[Federal Register Volume 64, Number 191 (Monday, October 4, 1999)]
[Proposed Rules]
[Pages 53772-53845]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-24922]
[[Page 53771]]
_______________________________________________________________________
Part II
Department of Commerce
_______________________________________________________________________
Patent and Trademark Office
_______________________________________________________________________
37 CFR Parts 1, 3, 5, and 10
Changes to Implement the Patent Business Goals; Proposed Rule
Federal Register / Vol. 64, No. 191 / Monday, October 4, 1999 /
Proposed Rules
[[Page 53772]]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 3, 5, and 10
[Docket No.: 980826226-9185-02]
RIN 0651-AA98
Changes To Implement the Patent Business Goals
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The Patent and Trademark Office (Office) has established
business goals for the organizations reporting to the Assistant
Commissioner for Patents (Patent Business Goals). 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 Office's business
processes. In furtherance of the Patent Business Goals, the Office is
proposing changes to the rules of practice to eliminate unnecessary
formal requirements, streamline the patent application process, and
simplify and clarify their provisions.
DATES: Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before December 3, 1999. While comments
may be submitted after this date, the Office cannot ensure that
consideration will be given to such comments. No public hearing will be
held.
ADDRESSES: Comments should be sent by electronic 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 Room 3-C23 of Crystal Plaza 4,
2201 South Clark Place, 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: 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.
SUPPLEMENTARY INFORMATION: The organizations reporting to the Assistant
Commissioner for Patents have established five business goals (Patent
Business Goals) to meet the Office's Year 2000 commitments. The Patent
Business Goals 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 Office 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.
This rulemaking proposes changes to the regulations to support the
Patent Business Goals. A properly reengineered or reinvented system
eliminates the redundant or unnecessary steps that slow down processing
and frustrate customers. In furtherance of the Patent Business Goals,
these proposed changes to the rules of practice take a fresh view of
the business end of issuing patents, and continue a process of
simplification. Formal requirements of rules that are no longer useful
would be eliminated. When the intent of an applicant is understood, the
Office would simply go forward with the processing. The essentials are
maintained, while formalities are greatly reduced. The object is to
focus on the substance of examination and decrease the time that an
application for patent is sidelined with unnecessary procedural issues.
Additionally, the Office desires to continue to make its rules more
understandable, such as by using plain language instead of legalese.
The Office is seeking efficiency by improving the clarity of the
wording of the regulations so that applicants and Office employees
understand unequivocally what is required at each stage of the
prosecution and can get it right on the first try. The Office welcomes
comments and suggestions on this effort.
In streamlining this process, the Office will be able to issue a
patent in a shorter time by eliminating formal requirements that must
be performed by the applicant, his or her representatives and the
Office itself. Applicants will benefit from a reduced overall cost to
them for receiving patent protection and from a faster receipt of their
patents.
Finally, these proposed changes are intended to improve the
Office'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 patent
legislation, or implementation of new automation capabilities), the
Office would have to reconsider its business processes and make such
further changes to the rules of practice as are necessary.
Advance Notice of Proposed Rulemaking
The Office published an advance notice of proposed rulemaking
(Advance Notice) presenting a number of changes to patent practice and
procedure under consideration to implement the Patent Business Goals.
See Changes to Implement the Patent Business Goals; Advance Notice of
Proposed Rulemaking, 63 FR 53497 (October 5, 1998), 1215 Off. Gaz. Pat.
Office 87 (October 27, 1998). The Advance Notice set forth twenty-one
topics on which the Office specifically requested public input:
Topic (1) Simplifying requests for small entity status;
Topic (2) Requiring separate surcharges and supplying filing
receipts;
Topic (3) Permitting delayed submission of an oath or declaration,
and changing time period for submission of the basic filing fee and
English translation;
Topic (4) Limiting the number of claims in an application;
Topic (5) Harmonizing standards for patent drawings;
Topic (6) Printing patents in color;
Topic (7) Reducing time for filing corrected or formal drawings;
Topic (8) Permitting electronic submission of voluminous material;
Topic (9) Imposing limits/requirements on information disclosure
statement submissions;
Topic (10) Refusing information disclosure statement consideration
under certain circumstances;
Topic (11) Providing no cause suspension of action;
Topic (12) Requiring a handling fee for preliminary amendments and
supplemental replies;
[[Page 53773]]
Topic (13) Changing amendment practice to replacement by
paragraphs/claims;
Topic (14) Providing for presumptive elections;
Topic (15) Creating a rocket docket for design applications;
Topic (16) Requiring identification of broadening in a reissue
application;
Topic (17) Changing multiple reissue application treatment;
Topic (18) Creating alternative review procedures for applications
under appeal;
Topic (19) Eliminating preauthorization of payment of the issue
fee;
Topic (20) Reevaluating the Disclosure Document Program; and
Topic (21) Creating a Patent and Trademark Office review service
for applicant-created forms.
See Changes to Implement the Patent Business Goals, 63 FR at 53499,
1215 Off. Gaz. Pat. Office at 89.
Changes Set Forth in the Advance Notice Included in This Notice of
Proposed Rulemaking (Notice)
This notice proposes changes to the rules of practice based upon
the following topics in the Advance Notice:
(1) Simplifying request for small entity status (Topic 1--
Secs. 1.9, 1.27, and 1.28);
(2) Harmonizing standards for patent drawings (Topic 5--Sec. 1.84);
(3) Printing patents in color (Topic 6--Sec. 1.84);
(4) Reducing time for filing corrected or formal drawings (Topic
7--Secs. 1.85 and 1.136);
(5) Permitting electronic submission of voluminous material (Topic
8--Secs. 1.96, 1.821, 1.823, and 1.825);
(6) Imposing limits/requirements on information disclosure
statement submissions (Topic 9--Secs. 1.97 and 1.98);
(7) Requiring a handling fee for preliminary amendments and
supplemental replies (Topic 12--Secs. 1.111 and 1.115);
(8) Changing amendment practice to replacement by paragraphs/claims
(Topic 13--Secs. 1.52 and 1.121);
(9) Creating a rocket docket for design applications (Topic 15--
Sec. 1.155);
(10) Changing multiple reissue application treatment (Topic 17--
Sec. 1.177); and
(11) Eliminating preauthorization of payment of the issue fee
(Topic 19--Secs. 1.25 and 1.311).
The Office has taken into account the comments submitted in reply
to the Advance Notice in arriving at the specific changes to the rules
of practice being proposed in this notice. These comments are addressed
with the relevant proposed rule change in the section-by-section
discussion portion of this notice.
This notice also includes a number of proposed changes to the rules
of practice that are not based upon proposals set forth in the Advance
Notice. This notice proposes changes to the following sections of title
37 of the Code of Federal Regulations: 1.4, 1.6, 1.9, 1.12, 1.14, 1.17,
1.19, 1.22, 1.25, 1.26, 1.27, 1.28, 1.33, 1.41, 1.47, 1.48, 1.51, 1.52,
1.53, 1.55, 1.56, 1.59, 1.63, 1.64, 1.67, 1.72, 1.77, 1.78, 1.84, 1.85,
1.91, 1.96, 1.97, 1.98, 1.102, 1.103, 1.111, 1.112, 1.121, 1.125,
1.131, 1.132, 1.133, 1.136, 1.137, 1.138, 1.152, 1.154, 1.155, 1.163,
1.173, 1.176, 1.177, 1.178, 1.193, 1.303, 1.311, 1.312, 1.313, 1.314,
1.322, 1.323, 1.324, 1.366, 1.446, 1.497, 1.510, 1.530, 1.550, 1.666,
1.720, 1.730, 1.740, 1.741, 1.780, 1.809, 1.821, 1.823, 1.825, 3.27,
3.71, 3.73, 3.81, 5.1, 5.2, 5.12, and 10.23. Additionally, this notice
proposes to amend title 37 of the Code of Federal Regulations by
removing Secs. 1.44 and 1.174, and adding Secs. 1.76, 1.105, and 1.115.
Changes Set Forth in the Advance Notice That Are NOT Included in
This Notice
This notice does not include proposed changes to the rules of
practice based upon the following topics in the Advance Notice:
(1) Requiring separate surcharges and supplying filing receipts
(Topic 2);
(2) Permitting delayed submission of an oath or declaration, and
changing the time period for submission of the basic filing fee and
English translation (Topic 3);
(3) Limiting the number of claims in an application (Topic 4);
(4) Refusing information disclosure statement consideration under
certain circumstances (Topic 10);
(5) Providing no cause suspension of action (Topic 11);
(6) Providing for presumptive elections (Topic 14);
(7) Requiring identification of broadening in a reissue application
(Topic 16);
(8) Creating alternative review procedures for applications under
appeal (Topic 18);
(9) Reevaluating the Disclosure Document Program (Topic 20); and
(10) Creating a Patent and Trademark Office review service for
applicant-created forms (Topic 21).
Comments received in response to the Advance Notice on these topics
are addressed below.
Requiring Separate Surcharges and Supplying Filing Receipts (Topic 2)
The Office indicated that it was considering charging separate
surcharges in a nonprovisional application under 35 U.S.C. 111(a) for
(a) the delayed submission of an oath or declaration, and (b) the
delayed submission of the basic filing fee. That is, a single surcharge
(currently $130) would be required if one of (a) the oath or
declaration or (b) the basic filing fee were not present on filing. Two
surcharges (totaling $260) would be required if both the oath or
declaration and the basic filing fee were not present on filing.
Therefore, the absence (on filing) of the oath or declaration or the
basic filing fee would have necessitated a separate surcharge. The
Office also indicated that it was considering issuing another filing
receipt, without charge, to correct any errors or to update filing
information, as needed.
While a few comments supported the proposal (indicating that the
additional services were worth the additional fees), a majority of
comments opposed charging separate surcharges. These included arguments
that: (1) the proposal is simply a fee increase with no advantage to
applicants; and (2) a separate surcharge should be required only if the
oath or declaration and the basic filing fee are submitted separately
because there is no additional cost to the Office to process both the
oath or declaration and the basic filing fee in the same submission.
Response: This notice does not propose changing Sec. 1.53 to charge
separate surcharges in a nonprovisional application under 35 U.S.C.
111(a) for the delayed submission of an oath or declaration, and for
the delayed submission of the basic filing fee.
Permitting Delayed Submission of an Oath or Declaration, and Changing
the Time Period for Submission of the Basic Filing Fee and English
Translation (Topic 3)
The Office indicated that it was considering: (1) Amending
Sec. 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); and (2) amending Secs. 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 Sec. 1.136) from the filing date of the application.
The Office was specifically considering amending Sec. 1.53 to provide
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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 Sec. 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 Sec. 1.63(b). The Office
was also specifically considering amending Secs. 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 Sec. 1.136) from the filing date of the application.
Applicants would not be given a notice (e.g., a ``Notice To File
Missing Parts of Application'' (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. The filing receipt,
however, would indicate the amount of filing fee received. Further, the
filing receipt would remind applicants that the basic filing fee must
be submitted within one month (plus any extensions under Sec. 1.136)
from the filing date of the application.
While some comments supported this proposed change, a majority of
comments opposed permitting delayed submission of an oath or
declaration; and changing the time period for submission of the basic
filing fee and English translation.
The reasons given for opposition to the proposed change to permit
delayed submission of an oath or declaration included arguments that:
(1) The proposed inventorship inquiry and notification requirements for
practitioners who submitted an application without an executed oath or
declaration would be too onerous; (2) an application should not be
examined until inventorship is settled and the inventors have
acknowledged their duty of disclosure; (3) the delayed submission of an
oath or declaration would cause confusion as to ownership of the
application, which would cause confusion as to who is authorized to
appoint a representative in the application; (4) the delayed submission
of an oath or declaration would increase the difficulty in acquiring
the inventor's signatures on an oath or declaration, which would lead
to an increase in the number of petitions under Sec. 1.47, as well as
an increase in the number of oaths or declarations signed by the legal
representatives of deceased inventors; and (5) the delayed submission
of an oath or declaration would increase the number of certified copies
of an application not having a copy of the executed oath or declaration
(considered undesirable). Some comments suggested that the Office seek
legislation to eliminate the oath requirement of 35 U.S.C. 115.
The reasons given for opposition to the proposed change to the time
period for submission of the basic filing fee and English translation
included arguments that: (1) A one-month period for submitting the
basic filing fee or English translation is too short because applicants
may not know the assigned application number within one month of the
application filing date (i.e., this period should be two or three
months); (2) the period for submitting the basic filing fee or English
translation should be tied to the mail date of the Filing Receipt; and
(3) the public relies upon the current Notice to File Missing Parts of
Application practice to inform applicants as to whether the filing fee
and the oath or declaration has been received by the Office (i.e.,
verify whether the Office has received the basic filing fee and oath or
declaration), and to inform applicants of the period for reply for
supplying the missing basic filing fee and/or oath or declaration.
Response: This notice does not propose changing Secs. 1.52 and 1.53
to provide that: (1) 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); or (2) the basic filing fee and an English translation (if
necessary) for a nonprovisional application must be submitted within
one month (plus any extensions under Sec. 1.136) from the filing date
of the application.
Limiting the Number of Claims in an Application (Topic 4)
The Office indicated in the Advance Notice that it was considering
a change to Sec. 1.75 to limit the number of total and independent
claims that will be examined (at one time) in an application. The
Office was specifically 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 Office would withdraw the excess claims from consideration,
and require the applicant to cancel the excess claims.
While the comments included sporadic support for this proposed
change, the vast majority of comments included strong opposition to
placing limits on the number of claims in an application. The reasons
given for opposition to the proposed change included arguments that:
(1) Decisions by the Court of Appeals for the Federal Circuit (Federal
Circuit) leave such uncertainty as to how claims will be interpreted
that additional claims are necessary to adequately protect the
invention; (2) the applicant (and not the Office) should be permitted
to decide how many claims are necessary to adequately protect the
invention; (3) there are situations in which an applicant justifiably
needs more than six independent and forty total claims to adequately
protect an invention; (4) the proposed change exceeds the
Commissioner's rule making authority; (5) the change will simply result
in more continuing applications and is just a fee raising scheme; (6)
the Office currently abuses restriction practice and this change will
further that abuse; and (7) since only five percent of all applicants
exceed the proposed claim ceiling, there is no problem. Several
comments which opposed the proposed change offered the following
alternatives: (1) Charge higher fees (or a surcharge) for applications
containing an excessive number of claims; (2) charge fees for an
application based upon what it costs (e.g., number of claims, pages of
specification, technology, IDS citations) to examine the application;
and (3) credit examiners based upon the number of claims in the
application. Several comments which indicated that the proposed change
would be acceptable, placed the following conditions on that
indication: (1) That a multiple dependent claim be treated as a single
claim for counting against the cap; (2) that a multiple dependent claim
be permitted to depend upon a multiple dependent claim; (3) that a
Markush claim be treated as a single claim for counting
[[Page 53775]]
against the cap; (4) that any additional applications are taken up by
the same examiner in the same time frame; (5) that allowed dependent
claims rewritten in independent form do not count against the
independent claim limit; (6) that the Office permit rejoinder of
dependent claims upon allowance; and (7) that higher claim limits are
used.
Response: This notice does not propose changing Sec. 1.75 to place
a limit on the number of claims that will be examined in a single
application.
Refusing Information Disclosure Statement Consideration Under Certain
Circumstances (Topic 10)
The Office indicated in the Advance Notice that it was considering
revising Sec. 1.98 to reserve the Office's authority to not consider
submissions of an Information Disclosure Statement (IDS) in unduly
burdensome circumstances, even where all the stated requirements of
Sec. 1.98 are met. The Office was specifically considering an amendment
to Sec. 1.98 to permit the Office to refuse consideration of an unduly
burdensome IDS submission (e.g., extremely large documents and
compendiums), and give the applicant an opportunity to modify the
submission to eliminate the burdensome aspect of the IDS.
While the proposal received support from a significant minority of
the comments, the large majority of comments included strong opposition
to the proposal to revise Sec. 1.98. The reasons given for opposition
to the proposed change included arguments that: (1) The term ``unduly
burdensome'' is not defined objectively; thus, decisions as to whether
a submission is too burdensome for consideration will be subjective;
(2) without a clear definition of ``unduly burdensome'' (to provide a
standard), the proposal would not pass the Administrative Procedure Act
tests of scrutiny; (3) the Office will have to expend time and effort
in deciding the petitions and defending, in court, its subjective
decisions not to consider ``unduly burdensome'' IDSs (thus, the
proposal will cost the Office time in the long run); (4) the proposal
gives the examiner unlimited ability to not consider art submitted due
to the ambiguous standard for refusal of an IDS submission coupled with
the examiner's discretion to advance the status of the application to a
point where the IDS would not be timely even though it is corrected;
(5) the Office's refusal to examine unduly burdensome IDS submissions
despite compliance with the rules (other than the burdensome aspect)
would impose a huge financial and time burden upon applicants to fix
what the examiner deems as unduly burdensome; (6) imposing this new
financial and time burden would be contrary to the stated purpose of
the Office to expedite prosecution and to relieve the burdens on the
examination process; (7) burdensome IDS situations exist, and the
Office should learn to deal with them as a service to its customers and
in order to meet its mission of issuing valid patents (the Office
cannot realistically ignore situations where the IDS documents cited
are complex or lengthy, and nothing can be done about the complexity or
length by applicant); (8) the burdensome IDS problem is not frequent
and the rare unduly burdensome IDS submissions should be addressed on a
case-by-case basis (thus, no rule change is needed); (9) no data has
been presented to show the problem is wide-spread, and more facts are
needed to show the extent and nature of the unduly burdensome IDS
problem; (10) citations should not be discarded from the record where
the unduly burdensome IDS has not been corrected since an original and
only copy of the citation (which is submitted so the examiner can more
fully appreciate the citation) may be very expensive or even impossible
to replace; (11) reducing the size of a citation can make it less
valuable, the submitted ``relevant portions'' (the partial citation)
may be taken out-of-context of the entire citation, and the excerpt
containing the relevant portion would not provide additional assistance
to the examiner as to background, terminology, and alternative subject
matter which may bear on the examination.
Response: This notice does not propose changing Sec. 1.98 to
reserve the Office's authority to not consider submissions of an IDS in
unduly burdensome circumstances, even where all the stated requirements
of Sec. 1.98 are met.
Providing No Cause Suspension of Action (Topic 11)
The Office indicated that it was 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, provided that
the applicant waived the confidential status of the application under
35 U.S.C. 122, and agreed to publication of the application. The Office
was specifically considering a procedure under which the applicant may
(prior to the first Office action) request deferred examination for a
period not to exceed three years, provided that: (1) The application is
entitled to a filing date; (2) the filing fee has been paid; (3) any
needed English-language translation of the application has been filed;
and (4) all ``outstanding requirements'' have been satisfied (except
that the oath or declaration need not be submitted if the names of all
of the persons believed to be the inventors are identified).
The comments included support and opposition in roughly equal
measure to the proposed extended suspension of action procedure. The
reasons given for opposition to the proposal included arguments that:
(1) The ``deferred examination'' of application under an extended
suspension of action and the publication of an application under such
suspension of action would create uncertainty over legal rights; and
(2) the publication provisions of such a suspension of action procedure
amount to an eighteen-month publication system that is not authorized
by 35 U.S.C. 122.
Response: This notice does not propose changing Sec. 1.103 to
provide for extended suspension of action.
Providing for Presumptive Elections (Topic 14)
The Office indicated in the Advance Notice that it was considering
a change to the restriction practice to eliminate the need for a
written restriction requirement and express election in most
restriction situations. The Office was specifically considering a
change to the 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.
While some comments supported this proposed change, a large
majority of comments opposed providing for presumptive elections. The
reasons given for opposition to the proposed change included arguments
that: (1) The commercially important invention may change (or is not
known until) after the application is prepared and filed; (2) the
change will increase cost of preparing an application since the order
of claims must be carefully considered; (3) examiners aggressively
apply restriction, and presumptive elections will increase the number
of restrictions; and (4) the loss of the ability to contest improper
restrictions prior to examination on the merits will lead to less
likelihood of success in persuading
[[Page 53776]]
examiner to withdraw an improper restriction. Several comments which
opposed the proposed change offered as an alternative that the Office
adopt the PCT unity of invention standard in considering restriction.
Several comments which indicated that the proposed change would be
acceptable placed the following conditions on that indication: (1) That
any presumptive election practice not apply to an election of species;
and (2) that an election by presumption apply only if an attempted
telephone restriction requirement is not successful.
Response: This notice does not propose changing Sec. 1.141 et seq.
to provide for a presumptive election. The Office is considering the
impact of applying the ``unity of invention'' standard of the PCT,
rather than the ``independent and distinct'' standard of 35 U.S.C. 121,
in restriction practice. Nevertheless, this change to restriction
practice, without a corresponding change to other patent fees, would
have a negative impact on the Office's ability to obtain the necessary
operating funding.
Requiring Identification of Broadening in a Reissue Application (Topic
16)
The Office indicated in the Advance Notice that it was considering
a change to Sec. 1.173 to require reissue applicants to identify all
occurrences of broadening of the patent claims in a reissue
application. As proposed, reissue applicants would have to point out
all occurrences of broadening in the claims as an aid to examiners who
should consider issues involving broadening relative to the two-year
limit and the recapture doctrine.
While a few comments supported this proposed change, a large
majority of comments strongly opposed the concept. A number of those
commenting were wary of the consequences in court resulting from their
failure to identify all issues of broadening in a reissue application.
Several of the commenters expressed concerns that patent owners could
have their patent claims put at risk in litigation if they
unintentionally failed to identify all occurrences of broadening, which
they feared could be a basis for charging patentees with inequitable
conduct. Some were concerned about saddling applicants with yet another
burden which more properly should be left with the Office and the
examiner. Others felt that any unintentional omission of a broadening
identification could raise problems for the practitioner, which
problems are not offset by any increase in benefits derived by
presenting this information to the Office.
Response: This notice does not propose changing Sec. 1.173 to
require an identification of all occurrences of broadening in reissue
claims. In view of the comments received, the Office will continue to
rely on the examiner to identify any occurrences of broadening during
the examination of the reissue application, and not impose any
additional burden on the reissue applicants. The Office does not wish
to undo the benefits of the recently liberalized reissue oath/
declaration requirements by proposing additional rule changes which may
add burdens as well as possible unforeseen risks.
Creating Alternative Review Procedures for Applications Under Appeal
(Topic 18)
The Office indicated in the Advance Notice that it was considering
alternative review procedures to reduce the number of appeals forwarded
to the Board of Patent Appeals and Interferences. The Office was
specifically considering two alternative review procedures to reduce
the number of appeals having to be forwarded to the Board of Patent
Appeals and Interferences for decision. Both review procedures would
have involved a review that would be available upon request and payment
of a fee by the appellant, and would have involved review by at least
one other Office official. The first review would have occurred after
the filing of a notice of appeal but before the filing of an appeal
brief and have involved 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 have
occurred after the filing of an appeal brief and have involved a review
of all rejections on appeal.
The comments were split between supporting and opposing the appeal
review procedures under consideration. Most comments opposing the
appeal review procedures under consideration supported the concept of
screening the tenability of rejections in applications before they are
forwarded to the Board of Patent Appeals and Interferences, but argued
that: (1) The proposed appeal review amounts to quality control for
which the applicant should not be required to pay (appeal fees should
be raised if appropriate); (2) an appeal review is meaningless (only
advisory) unless the decision is binding on the examiner; (3) the Board
of Patent Appeals and Interferences may give undue deference to a
rejection that has been through an appeal review; and (4) the proposed
appeal review will delay ultimate review by the Board of Patent Appeals
and Interferences. Several comments indicated that the proposed change
would be acceptable, but included the following conditions with that
indication: (1) That the applicant need not pay for either review; (2)
that the reviewer be someone outside the normal chain of review for an
application being forwarded to the Board of Patent Appeals and
Interferences for decision; (3) that the reviewer be someone who has at
least full signatory authority; (4) that the report gives a detailed
explanation of the results of the appeal review (especially if a
position is changed/application allowed); (5) that fees (appeal or
appeal review) be refunded if the review results in the allowance of
the application; (6) that the pre-brief review involve review of the
application by more than one person; (7) that the pre-brief review also
determine whether any prima facie case of unpatentability has been
overcome; and (8) that the appeal process should be revised to model
the German Patent Office.
Response: This notice does not propose changing Sec. 1.191 et seq.
to provide for appeal reviews. The Office intends to increase the use
of the current appeal conference procedures as set forth in section
1208 of the Manual of Patent Examining Procedure (7th ed. 1998)(MPEP).
Reevaluating the Disclosure Document Program (Topic 20):
The Office indicated in the Advance Notice that it was reevaluating
the Disclosure Document Program (DDP) because this program has been the
subject of numerous abuses by so-called ``invention development
companies'' resulting in complaints from individual inventors, and
therefore may be detrimental to the interests of its customers. At the
same time, the distinctly different provisional applications provide a
viable alternate route whereby, for the basic small entity filing fee
of $75 (Sec. 1.16(k)), a provisional application may be filed by a
small entity. 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. Although abandoned after one year, provisional applications
are retained by the Office 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 provisional 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
[[Page 53777]]
discloses the best mode known by the inventor for carrying out the
invention. Unlike the DDP, a provisional application may be used under
the Paris Convention to establish a priority date for foreign filing.
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 a provisional
application provides 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.
For these reasons, the Office posed in the Advance Notice several
questions directed to whether the DDP served a useful function. Only
one comment presented evidence of a single instance where a disclosure
document was used in conjunction with an interference, but this person
was an extensive user of the DDP and cautioned that independent
inventors fail to keep records of the date of their invention. The same
commenter suggested that if the attorney signing the provisional
application could also claim small entity status for his client, this
would diminish the need for the DDP. This appears likely to be adopted
since, contemporaneously with this proposal, under Topic 1 (relating to
the simplification of the request for small entity status), it is being
proposed that applicant or applicant's attorney may assert entitlement
to small entity status. This proposal will make it easier for both
attorneys or applicants to assert small entity status when filing
provisional applications. See discussion of proposed changes to
Secs. 1.9, 1.27 and 1.28 relating to small entity status for further
details.
Six commenters felt that the program should be eliminated because
there is no value to applicants in light of the provisional application
procedure. Some felt that the program creates a dangerous situation in
that applicants may assume they are getting some type of patent
protection or that the statutory bar provision in 35 U.S.C. 102(b) has
been avoided. One commenter characterized the DDP as an ``unwitting
vehicle and accomplice for fraud and delusion of small inventors by so-
called ``invention development companies'', or self-delusions of
independent inventors, who have been mailing thousands of these
`Disclosure Documents' to the PTO * * *.'' Another commenter, however,
postulated that if the only difference between the DDP and provisional
applications was the cost, then the cancellation of the DDP would only
result in the abuse of the provisional patent applications at a higher
cost to unsuspecting inventors.
Four commenters confused the DDP with defensive publications as
their responses wrongfully indicated a belief that the DDP involved
publication of the disclosures. One commenter suggested that before the
program is eliminated that the Office should engage in an educational
program (with a survey) to explain the questionable value of the
program and alternative procedures available to the public. The
commenter further stated that the education program should focus on
those individuals who use the DDP and could include a survey of those
individuals to determine the benefit to the public. A second commenter
supported the concept of contacting the independent inventors. At least
one other comment suggested that elimination might be detrimental to
individual inventors.
Response: A review of the comments on this proposal reveals that
the independent inventor community submitted only a few of the
responses. The Office considers it inappropriate to proceed with this
proposal in the absence of greater input from the independent inventor
community. Therefore, this notice does not propose changes to the rules
of practice concerning the Disclosure Document Program. The Office will
continue to study the Disclosure Document Program and seek greater
input from the independent inventor community before any further action
is taken. In this regard, the matter will be referred to the Office of
Independent Inventor Programs, headed by Director Donald Grant Kelly.
The Office of Independent Inventor Programs was established on March
15, 1999. Reporting directly to the Commissioner, this new office was
established to provide assistance to independent inventors,
particularly in terms of improved communications, educational outreach,
and Office-based support. In addition, the Office of Independent
Inventor Programs will work to establish or strengthen cooperative
efforts with the Federal Trade Commission, the Department of Justice,
and various Bar Associations to address the growing problem of
invention development company marketing scams.
Creating a Patent and Trademark Office Review Service for Applicant-
Created Forms (Topic 21)
The Office indicated that it was considering establishing a new
service, under which the Office would (for a fee) review applicant-
created forms intended to be used for future correspondence to the
Office. After the review is completed, the Office would provide a
written report, including comments and suggestions (if any), but the
Office would not formally ``approve'' any form. If a (reviewed) form is
modified in view of a Office written report, comments and/or
suggestion, the revised form could be resubmitted to the Office 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 Office's written report, it would be
acceptable for the form to indicate if it is a substitute for an Office
form, and that it has been ``reviewed by the Patent and Trademark
Office.''
The Office received few comments on this proposal. Of those
comments received on this proposal, most supported this new service.
The comments included the following specific concerns and suggestions:
(1) That the form review service be optional and not mandatory; (2)
that there be one fee per form, regardless of the number of submissions
needed to have the form reviewed; (3) the service had little value
unless the Office would be willing to approve a form; and (4) the time
has come to require the use of mandatory forms.
Response: The Office indicated in the Advance Notice that this new
service would involve significant start-up costs, and, absent positive
feedback on the matter, the Office does not intend to implement this
new service. See Changes to Implement the Patent Business Goals, 63 FR
at 53530, 1215 Off. Gaz. Pat. Office at 117. In view of the limited
interest shown by the comments in this new service, the Office has
decided not to proceed with the proposal to provide a review service
for applicant-created forms.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Parts 1, 3, 5, and 10,
are proposed to be amended as follows:
Part 1
Section 1.4: Section 1.4(b) is proposed to be amended to refer to a
patent or trademark application, patent file, trademark registration
file, or other proceeding, rather than only an application file.
Section 1.4(b) is also proposed to be amended to provide that the
filing of duplicate copies of correspondence in a patent or trademark
application, patent file, trademark registration file, or other
proceeding should be avoided (except in situations in which the Office
requires the filing of duplicate copies), and that the Office
[[Page 53778]]
may dispose of duplicate copies of correspondence in a patent or
trademark application, patent file, trademark registration file, or
other proceeding. Finally, Sec. 1.4(b) and Sec. 1.4(c) are also
proposed to be amended to change ``should'' to ``must'' because the
Office needs separate copies of papers directed to two or more files,
or of papers dealing with different subjects.
Section 1.6: Section 1.6(d)(9) is proposed to be amended to delete
the reference to recorded answers under Sec. 1.684(c), as Sec. 1.684(c)
has been removed and reserved.
Section 1.9: Section 1.9(f) is proposed to be amended to provide
the definition of who can qualify to pay small entity fees, and
paragraphs (c) through (e) of Sec. 1.9 are proposed to be removed and
reserved.
Paragraph (f) of Sec. 1.9 is proposed to: (1) Be reformatted, (2)
define a ``person'' to include inventors and also noninventors holding
rights in the invention, (3) explain that qualification depends on
whether any rights in the invention were transferred and to whom, and
(4) provide that a license by a person to the Government under certain
situations does not bar entitlement to small entity status.
Section 1.9 paragraph (f) is proposed to be reformatted to place
the subject matter relating to definitions of small entities: (1)
Persons, (2) small business concerns; and (3) nonprofit organizations,
in one paragraph rather than as currently in paragraphs (c) through
(e). The expression ``independent inventor'' of current paragraph (c)
is proposed to be replaced with the term ``person'' in paragraph (f)(1)
(and other paragraphs of this section). The term ``person'' in
paragraph (f) is proposed to be defined to include individuals who are
inventors and also individuals who are not inventors but who have been
transferred some right or rights in the invention. This would clarify
that individuals who are not inventors but who have rights in the
invention are covered by the provisions of Secs. 1.9 and 1.27.
Paragraphs (f)(2)(i) and (f)(3)(i) of Sec. 1.9 are proposed to be
added to clarify that in order for small entity businesses and
nonprofit organizations to remain entitled to small entity status, they
must not in some manner transfer or be under an obligation to transfer
any rights in the invention to any party that would not qualify for
small entity status. Current Sec. 1.27 paragraphs (b), (f)(1)(iii), and
(f)(1)(iii) make clear that this rights transfer requirement applies to
all parties (independent inventors, small businesses and nonprofit
organizations, respectively). The absence of this requirement however,
from current Sec. 1.9 paragraphs (d) and (e) (small business and
nonprofit organization, respectively), notwithstanding its presence in
Sec. 1.9 paragraph (c) (independent inventor), has lead to confusion as
to the existence of such a requirement for small businesses and
nonprofit organizations. In view of the appearance of the rights
transfer requirement in Sec. 1.9, it is proposed to be removed from all
paragraphs of Sec. 1.27.
Paragraph (f)(4)(i) of Sec. 1.9 is proposed to be added to provide
a new exception relating to the granting of a license to the U.S.
Government by a person, that results from a particular rights
determination. Such a license would not bar entitlement to small entity
status. Similarly paragraph (f)(4)(ii) of Sec. 1.9 is proposed to be
added to have transferred to it (from current Sec. 1.27 paragraphs
(c)(2) and (d)(2)) the current exceptions relating to a licence to a
Federal agency by a small business or a nonprofit organization
resulting from a particular funding agreement. Again, such a license
would not bar entitlement to small entity status.
For additional proposed changes to small entity requirements see
Secs. 1.27 and 1.28.
Section 1.9(i) is proposed to be added to define ``national
security classified.'' Section 1.9(i), as proposed, defines ``national
security classified'' as used in 37 CFR Chapter 1 as meaning
``specifically authorized under criteria established by an Act of
Congress or Executive order to be kept secret in the interest of
national defense or foreign policy and, in fact, properly classified
pursuant to Act of Congress or Executive order.''
Section 1.12: Section 1.12(c)(1) is proposed to be amended to
change the reference to the fee set forth in ``Secs. 1.17(i)'' to the
fee set forth in ``Sec. 1.17(h).'' This change is for consistency with
the changes to Sec. 1.17(h) and Sec. 1.17(i). See discussion of changes
to Sec. 1.17(h) and Sec. 1.17(i).
Section 1.14: Section 1.14 is proposed to be amended to make it
easier to understand. Section 1.14 is also proposed to be amended to
provide that the Office will no longer give status information or
access in certain situations where applicants have an expectation of
confidentiality.
Section 1.14(a) is proposed to be amended to define ``status
information'' and ``access.'' ``Status information'' is proposed to be
defined as information that the application is pending, abandoned, or
patented, as well as the application numeric identifier. An
application's numeric identifier is (a) the application number, or (b)
the serial number and filing date, or date of entry into the national
stage. If an international application has not been assigned a U.S.
application number, no such application number can be provided by the
Office.
Section 1.14 as proposed would also eliminate the provisions making
available data on any continuing cases of an application identified in
a patent. (The provisions of current Sec. 1.14(a)(1)(ii) are proposed
to be deleted.)
Section 1.14(b) is proposed to be amended to state when status
information may be supplied, retaining the reasons set forth in current
Sec. 1.14(a)(1)(i). Section 1.14(b)(3) is proposed to be simplified so
as to indicate that status information will be given for international
applications in which the United States is designated, even if that
application has not yet entered the national stage.
Section 1.14(c) is proposed to be amended to contain the provisions
of current Sec. 1.14(a)(2).
The provisions of current Secs. 1.14(a)(3)(i), 1.14(a)(3)(iv)(C)
and 1.14(a)(3)(iv)(D) are proposed to be deleted, and the remaining
provisions of Sec. 1.14(a)(3) are proposed to be separated into
Sec. 1.14(d) and 1.14(e).
Section 1.14(d), as proposed, substantially corresponds to current
Sec. 1.14(a)(3)(iii) with additional text from current Sec. 1.14(e)(2).
Section 1.14(d), as proposed, states that an applicant, an attorney or
agent of record, or an applicant's assignee may have access to an
application by filing a power to inspect. In addition, Sec. 1.14(d), as
proposed, provides that if an executed oath or declaration has not been
filed, a registered attorney or agent named in the papers filed with
the application may have access, or authorize another person to have
access, to an application by filing a power to inspect. The form for a
power to inspect is PTO/SB/67.
Section 1.14(e), as proposed, substantially corresponds to current
Sec. 1.14(a)(3) and states that any person may obtain access to an
application by submitting a request for access if certain conditions
apply. Access to international phase application files is governed by
the provisions of the PCT and not by Sec. 1.14. The form for a request
for access to an abandoned application is PTO/SB/68. Section
1.14(e)(1), as proposed, corresponds to current Sec. 1.14(a)(3)(ii).
Section 1.14(e)(2)(i) corresponds to current Sec. 1.14(a)(3)(iv)(A).
Section 1.14(e)(2)(ii), as proposed, corresponds to current
Sec. 1.14(a)(3)(iv)(B).
[[Page 53779]]
Current Sec. 1.14 (b), (c), (d), (f), and (g) are proposed to be
redesignated Sec. 1.14 (f), (g), (h), (i) and (j), respectively.
Current Sec. 1.14(e) is proposed to be redesignated Sec. 1.14(k)
and to be amended to explain the requirements of a petition for access
and include the provisions of current Sec. 1.14(e)(1). Current
Sec. 1.14(e)(2) is proposed to be moved to proposed Sec. 1.14(d).
Section 1.14(k) is also proposed to indicate that the Office may
provide access or copies of an application if necessary to carry out an
Act of Congress or if warranted by other special circumstances. The
Office may, for example, provide access to, or copies of, applications
to another federal government agency, such as a law enforcement agency,
whether the Office is acting on its own initiative or in response to a
petition from the other agency when access is needed for a criminal
investigation. The Office may additionally provide access or copies
without requiring the other federal agency to file a petition including
a showing that access to the application is necessary to carry out an
Act of Congress or that special circumstances exist which warrant
petitioner being granted access to the application.
Section 1.17: Section 1.17(h) and Sec. 1.17(i) are proposed to be
amended to characterize the fee set forth in Sec. 1.17(h) as a petition
fee, and the fee set forth in Sec. 1.17(i) as a processing fee. Section
1.17(h) is proposed to be amended to list only those matters that
require the exercise of judgment or discretion in determining whether
the request/petition will be granted or denied (e.g., 1.47, 1.53,
1.182, 1.183, 1.313). Section 1.17(i) is proposed to be amended to list
those matters that do not require the exercise of judgment or
discretion, but which are routinely granted once the applicant has
complied with the stated requirements (e.g., 1.41, 1.48, 1.55). Thus,
the Office proposes to amend Sec. 1.17(h) and Sec. 1.17(i) to locate
matters requiring a petition in Sec. 1.17(h), and those matters that do
not require a petition, but only a processing fee, in Sec. 1.17(i).
Section 1.17(i) is also proposed to be amended to provide a processing
fee for: (1) Filing a nonprovisional application in a language other
than English (Sec. 1.52(d)), now in Sec. 1.17(k); and (2) filing an
oath or declaration pursuant to 35 U.S.C. 371(c)(4) naming an inventive
entity different from the inventive entity set forth in the
international stage (Sec. 1.497(d)).
Section 1.17(k) is proposed to be amended to provide a $200 fee for
processing an application containing color drawings or photographs.
Section 1.17 (l) and (m) are proposed to be amended for clarity and
to eliminate unassociated text.
Section 1.17(q) is proposed to be amended for consistency with
Sec. 1.17(h) and Sec. 1.17(i), as the matters listed therein apply to
provisional applications.
Section 1.17(t) is proposed to be added to provide a fee for filing
a request for expedited examination under Sec. 1.155(a).
Section 1.19: Section 1.19(a) is proposed to be amended to clarify
that the fees set forth in Sec. 1.19(a)(1) do not apply to patents
containing a color photograph or drawing, that the fee in
Sec. 1.19(a)(2) applies to plant patents in color, and that the fee in
Sec. 1.19(a)(3) applies to patents (other than plant patents)
containing a color drawing.
Section 1.19(b)(2) is proposed to be amended to provide a fee of
$250 for a certified or uncertified copy of a patent-related file
wrapper and contents of 400 or fewer pages, and an additional fee of
$25 for each additional 100 pages or portion thereof. Due to increases
in the number of pages in the contents of patent, patent application,
and patent-related interference files, the Office is adjusting the fee
specified in Sec. 1.19(b)(2) to recover its cost of providing copies of
these files. To better allocate costs, the Office is proposing to
charge a ``flat'' rate of $250 for a copy of a patent-related file
wrapper and contents of 400 or fewer pages (which includes most patent-
related files), but charge an additional fee of $25 for each additional
100 pages or portion thereof to make persons requesting copies of
patent-related files having contents containing a large number of pages
(e.g., interference proceedings) bear the cost of making copies of such
files. Since the Office cannot ascertain the exact number of pages of
the contents of a patent-related file, the Office expects to determine
the additional fee in proposed Sec. 1.19(b)(2)(ii) by estimating (e.g.,
by measuring file thickness) rather than actually counting pages.
Section 1.19(h) is proposed to be removed. The $25 fee under
Sec. 1.19(h) for obtaining a corrected or duplicate filing receipt is
no longer necessary as the Office is now performing that service
without charge. Consequently, where a filing receipt has an error in
it, applicants no longer need to provide a showing that the error was
due to Office mistake or pay a $25 fee for the corrected receipt. See
Changes In Practice In Supplying Certified Copies And Filing Receipts,
Notice, 1199 Off. Gaz. Pat. Office 38 (June 10, 1997).
Section 1.22: Section 1.22(b) is proposed to be amended to change
``should'' to ``must'' because the Office needs fees to be submitted in
such a manner that it is clear for which purpose the fees are paid.
Section 1.22(b) is also proposed to be amended to provide that the
Office may return fees that are not itemized as required by
Sec. 1.22(b), and that the provisions of Sec. 1.5(a) do not apply to
the resubmission of fees returned pursuant to Sec. 1.22.
