words and phrases must be inserted 
in hand-written red ink, and many such changes are being made, is very 
time-consuming and difficult to perform, frequently leading to entry 
errors (including spelling, wording, and entry locations). In addition, 
no clean copy of the specification or claims is available for scanning 
as part of the patent publication process. Thus, the current amendment 
process leads to printed patents being issued which contain many 
errors, which is an unsatisfactory situation for both the PTO and 
applicants/patentees for a number of reasons. First, the PTO has to 
expend valuable resources to make needed corrections via Certificates 
of Correction. Second, applicants/patentees want their patents to be 
correctly printed, without errors, and they are very disappointed when 
they receive patents that do contain errors. Further, while 
Certificates of Correction are issued at no cost to applicants/
patentees if the errors are the fault of the PTO, applicants/patentees 
must expend a substantial amount of time and effort carefully reviewing 
their printed patents, then preparing and submitting requests to the 
PTO for any needed corrections. It can be readily seen, therefore, that 
the PTO and its customers both feel that there is a real need for 
changes to be made to the current system for making amendments so as to 
reduce the number and causes of Certificates of Correction.
    The PTO has been considering changes to the procedure for making 
amendments to an application for several years. See Notice of Public 
Hearing and Request for Comments on 18-Month Publication of Patent 
Applications; Advance Proposed Rule Notice, 59 FR 63966, 63970 
(December 12, 1994); 1170 Off. Gaz. Pat. Office 390, 393-94 (January 3, 
1995). The PTO made a specific proposal for changing the procedure for 
making amendments to an application in late 1996. See 1996 Changes to 
Patent Practice and Procedure; Proposed Rule Notice, 61 FR 49819, 
49830-31, 49852-54 (September 23, 1996); 1191 Off. Gaz. Pat. Office 
105, 113-14, 133-34 (October 22, 1996). This proposal, however, was 
withdrawn for further study in view of the public comments received. 
See Changes to Patent Practice and Procedure; Final Rule Notice, 62 FR 
53131, 53153 (October 10, 1997); 1203 Off. Gaz. Pat. Office 63, 82 
(October 21, 1997).
    Comments received to date in response to both notices have been 
taken into account in arriving at the currently proposed procedure for 
making amendments.
    Discussion: The preferred option under consideration is a change to 
37 CFR 1.121 eliminating the current system for making amendments in 
non-reissue applications and requiring applicants to present amendments 
in the form of replacement paragraphs for changes to the specification 
and replacement claims for any changed claims. The replacement 
paragraphs/claims would be entered by the PTO as substitute inserts for 
the paragraphs in the specification or for the affected claims. Should 
an applicant merely wish to cancel a claim, a specific instruction to 
cancel or delete the claim would be sufficient. Similarly, a paragraph 
of the specification could be canceled by a specific instruction to 
cancel or delete. Except as currently provided, no claim would be 
canceled by the PTO without specific and direct instructions from the 
applicant to do so.
    In order for the replacement paragraph system to work, all the 
paragraphs, including headings, charts, graphs, tables, and equations 
in the specification would have to be numbered. Thus, it is further 
contemplated that, in conjunction with the change to 37 CFR 1.121, a 
change to 37 CFR 1.52 may be necessary in order to provide a 
requirement for the numbering of paragraphs of the specification. Once 
all the paragraphs are numbered, amendments would be made merely by 
submitting a replacement paragraph (with the same number) with the 
desired changes made in the replacement paragraph. If an amendment 
results in the addition or deletion of one or more paragraphs, an 
arrangement for identifying any such added or deleted paragraphs shall 
be established so that the numbering of other paragraphs shall not have 
to be changed.
    It should be noted that the PTO will retain the option of being 
able to require the submission of a substitute specification, as well 
as permitting the submission of a substitute specification. 37 CFR 
1.125.
    In addition to submitting a replacement paragraph/claim to make an 
amendment, applicant would also be required to submit a marked-up copy 
of the paragraph/claim to show the differences between the original and 
the replacement. The marked-up copy would be generated by any method 
applicant chooses, such as underlining and bracketing, redlining, or by 
whatever system is available with the compare function of applicant's 
software. However, it must be clear enough to be readily understood by 
the examiner.
    The replacement paragraph/claim, which would be a clean version 
without any underlining or bracketing, would be able to be completely 
scanned as part of the printing process in the Office of Patent 
Publications which will result in a higher quality of printed patents. 
Complete scanning of amended portions of the specification and amended 
claims is not possible today because insertions of words, phrases or 
sentences made by handwriting in red ink and deletions made by words 
which have been lined through with red ink are ignored by the scanner. 
Further, while text marked with underlining and bracketing can be 
scanned, extra processing is required to delete the brackets and the 
text within the brackets and to correct misreading of letters caused by 
the underlining. Thus, using clean replacement paragraphs and claims 
would permit complete scanning which is a faster and more accurate 
method of capturing the application for printing while eliminating an 
extensive amount of key-entry of subject matter.

[[Page 53520]]

This should result in patents with fewer errors in need of correction 
by certificate of correction, which clearly would be a benefit to the 
patentees while also conserving PTO resources.
    When an amendment in the future is presented in an Electronic File 
Wrapper (EFW) environment, applicants would only have to submit a 
single clean copy of the replacement paragraph/claim, as the PTO's 
system (software) would be designed to allow the examiner to see the 
differences between the original and the amended versions.
    Adoption of the preferred option would make the amendment process 
simpler, reduce processing time and operating costs, and reduce the 
opportunity for error associated with amendment entry. In addition, it 
would be consistent with the PTO objective of standardizing processing 
of amendments in both paper and electronic format in anticipation of a 
total EFW environment, which is currently under development. Further, 
the changes being considered are consistent with the PTO's efforts to 
harmonize with PCT practice and any changes being contemplated for that 
system.
    The change in amendment procedure being considered would have a 
significant impact on several of the PTO's business goals. 
Specifically, amendment entry practice would be much easier and would 
increase efficiency in the technical support area with better resource 
utilization (Business Goal 5) and a reduction in cycle time (Business 
Goal 1). In addition, the changes proposed herein are consistent with 
the PTO's concurrent development of receiving applications and 
publishing patents electronically (Business Goal 3), in that they 
provide for enhanced and more efficient paper processing, in addition 
to establishing the groundwork for transition into a full EFW 
environment. Further, the simplified amendment entry practice would 
exceed our customers' quality expectations (Business Goal 4) by saving 
applicants a substantial amount of time and resources as: (1) it will 
be easier and take less time for applicants to prepare amendments to be 
submitted to the PTO; (2) it will be easier and take less time for 
applicants to enter amendments into and update their own application 
files; and (3) the printed patents should have less typographical 
errors, reducing the need for requesting Certificates of Correction.
    A secondary option under consideration is that of replacement 
sections of the specification and claims. A standardized form of 
section and heading identification would also be required to achieve 
uniformity in practice. Parts of the specification, as well as 
individual claims, would be defined as ``sections'' and would be 
replaced in a manner similar to that described above for replacement 
paragraphs/claims. While the procedure seems viable for electronic 
processing, it does not lend itself to paper format, primarily due to 
the larger number of replacement sheets which might be required.
    One other option that was considered involved replacement pages of 
the specification and/or claims. Although this procedure currently 
enjoys limited success in PCT amendment practice in paper format, its 
future in electronic filing raises some apprehension. In an electronic 
environment, page numbering is dependent on word processing style and 
formatting and can be inconsistent; thus, sequential page numbering as 
in paper format would not be possible. For this reason, this option is 
not being further pursued.
    It is noted that 37 CFR 1.121 is primarily directed to setting 
forth the procedural requirements for making amendments. Thus, 
consideration is being given to shifting several of the more 
substantive sections of this rule to more appropriate sections of the 
rules. For example, the provisions of 37 CFR 1.121(b)(2)(iii) and 
(b)(5), which are specific to reissue requirements, may be relocated to 
37 CFR 1.173, and the provisions of 37 CFR 1.121(a)(6) relating to new 
matter may be relocated to 37 CFR 1.111.
14. Providing for presumptive elections (37 CFR 1.141)
    Summary: The PTO is considering a change to restriction practice to 
eliminate the need for a written restriction requirement and express 
election in most restriction situations.
    Specifics of Change Being Considered: The PTO is considering a 
change to restriction practice to provide: (1) that if more than one 
independent and distinct invention is claimed in an application, the 
applicant is considered to have constructively elected the invention 
first presented in the claims; (2) for rejoinder of certain process 
claims in an application containing allowed product claims; and (3) for 
rejoinder of certain combination claims in an application containing 
allowed subcombination claims. This will, in most restriction 
situations, eliminate the need for a written restriction requirement 
separate from an Office action on the merits and an express election by 
the applicant, which will reduce pendency and PTO cycle time. This 
change would apply to nonreissue applications filed under 35 U.S.C. 
111(a), and would not apply to reissue applications or applications 
filed under the PCT.
    Discussion: The PTO is considering amending the rules of practice 
(37 CFR 1.141 et seq.) to avoid the delays inherent under current 
restriction practice. Specifically, when claims to more than one 
independent and distinct related invention are presented in an 
application, current practice is to require restriction and an express 
election by the applicant prior to an action on the merits. See 37 CFR 
1.142(a). The PTO is considering amending restriction practice to 
provide, by rule, that if claims to more than one independent and 
distinct related invention are presented in an application, the 
applicant is considered to have constructively elected the invention 
first presented in the claims. That is, the PTO is considering adopting 
a PCT-type practice in regard to how the PTO determines the invention 
to be examined when multiple inventions are presented in an 
application. See PCT Article 17(3)(a) (when the unity of invention 
requirement is not met, the search report shall be established on the 
parts of the application that relate to the invention first mentioned 
in the claims unless additional fees are timely paid). This change 
should eliminate the need for a requirement for an express election 
prior to action on the merits in many restriction situations, and would 
support the PTO's business goal to reduce PTO processing time to twelve 
months or less for all inventions.
    The PCT practice of permitting an applicant to obtain examination 
of additional inventions in a single application upon payment of 
additional fees is not currently under consideration. Except for the 
specific authorization in Sec. 532(a)(2)(B) of Pub. L. 103-465 for the 
practice set forth in 37 CFR 1.129(b), there is currently no statutory 
authority for the PTO to simply charge the patent fees set forth in 35 
U.S.C. 41(a) for the examination of additional inventions in a single 
application. 35 U.S.C. 41(d) would authorize the PTO to examine 
additional inventions in an application for a fee that recovers the 
estimated average cost to the PTO of such further examination; however, 
as 35 U.S.C. 41(h) is applicable only to fees under 35 U.S.C. 41(a) and 
(b), the PTO would not be authorized to provide a small entity 
reduction in regard to such fee. Thus, the only mechanism by which the 
PTO may provide examination of additional inventions for a fee to which 
the small entity reduction is applicable is via the divisional 
application practice.