Section 1.22(c) is proposed to be added to define, based upon
current Office practice, when a fee is considered paid. Section
1.22(c)(1)(i) is proposed to provide that a fee paid by an
authorization to charge such fee to a deposit account containing
sufficient funds to cover the applicable fee amount (Sec. 1.25) is
considered paid on the date the paper for which the fee is payable is
received in the Office (Sec. 1.6), if the paper including the deposit
account charge authorization was filed prior to or concurrently with
such paper. Section 1.22(c)(1)(ii) is proposed to provide that a fee
paid by an authorization to charge such fee to a deposit account
containing sufficient funds to cover the applicable fee amount
(Sec. 1.25) is considered paid on the date the paper including the
deposit account charge authorization is received in the Office
(Sec. 1.6), if the deposit account charge authorization is filed after
the filing of the paper for which the fee is payable. The provision of
Sec. 1.22(c)(1)(ii) would apply, for example, in the following
situation: In reply to an Office action setting a three-month shortened
statutory period for reply, a paper is filed three and one-half months
after the mail date of the Office action without payment of the fee for
a one-month extension of time. Thereafter, the applicant discovers the
lack of payment and files a second paper including an authorization to
charge the appropriate fee for any extension of time required, but the
second paper is received in the Office (Sec. 1.6) four and one-half
months from the mail date of the Office action. The fee required for
the reply to the Office action to be timely is considered paid when the
second paper was received (Sec. 1.6) in the Office. Section
1.22(c)(1)(iii) is proposed to provide that a fee paid by an
authorization to charge such fee to a deposit account containing
sufficient funds to cover the applicable fee amount (Sec. 1.25) is
considered paid on the date of the agreement, if the deposit account
charge authorization is the result of an agreement between the
applicant and an Office employee as long as the agreement is reduced to
a writing. That is, the fee is considered paid on the date of the
agreement (e.g.,
[[Page 53780]]
the date of the interview), and the date the agreement is subsequently
reduced to writing (e.g., the mail date of the interview summary) is
not relevant to the date the fee is considered paid.
Section 1.22(c)(2) is proposed to provide that a fee paid other
than by an authorization to charge such fee to a deposit account is
considered paid on the date the applicable fee amount is received in
the Office (Sec. 1.6). Section 1.22(c)(3) is proposed to provide that
the applicable fee amount is determined by the fee in effect on the
date such fee is paid in full. When fees change (due to a CPI increase
under 35 U.S.C. 41(f) or other legislative change), the Office
generally accords fee payments the benefit of the provisions of
Sec. 1.8 vis-a-vis the applicable fee amount even though the fee is not
considered paid until it is received in the Office (Sec. 1.6). See
Revision of Patent Fees for Fiscal Year 1999, Final Rule Notice, 63 FR
67578, 67578-79 (December 8, 1998), 1217 Off. Gaz. Pat. Office 148, 148
(December 29, 1998). This treatment of fee payments is an ``exception''
to the provisions of Sec. 1.22(c) as proposed, in that such fee would
be not be entitled to any benefit under Sec. 1.8 vis-a-vis the
applicable fee amount but for the express exception provided in the fee
change rulemaking. Of course, a fee is considered timely if the fee is
submitted to the Office under the procedure set forth in Sec. 1.8(a)
(unless excluded under Sec. 1.8(a)(2)), even though the fee is not
considered paid until it is actually received in the Office (Sec. 1.6).
Section 1.25: Section 1.25(b) is proposed to be amended to provide
that an authorization to charge fees under Sec. 1.16 in an application
submitted under Sec. 1.494 or Sec. 1.495 will be treated as an
authorization to charge fees under Sec. 1.492. There are many instances
in which papers filed for the purpose of entering the national stage
under 35 U.S.C. 371 and Sec. 1.494 or Sec. 1.495 include an
authorization to charge fees under Sec. 1.16 (rather than fees under
Sec. 1.492). In such instances, the Office treats the authorization as
an authorization to charge fees under Sec. 1.492 since: (1) Timely
payment of the appropriate national fee under Sec. 1.492 is necessary
to avoid abandonment of the application as to the United States; and
(2) the basic filing fee under Sec. 1.16 is not applicable to such
papers or applications. Therefore, the Office is proposing to change
Sec. 1.25(b) to place persons filing papers to enter the national stage
under 35 U.S.C. 371 and Sec. 1.494 or Sec. 1.495 on notice as to how an
authorization to charge fees under Sec. 1.16 will be treated.
Section 1.25(b) is also proposed to be amended to provide that an
authorization to charge fees set forth in Sec. 1.18 to a deposit
account is subject to the provisions of Sec. 1.311(b).
Section 1.26: The Office is proposing to amend the rules of
practice to provide that all requests for refund must be filed within
specified time periods. The rules of practice do not (other than in the
situation in which a request for refund is based upon subsequent
entitlement to small entity status) set any time period (other than ``a
reasonable time'') within which a request for refund must be filed. In
the absence of such a time period, Office fee record keeping systems
and business planning must account for the possibility that a request
for refund may be filed at any time, including many years after payment
of the fee at issue.
It is a severe burden on the Office to treat a request for refund
filed years after payment of the fee at issue. Since Office fee record
keeping systems change over time, the Office must check any system on
which fees for the application, patent or trademark registration have
been posted to determine what fees were in fact paid. In addition,
changes in fee amounts, which usually occur on October 1 of each year,
make it difficult to determine with certainty whether a fee paid years
ago was the correct fee at the time and under the condition it was
paid.
It also causes business planning problems to account for the
possibility that a request for refund may be filed years after payment
of the fee at issue. Without any set time period within which a request
for refund must be filed, the Office must maintain fee records, in any
automated fee record keeping system ever used by the Office, in
perpetuity. Finally, as the Office can never be absolutely certain that
a submitted fee was not paid by mistake or in excess of that required,
the absence of such a time period subjects the Office to unending and
uncertain financial obligations.
Accordingly, the Office is proposing to amend Sec. 1.26 to provide
non-extendable time periods within which any request for refund must be
filed to be timely.
Section 1.26(a) is proposed to be amended by dividing its first
sentence into two sentences. Section 1.26(a) is further amended for
consistency with 35 U.S.C. 42(d) (``[t]he Commissioner may refund a fee
paid by mistake or any amount paid in excess of that required''). Under
35 U.S.C. 42(d), the Office may refund: (1) a fee paid when no fee is
required (a fee paid by mistake); or (2) any fee paid in excess of the
amount of fee that is required. See Ex parte Grady, 59 USPQ 276, 277
(Comm'r Pats. 1943) (the statutory authorization for the refund of fees
under the ``by mistake'' clause is applicable only to a mistake
relating to the fee payment). In the situation in which an applicant or
patentee takes an action ``by mistake'' (e.g., files an application or
maintains a patent in force ``by mistake''), the submission of fees
required to take that action (e.g., a filing fee submitted with such
application or a maintenance fee submitted for such patent) is not a
``fee paid by mistake'' within the meaning of 35 U.S.C. 42(d). Section
1.26(a) is also proposed to be amended to revise the ``change of
purpose'' provisions to read ``[a] change of purpose after the payment
of a fee, as when a party desires to withdraw a patent or trademark
filing for which the fee was paid, including an application, an appeal,
or a request for an oral hearing, will not entitle a party to a refund
of such fee.''
Section 1.26(a) is also proposed to be amended to change the
sentence ``[a]mounts of twenty-five dollars or less will not be
returned unless specifically requested within a reasonable time, nor
will the payer be notified of such amount; amounts over twenty-five
dollars may be returned by check or, if requested, by credit to a
deposit account'' to ``[t]he Office will not refund amounts of twenty-
five dollars or less unless a refund is specifically requested, and
will not notify the payor of such amounts.'' Except as discussed below,
the Office intends to continue to review submitted fees to determine
that they have not been paid by mistake or in excess of that required,
and to sua sponte refund fees (of amounts over twenty-five dollars)
determined to have been paid by mistake or in excess of that required.
Section 1.26(a), however, is proposed to be amended to eliminate
language that appears to obligate the Office to sua sponte refund fees
to be consistent with the provisions of Sec. 1.26(b) which requires
that any request for refund be filed within a specified time period.
Section 1.26(a) is also proposed to be amended to facilitate
refunds by electronic funds transfer. Section 31001(x) of the Omnibus
Consolidated Rescissions and Appropriations Act of 1996, Pub. L. 104-
134, 110 Stat. 1321 (1996) (the Debt Collection Improvement Act of
1996), amended 31 U.S.C. 3332 to require that all disbursements by
Federal agencies (subject to certain exceptions and waivers) be made by
electronic funds transfer. The Department of the
[[Page 53781]]
Treasury has implemented this legislation at 31 CFR Part 208. See
Management of Federal Agency Disbursements, Final Rule Notice, 63 FR
51489 (September 25, 1998). Thus, Sec. 1.26(a) is proposed to be
amended to enable the Office to obtain the banking information
necessary for making refunds by electronic funds transfer in accordance
with 31 U.S.C. 3332 and 31 CFR Part 208.
Specifically, Sec. 1.26(a) is also proposed to be amended such that
if a party paying a fee or requesting a refund does not instruct that
refunds be credited to a deposit account, the Office will attempt to
make any refund by electronic funds transfer. If such party does not
provide the banking information necessary for making refunds by
electronic funds transfer, the Commissioner may either require such
banking information or use the banking information on the payment
instrument to make a refund. This provision will authorize the Office
to: (1) Use the banking information on the payment instrument (e.g., a
personal check is submitted to pay the fee) when making a refund due to
an excess payment; or (2) require such banking information in other
situations (e.g., a refund is requested or a money order or certified
bank check is submitted containing an excess payment). The purpose of
this proposed change to Sec. 1.26(a) is to encourage parties to submit
the banking information necessary for making refunds by electronic
funds transfer (if not on the payment instrument) up-front, and not to
add a step (requiring such banking information) to the refund process.
If it is not cost-effective to require the banking information
necessary for making refunds by electronic funds transfer, the Office
may simply issue any refund by treasury check. See 31 CFR 208.4(f).
Section 1.26(b) is proposed to be added to provide that any request
for refund must be filed within two years from the date the fee was
paid, except as otherwise provided in Sec. 1.26(b) or in Sec. 1.28(a).
See the discussion of proposed Sec. 1.22(c) concerning the date a fee
is considered paid.
Section 1.26(b) is also proposed to provide that if the Office
charges a deposit account by an amount other than an amount
specifically indicated in an authorization (Sec. 1.25(b)), any request
for refund based upon such charge must be filed within two years from
the date of the deposit account statement indicating such charge, and
that such request must be accompanied by a copy of that deposit account
statement. This provision of Sec. 1.26(b) would apply, for example, in
the following types of situations: (1) A deposit account is charged for
an extension of time as a result of there being a prior general
authorization in the application (Sec. 1.136(a)(3)); or (2) a deposit
account is charged for the outstanding balance of a fee as a result of
an insufficient fee being submitted with an authorization to charge the
deposit account for any additional fees that are due. In these
situations, the party providing the authorization is not in a position
to know the exact amount by which the deposit account will be charged
until the date of the deposit account statement indicating the amount
of the charge.
Finally, Sec. 1.26(b) is proposed to provide that the time periods
set forth in Sec. 1.26(b) are not extendable.
Section 1.27: The Office is considering simplifying applicant's
request for small entity status under Sec. 1.27. The currently used
small entity statement forms are proposed to be eliminated as they
would no longer be needed. Some material in Sec. 1.28 is proposed to be
reorganized into Sec. 1.27.
Small entity status would be established at any time by a simple
assertion of entitlement to small entity status. The currently required
statements, which include a formalistic reference to Sec. 1.9, would no
longer be required. Payment of an exact small entity basic filing or
national fee would also be considered an assertion of small entity
status. This would be so even if the wrong exact basic filing or
national fee was selected. To establish small entity status after
payment of the basic filing fee as a non-small entity, a written
assertion of small entity status would be required to be submitted. The
parties who could assert small entity status would be liberalized to
include one of several inventors or a partial assignee.
Other clarifying changes are proposed to be made including a
transfer of material into Sec. 1.27 from Sec. 1.28 drawn towards: (1)
Assertions in related, continuing and reissue applications; (2)
notification of loss of entitlement to small entity status; and (3)
fraud on the Office in regard to establishing small entity status or
paying small entity fees.
While there would be no change in the current requirement to make
an investigation in order to determine entitlement to small entity
status, a recitation would be added noting the need for a determination
of entitlement prior to an assertion of status; the Office would only
be changing the ease with which small entity status could be claimed
once it has been determined that a claim to such status is appropriate.
For additional proposed changes to small entity requirements see
Secs. 1.9 and 1.28.
Problem and Background
Section 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
Sec. 1.9. Either a reference to Sec. 1.9 or a specific statement
relating to the provisions of Sec. 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
(current Sec. 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 latest, at the time of paying, any small entity fee. In
part, to ensure that at least the reference to Sec. 1.9 is complied
with, the Office 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 Sec. 1.9
and specific statements as to exclusive rights in the invention. Where
an application has not been assigned and there are multiple inventors,
each inventor must actually sign a small entity statement, the
execution of which must all be coordinated and submitted at the same
time. Similarly, coordination of execution and submission of statements
is needed where there is more than one assignee. 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 all required small entity
statements. See current Sec. 1.28(a)(1). The current two-month refund
window under Sec. 1.28 is not extendable.
The rigid requirements of Secs. 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
Sec. 1.9 is required in their request to establish small entity status.
They believe that all
[[Page 53782]]
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 Sec. 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 office 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 Office 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 office 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
Sec. 1.26, based on establishing status as a small entity, may only be
obtained if a statement under Sec. 1.27 and the request for a refund of
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 Office 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 Office (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 in fees and resources and the office
could issue the patent with fewer resources (Patent Business Goals 4
and 5).
Assertion as to Entitlement to Small Entity Status; Assertion by
Writing
The Office is proposing to allow small entity status to be
established by the submission of a simple written assertion of
entitlement to small entity status. The current formal requirements of
Sec. 1.27, which include a reference to either Sec. 1.9, or to the
exclusive rights in the invention, would be eliminated.
The written assertion would not be required to be presented in any
particular form. Written assertions of small entity status or
references to small entity fees would 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 on an application transmittal letter
or reply cover sheet. It is the intent of the Office to modify its
application transmittal forms to provide for such a check box.
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
Sec. 1.27 and which are now used to establish small entity status.
Assertion by Payment of Small Entity Basic Filing or National Fee
The payment of an exact small entity basic filing or national fee
will also be considered to be a sufficient assertion of entitlement to
small entity status. An applicant filing a patent application and
paying an exact small entity basic filing or national fee would
automatically establish small entity status for the application even
without any further written assertion of small entity status. This is
so even if an applicant were to inadvertently select the wrong type of
small entity basic filing or national fee for the application being
filed. If small entity status was not established when the basic filing
fee was paid, such as by payment of a large entity basic filing or
national fee, a later claim to small entity status would require a
written assertion. Payment of a small entity fee other than a small
entity basic filing or national fee (e.g., extension of time, or issue
fee) without inclusion of a written assertion would not be sufficient.
Even though applicants can assert small entity status by payment of
an exact small entity basic filing or national fee, the Office strongly
encourages applicants to file a written assertion of small entity
status. A written assertion would guarantee the applicant that the
application will have small entity status even if applicant fails to
pay the exact small entity basic filing or national fee. The limited
provision providing for small entity status by payment of an exact
small entity basic filing or national fee is only intended to act as a
safety net to avoid possible financial loss to inventors or small
businesses that can qualify for small entity status.
Caution: Even though small entity status would be accorded where
the wrong type of small entity basic filing fee or national fee were
selected but the exact amount of the fee were paid, applicant would
still need to pay the correct small entity amount for the basic filing
or national fee where selection of the wrong type of fee results in a
deficiency. While an accompanying general authorization to charge any
additional fees would suffice to pay the balance due of the proper
small entity basic filing or national fee, specific authorizations to
charge fees under Sec. 1.17 or extension of time fees would not
suffice to pay any balance due of the proper small entity basic filing
or national fee because they do not actually authorize payment of small
entity amounts.
Examples: Applications under 35 U.S.C. 111: If an applicant were to
file a utility application under 35 U.S.C. 111 yet only pay the exact
small entity amount for a design application (currently the small
entity filing fees for utility and design applications are $380 and
$155, respectively), small entity status for the utility application
would be accorded. See the following examples:
(1) Where the utility application was filed inadvertently with
the exact small entity basic filing fee for a design application
rather than for a utility application and an authorization to charge
the filing fee was not present, the Office would accord small entity
status and mail a Notice to File Missing Parts of Application,
requiring the $225 difference between the small entity utility
application filing fee owed and the small entity design application
filing fee actually paid plus a small entity surcharge (of $65) for
the late submission of the correct filing fee.
(2) Where the utility application was filed without any filing
fee but the $155 exact small entity filing fee for a design
application was inadvertently paid in response to a Notice to File
Missing Parts of Application, small entity status would be
established even though the correct small entity filing fee for a
utility application was not fully paid. While the Office will notify
applicant of the
[[Page 53783]]
remaining amount due, the period for reply to pay the correct small
entity utility basic filing fee would, however, continue to run.
Small entity extensions of time under Sec. 1.136(a) would be needed
for the later submission of the $225 difference between the $380
small entity utility basic filing fee owed and the $155 small entity
design filing fee inadvertently paid. If there was an authorization
to charge a deposit account in the response to the Notice, the $225
difference would have been charged along with the small entity $65
surcharge and the period for response to the Notice to File Missing
Parts of Application would not continue to run.
Applications entering that national stage under 35 U.S.C. 371:
Section 1.492(a) sets forth five (5) different basic national fee
amounts which apply to different situations. If an applicant pays a
basic national fee which is the exact small entity amount for one of
the fees set forth in Sec. 1.492(a), but not the particular fee which
applies to that application, the applicant will be considered to have
made an assertion of small entity status. This is true whether the fee
paid is higher or lower than the actual fee required. See the following
examples.
(1) An applicant pays $485 (the small entity amount due under
Sec. 1.492(a)(3), where the United States was neither the
International Searching Authority (ISA) nor the International
Preliminary Examining Authority (IPEA) and the search report was not
prepared by the European Patent Office (EPO) or Japanese Patent
Office (JPO)) when in fact the required small entity fee is $420
under Sec. 1.492(a)(5), because the JPO or EPO prepared the search
report. The applicant will be considered to have made the assertion
of small entity status. The office will apply $420 to the payment of
the basic national fee and refund the overpayment of $65.
(2) An applicant pays $420 (the small entity fee due under
Sec. 1.492(a)(5) where the search report was prepared by the EPO or
JPO). In fact, the search report was prepared by the Australian
Patent Office and no preliminary examination fee was paid to the
Patent and Trademark Office. Thus, the required small entity fee is
$485 under Sec. 1.492(a)(3). The applicant will be considered to
have made the assertion of small entity status. If the applicant has
authorized payment of fee deficiencies to a deposit account, the
Office will charge the $65 to the deposit account and apply it and
the $420 to the basic national fee. If there is no authorization or
there are insufficient fees in the deposit account, the basic
national fee payment is insufficient. If the balance is not provided
before 20 or 30 months from the priority date has expired, the
application is abandoned.
If payment is attempted to be made of the proper type of basic
filing or national fee, but it is not the exact small entity fee
required (an incorrect fee amount is supplied) and a written assertion
of small entity status is not present, small entity status would not be
accorded. The Office would mail a notice of insufficient basic filing
or national fee with a surcharge due as in current practice if an
authorization to charge the basic filing or national fee were not
present. The Office would not consider a basic filing or national fee
submitted in an amount above the correct fee amount, but below the non-
small entity fee amount, as a request to establish small entity status
unless an additional written assertion is also present. Of course, the
submission of a basic filing or national fee below the correct fee
amount 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 basic
filing or national fees) and there is no indication (assertion) of
entitlement to small entity status present, that authorization would
not be sufficient to establish small entity status unless the
authorization was specifically directed to small entity basic filing or
national fees. The general authorization to charge fees would continue
to be acted upon immediately and the full (not small entity) basic
filing or national fees would be charged with applicant having three
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.
Parties Who Could Assert Entitlement to Small Entity Status by Writing
The parties who could submit a written assertion of entitlement to
small entity status would be any party permitted by Office regulations,
Sec. 1.33(b), to file a paper in an 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, the three inventors upon filing the application could
submit a written assertion of entitlement to small entity status 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. In addition, a written assertion of entitlement to
small entity status would be able to be made by one of several
inventors or a partial assignee. Current practice does not require an
assignee asserting small entity status to submit a Sec. 3.73(b)
certification, and such certifications would not be required under the
proposed revision either for partial assignees or for an assignee of
the entire right, title, and interest.
Parties who Could Assert Entitlement to Small Entity Status by Payment
of Basic Filing or National Fee
Where small entity status is sought by way of payment of the basic
filing or national fee, any party may submit payment, such as by check,
and small entity status would be accorded.
Inventors Asserting Small Entity Status
Any inventor would be permitted to submit a written assertion of
small entity status, including inventors who are not officially named
of record until an executed oath/declaration is submitted. See
Sec. 1.41(a)(1). Where an application is filed without an executed
oath/declaration pursuant to Sec. 1.53(f), the Office will accept the
written assertion of an individual who has merely been identified as an
inventor on filing of the application (e.g., application transmittal
letter) as opposed to being named as an inventor. Sections 1.4(d)(2)
and 10.18(b) are seen as sufficient basis to permit any individual to
provide a written assertion so long as the individual identifies
himself or herself as an inventor. Where a Sec. 1.63 oath or
declaration is later filed, any original written assertion as to small
entity status will remain unless changed by an appropriate party under
Sec. 1.27(f)(2). Where a later filed Sec. 1.63 oath or declaration sets
forth an inventive entity that does not include the person who
initially was identified as an inventor and who asserted small entity
status, small entity status will also remain. Where small entity status
is asserted by payment of the small entity basic filing, or national
fee any party may submit such fee, including an inventor who was not
identified in the application transmittal letter, or a third party.
Caution: The fact that certain parties can execute a written
assertion of entitlement to small entity status, such as one of several
inventors, or a partial assignee, does not entitle that written
assertion to be entered in the Official file record and become an
effective paper unless the person submitting the paper is authorized to
do so under Sec. 1.33(b). In other words, the fact that one of several
inventors can sign a written assertion of entitlement to small entity
status does not also imply that the same inventor can submit the paper
to the Office and have it entered of record.
[[Page 53784]]
The written assertion, even though effective once entered in the
Official file record, must still be submitted by a party entitled to
file a paper under Sec. 1.33(b). Payment of the small entity basic
filing or national stage fee would not be subject to such submission
requirement and any payment thereof would be accepted and treated as an
effective assertion of small entity status.
Policy Considerations
Office 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 application simply by payment of the small entity basic filing
fee if the prior
application/patent had small entity status. See current
Sec. 1.28(a)(2). The instant concept of payment of the small entity
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 who are not actually entitled
to small entity status requesting 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 created by the
requirements of Sec. 1.27 than the requirements help to prevent status
claims for those who are not in fact entitled to such status.
Continued Obligations for Thorough Investigation of Small Entity Status
Applicants should not confuse the fact that the Office is making it
easier to qualify for small entity status with the need to do a
complete and thorough investigation before an assertion is made 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 or national fee to establish small entity status, the single
inventor asserting entitlement to small entity status would need to
check with the other two inventors to determine whether small entity
status was appropriate.
The intent of Sec. 1.27 is that the person making the assertion of
entitlement to 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 Office 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. Section 1.27(g)
would recite current provisions in Sec. 1.28(d)(1) and (2) relating to
fraud practiced on the Office.
Consistent with Sec. 1.4(d)(2), the payment of a small entity basic
filing or national fee, would constitute a certification under
Sec. 10.18(b). Thus, a simple payment of the small entity basic filing
or national fee, without a specific written assertion, will activate
the provisions of Sec. 1.4(d)(2) and, by that, invoke the self-
certification requirement set forth in Sec. 10.18(b), regardless of
whether the party is a practitioner or non-practitioner.
Clarification of Need for Investigation
Section 1.27 is proposed to be clarified (paragraph (e)) by
explicitly providing that a determination ``should'' be made of
entitlement to small entity status according to the requirement set
forth in Sec. 1.9 prior to asserting small entity status. The need for
such a determination of entitlement to small entity status prior to
assertion of small entity status is set forth in terms of that there
``should'' be such a determination, rather than there ``must'' be such
a determination. In view of the ease with which small entity status
would now be obtainable, it is deemed advisable to provide an explicit
direction that a determination of entitlement to small entity status
pursuant to Sec. 1.9 be made before its assertion. Consideration was
given to making the need for a determination a requirement rather than
advisory; however, the decision was made to make it advisory,
particularly in view of the following possible scenario: One of three
inventors submits a written assertion of entitlement to small entity
status without making any determination of entitlement to such status,
such as by checking with the other two inventors to see if they have
assigned any rights in the invention. Small entity status was proper at
the time asserted notwithstanding the lack of a proper determination.
If the determination is set forth as a requirement (``must''), the lack
of such a determination might act to cause an unduly harsh result where
small entity status was in fact appropriate and the failure to check
prior to assertion was innocent. It is recognized that the use of
``should'' may cause concern that a cavalier approach to asserting
entitlement to small entity status may be taken by encouraging some who
are asserting status not to make a complete determination as the
determination is not set forth as being mandatory. On balance, it is
thought that the use of ``should'' would lead to more equitable
results. The danger of encouraging the assertion of small entity status
without a prior determination as to qualification for small entity
status is thought to be small, because, should status turn out to be
improper, the lack of a prior determination may result in a failure to
meet the lack of deceptive intent requirements under Sec. 1.27(g) or
Sec. 1.28(c). The Office has noted that any attempt to improperly
establish status as a small entity will be viewed as a serious matter.
See MPEP 509.03.
Removal of Status
Section 1.27 is also proposed to be clarified (paragraph (f)(2))
that once small entity status is established in an application, any
change in status from small to large, would also require a specific
written assertion to that extent, rather than only payment of a large
entity fee, similar to current practice. For example, when paying the
issue fee in an application that has previously been accorded small
entity status and the required new determination of continued
entitlement to small entity status reveals that status has been lost,
applicant should not just simply pay the large issue fee or cross out
the recitation of small entity status on the returned copy of the
notice of allowance (PTOL-85(b)), but submit a separate paper
requesting removal of small entity status pursuant to proposed
Sec. 1.27(f)(2).
Correction of any inadvertent and incorrect establishment of small
entity status would be by way of a paper under proposed Sec. 1.28(c) as
in current practice.
Response to Comments
Many comments supported the proposal without qualification. Only
two, however, explicitly mentioned the payment option for obtaining
small entity status with one recognizing that any error is now easier
to correct under Sec. 1.28(c). Others would eliminate the possibility
of obtaining small entity
[[Page 53785]]
status based on payment of the exact small entity basic filing (or
national fee) due to possible error in paying an unintended small
entity basic filing (or national fee) and being accorded an unwanted
small entity status. There was only one total opposition to the
proposal as a ``bad'' idea.
Comment: Several comments supported the proposal as a positive
change that is both helpful to applicants and attorneys and one that
will reduce the cost of establishing small entity status, particularly
where there are multiple forms required due to joint ownership or
licensing of multiple rights. It was noted that the proposal eliminates
the time-consuming requirement for obtaining a signature of a person,
such as an officer of the company, who may not have been involved in
the application drafting process. It was also stated that the need to
withhold the filing fee on filing an original application would be
eliminated where the current small entity statement cannot be signed in
time.
Response: The comments were adopted. The proposal from the Advance
Notice is being carried forward in the instant notice. The particular
parties who may assert entitlement to small entity status is being
further liberalized over the Advance Notice to include only one of the
inventors or a partial assignee.
Comment: One individual opposed the proposal because the submission
of a paper is the only effective way an attorney can be certain that a
client is complying with the requirements for small entity status.
Eliminating the form removes the incentive of the client to provide the
attorney with needed information, particularly with respect to foreign
clients.
Response: A copy of Secs. 1.9 and 1.27 can be supplied to a client
as easily as the form and should be just as effective with foreign
clients. It is not seen that the requirement of signing the form would
be a more certain means that compliance exists than if the client would
have to state to the attorney, either orally or in a letter, that the
client complies with the requirements for asserting entitlement to
small entity status. The form itself does not provide the underlying
factual basis for entitlement to small entity status. It merely recites
the requirement of Sec. 1.9 and that the party executing it seeks small
entity status. The attorney is not now required to confirm that a
client is in compliance once the form is signed by the client and would
not be required to make such confirmation under the proposal. It would
continue to be up to the client to determine whether it wishes to
assume whatever risk there may be should it decide to do the small
entity determination by itself rather than rely on the attorney for
aid.
Comment: A few comments would eliminate the option of asserting
small entity status by payment of the basic filing (or national fee)
due to possible errors in fee payments thereby obtaining unwanted small
entity status. One comment recognized that the Office's adoption in the
last rulemaking of a straightforward approach to correction under
Sec. 1.28(c) would make correction of improper status for good faith
errors a simple procedure.
Response: The comment seeking elimination of the payment option is
not adopted. The comment noting the previous easing of correction for
good faith errors so that the possibility of inadvertent errors should
not be a bar to the payment option is adopted. It is expected that this
would occur very infrequently if at all in that the exact small entity
amount must be submitted. Only errors in amounts paid where the error
was the exact small entity amount for the basic filing (or national
fee) would trigger small entity status. In view of the continued need
for an affirmative determination of entitlement to small entity status
to be made, the error would mostly occur by a misreading of a fee
chart. Such type of error if it inadvertently leads to the
establishment of small entity status would be easily correctable by the
current Sec. 1.28(c).
Comment: Some comments sought to ensure that the written assertion
would be easy to make by adding a check box to provide for an assertion
on: Office forms, the Sec. 1.63 declaration, on the application, or on
the transmittal sheet.
Response: The comments are adopted to the extent that this is an
implementation issue to be addressed when a final rule is issued. The
Office intends at this time to at least supply a check box on its
application transmittal forms.
Paragraph by Paragraph Analysis
Section 1.27 is proposed to be amended in its title to recognize a
new means of establishing small entity status by replacing
``statement'' with ``assertion,'' to indicate that an assertion of
small entity status would permit the payment of small entity fees, and
to reflect transfer of subject matter from Sec. 1.28 relating to
determination of entitlement to and notification of loss of entitlement
to small entity status, and fraud on the Office.
Paragraphs (a) through (d) of Sec. 1.27 is proposed to be
reformatted and amended to recite ``assertion'' as a new means for
establishing small entity status to replace ``statement'', and new
paragraphs (e), (f)(1) and (f)(2), and (g) are proposed to be added.
Paragraph (b) of Sec. 1.27 is proposed to be reformatted to add
paragraphs (b)(1) through (b)(4) of Sec. 1.27. Paragraph (b) (1) of
Sec. 1.27 would permit assertion of small entity status by a writing
that is clearly identifiable as present ((b)(1)(i)), signed
((b)(1)(ii)), and convey the concept of small entity status without the
need for specific words but with a clear indication of an intent to
assert entitlement to small entity status ((b)(1)(iii)). Paragraph
(b)(2) of Sec. 1.27 would make submission of a written assertion to
obtain small entity status easier in view of increased categories of
parties who could submit such a paper. The parties who could sign the
written assertion are identified as: one of the parties who can
currently submit a paper under Sec. 1.33(b) ((b)(2)(i) of Sec. 1.27),
at least one of the inventors ((b)(2)(ii) of Sec. 1.27) rather than all
the inventors (applicants) as required by Sec. 1.33(b)(4) for other
types of papers, or a partial assignee ((b)(2)(iii) of Sec. 1.27)
rather than all the partial assignees and any applicant retaining an
interest as required by Sec. 1.33(b)(3) for other types of papers. A
Sec. 3.73(b) certification would not be required for an assignee under
either paragraphs (b)(2)(i) or (iii). Paragraph (b)(3) of Sec. 1.27
would permit the payment, by any party, of an exact amount of one of
the small entity basic filing or national fees set forth in
Sec. 1.16(a), (f), (g), (h), or (k), or Sec. 1.492(a)(1) through (a)(5)
to be treated as a written assertion of entitlement to small entity
status even where an incorrect type of basic filing or national fee is
inadvertently selected in error. Paragraph (b)(3)(i) would provide that
where small entity status was accorded based on the payment of a wrong
type of small entity basic filing or national fee, the correct small
entity amount would still be owed. Paragraph (b)(3)(ii) would provide
that payment of a small entity fee in its exact amount for a fee other
than what is provided for in paragraph (b)(3) would not be sufficient
to establish small entity status absent a concomitant written assertion
of entitlement to small entity status. After a basic filing or national
fee is paid as a large entity, a refund under Sec. 1.28(a) of the large
entity portion can only be obtained by establishing small entity status
by a written assertion and not by paying a second basic filing or
national fee in a small entity amount. Payment of a large entity basic
filing or national fee precludes paying a second basic
[[Page 53786]]
filing or national fee in a small entity amount to establish small
entity status. Paragraph (b)(4) of Sec. 1.27 recites material
transferred from current Sec. 1.28(a)(2).
Paragraph (c) of Sec. 1.27 is proposed to be amended to provide
that fees other than the basic filing and national fees can only be
paid in small entity amounts if submitted with or subsequent to a
written assertion of entitlement to small entity status. The paragraph
would clarify that an exception exists under Sec. 1.28(a) for refunds
of the large entity portion of a fee within three months of payment
thereof if the refund request is accompanied by a written assertion of
entitlement to small entity status.
Paragraph (d)(1) of Sec. 1.27 is proposed to be amended to
reference Sec. 1.28(b) as the means of changing small entity status. It
would be clarified that where rights in an invention are assigned, or
there is an obligation to assign, to a small entity subsequent to an
assertion of entitlement to small entity status, a second assertion is
not required. Paragraph (d)(2) would clarify that once small entity
status is withdrawn a new written assertion would be required to again
obtain small entity status.
Paragraph (e) of Sec. 1.27 is proposed to be added to clarify the
need to do a determination of entitlement to small entity status prior
to asserting small entity status, and that the Office generally does
not question assertions of entitlement to small entity status.
Paragraph (f)(1) of Sec. 1.27 is proposed to be added to contain
material transferred from current Sec. 1.28. Paragraph (f)(2) is
proposed to be added to revise the current reference to the party who
can sign a notification of loss of entitlement to small entity status
to require a party identified in Sec. 1.33(b).
Paragraph (g) of Sec. 1.27 is proposed to be added to contain
material transferred from paragraphs (d)(1) and (d)(2) of current
Sec. 1.28 relating to fraud attempted or committed on the Office in
regard to paying small entity fees.
Section 1.28: Section 1.28 is proposed to be amended to be entirely
reformatted with some material transferred to Sec. 1.27.
Section 1.28(a) is proposed to be amended to allow a three-month
period (presently a two-month period) for refunds based on later
establishment of small entity status. See further discussion in
Sec. 1.28(b)(1).
Section 1.28(b)(1) is proposed to be amended to refer to
Sec. 1.22(c). Section 1.22(c) sets forth that the filing date for an
authorization to charge fees starts the period for refunds under
Sec. 1.28(a). The current time period for a refund request is two
months from payment of the full fee and the date of payment for refund
purposes can vary depending on the means the applicant used to pay the
required fee. For example, if the applicant paid the required fee by
check, the date of payment is the date on which the fee paper,
including the check, was filed in the Office. If the applicant
authorized a charge to a deposit account, however, the date of payment
is the date the Office debited the deposit account. In view of the
proposed change in practice under Secs. 1.22(c) and 1.28(b)(1) to
accord the same date of payment for checks and authorizations to charge
deposit accounts, the refund period would be extended to three months
in order to in-part offset any shortening of the refund time period
that may result in starting the time period from the filing date of the
fee paper instead of the debit date for an authorization to charge a
deposit account. Additionally, in view of changes in practice under
Sec. 1.27 to ease the claiming of small entity status, the need for
refunds should diminish, and the different payment date of an
authorization to charge a deposit account for small entity refund
purposes should not cause much inconvenience to applicants.
Section 1.28(b)(2) is proposed to be amended to state that the
deficiency amount owed under Sec. 1.28(c) is calculated by using the
date on which the deficiency was paid in full.
Section 1.28(c) is proposed to be amended to require that
deficiency payments must be submitted separately for each file
(Sec. 1.28(c)(1)) and must include the itemization of the deficiency
payment by identifying: type of fee along with the current fee amount
(Sec. 1.28(c)(2)(ii)(A)), the small entity amount paid and when
(Sec. 1.28 (c)(2)((ii)(B)), the deficiency owed for each individual fee
paid in error (Sec. 1.28(c)(2)(ii)(C)), the total deficiency payment
owed (Sec. 1.28(c)(2)(ii)(D)), and that any failure to comply with the
separate payment and itemization requirements would allow the Office at
its option to charge a processing fee or set a non-extendable one month
period for compliance to avoid return of the paper (Sec. 1.28(c)(3)).
Paragraph by Paragraph Analysis
The title of Sec. 1.28 is proposed to be revised to focus on
refunds and on how errors in status are excused in view of transfer of
material to Sec. 1.27.
Paragraphs (a)-(c) of Sec. 1.28 are proposed to be reformatted.
Paragraph (a)(1) of Sec. 1.28 is proposed to be amended as
paragraph (a).
Paragraph (a) of Sec. 1.28 is proposed to be amended to clarify
that the period for a refund runs from payment of the ``full fee,'' and
that it is the payment of the full fee that is considered the
significant event relative to establishing status for a particular fee.
Additionally, paragraph (a) would amend the time period for requesting
a refund based upon later establishment of small entity status. The
proposed time period would be three months measured from the filing
date of the fee paper.
Paragraph (a)(2) of Sec. 1.28 is proposed to be amended to have
some subject matter transferred to Sec. 1.27(b)(4). The next to last
sentence, relating to filing a continuing or reissue application and
referencing a small entity statement in the prior application or
patent, would be deleted as unnecessary. The currently required
reference to status in the prior application or patent would be
replaced by the equally easily written assertion of Sec. 1.27(b)(1).
Written references to small entity status in a prior application,
including submission of a copy of the small entity statement in a prior
application, submitted in a continuing application subsequent to the
effective date of any final rule, would be liberally construed under
the proposed Sec. 1.27(b)(1)(iii). Similarly, the last sentence of
current paragraph (a)(2) would be deleted as the payment option for
establishing small entity status in continuing or reissue applications
has been expanded in Sec. 1.27(b)(3) to include all applications.
Caution: Although the Office intends to liberally construe what is
deemed to be an assertion of small entity status, the concept of
entitlement must be clearly conveyed.
Example: A prior application has been accorded small entity
status. A continued prosecution application (CPA) under Sec. 1.53(d)
is filed with a general authorization to charge fees that does not
state that the fees to be charged are small entity fees. Even though
the CPA contains the same application number as its prior
application (and the small entity statement), it would not be
accorded small entity status and large entity filing fees would be
immediately charged. This would be so because a new determination of
entitlement to small entity status must be made upon filing of a new
application, such as a CPA. Accordingly, in filing the CPA there
must be some affirmative act to indicate that the determination has
been done anew and small entity status is still appropriate. Where a
copy of the small entity statement from the prior application, or a
written assertion in the CPA application transmittal letter, or an
authorization to charge small entity fees were present, the result
would be reversed and small entity status would be accorded the CPA
application on filing.
Paragraph (a)(3) of Sec. 1.28 is proposed to be amended to have its
subject matter transferred to Sec. 1.27(d)(1).
[[Page 53787]]
Paragraph (b) of Sec. 1.28 is proposed to be amended to have its
subject matter transferred to Sec. 1.27(f)(1) and (2). New paragraphs
(b)(1) and (b)(2) are proposed to be added. Paragraph (b)(1) of
Sec. 1.28 would refer to Sec. 1.22(c) to define the date a fee is paid
for the purpose of starting the three-month period for refund. Current
practice for authorizations to charge deposit accounts is to give
benefit of the date that the deposit account is actually debited by the
Office, which is a later time than when the paper authorizing charge of
the fee to a deposit account is filed with the Office. Current practice
would therefore be changed so that it is the date the paper is filed,
not the date of debit of the fee, that would start the three-month
refund period. Paragraph (b)(2) of Sec. 1.28 would refer to
Sec. 1.22(c) to define the date when a deficiency payment is paid in
full, which is the date that determines the amount of deficiency that
is due.
Example: A small entity issue fee has been paid in error in
January and a paper under Sec. 1.28(c) was submitted the following
June with the deficiency payment. The deficiency payment of the
issue fee was incorrectly determined so that the full amount owed
(for the issue fee) was not submitted in June. If the mistake in the
June payment is not discovered until the following November, the
extra amount owed must be recalculated to take into account any
October 1 increase in the issue fee.
Paragraph (c) of Sec. 1.28 is proposed to be amended to recite that
separate submissions, including separate payments and itemizations, are
required for any deficiency payment. Paragraph (c)(1) would require
that a deficiency paper/submission be limited to one application or
patent file. Where, for example, the same set of facts has caused
errors in payment in more than one application and/or patent file, a
separate paper would need to be submitted in each file for which an
error is to be excused. Paragraph (c)(2) would now require that for
each fee that was erroneously paid in error the following itemization
be provided: The particular fee (e.g., basic filing fee, extension of
time fee) (paragraph (c)(2)(ii)((A)), the small entity fee amount
actually paid and when (for example, distinguishing between two one-
month extension of time fees erroneously paid on two different dates)
(paragraph (c)(2)(ii)(B)), the actual deficiency owed for each fee
previously paid in error (paragraph (c)(2)(ii)(C)), and the total
deficiency owed that is the sum of the individual deficiencies owed
(paragraph (c)(2)(ii)(D)). Paragraph (c)(3) would address the failure
to comply with the separate submission, including separate payment and
itemization requirements of paragraph (c)(1) and (2) of this section.
Paragraph (c)(3), upon failure to comply, would permit the Office at
its option either to charge a processing fee (Sec. 1.17(i) would be
suitably amended) to process the paper or require compliance within a
one-month non-extendable time period to avoid return of the paper.
Paragraphs (d) (1) and (2) of Sec. 1.28, are proposed to be amended
to have the material relating to fraud attempted or committed on the
Office as to paying of small entity fees, transferred to Sec. 1.27(g).
New paragraph (d) of Sec. 1.28 is proposed to be added to clarify that
any paper submitted under paragraph (c) of Sec. 1.28 would also be
treated as a notification of loss of small entity status under
paragraph (f)(2) of Sec. 1.27.
Section 1.33: Paragraph (a) of Sec. 1.33 would be reformatted to
create additional paragraphs (a)(1) and (a)(2) to separately identify
the parties who can change a correspondence address depending upon the
presence or absence of a Sec. 1.63 oath/declaration. The revision is
intended to make clear what may be a confusing practice to applicants
as to which parties can set forth or change a correspondence address
when an application does not yet have a Sec. 1.63 oath or declaration
by any of the inventors. See Sec. 1.14(d)(4) for a similar change
regarding status and access information. References to a Sec. 1.63
oath/declaration are intended to mean an executed oath/declaration by
any inventor, but not necessarily all the inventors.
Paragraph (a) of Sec. 1.33 is proposed to be amended to provide
that in a patent application the applicant must, either in an
application data sheet (Sec. 1.76) or in a clearly identifiable manner
elsewhere in any papers submitted with an application filing, specify a
correspondence address to which the Office will send notices, letters
and other communications in or about the application. It is now stated
that where more than one correspondence address is specified, the
Office would determine which one to establish as the correspondence
address. This is intended to cover the situation where an unexecuted
application is submitted with conflicting correspondence addresses in
the application transmittal letter and in an unexecuted oath/
declaration, or other similar situations.
Paragraph (a) of Sec. 1.33 would request the submission of a
daytime telephone number of the party to whom correspondence is to be
addressed. While business is to be conducted on the written record,
Sec. 1.2, a daytime telephone number would be useful in initiating
contact that could later be reduced to a writing. The phone number
would be changeable by any party who could change the correspondence
address.
Paragraph (a)(1) of Sec. 1.33 would provide that any party filing
the application and setting forth a correspondence address could later
change the correspondence address provided that a Sec. 1.63 oath/
declaration by any of the inventors has not been submitted. The parties
who may so change the correspondence address would include only the one
inventor filing the application even if more than one inventor was
identified on the application transmittal letter. If two of three
inventors filed the application, the two inventors filing the
application would be needed to change the correspondence address.
Additionally, any registered practitioner named in the application
transmittal letter, or a person who has the authority to act on behalf
of the party that will be the assignee (if the application was filed by
the party that will be the assignee), could change the correspondence
address. A registered practitioner named in a letterhead would not be
sufficient, but rather a clear identification of the individual as
being a representative would be required. The intent is to permit a
company (to whom the invention has been assigned, or to whom there is
an obligation to assign the invention) who files an application, to
designate the correspondence address, and to change the correspondence
address, until such time as a (first) Sec. 1.63 oath/declaration is
filed. The mere filing of a Sec. 1.63 oath/declaration, that does not
include a correspondence address, including when the company is only a
potential partial assignee would not affect any correspondence address
previously established on filing of the application, or changed per
paragraph (a)(1) of this section. The expression ``party that will be
the assignee'' rather than assignee is used in that until a declaration
is submitted, inventors have only been identified and any attempted
assignment, or partial assignment, cannot operate for Office purposes
until the declaration is supplied. Hence, the mere identification of a
party as a party that will be an assignee or assignee would be
sufficient for it to change the correspondence address without resort
to Sec. 3.73(b).
Paragraph (a)(2) of Sec. 1.33 would retain the current requirements
for changing a correspondence address when a Sec. 1.63 oath/declaration
by any of the inventors has been filed. Where a correspondence address
was set forth or changed pursuant to paragraph (a)(1) (prior to the
[[Page 53788]]
filing of a Sec. 1.63 oath or declaration), that correspondence address
remains in effect upon filing of a Sec. 1.63 declaration and can then
only be changed pursuant to paragraph (a)(2).
Paragraph (b) of Sec. 1.33 would be simplified to make it easier to
understand who are appropriate parties to file papers, particularly in
view of the proposed change under Sec. 3.71(b).
Paragraph (b)(3) of Sec. 1.33 is proposed to be amended to add a
reference to Sec. 3.71.
Section 1.41: Section 1.41(a)(1) is proposed to be amended to
indicate that a paper including the processing fee set forth in
Sec. 1.17(i) is required for supplying or changing the name(s) of the
inventor(s) where an oath or declaration prescribed in Sec. 1.63 is not
filed during pendency of a nonprovisional application, rather than a
petition including a petition fee, for consistency with the proposed
amendment to Sec. 1.17(i). Section 1.41(a)(2) is proposed to be amended
to indicate that a paper including the processing fee set forth in
Sec. 1.17(q) is required for supplying or changing the name(s) of the
inventor(s) where a cover sheet prescribed by Sec. 1.53(c)(1) is not
filed during the pendency of a provisional application, rather than a
petition including a petition fee, for consistency with the proposed
amendment to Sec. 1.17(q). Section 1.41(a)(3) is proposed to be amended
to delete the language concerning an alphanumeric identifier, and to
provide that the name, residence, and citizenship of each person
believed to be an actual inventor should be provided when the
application papers pursuant to Sec. 1.53(b) are filed without an oath
or declaration or application papers pursuant to Sec. 1.53(c) are filed
without a cover sheet. Section 1.41(a)(4) is proposed to be added to
set forth that the inventors who submitted an application under
Sec. 1.494 or Sec. 1.495 are the inventors in the international
application designating the United States.
Section 1.44: Section 1.44 is proposed to be removed and reserved
to eliminate the requirement that proof of the power or authority of
the legal representative be recorded in the Office or filed in an
application under Secs. 1.42 or 1.43.
Section 1.47: Section 1.47 is proposed to be amended to refer to
``the fee set forth in Sec. 1.17(h)'' for consistency with the proposed
amendment to Sec. 1.17(h) and (i). See discussion of the proposed
amendment to Sec. 1.17. Section 1.47 is also proposed to be amended to
add a new paragraph (c) providing that the Office will send notice of
the filing of the application to all inventors who have not joined in
the application at the address(es) provided in the petition under
Sec. 1.47, and will publish notice of the filing of the application in
the Official Gazette. This provision is currently included in each of
Sec. 1.47(a) and Sec. 1.47(b). Section 1.47(c) is also proposed to
provide that the Office may dispense with such notice provisions in a
continuation or divisional application where notice regarding the
filing of the prior application has already been sent to the nonsigning
inventor(s). The patent statute gives the Office great latitude as to
the notice that must be given to an inventor who has not joined in an
application for patent. See 35 U.S.C. 116, para.2 (``after such notice
to the omitted inventor as [the Commissioner] prescribes''), and 118
(upon such notice to [the inventor] as the Commissioner deems
sufficient''). Providing notice to a non-joined inventor in a
continuation or divisional application places a significant burden on
the Office, especially when such continuation or divisional application
is filed using a copy of the oath or declaration from a prior
application under Sec. 1.63(d). In addition, providing additional
notice to the non-joined inventor in the continuation or divisional
application provides little (if any) actual benefit to the non-joined
inventor, as identical notice was previously given during the
processing of the prior application. Thus, the Office considers it
appropriate to dispense with notice under Sec. 1.47 in situations
(continuations or divisionals of an application accorded status under
Sec. 1.47) in which the non-joined inventor was previously given such
notice in a prior application.
Section 1.48: Section 1.48 is proposed to be amended to have the
title revised to reference the statutory basis for the rule, 35 U.S.C.
116.
Section 1.48 paragraphs (a) through (c) are proposed to be amended
to: delete the recitation of ``other than a reissue application'' as
such words are unnecessary in view of the indication in the title of
the section that the section does not apply to reissue applications and
the revision to paragraph (a) (discussed below), to change ``When'' to
``If,'' and to add ``nonprovisional'' before ``application'' where it
does not already appear.
Sections 1.48 paragraphs (a)(1) through (e)(1) would be revised to
replace the reference to a ``petition'' with a reference to a
``request.'' What is meant to be encompassed by the term ``petition,''
as it is currently used in the section, may be better defined by the
term ``request.'' The presence of ``petition'' currently in the section
is misleading to the extent that it may indicate to applicants that
papers under this section have to be filed with the Office of Petitions
when in fact amendments to correct the inventorship under Sec. 1.48 are
to be decided by the primary examiners in the Technology Centers and
should be submitted there. See MPEP 1002.02(e). The requirements for a
statement currently in Sec. 1.48 paragraphs (a)(1), (c)(1), and (e)(1)
would be placed in Sec. 1.48 paragraphs (a)(2), (c)(2), and (e)(2) and
corresponding changes made in subsequent paragraphs.
Section 1.48 paragraphs (b) and (d) are proposed to be revised to
indicate that a request to correct the inventorship thereunder must be
signed by a party as set forth in Sec. 1.33(b) (which would enable a
practitioner alone to sign all the needed papers). The inventors,
whether being added, deleted or retained, are not required to
participate in a correction under these paragraphs. Thus, the
inventor(s) to be deleted pursuant to paragraph (b) in a nonprovisional
application, or added pursuant to paragraph (d) in a provisional
application, and those inventors that are retained in either situation,
are not required to participate in the inventorship correction, such as
by signing a statement of facts, or a new oath or declaration under
Sec. 1.63.
Section 1.48 paragraphs (a) through (e) are proposed to be revised
to define the fee required as a ``processing'' fee, to delete the
reference to a ``petition,'' and to indicate that amendment of the
application to correct the inventorship would require the filing of a
request to correct the inventorship along with other items, as set
forth in the respective paragraphs of this section. The latter change
is not one of substance but a clarification that the amendment
requirement of the statute, 35 U.S.C. 116, merely refers to the change
in Office records (face of the application file wrapper corrected,
notation on a previously submitted Sec. 1.63 oath/declaration, change
in Patent Application Location and Monitoring (PALM) data, and a
corrected filing receipt issued) that would be made upon the grant of a
Sec. 1.48 request. Thus, amendment of the inventorship in an
application is not made as an amendment under Sec. 1.121. Where there
is a need to make an actual Sec. 1.121(a)(1) amendment, such as when a
cover page of the specification recites the inventive entity, that
should also be submitted. In the absence of such an amendment, the
Office may, at its option, correct the inventor's names on the cover
sheet or in the specification. Where an application needs correction of
inventorship under Sec. 1.48 and a paper is
[[Page 53789]]
submitted with a title that does not set forth the paper as a request
under Sec. 1.48, but it is clear from the papers submitted that an
inventorship correction is desired, a request for a correction of
inventorship under Sec. 1.48 will be inferred from the papers submitted
and will be treated under Sec. 1.48.
A request for a corrected filing receipt correcting a typing or
office error in the names of the inventors will not ordinarily be
treated under Sec. 1.48. Any request to correct inventorship should be
presented as a separate paper. For example, placing a request under
Sec. 1.48(b) to correct the inventorship in the remarks section of an
amendment may cause the Office to overlook the request and not act on
it.
Paragraph (f)(1) of Sec. 1.48 is proposed to be clarified to recite
that its provision for changing the inventorship only applies if an
oath or declaration under Sec. 1.63 has not been submitted by any of
the inventors, and that submission of an oath or declaration under
Sec. 1.63 by any of the inventors is sufficient to correct an earlier
identification of the inventorship.
Example 1: An unexecuted application is filed identifying A, B,
and C as the inventors. A Sec. 1.63 declaration is also submitted
signed only by A and naming A, B, and C as the inventors. To
complete the application (Sec. 1.53(f)) a Sec. 1.63 oath or
declaration by B and C is needed. In attempting to reply to a Notice
to File Missing Parts of Application requiring the missing oath or
declaration by B and C it is discovered that D is also an inventor.
A declaration by A, B, C, and D if submitted without a petition
under Sec. 1.48(a) to correct the inventorship to A-D from A-C will
not be accepted as a reply to the Notice to File Missing Parts of
Application.
Thus, it should be clear that a first oath or declaration under
Sec. 1.63 completed by less than all the inventors initially
identified, when the oath or declaration is submitted when the
application is filed (or after), will under Sec. 1.48(f)(1) lock in the
inventorship, and the later filing of another declaration by a
different but complete inventive entity will not be effective under
Sec. 1.48(f)(1) to correct the inventorship.
Example 2: An application is filed identifying A, B, and C as
the inventors in the application transmittal letter, and a Sec. 1.63
declaration is concomitantly submitted only by A naming only A as
the sole inventor. The inventorship of the application is A (because
of the declaration of A). A later submitted Sec. 1.63 declaration by
A, B, and C would require a petition under Sec. 1.48(a) to correct
the inventorship to A, B, and C before the declaration by A, B, and
C could be accepted.
Paragraph (f)(1) of Sec. 1.48 is proposed to be amended to
reference Sec. 1.497(d) for submission of an executed oath or
declaration naming an inventive entity different from the inventive
entity set forth in the international stage when entering the national
stage under 35 U.S.C. 371 and Secs. 1.494 or 1.495.
Section 1.48(h) is proposed to be added to indicate that the
provisions of this section do not apply to reissue applications, and
referencing Secs. 1.171 and 1.175 for correction of inventorship in
reissue applications.
Section 1.48(i) is proposed to be added to reference Secs. 1.324
and 1.634 for corrections of inventorship in patents and interference
proceedings, respectively.
Section 1.48 paragraphs (a) through (i) are proposed to have titles
added to make locating the appropriate paragraph easier.
Section 1.51: Section 1.51(b) is proposed to be amended to include
a reference to Sec. 1.53(d), as a proper continued prosecution
application under Sec. 1.53(d) in which the basic filing fee has been
paid is a complete application under Sec. 1.51(b).
Section 1.52: Section 1.52(a) and (b) are proposed to be amended to
clarify the paper standard requirements for papers submitted as part of
the record of a patent application. Section 1.52(a) sets forth the
paper standard requirements for all papers which are to become a part
of the permanent records of the Office, and Sec. 1.52(b) sets forth the
paper standard requirements for the application (specification,
including the claims, drawings, and oath or declaration) and any
amendments or corrections to the application. Papers making up the
application or an amendment or correction to the application must meet
the requirements of Sec. 1.52 (a) and (b), but papers submitted for the
record that do not make up the application (e.g., a declaration under
Sec. 1.132) need not meet the requirements of Sec. 1.52(b).
The Office is proposing in Sec. 1.52(b)(6) an optional procedure
for numbering the paragraphs of the specification, but not including
the claims or the abstract. Although not required to do so, applicants
would be strongly encouraged to present, at the time of filing, each
paragraph of the specification as individually and consecutively
numbered. The presentation of numbered paragraphs at the time of filing
would facilitate the entry of amendments (in compliance with proposed
Sec. 1.121) during the prosecution of the application. If the
paragraphs of the specification are not numbered at the time of filing,
applicants would be urged, when the first response to an Office action
is submitted, to supply a substitute specification including numbered
paragraphs, consistent with the requirement of Sec. 1.121 for amending
the specification. Thereafter, amendments would be made through the use
of numbered paragraph replacement.
The proposal to include paragraph numbering is to provide a
consistent and uniform basis for the amendment practice being proposed
in Sec. 1.121 and as an aid to transitioning into total electronic
filing. The proposed rule language establishes a procedure for
numbering the paragraphs of the specification at the time of filing.
This procedure would facilitate the entry of amendments by providing a
uniform method for identifying paragraphs in the specification, thus
overcoming any differences created by word processor formatting and
pagination variations. Concurrently proposed changes to Sec. 1.121 for
amendment practice would additionally require the submission of clean
copies of numbered replacement paragraphs, which would eliminate much
of the red ink associated with hand entry of amendments and expedite
the Optical Character Recognition (OCR) scanning and reading employed
in the patent printing process, ultimately resulting in patents
containing fewer errors.
The Office will neither number the paragraphs or sections of the
specification, nor accept any instructions from applicants to do the
same.
The proposed procedure for paragraph numbering, in the interest of
uniformity, encourages applicants to use four digit Arabic numerals
enclosed within square brackets and including leading zeroes as the
first element of the paragraph. The numbers and brackets should be
highlighted in bold (e.g., [0001], [0002]), and should appear as the
first part of the paragraph immediately to the right of the left
margin. Approximately four character spaces should follow the bracketed
number before the beginning of the actual text of the paragraph.
Paragraph (or section) headers, such as ``Description of the
Invention'' or ``Example 3,'' are not considered part of any paragraph
and should not be numbered. Nontext elements, such as tables,
mathematical formulae, etc., are considered part of the paragraph
around or above the element, and should not be numbered separately. All
portions of any nontext elements should be kept from extending to the
left margin.
Response to Comments: Although paragraph numbering (as it appears
in proposed Sec. 1.52) was not an independent topic in the Advance
Notice, the proposal did appear in conjunction with the replacement
[[Page 53790]]
paragraph concept as part of Topic 13. While there was some opposition
to paragraph numbering in the comments received relative to Topic 13 as
being burdensome and inconsistent with the requirements of other
countries, the Office proposes to move forward with this concept as the
most effective plan currently under consideration for identifying
paragraphs of the specification. The JPO and EPO have already begun to
use paragraph numbering in their application and publication
processing.
Some of the comments received in response to Topic 13 suggested
identification of paragraphs by page and line number. Inasmuch as the
Office proposal must be consistent with future electronic requirements,
this suggestion of identification by page and line number could not be
adopted in that fixed pages do not exist in documents created on a
computer. Page and line numbering are affected by font size, line
spacing and formatting and can vary between different hardware and
software components. Once each paragraph has been individually
identified and tagged with a number, however, all future processing of
the application, whether by paper or electronic version, may be done
uniformly and accurately by both the Office and the applicant.
Section 1.52(b)(7) is proposed to be added to provide that if
papers submitted as part of the application do not comply with
Sec. 1.52 (b)(1) through (b)(5), the Office may require the applicant
to provide substitute papers that comply with Sec. 1.52(b)(1) through
(b)(5), or the Office may convert the papers submitted by applicant
into papers that do comply with Sec. 1.52(b)(1) through (b)(5) and
charge the applicant for the costs incurred by the Office in doing so
(Sec. 1.21(j)).
Section 1.52(c) is proposed to be amended to provide that: (1)
Alterations to the application papers must (rather than ``should'') be
made before the oath or declaration is signed; (2) a substitute
specification (Sec. 1.125) is required if the application papers do not
comply with Sec. 1.52(a) and (b) due to interlineations, erasures,
cancellations or other alterations of the application papers; and (3)
if an oath or declaration is a copy of the oath or declaration from a
prior application, the application for which such copy is submitted may
contain alterations that do not introduce matter that would have been
new matter in the prior application.
Section 1.52(d) is proposed to be amended to provide separately for
nonprovisional applications and provisional applications filed in a
language other than English. Section 1.52(d)(1) is proposed to be added
to provide that: (1) If a nonprovisional application is filed in a
language other than English, an English language translation of the
non-English-language application, a statement that the translation is
accurate, and the processing fee set forth in Sec. 1.17(i) are
required; and (2) if these items are not filed with the application,
applicant will be notified and given a period of time within which they
must be filed in order to avoid abandonment. Section 1.52(d)(2) is
proposed to be added to provide that: (1) If a provisional application
is filed in a language other than English, an English language
translation of the non-English-language provisional application will
not be required in the provisional application; but (2) if a
nonprovisional application claims the benefit of such provisional
application, an English-language translation of the non-English-
language provisional application and a statement that the translation
is accurate must be supplied if the nonprovisional application is
involved in an interference (Sec. 1.630), or when specifically required
by the examiner.
Section 1.53: Section 1.53(c)(1) is proposed to be amended to
clearly provide that the cover sheet required by Sec. 1.51(c)(1) may be
an application data sheet (Sec. 1.76).
Section 1.53(c)(2) is proposed to be amended for clarity and to
refer to ``the processing fee set forth in Sec. 1.17(q)'' for
consistency with the proposed amendment to Sec. 1.17(q).
Section 1.53(d)(4) is proposed to be amended to eliminate the
reference to a petition under Sec. 1.48 for consistency with the
proposed amendment to Sec. 1.48. Section 1.53(d) is also proposed to be
amended to add a new Sec. 1.53(d)(10) to provide a reference to
Sec. 1.103(b) for requesting a limited suspension of action in a
continued prosecution application (CPA) under Sec. 1.53(d).
Section 1.53(e)(2) is proposed to be amended to require that a
petition under Sec. 1.53(e) be accompanied by the fee set forth in
Sec. 1.17(h), regardless of whether the application is filed under
Sec. 1.53(b), Sec. 1.53(c), or Sec. 1.53(d). While provisional
applications filed under Sec. 1.53(c) are not subject to examination
under 35 U.S.C. 131 (35 U.S.C. 111(b)(8)), petitions under Sec. 1.53(e)
in provisional applications under Sec. 1.53(c) are as burdensome as
petitions under Sec. 1.53(e) in nonprovisional applications under
Sec. 1.53(b) or Sec. 1.53(d). Therefore, it is appropriate to charge
the petition fee set forth in Sec. 1.17(h) for petitions under
Sec. 1.53(e) in applications filed under Sec. 1.53(b), Sec. 1.53(c), or
Sec. 1.53(d).
Section 1.53(f) and (g) are proposed to be amended for clarity and
to include a reference to ``or reissue'' in the paragraph heading to
clarify that the provisions of Sec. 1.53(f) apply to all nonprovisional
applications, which include continuation, divisional, and continuation-
in-part applications, as well as reissue applications and continued
prosecution applications. Section 1.53(f) is also proposed to be
amended to provide that if applicant does not pay one of either the
basic filing fee or the processing and retention fee set forth in
Sec. 1.21(l) during the pendency of the application (rather than within
one year of the mailing of a Notice to File Missing Parts of
Application), the Office may dispose of the application.
Section 1.55: Section 1.55(a) is proposed to be amended to refer to
``the processing fee set forth in Sec. 1.17(i)'' for consistency with
the proposed amendment to Sec. 1.17(h) and (i). See discussion of the
proposed amendment to Sec. 1.17.
Section 1.55(a)(2)(i) through (iii) is proposed to clarify the
current Office practice concerning when the claim for priority and the
certified copy of the foreign application specified in 35 U.S.C. 119(b)
must be filed. Specifically Sec. 1.55(a)(2)(i) clarifies current Office
practice that in an application filed under 35 U.S.C. 111(a) that the
Office requires the claim for priority and the certified copy of the
foreign application be filed before a patent is granted. Section
1.55(a)(2)(ii) clarifies current Office practice that in an application
that entered the national stage of an international application after
compliance with 35 U.S.C. 371, the time limits set in the PCT and the
Regulations under the PCT control the time limit for making the claim
for priority, while the certified copy of the foreign application must
be filed before the patent is granted if the certified copy was not
filed in accordance with the PCT and the Regulation under the PCT.
Section 1.55(a)(2)(iii) clarifies current Office practice that the
Office may require both the claim for priority and certified copy of
the foreign application be filed at an earlier time than in
Secs. 1.55(a)(2)(i) or 1.55(a)(2)(ii) under certain circumstances.
Section 1.55(a)(2)(iv) is also proposed to provide that priority
claims and documents may be submitted after payment of the issue fee
but with no further review by the Office other than placement in the
application file. Changes to the patent printing process will
dramatically reduce the period between the date of issue fee payment
and the date a patent is issued. See
[[Page 53791]]
Filing of Continuing Applications, Amendments, or Petitions after
Payment of Issue Fee, Notice, 1221 Off. Gaz. Pat. Office 14 (April 6,
1999); and Patents to Issue More Quickly After Issue Fee Payment,
Notice, 1220 Off. Gaz. Pat. Office 42 (March 9, 1999). Thus, it is now
difficult for the Office to match a petition containing a priority
claim or certified priority document filed after payment of the issue
fee with an application file, and determine whether the applicant has
met the conditions of 35 U.S.C. 119(a)-(d) to make the priority claim,
before the date the application will issue as a patent. Nevertheless,
it is also undesirable to prohibit applicants from filing a priority
claim or certified priority document between the date the issue fee is
paid and the date a patent is issued. Therefore, the Office will permit
applicants to file a priority claim or certified priority document
(with the processing fee set forth in Sec. 1.17(i)) between the date
the issue fee is paid and the date a patent is issued. The Office will,
however, merely place such submission in the application file but will
not attempt to determine whether the applicant has met the conditions
of 35 U.S.C. 119(a)-(d) to make the priority claim nor include the
priority claim information in the text of the patent. In such a
situation (as is currently the situation when a petition under
Sec. 1.55 is granted), the patent will not contain the priority claim
information, and the patentee may request a certificate of correction
under 35 U.S.C. 255 and Sec. 1.323 at which point a determination of
entitlement for such priority will be made.
Section 1.56: Section 1.56 is proposed to be amended to add a new
Sec. 1.56(e) to provide that in any continuation-in-part application,
the duty under Sec. 1.56 includes the duty to disclose to the Office
all information known to the person to be material to patentability
which became available between the filing date of the prior application
and the national or PCT international filing date of the continuation-
in-part application. Section 1.63(e) currently requires that the oath
or declaration in a continuation-in-part application acknowledge that
the duty under Sec. 1.56 includes the duty to disclose to the Office
all information known to the person to be material to patentability (as
defined in Sec. 1.56(b)) which became available between the filing date
of the prior application and the national or PCT international filing
date of the continuation-in-part application. Thus, the examiner must
object to an oath or declaration in a continuation-in-part that does
not contain this statement. By amending Sec. 1.56 to expressly provide
that the duty under Sec. 1.56 includes this duty, an acknowledgment of
the duty of disclosure under Sec. 1.56 is an acknowledgment of this
duty in a continuation-in-part application, and an express statement to
that effect in the oath or declaration will no longer be required.
Section 1.59: Section 1.59 is proposed to be amended to refer ``the
fee set forth in Sec. 1.17(h)'' for consistency with the proposed
amendment to Sec. 1.17(h) and (i). See discussion of the proposed
amendment to Sec. 1.17.
Section 1.63: Section 1.63 is proposed to be amended for clarity
and simplicity. Section 1.63(a) is proposed to be amended to set forth
the oath or declaration requirements that are requirements of 35 U.S.C.
115 (and thus cannot be waived by the Office pursuant to Sec. 1.183).
Specifically, Sec. 1.63(a) is proposed to be amended to provide that an
oath or declaration filed under Sec. 1.51(b)(2) as a part of a
nonprovisional application must: (1) Be executed (i.e., signed) in
accordance with either Sec. 1.66 or Sec. 1.68; (2) identify each
inventor and country of citizenship of each inventor; and (3) state
that the person making the oath or declaration believes the named
inventor or inventors to be the original and first inventor or
inventors of the subject matter which is claimed and for which a patent
is sought.
Section 1.63(b) is proposed to be amended to provide that in
addition to meeting the requirements of Sec. 1.63(a), the oath or
declaration must also: (1) Identify the application to which it is
directed; (2) state that the person making the oath or declaration has
reviewed and understands the contents of the application, including the
claims, as amended by any amendment specifically referred to in the
oath or declaration; and (3) state that the person making the oath or
declaration acknowledges the duty to disclose to the Office all
information known to the person to be material to patentability as
defined in Sec. 1.56. These requirements are currently located at
Sec. 1.63(a)(2), (b)(1), and (b)(3).
Section 1.63(c) is proposed to provide that an applicant may
provide identifying information either in an application data sheet
(Sec. 1.76) or in the oath or declaration. Permitting applicants to
provide such identifying information in an application data sheet
(rather than in the oath or declaration) should result in: (1) An
increase in the use of application data sheets; and (2) a decrease in
the need for supplemental oaths or declarations (providing omitted
information) for applications in which an application data sheet was
submitted.
Section 1.63(e) is proposed to be amended to eliminate the
requirement that an oath or declaration in a continuation-in-part
application state that the person making the oath or declaration also
acknowledge that the duty under Sec. 1.56 includes the duty to disclose
to the Office all information known to the person to be material to
patentability (as defined in Sec. 1.56(b)) which became available
between the filing date of the prior application and the national or
PCT international filing date of the continuation-in-part application.
See discussion of the proposed amendment to Sec. 1.56(e).
Section 1.64: Section 1.64 is proposed to be amended to also refer
to any supplemental oath or declaration (Sec. 1.67). In addition,
Sec. 1.64(b) is proposed to be amended to provide that if the person
making the oath or declaration is the legal representative, the oath or
declaration shall state that the person is the legal representative and
shall also state the citizenship, residence and mailing address of the
legal representative.
Section 1.67: Section 1.67(a) is proposed to be amended to also
refer to Sec. 1.162, and to provide that if the earlier-filed oath or
declaration complied with Sec. 1.63(a), the Office may permit the
supplemental oath or declaration to be made by fewer than all of the
inventors or by an applicant other than the inventor.
Section 1.67(c) is proposed to be deleted as unnecessary because it
simply reiterates other provisions of the rules of practice. If the
application was altered after the oath or declaration was signed
(except as permitted by Sec. 1.52(c)), Sec. 1.52(c) requires a
supplemental oath or declaration under Sec. 1.67. If the oath or
declaration was signed in blank (while incomplete), without review
thereof by the person making the oath or declaration, or without review
of the specification, including the claims, the oath or declaration
does not meet the requirements of Sec. 1.63. In this situation,
Sec. 1.67(a) requires a supplemental oath or declaration.
Section 1.72: Section 1.72(a) is proposed to be amended to state
``[u]nless the title is supplied in an application data sheet
(Sec. 1.76)'' to clarify that the title is not requested to be a
heading on the first page of the specification if supplied in an
application data sheet. Section 1.72(b) is proposed to be amended to
provide that ``[t]he abstract in an application filed under 35 U.S.C.
111 may not exceed 150
[[Page 53792]]
words in length'' to harmonize with PCT guidelines.
Section 1.76: A new Sec. 1.76 is proposed to be added to provide
for the inclusion of an application data sheet in an application.
Section 1.76(a) is proposed to: (1) Explain that an application data
sheet is a sheet or set of sheets containing bibliographic information
concerning the associated patent application, which is arranged in a
specified format; and (2) when an application data sheet is provided,
the application data sheet becomes part of the application. While the
use of an application data sheet is optional, the Office would prefer
its use to help facilitate the machine reading of this important
information. Entry of the information in this manner is more timely and
accurate than the current practice of presenting the information on
numerous other documents. Applicants benefit from the use of
application data sheets by being provided with more accurate and timely
filing receipts, by reducing the time required to collect bibliographic
information and by having such information printed on the granted
patents. The applicant also benefits by receiving an official notice of
the receipt of papers from the Office at an earlier stage of the
processing.
Section 1.76(b) is proposed to provide that bibliographic data as
used in Sec. 1.76(a) includes: (1) applicant information; (2)
correspondence information; (3) specified application information; (4)
representative information; (5) domestic priority information; and (6)
foreign priority information. Section 1.76(b) as proposed also reminds
applicants that the citizenship of each inventor must be provided in
the oath or declaration under Sec. 1.63 (as is required by 35 U.S.C.
115) even if this information is provided in the application data
sheet.
Applicant information includes the name, residence, mailing
address, and citizenship of each applicant (Sec. 1.41(b)). The name of
each applicant must include the family name, and at least one given
name without abbreviation together with any other given name or
initial. If the applicant is not an inventor, this information also
includes the applicant's authority (Secs. 1.42, 1.43 and 1.47) to apply
for the patent on behalf of the inventor.
Correspondence information includes the correspondence address,
which may be indicated by reference to a customer number, to which
correspondence is to be directed (see Sec. 1.33(a)).
Application information includes the title of the invention, the
total number of drawing sheets, whether the drawings are formal, any
docket number assigned to the application, the type (e.g., utility,
plant, design, reissue utility, provisional) of application.
Application information also indicates whether the application
discloses any significant part of the subject matter of an application
under a secrecy order pursuant to Sec. 5.2 of this chapter (see
Sec. 5.2(c)).
Representative information includes the registration number of each
practitioner, or the customer number, appointed with a power of
attorney or authorization of agent in the application. Section
1.76(b)(4) is proposed to state that providing this information in the
application data sheet does not constitute a power of attorney or
authorization of agent in the application (see Sec. 1.34(b)). This is
because the Office does not expect the application data sheet to be
executed (signed) by the party (applicant or assignee) who may appoint
a power of attorney or authorization of agent in the application.
Domestic priority information includes the application number
(series code and serial number), the filing date, the status (including
patent number if available), and relationship of each application for
which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c).
Providing this information in the application data sheet constitutes
the specific reference required by 35 U.S.C. 119(e) or 120. While the
rules of practice (Sec. 1.78(a)(2) or Sec. 1.78(a)(4)) require that
this claim or specific reference be in the first line of the
specification the patent statute requires that a claim to the benefit
of (specific reference to) a provisional (35 U.S.C. 119(e)(1)) or
nonprovisional (35 U.S.C. 120) be in the application. Since the
application data sheet (if provided) is considered part of the
application, the specific reference to an earlier filed provisional or
nonprovisional application in the application data sheet meets the
``specific reference'' requirement of 35 U.S.C. 119(e)(1) or 120.
Foreign priority information includes the application number,
country, and filing date of each foreign application for which priority
is claimed, as well as any foreign application having a filing date
before that of the application for which priority is claimed. Providing
this information in the application data sheet constitutes the claim
for priority as required by 35 U.S.C. 119(b) and Sec. 1.55(a). The
patent statute (35 U.S.C. 119(b)) does not require that a claim to the
benefit of a prior foreign application take any particular form.
Section 1.76(c) as proposed indicates that inconsistencies between
the information in the application data sheet (if provided) and the
oath or declaration under Sec. 1.63 will be resolved in favor of the
application data sheet. This is because the application data sheet (and
not the oath or declaration) is intended as the means by which
applicants will provide information to the Office. Section 1.76(c) is
also proposed to provide that a supplemental application data sheet may
be submitted to correct or update information provided in a previous
application data sheet.
Section 1.77: Section 1.77(a) is proposed to be separated into
sections 1.77(a) and 1.77(b). New Sec. 1.77(a) would list the order of
the papers in a utility patent application, including the proposed
application data sheet (see Sec. 1.76). New Sec. 1.77(b) would list the
order of the sections in the specification of a utility patent
application. Current Sec. 1.77(b) is proposed to be redesignated
1.77(c).
Section 1.78: Section 1.78(a)(2) is proposed to be amended to
provide that the specification must contain or be amended to contain a
specific reference required by 35 U.S.C. 120 in the first sentence
following the title, unless the reference is included in an application
data sheet. Section 1.78(a)(4) is proposed to be amended to provide
that the specification must contain or be amended to contain a specific
reference required by 35 U.S.C. 119(e)(1) in the first sentence
following the title, unless the reference is included in an application
data sheet. See discussion of proposed Sec. 1.76(b)(5).
Section 1.78(c) is proposed to be amended for consistency with
Sec. 1.110 and for clarity.
Section 1.84: Section 1.84 is proposed to be amended to delete some
requirements that are more stringent than the requirements of the PCT,
while retaining the provisions related to acceptance of color drawings/
photographs which are, at this time, more lenient.
The Office is proposing to delete the petition requirements in
Sec. 1.84(a)(2) and Sec. 1.84(b)(1) and the requirement for three
copies of black and white photographs. This change would make Sec. 1.84
consistent with current Office practice. See Interim Waiver of 37 CFR
Sec. 1.84(b)(1) for Petitions to Accept Black and White Photographs and
Advance Notice of Change to M.P.E.P. Sec. 608.02, Notice, 1213 Off.
Gaz. Pat. Office 108 (August 4, 1998); and Interim Waiver of 37 CFR
1.84(b)(1) for Petitions to Accept Black and White Photographs Filed
with only One Set of Photographs, Notice,
[[Page 53793]]
1211 Off. Gaz. Pat. Office 34 (June 9, 1998). In addition, paragraphs
(d), (h), (i), (j), (k)(1) and (3), (m), (n), (p), (r), (s), and (x) of
Sec. 1.84 are proposed to be deleted for simplification. These
paragraphs describe characteristics of patent drawings which are
desirable because they assist in clearly communicating the disclosed
invention, but which are not necessary for the reproduction of
drawings. The requirements set forth in paragraphs (d), (h), (i), (j),
(k)(l) and (3), (m), (n), (p), (r), (s), and (x) of Sec. 1.84 will
continue to be described in the MPEP and/or publications such as the
Guide for the Preparation of Patent Drawings.
Section 1.84(g) is proposed to be changed to 1.84(f). In addition,
the dimensions of sight on 21.6 cm by 27.9 cm (8\1/2\ by 11 inch)
drawing sheets are proposed to be changed 17.0 cm by 24.4 cm (6\3/4\ by
9\5/8\ inches) to standardize the sight with that for A4 paper.
In Topic 5 of the Advance Notice the Office proposed to harmonize
patent drawing standards with those of the PCT. The Office received a
number of comments. The majority of the comments welcomed a single
standard for patent drawings in PCT and United States patent
applications so long as applicants do not lose their ability to file
color drawings/photographs or to use 8\1/2\ by 11 paper. Some expressed
confusion about the exact requirements of the PCT and its regulations.
Furthermore, many commented that drawing standards should be enforced
in the same manner, and that drawings should not be objected to in the
national stage if they were not objected to in the international stage.
In this vein, several argued that only the patent examiners should be
allowed to review the patent drawings. If the examiners could
understand the invention from the drawings, no draftsperson should be
permitted to make ``petty objections'' unrelated to how well the
invention is disclosed in the drawings. On the other hand, several
people commented that the standards for PCT applications are too low,
since many PCT applications are published with illegible drawings or
drawings that do not adequately communicate the invention. Several
observed that the PCT rules do not permit color drawings or photographs
and stated that the requirements of the two systems should be the same.
Others observed that the PCT rules essentially require formal drawings
on filing, which is contrary to U.S. practice, and argued that such a
policy would be unnecessarily expensive to applicants.
Careful consideration of the comments and the business practice of
drawing review has led the Office to conclude that, in general,
drawings should only be objected to by the Office if they cannot be
reproduced or there is an error in the drawings. The Office should
accept drawings that would be acceptable under the PCT rules, but
should not copy PCT rules solely for the sake of uniformity. A proper
application of a low standard for drawing review will result in fewer
drawings being objected to and fewer corrected or formal drawings being
filed after allowance of a patent application. This should reduce
delays during the printing cycle (during which time the Office waits
for corrected or formal drawings to be filed). Applicants who submit
informal drawings on filing will be unlikely to encounter a
draftsperson's objection because few drawings will fail to meet the
reduced standards. Any formal drawings filed after allowance which were
not required by the Office, however, are unlikely to be included in the
printed patent because the printing process will have begun before
payment of the issue fee and the formal drawings are unlikely to catch
up to the application file in time to be included in the printed
patent.
Patents printed with high quality drawings look better and should
be easier to understand. Applicants interested in having their patents
printed with good quality drawings should be motivated by their own
interests to submit good quality drawings. However, the Office should
not spend resources to insist upon high-quality drawings when lesser
quality drawings would suffice to communicate the invention and to meet
the printer's requirements. Accordingly, if applicants submit drawings
which are of inferior quality, but acceptable to the Office, applicants
should not be surprised when a patent issues with those very same
drawings.
Section 1.84 is also proposed to provide for a fee for processing
and printing patents with color drawings or photographs in color rather
than in black and white. The petition fee set forth in
Sec. 1.84(a)(2)(i) is proposed to be deleted and a fee commensurate
with the Office costs of handling and printing color photographs will
be charged instead.
Many comments were received welcoming printing of patents in color,
and stating that applicants would be willing to pay any required fees
for their patent to be printed in color.
When filing international applications under the PCT, applicants
must remember to consult the PCT and its regulations regarding
requirements of drawings, especially the provisions related to
amendment or correction of drawings. While color drawings are permitted
in U.S. patent applications, submission of color drawings in
international applications is not permitted and may cause difficulties
in international processing which cannot be overcome. Black and white
drawings submitted after the international filing date to overcome
objections to color drawings may be refused if they do not comply with
the requirements of PCT Rule 91.1, which could result in significant
loss to applicants.
Section 1.85: Section 1.85 is proposed to be amended to make the
period for filing corrected or formal drawings in response to a Notice
of Allowability a non-extendable period.
In Topic 7 of the Advance Notice the Office proposed to reduce the
time for filing corrected or formal drawings after the mailing date of
the ``Notice of Allowability'' from three months to one month. In
response, many comments were received which explained that one month
was too short of a period of time in which to make the necessary
changes to the drawings. In addition, many stated that having two
different time periods running against the applicant makes docketing of
the required replies too complicated. Several comments received
indicated that corrected or formal drawings should be required at the
same time as the issue fee, with no opportunity for the drawings to be
filed later. Others indicated that, while one month was too short of a
period of time, two months would be adequate.
After consideration of the comments and the Office's business goal
of decreasing cycle time for all inventions, the Office is proposing to
amend Sec. 1.85(c) to provide that corrected or formal drawings must be
filed within three months of the date of mailing of the ``Notice of
Allowability'' requiring such drawings, and that no extensions of time
under Sec. 1.136(a) or (b) will be permitted. Refusing to permit an
extension of time when formal or corrected drawings cannot be filed
within the three-month period and sufficient cause exists for an
extension may appear to be harsh. A strong policy is considered
necessary, however, to ensure that the drawings are filed within the
set period. The Office has also considered that many applicants are in
the habit of filing formal or corrected drawings with an extension of
time and may, out of habit and ignorance of the rule change, continue
to do so. These applicants will have to file a petition to revive under
Sec. 1.137(b) as the failure to timely file any formal drawings that
were required will cause the application to go abandoned.