[[Page 53521]]

    The PTO is also considering providing, by rule, that the PTO will 
examine the claims to the product if either: (1) the first presented 
claims are claims to a product; or (2) the first presented claims are 
claims to a process of either using or making a product and the 
application contains claims to the product. If the claims to the 
product are determined to be allowable over the prior art, the PTO will 
also examine (permit joinder of) the corresponding process of making 
claims or the corresponding process of using claims (if the application 
contains claims to the process of using or making the product) that 
depend from or otherwise include all the limitations of the product 
claims that are allowable over the prior art. See Guidance on Treatment 
of Product and Process Claims in light of In re Ochiai, In re Brouwer, 
and 35 U.S.C. 103(b), 1184 Off. Gaz. Pat. Office 86 (March 26, 1996).
    The process of making claims or the process of using claims that do 
not depend from or otherwise include all the limitations of the product 
claims that are allowable over the prior art will, by rule, be treated 
as constructively non-elected due to the presentation of product 
claims. If the claims to such product are not determined to be 
allowable over the prior art, then, by rule, the presentation of 
product claims will be treated as a constructive election of the 
product for examination. Thus, a process claim will, by rule, be 
treated as constructively non-elected due to the presentation of a 
product claim in either of the following two situations: (1) if no 
constructively elected product claim is allowable over the prior art; 
or (2) if the process claim does not depend from or otherwise include 
all the limitations of a constructively elected product claim that is 
allowable over the prior art.
    The PTO is also specifically considering providing, by rule, that 
the PTO will examine the claims to the subcombination if either: (1) 
the first presented claims are claims to a subcombination; or (2) the 
first presented claims are claims to a combination and the application 
contains claims to the subcombination. If the claims to the 
subcombination are determined to be allowable over the prior art, the 
PTO will also examine (permit joinder of) the corresponding combination 
claims (if the application contains claims to the combination) that 
depend from or otherwise include all the limitations of the 
subcombination claims that are allowable over the prior art.
    Restriction is currently not permitted in the situation in which 
the combination includes all the limitations of the subcombination 
(i.e., the subcombination is essential to the patentability of the 
combination), unless there is at least one combination claim that does 
not include all the limitations of the subcombination (i.e., a claim 
that evidences that the applicant does not consider the subcombination 
is essential to the patentability of the combination or an ``evidence 
claim''). See MPEP 806.05(c). Restriction may be permitted in the 
situation in which the combination does not include all the limitations 
of the subcombination (i.e., the subcombination is not essential to the 
patentability of the combination). See id.
    The combination claims that do not depend from or otherwise include 
all the limitations of the subcombination claims that are allowable 
over the prior art will, by rule, be treated as constructively non-
elected due to the presentation of subcombination claims. If the claims 
to the subcombination are not determined to be allowable over the prior 
art, then, by rule, the presentation of subcombination claims will be 
treated as a constructive election of the subcombination for 
examination. Thus, a combination claim will, by rule, be treated as 
constructively non-elected due to the presentation of a subcombination 
claim in either of the following two situations: (1) if no 
constructively elected subcombination claim is allowable over the prior 
art; and (2) if the combination claim does not depend from or otherwise 
include all the limitations of a constructively elected subcombination 
claim that is allowable over the prior art.
    The examiner would still be required to set forth the restriction 
requirement in the first Office action, and would then follow the 
requirement with an indication of which claims were constructively 
elected. If the applicant disagrees with the propriety of the 
restriction requirement, the applicant would continue to have the right 
to request reconsideration (37 CFR 1.143) and review (37 CFR 1.144) of 
the restriction requirement. The only change is that an applicant's 
election would be a constructive election based upon the order of 
presentation, rather than an express election in reply to a restriction 
requirement.
    This change would apply to nonreissue applications filed under 35 
U.S.C. 111(a), and would not apply to applications filed under the PCT. 
The PTO is also considering changes to restriction practice for reissue 
applications, which are discussed below. The discussion in this topic 
applies solely to restriction practice for a nonreissue application.
15. Creating a ``rocket docket'' for design applications (37 CFR 1.155)
    Summary: The PTO is considering an expedited procedure to reduce 
the processing time for the examination of design applications.
    Specifics of Change Being Considered: The PTO is considering a 
change to the rules of practice, so that design applicants may for a 
fee (roughly estimated at approximately $900) request to have their 
applications expedited. The applications will be individually examined 
with priority and the clerical processing will be conducted by special 
expediters and/or monitored by special expediters to achieve 
expeditious processing through initial application processing and the 
Design Examining Group.
    Discussion: Because of the marketplace, there is a need for rapid 
protection of certain articles which are easy to copy, such as athletic 
shoes, toys or consumer goods. Consequently, the time spent securing 
patent protection may severely erode the benefit of design patent 
protection, since if the process is lengthy, once the design is 
patented, the damage in the form of infringement may already be done. 
Currently the ``Petition to Make Special--Accelerated'' procedure set 
forth at MPEP 708.02(VIII) provides an under-utilized process for 
applicants seeking timely examination. Presumably this is because the 
procedure required to grant a Petition to Make Special is time-
consuming in that the petitions must first be located from amongst the 
application papers and oft-times a considerable amount of time may 
transpire before the petition is acted upon by the required high-level 
official. Utilizing the proposed expedited procedure, this will be 
solved by having the request hand-delivered to the Director's Office 
where the PTO can be assured that it will be acted upon quickly. 
Moreover, the current Petition to Make Special procedures are primarily 
directed to prioritizing the application while it is on the Examiner's 
docket as opposed to decreasing time spent routing the application and 
clerical processing time. Certain design applicants have requested that 
additional measures, for an additional cost, be made available to 
design applicants so that their applications may be processed and/or 
monitored by expediters, who will assure hand-carrying of the 
applications between processing steps and top priority clerical 
processing of the applications. This is consistent with the PTO's goals 
of reducing the cycle time for applications (Goal 1) and exceeding 
customers' expectations (Goal 4).

[[Page 53522]]

Accordingly, there is a need for a separate, streamlined, expedited 
procedure for designs.
    Consequently, the PTO is considering amending 37 CFR 1.155 to 
create an additional avenue for design applicants seeking expedited 
processing during examination before the PTO. The fee for this 
expedited processing is that fee necessary to recover the PTO's cost of 
providing such expedited examination. See 35 U.S.C. 41(d). The initial 
estimate (approximately $900) is for the additional cost of: (1) hand-
carrying/walking an application through processing stages in initial 
application processing and the Design Examining Group; (2) prioritizing 
the processing of the application and (3) individually searching and 
examining the application by itself and not along with other design 
applications.
    Unlike utility and plant applications, design applications are 
generally searched (and examined) in groups of ten to twenty which 
reduces the search and examination time needed for each design 
application, which in turn permits a relatively low design application 
filing fee. Under this practice, the general procedure results in all 
applications being searched before any are completed and mailed. Given 
that expedited cases will be searched and examined individually by 
themselves rather than with many other design applications, a higher 
processing fee is justified.
    The expedited procedure for design cases will afford expeditious 
treatment from the date of filing to the date of issuance or 
abandonment, except if the application is appealed or if a petition is 
filed there is no expedited treatment while the application is within 
the jurisdiction of the Board of Patent Appeals and Interferences 
(BPAI) or Special Program Law Office (SPLO) under the proposed 37 CFR 
1.155. As to processing during the printing cycle, the time for 
processing prior to printing is expected to be reduced to eight weeks, 
so no special expedited procedure is deemed necessary.

Requirements

    (1) The Request to Expedite along with the design application 
should be filed by hand in the Design Group Director's Office. If the 
application has been previously filed, the request, which must indicate 
the application number, should be hand-carried or faxed to the Group 
Director's Office.
    (2) The Request to Expedite will be treated promptly but will not 
be considered until the application is complete (i.e., includes the 
basic filing fee, executed oath or declaration and drawings).
    (3) Applicant will be required to conduct a preexamination search. 
The results of the search must be reported as set forth in MPEP 
708.02(VIII) ``Special Examining Procedure for Certain New 
Applications--Accelerated Examination.'' See MPEP 708.02(VIII) at 700-
71.
    (4) The requisite fee must accompany the Request to Expedite. The 
fee (roughly estimated at approximately $900) charged will be based on 
expenses for additional work and processing time (e.g., search and 
examination on an individual application basis and special clerical 
processing/handling and stoppage of other work in progress). There will 
be no time limit on when the Request to Expedite may be filed, but the 
fee will be the same regardless of the point in the examination 
expedited status begins.
    (5) Formal drawings are required for expedited status.
    As to restriction practice, there will be a constructive election 
of the first presented invention. No right to traverse is to be 
provided. As an alternative, the applicant is given the right to 
traverse immediately following an Office action in which a constructive 
election has been set forth; but once the right to traverse is claimed, 
the expedited status under 37 CFR 1.155 will be terminated.

Benefits of Expedited Status

    Once the Request to Expedite is granted, the application will be 
provided special expedited processing including (a) essentially walk-
through processing through initial application and Design Examining 
Group stages and (b) processing out-of-turn on an immediate basis. 
There will be specially designated expediters for clerical processing 
who will personally perform certain processing steps where possible, 
and if not possible, will wait with the application for immediate 
performance of processing steps by regular personnel. The applications 
will be hand-carried from step to step. These special expediters might 
be designated employees in existing organizations or a special central 
clerical operation that would serve as expediters and do or oversee the 
processing for most other operations.
    Examiner processing of expedited applications (for first as well as 
subsequent actions) will be given the highest priority for examination 
and each application will be searched and examined individually by 
themselves and not along with a batch of other applications. A courtesy 
copy of all Office actions (with references if feasible) will be faxed 
if a fax number is provided.
    The design group will monitor application progress using the Patent 
Application Locating and Monitoring (PALM) system to ensure that 
expedited applications are not misplaced or delayed. Distinctive 
markings or tags will be placed on the filewrapper. The applications 
will be specially coded with a PALM transaction code and specially run 
PALM reports will be generated to ensure that any expedited application 
in the same status for more than a predetermined period of time will be 
noted and brought to the attention of the monitoring officials.
    The PTO will set a one-month Shortened Statutory Period (SSP) for 
reply for each action.
    In addition, the PTO envisions setting aside an adequate number of 
``expedited status'' slots at the printer for expedited cases. However, 
the time for the printing process is expected to be reduced to eight 
weeks, so no special provision is expected to be required.
    The PTO is interested in whether you find this program desirable 
and, if not, why not. Please include with your comments an estimate of 
the number of expedited requests that your office or firm expects to 
file, should the expedited procedure be implemented.
16. Requiring identification of broadening in a reissue application (37 
CFR 1.173)
    Summary: The PTO is considering a change to 37 CFR 1.173 to require 
reissue applicants to identify all occurrences of broadening of the 
claimed invention in the reissue application.
    Specifics of Change Being Considered: Reissue applicants would be 
specifically required to point out all occurrences of broadening of the 
claims. This will alert examiners to consider issues involving 
broadening relative to the two-year limit and the recapture doctrine. 
While this requirement is being imposed on applicants, the examiner 
will still be expected to independently look for and to appropriately 
treat any broadening issues under 35 U.S.C. 251, Paras. 1 and 4. If 
applicant fails to note a broadening and the examiner does identify a 
broadening, the examiner would not be permitted to make any rejection 
or objection as to the failure of applicant to identify the broadening.
    Discussion: 35 U.S.C. 251, para. 4, provides that no reissue patent 
may enlarge (broaden) the scope of the claims of the original patent, 
unless the reissue patent was applied for within two years from the 
grant of the original patent. See In re Graff, 111 F.3d 874,

[[Page 53523]]

877, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997). The standard for 
determining whether there has been a ``broadening'' has been set forth 
by the Court of Appeals for the Federal Circuit as follows:

a claim of a reissue application is broader in scope than the 
original claims if it contains within its scope any conceivable 
apparatus or process which would not have infringed the original 
patent * * *. A claim that is broader in any respect is considered 
to be broader than the original claims even though it may be 
narrower in other respects.

    See In re Freeman, 30 F.3d 1459, 1464, 31 USPQ2d 1444, 1447 (Fed. 
Cir. 1994) (quoting Tillotson Ltd. v. Walbro Corp. 831 F.2d 1033, 1037 
n.2, 4 USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987)); see also Westvaco Corp. 
v. International Paper Co., 991 F.2d 735, 741-42, 26 USPQ2d 1353, 1358-
59 (Fed. Cir. 1993); and In re Self, 671 F.2d 1344, 1346-47, 213 USPQ 
1, 3-4 (CCPA 1982).
    Further, even if a broadened reissue is applied for within two 
years (of the patent grant date), any broadening must also be 
considered in view of the recapture doctrine which prevents a patentee 
from regaining through reissue subject matter that the patentee 
surrendered in an effort to obtain the original patent claims. See, In 
re Clement, 131 F.3d 1464, 1468, 45 USPQ2d 1161, 1164 (Fed. Cir. 1997); 
see also Hester Indus., Inc. v. Stein, 142 F.3d 1472, 1480-82, 46 
USPQ2d 1641, 1648-49 (Fed. Cir. 1998) (arguments during prosecution of 
the original patent may, even in the absence of an amendment to the 
claims, give rise to a surrender that bars recapture by reissue). 
Therefore, to properly examine any reissue application, the examiner 
must be aware of all occurrences of broadening of the original patent 
claims.
    While it is often clear when a reissue application contains one or 
more claims that are broader than the claims of the original patent, 
sometimes issues of claim interpretation arise where it is not clear 
that the reissue application contains claims that are broader than the 
claims of the original patent. For example, a reissue application 
changing the phrase ``perforation means'' in the original patent claims 
to ``perforations'' is a broadening change if that phrase in the 
original patent is considered to have invoked 35 U.S.C. 112, para. 6 
(Johnston v. Ivac Corp., 885 F.2d 1574, 1580, 12 USPQ2d 1382, 1386 
(Fed. Cir. 1989) (35 U.S.C. 112, para. 6, operates to cut back on the 
types of means which could literally satisfy the claim language)), but 
is not a broadening if that phrase in the original patent is not 
considered to have invoked 35 U.S.C. 112, para. 6 (Cole v. Kimberly-
Clark Corp., 102 F.3d 524, 531, 41 USPQ2d 1001, 1006 (Fed. Cir. 1996) 
(presence of the word ``means'' in a claim does not necessarily invoke 
35 U.S.C. 112, para. 6)). Thus, in a significant number of reissue 
applications, it is not readily apparent from an inspection of the 
claims in the reissue application whether they are broader than the 
original patent claims. See Freeman, 30 F.3d at 1464-65, 31 USPQ2d at 
1448 (``we cannot agree with [applicant] that simply because 
[applicant] added words to [the] claims that those claims are further 
narrowed in scope * * * [t]he English language is not that simple'').
    The PTO recently amended 37 CFR 1.175(a) (effective December 1, 
1997) to require that a reissue applicant identify in his or her 
reissue oath or declaration only a single error being corrected in the 
reissue. See Changes to Patent Practice and Procedure; Final Rule 
Notice, 62 FR 53131, 53196 (October 10, 1997), 1203 Off. Gaz. Pat. 
Office 63, 121 (October 21, 1997). Thus, in a reissue application 
containing claims that have been both broadened and narrowed, the 
applicant may meet the literal requirements of 37 CFR 1.175(a) by 
identifying only the error involving the narrowing of the original 
patent claims, while still asserting a correction of ``more or less'' 
than applicant had a right to claim in the original patent and without 
addressing the issue of broadening. Without the identification of all 
occurrences of broadening, it may not be clear when a reissue 
application contains claims that are broader than the claims of the 
original patent.
    Since this recent rule change did not specifically retain the 
requirement for indicating when an amendment (change to the original 
patent) will actually be a broadening amendment, or an attempt to be a 
broadening, amendment, the PTO is considering imposing a requirement 
for reissue applicants, at the time any changes are made, either at the 
time of filing or during the course of prosecution, to specifically 
identify the changes that involve, or may involve, broadening of the 
claims. Thus, applicants would be required to identify all occurrences 
of broadening of the patent claims in the reissue application. For 
example, a change from the term ``rigid material,'' which might appear 
in an original patent, to the term ``material'' in a corresponding 
reissue application, is an easily identifiable broadening of the claim. 
Another example would be a totally rewritten new claim in a reissue 
application which may not have an easily recognizable correspondence to 
any original patent claim.
    The intent is to impose on applicant a burden to identify all 
instances of broadening so as to alert the examiner in a timely manner 
to the fact that broadening has occurred so that the examiner can 
consider the questions of whether the broadening has occurred outside 
the two-year time period or whether the broadening amounts to an 
attempt to recapture subject matter previously given up in obtaining 
the patent. The examiner, however, is not relieved of his/her 
obligation to fully evaluate and examine the reissue application, 
including any issues related to broadening, as required by 35 U.S.C. 
251, para. 4.
    If an applicant fails to identify any broadening but the examiner 
has detected occurrences of broadening, the burden on applicant has 
been satisfied and there would be no point to having the examiner 
object and require the applicant to identify the broadening already 
detected by the examiner. An objection or rejection under 37 CFR 1.173 
(or under 35 U.S.C. 251) would not be warranted. While the examiner 
would not be required to indicate that broadening had been found if an 
examination issue is not present based on the broadening, the examiner 
would have the option of reminding applicant of the requirement for 
identification of all instances of broadening and request applicant to 
identify any instance of broadening not yet identified by the examiner. 
The intent of the change is not for the examiner to rely upon 
applicant's duty to identify each broadening, but to have the applicant 
and the examiner each have responsibility to address the issue.
    An intentional failure to identify material broadening to the PTO 
may result in a court finding that the reissue applicant has violated 
the duty of candor and good faith to the PTO under 37 CFR 1.56. If, 
however, an applicant makes a good faith attempt to alert the examiner 
to where broadening has occurred in the reissue claims but 
inadvertently omits one or more instances of broadening, or the 
applicant in good faith does not identify any broadening in that the 
applicant had no intent to broaden, the applicant may not have the 
requisite intent necessary for a finding that the applicant violated 37 
CFR 1.56. In any event, such issues would not be addressed by the PTO.
    The change to 37 CFR 1.173 under consideration would support the 
PTO's Business Goal 1 (reduce PTO processing time to twelve months or 
less for all inventions) because it would lead to an early 
identification of issues of broadening (within two years),