[[Page 53794]]
The Office is taking positive steps to make it easier for
applicants to submit drawings which will be approved. See the changes
proposed in Sec. 1.84. Thus, the instances where formal drawings will
be required when the case is allowable will be reduced as more drawings
will be approved as submitted.
If the amendment to Sec. 1.85 is adopted, the time period for
filing any required supplemental oath or declaration in compliance with
Sec. 1.63 will be set to be the same non-extendable time period of
three months from the date of mailing of the Notice of Allowability
requiring the supplemental oath or declaration.
Section 1.91: Section 1.91(a)(3)(i) is proposed to be amended to
refer to ``[t]he fee set forth in Sec. 1.17(h)'' for consistency with
the changes to Sec. 1.17(h) and Sec. 1.17(i). See discussion of changes
to Sec. 1.17(h) and Sec. 1.17(i).
Section 1.96: The Office indicated in the Advance Notice that the
submission of computer program listings on microfiche placed a burden
on applicants and the Office, and that it was considering changes to
Sec. 1.96 to permit machine readable computer program listings to be
submitted on electronic media in lieu of microfiche. See Changes to
Implement the Patent Business Goals, 63 FR at 53510-12, 1215 Off. Gaz.
Pat. Office at 99-100.
Section 1.96 is proposed to be amended to provide for voluminous
program listings to be submitted on archival electronic media instead
of microfiche. Section 1.96(b) is proposed to be amended to limit
computer program listings that may be submitted as drawings or part of
the specification to computer program listings that are contained on
one sheet.
Under Sec. 1.96 as proposed, any computer program listing may, and
any computer program listing that would be contained on more than one
sheet must, be submitted as a computer program listing appendix
pursuant to Sec. 1.96(c) (subject to the ``transitional'' practice
discussed below).
Section 1.96(c) is specifically proposed to provide that a
``computer program listing appendix'' be submitted on a Compact Disk-
Read Only Memory (CD-ROM) or Compact Disk-Recordable (CD-R). A CD-ROM
is the only practical electronic medium of archival quality under the
current standards of the National Archives and Records Administration
(NARA). See 36 CFR 1228.188(c) and (d) and 1234.30. The Office
considers CD-R to be an electronic medium having an archival quality
equivalent to the archival quality of CD-ROM. The information so
submitted will be considered a ``computer program listing appendix''
(rather than a microfiche appendix). Section 1.96(c) will continue to
require a reference at the beginning of the specification as itemized
in Sec. 1.77(b)(4). As with a microfiche appendix, the contents of the
``computer program listing appendix'' on a CD-ROM or CD-R will not be
printed with the published patent, but will be available at the Office
on a medium to be specified by the Office. The contents of a ``computer
program listing appendix'' on a CD-ROM or CD-R may not be amended
pursuant to Sec. 1.121, but must be submitted on a substitute CD-ROM or
CD-R. Section 1.96(c) does not apply to international applications
filed in the United States Receiving Office.
Section 1.96(c)(1) is proposed to provide that the availability of
the computer program will be directly analogous to that of the
microfiche. The Office will make the contents available for inspection,
for example at electronic workstations in the Public Search Room. If
needed, multiple CD-ROMs or CD-Rs may be used for the submissions
pertaining to a single patent application, but each application with an
electronic medium appendix must be supplied with its own copy of the
medium or media. Section 1.96(c)(2) is proposed to provide submission
requirements that refer to the relevant NARA standards in 36 CFR Part
1228 for submissions of Government electronic records to NARA. Section
1.96(c)(2) is also proposed to provide that a CD-ROM or CD-R ``computer
program listing appendix'' must be labeled with the following
information: (1) The name of each inventor (if known); (2) title of the
invention; and (3) the docket number used by the person filing the
application to identify the application (if applicable).
Even after adoption of this proposed change to Sec. 1.96, the
Office will continue to accept a computer program listing that complies
with current Sec. 1.96 (i.e., a computer program listing contained on
ten or fewer sheets as drawings or part of the specification, or a
``computer program listing appendix'' on microfiche) for some period of
time (e.g., two years) that will be specified in any final rule notice
adopting this proposed change to Sec. 1.96. Should these provisions be
adopted, conforming changes may be made in the regulations to
accommodate international applications in the national stage.
Comments: The comments (almost without exception) were supportive
of this proposal. Comments specifically indicated that this proposal
was ``long overdue,'' and that the proposal should include provisional
applications and other technologies including chemical and
manufacturing processes requiring precise computer control. The
comments provided advice including the concepts of safeguarding the
information from alteration, of making the public access and examiner
access easy, and of assuring the submissions are readable. The only
negative comment was an expression of disbelief that the Office was
equipped to handle electronic media submissions.
Response: The Office is proposing changes to Sec. 1.96 to provide
for voluminous program listings to be submitted on archival electronic
media instead of microfiche. The effective date of the proposed change
will be linked to the development and deployment of electronic systems
at the Office to capture, store and retrieve information submitted on
archival electronic media in a manner to assure the integrity and
authenticity of the information, and provide its display as needed for
the Office, the patentee (and applicants), and the public.
The proposed change to Sec. 1.96 and Sec. 1.821 et seq. (discussed
below) contemplated for computer program listings and sequence listings
would eliminate the need for submissions of hard to handle and
reproduce microfiche computer program listings and voluminous paper
sequence listings. To focus specifically on the Office's difficult
paper handling problem, and to simplify this project so it can be
deployed in a short time span, only the computer program listings and
the nucleotide and/or amino acid sequences would be accepted in machine
readable format.
Relationship to Office automation plans: These changes being
proposed are understood to be the initial steps towards solutions to
difficult Office paper-handling problems. The Office is planning for
full electronic submission of applications and related documents by
fiscal year 2003. The changes proposed in this notice are an initial
step in that direction, permitting certain application and related
material to be submitted on an acceptable archival medium.
Sections 1.97 and 1.98: The Office proposes to go forward, at the
present time, with only one aspect of the plan for information
disclosure statement (IDS) revision that was set forth in the Advance
Notice: the proposal to require that an IDS include a legible copy of
each cited pending U.S. application. The proposed IDS rules are also
being revised for consistency and grammar, and to tie up a number of
loose ends, as will be discussed below.
Other than the proposed requirement for a copy of each cited U.S.
application,
[[Page 53795]]
the IDS proposals as set forth in Topics 9 and 10 of the Advance Notice
have been withdrawn. Accordingly, there is no proposal at this time for
a statement of personal review nor for a unique description as were
called for in the Advance Notice, and the amount of citations that may
be submitted is not presently proposed to be limited. The Office issued
a notice of hearing and request for public comments to obtain views of
the public on issues associated with the identification and
consideration of prior art during patentability determinations. See
Notice of Public Hearing and Request for Comments on Issues Related to
the Identification of Prior Art During the Examination of a Patent
Application, Notice of Hearing and Request for Public Comments, 64 FR
28803 (May 27, 1999), 1223 Off. Gaz. Pat. Office 91 (June 15, 1999).
Pursuant to that notice, the Office held public hearings on June 28th
and July 14th of 1999 on the issues. These prior art issues are related
to the changes presently being considered by the Office to impose
requirements/limits on IDS submissions. Thus, it would be premature to
go forward with a comprehensive new IDS alternative until the results
of the hearings and comments submitted in response to the notice have
been appropriately evaluated. It is contemplated that any new IDS
alternatives will be advanced in any rulemaking notice which may result
from the evaluation of the results of the public hearings and comments
submitted in response to the notice.
The Office recently issued guidelines for reviewing requests for
reexaminations and ongoing reexaminations for compliance with In re
Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997).
See Guidelines for Reexamination of Cases in View of In re Portola
Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), Notice,
64 FR 15346 (March 31, 1999), 1223 Off. Gaz. Pat. Office 124 (June 22,
1999). These guidelines are pertinent to the consideration given IDS
citations, stating:
Where the IDS citations are submitted but not described, the
examiner is only responsible for cursorily reviewing the references.
The initials of the examiner on the PTOL-1449 indicate only that
degree of review unless the reference is either applied against the
claims, or discussed by the examiner as pertinent art of interest,
in a subsequent office action.
See Guidelines for Reexamination of Cases in View of In re Portola
Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), 64 FR
at 15347, 1223 Off. Gaz. Pat. Office at 125 (response to comment 6).
The public should thus be aware that full consideration of all
citations submitted in compliance with Secs. 1.97 and 1.98 is not
required on the part of the examiner. The examiner performs a cursory
review of each IDS citation to the extent that he/she needs in order to
determine whether he/she will evaluate the citation further. If the
cursory review reveals the citation not to be useful, the examiner will
simply stop looking at it. The examiner will be understood to have
provided full consideration only where the examiner applies the IDS
citation as a reference against the claims in the application being
examined, or otherwise deems the citation useful to the examination and
discusses that use. Further, the applying of the IDS citation as a
reference, or the discussion of the use of the citation (where the
citation is not applied as a reference), must be in writing:
[T]he Office cannot presume that a prior art reference was
previously relied upon to reject or discussed in a prior PTO
proceeding if there is no basis in the written record to so conclude
other than the examiner's initials or a check mark on a PTO 1449
form, or equivalent, submitted with an information disclosure
statement. Thus, any discussion of prior art must appear on the
record of a prior related PTO proceeding.
See Guidelines for Reexamination of Cases in View of In re Portola
Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), 64 FR
at 15349, 1223 Off. Gaz. Pat. Office at 127 (endnote 7).
It is also noted that the Office intends to issue a notice dealing
with printing of IDS citations on the face of the patent. Currently,
all IDS citations which are listed on a PTO-1449 form, or an equivalent
of the PTO-1449, and are initialed by the examiner, are printed on the
face of the patent together with art cited by the examiner. In the
notice, the public would be informed that IDS citations printed on the
face of the patent will be distinguished from citations made by the
examiner, using a separate printing field, markings, or some other
means.
Specifics of the contemplated IDS revisions: The specifics of the
contemplated revisions to Sec. 1.97 and Sec. 1.98 will now be discussed
as to the one Advance Notice proposed change that is being retained, as
to newly advanced changes, and as to Advance Notice proposed changes
that are being dropped. The discussion is presented in the following
twelve parts which separately address identifiable portions of the
subject matter: (1) Deletion of unassociated text; (2) items cited in
continued prosecution applications (CPAs); (3) filing the IDS before
the mail date of final Office actions; (4) required fee and statement
for IDS submission made after close of prosecution; (5) newly cited
item in foreign office must be cited for the first time; (6) IDS that
does not comply with either Sec. 1.97 or Sec. 1.98; (7) copies of cited
U.S. applications required; (8) how to identify a cited U.S.
application; (9) citation was previously made in parent application;
(10) grammar and consistency; (11) aspects of Topic 9 in the Advance
Notice not being pursued in this notice; and (12) comments generally
directed at revision of the IDS rules.
Part (1) Deletion of Unassociated Text
The phrase ``whichever event occurs last'' appears at the end of
paragraph (b)(3) of Sec. 1.97, and thus it physically appears to apply
only to paragraph (b)(3). In reality, ``whichever event occurs last''
should be associated with each of paragraphs (b)(1), (b)(2) and (b)(3).
Accordingly, it is proposed to delete ``whichever event occurs last''
from paragraph (b)(3), and to insert ``within any one of the following
time periods'' in paragraph (b). This would eliminate the unassociated
text ``whichever event occurs last'' from paragraph (b)(3), while, at
the same time, making it clear that the IDS will be entered if it is
filed within any of the time periods of paragraphs (b)(1), (b)(2) or
(b)(3). Additionally, paragraph (c) of Sec. 1.97 is proposed to be
revised, in conformance with paragraph (b), to delete ``whichever
occurs first.''
Part (2) Items Cited in Continued Prosecution Applications (CPAs)
Section 1.97(b)(1) is proposed to be amended to insert ``other than
an application under Sec. 1.53(d)'' to eliminate the three-month window
for filing an IDS in a CPA. Because of the streamlined processing for
CPAs, it is expected that the examiner will issue an action on the
merits before three months from the filing date. Under the current
rule, should an examiner issue an action on the merits prior to three
months from the filing date and an IDS is submitted after the Office
action is mailed but within the three-month window, the examiner must
redo the action to consider the IDS. A CPA is a continuing application,
and, thus, applicant should have had ample opportunity to file an IDS.
In addition, as pointed out below, it is being proposed to revise
Sec. 1.103 to provide for a request of a three-month suspension of
action upon filing of a CPA; thus, in an unusual instance where a need
to file an IDS newly arises, applicant can request the three-month
suspension based upon that need. In
[[Page 53796]]
view of the above, it is deemed appropriate to require that any IDS be
filed before filing the CPA, or concurrently with the filing of the
CPA.
Part (3) Filing the IDS Before the Mail Date of Final Office Actions
Paragraph (c) of Sec. 1.97 would be revised to include, in addition
to a final action under Sec. 1.113 and a notice of allowance under
Sec. 1.311, other Office actions which close prosecution in the
application. This would typically occur when an Office action under Ex
parte Quayle, 1935 Dec. Comm'r Pat. 11 (1935), is issued. No reason is
seen for including only two of the types of actions which close
prosecution (that under Sec. 1.113, and that under Sec. 1.311), while
not including other types.
Part (4) Required Fee and Statement for IDS Submission Made After Close
of Prosecution:
Paragraph(d)(3) of Sec. 1.97 would be revised to delete reference
to the fee as a petition fee under Sec. 1.17(i) and instead make
reference to the fee as an IDS fee under Sec. 1.17(p). There is no
reason for the reduced fee of $130 that is currently recited by
paragraph (d), as opposed to the larger $240 IDS fee set forth in
paragraph (c). On the contrary, the paragraph (d) submission is made
later in the prosecution than that of paragraph (c), and thus
interrupts the process at least as much as the paragraph (c)
submission. Therefore, the fee for the paragraph (d) submission should
be at least as much the $240 IDS fee required for the paragraph (c)
submission.
In addition, paragraph(d)(2) of Sec. 1.97 has been deleted in its
entirety, to remove all reference to the filing of a petition. A
petition unduly complicates the matter, while there is really no issue
to be decided other than the entry of the IDS, which issue is
ordinarily decided by the patent examiner. As it is contemplated to be
amended, paragraph (d) of Sec. 1.97 would simply require (for an IDS
submitted after the close of prosecution and before payment of the
issue fee) the combination of the IDS fee and a statement as is
specified in paragraph (e) of Sec. 1.97.
Part (5) Newly Cited Item in Foreign office Must Be Cited for the First
Time
Section 1.97(e)(1) is proposed to be amended to specify that an
item first cited in a communication from a foreign patent office in a
counterpart foreign application not more than three months prior to the
filing of the statement is entitled to special consideration for entry
into the record. An item first cited by a foreign patent office (for
example) a year before in a communication from that foreign patent
office, which item is once again cited by another foreign patent office
within three months prior to the filing of the statement in the Office,
is not entitled to special consideration for entry, since applicant was
aware of the item a year ago, yet did not submit that item.
Part (6) IDS That Does Not Comply With Either Sec. 1.97 or Sec. 1.98
Paragraph (i) of Sec. 1.97 is proposed for revision to delete
``filed before the grant of a patent.'' This phrase is surplusage since
there can be no information disclosure statement after the grant of the
patent. A submission of information items after the patent grant is a
``prior art citation'' which is made, and treated, under Sec. 501.
Paragraph (i) of Sec. 1.97 would also be revised to make it a
little clearer as to what sections must be complied with, and to change
the paragraph (i) plural recitation of information disclosure
statements to a singular recitation, which would be in conformance with
the rest of Sec. 1.97.
Part (7) Copies of Cited U.S. Applications Required
The Office proposes to go forward, at the present time, with one
aspect of the Advance Notice IDS proposal. Section 1.98(a)(2) would be
revised to require that an IDS include a legible copy of each cited
pending U.S. application. Thus, the current exception to the
requirement for supplying citation copies set forth in
Sec. 1.98(a)(2)(ii) for pending U.S. applications would be eliminated.
The Office noted, in the Advance Notice, its concern that current
Sec. 1.98 does not require applicant to supply copies of U.S.
application citations. It was pointed out that there is a real burden
on the examiner to locate and copy one or more pending applications,
thus delaying the examination of the application being examined (in
which the U.S. application citation is made). Further, copying a cited
application has the potential for interfering with the processing and
examination of the cited application itself. Accordingly,
Sec. 1.98(a)(2) is proposed for revision to require, for each U.S.
application citation listed, that applicant submit either a copy of the
application specification, including the claims, and any drawing of the
application, or as a minimum, the portion of the application which
caused it to be listed, including any claims directed to the portion
which caused it to be listed. This proposed revision would,
additionally, be a benefit to the public since the copy of the
application would be readily available upon issuance of the application
as a patent.
Comments Received in Response to the Advance Notice: In response to
the Advance Notice, a significant number of comments were in favor of
adopting the requirement for copies of U.S. applications, and indicated
that there should be no problem with requiring submission of copies.
Comments noted that the submission of copies of cited applications will
speed up the application process. It will decrease the time burden on
examiners in obtaining and copying such applications. It will also
avoid interruption of the examination of the application being cited,
as otherwise, papers in the original file of the cited application must
be removed and copied in order to be reviewed. Even further, it was
noted that this revision of the rule should reduce risks of application
papers in the cited cases being misplaced or lost.
A number of comments were concerned that submission of copies of
multiple U.S. patent applications in an IDS will overwhelm the Office
with an increased volume of paper. Some comments opposed the
requirement for copies of U.S. patent applications on the grounds that
it will place a difficult burden on counsel/applicants to provide the
Office with a copy of each cited U.S. application. An example was
given, where the client has an extensive patent portfolio distributed
among several patent firms (e.g., the result of licensing agreements or
other conflicts of interest which require different counsel to be
responsible for different cases in a portfolio). In such a scenario,
counsel may not be able to receive/view copies of related applications
due to constraints imposed by applicable ethical rules and thus may not
be able to supply copies. Another example was given, where a
practitioner may be aware that a pending application is relevant and
may not have access to that pending application, since it is that of
another party.
With respect to these grounds for opposition to the requirement, it
should initially be noted that citation of another application in an
IDS is relatively rare and, as such, should not significantly increase
the volume of paper the Office must deal with. Also, in those few
situations where U.S. applications are cited and counsel cannot provide
copies of the applications, a petition could be submitted for waiver of
the rules, and the petition would be decided on a case-by-case basis.
In addition, if a practitioner is not permitted, due to ethical
considerations, to review material that may be of significance in
[[Page 53797]]
the prosecution of a particular application, it is not clear why the
practitioner would be involved in the prosecution of that application.
As to the comment relating to lack of access by practitioner, such lack
of access may result from the fact that the application to be cited is
that of a third party and is not available to the public, which
includes the practitioner or the practitioner's client; the patent
rules should not be a means whereby the Office will provide
practitioner with a copy of a pending U.S. application merely because
the practitioner or the client thereof has come across the application
number.
It was suggested in the comments that review of the Office file is
better than review of a supplied copy; i.e., it is more useful for the
examiner to review the Office file, which is more comprehensive, than
to review the copies that applicant would send. As to this concern, the
benefits of eliminating the Office's burden of obtaining and copying
such applications, as well as avoiding interruption of examination of
the cases being cited, are deemed to be greater than the possible
benefit associated with the review of the Office file. If the submitted
copy of a cited U.S. patent application is found by the examiner to be
of sufficient relevance for further review of the application, at that
point in time, the examiner can expend the extra effort to obtain and
review the file. On the other hand, for the majority of the cited
applications that are not worthy of looking into further, this extra
expenditure of time and effort will be saved.
The comments further urged that if a cited U.S. application
supplied with an IDS is later abandoned, a petition to expunge the copy
of the cited application must be submitted to remove the application
from the file, and the Office would then need to consider if the U.S.
application is immaterial to patentability of the invention such that
it can be expunged (see MPEP 724.05). This concern is noted; however,
it should be the exception rather than the rule. The time expended in
deciding the relatively few petitions to expunge that are filed should
more than be counterbalanced by the reduction of the burden to obtain
and copy applications and the avoidance of interruption of examination
of the application being cited. In addition, even under the current
system where application-citation copies are not required, a petition
to expunge is still needed to expunge the listed application number, in
cases where the content of that application citation is sufficiently
identified in the record. Thus, the increase in petitions to expunge
(generated by the proposal) should be very small indeed.
It was suggested that the examiner's time in obtaining U.S.
application files could be saved by providing clerical support in the
groups, which would function to assist the examiner with obtaining the
cited application files. This, however, would be a large drain on
Office resources, which are limited, and would still result in
undesirable interruptions of examination of the application being
cited.
It was suggested that, instead of requiring copies of all cited
applications with the IDS, the Office should reserve the right to later
request copies from applicant where specific application files are not
easily available. As to this suggestion, it is first noted that it
would not at all reduce the time that the cited application would be
away from the examiner of the cited application, and thus does not deal
with the problem of interruption of the examination of the application
being cited. In addition, making a requirement from applicant for the
application after the IDS is received (for difficult-to-obtain cases)
slows the examination process since the examiner must wait for the
copy, while if the copy were submitted with the IDS, the examiner could
immediately begin the examination. Furthermore, a large expenditure of
time would have been made in finding out that the application file is
not easily available. Even after the application is obtained and
reviewed, it is, at times, found that some portion is missing. At that
time, the effort would already have been expended, and only then would
the copy of the application first be required from applicant.
Part (8) How To Identify a Cited U.S. Application
Section 1.98(b) is proposed to be amended to require that each
listed U.S. application to be identified by the inventors, application
number and filing date.
Part (9) Citation Was Previously Made in Parent Application
Paragraph (d) of Sec. 1.98 is proposed to be revised to make it
clear that the mere submission of the citation in the parent
application (by applicant) is not enough to take advantage of paragraph
(d) when submitting the citation in the ``child'' application. A copy
of the citation must have been submitted in the parent, and the
submission of the citation made in the parent must have complied with
Sec. 1.97, except for an application filed under Sec. 1.53(d).
A situation might arise where applicant would establish continuity
with an existing application having listed U.S. applications for which
copies were not supplied (under the current practice, i.e., before the
changes proposed in this notice would go into effect), and applicant
would thereby take advantage of paragraph (d) of Sec. 1.98 to have the
cited applications reviewed in the newly filed ``continuation'' (i.e.,
filed after the changes proposed in this notice would go into effect)
without submitting copies. To deal with this possibility, paragraph (d)
of Sec. 1.98 would be revised to require that where the cited U.S.
application (the listed information) was not cited ``by * * * the
Office'' (i.e., not cited by the examiner in the parent), the
information submission made in the prior application must have been in
compliance with paragraphs (a) through (c) of Sec. 1.98 as they are
drafted in this notice. In other words, if the copy of the application
papers (for the cited application) was not present in the parent, it
must now be submitted in the continuation.
It might be argued that because a copy of the citation was
submitted in the parent, paragraph (d) is satisfied even though the
submission of the citation made in the parent did not comply with
Sec. 1.97. Paragraph (d) of Sec. 1.98 as proposed for revision deals
with this argument.
Part (10) Grammar and Consistency
All changes which are proposed in Secs. 1.97 and 1.98 other than
those explicitly identified above would be made for grammar and
consistency within the sections. This includes, for example, deleting
the last sentence of Sec. 1.98(c) and inserting it as the last sentence
of Sec. 1.98(a)(3) where it more appropriately belongs.
Part (11) Aspects of Topic 9 in the Advance Notice Not Being Pursued
Further
Statement of Personal Review: In the Advance Notice, it was
proposed that the IDS submitter be required to state that he/she
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 Office in the IDS. This statement of
personal review would have to be made by a registered practitioner
(where applicant is represented by a practitioner), or by at least one
of the inventors (where applicant is not represented).
A large majority of the comments (in response to the Advance
Notice) opposed requiring the statement of
[[Page 53798]]
personal review as proposed in the Advance Notice. Opposition was based
upon the following: (1) The required statement of personal review as
proposed in the Advance Notice would greatly increase prosecution
costs; (2) the impact of the cost burden imposed would be extremely
hard on small entities and independent inventors, and may be contrary
to the Office's Independent Inventor Initiative; (3) the proposed
review by the practitioner (where applicant is represented) will result
in a duplication of the prior efforts of inventors, in-house counsel
(not representing the inventor before the Office), or foreign
associates who initially provided the information (the practitioner
must ``second guess'' the inventor, etc. as to whether the citation is
relevant and how it is relevant; (4) the proposed practitioner review
would provide new grounds for allegations of inequitable conduct
(whether the subjective requirements of the personal review statement
were complied with), and the possibility of malpractice as to the
review conducted; (5) the statement of review is already inherent in
any IDS (Sec. 10.18(b)(2), Sec. 1.56), and an explicit statement is not
needed; (6) the proposed practitioner review would raise problems as to
attorney-client relations, e.g., conflict of interest, and potentially
a breach of attorney-client privilege as to the review of the documents
made; and (7) the statement of personal review would not be effective
(it will not prevent marginally related and unrelated citations from
being submitted), since one could make a cursory personal review of a
citation, reach no decision, and simply submit the citation, with
minimal comment.
There was some limited support for adoption of the proposal
requiring a statement of personal review (at least in part); however, a
substantial majority of the comments expressed opposition to the
statement of personal review. The Office has taken note of the
duplication of review effort, the potential increased costs, the
subjectivity of the statement, the resulting potential for charges of
inequitable conduct, and the conflict-of-interest problems that could
be brought about by going forward with the proposed requirement for a
statement of personal review. Accordingly, a decision has been made to
not go forward with the requirement for a statement of personal review
at this time.
Citations To Be Uniquely Described: The Advance Notice proposed
that applicant be required to compare each of the citations to each of
the independent claims, or specific dependent claim(s), in a meaningful
way 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). Description
would not be required for any ten citations, and for citations in a
corresponding application by a foreign patent office, PCT international
searching authority, or PCT international preliminary examining
authority, provided the search report or office action in the English
language is also submitted.
The comments in opposition to the unique description proposal were
both numerous and varied as to the reasons for opposition. Reasons for
opposition are summarized: (1) A potential for adverse future
litigation implications, and for admissions which otherwise need not be
made, would result from the proposal; (2) the proposal would impose an
unreasonable cost and time burden upon the public; (3) the impact of
the burden imposed would be extremely hard on small entities and
independent inventors, and may be contrary to the Office's Independent
Inventor Initiative; (4) the proposed description of the citations is
unduly burdensome, and the many possible description permutations
impose an impossible task (description would be needed to cover all
claim meanings, art settings and potential art combinations, and would
need to be updated each time the claims are amended); (5) reasonable
minds will differ on which portions of a citation are significant,
which citations are cumulative, and the relevant teachings of any
particular citation; (6) the appropriate standard for determining if an
item should be considered is whether the item is material, not whether
it is cumulative (so, explanation of why the citation is not cumulative
should not be imposed); (7) the description proposal discriminates
against foreign applications and U.S. practitioners representing
foreign applicants, since the U.S. practitioner, who is not the author
of the case, is not completely familiar with the technology; (8) the
proposed unique description requirement is not fair since examiners do
not have this burden; (9) experience has shown that the submitted
description may not be a useful tool to the examiner, and some
examiners do/did not even read the descriptions; (10) the description
proposal would provide a ``role reversal'' where applicant does the
examiner's job of evaluating the citations but not as well, i.e., the
proposal appears to force applicant's representative to ``play''
examiner, review each of the citations, and essentially make a
rejection for the examiner in an IDS; (11) there is no statute or case
law that requires the applicant to comment on citations submitted to
satisfy the duty to disclose (thus, applicant should not be charged
with that responsibility); (12) it should take no longer for the
examiner to evaluate IDS art than the time it takes him/her to review
art when searching through shoes of patents; (13) no data/facts have
been presented to show a need for the description of the citations;
(14) the pre-set number of ten ``free'' citations (without description)
proposed in the Advance Notice is an artificial and arbitrary number,
and it would be difficult to decide which ten to choose (it encourages
gamesmanship and planning in selecting which citations to describe);
(15) the proposed selection of an arbitrary ten free citations opens up
a ``Pandora's Box'' regarding inferences as to the particular ten
citations selected; and (16) the number ``ten'' for the free citations
is too small, and the number actually needed depends upon many factors
surrounding the application such as complexity, technology, and number
of claims.
Conclusion: The overwhelming majority of the comments expressed
opposition to the unique description proposal of the Advance Notice.
The Office has taken note of the large burden that would be imposed on
applicants and attorneys by the description proposal of the Advance
Notice, the potential for future adverse consequences stemming from
doing the description or the choice not to describe, and the
applicant's role reversal that would be imposed by the description
proposal. Accordingly, a decision has been made to not go forward with
the unique description proposal at this time.
Suggestions Regarding Topic 9: A substantial number of suggestions
were submitted for modification of the Advance Notice Topic 9 proposal
as to the required statement of personal review and the unique
description requirement and its exceptions. It was also widely
suggested that the Office charge fees for consideration and evaluation
of an excessive number of submitted citations. These suggestions have
not been accepted in view of the decision not to go forward with the
Topic 9 proposal other than the requirement for copies of applications
(as discussed above).
Part (12) Comments Generally Directed at Revision of the IDS Rules
Some comments on the Advance Notice IDS proposals were not directed
to specific aspects of Topics 9 and 10,
[[Page 53799]]
but commented on the IDS proposals on the whole. Those comments noted:
(1) No reason nor incentive has been provided to the public to give up
the current IDS system; (2) the proposed Advance Notice IDS changes do
not serve the public nor applicant's interest, and would eliminate a
significant number of application filings each year; (3) the current
IDS submission rules work well and should not be changed (the Office
should not over-react by adopting a drastic cure that would be more
harmful than the disease); (4) it is not an excessive burden on the
Office to review large numbers of submitted documents, but actually
helps the process (this issue was previously visited during the
promulgation of the current Sec. 1.98, and the Office found that
examiners' review of all submitted documents would not constitute an
excessive burden); (5) the IDS proposals set forth in the Advance
Notice will not be effective to discourage submissions to the point
that the Office problem is solved since the duty of disclosure remains
in effect, and on the other hand, the proposals will discourage pre-
searches and other mechanisms for disclosure that strengthen patents;
(6) the proposal imposes significant new limitations on the
practitioner's ability to freely disclose information to the Office due
to cost accountability to clients and potential adverse litigation
consequences; (7) the Office desire to reduce application processing
time via the IDS proposals would be expected to reduce the quality of
examination, and that is an undesirable trade-off; (8) the IDS
proposals conflict with world patent harmonization (the U.S. is the
only patent-granting body in the world that requires citations of
relevant art, and it runs counter to world patent harmonization that
applicant's burden in this regard should now be increased by the
proposals to further impose requirements on applicant not required by
other patent granting bodies); (9) the IDS proposals are complicated;
and (10) the Office's IDS problem is at least partly generated by MPEP
2004 which calls for citation of even questionable or marginal items.
Summary: The overall support for the IDS proposals as set forth in
the Advance Notice was relatively limited, and, for the most part,
where support was advanced, it was advanced as a qualified support. On
the other hand, a large majority of the comments opposed the Advance
Notice IDS proposals, often stating their objection to the proposals
using strong language. Accordingly, the IDS proposals as set forth in
Topics 9 and 10 of the Advance Notice have been withdrawn at this time
(with the exception of the proposed requirement for a copy of each
cited U.S. application, which did have some support and is being
retained for reasons discussed both below and above).
The present IDS proposal addresses the major concerns of the
comments in that it does not call for a statement of personal review,
nor a unique description, as were called for in the Advance Notice. It
also does not propose to limit the number of citations that may be
submitted. As noted, the present IDS proposal does in fact retain one
aspect of the Advance Notice IDS proposal--applicant would be required
to provide a copy of the specification including the claims (and any
drawing) of each U.S. application cited in the IDS, or the portion of
the application which caused it to be listed, including any claims
directed to that portion of the application. Any increase in
applicant's burden due to this one retained aspect should be minor
since: (1) The citation of U.S. applications represents a very small
minority of documents cited, and (2) the original of the application is
usually readily available to the applicant as a related application
(and where not so, a petition can be filed requesting that a copy not
be required in that isolated and rare case). The need for any such
minor increase in burden is, however, heavily outweighed by the many
benefits obtained. As pointed out above, the presence of the
application copies with the IDS will (1) decrease the time burden on
examiners in obtaining and copying the applications, (2) avoid
interruption of examination of the cited cases, (3) reduce risks of
application papers in the actual file of the cited applications being
misplaced or lost, and (4) be advantageous to the public as such copies
being in the application file would be readily available to the public
upon issuance of the application as a patent.
The presently proposed IDS rules also include a number of revisions
for consistency and grammar, and to tie up a number of loose ends as
discussed above. These proposed revisions should not, however,
represent any significant burden on the public.
Section 1.102: Section 1.102(d) is proposed to be amended to refer
to ``the fee set forth in Sec. 1.17(h)'' for consistency with the
changes to Sec. 1.17(h) and Sec. 1.17(i). See discussion of changes to
Sec. 1.17(h) and Sec. 1.17(i).
Section 1.103: Section 1.103 is proposed to be revised for clarity
and to provide a procedure for obtaining a limited suspension of action
in a continued prosecution application (CPA) under Sec. 1.53(d). The
heading of Sec. 1.103 is proposed to be amended to add the phrase ``by
the Office'' to clarify that this section does not apply to requests
for suspension of action (or reply) by the applicant.
Section 1.103(a) is proposed to provide for suspension of action
for cause. Specifically, Sec. 1.103(a) is proposed to provide that on
request of the applicant, the Office may grant a suspension of action
under this paragraph for good and sufficient cause. Section 1.103(a) is
also proposed to provide that: (1) The Office will not suspend action
if reply by applicant to an Office action is outstanding; and (2) any
petition for suspension of action under Sec. 1.103(a) must specify a
period of suspension not exceeding six months. Section 1.103(a) is
proposed to specifically provide that any petition for suspension of
action under Sec. 1.103(a) must also include: (1) A showing of good and
sufficient cause for suspension of action; and (2) the fee set forth in
Sec. 1.17(h), unless such cause is the fault of the Office. If an
additional suspension period is desired applicant may submit another
petition under Sec. 1.103(a) requesting same.
Section 1.103(b) is proposed to provide for a limited suspension of
action in a continued prosecution application (CPA) under Sec. 1.53(d).
Section 1.103(b) is specifically proposed to provide that on request of
the applicant, the Office may grant a suspension of action under
Sec. 1.103(b) in a CPA for a period not exceeding three months. Section
1.103(b) is proposed to specifically provide that any request for
suspension of action under Sec. 1.103(b) must be filed with the request
for a CPA and include the processing fee set forth in Sec. 1.17(i).
Section 1.103(c) is proposed to provide that the Office will notify
applicant if the Office suspends action on an application on its own
initiative.
Section 1.103(d) is proposed to provide for suspension of action
for public safety or defense. Section 1.103(b) is specifically proposed
to provide that the Office may suspend action by order of the
Commissioner if the following conditions are met: (1) The application
is owned by the United States; (2) publication of the invention may be
detrimental to the public safety or defense; and (3) the appropriate
department or agency requests such suspension.
Section 1.103(e) is proposed to provide that the Office will
suspend action for the entire pendency of an application if the Office
has accepted a request to publish a statutory invention registration in
the application, except
[[Page 53800]]
for purposes relating to patent interference proceedings under Subpart
E.
Section 1.105: Section 1.105 would be a new section containing
paragraphs (a) through (c), relating to requirements by the Office that
certain information be supplied.
Paragraph (a)(1) of Sec. 1.105 would provide examiners or other
Office employees explicit authority to require submission of such
information as may be reasonably necessary for the Office to properly
examine or treat a matter being addressed in an application under 35
U.S.C. 111 or 371, in a patent, or in a reexamination proceeding.
Abandoned applications would also fall within the scope of the rule to
provide for handling of petition matters. New Sec. 1.105 is simply an
explicit recitation of inherent authority that exists pursuant to 35
U.S.C. 131 and 132, and continues the practice of providing explicit
authority to Office employees as was done with the Board of Patent
Appeals and Interferences under Sec. 1.196(d) and with trademark
examiners under Sec. 2.61.
The use of the authority under proposed paragraph (a)(1) of
Sec. 1.105 would be encouraged so that the Office can perform the best
quality examination possible. The authority is not intended to be used
by examiners without a reasonable basis, but to address legitimate
concerns that may arise during the examination of an application or
consideration of some matter. Any abuse in implementation of the
authority, such as a requirement for information that is not in fact
reasonably necessary to properly examine the application, would be
addressed by way of petition under Sec. 1.181. For example, the Office
may, under appropriate circumstances, desire the authority to ask for:
1. The existence of any particularly relevant commercial data base
that could be searched for a particular aspect of an invention, in
certain technologies where pertinent prior art is highly likely to be
found in a commercial data base.
2. Information that may not be required to be submitted by
Sec. 1.56, but that the examiner would deem useful on an application-
by-application basis (which could be done prior to the application
being taken up for examination, such as when the application is
assigned to an examiner): (a) Submission of any published articles,
authored by any of the inventors, that relate to a claimed invention,
and (b) any non-patent literature or patents that were used to draft
the application or in the invention process, such as where the
invention is an improvement over the prior information.
3. A reply to a matter raised in a protest under Sec. 1.291.
4. An explanation of technical material in a publication, such as
one of the inventors' publications.
5. The identification of changes made in a reformatted continuing
application filed under Sec. 1.53(b).
6. A mark-up for a continuation-in-part application showing the new
matter where there is an intervening reference.
7. Comments on a new Federal Circuit decision that appears on
point.
The proposed Sec. 1.105 is not intended to change current Office
practice in regard to questions of fraud under Sec. 1.56, and inquiries
relating thereto would not be authorized. See MPEP 2010.
Paragraph (a)(2) of Sec. 1.105 would provide a safety net by
specifically recognizing that where the information required to be
submitted is unknown and/or is not available, a complete response to
the requirement for information would be a statement to that effect.
There would be no requirement for a showing that in fact the
information was unknown or not available such as by way of disclosing
what was done to attempt to satisfy the requirement for information.
Nonetheless, it should be understood that a good faith attempt must be
made to obtain the information and a reasonable inquiry made once the
information is requested even though the Office will not look behind
the answer given. An Office employee should not continue to question
the scope of a specific answer merely because it is not as complete as
the Office employee desires.
Example: In a first action on the merits of an application with an
effective filing date of May 1, 1999, the examiner notes the submission
of a protest under Sec. 1.291 relating to a public sale of the subject
matter of the invention and requests a date of publication for a
business circular authored by the assignee of the invention, which
circular was submitted with the protest. It is expected that the
attempt to respond to the requirement for information would involve
contacting the assignee who would then make a good faith attempt to
determine the publication date of the circular. The response to the
requirement states that the publication date of the circular is
``around May 1, 1998.'' As ``around May 1, 1998'' covers dates both
prior and subsequent to May 1, 1998, a prima facie case under 35 U.S.C.
102(b) would not exist. The examiner cannot require that the response
be more specific or hold the response to be incomplete based on such
reply. The examiner can, however, in the next Office action seek
confirmation that this is the most specific date that was obtained or
can be obtained based on a reasonable inquiry being made if that is not
already clear from the response to the initial requirement for
information.
Paragraph (b) of Sec. 1.105 would provide that the requirement for
information may be included in an Office action, which would include a
restriction requirement if appropriate, or can be sent as a separate
letter independent of an Office action on the merits such as when the
information required is critical to an issue or issues that need to be
addressed in a subsequent Office action. It is expected that due to
cycle time concerns the use of a requirement for information
independent of an Office action on the merits would be limited.
Paragraph (c) of Sec. 1.105 would provide that a response to a
requirement for information or failure to respond thereto would be
governed by Secs. 1.135 and 1.136. Note the Example provided in the
discussion of paragraph (a)(2) of Sec. 1.105.
Section 1.111: The heading of Sec. 1.111 is proposed to be amended
to clarify that it applies to a reply by the applicant or patent owner
to a non-final Office action. Section 1.111 is proposed to be amended
to: (1) Provide a reference to Sec. 1.104 concerning the first
examination of an application; (2) change the reference to Sec. 1.135
and Sec. 1.136 (for time for reply to avoid abandonment) from paragraph
(c) to paragraph (a); and (3) add the sentence ``[a] second or
subsequent supplemental reply will be entered unless disapproved by the
Commissioner.''
The Office indicated in the Advance Notice that it was considering
charging a handling fee for all supplemental replies. The Office was
specifically considering replacing the current practice of allowing
unlimited supplemental replies to be filed without requiring any fee
with a new practice in which a handling fee would be charged for each
supplemental reply that is filed after the initial reply to an Office
action has been filed.
While some comments supported this proposed change, a majority of
comments opposed charging a handling fee for supplemental replies. The
reasons given for opposition to the proposal included arguments that:
(1) The proposal was simply a revenue-raising proposition; (2) the
primary cause of supplemental replies crossing with an Office action is
Office mail room delay and paper processing
[[Page 53801]]
delays; (3) applicants may need to file a supplemental amendment due to
later-discovered prior art. The comments also suggested that: (1) The
PALM system be enhanced to flag supplemental replies to avoid issuing
an Office action until any supplemental reply is matched with the
application; and (2) examiners call applicants two weeks prior to
acting on an application to determine whether a supplemental reply has
been filed.
This notice does not propose changing the rules of practice to
charge a handling fee for supplemental replies. Based upon the comments
and its own evaluation, the Office has concluded that the proposed
handling charge would not discourage the filing of supplemental
replies, but would only result in such replies being filed with the
handling fee.