[[Page 53524]]

recapture, and claim interpretation and, thereby, help to ensure that 
the examination process is efficiently performed. The change to 37 CFR 
1.173 under consideration would also support the PTO's Business Goal 4 
(exceed our customers' quality expectations, through the competencies 
and empowerment of our employees) because it would help to ensure that 
broadening and recapture doctrine issues are addressed. Since it is the 
reissue applicant (and not the PTO or the public) who is seeking to 
change (or broaden) the original patent claims, the reissue applicant 
is in the best position to identify such broadening. In addition, if it 
is not clear that the reissue application contains claims that are 
broader than the claims of the original patent, the applicant's 
identification on filing of all occurrences of broadening may assist 
the applicant in meeting the two-year statutory requirement in 35 
U.S.C. 251, para. 4. See Graff, 111 F.3d at 877, 42 USPQ2d at 1473-74 
(35 U.S.C. 251, para. 4, requires that a reissue applicant give notice 
of proposals to broaden the claims of a patent to the public within two 
years of issuance of the patent). Thus, it is appropriate to place some 
responsibility for identifying all occurrences of broadening in the 
reissue application on the reissue applicant (rather than solely on the 
PTO examiner or the public).
    The recent amendment to 37 CFR 1.175, inter alia, eliminated the 
requirement that an applicant submit an oath or declaration setting 
forth detailed showings concerning each and every change being made to 
the patent via reissue. See Changes to Patent Practice and Procedure, 
62 FR at 53165-66, 1203 Off. Gaz. Pat. Office at 92-93. The changes to 
37 CFR 1.173 under consideration do not readdress the requirements of 
former 37 CFR 1.175 because: (1) 37 CFR 1.175 relates to oath/
declaration requirements and the identification of all occurrences of 
broadening need not (but may) be provided in the reissue oath or 
declaration (e.g., they may be identified by a preliminary remarks 
paper, or in the application transmittal letter); (2) the 
identification requirement applies only to broadening changes, not to 
all of the changes being made by reissue; and (3) the identification of 
all occurrences of broadening need not include a discussion of the 
nature of the broadening as was required by former 37 CFR 1.175.
17. Changing multiple reissue application treatment (37 CFR 1.177)
    Summary: The PTO is considering an amendment to 37 CFR 1.177 to 
streamline the processing of divisional (or multiple) reissue 
applications.
    Specifics of the Change Being Considered: The PTO is considering an 
amendment to 37 CFR 1.177 to: (1) eliminate the current requirements of 
37 CFR 1.177 that multiple reissue applications be referred to the 
Commissioner and issue simultaneously; and (2) require that each of the 
multiple reissue applications contains a specific cross-reference to 
each of the other reissue applications. Each reissue application would 
have to present all original claims (amended, unamended, or deleted). 
Issuance of reissues where no changes have been made would not be 
permitted.
    Discussion: 37 CFR 1.177 currently provides that divisional reissue 
applications: (1) must be referred to the Commissioner; and (2) will 
issue simultaneously, unless otherwise ordered by the Commissioner. The 
specifics of the exception processing given to divisional reissue 
applications is set out at MPEP 1451. The PTO has determined that it is 
unnecessary to give this exception processing to divisional (or 
multiple) reissue applications.
    Therefore, the PTO is considering amending 37 CFR 1.177 to: (1) 
eliminate the requirements that multiple reissue applications be 
referred to the Commissioner and issue simultaneously; and (2) require 
that each of the multiple reissue applications contains (at the 
beginning of the specification) a specific cross-reference to each of 
the other reissue applications. This cross-reference would serve as a 
notification to the public that more than one reissue patent may/will 
replace the single original patent. If applicant fails to present such 
an amendment to the specification(s) when filed, or if the first 
reissue fails to include a cross-reference to a later filed second 
reissue application, and the error is not detected by the PTO before 
the reissue application issues, the PTO would issue a certificate of 
correction under either 37 CFR 1.322 or 1.323 to provide such notice in 
the issued reissue patent(s).
    The numbering of the claims in the multiple reissue applications 
should follow a simple basic numbering scheme. For several reissue 
patent applications being filed from a single original patent, all 
claims of the original patent should be presented in each reissue 
application as either amended, unamended, or deleted (shown in 
brackets) claims, respectively, with each claim bearing the same number 
it had in the original patent. The same claim of the original patent 
should not be presented in its original unamended form for examination 
in more than one of such several reissue applications or a double 
patenting rejection under 35 U.S.C. 101 shall be made. Added claims may 
be presented in any of the several applications and should be numbered 
beginning with the next number following the highest numbered patent 
claim. For example, an original patent containing fifteen claims may be 
filed as three separate reissue applications, each presenting all 
fifteen of the original claims but, of the fifteen, a different five 
claims for examination. The selected five claims being presented for 
examination in each reissue application could be amended or unamended 
and they would still carry their original numbering. The ten respective 
deleted claims (appearing in brackets) would also appear in each 
reissue application. Any added claims, even if different in each of the 
applications, would be numbered ``16'' and above. Each of the printed 
reissue patents would include all of the original claims (with or 
without brackets) as well as any claims added only into that reissue 
patent.
    If the same or similar claims were presented in more than one of 
the multiple reissue applications, statutory double patenting (35 
U.S.C. 101) or non-statutory (judicially created doctrine) double 
patenting considerations would be made by the examiner during 
examination, and appropriate rejections made.
    The amendment to 37 CFR 1.177 being considered would support Patent 
Business Goals 1 (reduce PTO processing time to twelve months or less 
for all inventions) by eliminating: (1) the processing time needed for 
a petition for non-simultaneous issuance of multiple reissue 
applications; and (2) the suspension time of a reissue application in 
order to provide for simultaneous issuance of the multiple reissue 
applications.
18. Creating alternative review procedures for applications under 
appeal (37 CFR 1.192)
    Summary: The PTO is considering alternative review procedures to 
reduce the number of appeals forwarded to the Board of Patent Appeals 
and Interferences.
    Specifics of Change Being Considered: The PTO is considering two 
alternative review procedures to reduce the number of appeals having to 
be forwarded to the Board of Patent Appeals and Interferences (Board) 
for decision. Both review procedures involve a review that would be 
available upon request and payment of a fee by the appellant, and would 
involve review by at least one other PTO official. The first review 
would occur after the filing of a notice

[[Page 53525]]

of appeal but before the filing of an appeal brief and involve a review 
of all rejections of a single claim being appealed to see whether any 
rejection plainly fails to establish a prima facie case of 
unpatentability. The second review would occur after the filing of an 
appeal brief and involve a review of all rejections on appeal.
    Discussion: To expedite resolution of appeals, the PTO is 
considering two optional review procedures. The first review under 
consideration would take place prior to the filing of an appeal brief, 
and the second review under consideration would take place after the 
filing of an appeal brief. The procedures under consideration would be 
optional as to the appellant, in that the appellant need not request 
either such review as a prerequisite to obtaining a decision by the 
Board. The appellant, however, upon making a timely request accompanied 
by the appropriate fee, would be entitled to either such review (or 
even both such reviews) prior to the appeal going forward to the Board.
    A patentee is entitled to patent term extension if, inter alia, 
``the issue of a patent is delayed due to appellate review by the Board 
of Patent Appeals and Interferences or by a Federal court and the 
patent is issued pursuant to a decision in the review reversing an 
adverse determination of patentability.'' See 35 U.S.C. 154(b)(2). 
Since the appeal reviews under consideration would not be by either the 
Board or a Federal court, the issuance of a patent as a result of a 
decision reached during such an appeal review to withdraw a rejection 
would not entitle the patentee to patent term extension under 35 U.S.C. 
154(b)(2). Nevertheless, this should not dissuade applicants from using 
these appeal review procedures because: (1) patent term extension under 
35 U.S.C. 154(a)(2) is preconditioned upon a decision by the Board or a 
Federal Court in the review reversing an adverse determination of 
patentability, which is never certain; and (2) the appeal reviews under 
consideration will take place before the preparation of any examiner's 
answer, and, as such, will not result in the delays inherent in Board 
or court review.
    The purpose of these review procedures is not to place applications 
in better condition for appeal, but to reduce the number of 
applications that must be forwarded to the Board for a decision. The 
PTO anticipates that the appeal reviews under consideration will lead 
to the elimination of the need for Board review in appeals involving 
weak rejections.
a. Limited pre-brief review
    The PTO is considering an optional, limited review that would take 
place after a notice of appeal has been filed, but prior to the filing 
of an appeal brief. Under the limited pre-brief review, the appellant 
may file a request (accompanied by the requisite fee) for review of all 
of the rejections in the final rejection (or rejection being appealed 
if non-final) of a selected claim. The application will be given to a 
second primary examiner (reviewer) who will review the application to 
determine whether each rejection(s) of the selected claim plainly fails 
to establish a prima facie case of unpatentability. The reviewer is 
expected to make an independent evaluation of the merits of the 
appealed rejection(s), but may consult with the primary examiner (or 
examiner responsible for the application if not a primary examiner).
    The limited pre-brief review would be based on the final rejection 
(or rejection being appealed) without the need for the filing of an 
appeal brief. All that would be required is a request for such a review 
and an identification of the claim to be reviewed. Arguments would, of 
course, be permitted, but the review would be limited to whether the 
rejection(s) plainly failed to establish a prima facie case of 
unpatentability of the identified claim. For example, a request for a 
review of whether affidavits or declarations under 37 CFR 1.132 
overcome a prima facie case of unpatentability would exceed the limits 
of the limited pre-brief review under consideration.
    The limited review would focus on whether the rejection(s) of the 
selected claim plainly fails to establish a prima facie case of 
unpatentability. In determining whether a rejection plainly fails to 
establish a prima facie case of unpatentability, the reviewer will 
evaluate the record (e.g., the applied references) to determine whether 
it is plain that the primary examiner has failed to meet the burden of 
establishing a prima facie case of unpatentability, but will not 
evaluate the adequacy of the expression of the appealed rejection in 
the action. Obviously, if the reviewer must change the basic thrust of 
an appealed rejection as applied in the action to avoid the conclusion 
that it plainly fails to establish a prima facie case of 
unpatentability, the reviewer will consider the rejection to plainly 
fail to establish a prima facie case of unpatentability, since changing 
the basic thrust of a rejection would require a new ground of rejection 
and the reopening of prosecution. Thus, such a limited review is 
expected to lead to the withdrawal of clearly meritless rejections, but 
may also lead to either the suggestion of amendments which could be 
made to avoid the rejection(s), or to a reopening of prosecution.
    Although the reviewer would not have the authority to overrule the 
primary examiner, that primary examiner would be made aware of 
situations in which another experienced examiner (the reviewer) not 
only disagreed with any or all of the rejections of the selected claim, 
but considered such rejection(s) to plainly fail to establish a prima 
facie case of unpatentability. It is generally expected that the 
primary examiner would withdraw such a rejection. Unless the review 
resulted in the withdrawal of all rejections and allowance of the 
application, the PTO would provide a notice to the appellant advising 
the appellant: (1) that the review occurred and that the period set in 
37 CFR 1.192 for filing an appeal brief runs from the mail date of such 
notice (see discussion below); and (2) of any rejection(s) that is 
withdrawn as a result of the review.
    Consideration is also required for the time frames for this type of 
review. Under the current rules, the mere filing of a such request 
would not satisfy the requirement for the filing of an appeal brief 
(and its fee) to avoid dismissal of the appeal. The PTO could, however, 
amend 37 CFR 1.192 to, in effect, stay the period for filing an appeal 
brief (and its fee) until completion of the review. Obviously, once an 
appellant has requested such a limited pre-brief review, the appellant 
would not be permitted to stay the period for filing an appeal brief by 
requesting another such limited review, but would be required to timely 
file an appeal brief to avoid dismissal of the appeal.
    The benefit to applicants of a limited pre-brief review is that it 
permits the appellant to obtain review of what is considered a 
rejection that plainly fails to establish a prima facie case of 
unpatentability, while saving the costs involved in preparing an appeal 
brief. The PTO expects that this type of limited pre-brief review would 
be most useful in the situation in which there is a single 
representative claim upon which the appeal hinges, and the appellant 
considers the rejection(s) of such claim to be deficient on its face. 
In such a situation, a prompt resolution of the disagreement(s) as to 
that claim would in all likelihood lead to a resolution of all other 
issues. Specifically, the PTO anticipates that an appellant using this 
procedure would choose the narrowest claim that the appellant would be 
willing to accept (which may be a dependent claim) as

[[Page 53526]]

the selected claim, and that the limited review would either lead to 
the examiner being informed by an experienced examiner that one or more 
rejections plainly fail to establish a prima facie case of 
unpatentability, or the appellant being informed by another experienced 
examiner that the rejection(s) do not plainly fail to establish a prima 
facie case of unpatentability.
b. Post-brief review
    The PTO is also considering adding an optional review that would 
take place after an appeal brief has been filed. Under the post-brief 
review, the appellant may file a request (accompanied by the requisite 
fee) and the application will be given to a second primary examiner 
(reviewer) who will review the application, focusing on the final 
rejection (or rejection being appealed) and the appeal brief. After 
this review, the primary examiner (and the examiner responsible for the 
application if not a primary examiner) and the reviewer will confer 
prior to mailing of an examiner's answer to review the appealed 
rejections and the brief. The conference would thus include at least 
two PTO officials, but may also include an examiner who is not a 
primary examiner. Such a post-brief review would focus on the 
tenability of the appealed rejection(s) and, accordingly, is expected 
to lead to the withdrawal of rejections of doubtful merit. Such a 
review may also lead to either the suggestion of amendments which could 
be made to avoid the rejections of record, or to reopening of 
prosecution.
    Although the reviewer would not have the authority to overrule the 
primary examiner responsible for the appeal, that primary examiner 
would be made aware of weaknesses in his or her position as perceived 
by another experienced examiner. It is generally expected that the 
primary examiner will withdraw those rejections which another 
experienced examiner considers unlikely to be successful on appeal. If, 
however, a reasonable difference of opinion exists among the examiners 
as to the merits of the rejection(s), it should be expected that appeal 
will go forward to the Board. Unless the review resulted in the 
withdrawal of all rejections and allowance of the application, the 
examiner's answer would be initialed by the reviewer and would 
indicate: (1) that the review occurred; and (2) any rejection(s) that 
is withdrawn as a result of the review.
c. Issues for public comment
    The PTO requests public comment on each of the above-mentioned 
procedures, since the PTO may implement neither, one, or both 
procedures depending upon the public comments and internal feasibility 
concerns.
    The PTO also desires public comment on the pool of PTO employees 
from which the reviewer for both reviews is taken. For example, the PTO 
could select as the reviewer: (1) a primary examiner from the same or 
related art; (2) a primary examiner from a different art; (3) a manager 
(e.g., a Supervisory Patent Examiner, Group Special Program Examiner, 
or Quality Assurance Specialist); (4) a Legal Advisor from the Special 
Program Law Office; or (5) a Quality Review Examiner.
    The PTO also desires public comment on whether it should establish 
a uniform procedure for both reviews to be used throughout the 
Examining Corps, or whether each technology center should be free 
(within specified guidelines) to establish its own procedures for such 
reviews.
19. Eliminating preauthorization of payment of the issue fee (37 CFR 
1.311)
    Summary: The PTO is considering amending 37 CFR 1.311(b) to 
eliminate the option of filing an authorization to charge an issue fee 
to a deposit account before the notice of allowance is mailed.
    Specifics of Change Being Considered: 37 CFR 1.311(b) currently 
permits an authorization to be filed either before or after the mailing 
of a notice of allowance. The PTO is considering an amendment to 37 CFR 
1.311(b) to permit an authorization to be filed after, but not before, 
the notice of allowance is mailed.
    Discussion: Generally, it is in applicant's best interest not to 
pay the issue fee at the time the notice of allowance is mailed, since 
it is much easier to have a necessary amendment or an information 
disclosure statement considered if filed before the issue fee is paid 
than after the issue fee is paid. See 37 CFR 1.97 and 1.312(b). Also, 
once the issue fee has been paid, applicant's window of opportunity for 
filing a continuing application is reduced and the applicant no longer 
has the option of filing a continuation or divisional application as a 
continued prosecution application (CPA) under 37 CFR 1.53(d). Many 
applicants find the time period between the mailing date of the notice 
of allowance and the due date for paying the issue fee useful for re-
evaluating the scope of protection afforded by the allowed claim(s) and 
for deciding whether to pay the issue fee and/or to file one or more 
continuing applications.
    Therefore, the PTO is considering amending 37 CFR 1.311(b) to 
permit an authorization to be filed after, but not before, the notice 
of allowance is mailed. This change in procedure would support the 
PTO's business goal to reduce PTO processing time to twelve months or 
less for all inventions.
    37 CFR 1.311 (b), as currently written, causes problems for the PTO 
that tend to increase PTO processing time. The language used by 
applicants to authorize that fees be charged to a deposit account often 
varies from one application to another. As a result, conflicts arise 
between the PTO and applicants as to the proper interpretation of 
authorizing language found in their applications. For example, some 
applicants are not aware that it is current PTO policy to interpret 
broad language to ``charge any additional fees which may be required at 
any time during the prosecution of the application'' as authorization 
to charge the issue fee on applications filed on or after October 1, 
1982. See Deposit Account Authorization to Charge Issue Fee; Notice, 
1095 Off. Gaz. Pat. Office 44 (October 25, 1988), reprinted at 1206 
Off. Gaz. Pat. Office 95 (January 6, 1998).
    Even when the language pre-authorizing payment of the issue fee is 
clear, the pre-authorization can present problems for both the PTO and 
practitioners. For example, it may not be clear to the PTO whether a 
pre-authorization is still valid after the practitioner withdraws or 
the practitioner's authority to act as a representative is revoked. If 
the PTO charges the issue fee to the practitioner's deposit account, 
the practitioner may have difficulty getting reimbursement from the 
practitioner's former client.
    When the issue fee is actually charged at the time the notice of 
allowance is mailed, a notice to that effect is printed on the notice 
of allowance (PTOL-85) and applicant is given one month to submit/
return the PTOL-85B with information to be printed on the patent. 
However, applicants are sometimes confused by the usual three-month 
time period provided for paying the issue fee and do not, therefore, 
return the PTOL-85B until the end of the normal three-month period. 
Because the PTO recognizes that the information provided on the PTOL-
85B is needed in order to print the assignee and the attorney 
information on the patent, the failure to respond within the one month 
period is waived and the later