The Office, however, is proposing a change to the rules of practice
to provide that the entry of second or subsequent supplemental replies
may be disapproved by the Commissioner. It is expected that disapproval
of a second or subsequent supplemental amendment will be delegated to
the appropriate Technology Center Group Director under MPEP 1002.02(c).
As most supplemental replies cause only a minor inconvenience to the
Office, the Office is not inclined to propose a change that would
affect the ability to file a supplemental reply when such is warranted.
There are, however, some applicants who routinely file preliminary or
supplemental amendments that place a significant burden on the Office
by: (1) Canceling the pending claims and adding many new claims; (2)
adding numerous new claims; (3) being filed approximately two months
from the date the original reply was filed (i.e., when the examiner is
likely to be preparing an Office action responsive to the original
reply). These applicants also tend to be those having many applications
simultaneously on file in the Office.
The provision that the entry of a second or subsequent supplemental
reply may be disapproved by the Commissioner would give the Office the
latitude to permit entry of those supplemental replies that do not
unduly interfere with the preparation of an Office action, but would
also give the Office the latitude to refuse entry of those supplemental
replies that do unduly interfere with the preparation of an Office
action. The factors that would be taken into consideration when
deciding whether to disapprove entry of such a supplemental reply are:
(1) The state of preparation of an Office action responsive to the
initial reply; and (2) the nature of the change to the pending claims
that would result from entry of the supplemental reply. That is, if the
examiner has devoted a significant amount of time to preparing an
Office action before such a supplemental amendment is matched with the
application, it would be appropriate for the Office to disapprove entry
of the supplemental amendment. If, however, such a supplemental
amendment merely cancels claims (as opposed to canceling claims and
adding claims, or simply adding claims), it would not be appropriate to
disapprove entry of such a supplemental amendment even if the examiner
has devoted a significant amount of time to preparing an Office action
before such a supplemental amendment is matched with the application.
Obviously, if a supplemental reply is received in the Office
(Sec. 1.6) after the mail date of the Office action responsive to the
original reply and is not responsive to that Office action, the Office
will continue the current practice of not mailing a new Office action
responsive to that supplemental reply, but simply advising the
applicant that the supplemental reply is non-responsive to such Office
action and that a responsive reply (under Sec. 1.111 or 1.113 as the
situation may be) must be timely filed to avoid abandonment. Put
simply, the mailing of an Office action responsive to the original
reply will continue to cut off the applicant's right to have any later-
filed supplemental reply considered by the Office.
The proposed change to Sec. 1.111(a) in this notice: (1) Is not a
revenue-raising proposition; and (2) will not affect the vast majority
of supplemental replies. It will only apply to a supplemental reply if:
(1) the applicant has already filed one (a first) supplemental reply;
and (2) the supplemental reply is not matched with the application
until after the examiner has devoted a significant amount of time to
preparing an Office action.
The suggestion regarding enhancement to the PALM system is being
taken under advisement. Such an enhancement, however, would not
discourage the filing of the supplemental replies that place a burden
on the Office, but would only inform the examiner that such a reply has
not yet been matched with the application. In the absence of a
procedure for disapproving the entry of such burdensome replies, the
so-enhanced PALM system would simply advise the Office not to act on
the affected application for extended periods of time, which would have
an adverse effect on the Office's efforts to reduce cycle time.
The suggestion that examiners call applicants two weeks prior to
acting on an application to determine whether a supplemental reply has
been filed is not practicable. The Office issues hundreds of thousands
of Office actions each year. Thus, implementing this suggestion would
require the Office (examiners) to make hundreds of thousands of
additional telephone calls to applicants each year.
Section 1.112: Section 1.112 is proposed to be amended to provide a
reference to Sec. 1.104 concerning the first examination of an
application. Section 1.112 is proposed to be amended to add the phrase
``or an appeal (Sec. 1.191) has been taken'' to the last sentence. This
addition is to clarify that once an appeal has been taken in an
application, any amendment is subject to the provisions of Sec. 1.116
(b) and (c), even if the appeal is in reply to a non-final Office
action.
Section 1.115: A new Sec. 1.115 is proposed to be added to provide
for preliminary amendments. The Office indicated in the Advance Notice
that it was considering charging a handling fee for certain preliminary
amendments. The Office was specifically considering replacing the
current practice of allowing unlimited preliminary amendments to be
filed without requiring any fee with a new practice in which a handling
fee would be charged for each preliminary amendment filed later than a
specified time period (one month) after the filing date of the
application.
While some comments supported this proposed change, a majority of
comments opposed charging a handling fee for certain preliminary
amendments. The reasons given for opposition to the proposal included
arguments that: (1) The proposal was simply a revenue-raising
proposition; (2) the primary cause of preliminary amendments crossing
with an Office action is Office mail room delay and paper processing
delays; (3) applicants should not be forced to file preliminary
amendments and other papers until after receiving a filing receipt and
application number; and (4) applicants may need to file a preliminary
amendment due to later-discovered prior art. The comments also
suggested that: (1) The PALM system be enhanced to flag preliminary
amendments to avoid issuing an Office action until the preliminary
amendment is matched with the application; (2) examiners call
applicants two weeks prior to acting on an application to determine
whether a preliminary amendment has been filed; and (3) applicants
filing a continued prosecution application under Sec. 1.53(d)
[[Page 53802]]
(CPA) be given a few weeks to file any necessary preliminary amendment.
The Office is not proposing a change to the rules of practice to
charge a handling fee for certain preliminary amendments. Based upon
the comments and its own evaluation, the Office has concluded the
proposed handling charge would not discourage the filing of preliminary
amendments, but would only result in such amendments being filed with
the handling fee. The Office, however, is proposing a change to the
rules of practice to provide that the entry of certain preliminary
amendments may be disapproved by the Commissioner. See the discussion
of Sec. 1.111 for an explanation of the need for this change to the
rules of practice.
Section 1.115(a) as proposed provides that a preliminary amendment
is an amendment that is received in the Office (Sec. 1.6) on or before
the mail date of the first Office action under Sec. 1.104. That is, an
amendment received in the Office (Sec. 1.6) after the mail date of the
first Office action is not a preliminary amendment, even if it is non-
responsive to the first Office action and seeks to amend the
application prior to the first examination.
Section 1.115(b) is proposed to provide that a preliminary
amendment will be entered unless disapproved by the Commissioner, and
also provide that a preliminary amendment will not be disapproved if it
is filed no later than: (1) Three months from the filing date of an
application under Sec. 1.53(b); (2) the filing date of a continued
prosecution application under Sec. 1.53(d); or (3) three months from
the date the national stage is entered as set forth in Sec. 1.491 in an
international application. Thus, the entry of a preliminary amendment
will not be disapproved under Sec. 1.115(b) if it is filed within one
of the periods specified in Sec. 1.115(b)(1) through (b)(3).
Nevertheless, if a ``preliminary'' amendment is filed after the mail
date of the first Office action, it is not a preliminary amendment
under Sec. 1.115(a). If a (``preliminary'') amendment is received in
the Office (Sec. 1.6) after the mail date of the first Office action
and is not responsive to the first Office action, the Office will
continue the current practice of not mailing a new Office action
responsive to that amendment, but simply advising the applicant that
the amendment is non-responsive to first Office action and that a
responsive reply must be timely filed to avoid abandonment. Put simply,
the mailing of the first Office action will continue to cut off the
applicant's right to have any later-filed preliminary amendment
considered by the Office, even if that amendment is filed within the
time periods specified in proposed Sec. 1.115(b).
Section 1.115(c) is proposed to provide that the time periods
specified in Sec. 1.115(b) are not extendable.
It is expected that disapproval of a preliminary amendment filed
outside the period specified in Sec. 1.115(b) will be delegated to the
appropriate Technology Center Group Director under MPEP 1002.02(c). The
provision that the entry of a preliminary amendment filed outside the
period specified in Sec. 1.115(b) may be disapproved by the
Commissioner would give the Office the latitude to permit entry of
those preliminary amendments filed outside the period specified in
Sec. 1.115(b) that do not unduly interfere with the preparation of an
Office action, but would also give the Office the latitude to refuse
entry of those preliminary amendments filed outside the period
specified in Sec. 1.115(b) that do unduly interfere with the
preparation of an Office action. As with the proposed change to
Sec. 1.111(a), the factors that would be taken into consideration when
deciding whether to disapprove entry of such a preliminary amendment
are: (1) The state of preparation of the first Office action; and (2)
the nature of the change to the pending claims that would result from
entry of the preliminary amendment.
The proposed change to Sec. 1.115 in this notice: (1) Is not a
revenue-raising proposition; and (2) will not affect the vast majority
of preliminary amendments. It will only apply to a preliminary
amendment if: (1) The preliminary amendment is filed outside the time
periods specified in Sec. 1.115(b)(1) through (b)(3); and (2) the
preliminary amendment is not matched with the application until after
the examiner has devoted a significant amount of time to preparing an
Office action. The suggestions that the PALM system be enhanced and
that examiners call applicants two weeks prior to acting on an
application are addressed above in the discussion of Sec. 1.111(a).
In an application filed under 35 U.S.C. 111(a) and Sec. 1.53(b) or
a PCT international application entering the national stage under
Sec. 1.491, the time periods specified in Sec. 1.115(b) should give the
applicant time between the mailing of a filing receipt and the mailing
of a first Office action to file any necessary preliminary amendment.
CPA practice under Sec. 1.53(d), however, is designed to provide a
first Office action sooner than if the application had been filed as a
continuation under Sec. 1.53(b) (or under former Secs. 1.60 or 1.62).
See Continued Prosecution Application (CPA) Practice, Notice, 1214 Off.
Gaz. Pat. Office 32, 32 (September 8, 1998). An applicant filing a CPA
under Sec. 1.53(d) who needs time to prepare a preliminary amendment
should file a request for suspension of action under Sec. 1.103(b) with
the CPA request. See discussion of Sec. 1.103(b).
Section 1.121: Section 1.121 is proposed to be amended to change
the manner of making amendments in non-reissue applications. The
proposed practice to amend the specification by replacement of a
section or paragraph (or claim) would eliminate the need for the Office
to enter changes by handwriting in red ink. This change would result in
a specification (including claims) in clean-copy form that can be
Optical Character Recognition (OCR) scanned during the patent
publishing process. The proposed practice also requires the applicant
to provide a marked-up copy of the changed section or paragraphs (or
claims), using the applicant's choice of marking system, which will aid
the examiner in ascertaining the changes to the specification.
The proposed change to Sec. 1.121 involves concurrent changes to
Sec. 1.52(b) (see discussion of Sec. 1.52(b)(6)) to provide for
numbering of the paragraphs of the specification, except for the
claims. If the paragraphs of the specification are numbered as proposed
in Sec. 1.52, the applicant will be able to amend the specification by
merely submitting a replacement paragraph (with the same number) with
the desired changes made in the replacement paragraph.
As discussed above, the adoption of the proposed changes to
Sec. 1.121 will result in relatively clean (e.g., without underlining,
bracketing, or red ink) application specifications that can be OCR
scanned as part of the printing process in the Office of Patent
Publications, which will result in a higher quality of printed patents.
Complete OCR scanning of the amended portions of the specification and
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 sections or paragraphs
and claims will permit complete OCR scanning which is a faster and more
accurate method of capturing the application for printing while
eliminating an extensive amount
[[Page 53803]]
of key-entry of subject matter. This should result in patents with
fewer errors in need of correction by certificate of correction, which
will be a clear benefit to the patentees and conserve Office resources.
In addition to submitting a replacement section or paragraph/claim
to make an amendment, applicant would also be required to submit a
marked-up copy of the section or paragraph/claim to show the
differences between the original and the replacement. The marked-up
copy may be created by any method applicant chooses, such as
underlining and bracketing, redlining, or by any system designed to
provide text comparison.
The proposed change to Sec. 1.121 will make the amendment process
simpler, reduce processing time and operating costs, and reduce the
opportunity for error associated with amendment entry. In addition, it
is consistent with standardizing processing of amendments in both paper
and electronic format in anticipation of a total Electronic File
Wrapper (EFW) environment, which is currently under development.
Further, the changes being proposed are consistent with the Office's
efforts to harmonize with PCT practice and any changes being
contemplated for that system.
Section 1.121(a) is specifically proposed to be amended by
replacing paragraphs (a)(1) through (a)(6) with new paragraphs (a)(1)
through (a)(5), which treat the manner of making amendments in
nonprovisional applications other than reissue applications. Section
1.121(b) relates to amendments in reissue applications and
Sec. 1.121(c) relates to amendments in reexamination proceedings.
Section 1.121(a)(1)(i) is proposed to provide procedures to delete,
replace or add a paragraph to the specification of an application by
requiring instructions for such accompanied by the replacement or added
paragraph(s). By following the four-digit numbering system concurrently
proposed in Sec. 1.52(b)(6), applicants can easily refer to a specific
paragraph by number and present an amendment thereto. Proposed
Sec. 1.121(a) requires that the replacement or added paragraph(s) not
include any markings to indicate the changes that have been made. A
copy of the replacement or added paragraph(s) marked-up to show the
changes would be required to accompany the amendment as an aid to the
examiner.
If a numbered paragraph is to be replaced by a single paragraph,
the added replacement paragraph bearing the same number as the
paragraph being replaced should be submitted. If more than one
paragraph is to replace a single paragraph, the numbering of the added
replacement paragraphs must begin first with the number of the
paragraph being replaced, then subsequently by the number of the
replaced paragraph together with a single decimal and sequential
integers (e.g., paragraph [0071] is replaced by [0071], [0071.1] and
[0071.2]). Any paragraphs being added between existing paragraphs must
take the number of the preceding paragraph followed by a decimal and
sequential integers (e.g., [0071.1] and [0071.2] are being inserted
between paragraphs [0071] and [0072]). Unaffected paragraphs would
retain their original numbers. Once an amendment is entered, subsequent
amendments would be made vis-a-vis the numbering created by the
previous amendment. Amendments to titles or headers, which are not
considered paragraphs and thus not numbered, would be identified by
reference to their location relative to a numbered paragraph (e.g.,
``the title appearing after paragraph [0062]'').
Section 1.121(a)(1)(ii) as proposed also permits applicants to
amend the specification by replacement sections (e.g., as provided in
Secs. 1.77(a), 1.154(a) or 1.163(c)). As with replacement paragraphs,
the amended version of a replacement section would be required to be
provided in clean form and not include any markings to show the changes
which have been made. A marked-up version showing the changes must
accompany the actual amendment as an aid to the examiner.
Section 1.121(a)(1)(ii) as proposed also permits applicants to
amend the specification by submitting a substitute specification.
Sections 1.52, 1.77, 1.154, 1.163 and 1.121(a) as proposed do not
require applicants to number the paragraphs of the specification
(Sec. 1.52(b)(6)) or provide section headings (Secs. 1.77, 1.154,
1.163). Without numbered paragraphs of the specification or section
headings, however, an applicant will be limited to amending the
application by submitting a substitute specification. Thus, applicants
submitting a substitute specification as a means of amending the
application (including ``transition applications'' filed before but
amended after this proposed change to Sec. 1.121(a) is adopted) are
urged to include numbered paragraphs in the substitute specification
(in the manner proposed in Sec. 1.52(b)(6)), so that further amendments
may be made by replacement paragraphs in accordance with
Sec. 1.121(a)(1)(i). An accompanying marked-up copy showing amended
portions of the specification would be required. The addition of
paragraph numbers in a substitute specification, however, need not be
considered as an amendment to the specification requiring a marked-up
showing.
Further, in applications not having numbered paragraphs, even if no
amendments to the specification are being made, applicants are urged to
supply a substitute specification including numbered paragraphs
(consistent with Sec. 1.52 (b)(6)) as part of the response to the first
Office action, so that any future amendments to the specification may
be made by numbered paragraph replacement. As stated immediately above,
a marked-up copy, showing paragraph numbers as the only change, is not
required.
The Office will not, upon request of applicants, number the
paragraphs or sections of the specification, or accept any instructions
to do the same. The Office reserves the right, however, to number or
renumber the paragraphs in the printed patent as part of the
publication process.
Section 1.121(a)(1)(iv) as proposed requires that matter deleted by
amendment pursuant to any of the earlier paragraphs of Sec. 1.121 could
only be reinstated by a subsequent amendment presenting the previously
deleted subject matter. No unentering of previously entered amendments
will be permitted.
Section 1.121(a)(2) as proposed requires that all amendments to the
claims be presented as totally rewritten claims. Any rewriting of a
claim will be construed as a direction to cancel the previous version
of the claim. See In re Byers, 230 F.2d 451, 455, 109 USPQ 53, 55 (CCPA
1956) (amendment of a claim by inclusion of an additional limitation
had exactly the same effect as if the claim as originally presented had
been canceled and replaced by a new claim). The new (or rewritten)
claim must be submitted in clean form with no markings showing the
changes which have been made. A marked-up version of any amended claim
must be submitted on pages separate from the amendment showing the
changes which have been made by way of brackets (for deleted matter)
and underlining (for added matter), or by any other suitable method of
comparison, in order to clearly indicate the changes made by the
amendment in a form that will assist the examiner in the examination
process.
Section 1.121(a)(3) is proposed to be amended to clarify the
requirements for amending figures of drawing in an application. A
sketch showing changes in red must be filed for approval by the
examiner before new drawings in compliance with Sec. 1.84 can be
filed.
[[Page 53804]]
Sections 1.121(a)(5) and (a)(6) will be redesignated without change
as new Sec. 1.121(a)(4) and (a)(5).
Section 1.121(b) is proposed to be amended to transfer the
provisions for amending reissue applications to Sec. 1.173 (see
discussion of Sec. 1.173). Section 1.121(b) is specifically proposed to
simply include a reference to Sec. 1.173 for amendment of reissue
applications.
Most of the comments received were in support of the proposed
change to amendment practice. Some criticisms and suggestions are
addressed below.
Comment: A concern was raised by a number of commenters that
replacement paragraphs would make the identification of changes more
obscure than the present system of using bracketing and underlining,
would place an extra burden on practitioners and their staffs, and
would work against reducing paper submissions if applicants were
required to submit marked-up copies of the desired changes.
Response: The proposed replacement paragraph requirement is
necessary to facilitate the publication of patents more expeditiously
and with fewer errors. The Office's goal is to eliminate the use of red
ink and bracketing/underlining in the amendment of patent applications,
since OCR techniques now employed in the preparation of patents for
publication can best accommodate ``clean copy'' insertions of amended
subject matter.
The submission of marked-up copies would, for a time, increase file
size but would provide the examiner with an easy way to compare the
most recent amendments with earlier versions in the application files.
While it may be possible for examiners to compare the clean copy with
the previous version in order to detect changes, in the interest of
reduced cycle time, a review of a marked-up copy of an amendment has
been determined to be most effective in the examination process. The
proposed requirements would provide the needed comparative basis (for
paper copies) during the transition phase into an EFW environment.
Comment: A number of comments were received which expressed concern
about the harmonization of the Office's amendment requirements with
those of PCT and/or other foreign countries.
Response: While PCT practice currently provides for the use of
replacement pages, it appears that paragraph or section replacement is
being considered worldwide as electronic filing requirements are being
developed. Both the JPO and the EPO currently employ paragraph
numbering in their application requirements and publication procedures.
No other patent examining authority has yet developed procedures for
transitioning into electronic filing and practice.
Comment: Several comments received questioned the ability of word
processing software to handle paragraph numbering and renumbering
without extensive clerical intervention.
Response: The objective of the proposed amendment practice and the
concept of paragraph numbering is to easily identify a paragraph in the
specification and to not disturb the numbering of the paragraphs
preceding and following the amendments/insertions. It is being
concurrently proposed that Sec. 1.52 provide for paragraph numbering
according to a four digit Arabic numeral arrangement enclosed in bold
brackets to be placed at the beginning of each paragraph immediately to
the right of the left margin, and followed by approximately four
spaces, before beginning the paragraph text (e.g., [0071]). If,
according to the proposed changes to Sec. 1.121, for example, paragraph
[0071] is to be replaced, another paragraph of the same number should
be inserted in its place. If several paragraphs are to replace a single
deleted paragraph, [0071] should, for example, be replaced by [0071],
[0071.1], and [0071.2]. The ability of word processing software to
renumber the remaining paragraphs should not be necessary.
Comment: Several comments suggested identifying the replacement
paragraphs by page number and line number, or through the use of
replacement pages.
Response: The proposed changes to Sec. 1.121 are intended, in part,
to serve the Office and its customers during a transition into an EFW
environment. Accordingly, paragraph replacement via paragraph numbering
will most effectively achieve the desired results. Identification of
paragraphs by page and line number does not consistently and uniformly
refer to the same section of the specification due to formatting and
pagination differences among various word processing programs.
Comment: Several comments received suggested that the Office more
aggressively pursue total electronic filing.
Response: A total EFW environment is still several years away. The
proposed changes must be workable during a transition into electronic
filing, and, at the same time, serve all customers adequately,
including those not yet able to adapt to word processing and advanced
computer techniques.
Section 1.125: Section 1.125(b)(2) is proposed to be amended to
require that all the changes to the specification (rather than simply
all additions and deletions) be shown in a marked-up copy. Section
1.125(b)(2) is also proposed to be amended to provide that numbering
the paragraphs of the specification of record is not considered a
change that must be shown. Thus, the marked-up copy of the substitute
specification need not show the numbering the paragraphs of the
specification of record, and no marked-up copy of the substitute
specification is required if the only change is numbering of the
paragraph of the specification of record. Section 1.125(c) is proposed
to be amended to encourage that the paragraphs of any substitute
specification be numbered in a manner consistent with Sec. 1.52(b)(6).
Section 1.131: The heading of Sec. 1.131 is proposed to be amended
to clarify that it applies to overcoming other activities in addition
to cited patents or publication. Section 1.131(a) is proposed to be
amended for simplicity.
Section 1.131(a) is specifically proposed to be amended to provide
that when any claim of an application or a patent under reexamination
is rejected, the inventor of the subject matter of the rejected claim,
the owner of the patent under reexamination, or the party qualified
under Secs. 1.42, 1.43, or 1.47, may submit an appropriate oath or
declaration to establish invention of the subject matter of the
rejected claim prior to the effective date of the reference or activity
on which the rejection is based. Section 1.131(a) as proposed would
eliminate the provisions that specify which bases for rejection must be
applicable for Sec. 1.131 to apply. Instead, the approach would be that
Sec. 1.131 is applicable unless the rejection is based upon a U.S.
patent to another or others which claims the same patentable invention
as defined in Sec. 1.601(n) or a statutory bar. This avoids the
situation in which the basis for rejection is not a statutory bar
(under 35 U.S.C. 102(a) based upon prior use by others in the United
States) and should be capable of being antedated, but the rejection is
not specified as a basis for rejection that must be applicable for
Sec. 1.131 to apply.
Section 1.131(a) is also proposed to be amended to provide that the
effective date of a U.S. patent is the date that such U.S. patent is
effective as a reference under 35 U.S.C. 102(e). MPEP 2136.03 provides
a general discussion of the date a U.S. patent is effective as a
reference under 35 U.S.C. 102(e). Finally, Sec. 1.131(a) is proposed to
be amended to provide that prior invention may not be established under
Sec. 1.131 if either: (1) The rejection is based upon a U.S. patent to
another or others which
[[Page 53805]]
claims the same patentable invention as defined in Sec. 1.601(n); or
(2) the rejection is based upon a statutory bar.
Section 1.132: Section 1.132 is proposed to be amended to eliminate
the provisions that specify which bases for rejection must be
applicable for Sec. 1.132 to apply. Instead, the approach would be that
Sec. 1.132 is applicable unless the rejection is based upon a U.S.
patent to another or others which claims the same patentable invention
as defined in Sec. 1.601(n). Section 1.132 is specifically proposed to
be amended to state that: (1) when any claim of an application or a
patent under reexamination is rejected or objected to, an oath or
declaration may be submitted to traverse the rejection or objection;
and (2) an oath or declaration may not be submitted under this section
to traverse a rejection if the rejection is based upon a U.S. patent to
another or others which claims the same patentable invention as defined
in Sec. 1.601(n).
Sections 1.131 and 1.132 are procedural in nature that they provide
mechanisms for the submission of evidence to antedate or otherwise
traverse a rejection; however, they do not address the substantive
effect of the submission of such evidence on the objection or rejection
at issue. See, e.g., In re Zletz, 893 F.2d 319, 322-33, 13 USPQ2d 1320,
1322-23 (Fed. Cir. 1990)(Sec. 1.131 provides an ex parte mechanism
whereby a patent applicant may antedate subject matter in a reference);
Newell Cos. v. Kenney Mfg., 864 F.2d 757, 768-69, 9 USPQ2d 1417, 1426-
27 (Fed. Cir. 1988)(the mere submission of evidence under Sec. 1.132
does not mandate a conclusion of patentability). An applicant's
compliance with Secs. 1.131 or 1.132 means that the applicant is
entitled to have the evidence considered in determining the
patentability of the claim(s) at issue. It does not mean that the
applicant is entitled as a matter of right to have the rejection or
objection of the claim(s) withdrawn.
Section 1.133: Section 1.133(a) is proposed to be amended to
provide that interviews must be conducted on ``Office premises''
(rather than ``in the examiner's rooms''). The purpose of this proposed
change is to account for interviews conducted in conference rooms or by
video conference.
Section 1.136: Section 1.136(c) is proposed to be added to provide
that if an applicant is notified in a ``Notice of Allowability'' that
an application is otherwise in condition for allowance, the following
time periods are not extendable if set in the ``Notice of
Allowability'' or in an Office action having a mail date on or after
the mail date of the ``Notice of Allowability'': (1) The period for
submitting an oath or declaration in compliance with Sec. 1.63; (2) the
period for submitting formal drawings set under Sec. 1.85(c); and (3)
the period for making a deposit set under Sec. 1.809(c). See discussion
of the change to Sec. 1.85(c).
Section 1.137: Section 1.137(c) is proposed to be amended to
provide that any petition under Sec. 1.137 in either a utility or plant
application filed before June 8, 1995, must be accompanied by a
terminal disclaimer and fee as set forth in Sec. 1.321 dedicating to
the public a terminal part of the term of any patent granted thereon
equivalent to the lesser of: (1) The period of abandonment of the
application; or (2) the period extending beyond twenty years from the
date on which the application for the patent was filed in the United
States or, if the application contains a specific reference to an
earlier filed application(s) under 35 U.S.C. 120, 121, or 365(c), from
the date on which the earliest such application was filed. This
proposed change will further harmonize effective treatment under the
patent term provisions of 35 U.S.C. 154(b) and (c) of utility and plant
applications filed before June 8, 1995, with utility and plant
applications filed on or after June 8, 1995. Section 1.137(c) is also
proposed to provide that its terminal disclaimer requirement does not
apply to applications for which revival is sought solely for purposes
of copendency with a utility or plant application filed on or after
June 8, 1995, or to lapsed patents.
Section 1.138: Section 1.138 is proposed to be amended to clarify
the signature requirement for a letter (or written declaration) of
express abandonment. Section 1.138(a) is proposed to provide that: (1)
An application may be expressly abandoned by filing in the Patent and
Trademark Office a written declaration of abandonment identifying the
application; and (2) express abandonment of the application may not be
recognized by the Office unless it is actually received by appropriate
officials in time to act thereon before the date of issue. Section
1.138(b) is proposed to provide that a written declaration of
abandonment must be signed by a party authorized under Sec. 1.33(b)(1),
(b)(3), or (b)(4) to sign a paper in the application, except that a
registered attorney or agent not of record who acts in a representative
capacity under the provisions of Sec. 1.34(a) when filing a continuing
application may expressly abandon the prior application as of the
filing date granted to the continuing application.
Section 1.152: Section 1.152 is proposed to be revised to be
consistent with the proposed changes to Sec. 1.84 (deletion of the
petition requirement for color photographs and color drawings). Section
1.152 was amended in 1997 to clarify Office practice that details
disclosed in the drawings or photographs filed with a design
application are considered to be an integral part of the disclosed and
claimed design, unless disclaimed. See Changes to Patent Practice and
Procedure, Final Rule Notice, 62 FR 53131, 53164 (October 10, 1997),
1203 Off. Gaz. Pat. Office 63, 91 (October 21, 1997). A recent decision
by the Federal Circuit, however, has called this practice into
question. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir.
1998), rev'g, Ex parte Daniels, 40 USPQ2d 1394 (BPAI 1996).
Accordingly, the Office is proposing to amend Sec. 1.152 to eliminate
these provisions. See Removal of Surface Treatment From Design Drawings
Permitted, Notice, 1217 Off. Gaz. Pat. Office 19 (December 1, 1998).
Section 1.154: Section 1.154(a) is proposed to be separated into
Secs. 1.154(a) and 1.154(b) and the material clarified. The order of
the papers in a design patent application, including the proposed
application data sheet (see Sec. 1.76), is proposed to be listed in
Sec. 1.154(a). The order of the sections in the specification of a
design patent application is proposed to be listed in Sec. 1.154(b).
New Sec. 1.154(c) corresponds to Sec. 1.77(c) and provides that the
section heading should be in uppercase letters without underlining or
bold type.
Section 1.155: Current Sec. 1.155 is proposed to be eliminated as
being unnecessarily duplicative of the provisions of Secs. 1.311(a) and
1.316, which apply to the issuance of all patents, including designs.
In its place, proposed Sec. 1.155 is proposed to be redrafted to
establish a procedure to create a ``rocket docket'' for design
applications. The procedure will be available to all design applicants
who first conduct a preliminary examination search and file a request
for expedited treatment accompanied by a fee commensurate with the
Office cost of the expedited treatment and handling (Sec. 1.17(t)). The
Office will require a statement that a preexamination search was
conducted which must also indicate the field of search and include an
information disclosure statement in compliance with Sec. 1.98. Formal
drawings in compliance with Sec. 1.84 are required. The applications
will be individually examined with priority and the clerical processing
will be conducted and/or monitored by
[[Page 53806]]
specially designated personnel to achieve expeditious processing
through initial application processing and the Design Examining Group.
The Office will not examine an application that is not in condition for
examination even if the applicant files a request for expedited
examination under this section. The requirements announced in the
Advance Notice relating to constructive election of the first presented
invention have been dropped.
General Comments
Of the comments received in response to the proposal to creating a
``Rocket Docket'' for design applications, most of the comments
generally favored the proposal, by roughly a two-to-one margin.
Comment: One commenter opined that the ``ultra expedited''
procedure is a much needed avenue for patentees concerned with the
design and marketing of seasonal, high volume consumer goods and that
the procedure would attract new customers and fulfill a critical need
in many industries for patent protection to stop infringement and to
deter would-be infringers. Moreover, the commenter opined that recent
court interpretations of the marking provisions require patented
products to be marked with the patent number no matter what monetary
remedy the patentee pursues and that having all of the products marked
with the patent number will maximize a patentee's protection by
synchronizing protection with the retail market launch.
Response: The Office envisions that these provisions will fulfill a
particular need by affording rapid design protection on an expedited
basis so that designs may be readily patented and marked with a patent
number before marketing. At the same time, a fee will be charged to
recoup estimated expected costs incurred by the Office.
Comment: Two comments opposed the idea of giving one applicant
priority over others based on a fee, or the opportunity to ``buy a
place in line,'' further reasoning that the granting of priority should
be based on need.
Response: The applicant is not buying a place in line, but instead
is merely compensating for the extra costs for expediting the
examination of the design applications. Also, if priority were to be
granted based upon need, a petition would be required to determine
whether the standards for awarding priority had been met. By
eliminating the determination of a petition (which is required to
determine need or compliance in Petitions to Make Special), the
significant time required to make the determination is eliminated.
Comment: Another comment stated that the fee was unjustified in
view of the fact that the current ``Petition to Make Special'' is
available at a reduced fee.
Response: Although the current system of making cases special by
petition fulfills the needs of some applicants, an additional expedited
process is necessary for a quicker, streamlined filing-to-issuance
procedure that does not involve the lengthy process of deciding a
petition based upon need or some other type of showing. Moreover, the
Petition to Make Special procedure requires a petition to be decided
once the application reaches the Design Group, whereas the expedited
procedure is instituted once the fee is paid and the application is
ready for examination. Further, the ``Petition to Make Special'' will
continue to be made available. Although the Sec. 1.155 expedited
examination is more costly, the cost is warranted due to more
comprehensive expedited procedures to reduce processing time.
Comment: One commenter also suggested that if the Office procedure
for dealing with a petition to make special is too complex, then the
answer should be to simplify the Petition to Make Special procedure.
Response: The Petition to Make Special procedures are adopted for
treating a variety of types of cases for which a determination must be
made as to whether the subject matter qualifies under the procedure;
e.g., whether ``the invention will materially enhance the quality of
the environment.'' On the other hand, the expedited procedure of
Sec. 1.155 is an entirely different rule which is fee-based and which
may be readily decided as part of a clerical function, thereby reducing
processing time and costs since the application does not need to be
reviewed by a high level official.
Comment: Two comments were directed to the amount of time the
examiners spend on the searching of design applications. One commenter
was alarmed by the belief that design applications were examined in
groups of ten or twenty and questioned the fairness of not examining
the application in the order of filing and of delaying examination
until a group is filled. The same commenter reasoned that design
applications are easy to search and therefore hiring additional design
applications examiners should allow each design application to be
examined in the order of filing. The same commenter postulated that
applicants should not have to pay a surcharge and perform their own
search in order to obtain the examination for which they have already
paid. Another commenter stated that the examiners will require
additional time for searching expedited cases.
Response: Only the search phase of the examination of design
applications is conducted in groups. Generally, the remainder of the
examination process is done individually, unless the subject matter is
so close as to involve double patenting. However, the most time
consuming part of the design patent application examination is the
search for prior art. Unlike the utility patent examiner, the design
examiner is not concerned about claim language, but is focusing on
visual characteristics that can be readily evaluated and searched. To
employ economies of scale, searching is best done in groups. Generally,
the size of group depends on the clustering of filing dates and
similarities in subject matter. Cases are not delayed since design
examiners are required to work on the ``oldest-date'' case. Moreover,
even though a group search may be conducted, the examination is done in
order of filing and the cases are not delayed to fill a group.
Typically, the examiner picks the oldest date case for examination and
then tries to create a group of design applications with similar
subject matter for efficiency in searching. As to the comment directed
to increasing the number of examiners, to dramatically increase the
number of examiners might result in less efficiency due to overlapping
subject matter and is not necessarily an option available based on
Office priorities and budget. As to the comment regarding the payment
of a ``surcharge,'' this is to cover the costs associated with
expediting the search. It is recognized that more time is required to
search cases individually than that required if the searching is done
in groups. As to the requirement of a search performed by the
applicant, this will not only enhance the quality of the search but
also ensure that applicant is prudently filing for expedited status and
making an informed choice. As to the impact of the processing time for
expedited cases on those regularly filed, enough resources are being
provided so that the handling of expedited cases will not influence the
examination of other cases.
Comment: Two comments suggested that the concept be extended to
both utility and design applications.
Response: This suggestion is not being adopted at this time, since
due to limited resources, the idea is best limited to design
applications where due to the relative ease of copying, there is often
a need for rapid patent protection.
[[Page 53807]]
Comment: One comment supported the measure but asked for a quid-
pro-quo short time goal of four months.
Response: The Design Group has indicated that they will set as an
objective three months cycle-time for examination and one month cycle-
time for printing and guidelines for the program shall be explained to
the public in the MPEP.
Comment: One comment stated there was no need for an expedited
procedure since design applications ``are being examined as of late
relatively quickly.''
Response: Nonetheless, the proposal is responsive to public need
for those applicants who are willing to pay an increased, cost-
offsetting fee in view of the benefits arising from further decreases
in patent prosecution time.
Comment: A few comments stated in opposition to the proposal that
the best solution is to hire more examiners.
Response: Although additional manpower conceivably would reduce
cycle time, the Office faces certain constraints on its ability to hire
more examiners and it must utilize its resources as best it can in
order to meet all of the Office's goals.
Comment: Several comments supportive in concept also had specific
recommendations for streamlining the application process, including
prepayment or preauthorization of the issue fee, and faxing and/or
telephoning all communications.
Response: As to the prepayment or preauthorization of the issue
fee, this suggestion is not being adopted for reasons similar to those
presented in conjunction with the proposal to eliminate
preauthorization of payment of the issue fee (Sec. 1.311). As to making
all communications by facsimile or phone, this will be encouraged where
practicable and when the applicant's representative supplies a
facsimile number. Multiple references, however, may prove too
cumbersome for transmission by facsimile.
Comment: One comment suggested that automatic refunds be given if
short time goals were not met and that a ``Public Advisory Committee''
be established to monitor progress and to be a point of contact for
suggestions from the public.
Response: The suggestion as to automatic refunds is not being
adopted in view of the unpredictability of unforeseen circumstances
which might justify the failure to achieve the goal as well as lack of
statutory authority to give a refund because a processing goal is not
met in time. As to the ``Public Advisory Committee,'' the Office does
not foresee the need for such a committee, and the most practical point
of contact would be with the design group itself, which is always open
to suggestions from the public.
Section 1.163: Section 1.163(b) is proposed to be eliminated to
delete the requirement for two copies of the specification for
consistency with the current Office practice. See Interim Waiver of 37
C.F.R. Sec. 1.163(b) for Two Copies of a Specification of an
Application for a Plant Patent, Notice, 1213 Off. Gaz. Pat. Office 109
(August 4, 1998). Section 1.163(c) is proposed to be separated into
Secs. 1.163(b) and 1.163(c). The order of the papers in a plant patent
application, including the proposed application data sheet (see
Sec. 1.76) is proposed to be listed in Sec. 1.163(b). The order of the
sections in the specification of a plant patent application is proposed
to be listed in Sec. 1.163(c). New Sec. 1.163(d) corresponds to
Sec. 1.77(c) and provides that the section headings should be in
uppercase letters without underlining or bold type.
New sections 1.163(c)(4) and 1.163(c)(5) require the plant patent
applicant to state the Latin name and the variety denomination for the
plant claimed. The Latin name and the variety denomination of the
claimed plant are usually included in the specification of the plant
patent application. The Office, pursuant to the ``International
Convention for the Protection of New Varieties of Plants'' (generally
known by its French acronym as the UPOV convention), has been asked to
compile a database of the plants patented and the database must include
the Latin name and the variety denomination of each patented plant.
Having this information in separate sections of the plant patent
application will make the process of compiling this database more
efficient.
Current Secs. 1.163(c)(5) through 1.163(c)(10) are proposed to be
redesignated Secs. 1.163(c)(6) through 1.163 (c)(11), respectfully.
Section 1.163(c)(14) and 1.163(d) are proposed to be eliminated to
delete the reference to a plant patent color coding sheet. The color
codes and the color coding system are generally included in the
specification. Repeating the color coding information in a color coding
sheet increases the risk of error and inconsistencies.
Section 1.173: The proposed changes to Sec. 1.173 regarding
identifying all occurrences of claim broadening in a reissue
application, which were published in the Advance Notice (Topic 16),
have been dropped in view of comments received. A number of comments
were directed to the undue burden which the rule change would place on
applicants and the potential for future issues in litigation re
Sec. 1.56 violations.
It is now being proposed that Sec. 1.173 be amended to consolidate
the requirements for the filing of reissue applications currently in
Sec. 1.173, the requirements for amending reissue applications
currently in Sec. 1.121, and the requirements for reissue drawings,
currently in Sec. 1.174. It is proposed that Sec. 1.174 be eliminated
as the requirements for filing drawings would be moved to Sec. 1.173.
The proposed language consolidates many procedural and formal
requirements for reissue applications into a single section. Paragraphs
for separate items within this section have been proposed, in order to
set forth the requirements for the specification, claims and drawings
in a format which is clearer and easier to understand.
The title Sec. 1.173 is proposed to be changed to ``Reissue
specification, drawings, and amendments'' to more aptly describe the
inclusion of all filing and amendment requirements for the
specification, including the claims, and the drawings of reissue
applications in a single section.
Section 1.173(a), as proposed, sets forth the current requirements
for the contents of a reissue application at filing, and the existing
prohibition against new matter in a reissue application.
It is proposed in Sec. 1.173(a)(1) to now require that the
specification, including the claims, be furnished in the form of a copy
of the printed patent with a single column of the patent appearing on
each individual page of the specification of the reissue application.
This format for submitting a reissue application is currently set out
in MPEP 1411. Paragraph (a)(1) would also provide that amendments made
to the specification at filing must be made according to paragraph (b)
of this section.
Proposed paragraph (a)(2) of Sec. 1.173 sets forth the requirements
for the drawings at the time the reissue application is filed. If clean
copies (i.e., good quality photocopies free of any extraneous markings)
of the drawings from the original patent are supplied by applicant at
the time of filing the application and the copies meet the requirements
of Sec. 1.84, no further (formal) drawings would be required. The
current provision of Sec. 1.174 requiring temporary drawings would be
eliminated in view of this proposed change to Sec. 1.173. The Office
will be able to print a reissue patent using clean copies of the patent
drawings. How changes to the patent drawings may be made at the time of
filing of the reissue
[[Page 53808]]
application, or during the prosecution, would now be specifically set
forth and must be made in accordance with the requirements of proposed
paragraph (b)(3) of this section (which are essentially the
requirements of current Sec. 1.121(b)(3)(i) and (ii)). If applicant has
failed to provide clean copies of the patent drawings, or if changes
are made to the drawings during the reissue prosecution, drawings in
compliance with Sec. 1.84 would continue to be required at the time of
allowance. It is also proposed to eliminate the practice of
transferring drawings from the patent file since clean copies of patent
drawings will be acceptable for use in the printing of the reissue
patent.
Section 1.173(b), as proposed, now sets out that amendments in a
reissue application made at the time of filing may be made either by
physically incorporating the amendments within the body of the
specification (including the claims) as filed, or by a preliminary
amendment (separate paper).