[[Page 53527]]

submission of the PTOL-85B is accepted. Thus, even though the issue fee 
was paid early, the issue process is delayed until the PTOL-85B is 
actually returned, or three months from the mail date of the notice of 
allowance passes, whichever occurs first. If no PTOL-85B is timely 
returned, the patent is published without the information provided on a 
PTOL-85B.
    If prompt issuance of the patent is a high priority, applicant may 
promptly return the PTOL-85B (supplying any desired assignee and 
attorney information) and pay the issue fee after receipt of the notice 
of allowance. In this way, the PTO will be able to process the payment 
of the issue fee and the information on the PTOL-85B as a part of a 
single processing step. Further, no time would be saved even if the 
issue fee was pre-authorized for payment as the PTO would still have to 
wait for the return of the PTOL-85B. Thus, while it is not seen that 
the proposal to eliminate the pre-authorization to pay the issue fee 
would have any adverse effects on our customers, comments on this 
proposal are requested.
20. Reevaluating the Disclosure Document Program
    Summary: The PTO is seeking customer feedback to assess the value 
of the Disclosure Document Program. From a preliminary evaluation it 
appears that: (1) it is unclear whether many inventors actually get any 
benefit from this program; (2) some inventors use this program as a 
result of actions by invention promotion firms which mislead them into 
believing that they are actually filing an application for a patent; 
and (3) better benefits and protection are afforded to inventors if 
they file a provisional application for patent instead.
    Specifics of Change being Considered: The PTO is evaluating the 
Disclosure Document Program under the Paperwork Reduction Act (44 
U.S.C. ch. 35) in order to determine if it is serving the needs of 
those inventors who have been using it and whether the PTO can 
encourage use of provisional application practice instead of the 
practice of filing a Disclosure Document and, subsequently, filing 
either a provisional or nonprovisional application.
    Discussion: The PTO implemented the Disclosure Document Program in 
1969 in order to provide a more credible form of evidence of conception 
of an invention than the ``self-addressed envelope'' form of evidence 
formerly used by inventors. See Disclosure Document Program; Notice, 34 
FR 6003 (April 2, 1969), 861 Off. Gaz. Pat. Office 1 (May 6, 1969). An 
inventor may, under the Disclosure Document Program, file in the PTO a 
Disclosure Document which includes a written description and drawings 
of his or her invention in sufficient detail to enable a person of 
ordinary skill in the art to make and use the invention to establish a 
date of invention in the United States prior to the application filing 
date under 35 U.S.C. 104. The inventor must sign the Disclosure 
Document and include a separate signed cover letter identifying the 
papers as a Disclosure Document. A Disclosure Document does not require 
a claim in compliance with 35 U.S.C. 112, para. 2, nor an inventor's 
oath under 35 U.S.C. 115, and is not accorded a patent application 
filing date. A Disclosure Document is supposed to be destroyed by the 
PTO after two years unless it is referred to in a separate letter in a 
related provisional or nonprovisional application filed within those 
two years. The filing fee for a Disclosure Document set forth in 37 CFR 
1.21(c) is $10. See MPEP 1706.
    The PTO currently processes Disclosure Documents as follows: Each 
Disclosure Document is assigned an identifying number, the identifying 
number is stamped on the actual Disclosure Document, and the Disclosure 
Documents are stored in sequential number order. The PTO also prepares 
and mails a notice with the identifying number and date of receipt in 
the PTO to the customer. When a paper referring to a Disclosure 
Document is filed in a patent application within two years after the 
filing of a Disclosure Document, a retention label is attached to the 
Disclosure Document and the applicant is notified that the Disclosure 
Document will be retained. The paper filed by the applicant which 
referred to the Disclosure Document is retained in the application 
file.
    Lately, the PTO has been receiving approximately twenty-five to 
thirty-five thousand Disclosure Documents per year. Of all the 
Disclosure Documents filed each year, however, only about 0.1% (about 
thirty per year) are actually retained at the inventor's request. The 
PTO perceives that inventors often file Disclosure Documents to 
establish a date of invention before exploring the feasibility of their 
ideas and disclosing their inventions to major corporations, prototype 
builders, investors, patent attorneys, patent depository library staff, 
prospective partners, or small business development companies to guard 
against misappropriation of their inventions. The vast majority of 
these inventions may simply be put aside if the inventors are 
unsuccessful at attracting interest and are not pursued until they do 
get support or interest in their inventions. The PTO also perceives 
that inventors file a Disclosure Document on each incremental 
modification of a basic invention. This may result in a dozen or more 
Disclosure Documents being filed before a patent application is filed, 
if ever, on the ``final'' version of the invention.
    In 1995, Pub. L. 103-465 amended title 35, U.S.C., by providing for 
the filing of a provisional application for patent. A provisional 
application must contain a specification in compliance with 35 U.S.C. 
112, para. 1, and drawings, if drawings are necessary to understand the 
invention described in the specification. A provisional application 
must name the inventors and be accompanied by a separate cover sheet 
identifying the papers as a provisional application. The basic filing 
fee for a provisional application by a small entity is $75 (37 CFR 
1.16(k)). The filing fee and the names of the inventors may be supplied 
after the provisional application is filed, but a surcharge is 
required. A provisional application does not require a claim in 
compliance with 35 U.S.C. 112, para. 2, or an inventor's oath under 35 
U.S.C. 115. While a provisional application is automatically abandoned 
twelve months after its filing date, the file of an abandoned 
provisional application is retained by the PTO for at least twenty 
years, or longer if it is referenced in a patent. A provisional 
application is considered a constructive reduction to practice of an 
invention as of the filing date accorded the application, if it 
describes the invention in sufficient detail to enable a person of 
ordinary skill in the art to make and use the invention and discloses 
the best mode known by the inventor for carrying out the invention. In 
other words, except for adding the best mode requirement, the 
disclosure requirements for a provisional application are identical to 
the disclosure requirements for a Disclosure Document and provide users 
with a filing date without starting the patent term period. Thus, 
almost any paper filed today as a proper Disclosure Document can now be 
filed as a provisional application with the necessary cover sheet.
    A provisional application is, however, more valuable to an inventor 
than a Disclosure Document. A provisional application, just like a 
nonprovisional application, establishes a constructive reduction to 
practice date for any invention disclosed therein in the manner 
required by 35 U.S.C. 112, para. 1, and can be used under the Paris 
Convention to establish a priority date for foreign filing. On the 
other hand, a

[[Page 53528]]