Paragraphs (b)(1) and (b)(2) of Sec. 1.173 incorporate the
provisions of current Sec. 1.121(b)(1) and (b)(2) as to the manner of
amending the specification and claims, respectively.
Proposed Sec. 1.173(b)(3) would incorporate the provisions
currently set forth in Sec. 1.121(b)(3) as to amending reissue
drawings.
Paragraph (c) of Sec. 1.173, as proposed, would now require, that
whenever an amendment is made to the claims, either at the time of
filing or during the prosecution, the amendment must be accompanied by
a statement as to the status of all patent claims and all added claims,
and an explanation as to the support in the disclosure for any
concurrently made changes to the claims.
Paragraph (d), as proposed, would incorporate the provisions
currently set forth in Sec. 1.121(b)(1)(iii) and (b)(2)(i)(C) as to how
changes in reissue applications are shown in the specification and
claims, respectively.
Paragraphs (e), (f) and (g), as proposed, merely reiterate
requirements for retaining original claim numbering, amending the
disclosure when required, and making amendments relative to the
original patent, as are set out currently in Sec. 1.121(b)(2)(B),
(b)(4), and (b)(6), respectively.
The current requirement of Sec. 1.121(b)(5) prohibiting enlarging
the scope of the claims more than two years after the patent grant has
been eliminated from proposed Sec. 1.173 as being redundant to existing
statutory language in 35 U.S.C. 251.
Section 1.174: It is proposed that Sec. 1.174 be eliminated (and
reserved) in view of the inclusion of all filing and amendment
requirements for reissue drawings into proposed Sec. 1.173. Thus, in
addition to the reissue filing requirements of current Sec. 1.173, the
reissue amendment requirements of current Sec. 1.121(b) and the reissue
drawing requirements of current Sec. 1.174 would all be included in a
single rule, proposed Sec. 1.173. The proposed changes consolidating
several current rules into a single section should make all reissue
filing and amendment requirements quicker to locate and easier to
understand.
Section 1.176: Section 1.176 is proposed to be amended to eliminate
the prohibition against requiring division in a reissue application.
The Federal Circuit has indicated that 35 U.S.C. 251 does not, under
certain circumstances, prohibit an applicant in a reissue application
from adding claims directed to an invention which is separate and
distinct from the invention defined by the original patent claims. See
In re Amos, 953 F.2d 613, 21 USPQ2d 1271 (Fed. Cir. 1991). Section
1.176, however, presently prohibits the Office from making a
restriction requirement in a reissue application. This prohibition in
Sec. 1.176, in combination with the Federal Circuit's decision in Amos,
frequently places an unreasonable burden on the Office in requiring the
examination of multiple inventions in a single reissue application.
Section 1.176 as proposed would allow the Office to make a
restriction requirement in a reissue application between claims added
in a reissue application and the original patent claims, where the
added claims are directed to an invention which is separate and
distinct from the invention(s) defined by the original patent claims.
The criteria for making a restriction requirement in a reissue
application between added claims and original claims would be the same
as that applied in an original application. See MPEP 806 through
806.05(i). See the discussion of Sec. 1.177 concerning the proposed
treatment of multiple reissue applications and procedures following a
restriction requirement in a reissue.
The Office would continue to not require restriction among original
claims of the patent (i.e., among claims that were in the patent prior
to filing the reissue application). In order for restriction to be
required between the original patent claims and added claims, the added
claims must be directed toward inventions which are separate and
distinct from the invention(s) defined by the original patent claims.
Restriction between multiple inventions in the added claims would also
be possible provided the added claims are drawn to several separate and
distinct inventions.
The changes being considered are not intended to affect the type of
errors that are or are not appropriate for correction under 35 U.S.C.
251 (e.g., applicant's failure to timely file a divisional application
is not considered to be the type of error that can be corrected by a
reissue). See In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir.
1990); In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978); and In re
Orita, 550 F.2d 1277, 193 USPQ 145 (CCPA 1977).
Section 1.11(b) currently exempts reissue continued prosecution
applications (CPAs) under Sec. 1.53(d) from the announcement of reissue
filing in the Official Gazette. The proposed language of Sec. 1.176(b)
further clarifies that the examination of a CPA reissue is not subject
to a two-month examination delay following its filing.
Section 1.177: It is proposed that Sec. 1.177 be modified to
eliminate current requirements that divisional reissues be limited to
separate and distinct parts of the thing patented, and that they be
issued simultaneously unless ordered by the Commissioner. It is
proposed that the rule be expanded to include continuations of reissues
as well as divisionals. As a result of comments received following
publication in the Advance Notice (Topic 17), none of which were
opposed to the proposed changes to Sec. 1.177, the Office is moving
forward with the changes proposed.
The Federal Circuit has indicated that 35 U.S.C. 251, para. 2, does
not place stricter limitations on the filing of continuation or
divisional reissue applications than is placed by 35 U.S.C. 120 and 121
on the filing of continuation or divisional non-reissue applications.
See In re Graff, 111 F.3d 874, 876, 42 USPQ2d 1471, 1473 (Fed. Cir.
1997). The Federal Circuit specifically stated:
* * * [35 U.S.C. 251, para. 3,] provides that the general rules for
patent applications apply also to reissue applications, and [35
U.S.C. 251, para. 2,] expressly recognizes that there may be more
than one reissue patent for distinct and separate parts of the thing
patented. [35 U.S.C. 251] does not prohibit divisional or
continuation reissue applications, and does not place stricter
limitations on such applications when they are presented by reissue,
provided of course that the statutory requirements specific to
reissue applications are met. See [35 U.S.C. 251, para. 3].
* * * [35 U.S.C. 251, para. 2,] is plainly intended as enabling, not
limiting. [35 U.S.C. 251, para. 2,] has the effect of assuring that
a different burden is not placed on divisional or continuation
reissue applications, compared with divisions and continuations
[[Page 53809]]
of original applications, by codifying [The Corn-Planter Patent, 90
U.S. 181 (1874),] which recognized that more than one patent can
result from a reissue proceeding. Thus, [35 U.S.C. 251, para. 2,]
places no greater burden on [a] continuation reissue application
than upon a continuation of an original application; [35 U.S.C. 251,
para. 2,] neither overrides, enlarges, nor limits the statement in
[35 U.S.C. 251, para. 3,] that the provisions of Title 35 apply to
reissues.
Graff, 111 F.3d at 876-77, 42 USPQ2d at 1473. Thus, the Federal Circuit
has indicated that a continuation or divisional reissue application is
not subject to any greater burden other than the burden imposed by 35
U.S.C. 120 and 121 on a continuation or divisional non-reissue
application, except that a continuation or divisional reissue
application must also comply with the statutory requirements specific
to reissue applications (e.g., the ``error without any deceptive
intention'' requirement of 35 U.S.C. 251, para. 1).
Following Graff, the Office has adopted a policy of treating
continuations/divisionals of reissue applications in much the same
manner as continuations/divisionals of non-reissue applications.
Accordingly, it is proposed that the current requirements of Sec. 1.177
as to petitioning for non-simultaneous issuance of multiple reissues,
suspending prosecution in an allowable reissue while the other is
prosecuted, and limiting the content of each reissue to separate and
distinct parts of the thing patented, all be eliminated. These
requirements are considered unique to reissue continuations/
divisionals, impose additional burdens on reissue applicants, and are
not consistent with the Federal Circuit's discussion of 35 U.S.C. 251,
para. 2, in Graff.
It is proposed that Sec. 1.177(a) be changed to require that all
multiple reissue applications from a single patent include as the first
line of the respective specifications a cross reference to the other
reissue application(s). The statement would provide the public with
notice that more than one reissue application has been filed to correct
an error (or errors) in a single patent. If one reissue has already
issued without the appropriate cross reference, a certificate of
correction would be issued to provide the cross reference in the issued
reissue.
In Sec. 1.177(b), it is proposed that all of the claims of the
patent be presented in each application as amended, unamended or
canceled, and that the same claim not be presented for examination in
more than one application in its original unamended version. Any added
claims would have to be numbered beginning with the next highest number
following the last patent claim.
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 given by the examiner during
examination, and appropriate rejections made. If needed to overcome the
rejections, terminal disclaimers would be required in order to ensure
common ownership of any non-distinct claims throughout each of the
patents' lifetimes.
It is also being proposed concurrently that restriction between the
original patent claims and any added claims to separate and distinct
subject matter be permitted in reissue applications (see the proposed
change to Sec. 1.176). If one or more divisional applications are filed
after such a restriction requirement, it is proposed in Sec. 1.177(c)
that the resulting multiple reissue applications would be issued alone
or together, but each of the reissue applications would be required to
include changes which correct an error in the original patent before it
can be issued as a reissue patent. If one of the applications resulting
from the restriction requirement was found to be allowable without any
changes relative to the patent (i.e., it includes only all the original
patent claims), further action would be suspended until one other
reissue application was allowable; then, the two would be recombined
and issued as a single reissue patent. If the several reissue
applications resulting from the restriction each included changes
correcting some error in the original patent, the reissue applications
could be issued separately, with an appropriate cross-reference to the
other(s) in each of the respective specifications.
Section 1.178: Section 1.178 is proposed to be amended to no longer
require an offer to surrender the original patent at the time of filing
as part of the reissue application filing requirements. The inclusion
of a sentence regarding the ``offer'' is frequently overlooked by
reissue applicants at the time of filing and results in the Office
sending out a Notice to File Missing Parts of Application (Missing
Parts Notice). The time spent by the Office in preparing the Missing
Parts Notice, the time needed by applicant to reply, and the further
time needed by the Office to process applicant's ``offer'' reply, can
all be saved by the proposed change. The requirement for actual
surrender of the original patent (or a ``statement'' of its loss, as
set out below) before the reissue application is allowed, however, is
retained.
It is also proposed that Sec. 1.178 be amended to change
``affidavit or declaration'' (attesting to the loss or inaccessibility
of the original patent) to ``statement.'' This proposed change would
eliminate the verification requirements of the current rule, which are
formalities covered by Secs. 1.4 and 10.18. This change is in
conformance with other similar changes to the patent rules which were
effective on December 1, 1997, to ease the verification requirements of
applicants. See Changes to Patent Practice and Procedure, 62 FR at
53175-78, 1203 Off. Gaz. Pat. Office at 100-03.
Section 1.193: Section 1.193(b)(1) is proposed to be amended to
provide that appellant may file a reply brief to an examiner's answer
``or a supplemental examiner's answer.'' The purpose of this proposed
amendment is to clarify the current practice that the appellant may
file a (or another) reply brief within two months of a supplemental
examiner's answer (Sec. 1.193), but the appellant must file any request
for an oral hearing within two months of the examiner's answer
(Sec. 1.194).
Section 1.303: Section 1.303(a) is proposed to be amended to add
the phrase ``to an interference'' between ``any party'' and
``dissatisfied with the decision of the Board of Patent Appeals and
Interferences'' to correct an inadvertent omission.
Section 1.311: Section 1.311(b) is proposed to be amended to
provide that an authorization to charge the issue fee (Sec. 1.18) to a
deposit account may be filed in an individual application only after
mailing of the notice of allowance (PTOL-85).
The suggestion of eliminating preauthorization of payment of the
issue fee was discussed in Topic 19 of the Advance Notice and received
a generally favorable response. Many patent attorneys stated that they
considered preauthorization a dangerous practice that they would not
use. Others thought that preauthorization was an important safety
feature, and that the Office should fix the internal clerical problems
which were motivating the change.
After considering all of the comments, the Office has decided to go
forward with the proposal to eliminate the ability of applicants to
preauthorize payment of the issue fee. Section 1.311(b), as currently
written, causes problems for the Office that tend to increase Office
processing time. The language used by applicants to authorize that fees
be charged to a deposit account often varies from one
[[Page 53810]]
application to another. As a result, conflicts arise between the Office
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 Office 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 preauthorizing payment of the issue fee is
clear, the preauthorization can present problems for both the Office
and practitioners. One problem is because it may not be clear to the
Office whether a preauthorization is still valid after the practitioner
withdraws or the practitioner's authority to act as a representative is
revoked. If the Office charges the issue fee to the practitioner's
deposit account, the practitioner may have difficulty getting
reimbursement from the practitioner's former client. Another problem is
that 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.
Applicants are sometimes confused, however, 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. As
the Office does not wait for the PTOL-85B to be returned to begin
electronic capture of the data to be printed as a patent, any PTOL-85B
received more than a month after the issue fee has been paid may not be
matched with the application file in time for the information thereon
to be included on the patent.
Clerical problems are not the main reason for proposing to
eliminate the practice. The Office would like all of the information
necessary for printing a patent to be in the application when the issue
fee is paid. Thus, the Office is proposing to eliminate petitions under
Sec. 3.81(b), see below, and intends to no longer print any assignee
data that is submitted after payment of the issue fee. As explained in
the Advance Notice, it is not generally in applicant's best interest 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
rather than after the issue fee is paid. See current Sec. Sec. 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 Sec. 1.53(d). See Patents to Issue More Quickly After Issue Fee
Payment, 1220 Off. Gaz. Pat. Office at 42, and Filing of Continuing
Applications, Amendments, or Petitions after Payment of Issue Fee, 1221
Off. Gaz. Pat. Office at 14. 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.
If prompt issuance of the patent is a high priority, after receipt
of the notice of allowance applicant may promptly return the PTOL-85B
(supplying any desired assignee and attorney information) and pay the
issue fee. In this way, the Office 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 preauthorized for payment as the Office would still not
have the assignee and attorney data which is taken from the PTOL-85B.
Thus, it is not seen that the proposal to eliminate the
preauthorization to pay the issue fee would have any adverse effects on
our customers.
Section 1.312: Section 1.312(a) is proposed to be amended to change
``case'' to ``application'' for clarity. Section 1.312(b) is proposed
to be amended to replace the required showing of good and sufficient
reason of why the amendment is needed and was not earlier presented, to
provide that any amendment pursuant to Sec. 1.312 filed after the date
the issue fee is paid must be accompanied by: (1) A petition under
Sec. 1.313(c)(1) to withdraw the application from issue; (2) an
unequivocal statement that one or more claims are unpatentable; and (3)
an explanation as to how the amendment is necessary to render such
claim or claims patentable. The proposed change to Sec. 1.312(b) is
necessary because the change in the patent printing process (discussed
above with respect to Sec. 1.55) will dramatically reduce the period
between the date of issue fee payment and the date a patent is issued.
In view of the brief period between the date of issue fee payment and
the date a patent is issued, the Office must limit amendments under
Sec. 1.312 to those necessary to avoid the issuance of a patent
containing an unpatentable claim or claims. Other amendments must be
filed prior to payment of the issue fee (preferably within one month of
the mailing of a notice of allowance), or be sought in a continuing
application (see Sec. 1.313(c)(2)) or by certificate of correction
under 35 U.S.C. 255 and Sec. 1.323.
Section 1.313: Section 1.313(a) is proposed to be amended to
provide that: (1) Applications may be withdrawn from issue for further
action at the initiative of the Office or upon petition by the
applicant; (2) to request that the Office withdraw an application from
issue, the applicant must file a petition under this section including
the fee set forth in Sec. 1.17(h) and a showing of good and sufficient
reasons why withdrawal of the application is necessary; and (3) if the
Office withdraws the application from issue, the Office will issue a
new notice of allowance if the Office again allows the application. The
changes proposed to separate the language directed to actions by
applicants and those actions by the Office are also proposed to
increase the clarity of the section.
Section 1.313(b) is proposed to be amended to provide that once the
issue fee has been paid, the Office will not withdraw the application
from issue at its own initiative for any reason except: (1) a mistake
on the part of the Office; (2) a violation of Sec. 1.56 or illegality
in the application; (3) unpatentability of one or more claims; or (4)
for interference. Section 1.313(c) is proposed to provide that once the
issue fee has been paid, the application will not be withdrawn from
issue upon petition by the applicant for any reason except: (1)
Unpatentability of one or more claims (see Sec. 1.312(b)); or (2) for
express abandonment (which express abandonment may be in favor of a
continuing application). As discussed above, changes in the patent
printing process will dramatically reduce the period between the date
of issue fee payment and the date a patent is issued. The Office must
streamline the provisions of current Sec. 1.313(b) or the Office will
not be able to render decisions on such petitions before the
application is issued as a patent.
It is the Office's experience that petitions under current
Sec. 1.313(b) are rarely filed (and even more rarely granted) on the
basis of: (1) A mistake on the part of the Office; (2) a violation of
Sec. 1.56 or illegality in the application;
[[Page 53811]]
(3) unpatentability of one or more claims; or (4) for interference.
Therefore, the Office is proposing to provide that the Office may
withdraw applications from issue after payment of the issue fee at its
own initiative for these bases, but limit petitions under current
Sec. 1.313(b) (Sec. 1.313(c) as proposed) to: (1) unpatentability of
one or more claims; or (2) for express abandonment, (which express
abandonment may be in favor of a continuing application). If a petition
under Sec. 1.313(c) filed on the basis of unpatentability of one or
more claims (Sec. 1.313(c)(1)), that petition must (in addition to
meeting the requirements of Sec. 1.313(a)) be accompanied by an
amendment (pursuant to Sec. 1.312), an unequivocal statement that one
or more claims are unpatentable, and an explanation as to how the
amendment is necessary to render such claim or claims patentable. See
discussion of Sec. 1.312(b).
Obviously, if an applicant believes that an application should be
withdrawn from issue (after payment of the issue fee) on the basis of a
mistake on the part of the Office, a violation of Sec. 1.56 or
illegality in the application, or for interference, the applicant may
contact the examiner and suggest that the examiner request the Group
Director to withdraw the application from issue at the initiative of
the Office. The applicant, however, cannot insist that the Office
withdraw an application from issue (after payment of the issue fee) for
these reasons.
Section 1.313(d) is proposed to provide that a petition under
Sec. 1.313 will not be effective to withdraw the application from issue
unless it is actually received and granted by the appropriate officials
before the date of issue. Section 1.313(d) is also proposed to advise
applicants that withdrawal of an application from issue after payment
of the issue fee may not be effective to avoid publication of
application information. While the Office takes reasonable steps to
stop the publication and dissemination of application information
(e.g., the patent document) once an application has been withdrawn from
issue, withdrawal from issue after payment of the issue fee often
occurs too late in the patent printing process to completely maintain
the application in confidence. How much of the application information
is actually disseminated depends upon how close to the issue date the
application is withdrawn from issue. The change in the patent printing
process (discussed above with respect to Sec. 1.55) will make it less
likely that the Office can completely stop the publication and
dissemination of application information in an application withdrawn
from issue under Sec. 1.313 after payment of the issue fee.
Section 1.314: Section 1.314 is proposed to be amended to change
the reference to the fee set forth in ``Sec. 1.17(i)'' to the fee set
forth in ``Sec. 1.17(h).'' This change is for consistency with the
changes to Sec. 1.17(h) and Sec. 1.17(i). See discussion of changes to
Sec. 1.17(h) and Sec. 1.17(i).
Section 1.322: Section 1.322(a) is proposed to be amended to
provide that: (1) The Office may issue a certificate of correction
under the conditions specified in 35 U.S.C. 254 at the request of the
patentee or the patentee's assignee or at its own initiative; and (2)
the Office will not issue such a certificate at its own initiative
without first notifying the patentee (including any assignee of record)
at the correspondence address of record and affording the patentee an
opportunity to be heard. Section 1.322 as proposed would continue to
provide that if the request relates to a patent involved in an
interference, the request must comply with the requirements of this
section and be accompanied by a motion under Sec. 1.635. The current
language of Sec. 1.322(a) permits a third party request for a
certificate for correction (a party ``not owning an interest in the
patent''), which has led third parties to conclude that they have
standing to demand that the Office issue, or refuse to issue, a
certificate of correction. Third parties do not have standing to demand
that the Office issue, or refuse to issue, a certificate of correction.
See Hallmark Cards, Inc. v. Lehman, 959 F. Supp. 539, 543-44, 42 USPQ2d
1134, 1138 (D.D.C. 1997). Since the burden on the Office caused by such
third-party requests now outweighs the benefit such information
provides to the Office, the Office is proposing to amend Sec. 1.322
such that a certificate of correction will be issued only at the
request of the patentee or at the initiative of the Office.
Section 1.323: Section 1.323 is proposed to be amended to provide
that the Office may issue a certificate of correction under the
conditions specified in 35 U.S.C. 255 at the request of the patentee or
the patentee's assignee, upon payment of the fee set forth in
Sec. 1.20(a). The language from 35 U.S.C. 255 currently in Sec. 1.323
that provides the specific conditions under which a certificate of
correction under Sec. 1.323 will be issued is proposed to be eliminated
for consistency with Sec. 1.322 and because it is redundant to repeat
the language of the statute in the rule. Section 1.323 as proposed
would continue to provide that if the request relates to a patent
involved in an interference, the request must comply with the
requirements of this section and be accompanied by a motion under
Sec. 1.635.
Section 1.324: Section 1.324 would have the title revised to
reference the statutory basis for the rule, 35 U.S.C. 256. It is
particularly important to recognize that 35 U.S.C. 256, the statutory
basis for corrections of inventorship in patents under Sec. 1.324, is
stricter than 35 U.S.C. 116, the statutory basis for corrections of
inventorship in applications under Sec. 1.48. 35 U.S.C. 256 requires
``on application of all the parties and assignees,'' while 35 U.S.C.
116 does not have the same requirement. Thus, the flexibility under 35
U.S.C. 116, and Sec. 1.48, wherein waiver requests under Sec. 1.183 may
be submitted (e.g., MPEP 201.03, page 200-6, Statement of Lack of
Deceptive Intention), is not possible under 35 U.S.C. 256, and
Sec. 1.324.
Section 1.324(b)(1) would be revised to eliminate the requirement
for a statement from an inventor being deleted stating that the
inventorship error occurred without deceptive intent. The revision
would be made to conform Office practice to judicial practice as
enunciated in Stark v. Advanced Magnetics, Inc., 119 F.3d 1551, 43
USPQ2d 1321 (Fed. Cir. 1997), which held that 35 U.S.C. 256 only
requires an inquiry into the intent of a nonjoined inventor. The clause
stating ``such error arose without deceptive intent on his part'' was
interpreted by the court as being applicable only when there is an
error where an inventor is not named, and not when there is an error
where a person is named as an inventor. While the decision recognized
that the Office's additional inquiry as to inventors named in error was
appropriate under 35 U.S.C. 256 when read in conjunction with
inequitable conduct standards, the Office no longer wishes to conduct
an inquiry broader in scope than what would be conducted had the matter
been raised in a court proceeding rather than under Sec. 1.324.
Section 1.324(b)(2), which requires a statement from the current
named inventors either agreeing to the requested change or stating that
they have no disagreement to the requested change, would not be
revised. Paragraph (b)(2) in combination with paragraph (b)(1) ensures
compliance with the requirement of the statute for application by all
the parties, which requirement is separate from the requirement that
certain parties address the lack of deceptive intent in the
inventorship error.
Section 1.324(c) would be a newly added paragraph to reference
Secs. 1.48, 1.497 and 1.634 for corrections of
[[Page 53812]]
inventorship in national applications, international applications and
interferences, respectively.
Section 1.366: Section 1.366(c) is proposed to be amended to
continue to provide that a maintenance fee payment must include the
patent number and the application number of the United States
application for the patent on which the maintenance fee is being paid,
but to further provide that if the payment includes identification of
only the patent number (i.e., does not identify the application number
for the patent on which the maintenance fee is being paid), the Office
may apply the payment to the patent identified by patent number in the
payment or may return the payment. The Office requires the application
number to detect situations in which a maintenance payment is submitted
for the incorrect patent (e.g., due to a transposition error in the
patent number). Nevertheless, a significant number of maintenance fee
payments contain only the patent number and not the application number
for the patent on which the maintenance fee is being paid.
The proposed change to Sec. 1.366(c) will permit the Office to
streamline processing of maintenance fee payments that lack the
application number for the patent on which the maintenance fee is being
paid. The Office intends to treat payments that do not contain both a
patent number and application number as follows: First, a reasonable
attempt will be made to contact the person who submitted the payment
(patentee or agent) by telephone to confirm the patent number and
application number of the patent for which the maintenance fee is being
paid. Second, if such an attempt is not successful but the payment
includes at least a patent number, the payment will be processed as a
maintenance fee paid for the patent number provided, and the person who
submitted the payment will be sent a letter informing him or her of the
patent number and application number of the patent to which the
maintenance fee was posted and given a period of time within which to
file a petition under Sec. 1.377 (and $130) if the maintenance fee was
not posted to the patent for which the payment was intended. If the
payment does not include a patent number (e.g., includes only an
application number), the payment will be returned to the person who
submitted the payment.
Section 1.446: Section 1.446 is proposed to be amended in such that
its refund provisions are consistent with the refund provisions of
Sec. 1.26. See discussion of Sec. 1.26.
Section 1.497: Section 1.497(b)(2) has been proposed to be amended
in a manner consistent with Sec. 1.64(b). Therefore, Sec. 1.497(b)(2)
is proposed to be amended to refer to any supplemental oath or
declaration and to provide that if the person making the oath or
declaration is the legal representative, the oath or declaration shall
state that the person is the legal representative and shall state the
citizenship, residence, and mailing address of the legal
representative. In addition, Sec. 1.497(b)(2) is proposed to be amended
to clarify that facts submitted under Secs. 1.42, 1.43, and 1.47 are
not required to be in the Sec. 1.497 oath or declaration. Section
1.497(d) is proposed to provide for the situation in which an oath or
declaration filed pursuant to 35 U.S.C. 371(c)(4) and Sec. 1.497 names
an inventive entity different from the inventive entity set forth in
the international stage. Section 1.497(d) is proposed to be added to
provide that such an oath or declaration must be accompanied by: (1) A
statement from each person being added as an inventor and from each
person being deleted as an inventor that any error in inventorship in
the international stage occurred without deceptive intention on his or
her part; (2) the processing fee set forth in Sec. 1.17(i); and (3) if
an assignment has been executed by any of the original named inventors,
the written consent of the assignee (see Sec. 3.73(b)). Thus, naming a
different inventive entity in an oath or declaration filed to enter the
national stage under 35 U.S.C. 371 in an international application is
not analogous to the filing of an oath or declaration to complete an
application under 35 U.S.C. 111(a) (which operates itself to name the
new inventive entity under Secs. 1.41(a)(1) and 1.48(f)(1)), but is
analogous to correction of inventorship under Sec. 1.48(a).
Section 1.510: Paragraph (b)(4) of Sec. 1.510 is proposed to be
revised to correspond to paragraph (a) of Sec. 1.173 as revised by the
present notice, see the discussion as to the revision of Sec. 1.173. It
is considered advantageous for the reexamination and reissue provisions
to correspond with each other to the maximum extent possible, in order
to eliminate confusion.
Section 1.530: Paragraph (d) of Sec. 1.530 is proposed to be
revised, and paragraphs (e)-(i) are proposed to be added, to correspond
to paragraph (b) et seq. of Sec. 1.173 as revised by the present
notice, see the discussion as to the revision of Sec. 1.173. It is
considered advantageous for the reexamination and reissue provisions to
correspond with each other to the maximum extent possible, in order to
eliminate confusion. Paragraphs (d)(3) and (d)(4) of Sec. 1.530 are
proposed to be redesignated as paragraphs (j) and (k) of Sec. 1.530.
Section 1.530(l) is proposed to be added to make it clear that
where the inventorship of a patent being reexamined is to be corrected,
a petition for correction of inventorship which complies with
Sec. 1.324 must be submitted during the prosecution of the
reexamination proceeding. If the petition under Sec. 1.324 is granted,
a certificate of correction indicating the change of inventorship will
not be issued, because the reexamination certificate that will
ultimately issue will contain the appropriate change-of-inventorship
information (i.e., the certificate of correction is in effect merged
with the reexamination certificate). In the rare instances where the
reexamination proceeding terminates but does not result in a
reexamination certificate under Sec. 1.570 (reexamination is vacated or
the order for reexamination is denied), patentee may then request that
the inventorship be corrected by a certificate of correction indicating
the change of inventorship.
Section 1.550: Where an application has become abandoned for
failure to timely respond, the application can be revived under 35
U.S.C. 133 upon an appropriate showing of unavoidable delay via
petition for revival and a petition fee. Analogously, where a
reexamination proceeding becomes terminated for failure to timely
respond, the proceeding can be restored to pendency under 35 U.S.C. 133
upon an appropriate showing of unavoidable delay, again via a petition
and fee. See In re Katrapat, AG, 6 USPQ2d 1863, 1865-66 (Comm'r Pat.
1988).
In a situation where an appropriate showing of unavoidable delay
cannot be made, an abandoned application can be revived upon an
appropriate showing that the delay was unintentional via a petition and
fee. The showing that the delay was unintentional is a lesser standard
than that of unavoidable delay; however, the required petition fee for
an unintentional delay petition is substantially larger than that of an
unavoidable delay petition. This unintentional delay alternative has
been found to be highly desirable to deal with situations where the
higher standard for revival cannot be met; to eliminate paperwork,
time, and effort in making the unavoidable delay showing; and to
eliminate the need to request reconsideration if the initial petition
for revival is dismissed or denied.
[[Page 53813]]
Despite the advantages of relief to petitioners via the
unintentional delay alternative, there is no such alternative in
reexamination proceedings. See Katrapat, 6 USPQ2d at 1866-67. It would
be desirable to provide an unintentional delay alternative by
rulemaking. Unfortunately, the statute does not provide a basis for
unintentional delay relief in reexamination proceedings that is
analogous to that for an application. The statutory basis for revival
of an application based upon the unintentional delay standard is 35
U.S.C. 41(a)(7). There is no such statutory basis for restoring a
reexamination proceeding to pendency based upon the unintentional delay
standard.
Section 1.550(c) is proposed to be revised to provide the
reexamination patentee with unintentional delay relief for any reply
filed within the full statutory time period for submission of the
papers that were unintentionally delayed. This relief would be provided
in the form of an extension of time under Sec. 1.550(c), which would be
granted when unintentional delay is established and the appropriate
extension of time fee is paid.
This avenue of unintentional delay relief is expected to deal with
the majority of reexamination proceedings terminated for untimely
response. The reason for this is as follows. Late responses are most
often generated because of one of three reasons: (1) The patentee does
not realize that an extension must be requested prior to the response
due date and thus, files the response after the due date together with
an extension request; (2) the patentee files the extension request
shortly prior to the due date but fails to give reasons for the
extension, and the time expires before a proper reexamination extension
request can subsequently be provided and (3) the patentee is aware of
the need for giving reasons and for filing of the request prior to the
due date, however, the reminder docket system is not set up for the
reexamination type of extension request and the request is not timely
or properly made. In all three of these situations, the extension
generally reaches the Office prior to the full six-month statutory
period for submission of the response, especially given the fact that a
one- or two-month shortened statutory period is set for response in
reexamination. If there is time remaining in the statutory period, the
Office can notify the patentee that an extension in accordance with
Sec. 1.550(c)(2) is needed to maintain pendency.
It is understood that the proposed revision will not provide relief
to patentees in all cases with an unintentional termination of
reexamination proceedings. However, in the absence of a statutory
amendment to providing unintentional delay relief analogous to that of
35 U.S.C. 41(a)(7) for an application, the present rule change is
believed to be the best avenue available to give patentees
unintentional delay relief in reexamination proceedings.
Section 1.666: Section 1.666(b) is proposed to be amended to change
the reference to the fee set forth in ``Sec. 1.17(i)'' to the fee set
forth in ``Sec. 1.17(h).'' This change is for consistency with the
changes to Sec. 1.17(h) and Sec. 1.17(i). See discussion of changes to
Sec. 1.17(h) and Sec. 1.17(i).
Section 1.720: Section 1.720(b) is proposed to be amended to
clarify that a patent extended under Sec. 1.701 or Sec. 1.790 would
also be eligible for patent term extension. Section 1.720(g) is
proposed to be amended to clarify that an application for patent term
extension may be timely filed during the period of an interim extension
under Sec. 1.790.
Section 1.730: Section 1.730 is proposed to be amended to add new
paragraphs (b), (c) and (d) which state who should sign the patent term
extension application and what proof of authority may be required of
the person signing the application. 35 U.S.C. 156 provides that an
application for patent term extension must be filed by the patent owner
of record or an agent of the patent owner. The Office interprets an
agent of a patent owner to be either a licensee of the patent owner
(for example, the party that sought permission from the Food and Drug
Administration for permission to commercially use or sell a product,
i.e., the marketing applicant), or a registered attorney or agent.
Proposed Sec. 1.730(b) explains that, if the application is submitted
by the patent owner, the correspondence must be signed by the patent
owner or a registered practitioner. Proposed Sec. 1.730(c) states that,
if the application is submitted by an agent of the patent owner, the
correspondence must be signed by a registered practitioner, and that
the Office may require proof that the agent is authorized to act on
behalf of the patent owner. Lastly, proposed Sec. 1.730(d) states that
the Office may require proof of authority of a registered practitioner
who signs the application for patent term extension on behalf of the
patent owner or the agent of the patent owner.
Section 1.740: Currently, for each product claim, method of use
claim, and method of manufacturing claim which reads on the approved
product, a showing is required demonstrating the manner in which each
applicable claim reads on the approved product. Section 1.740(a)(9) is
proposed to be amended to provide that the application for patent term
extension only needs to explain how one product claim claims the
approved product, if there is a claim to the product. In addition, the
application would only need to explain how one method of use claim
claims the method of use of the approved product, if there is a claim
to the method of use of the product. Lastly, the application would only
need to explain how one claim claims the method of manufacturing the
approved product, if there is a claim to the method of manufacturing
the approved product. With this proposed change, applicants for patent
term extension should be able to reduce the time required to prepare
the application since at the most only three claims would have to be
addressed rather than all the claims that read on the three categories.
Each claim that claims the approved product, the method of use of the
approved product, or the method of manufacturing the approved product
would still be required to be listed. See 35 U.S.C. 156(d)(1)(B).
Section 1.740(a)(10) is proposed to be amended to separate the text
into paragraphs (A), (B) and (C) to aid in comprehension of the text.
Section 1.740(a)(14) is proposed to be amended to add ``and'' after
the semicolon since the paragraph is now the next to last paragraph.
Section 1.740(a)(15) is proposed to be amended to change the
semicolon to a period.
Section 1.740(a)(16) is proposed to be moved to Sec. 1.740(b), the
number of copies changed from two to three, and to eliminate the
express ``certification'' requirement.
Section 1.740(a)(17) is proposed to be deleted as the requirement
for an oath or declaration is being deleted in Sec. 1.740(b).
Section 1.740(b) is proposed to be amended to delete the
requirement for an oath or declaration since the averments set forth in
Sec. 1.740(b) are implicit in the submission of an application for
patent term extension and the signature to the application.
Section 1.740(c) is proposed to be amended to increase the time
period for response to a notice of informality for an application for
patent term extension from one month to two months, where the notice of
informality does not set a time period.
Section 1.741: Section 1.741(a) is proposed to be amended to
clarify the
[[Page 53814]]
language to reference Secs. 1.8 and 1.10 instead of referencing the
rules and the titles of the rules. Section 1.741(a)(5) is proposed to
be amended to correct the format of the citation of the statute.
Section 1.741(b) is proposed to be amended to provide that requests for
review of a decision that the application for patent term extension is
incomplete, or review of the filing date accorded to the application,
must be filed as a petition under Sec. 1.741 accompanied by the fee set
forth in Sec. 1.17(h), rather than a petition under Sec. 1.181, and
that the petition must be filed within two months of the date of the
notice, and that the extension of time provisions of Sec. 1.136 apply.
Section 1.780: Section 1.780, including the title, is proposed to
be amended to use terminology consistent with current practice by
inserting the term ``order.''
Section 1.809: Section 1.809(b) is proposed to be amended to change
``respond'' to ``reply'' (see Sec. 1.111), and Sec. 1.809(b)(1) is
proposed to be amended to eliminate the language discussing payment of
the issue fee. Section 1.809(c) is proposed to be amended to provide
that if an application for patent is otherwise in condition for
allowance except for a needed deposit and the Office has received a
written assurance that an acceptable deposit will be made, applicant
will be notified and given a period of time within which the deposit
must be made in order to avoid abandonment. Section 1.809(c) is also
proposed to be amended to provide that this time period is not
extendable under Sec. 1.136 (a) or (b) (see Sec. 1.136(c)). Section
1.809(c) is also proposed to be amended to eliminate the language
stating that failure to make a needed deposit will result in
abandonment for failure to prosecute because abandonment for failure to
prosecute occurs by operation of law when an applicant fails to timely
comply with such a requirement (see 35 U.S.C. 133).
Section 1.821: The Office indicated in the Advance Notice that the
submission of sequence listings on paper is a significant burden on the
applicants and the Office, and that it was considering changes to
Sec. 1.821 et seq. to: (1) Permit a machine-readable submission of the
nucleotide and/or amino acid sequence listings to be submitted in an
appropriate archival medium; and (2) no longer require the voluminous
paper submission of nucleotide and/or amino acid sequence listings. See
Changes to Implement the Patent Business Goals, 63 FR at 53510-12, 1215
Off. Gaz. Pat. Office at 99-100.
Unlike a computer program listing appendix under Sec. 1.96(c), a
sequence listing under Sec. 1.821 is part of the disclosure of the
application. The Office, however, 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) and title XVII of
the Omnibus Consolidated and Emergency Supplemental Appropriations Act,
1999, Pub. L. 105-277, 112 Stat. 2681 (1998) (the Government Paperwork
Elimination Act). 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
Office from accepting an electronically filed document. Likewise, there
is nothing in the patent statute that precludes the Office from
designating an ``electronic'' record of an application file as the
Office's ``official'' copy of the application.
As discussed with regard to the proposed change to Sec. 1.96, CD-
ROM and CD-R are the only practical electronic media of archival
quality. The CD-ROM or CD-R sequence listing would serve as the
``original'' of the sequence listing, yet still offer the conveniences
of small size and ease in viewing. Thus, the Office is specifically
considering revising Sec. 1.821 et seq. to permit applicants to submit
the official copy of the sequence listing either on paper or on CD-ROM
or CD-R.
Section 1.821(c) is proposed to be amended to provide that a
``Sequence Listing'' must be submitted either: (1) on paper in
compliance with Sec. 1.823(a)(1) and (b); or (2) as a CD-ROM or CD-R in
compliance with Sec. 1.823(a)(2) and (b) that will be retained with the
paper file. Section 1.821 is also proposed to be amended to provide
that applicant may submit a second copy of the CD-ROM or CD-R
``Sequence Listing'' to satisfy the requirement for a ``Sequence
Listing'' in a computer readable format pursuant to Sec. 1.821(e),
provided that the CD-ROM or CD-R ``Sequence Listing'' meets the
requirements of Sec. 1.824(c)(4). However, in order for a sequence
listing to be a part of an international application, it must be filed
in paper.
Section 1.821(e) and Sec. 1.821(f) are proposed to be amended for
consistency with the provisions in Sec. 1.821(c) that permit the
official copy of the ``Sequence Listing'' required by Sec. 1.821(c) to
be a paper or a CD-ROM or CD-R copy. Should these provisions be
adopted, conforming changes may be made in the regulations to
accommodate international applications in the national stage.
Section 1.823: The heading of Sec. 1.823 is proposed to be amended
for consistency with the provisions in Sec. 1.821(c) that permit the
official copy of the ``Sequence Listing'' required by Sec. 1.821(c) to
be a paper or a CD-ROM or CD-R copy. Section 1.823(a) is proposed to be
amended to be divided into a paragraph (a)(1) that sets forth its
current requirement as applying if the ``Sequence Listing'' submitted
pursuant to Sec. 1.821(c) is on paper, and a paragraph (a)(2) setting
forth the requirements if the ``Sequence Listing'' submitted pursuant
to Sec. 1.821(c) is on a CD-ROM or CD-R. Section 1.823(a)(2) is
proposed to provide that: (1) a ``Sequence Listing'' submitted on a CD-
ROM or CD-R must be a text file in the American Standard Code for
Information Interchange (ASCII) in accordance with the standards for
that medium set forth in 36 CFR 1228.188(c)(2)(i) (no other format
allowed); (2) the CD-ROM or CD-R ``Sequence Listing'' must be
accompanied by documentation on paper that contains the machine format
(e.g., IBM-PC, Macintosh (etc.)), the operating system (e.g., MS-DOS,
Macintosh, Unix) and any other special information that is necessary to
identify, maintain, and interpret the electronic ``Sequence Listings'';
and (3) a notation that ``Sequence Listing'' is submitted on a CD-ROM
or CD-R must be placed conspicuously in the specification (see
Sec. 1.77(b)(11)). Section 1.823(a)(2) is also proposed to provide that
the CD-ROM or CD-R ``Sequence Listing'' must be labeled with the
following information: (1) The name of each inventor (if known); (2)
title of the invention; (3) the sequence identifiers of the ``Sequence
Listings'' on that CD-ROM or CD-R; and (4) the docket number used by
the person filing the application to identify the application (if
applicable). Finally, Sec. 1.823(c)(4) is proposed to be amended to
refer to CD-R (as well as the CD-ROM currently provided for). Should
these provisions be adopted, conforming changes may be made in the
regulations to accommodate international applications in the national
stage.
[[Page 53815]]
Section 1.825: Section 1.825(a) is proposed to be amended to
provide that any amendment to the CD-ROM or CD-R copy of the ``Sequence
Listing'' submitted pursuant to Sec. 1.821 must be made by submission
of a new CD-ROM or CD-R containing a substitute ``Sequence Listing,''
and that such amendments must be accompanied by a statement that
indicates support for the amendment in the application-as-filed, and a
statement that the new CD-ROM or CD-R includes no new matter. Section
1.825(b) is proposed to be amended to provide that any amendment to the
CD-ROM or CD-R copy of the ``Sequence Listing'' pursuant to
Sec. 1.825(a) must be accompanied by a substitute copy of the computer
readable form of the ``Sequence Listing'' required pursuant to
Sec. 1.821(e), including all previously submitted data with the
amendment incorporated therein, and accompanied by a statement that the
computer readable form copy is the same as the new CD-ROM or CD-R copy
of the ``Sequence Listing.'' Should these provisions be adopted,
conforming changes may be made in the regulations to accommodate
international applications in the national stage.
The comments are addressed above in the discussion of the proposed
change to Sec. 1.96. See discussion of Sec. 1.96.
Part 3
Section 3.27: Section 3.27 is proposed to be amended to eliminate
the reference to petitions under Sec. 3.81(b) and the reference to a
document required by Executive Order 9424 which does not affect title.
See discussion of Sec. 3.81(b).
Section 3.71: It is proposed that Sec. 3.71 be revised as discussed
immediately below. In conjunction with the proposed revision, the
section would be broken into paragraphs (a) through (d), with each
paragraph being given a heading, in order to more clearly delineate the
topics of the paragraphs.
Proposed paragraph (a) of Sec. 3.71 would clarify that the assignee
must be of record in a U.S. national patent application in order to
conduct prosecution in place of the inventive entity (the inventors of
the application) or any previous assignee that was entitled to conduct
prosecution.
Paragraph (b) of Sec. 3.71 has been proposed in order to clarify
and define what is meant by the Sec. 3.71(a) assignee which may conduct
the prosecution of a U.S. national application for a patent.
A national patent application is owned by the inventor(s), an
assignee or assignees of the inventor(s), or some combination of the
two. All parties having a portion of the ownership must act together in
order to be entitled to conduct the prosecution.
If there is an assignee of the entire right, title and interest in
the patent application, Sec. 3.71(b)(1) (as proposed) states that the
single assignee may act alone to conduct the prosecution of an
application.
If there is no assignee of the entire right, title and interest of
the patent application, then two possibilities exist:
(1) The application has not been assigned; thus, ownership resides
solely in the inventor(s) (i.e., the applicant(s)). In this situation,
Sec. 3.71 does not apply (since there is no assignee), and the single
inventor, or the combination of all the joint inventors, is needed to
conduct the prosecution of an application.
(2) The application has been assigned; thus, there is at least one
``partial assignee.'' As pointed out in Sec. 3.71(b)(2), a partial
assignee is any assignee of record who has less than the entire right,
title and interest in the application. The application will be owned by
the combination of all partial assignees and all inventors who have not
assigned away their right, title and interest in the application. As
proposed, Sec. 3.71(b)(2) points out that where at least one inventor
retains an ownership interest together with the partial assignee(s),
the combination of all partial assignees and inventors retaining
ownership interest is needed to conduct the prosecution of an
application. Where no inventor retains an ownership interest, the
combination of all partial assignees is needed to conduct the
prosecution of an application.
To illustrate this, note as follows. Inventors A and B invent a
process and file their application. Inventors A and B together may
conduct prosecution. Inventor A then assigns his/her rights in the
application to Corporation X. As soon as Corporation X (now a partial
assignee) is made of record in the application as a partial assignee
(by filing a statement pursuant to Sec. 3.73(b) stating fifty percent
ownership), Corporation X and Inventor B together may conduct
prosecution. Corporation X and Inventor B then both assign their rights
in the application to Corporation Y. As soon as Corporation Y (now an
assignee of the entire right, title and interest) is made of record in
the application as the assignee (by filing a statement pursuant to
Sec. 3.73(b) stating one-hundred percent ownership), Corporation Y may,
by itself, conduct prosecution.
This definition of the assignee would apply wherever the assignee
is permitted to take action in the prosecution of an application for
patent.
Proposed paragraph (c) of Sec. 3.71 defines the meaning of the term
``of record'' used in proposed paragraph (b) of Sec. 3.71. An assignee
is made of record in an application by filing a statement which is in
compliance with Sec. 3.73(b). Note that the assignee being made ``of
record'' in an application is different than the recording of an
assignment in the assignment records of the Office pursuant to
Sec. 3.11.
Proposed paragraphs (a) through (c) of Sec. 3.71 have been drafted
to allow for the situation where an assignee takes action in the
prosecution of a reexamination proceeding (in addition to that where a
patent application is involved). In a reexamination, the assignee has
the entire right, title and interest in the patent upon which
reexamination is based.
Proposed paragraph (d) of Sec. 3.71, concerning trademarks, expands
the list of actions an assignee may take or request. Specifically, an
assignee may also rely on its federal trademark application or
registration when filing papers against a third party. This subsection
also corrects the inappropriate use of the term ``prosecution'' when
referring to maintaining a registered trademark.
In various places in proposed Sec. 3.71, ``national'' has been
added before ``application.'' Section 3.71 is directed to national
applications as defined in Sec. 1.9(a)(1) and not to international
(PCT) applications. In an international (PCT) application the assignee
is often the applicant for some, or all, of the designated states
(except the U.S.) and may control prosecution as the applicant. Section
3.71 would apply to international applications after entry into the
U.S. national stage under 35 U.S.C. 371.
Section 3.73: In Paragraph (a) of Sec. 3.73, it is proposed to
revise the second sentence to include a trademark registration, in
addition to a trademark application which is currently recited. The
sentence would read: ``The original applicant is presumed to be the
owner of a trademark application or registration, unless there is an
assignment.''
Under the proposal, paragraph (b) of Sec. 3.73 would be revised for
clarity and paragraph formatting. Additionally, paragraph (b) of
Sec. 3.73 is proposed to be revised to clarify that the statement
establishing ownership must explicitly identify the assignee (by adding
the language ``a signed statement identifying the assignee * * *'').
Paragraph (b) of Sec. 3.73 is further proposed to be revised to make it
clear
[[Page 53816]]
that while the submission establishing ownership is separate from, and
in addition to, the specific action taken by the assignee (e.g.,
appointing a new attorney), the two may be presented together as part
of the same paper. This would be done by adding that ``The
establishment of ownership by the assignee may be combined with the
paper that requests or takes the action.''
Currently, paragraph (b) of Sec. 3.73 requires that the submission
(statement) establishing ownership ``must be signed by a party
authorized to act on behalf of the assignee.'' Under the proposal, this
language would be expanded upon by newly added paragraph (b)(2) of
Sec. 3.73 which would clarify what is acceptable to show that the party
signing the submission is authorized to act on behalf of the assignee.
(1) The submission could include a statement that the party signing the
submission is authorized to act on behalf of the assignee. (2)
Alternatively, the submission could be signed by a person having
apparent authority to sign on behalf of the assignee, e.g., an officer
of the assignee.
In the first case, the statement that the party signing the
submission is authorized to act on behalf of the assignee could be an
actual statement included in the text of the submission that the
signing person ``is authorized to act on behalf of the assignee.''
Alternatively, it could be in the form of a resolution by the
organization owning the property (e.g., a corporate resolution, a
partnership resolution) included with the submission.
In the second case, the title of the person signing must be given
in the submission, and it must be one which empowers the person to act
on behalf of the assignee. The president, vice-president, secretary,
treasurer, and chairman of the board of directors are presumed to have
authority to act on behalf of the organization. Modifications of these
basic titles are acceptable, such as vice-president for sales,
executive vice-president, assistant treasurer, vice-chairman of the
board of directors. A title such as manager, director, administrator,
or general counsel does not clearly set forth that the person is an
officer of the organization, and as such, does not provide a
presumption of authority to sign the statement on behalf of the
assignee. A power of attorney from the inventors or the assignee to a
practitioner to prosecute an application does not make that
practitioner an official of an assignee and does not empower the
practitioner to sign the statement on behalf of the assignee.
Proposed new paragraph (c)(1) of Sec. 3.73 would require that the
submission establishing ownership by the assignee must be submitted
prior to, or at the same time, that the paper requesting or taking
action is submitted. If the submission establishing ownership is not
present, the action sought to be taken will not be given effect.
Proposed new paragraph (c)(2) of Sec. 3.73 would point out that for
patents, if an assignee of less than the entire right, title and
interest (i.e., a partial assignee) fails to indicate in the submission
the extent (e.g., by percentage) of its ownership interest, the Office
may refuse to accept the submission.
Section 3.81: Section 3.81 is proposed to be amended to eliminate
the provisions of Sec. 3.81(b). As discussed above, changes in the
patent printing process will dramatically reduce the period between the
date of issue fee payment and the date a patent is issued. This change
will eliminate the opportunity for providing an assignee name after the
date the issue fee is paid.
Part 5
Section 5.1: Section 5.1 is proposed to be amended to locate its
current text in Sec. 5.1(a).
Section 5.1 is also proposed to be amended to add a Sec. 5.1(b) to
clarify that application as used in Part 5 includes provisional
applications filed under 35 U.S.C. 111(b) (Sec. 1.9(a)(2)),
nonprovisional applications filed under 35 U.S.C. 111(a) or entering
the national stage from an international application after compliance
with 35 U.S.C. 371 (Sec. 1.9(a)(3)), or international applications
filed under the Patent Cooperation Treaty prior to entering the
national stage of processing (Sec. 1.9(b)).
Section 5.1 is also proposed to be amended to add a Sec. 5.1(c) to
state current practice that: (1) Patent applications and documents
relating thereto that are national security classified (see
Sec. 1.9(i)) and contain authorized national security markings (e.g.,
``Confidential,'' ``Secret'' or ``Top Secret'') are accepted by the
Office; and (2) national security classified documents filed in the
Office must be either hand-carried to Licensing and Review or mailed to
the Office in compliance with Sec. 5.1(a).
Section 5.1 is also proposed to be amended to add a Sec. 5.1(d) to
provide that: (1) The applicant in a national security classified
patent application must obtain a secrecy order pursuant to Sec. 5.2(a);
(2) if a national security classified patent application is filed
without a notification pursuant to Sec. 5.2(a), the Office will set a
time period within which either the application must be declassified,
or the application must be placed under a secrecy order pursuant to
Sec. 5.2(a), or the applicant must submit evidence of a good faith
effort to obtain a secrecy order pursuant to Sec. 5.2(a) from the
relevant department or agency in order to prevent abandonment of the
application; and (3) if evidence of a good faith effort to obtain a
secrecy order pursuant to Sec. 5.2(a) from the relevant department or
agency is submitted by the applicant within the time period set by the
Office, but the application has not been declassified or placed under a
secrecy order pursuant to Sec. 5.2(a), the Office will again set a time
period within which either the application must be declassified, or the
application must be placed under a secrecy order pursuant to
Sec. 5.2(a), or the applicant must submit evidence of a good faith
effort to again obtain a secrecy order pursuant to Sec. 5.2(a) from the
relevant department or agency in order to prevent abandonment of the
application. Section 5.1(d) as proposed sets forth the treatment of
national security classified applications that is currently set forth
in MPEP 130.
Section 5.1 is also proposed to be amended to add a Sec. 5.1(e) to
provide that a national security classified patent application will not
be allowed pursuant to Sec. 1.311 of this chapter until the application
is declassified and any secrecy order pursuant to Sec. 5.2(a) has been
rescinded.
Section 5.1 is also proposed to be amended to add a Sec. 5.1(f) to
clarify that applications on inventions not made in the United States
and on inventions in which a U.S. Government defense agency has a
property interest will not be made available to defense agencies.
Section 5.2: Section 5.2(c) is proposed to be added to provide
that: (1) An application disclosing any significant part of the subject
matter of an application under a secrecy order pursuant to Sec. 5.2(a)
also falls within the scope of such secrecy order; (2) any such
application that is pending before the Office must be promptly brought
to the attention of Licensing and Review, unless such application is
itself under a secrecy order pursuant to Sec. 5.2(a); and (3) any
subsequently filed application containing any significant part of the
subject matter of an application under a secrecy order pursuant to
Sec. 5.2(a) must either be hand-carried to Licensing and Review or
mailed to the Office in compliance with Sec. 5.1(a).
Section 5.12: Section 5.12(b) is proposed to be amended to require
that the fee set forth in Sec. 1.17(h) is required for any petition
under Sec. 5.12 for a foreign filing license. As a practical matter,
all petitions under Sec. 5.12 are
[[Page 53817]]
treated on an expedited basis. Therefore, it is appropriate to require
the fee set forth in Sec. 1.17(h) for all petitions under Sec. 5.12.
Part 10
Section 10.23: Section 10.23(c)(11) is proposed to be amended to
add the phrase ``[e]xcept as permitted by Sec. 1.52(c)'' for
consistency with the proposed amendment to Sec. 1.52(c).
Review Under the Paperwork Reduction Act of 1995 and Other
Considerations
This 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
not significant for the purposes of Executive Order 12866 (September
30, 1993).
This 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 notice have been reviewed
and previously approved by OMB under the following control numbers:
0651-0016, 0651-0020, 0651-0021, 0651-0022, 0651-0024, 0651-0027, 0651-
0031, 0651-0032, 0651-0033, 0651-0034, 0651-0035, and 0651-0037.
As required by the Paperwork Reduction Act of 1995 (44 U.S.C.
3507(d)), the Patent and Trademark Office has submitted an information
collection package to OMB for its review and approval of the proposed
information collections under OMB control numbers 0651-0031, 0651-0032,
and 0651-0035. The Patent and Trademark Office is submitting
information collection packages to OMB for its review and approval of
these information collections because the following changes proposed in
this notice do affect the information collection requirements
associated with the information collections under OMB control numbers
0651-0031, 0651-0032, and 0651-0035: (1) The proposed change to
Secs. 1.27 and 1.28 will permit an applicant to establish small entity
status in an application by a simple assertion of entitlement to small
entity status (without a statement having a formalistic reference to
Sec. 1.9 or a standard form (PTO/SB/09/10/11/12)); (2) the proposed
change to Secs. 1.55, 1.63 and 1.78 would eliminate the need for an
applicant using the application data sheet (Sec. 1.76) to provide
priority claims in the oath or declaration or specification; (3) the
proposed change to Sec. 1.96 would require applicants to submit lengthy
computer listings on a CD-ROM or CD-R (rather than microfiche); (4) the
proposed change to Secs. 1.821, 1.823, and 1.825 would permit
applicants to submit sequence listings on a CD-ROM or CD-R (rather than
paper); and (5) the proposed change to Sec. 1.155 would allow an
applicant to seek expedited examination of a design application by
filing a request for expedited examination.
As discussed above, the notice also involves currently approved
information collections under OMB control numbers: 0651-0016, 0651-
0020, 0651-0021, 0651-0022, 0651-0024, 0651-0027, 0651-0033, 0651-0034,
and 0651-0037. The Patent and Trademark Office is not resubmitting
information collection packages to OMB for its review and approval of
these information collections because the changes proposed in this
notice do not affect the information collection requirements associated
with the information collections under these OMB control numbers.
The title, description and respondent description of each of the
information collections are shown below with an estimate of each of the
annual reporting burdens. Included in each estimate is the time for
reviewing instructions, gathering and maintaining the data needed, and
completing and reviewing the collection of information. Any collections
of information whose requirements will be revised as a result of the
proposed rule changes discussed in this notice will be submitted to OMB
for approval. The principal impact of the changes under consideration
in this notice is to raise the efficiency and effectiveness of the
Patent and Trademark Office's business processes to make the Patent and
Trademark Office a more business-like agency and increase the level of
the Patent and Trademark Office's service to the public.
OMB Number: 0651-0016.
Title: Rules for Patent Maintenance Fees.
Form Numbers: PTO/SB/45/47/65/66.
Type of Review: Approved through July of 1999.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 273,800.
Estimated Time Per Response: 0.08 hour.
Estimated Total Annual Burden Hours: 22,640 hours.
Needs and Uses: Maintenance fees are required to maintain a patent,
except for design or plant patents, in force under 35 U.S.C. 41(b).
Payment of maintenance fees are required at 3\1/2\, 7\1/2\ and 11\1/2\
years after the grant of the patent. A patent number and application
number of the patent on which maintenance fees are paid are required in
order to ensure proper crediting of such payments.
OMB Number: 0651-0020.
Title: Patent Term Extension.
Form Numbers: None.
Type of Review: Approved through September of 2001.
Affected Public: Individuals or households, businesses or other
for-profit, not-for-profit institutions, farms, Federal Government, and
state, local, or tribal governments.
Estimated Number of Respondents: 57.
Estimated Time Per Response: 22.8 hour.
Estimated Total Annual Burden Hours: 1,302 hours.
Needs and Uses: The information supplied to the PTO by an applicant
seeking a patent term extension is used by the Patent and Trademark
Office, the Department of Health and Human Services, and the Department
of Agriculture to determine the eligibility of a patent for extension
and to determine the period of any such extension. The applicant can
apply for patent term and interim extensions, petition the Patent and
Trademark Office to review final eligibility decisions, and withdraw
patent term extensions. If there are multiple patents, the applicant
can designate which patents should be extended. An applicant can also
declare their eligibility to apply for a patent term extension.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101,ANNEX/134/144, PTO-1382, PCT/IPEA/401,
PCT/IB/328.
Type of Review: Approved through May of 2000.
Affected Public: Individuals or Households, Business or Other For-
Profit, Federal Agencies or Employees, Not-for-Profit Institutions,
Small Businesses or Organizations.
Estimated Number of Respondents: 102,950.
Estimated Time Per Response: 0.9538 hour.
Estimated Total Annual Burden Hours: 98,195 hours.
Needs and Uses: The information collected is required by the Patent
Cooperation Treaty (PCT). The general
[[Page 53818]]
purpose of the PCT is to simplify the filing of patent applications on
the same invention in different countries. It provides for a
centralized filing procedure and a standardized application format.
OMB Number: 0651-0022.
Title: Deposit of Biological Materials for Patent Purposes.
Form Numbers: None.
Type of Review: Approved through December of 2000.
Affected Public: Individuals or Households, State or Local
Governments, Farms, Business or Other For-Profit, Federal Agencies or
Employees, Not-for-Profit Institutions, Small Businesses or
Organizations.
Estimated Number of Respondents: 3,300.
Estimated Time Per Response: 1.0 hour.
Estimated Total Annual Burden Hours: 3,300 hours.
Needs and Uses: Information on depositing of biological materials
in depositories is required for (1) Office determination of compliance
with the patent statute where the invention sought to be patented
relies on biological material subject to deposit requirement, which
includes notifying interested members of the public where to obtain
samples of deposits, and (2) depositories desiring to be recognized as
suitable by the Office.
OMB Number: 0651-0024.
Title: Requirements for Patent Applications Containing Nucleotide
Sequence and/or Amino Acid Sequence Disclosures.
Form Numbers: None.
Type of Review: Approved through November of 1999.
Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions, and Federal
Government.
Estimated Number of Respondents: 4,600.
Estimated Time Per Response: 80 minutes.
Estimated Total Annual Burden Hours: 6,133 hours.
Needs and Uses: This information is used by the Office during the
examination process, the public and the patent bar. The Patent and
Trademark Office also participates with the EPO and JPO in a Trilateral
Sequence Exchange project, to facilitate the international exchange of
published sequence data.
OMB Number: 0651-0027.
Title: Changes in Patent and Trademark Assignment Practices.
Form Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41.
Type of Review: Approved through May of 2002.
Affected Public: Individuals or Households and Businesses or Other
For-Profit.
Estimated Number of Respondents: 209,040.
Estimated Time Per Response: 0.5 hour.
Estimated Total Annual Burden Hours: 104,520 hours.
Needs and Uses: The Office records about 209,040 assignments or
documents related to ownership of patent and trademark cases each year.
The Office requires a cover sheet to expedite the processing of these
documents and to ensure that they are properly recorded.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08/21-27/31/42/43/61/62/63/64/67/68/91/92/96/
97.
Type of Review: Approved through September of 2000.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 2,040,630.
Estimated Time Per Response: 0.39 hours.
Estimated Total Annual Burden Hours: 788,421 hours.
Needs and Uses: During the processing for an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the Office concerning the examination of a
specific application. The specific information required or which may be
submitted includes: Information Disclosure Statements; Terminal
Disclaimers; Petitions to Revive; Express Abandonments; Appeal Notices;
Petitions for Access; Powers to Inspect; Certificates of Mailing or
Transmission; Statements under Sec. 3.73(b); Amendments, Petitions and
their Transmittal Letters; and Deposit Account Order Forms.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/13PCT/17-19/29/101-110.
Type of Review: Approved through September of 2000.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 344,100.
Estimated Time Per Response: 8.7 hours.
Estimated Total Annual Burden Hours: 2,994,160 hours.
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the
criteria set forth in the patent statute and regulations. The standard
Fee Transmittal form, New Utility Patent Application Transmittal form,
New Design Patent Application Transmittal form, New Plant Patent
Application Transmittal form, Declaration, and Plant Patent Application
Declaration will assist applicants in complying with the requirements
of the patent statute and regulations, and will further assist the
Office in processing and examination of the application.
OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
Type of Review: Approved through September of 2000.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 135,250.
Estimated Time Per Response: 0.325 hour.
Estimated Total Annual Burden Hours: 43,893 hours.
Needs and Uses: This collection of information is required to
administer the patent laws pursuant to title 35, U.S.C., concerning the
issuance of patents and related actions including correcting errors in
printed patents, refiling of patent applications, requesting
reexamination of a patent, and requesting a reissue patent to correct
an error in a patent. The affected public includes any individual or
institution whose application for a patent has been allowed or who
takes action as covered by the applicable rules.
OMB Number: 0651-0034.
Title: Secrecy/License to Export.
Form Numbers: None.
Type of Review: Approved through January of 2001.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 2,187.
Estimated Time Per Response: 0.67 hour.
Estimated Total Annual Burden Hours: 1,476 hours.
Needs and Uses: In the interest of national security, patent laws
and regulations place certain limitations on the disclosure of
information contained in patents and patent applications and
[[Page 53819]]
on the filing of applications for patent in foreign countries.
OMB Number: 0651-0035.
Title: Address-Affecting Provisions.
Form Numbers: PTO/SB/81-84/121-125.
Type of Review: Approved through June of 1999.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 263,520.
Estimated Time Per Response: 0.05 hour.
Estimated Total Annual Burden Hours: 13,386 hours.
Needs and Uses: Under existing law, a patent applicant or assignee
may appoint, revoke or change a representative to act in a
representative capacity. Also, an appointed representative may withdraw
from acting in a representative capacity. This collection includes the
information needed to ensure that Office correspondence reaches the
appropriate individual.
OMB Number: 0651-0037.
Title: Provisional Applications.
Form Numbers: PTO/SB/16.
Type of Review: Approved through January of 2001.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 25,000.
Estimated Time Per Response: 8.0 hour.
Estimated Total Annual Burden Hours: 200,000 hours.
Needs and Uses: The information included on the provisional
application cover sheet is needed by the Office to identify the
submission as a provisional application and not some other kind of
submission, to promptly and properly process the provisional
application, to prepare the provisional application filing receipt
which is sent to the applicant, and to identify those provisional
applications which must be reviewed by the Office for foreign filing
licenses.
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 Patent and Trademark Office has submitted an information
collection package to OMB for its review and approval of the proposed
information collections under OMB control numbers 0651-0031, 0651-0032,
and 0651-0035. As discussed above, the notice also involves currently
approved information collections under OMB control numbers: 0651-0016,
0651-0020, 0651-0021, 0651-0022, 0651-0024, 0651-0027, 0651-0033, 0651-
0034, and 0651-0037. The Patent and Trademark Office is not
resubmitting information collection packages to OMB for its review and
approval of these information collections because the changes proposed
in this notice do not materially affect, or change the burden hours
associated with, 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
Building, 725 17th Street, NW, room 10235, Washington, DC 20503,
Attention: Desk Officer for the Patent and Trademark Office.
The Chief Counsel for Regulation of the Department of Commerce
certified to the Chief Counsel for Advocacy, Small Business
Administration, that the changes proposed in this rule, if adopted,
would not have a significant impact on a substantial number of small
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). In furtherance
of the Patent Business Goals, the Office is proposing changes to the
rules of practice to eliminate unnecessary formal requirements,
streamline the patent application process, and simplify and clarify
procedures. In streamlining this process, the Office will be able to
issue a patent in a shorter time by eliminating formal requirements
that must be performed by the applicant, his or her representatives and
the Office. All applicants will benefit from a reduced overall cost to
them for receiving patent protection and from a faster receipt of their
patents. In addition, small entities will benefit from the proposed
changes to the requirements for establishing small entity status under
Sec. 1.27 for purposes of paying reduced patent fees under 35 U.S.C.
41(h). The currently used small entity statement forms are proposed to
be eliminated. Small entity status would be established at any time by
a simple assertion of entitlement to small entity status. A simpler
procedure to establish small entity status would reduce processing time
with the Office and would be a benefit to small entity applicants as it
would eliminate the time-consuming and aggravating processing
requirements that are mandated by the current rules.
The Patent and Trademark Office has determined that this notice has
no Federalism implications affecting the relationship between the
National Government and the States as outlined in Executive Order
12612.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
37 CFR Part 3
Administrative practice and procedure, Inventions and patents,
Reporting and record keeping requirements.
37 CFR Part 5
Classified information, Foreign relations, Inventions and patents.
37 CFR Part 10
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
For the reasons set forth in the preamble, 37 CFR parts 1, 3, 5,
and 10 are proposed to be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR part 1 is revised to read as
follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Section 1.4 is proposed to be amended by revising paragraphs (b)
and (c) to read as follows:
Sec. 1.4 Nature of correspondence and signature requirements.
* * * * *
(b) Since each file must be complete in itself, a separate copy of
every paper to be filed in a patent or trademark application, patent
file, trademark registration file, or other proceeding must be
furnished for each file to which the paper pertains, even though the
contents of the papers filed in two or more files may be identical. The
filing of duplicate copies of correspondence in the file of an
application, patent, trademark registration file, or other proceeding
should be avoided, except in situations in which the Office requires
the filing of duplicate copies. The Office
[[Page 53820]]
may dispose of duplicate copies of correspondence in the file of an
application, patent, trademark registration file, or other proceeding.
(c) Since different matters may be considered by different branches
or sections of the Patent and Trademark Office, each distinct subject,
inquiry or order must be contained in a separate paper to avoid
confusion and delay in answering papers dealing with different
subjects.
* * * * *
3. Section 1.6 is proposed to be amended by revising paragraph
(d)(9) to read as follows:
Sec. 1.6 Receipt of correspondence.
* * * * *
(d) * * *
(9) Correspondence to be filed in an interference proceeding which
consists of a preliminary statement under Sec. 1.621; a transcript of a
deposition under Sec. 1.676 or of interrogatories, or cross-
interrogatories; or an evidentiary record and exhibits under
Sec. 1.653.
* * * * *
4. Section 1.9 is proposed to be amended by removing and reserving
paragraphs (c), (d) and (e), and revising paragraph (f) and adding a
new paragraph (i) to read as follows:
Sec. 1.9 Definitions.
* * * * *
(f) Small entities. A small entity as used in this chapter means
any party (person, small business concern, or nonprofit organization)
under paragraphs (f)(1) through (f)(3) of this section.
(1) Person: A person, as used in Sec. 1.27(b), means any inventor
or other individual (e.g., an individual to whom an inventor has
transferred some rights in the invention), who has not assigned,
granted, conveyed, or licensed, and is under no obligation under
contract or law to assign, grant, convey, or license, any rights in the
invention. An inventor or other individual who has transferred some
rights, or is under an obligation to transfer some rights in the
invention to one or more parties, can also qualify for small entity
status if all the parties who have had rights in the invention
transferred to them also qualify for small entity status either as a
person, small business concern, or nonprofit organization under this
section.
(2) Small business concern: A small business concern, as used in
Sec. 1.27(b), means any business concern that:
(i) Has not assigned, granted, conveyed, or licensed, and is under
no obligation under contract or law to assign, grant, convey, or
license, any rights in the invention to any person, concern, or
organization which would not qualify under this section for small
entity status as a person, small business concern, or nonprofit
organization.
(ii) Meets the size standards set forth in 13 CFR part 121 to be
eligible for reduced patent fees. Questions related to size standards
for a small business concern may be directed to: Small Business
Administration, Size Standards Staff, 409 Third Street, SW, Washington,
DC 20416.
(3) Nonprofit organization. A nonprofit organization, as used in
Sec. 1.27(b), means any nonprofit organization that:
(i) Has not assigned, granted, conveyed, or licensed, and is under
no obligation under contract or law to assign, grant, convey, or
license, any rights in the invention to any person who could not
qualify for small entity status, or to any concern or organization
which would not qualify as a small business concern, or a nonprofit
organization under this section, and
(ii) Is either:
(A) A university or other institution of higher education located
in any country;
(B) An organization of the type described in section 501(c)(3) of
the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from
taxation under section 501(a) of the Internal Revenue Code (26 U.S.C.
501(a));
(C) Any nonprofit scientific or educational organization qualified
under a nonprofit organization statute of a state of this country (35
U.S.C. 201(i)); or
(D) Any nonprofit organization located in a foreign country which
would qualify as a nonprofit organization under paragraphs
(f)(3)(ii)(B) or (f)(3)(ii)(C) of this section if it were located in
this country.
(4) License to a Federal Agency. (i) For persons under paragraph
(f)(1) of this section, a license to the Government resulting from a
rights determination under Executive Order 10096 does not constitute a
license so as to prohibit claiming small entity status.
(ii) For small business concerns and nonprofit organizations under
paragraphs (f)(2) and (f)(3) of this section, a license to a Federal
agency resulting from a funding agreement with that agency pursuant to
35 U.S.C. 202(c)(4) does not constitute a license.
* * * * *
(i) National security classified as used in this chapter means
specifically authorized under criteria established by an Act of
Congress or Executive order to be kept secret in the interest of
national defense or foreign policy and, in fact, properly classified
pursuant to such Act of Congress or Executive order.
5. Section 1.12 is proposed to be amended by revising paragraph
(c)(1) to read as follows:
Sec. 1.12 Assignment records open to public inspection.
* * * * *
(c) * * *
(1) Be in the form of a petition including the fee set forth in
Sec. 1.17(h); or
* * * * *
6. Section 1.14 is proposed to be revised to read as follows:
Sec. 1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent
applications are generally preserved in confidence pursuant to 35
U.S.C. 122. Information concerning the filing, pendency, or subject
matter of an application for patent, including status information, and
access to the application, will only be given to the public as set
forth in Sec. 1.11 or in this section.
(1) Status information is:
(i) Whether the application is pending, abandoned, or patented; and
(ii) The application ``numerical identifier'' which may be:
(A) The eight digit application number (the two digit series code
plus the six digit serial number); or
(B) The six digit serial number plus any of the filing date of the
national application, the international filing date, or date of entry
into the national stage.
(2) Access is defined as providing the application file for review
and copying of any material.
(b) When status information may be supplied. Status information of
an application may be supplied by the Office to the public if any of
the following apply:
(1) Access to the application is available pursuant to paragraph
(e) of this section;
(2) The application is referred to by its numerical identifier in a
published patent document (e.g., a U.S. patent or a published
international application) or in a U.S. application open to public
inspection (Sec. 1.11(b) or paragraph (e)(2)(i) of this section); or
(3) The application is a published international application in
which the United States of America has been indicated as a designated
state.
(c) Copy of application-as-filed. If a pending or abandoned
application is incorporated by reference in a U.S. patent, a copy of
that application-as-filed may be provided to any person
[[Page 53821]]
upon written request including the fee set forth in Sec. 1.19(b)(1).
(d) Power to inspect a pending or abandoned application may be
granted by a party named in the application file. Access to an
application may be provided to any person if the application file is
available, and the application contains written authority (e.g., a
power to inspect) in that particular application granting access to
such person that is signed by:
(1) An applicant;
(2) An attorney or agent of record;
(3) An authorized official of an assignee of record (made of record
pursuant to Sec. 3.71 of this chapter); or
(4) A registered attorney or agent named in papers accompanying the
application papers filed under Sec. 1.53 or the national stage
documents filed under Secs. 1.494 or 1.495, if an executed oath or
declaration pursuant to Sec. 1.63 or Sec. 1.497 has not been filed.
(e) Public access to a pending or abandoned application may be
provided. Access to an application may be provided to any person if a
written request for access is submitted, the application file is
available, and any of the following apply:
(1) The application is open to public inspection pursuant to
Sec. 1.11(b); or
(2) The application is abandoned, it is not within the file jacket
of a pending application under Sec. 1.53(d), and it is referred to:
(i) In a U.S. patent; or
(ii) In another U.S. application which is open to public inspection
either pursuant to Sec. 1.11(b) or paragraph (e)(2)(i) of this section.
(f) Applications that may be destroyed. Applications that are
abandoned or for which proceedings are otherwise terminated may be
destroyed, and thus may not be available for access as permitted by
paragraphs (d) or (e) of this section, after twenty years from their
filing or deposit date. Exceptions may be made for applications to
which particular attention has been called and which have been marked
for preservation.
(g) Applications reported to Department of Energy. Applications for
patents which appear to disclose, purport to disclose or do disclose
inventions or discoveries relating to atomic energy are reported to the
Department of Energy, which Department will be given access to the
applications. Such reporting does not constitute a determination that
the subject matter of each application so reported is in fact useful or
is an invention or discovery, or that such application in fact
discloses subject matter in categories specified by 42 U.S.C. 2181 (c)
and (d).
(h) Decisions by the Commissioner or the Board of Patent Appeals
and Interferences. Any decision by the Commissioner or the Board of
Patent Appeals and Interferences which would not otherwise be open to
public inspection may be published or made available for public
inspection if:
(1) The Commissioner believes the decision involves an
interpretation of patent laws or regulations that would be of
precedential value; and
(2) The applicant, or a party involved in an interference for which
a decision was rendered, is given notice and an opportunity to object
in writing within two months on the ground that the decision discloses
a trade secret or other confidential information. Any objection must
identify the deletions in the text of the decision considered necessary
to protect the information, or explain why the entire decision must be
withheld from the public to protect such information. An applicant or
party will be given time, not less than twenty days, to request
reconsideration and seek court review before any portions of a decision
are made public under this paragraph over his or her objection.
(i) Publication pursuant to Sec. 1.47. Information as to the filing
of an application will be published in the Official Gazette in
accordance with Sec. 1.47 (a) and (b).
(j) International applications. Copies of an application file for
which the United States acted as the International Preliminary
Examining Authority, or copies of a document in such an application
file, will be furnished in accordance with Patent Cooperation Treaty
(PCT) Rule 94.2 or 94.3, upon payment of the appropriate fee
(Sec. 1.19(b)(2) or Sec. 1.19(b)(3)).
(k) Access or copies in other circumstances. The Office, either sua
sponte or on petition, may also provide access or copies of an
application if necessary to carry out an Act of Congress or if
warranted by other special circumstances. Any petition by a member of
the public seeking access to, or copies of, any pending or abandoned
application preserved in confidence pursuant to paragraph (a) of this
section, or any related papers, must include:
(1) The fee set forth in Sec. 1.17(h); and
(2) A showing that access to the application is necessary to carry
out an Act of Congress or that special circumstances exist which
warrant petitioner being granted access to the application.
7. Section 1.17 is proposed to be amended by revising paragraphs
(h), (i), (k), (l), (m), and (q) and adding paragraph (t) to read as
follows:
Sec. 1.17 National application processing fees.
* * * * *
(h) For filing a petition to the Commissioner under a $130.00
section listed below which refers to this paragraph.......
Sec. 1.12--for access to an assignment record.
Sec. 1.14--for access to an application.
Sec. 1.47--for filing by other than all the inventors
or a person not the inventor.
Sec. 1.53(e)--to accord a filing date.
Sec. 1.59--for expungement and return of information.
Sec. 1.91--for entry of a model or exhibit.
Sec. 1.102--to make an application special.
Sec. 1.103(a)--to suspend action in application.
Sec. 1.182--for decision on a question not
specifically provided for.
Sec. 1.183--to suspend the rules.
Sec. 1.295--for review of refusal to publish a
statutory invention registration.
Sec. 1.313--to withdraw an application from issue.
Sec. 1.314--to defer issuance of a patent.
Sec. 1.377--for review of decision refusing to accept
and record payment of a maintenance fee filed prior to
expiration of a patent.
Sec. 1.378(e)--for reconsideration of decision on
petition refusing to accept delayed payment of
maintenance fee in an expired patent.
Sec. 1.550(c)(2)--for a petition for an extension of
time to accept an unintentionally delayed response in
a reexamination proceeding.
Sec. 1.644(e)--for petition in an interference.
Sec. 1.644(f)--for request for reconsideration of a
decision on petition in an interference.
[[Page 53822]]
Sec. 1.666(b)--for access to an interference
settlement agreement.
Sec. 1.666(c)--for late filing of interference
settlement agreement.
Sec. 1.741(b)--to accord a filing date to an
application for extension of a patent term.
Sec. 5.12--for expedited handling of a foreign filing
license.
Sec. 5.15--for changing the scope of a license.
Sec. 5.25--for retroactive license.
(i) Processing fee for taking action under a section listed 130.00
below which refers to this paragraph......................
Sec. 1.28(c)(3)--for processing a non-itemized fee
deficiency based on an error in small entity status.
Sec. 1.41--for supplying the name or names of the
inventor or inventors after the filing date without an
oath or declaration as prescribed by Sec. 1.63,
except in provisional applications.
Sec. 1.48--for correcting inventorship, except in
provisional applications.
Sec. 1.52(d)--for processing a nonprovisional
application filed with a specification in a language
other than English.
Sec. 1.55--for entry of late priority papers.
Sec. 1.103(b)--for requesting limited suspension of
action in continued prosecution application.
Sec. 1.497(d)--for filing an oath or declaration
pursuant to 35 U.S.C. 371(c)(4) naming an inventive
entity different from the inventive entity set forth
in the international stage.
* * * *
* * *
(k) For accepting color drawings or color photographs (Sec. 200.00
1.84(a)).................................................
(l) For filing a petition for the revival of an unavoidably
abandoned application under 35 U.S.C. 111, 133, 364, or
371, or the unavoidably delayed payment of the issue fee
under 35 U.S.C. 151 (Sec. 1.137(a)):
By a small entity (Sec. 1.9(f)) 55.00
By other than a small entity 110.00
(m) For filing a petition for the revival of an
unintentionally abandoned application or the
unintentionally delayed payment of the issue fee under 35
U.S.C. 41(a)(7) (Sec. 1.137(b)):
By a small entity (Sec. 1.9(f)) 605.00
By other than a small entity 1,210.00
* * * *
* *
(q) Processing fee for taking action under a section listed 50.00
below which refers to this paragraph......................
Sec. 1.41--to supply the name or names of the inventor
or inventors after the filing date without a cover
sheet as prescribed by Sec. 1.51(c)(1) in a
provisional application.
Sec. 1.48--for correction of inventorship in a
provisional application.
Sec. 1.53(c)--to convert a nonprovisional application
filed under Sec. 1.53(b) to a provisional application
under Sec. 1.53(c).
* * * *
* *
(t) For filing a request for expedited examination under 900.00
Sec. 1.155(a)............................................
8. Section 1.19 is proposed to be amended by revising its
introductory text and paragraphs (a) and (b) and removing paragraph (h)
to read as follows:
Sec. 1.19 Document supply fees.
The Patent and Trademark Office will supply copies of the following
documents upon payment of the fees indicated. The copies will be in
black and white unless the original document is in color, a color copy
is requested and the fee for a color copy is paid.
(a) Uncertified copies of patents:
(1) Printed copy of a patent, including a design
patent, statutory invention registration, or defensive
publication document:
(i) Regular service................................ $3.00
(ii) Overnight delivery to PTO Box or overnight 6.00
facsimile.........................................
(iii) Expedited service for copy ordered by 25.00
expedited mail or facsimile delivery service and
delivered to the customer within two workdays.....
(2) Printed copy of a plant patent in color............ 15.00
(3) Color copy of a patent (other than a plant patent) 25.00
or statutory invention registration containing a color
drawing...............................................
(b) Certified and uncertified copies of Office documents:
(1) Certified or uncertified copy of patent application
as filed:
(i) Regular service................................ 15.00
(ii) Expedited regular service..................... 30.00
(2) Certified or uncertified copy of patent-related
file wrapper and contents:
(i) File wrapper and contents of 400 or fewer pages 250.00
(ii) Additional fee for each additional 100 pages 25.00
or portion thereof................................
(3) Certified or uncertified copy of Office records, 25.00
per document except as otherwise provided in this
section...............................................
(4) For assignment records, abstract of title and 25.00
certification, per patent.............................
* * * *
* *
9. Section 1.22 is proposed to be amended by revising paragraph (b)
and adding paragraph (c) to read as follows:
Sec. 1.22 Fee payable in advance.
* * * * *
(b) All fees paid to the Patent and Trademark Office must be
itemized in each individual application, patent, trademark registration
file, or other proceeding in such a manner that it is clear for which
purpose the fees are paid. The Office may return fees that are not
itemized as required by this paragraph. The provisions of Sec. 1.5(a)
do not apply to the resubmission of fees returned pursuant to this
paragraph.
(c)(1) A fee paid by an authorization to charge such fee to a
deposit account containing sufficient funds to cover the
[[Page 53823]]
applicable fee amount (Sec. 1.25) is considered paid:
(i) On the date the paper for which the fee is payable is received
in the Office (Sec. 1.6), if the paper including the deposit account
charge authorization was filed prior to or concurrently with such
paper;
(ii) On the date the paper including the deposit account charge
authorization is received in the Office (Sec. 1.6), if the paper
including the deposit account charge authorization is filed after the
filing of the paper for which the fee is payable; and
iii) On the date of the agreement, if the deposit account charge
authorization is the result of an agreement between the applicant and
an Office employee that is reduced to a writing.