Disclosure Document may only be used as evidence of a date of 
conception of an invention under 35 U.S.C. 104. A Disclosure Document 
is not a patent application and the filing of a Disclosure Document 
does not establish a constructive reduction to practice date for an 
invention described in the Document. As a result, in order to use a 
Disclosure Document to establish prior invention under 35 U.S.C. 102(g) 
or under 37 CFR 1.131, an inventor may rely on the Disclosure Document 
to demonstrate that he or she conceived of the invention first, but the 
inventor must then demonstrate that he or she was reasonably diligent 
from a date just prior to: (1) the date of conception by the other 
party in an interference proceeding; or (2) the effective date of a 
reference being used by the PTO to reject one or more claims of an 
application until the inventor's actual or constructive reduction to 
practice. A provisional application, however, may be used to establish 
prior invention all by itself (without any need to demonstrate 
diligence) simply by its filing date being before the earliest actual 
or constructive reduction to practice date of the other party or the 
effective date of the reference.
    Under 35 U.S.C. 102(b), any public use or sale of an invention in 
the U.S. or description of an invention in a patent or a printed 
publication anywhere in the world more than one year prior to the 
filing of a patent application on that invention will bar the grant of 
a patent. In addition, many foreign countries have what is known as an 
``absolute novelty'' requirement which means that a public disclosure 
of an invention anywhere in the world prior to the filing date of an 
application for patent will act as a bar to the granting of any patent 
directed to the invention disclosed. Since a Disclosure Document is not 
a patent application, it does not help an inventor avoid the forfeiture 
of U.S. or foreign patent rights. For example, an inventor offers to 
sell his invention in the U.S. in March 1996. In April of 1996, the 
inventor files a Disclosure Document. In April of 1997, the inventor 
files a nonprovisional application referring to the Disclosure 
Document. Because the inventor did not file either a provisional or a 
nonprovisional application within twelve months of the first offer to 
sell in the U.S., the inventor has forfeited all U.S. patent rights. On 
the other hand, if the inventor files a provisional application in 
April of 1996 instead of a Disclosure Document, the offer to sell in 
March of 1996 would not be a bar under 35 U.S.C. 102(b) to any 
invention claimed in the nonprovisional application filed in April 1996 
which is disclosed in the provisional application in the manner 
required by 35 U.S.C. 112, para. 1. Thus, a provisional application 
protects inventors from losing patent rights whereas a Disclosure 
Document does not.
    Based on a sampling of Disclosure Documents filed in 1997, 
approximately 56% were filed by inventors with the assistance of an 
invention promotion firm. A recent Federal Trade Commission (FTC) 
consumer alert entitled ``So You've Got a Great Idea? Heads Up: 
Invention Promotion Firms May Promise More Than They Can Deliver'' 
(July 1997), warned that some invention promotion firms were using the 
Disclosure Document Program to mislead independent inventors into 
believing that a Disclosure Document affords some form of patent 
protection. In requesting a temporary restraining order against a 
number of invention development companies, the FTC indicated that:

    In a large number of cases, the [defendant invention development 
company] promises that it will ``register'' the inventor's idea with 
the U.S. Patent Office's Disclosure Document Program, and that doing 
so will ``protect'' the idea for 2 years. In fact, filing with this 
program provides no patent protection whatsoever. In some instances, 
customers are promised a patent application, but no such application 
is every [sic., ever] prepared or filed.

    See Plaintiff's Mem. In Support of Application for a T.R.O. at 13-
14, FTC v. International Product Design, Inc., Civ. Act. No. 97-1114-A 
(E.D. Va., filed July 14, 1997) (footnotes omitted).
    Patent Business Goal (4) is to exceed our customer's service 
expectations. The Disclosure Document Program is being evaluated 
because it has been brought to the PTO's attention that this program 
has been the subject of numerous abuses and complaints, and therefore 
may be detrimental to the interests of a vast majority of the PTO's 
customers. This evaluation of the Disclosure Document Program is in 
support of that goal.
    In view of the very small number of Disclosure Documents requested 
to be retained each year (less than one-tenth of one percent) versus 
the twenty-five to thirty-five thousand Disclosure Documents filed each 
year, the minimum benefits provided to an inventor by a Disclosure 
Document, the misuse of the Disclosure Document Program by some 
invention promotion firms and the better benefits and protection 
afforded by the provisional application option (which was not available 
when the Disclosure Document Program was initiated in 1969), the PTO is 
soliciting the opinion of its customers on whether the Disclosure 
Document Program should be continued in its present form, terminated, 
or substantially revised to serve their needs better.

Replies to the Following Questions are Solicited

    1. As substantially fewer than one percent of the Disclosure 
Documents that are filed each year are requested by inventors to be 
retained by the PTO and the PTO does not know of any substantial 
reliance being had on Disclosure Documents, is there any factual 
evidence that Disclosure Documents do provide meaningful benefits and 
value to those who file Disclosure Documents? If so, please supply a 
copy of such evidence with your comments.
    2. Does the Disclosure Document Program create a worthwhile sense 
of security? If so, why?
    3. Do you know of a Disclosure Document that has actually been 
relied on in a nonprovisional application to successfully establish a 
conception date in an interference proceeding or in a 37 CFR 1.131 
affidavit or declaration? If so, please identify the Disclosure 
Document number and whether it was successfully relied on in an 
interference proceeding or in a 37 CFR 1.131 affidavit or declaration.
    4. Is the Disclosure Document Program addressing any need that is 
not being addressed by the provisional application practice? If so, 
please identify such needs.
    5. In what ways can the PTO better address the needs of those who 
use the Disclosure Document Program that are not being addressed by 
provisional applications without the risks associated with the existing 
Disclosure Document Program? If so, please elaborate.
    6. Do you know of any instance in which an invention development 
firm misled an inventor into believing that a Disclosure Document 
provides more benefit (patent protection) than it actually does? If so, 
please indicate what, if any, harm this caused?
21. Creating a PTO review service for applicant-created forms
    Summary: The PTO is considering establishing a new service, where 
the PTO would review, for a fee, a form prepared by a member of the 
public that is intended to be used for future correspondence to the 
PTO.
    Specifies of Change Being Considered: A form intended to be used 
for future correspondence with the PTO could be submitted to the PTO 
for review. The

[[Page 53529]]

PTO would charge a fee (roughly estimated at approximately $200) for 
each form up to four pages long for this review service. After the 
review is completed, the PTO would send the submitter a written report, 
including comments and suggestions, if any, even though the PTO will 
not formally ``approve'' any form. The form and all related documents 
submitted for the review would also be returned to the submitter. If a 
(reviewed) form is modified in view of a PTO written report, comments 
and/or suggestion, the revised form could be resubmitted to the PTO for 
a follow up review for an additional charge (roughly estimated at 
approximately $50). After a form has been reviewed and revised, as may 
be needed, to comply with the PTO's written report, it will be 
acceptable for the form to indicate if it is a substitute for a PTO 
form and/or that it has been ``reviewed by the PTO.''
    Background: Currently, the PTO prepares and makes available forms 
(e.g., application transmittal forms) for use by our customers when 
submitting correspondence to the PTO. The PTO forms are formatted to 
induce one to supply specific information. There is no requirement, 
however, that such PTO forms be used. Frequently members of the public, 
in particular, law firms and corporations, modify the PTO forms to 
include matter specific to their law firm or corporation, or find it 
convenient to create forms of a different nature or layout specific to 
their needs. A PTO form properly modified by a member of the public 
should induce one to supply at least the same information as the PTO 
form that was modified.
    In the future, the submissions to the PTO would be either by 
specially formatted paper templates or by electronic transmission. 
However, until such efficiencies become the norm, many of our customers 
will be relying on pre-printed forms, created either by the PTO or by 
our customers themselves. While fully supporting the move to 
standardized formats and electronic submissions, it is important to 
today's customers to have complete and accurate forms for their daily 
work.
    New Service: PTO Review of Applicant's forms: To better serve our 
customer's needs, the PTO is considering providing a new service where, 
upon request and payment of a non-refundable fee, the PTO will review 
blank forms prepared by a member of the public that are intended to be 
used for future correspondence to the PTO. Non-English language forms 
will not be reviewed. The PTO will not formally ``approve'' any forms 
that are submitted. The rationale for not formally approving a form 
that is submitted for review by the PTO is the following: (1) a form 
designed/reviewed for a specific purpose may actually be used for a 
different purpose, and the PTO cannot control how a form may be used 
after it is reviewed (e.g., filing a patent application under 37 CFR 
1.53(b) using a Continued Prosecution Application (CPA) Request 
Transmittal form); (2) forms that have been reviewed may become out-of-
date and be rendered obsolete due to subsequent changes in the patent 
statute (35 U.S.C.), rules of practice (37 CFR) and office policy and 
procedure as set forth in the MPEP; (3) any approval of a form would 
tend to discourage improvements in the form by the customer; and (4) 
non-approval of any form avoids the appearance that the PTO endorses a 
person, a product (e.g., a particular form) or supports a business.
    The PTO would primarily review the submitted forms to note any non-
compliance (e.g., errors, problems, defects, inaccuracies) with the 
patent statute (35 U.S.C.), rules of practice (37 CFR) and established 
office policy and procedure as set forth in the MPEP, and give a 
written report which would also include comments or suggestions. The 
PTO may also give advice as to matters which are related to the 
usefulness of the forms. Patent Business Goal (1) is to reduce PTO 
processing time to twelve months or less for all inventions. This new 
service would be in support of that goal since a properly prepared and 
used form by a member of the public would reduce the chance for error 
and the need for correction, and result in reduced PTO processing time. 
Patent Business Goal (4) is to exceed our customers' quality 
expectations, through the competencies and empowerment of our 
employees. The proactive role the Office will take in this area would 
be in support of that goal since this service will help our customers 
create better forms.
    In general, modified versions of PTO forms associated with PCT 
practice (e.g., ``REQUEST FOR FILING A CONTINUATION OR DIVISIONAL 
APPLICATION OF AN INTERNATIONAL APPLICATION'' (PTO/SB/13/PCT) and 
``PETITION FOR REVIVAL OF AN INTERNATIONAL APPLICATION FOR PATENT 
DESIGNATING THE U.S. ABANDONED UNINTENTIONALLY UNDER 37 CFR 1.137(b)'' 
(PTO/SB/64/PCT)) would be subject to review. However, user-generated 
versions of the PCT Request (PCT/RO/101) and the Demand (PCT/IPEA/401) 
would be excluded from this new review service at this time because 
they are subject to further review, study and consultation with the 
International Bureau (IB), as the IB has control over these forms.
    The PTO is considering charging a flat fee (roughly $200) to 
recover the cost of the review of and report on any one form containing 
up to a limit of four pages, with a further charge (again roughly $200) 
for each additional four pages or portion thereof. The fee is based 
upon an in-office, activity-based cost analysis. All fees submitted for 
this new service would be non-refundable. Only complete forms, not 
parts of forms, would be reviewed. Therefore, all pages of a multiple 
page form would need to be submitted together. Forms for review would 
have to be submitted to the PTO with the required fee, as a separate 
wholly contained mailing and not with other papers for another purpose 
to keep handling and paper processing time to a minimum. However, 
multiple forms could be submitted at the same time, with the cost for 
each form being as set forth above. Anyone who submits a blank form 
(and the requisite fee) for review would also be encouraged to submit a 
completed form and a cover letter. The cover letter would provide the 
PTO with clear guidance as to what was intended to be reviewed. The 
completed form would aid the PTO in the review process as it would 
provide the PTO with guidance as to how the form was intended to be 
completed and used. Resubmission of a (reviewed) form, which was 
modified in view of the PTO written report, and comments and/or 
suggestions made by the PTO in their review of the form, for a second 
(follow up) review would require an additional charge (again roughly 
$50). The resubmission would need to include a resubmission of all 
documents (copies are acceptable) submitted for the review, and a 
submission of the previously reviewed form containing any PTO comments 
or suggestions thereon and any review papers (review sheet) prepared by 
the PTO. See discussion on the matter below. Patent Business Goal (5) 
is to assess fees commensurate with resource utilization and customer 
efficiency. The charging of a fee for this new service would be in 
support of that goal since the fee charged would recover both the cost 
of the review and the preparation of the report.
    Any form submitted to the PTO for review would need to be formatted 
as it is intended to be submitted to the PTO; and must: (1) be either 
21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 
11 inches, commonly referred to as ``letter size''), (2) have a left 
side margin of at least 2.5 cm. (1 inch), and a top, right, and bottom

[[Page 53530]]

margin of at least 2.0 cm. (3/4 inch), and (3) have writing on only one 
side. See 37 CFR 1.52.
    Forms intended to be a substitute for a PTO form would be permitted 
to contain an indication thereon that the form is a substitute for a 
particular PTO form. To properly identify the particular PTO form, such 
indication should include, among other things, the form's actual PTO 
form number and the PTO's version date (which may be located in the 
upper right hand corner of the form), and the PTO form's actual title 
(e.g., ``SUBSTITUTE for PTO/SB/05 (4/98), UTILITY APPLICATION 
TRANSMITTAL,'' with the words ``SUBSTITUTE for''being separated from 
(on a different line from) the rest of the header to particularly 
denote that the form is a substitute for a PTO form.). The indication 
that the form is a substitute for a PTO form should be in a header, in 
the upper right hand corner of the form. See Example 1 below. Forms 
submitted for review are encouraged to include a header indicating that 
the form is a substitute for a particular PTO form. It should be noted 
that the other verbiage contained in the header of the PTO forms should 
not be reproduced on any PTO form that would be modified.

    Example 1: A sample first header to be placed in the upper right 
hand corner of the form containing an indication that the form is a 
substitute for a PTO form. Note that the words ``SUBSTITUTE for'' 
are on a different line from the rest of the header to specifically 
denote that the form is a substitute for a PTO form.

SUBSTITUTE for PTO/SB/05 (4/98), UTILITY APPLICATION TRANSMITTAL

    The PTO will review each submitted form and prepare a report, 
which will include a review sheet, and then return the original form 
with the completed review sheet to the submitter of the form. In the 
PTO review report, the PTO will identify, among other things, items 
or changes that are deemed to be critical. Also, the reviewed form 
itself may be marked up with comments by the PTO. The PTO will not 
retain a copy of any reviewed form. The PTO will, however, keep a 
record of the reviewing process. If the submitter of a form for 
review has a question about the review of the form after the review 
process has been completed and the reviewed form is no longer in the 
possession of the PTO, a submission of, among other things, (a copy 
of) of the reviewed form containing any PTO comments or suggestions 
thereon, all documents (copies are acceptable) submitted for the 
review, and any review papers (review sheet) prepared by the PTO may 
be necessary. Any form that has been reviewed by the PTO and has 
been modified to include, among other things, the items or changes 
that are deemed to be critical by the PTO, may include an indication 
on the form that the form has been reviewed by the PTO, provided 
that the date of the review is also included (e.g., ``REVIEWED by 
PTO on XX/XX/XX'' (Date)). The indication that the form has been 
reviewed by the PTO should be in a header, in the upper left hand 
corner of the form. See Example 2 below. Forms submitted for review 
are encouraged to include a header indicating that the form has been 
reviewed with the date left blank. If the items or changes noted in 
the review report as being critical are not adopted, no indication 
may be placed on the form that the form has been reviewed. Since the 
PTO will not formally ``approve'' any forms that are submitted, the 
use of the word ``APPROVED'' on any form that has been reviewed 
would be misleading and must not be used.
    Example 2: A sample second header to be placed in the upper left 
hand of the form containing an indication that the form has been 
reviewed.

Reviewed by PTO on XX/XX/XX

    Note: When the first and second headers contained in Examples 1 
and 2 are used together, it is recommended that the left hand header 
in Example 2 (``Reviewed by PTO on XX/XX/XX'') be on the same line 
with, but spaced from the first line of the right hand header in 
Example 1 (``SUBSTITUTE for''). See Example 3 below.
    Example 3: A single header combining the first and second 
headers set forth in Examples 1 and 2.

Reviewed by PTO on XX/XX/XX
SUBSTITUTE for PTO/SB/05 (4/98), UTILITY APPLICATION TRANSMITTAL

    Any PTO form that has been modified by a member of the public to 
be a substitute for a PTO form, but has not been submitted for 
review, would be permitted to contain an indication thereon, as set 
forth above, that the form is a substitute for a particular PTO 
form. Since such modified PTO form has not been reviewed, no 
indication may be placed on the form that the form has been 
reviewed. See Example 1 above.
    Any pending form submitted for review is not subject to the 
confidentiality requirements of 35 U.S.C. 122, and may be subject to 
a request under the Freedom of Information Act (5 U.S.C. 552).
    It should be recognized that the ultimate responsibility for 
complying with statutory and regulatory requirements lies with an 
applicant(s) and their attorney, whether they utilize a form 
prepared by the PTO or some other form which may or may not have 
been reviewed by the PTO.
    It is predictable that the largest number of requests for a 
review of forms would come at a time when there has been a change in 
the PTO rules and/or procedures. The turn-around time for review of 
any form will be based on the workload of the area of the PTO 
selected to perform the review. Anyone desiring a form to be 
reviewed should allow ample time for PTO review. No assurances can 
be given that any form will be reviewed in a particular amount of 
time. Further, subsequent rule changes may render unusable a form 
that was previously used and/or reviewed by the PTO.
    To jump-start this new service, and to avoid problems with 
electronic incompatibility that can take a lot of time to resolve, 
the PTO will only review forms that have been properly submitted in 
either paper form or by facsimile transmission. In the future, the 
PTO will consider expanding the service to include submission of the 
forms in an electronic format.

Current PTO Forms Availability

    PTO forms are available on the PTO Home Page, and are available 
either individually or in a single zip-compressed file from the PTO ftp 
server at ftp://ftp.uspto.gov/pub/forms/. Individual forms for patent 
and trademark submissions can also be requested from 800-PTO-8199 or 
703-308-HELP. A specimen book of Patent Forms can be purchased for $25 
from the Office of Electronic Information Products, telephone number 
703-306-2600.

Conclusion

    This is a new service that the PTO is considering and would involve 
significant start-up costs. Therefore, absent positive feedback on the 
matter, the PTO does not intend to implement this new service.

    Dated: September 28, 1998.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 98-26429 Filed 10-2-98; 8:45 am]
BILLING CODE 3510-16-P