(2) A fee paid other than by an authorization to charge such fee to
a deposit account is considered paid on the date the applicable fee
amount is received in the Office (Sec. 1.6).
(3) The applicable fee amount is determined by the fee in effect on
the date such fee is paid in full.
10. Section 1.25 is proposed to be amended by revising paragraph
(b) to read as follows:
Sec. 1.25 Deposit accounts.
* * * * *
(b) Filing, issue, appeal, international-type search report,
international application processing, petition, and post-issuance fees
may be charged against these accounts if sufficient funds are on
deposit to cover such fees. A general authorization to charge all fees,
or only certain fees, set forth in Sec. 1.16 to Sec. 1.18 to a deposit
account containing sufficient funds may be filed in an individual
application, either for the entire pendency of the application or with
respect to a particular paper filed. An authorization to charge fees
under Sec. 1.16 in an application submitted under Sec. 1.494, or
Sec. 1.495 will be treated as an authorization to charge fees under
Sec. 1.492. An authorization to charge fees set forth in Sec. 1.18 to a
deposit account is subject to the provisions of Sec. 1.311(b). An
authorization to charge to a deposit account the fee for a request for
reexamination pursuant to Sec. 1.510 and any other fees required in a
reexamination proceeding in a patent may also be filed with the request
for reexamination. An authorization to charge a fee to a deposit
account will not be considered payment of the fee on the date the
authorization to charge the fee is effective as to the particular fee
to be charged unless sufficient funds are present in the account to
cover the fee.
11. Section 1.26 is proposed to be amended by revising paragraph
(a) and adding paragraph (b) to read as follows:
Sec. 1.26 Refunds.
(a) The Commissioner may refund a fee paid by mistake or in excess
of that required. A change of purpose after the payment of a fee, as
when a party desires to withdraw a patent or trademark filing for which
the fee was paid, including an application, an appeal, or a request for
an oral hearing, will not entitle a party to a refund of such fee. The
Office will not refund amounts of twenty-five dollars or less unless a
refund is specifically requested, and will not notify the payor of such
amounts. If a party paying a fee or requesting a refund does not
instruct the Office that refunds are to be credited to a deposit
account, and does not provide the banking information necessary for
making refunds by electronic funds transfer, the Commissioner may
either require such banking information or use the banking information
on the payment instrument to make a refund.
(b) Any request for refund must be filed within two years from the
date the fee was paid, except as otherwise provided in this paragraph
or in Sec. 1.28(a). If the Office charges a deposit account by an
amount other than an amount specifically indicated in an authorization
(Sec. 1.25(b)), any request for refund based upon such charge must be
filed within two years from the date of the deposit account statement
indicating such charge, and include a copy of that deposit account
statement. The time periods set forth in this paragraph are not
extendable.
* * * * *
12. Section 1.27 is proposed to be revised to read as follows:
Sec. 1.27 Establishing status as small entity to permit payment of
small entity fees; when a determination of entitlement to small entity
status and notification of loss of entitlement to small entity status
are required; fraud on the Office.
(a) Establishment of small entity status permits payment of reduced
fees. A small entity, as defined in Sec. 1.9(f), who has properly
asserted entitlement to small entity status pursuant to paragraph (b)
of this section will be accorded small entity status by the Office in
the particular application or patent in which entitlement to small
entity status was asserted. Establishment of small entity status allows
the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h).
(b) Assertion of small entity status. Any party (person, small
business concern or nonprofit organization) who has made a
determination, pursuant to paragraph (e) of this section, of
entitlement to be accorded small entity status pursuant to Sec. 1.9(f)
must, in order to establish small entity status for the purpose of
paying small entity fees, make an assertion of entitlement to small
entity status, pursuant to paragraph (b)(1) or (b)(3) of this section,
in the application or patent in which such small entity fees are to be
paid.
(1) Assertion by writing. Small entity status may be established by
a written assertion of entitlement to small entity status. A written
assertion must:
(i) Be clearly identifiable;
(ii) Be signed; and
(iii) Convey the concept of entitlement to small entity status,
such as by stating that applicant is a small entity, or that small
entity status is entitled to be asserted for the application or patent.
While no specific words or wording are required to assert small entity
status, the intent to assert small entity status must be clearly
indicated in order to comply with the assertion requirement.
(2) Parties who can sign the written assertion. The written
assertion can be signed by:
(i) One of the parties identified in Sec. 1.33(b) (e.g., an
attorney or agent registered with the Office), Sec. 3.73(b) of this
chapter notwithstanding;
(ii) At least one of the inventors, Sec. 1.33(b)(4)
notwithstanding; or
(iii) An assignee of an undivided part interest, Secs. 1.33(b)(3)
and 3.73(b) of this chapter notwithstanding.
(3) Assertion by payment of the small entity basic filing or
national fee. The payment, by any party, of the exact amount of one of
the small entity basic filing fees set forth in Sec. 1.16(a), (f), (g),
(h), or (k), or one of the small entity national fees set forth in
Sec. 1.492(a)(1), (a)(2), (a)(3), (a)(4), or (a)(5), will be treated as
a written assertion of entitlement to small entity status even if the
type of basic filing or national fee is inadvertently selected in
error.
(i) If the Office accords small entity status based on payment of a
small entity fee that is not applicable to that application, any
balance of the small entity fee that is applicable to that application
will be due.
(ii) The payment of any small entity fee other than those set forth
in paragraph (b)(3) (whether in the exact fee amount or not) of this
section will not be treated as a written assertion of entitlement to
small entity status and will not be sufficient to establish small
entity status in an application or a patent.
(4) Assertion required in related, continuing, and reissue
applications.
[[Page 53824]]
Status as a small entity must be specifically established by an
assertion in each related, continuing and reissue application in which
status is appropriate and desired. Status as a small entity in one
application or patent does not affect the status of any other
application or patent, regardless of the relationship of the
applications or patents. The refiling of an application under Sec. 1.53
as a continuation, divisional, or continuation-in-part application
(including a continued prosecution application under Sec. 1.53(d)), or
the filing of a reissue application, requires a new assertion as to
continued entitlement to small entity status for the continuing or
reissue application.
(c) When small entity fees can be paid. Any fee, other than the
small entity basic filing fees and the small entity national fees of
paragraph (b)(3) of this section, can be paid in the small entity
amount only if it is submitted with, or subsequent to, the submission
of a written assertion of entitlement to small entity status, except
when refunds are permitted by Sec. 1.28(a).
(d) Only one assertion required. (1) An assertion of small entity
status need only be filed once in an application or patent. Small
entity status, once established, remains in effect until changed
pursuant to Sec. 1.28(b) of this part. Where an assignment of rights or
an obligation to assign rights to other parties who are small entities
occurs subsequent to an assertion of small entity status, a second
assertion is not required.
(2) Once small entity status is withdrawn pursuant to paragraph
(f)(2) of this section, a new written assertion is required to again
obtain small entity status.
(e) Assertion requires a determination of entitlement to pay small
entity fees. Prior to submitting an assertion of entitlement to small
entity status in an application, including a related, continuing, or
reissue application, a determination of such entitlement should be made
pursuant to the requirements of Sec. 1.9(f). It should be determined
that all parties holding rights in the invention qualify for small
entity status. The Office will generally not question any assertion of
small entity status that is made in accordance with the requirements of
this section, but note paragraph (g) of this section.
(f)(1) New determination of entitlement to small entity status is
needed when issue and maintenance fees are due. Once status as a small
entity has been established in an application or patent, fees as a
small entity may thereafter be paid in that application or patent
without regard to a change in status until the issue fee is due or any
maintenance fee is due.
(2) Notification of loss of entitlement to small entity status is
required when issue and maintenance fees are due. Notification of a
loss of entitlement to small entity status must be filed in the
application or patent prior to paying, or at the time of paying, the
earliest of the issue fee or any maintenance fee due after the date on
which status as a small entity as defined in Sec. 1.9(f) is no longer
appropriate. The notification that small entity status is no longer
appropriate must be signed by a party identified in Sec. 1.33(b).
Payment of a fee in other than the small entity amount is not
sufficient notification that small entity status is no longer
appropriate.
(g) Fraud attempted or practiced on the Office. (1) Any attempt to
fraudulently establish status as a small entity, or to pay fees as a
small entity, shall be considered as a fraud practiced or attempted on
the Office.
(2) Improperly, and with intent to deceive, establishing status as
a small entity, or paying fees as a small entity, shall be considered
as a fraud practiced or attempted on the Office.
13. Section 1.28 is proposed to be revised to read as follows:
Sec. 1.28 Refunds when small entity status is later established; how
errors in small entity status are excused.
(a) Refunds based on later establishment of small entity status: A
refund pursuant to Sec. 1.26 of this part, based on establishment of
small entity status, of a portion of fees timely paid in full prior to
establishing status as a small entity may only be obtained if an
assertion under Sec. 1.27(b) and a request for a refund of the excess
amount are filed within three months of the date of the timely payment
of the full fee. The three-month time period is not extendable under
Sec. 1.136. Status as a small entity is waived for any fee by the
failure to establish the status prior to paying, at the time of paying,
or within three months of the date of payment of, the full fee.
(b) Date of payment. (1) The three-month period for requesting a
refund, pursuant to paragraph (a) of this section, starts on the date
that a full fee has been paid as defined in Sec. 1.22(c);
(2) The date when a deficiency payment is paid in full determines
the amount of deficiency that is due, pursuant to paragraph (c) of this
section, and is defined in Sec. 1.22(c).
(c) How errors in small entity status are excused. If status as a
small entity is established in good faith, and fees as a small entity
are paid in good faith, in any application or patent, and it is later
discovered that such status as a small entity was established in error,
or that through error the Office was not notified of a loss of
entitlement to small entity status as required by Sec. 1.27(f)(2), the
error will be excused upon: compliance with the separate submission and
itemization requirements of paragraphs (c)(1) and (c)(2) of this
section, and the deficiency payment requirement of paragraph (c)(2) of
this section:
(1) Separate submission required for each application or patent.
Any paper submitted under this paragraph must be limited to the
deficiency payment (all fees paid in error), required by paragraph
(c)(2) of this section, for one application or one patent. Where more
than one application or patent is involved, separate submissions of
deficiency payments (e.g., checks) and itemizations are required for
each application or patent. See Sec. 1.4(b).
(2) Payment of deficiency owed. The deficiency owed, resulting from
the previous erroneous payment of small entity fees, must be paid.
(i) Calculation of the deficiency owed. The deficiency owed for
each previous fee erroneously paid as a small entity is the difference
between the current fee amount (for other than a small entity) on the
date the deficiency is paid in full and the amount of the previous
erroneous (small entity) fee payment. The total deficiency payment owed
is the sum of the individual deficiency owed amounts for each fee
amount previously erroneously paid as a small entity;
(ii) Itemization of the deficiency payment. An itemization of the
total deficiency payment is required. The itemization must include the
following information:
(A) Each particular type of fee that was erroneously paid as a
small entity, (e.g., basic statutory filing fee, two-month extension of
time fee) along with the current fee amount for a non-small entity;
(B) The small entity fee actually paid, and when. This will permit
the Office to differentiate, for example, between two one-month
extension of time fees erroneously paid as a small entity but on
different dates;
(C) The deficiency owed amount (for each fee erroneously paid); and
(D) The total deficiency payment owed, which is the sum or total of
the individual deficiency owed amounts set forth in paragraph
(c)(2)(ii)(C) of this section.
(3) Failure to comply with requirements. If the requirements of
paragraphs (c)(1) and (c)(2) of this section are not complied with,
such
[[Page 53825]]
failure will either: be treated as an authorization for the Office to
process the deficiency payment and charge the processing fee set forth
in Sec. 1.17(i), or result in a requirement for compliance within a
one-month non-extendable time period to avoid the return of the fee
deficiency paper, at the option of the Office.
(d) Payment of deficiency operates as notification of loss of
status. Any payment submitted under paragraph (c) of this section will
be treated under Sec. 1.27(f)(2) as a notification of a loss of
entitlement to small entity status.
14. Section 1.33 is proposed to be amended by revising paragraphs
(a) and (b) to read as follows:
Sec. 1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings.
(a) Correspondence address and daytime telephone number. When
filing an application, a correspondence address must be set forth in
either an application data sheet (Sec. 1.76), or elsewhere in a clearly
identifiable manner in any paper submitted with an application filing.
If no correspondence address is specified, the Office may treat the
mailing address of the first named inventor (if provided, see
Sec. 1.76(b)(1) and Sec. 1.63(c)(2)) as the correspondence address. The
Office will direct all notices, official letters, and other
communications relating to the application to the correspondence
address. The Office will not engage in double correspondence with an
applicant and an attorney or agent, or with more than one attorney or
agent except as deemed necessary by the Commissioner. If more than one
correspondence address is specified, the Office will establish one as
the correspondence address. For the party to whom correspondence is to
be addressed, a daytime telephone number should be supplied in a
clearly identifiable manner and may be changed by any party who may
change the correspondence address. The correspondence address may be
changed as follows:
(1) Prior to filing of a Sec. 1.63 oath or declaration by any of
the inventors. If a Sec. 1.63 oath or declaration has not been filed by
any of the inventors, the correspondence address may be changed by the
party who filed the application. If the application was filed by a
registered attorney or agent, any other registered practitioner named
in the transmittal papers may also change the correspondence address.
Thus, the inventor(s), any registered practitioner named in the
transmittal papers accompanying the original application, or a party
that will be the assignee who filed the application, may change the
correspondence address in that application under this paragraph.
(2) Where a Sec. 1.63 oath or declaration has been filed by any of
the inventors. If a Sec. 1.63 oath or declaration has been filed, or is
filed concurrent with the filing of an application, by any of the
inventors, the correspondence address may be changed by the parties set
forth in paragraph (b) of this section, except for (b)(2).
(b) Amendments and other papers: Amendments and other papers filed
in the application must be signed by:
(1) An attorney or agent of record appointed in compliance with
Sec. 1.34(b);
(2) A registered attorney or agent not of record who acts in a
representative capacity under the provisions of Sec. 1.34(a);
(3) An assignee as provided for under Sec. 3.71(b) of this chapter;
or
(4) All of the applicants (Sec. 1.41(b)) for patent, unless there
is an assignee of the entire interest and such assignee has taken
action in the application in accordance with Sec. 3.71 of this chapter.
* * * * *
15. Section 1.41 is proposed to be amended by revising paragraph
(a) to read as follows:
Sec. 1.41 Applicant for patent.
(a) A patent is applied for in the name or names of the actual
inventor or inventors.
(1) The inventorship of a nonprovisional application is that
inventorship set forth in the oath or declaration as prescribed by
Sec. 1.63, except as provided for in Sec. 1.53(d)(4) and Sec. 1.63(d).
If an oath or declaration as prescribed by Sec. 1.63 is not filed
during the pendency of a nonprovisional application, the inventorship
is that inventorship set forth in the application papers filed pursuant
to Sec. 1.53(b), unless applicant files a paper including the
processing fee set forth in Sec. 1.17(i) and supplying or changing the
name or names of the inventor or inventors.
(2) The inventorship of a provisional application is that
inventorship set forth in the cover sheet as prescribed by
Sec. 1.51(c)(1). If a cover sheet as prescribed by Sec. 1.51(c)(1) is
not filed during the pendency of a provisional application, the
inventorship is that inventorship set forth in the application papers
filed pursuant to Sec. 1.53(c), unless applicant files a paper
including the processing fee set forth in Sec. 1.17(q) and supplying or
changing the name or names of the inventor or inventors.
(3) In a nonprovisional application filed without an oath or
declaration as prescribed by Sec. 1.63 or a provisional application
filed without a cover sheet as prescribed by Sec. 1.51(c)(1), the name,
residence, and citizenship of each person believed to be an actual
inventor should be provided when the application papers pursuant to
Sec. 1.53(b) or (c) are filed.
(4) The inventors who submitted an application under Secs. 1.494 or
1.495 are the inventors in the international application designating
the United States.
* * * * *
Sec. 1.44 [Removed and reserved]
16. Section 1.44 is proposed to be removed and reserved.
17. Section 1.47 is proposed to be revised to read as follows:
Sec. 1.47 Filing when an inventor refuses to sign or cannot be
reached.
(a) If a joint inventor refuses to join in an application for
patent or cannot be found or reached after diligent effort, the
application may be made by the other inventor on behalf of himself or
herself and the nonsigning inventor. The oath or declaration in such an
application must be accompanied by a petition including proof of the
pertinent facts, the fee set forth in Sec. 1.17(h), and the last known
address of the nonsigning inventor. The nonsigning inventor may
subsequently join in the application on filing an oath or declaration
complying with Sec. 1.63.
(b) Whenever all of the inventors refuse to execute an application
for patent, or cannot be found or reached after diligent effort, a
person to whom an inventor has assigned or agreed in writing to assign
the invention, or who otherwise shows sufficient proprietary interest
in the matter justifying such action, may make application for patent
on behalf of and as agent for all the inventors. The oath or
declaration in such an application must be accompanied by a petition
including proof of the pertinent facts, a showing that such action is
necessary to preserve the rights of the parties or to prevent
irreparable damage, the fee set forth in Sec. 1.17(h), and the last
known address of all of the inventors. An inventor may subsequently
join in the application on filing an oath or declaration complying with
Sec. 1.63.
(c) The Office will send notice of the filing of the application to
all inventors who have not joined in the application at the address(es)
provided in the petition under this section, and publish notice of the
filing of the application in the Official Gazette. The Office may
dispense with this notice provision in a continuation or divisional
application,
[[Page 53826]]
if notice regarding the filing of the prior application was given to
the nonsigning inventor(s).
18. Section 1.48 is proposed to be revised to read as follows:
Sec. 1.48 Correction of inventorship in a patent application, other
than a reissue application, pursuant to 35 U.S.C. 116.
(a) Nonprovisional application after oath/declaration filed. If the
inventive entity is set forth in error in an executed Sec. 1.63 oath or
declaration in a nonprovisional application, and such error arose
without any deceptive intention on the part of the person named as an
inventor in error or on the part of the person who through error was
not named as an inventor, the inventorship of the nonprovisional
application may be amended to name only the actual inventor or
inventors. If the nonprovisional application is involved in an
interference, the amendment must comply with the requirements of this
section and must be accompanied by a motion under Sec. 1.634. Amendment
of the inventorship requires:
(1) A request to correct the inventorship that sets forth the
desired inventorship change;
(2) A statement from each person being added as an inventor and
from each person being deleted as an inventor that the error in
inventorship occurred without deceptive intention on his or her part;
(3) An oath or declaration by the actual inventor or inventors as
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or 1.47;
(4) The processing fee set forth in Sec. 1.17(i); and
(5) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Sec. 3.73(b) of
this chapter).
(b) Nonprovisional application--fewer inventors due to amendment or
cancellation of claims. If the correct inventors are named in a
nonprovisional application, and the prosecution of the nonprovisional
application results in the amendment or cancellation of claims so that
fewer than all of the currently named inventors are the actual
inventors of the invention being claimed in the nonprovisional
application, an amendment must be filed requesting deletion of the name
or names of the person or persons who are not inventors of the
invention being claimed. If the application is involved in an
interference, the amendment must comply with the requirements of this
section and must be accompanied by a motion under Sec. 1.634. Amendment
of the inventorship requires:
(1) A request, signed by a party set forth in Sec. 1.33(b), to
correct the inventorship that identifies the named inventor or
inventors being deleted and acknowledges that the inventor's invention
is no longer being claimed in the nonprovisional application; and
(2) The processing fee set forth in Sec. 1.17(i).
(c) Nonprovisional application--inventors added for claims to
unclaimed subject matter. If a nonprovisional application discloses
unclaimed subject matter by an inventor or inventors not named in the
application, the application may be amended to add claims to the
subject matter and name the correct inventors for the application. If
the application is involved in an interference, the amendment must
comply with the requirements of this section and must be accompanied by
a motion under Sec. 1.634. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth the
desired inventorship change;
(2) A statement from each person being added as an inventor that
the addition is necessitated by amendment of the claims and that the
inventorship error occurred without deceptive intention on his or her
part;
(3) An oath or declaration by the actual inventors as required by
Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or 1.47;
(4) The processing fee set forth in Sec. 1.17(i); and
(5) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Sec. 3.73(b) of
this chapter).
(d) Provisional application--adding omitted inventors. If the name
or names of an inventor or inventors were omitted in a provisional
application through error without any deceptive intention on the part
of the omitted inventor or inventors, the provisional application may
be amended to add the name or names of the omitted inventor or
inventors. Amendment of the inventorship requires:
(1) A request, signed by a party set forth in Sec. 1.33(b), to
correct the inventorship that identifies the inventor or inventors
being added and states that the inventorship error occurred without
deceptive intention on the part of the omitted inventor or inventors;
and
(2) The processing fee set forth in Sec. 1.17(q).
(e) Provisional application--deleting the name or names of the
inventor or inventors. If a person or persons were named as an inventor
or inventors in a provisional application through error without any
deceptive intention on the part of such person or persons, an amendment
may be filed in the provisional application deleting the name or names
of the person or persons who were erroneously named. Amendment of the
inventorship requires:
(1) A request to correct the inventorship that sets forth the
desired inventorship change;
(2) A statement by the person or persons whose name or names are
being deleted that the inventorship error occurred without deceptive
intention on the part of such person or persons;
(3) The processing fee set forth in Sec. 1.17(q); and
(4) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Sec. 3.73(b) of
this chapter).
(f)(1) Nonprovisional application--filing executed oath/declaration
corrects inventorship. If the correct inventor or inventors are not
named on filing a nonprovisional application under Sec. 1.53(b) without
an executed oath or declaration under Sec. 1.63 by any of the
inventors, the first submission of an executed oath or declaration
under Sec. 1.63 by any of the inventors during the pendency of the
application will act to correct the earlier identification of
inventorship. See Sec. 1.497(d) for submission of an executed oath or
declaration to enter the national stage under 35 U.S.C. 371 and
Sec. 1.494 or Sec. 1.495 naming an inventive entity different from the
inventive entity set forth in the international stage.
(2) Provisional application--filing cover sheet corrects
inventorship. If the correct inventor or inventors are not named on
filing a provisional application without a cover sheet under
Sec. 1.51(c)(1), the later submission of a cover sheet under
Sec. 1.51(c)(1) during the pendency of the application will act to
correct the earlier identification of inventorship.
(g) Additional information may be required. The Office may require
such other information as may be deemed appropriate under the
particular circumstances surrounding the correction of inventorship.
(h) Reissue applications not covered. The provisions of this
section do not apply to reissue applications. See Secs. 1.171 and 1.175
for correction of inventorship in a patent via a reissue application.
(i) Correction of inventorship in patent or interference. See
Sec. 1.324 for correction of inventorship in a patent, and Sec. 1.634
for correction of inventorship in an interference.
19. Section 1.51 is proposed to be amended by revising paragraph
(b) to read as follows:
[[Page 53827]]
Sec. 1.51 General requisites of an application.
* * * * *
(b) A complete application filed under Sec. 1.53(b) or Sec. 1.53(d)
comprises:
(1) A specification as prescribed by 35 U.S.C. 112, including a
claim or claims, see Secs. 1.71 to 1.77;
(2) An oath or declaration, see Secs. 1.63 and 1.68;
(3) Drawings, when necessary, see Secs. 1.81 to 1.85; and
(4) The prescribed filing fee, see Sec. 1.16.
* * * * *
20. Section 1.52 is proposed to be revised to read as follows:
Sec. 1.52 Language, paper, writing, margins.
(a) Papers which are to become a part of the permanent Patent and
Trademark Office records in the file of a patent application. (1) All
papers, other than drawings, which are to become a part of the
permanent Patent and Trademark Office records in the file of a patent
application must be on sheets of paper that are:
(i) Flexible, strong, smooth, non-shiny, durable, and white;
(ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm
(8 \1/2\ by 11 inches), with each sheet including a top margin of at
least 2.0 cm (\3/4\ inch), a left side margin of at least 2.5 cm (1
inch), a right side margin of at least 2.0 cm (\3/4\ inch), and a
bottom margin of at least 2.0 cm (\3/4\ inch);
(iii) Written on only one side in portrait orientation;
(iv) Plainly and legibly written either by a typewriter or machine
printer in permanent dark ink or its equivalent; and
(v) Presented in a form having sufficient clarity and contrast
between the paper and the writing thereon to permit the direct
reproduction of readily legible copies in any number by use of
photographic, electrostatic, photo-offset, and microfilming processes
and electronic capture by use of digital imaging and optical character
recognition.
(2) All papers which are to become a part of the permanent records
of the Patent and Trademark Office should have no holes in the sheets
as submitted.
(3) The provisions of this paragraph and paragraph (b) of this
section do not apply to the pre-printed information on forms provided
by the Office.
(4) See Sec. 1.58 for chemical and mathematical formulae and
tables, and Sec. 1.84 for drawings.
(5) If papers are submitted as part of the permanent record, other
than the drawings, that do not comply with paragraph (a)(1) of this
section the Office may at its option:
(i) Convert the papers submitted by applicant into papers that do
comply with paragraph (a)(1) of this section and charge the applicant
the costs incurred by the Office in doing so (Sec. 1.21(j)); or
(ii) Require that the applicant provide substitute papers that
comply with paragraph (a)(1) of this section within a set time period.
(b) The application (specification, including the claims, drawings,
and oath or declaration) and any amendments or corrections to the
application. (1) The application and any amendments or corrections to
the application (including any translation submitted pursuant to
paragraph (d) of this section), except as provided for in Sec. 1.69 and
paragraph (d) of this section, must:
(i) Comply with the requirements of paragraph (a) of this section;
and
(ii) Be in the English language or be accompanied by a translation
of any corrections or amendments into the English language together
with a statement that the translation is accurate.
(2) The specification (including the abstract and claims), and any
amendments to the specification, must have:
(i) Lines that are 1 \1/2\ or double spaced;
(ii) Text written in a block (nonscript) type font or lettering
style having capital letters which are at least 0.21 cm (0.08 inch)
high; and
(iii) No more than a single column of text.
(3) The claim or claims must commence on a separate sheet
(Sec. 1.75(h)).
(4) The abstract must commence on a separate sheet (Sec. 1.72(b)).
(5) The pages of the specification including claims and abstract
must be numbered consecutively, starting with 1, the numbers being
centrally located above or preferably, below, the text.
(6) Paragraphs in the specification, other than in the claims or
abstract, should be individually and consecutively numbered using
Arabic numerals, so as to unambiguously identify each paragraph. The
number should consist of at least four numerals contained in square
brackets, including leading zeros (e.g., [0001]). The numbers and
enclosing brackets should appear to the right of the left margin as the
first item in each paragraph, before the first word of the paragraph,
and should be highlighted in bold. A gap, equivalent to approximately
four spaces, should follow the number. Nontext elements (e.g., tables,
mathematical or chemical formulas, chemical structures, and sequence
data) are considered part of the numbered paragraph around or above the
elements, and should not be independently numbered. Even if a nontext
element extends to the left margin, it should not be numbered as a
separate and independent paragraph. A list is also treated as part of
the paragraph around or above the list, and should not be independently
numbered. Paragraph or section headers (titles), whether abutting the
left margin or centered on the page, are not considered paragraphs and
should not be numbered.
(7) If papers are submitted as part of the application that do not
comply with paragraphs (b)(1) through (b)(5) of this section, the
Office may at its option:
(i) Convert the papers submitted by applicant into papers that do
comply with paragraphs (b)(1) through (b)(5) of this section and charge
the applicant the costs incurred by the Office in doing so
(Sec. 1.21(j)); or
(ii) Require that the applicant provide substitute papers that
comply with paragraphs (b)(1) through (b)(5) of this section within a
set time period.
(c)(1) Any interlineation, erasure, cancellation or other
alteration of the application papers filed must be made before the
signing of any accompanying oath or declaration pursuant to Sec. 1.63
referring to those application papers and should be dated and initialed
or signed by the applicant on the same sheet of paper. Application
papers containing alterations made after the signing of an oath or
declaration referring to those application papers must be supported by
a supplemental oath or declaration under Sec. 1.67. In either
situation, a substitute specification (Sec. 1.125) is required if the
application papers do not comply with paragraphs (a) and (b) of this
section.
(2) After the signing of the oath or declaration referring to the
application papers, amendments may only be made in the manner provided
by Sec. 1.121.
(3) Notwithstanding the provisions of this paragraph, if an oath or
declaration is a copy of the oath or declaration from a prior
application, the application for which such copy is submitted may
contain alterations that do not introduce matter that would have been
new matter in the prior application.
(d) A nonprovisional or provisional application may be filed in a
language other than English.
(1) Nonprovisional application. If a nonprovisional application is
filed in a language other than English, an English language translation
of the non-English language application, a statement that the
translation is accurate, and the
[[Page 53828]]
processing fee set forth in Sec. 1.17(i) are required. If these items
are not filed with the application, applicant will be notified and
given a period of time within which they must be filed in order to
avoid abandonment.
(2) Provisional application: If a provisional application is filed
in a language other than English, an English language translation of
the non-English language provisional application will not be required
in the provisional application. If a nonprovisional application claims
the benefit of such provisional application, however, an English
language translation of the non-English language provisional
application and a statement that the translation is accurate must be
supplied if the nonprovisional application is involved in an
interference (Sec. 1.630), or when specifically required by the
examiner.
21. Section 1.53 is proposed to be amended by revising paragraphs
(c)(1), (c)(2), (d)(4), (e)(2), (f) and (g) and adding paragraph
(d)(10) to read as follows:
Sec. 1.53 Application number, filing date, and completion of
application.
* * * * *
(c) * * *
(1) A provisional application must also include the cover sheet
required by Sec. 1.51(c)(1), which may be an application data sheet
(Sec. 1.76), or a cover letter identifying the application as a
provisional application. Otherwise, the application will be treated as
an application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this
section may be converted to a provisional application and be accorded
the original filing date of the application filed under paragraph (b)
of this section. The grant of such a request for conversion will not
entitle applicant to a refund of the fees which were properly paid in
the application filed under paragraph (b) of this section. Such a
request for conversion must be accompanied by the processing fee set
forth in Sec. 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of
this section;
(ii) Payment of the issue fee on the application filed under
paragraph (b) of this section;
(iii) Expiration of twelve months after the filing date of the
application filed under paragraph (b) of this section; or
(iv) The filing of a request for a statutory invention registration
under Sec. 1.293 in the application filed under paragraph (b) of this
section.
* * * * *
(d) * * *
(4) An application filed under this paragraph may be filed by fewer
than all the inventors named in the prior application, provided that
the request for an application under this paragraph when filed is
accompanied by a statement requesting deletion of the name or names of
the person or persons who are not inventors of the invention being
claimed in the new application. No person may be named as an inventor
in an application filed under this paragraph who was not named as an
inventor in the prior application on the date the application under
this paragraph was filed, except by way of correction of inventorship
under Sec. 1.48.
* * * * *
(10) See Sec. 1.103(b) for requesting a limited suspension of
action in an application filed under this paragraph.
(e) * * *
(2) Any request for review of a notification pursuant to paragraph
(e)(1) of this section, or a notification that the original application
papers lack a portion of the specification or drawing(s), must be by
way of a petition pursuant to this paragraph accompanied by the fee set
forth in Sec. 1.17(h). In the absence of a timely (Sec. 1.181(f))
petition pursuant to this paragraph, the filing date of an application
in which the applicant was notified of a filing error pursuant to
paragraph (e)(1) of this section will be the date the filing error is
corrected.
* * * * *
(f) Completion of application subsequent to filing--Nonprovisional
(including continued prosecution and reissue) application. (1) If an
application which has been accorded a filing date pursuant to paragraph
(b) or (d) of this section does not include the basic filing fee, or if
an application which has been accorded a filing date pursuant to
paragraph (b) of this section does not include an oath or declaration
by the applicant pursuant to Secs. 1.63, 1.162 or 1.175, and applicant
has provided a correspondence address (Sec. 1.33(a)), applicant will be
notified and given a period of time within which to pay the filing fee,
file an oath or declaration in an application under paragraph (b) of
this section, and pay the surcharge required by Sec. 1.16(e) to avoid
abandonment.
(2) If an application which has been accorded a filing date
pursuant to paragraph (b) of this section does not include the basic
filing fee or an oath or declaration by the applicant pursuant to
Secs. 1.63, 1.162 or 1.175, and applicant has not provided a
correspondence address (Sec. 1.33(a)), applicant has two months from
the filing date of the application within which to pay the basic filing
fee, file an oath or declaration, and pay the surcharge required by
Sec. 1.16(e) to avoid abandonment.
(3) This paragraph applies to continuation or divisional
applications under paragraphs (b) or (d) of this section and to
continuation-in-part applications under paragraph (b) of this section.
(4) See Sec. 1.63(d) concerning the submission of a copy of the
oath or declaration from the prior application for a continuation or
divisional application under paragraph (b) of this section.
(5) If applicant does not pay one of the basic filing fee or the
processing and retention fee set forth in Sec. 1.21(l) during the
pendency of the application, the Office may dispose of the application.
(g) Completion of application subsequent to filing--provisional
application. (1) If a provisional application which has been accorded a
filing date pursuant to paragraph (c) of this section does not include
the cover sheet required by Sec. 1.51(c)(1) or the basic filing fee
(Sec. 1.16(k)), and applicant has provided a correspondence address
(Sec. 1.33(a)), applicant will be notified and given a period of time
within which to pay the basic filing fee, file a cover sheet
(Sec. 1.51(c)(1)), and pay the surcharge required by Sec. 1.16(l) to
avoid abandonment.
(2) If a provisional application which has been accorded a filing
date pursuant to paragraph (c) of this section does not include the
cover sheet required by Sec. 1.51(c)(1) or the basic filing fee
(Sec. 1.16(k)), and applicant has not provided a correspondence address
(Sec. 1.33(a)), applicant has two months from the filing date of the
application within which to pay the basic filing fee, file a cover
sheet (Sec. 1.51(c)(1)), and pay the surcharge required by Sec. 1.16(l)
to avoid abandonment.
(3) If applicant does not pay the basic filing fee during the
pendency of the application, the Office may dispose of the application.
* * * * *
22. Section 1.55 is proposed to be amended by revising paragraph
(a) to read as follows:
Sec. 1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the
benefit of the filing date of one or more prior foreign applications
under the conditions specified in 35 U.S.C. 119(a) through (d), 172,
and 365(b).
(1) The claim for priority must identify the foreign application
for
[[Page 53829]]
which priority is claimed, as well as any foreign application for the
same subject having a filing date before that of the application for
which priority is claimed, by specifying the application number,
country (or intergovernmental organization), day, month, and year of
its filing.
(2)(i) In an application filed under 35 U.S.C. 111(a), the claim
for priority and the certified copy of the foreign application
specified in 35 U.S.C. 119(b) must be filed before the patent is
granted.
(ii) In an application that entered the national stage from an
international application after compliance with 35 U.S.C. 371, the
claim for priority must be made within the time limit set forth in the
PCT and the Regulations under the PCT. If the certified copy of the
foreign application has not been filed in accordance with the PCT and
the Regulations under the PCT, it must be filed before the patent is
granted.
(iii) When the application becomes involved in an interference
(Sec. 1.630), when necessary to overcome the date of a reference relied
upon by the examiner, or when deemed necessary by the examiner, the
Office may require that the claim for priority and the certified copy
of the foreign application be filed earlier than provided in paragraph
(a)(2)(i) or (a)(2)(ii) of this section.
(iv) If the claim for priority or the certified copy of the foreign
application is filed after the date the issue fee is paid, it must be
accompanied by the processing fee set forth in Sec. 1.17(i) but the
patent will not include the priority claim unless corrected by a
certificate of correction under 35 U.S.C. 255 and Sec. 1.323 of this
part.
(3) An English-language translation of a non-English-language
foreign application is not required except when the application is
involved in an interference (Sec. 1.630), when necessary to overcome
the date of a reference relied upon by the examiner, or when
specifically required by the examiner. If an English-language
translation is required, it must be filed together with a statement
that the translation of the certified copy is accurate.
* * * * *
23. Section 1.56 is proposed to be amended by adding a new
paragraph (e) to read as follows:
Sec. 1.56 Duty to disclose information material to patentability.
* * * * *
(e) In any continuation-in-part application, the duty under this
section includes the duty to disclose to the Office all information
known to the person to be material to patentability, as defined in
paragraph (b) of this section, which became available between the
filing date of the prior application and the national or PCT
international filing date of the continuation-in-part application.
24. Section 1.59 is proposed to be amended by revising paragraph
(b) to read as follows:
Sec. 1.59 Expungement of information or copy of papers in application
file.
* * * * *
(b) An applicant may request that the Office expunge and return
information, other than what is excluded by paragraph (a)(2) of this
section, by filing a petition under this paragraph. Any petition to
expunge and return information from an application must include the fee
set forth in Sec. 1.17(h) and establish to the satisfaction of the
Commissioner that the return of the information is appropriate.
* * * * *
25. Section 1.63 is proposed to be amended by revising paragraphs
(a), (b), (c) and (e) to read as follows:
Sec. 1.63 Oath or declaration.
(a) An oath or declaration filed under Sec. 1.51(b)(2) as a part of
a nonprovisional application must:
(1) Be executed (i.e., signed) in accordance with either Sec. 1.66
or Sec. 1.68;
(2) Identify each inventor and country of citizenship of each
inventor; and
(3) State that the person making the oath or declaration believes
the named inventor or inventors to be the original and first inventor
or inventors of the subject matter which is claimed and for which a
patent is sought.
(b) In addition to meeting the requirements of paragraph (a), the
oath or declaration must also:
(1) Identify the application to which it is directed;
(2) State that the person making the oath or declaration has
reviewed and understands the contents of the application, including the
claims, as amended by any amendment specifically referred to in the
oath or declaration; and
(3) State that the person making the oath or declaration
acknowledges the duty to disclose to the Office all information known
to the person to be material to patentability as defined in Sec. 1.56.
(c) Unless such information is supplied on an application data
sheet in accordance with Sec. 1.76, the oath or declaration must also
identify:
(1) Each inventor, by full name, including the family name, and at
least one given name without abbreviation together with any other given
name or initial;
(2) The mailing address and residence (if different from the
mailing address) of each inventor; and
(3) Any foreign application for patent (or inventor's certificate)
for which a claim for priority is made pursuant to Sec. 1.55, and any
foreign application having a filing date before that of the application
on which priority is claimed, by specifying the application number,
country, day, month, and year of its filing.
* * * * *
(e) A newly executed oath or declaration must be filed in any
continuation-in-part application, which application may name all, more,
or fewer than all of the inventors named in the prior application.
26. Section 1.64 is proposed to be revised to read as follows:
Sec. 1.64 Person making oath or declaration.
(a) The oath or declaration (Sec. 1.63), including any supplemental
oath or declaration (Sec. 1.67), must be made by all of the actual
inventors except as provided for in Secs. 1.42, 1.43, 1.47 or 1.67.
(b) If the person making the oath or declaration or any
supplemental oath or declaration is not the inventor (Secs. 1.42,
1.43, 1.47 or 1.67), the oath or declaration shall state the
relationship of the person to the inventor, and, upon information and
belief, the facts which the inventor is required to state. If the
person signing the oath or declaration is the legal representative of a
deceased inventor, the oath or declaration shall also state that the
person is a legal representative and the citizenship, residence and
mailing address of the legal representative.
27. Section 1.67 is proposed to be amended by revising paragraph
(a) and removing paragraph (c) to read as follows:
Sec. 1.67 Supplemental oath or declaration.
(a) The Office may require a supplemental oath or declaration
meeting the requirements of Sec. 1.63 or Sec. 1.162 to correct any
deficiencies or inaccuracies present in the earlier filed oath or
declaration. If the earlier filed oath or declaration complied with
Sec. 1.63(a), the Office may permit the supplemental oath or
declaration to be made by fewer than all of the inventors or by an
applicant other than the inventor.
* * * * *
28. Section 1.72 is proposed to be revised to read as follows:
Sec. 1.72 Title and abstract.
(a) Unless the title is supplied in an application data sheet
(Sec. 1.76), the title
[[Page 53830]]
of the invention, which should be as short and specific as possible,
should appear as a heading on the first page of the specification.
(b) A brief abstract of the technical disclosure in the
specification must commence on a separate sheet, preferably following
the claims, under the heading ``Abstract'' or ``Abstract of the
Disclosure.'' The abstract in an application filed under 35 U.S.C. 111
may not exceed 150 words in length. The purpose of the abstract is to
enable the Patent and Trademark Office and the public generally to
determine quickly from a cursory inspection the nature and gist of the
technical disclosure. The abstract will not be used for interpreting
the scope of the claims.
29. A new Sec. 1.76 is proposed to be added to read as follows:
Sec. 1.76 Application data sheet.
(a) An application data sheet is a sheet or sheets containing
bibliographic data concerning a patent application arranged in a
specified format. If an application data sheet is provided, the
application data sheet is part of the application.
(b) Bibliographic data as used in paragraph (a) of this section
includes:
(1) Applicant information. This information includes the name,
residence, mailing address, and citizenship of each applicant
(Sec. 1.41(b)). The name of each applicant must include the family
name, and at least one given name without abbreviation together with
any other given name or initial. If the applicant is not an inventor,
this information also includes the applicant's authority (Secs. 1.42,
1.43 and 1.47) to apply for the patent on behalf of the inventor. The
citizenship of each inventor must be provided in the oath or
declaration under Sec. 1.63 even if it is provided in the application
data sheet (35 U.S.C. 115).
(2) Correspondence information. This information includes the
correspondence address, which may be indicated by reference to a
customer number, to which correspondence is to be directed (see
Sec. 1.33(a)).
(3) Application information. This information includes the title of
the invention, the total number of drawing sheets, whether the drawings
are formal, any docket number assigned to the application, and the type
(e.g., utility, plant, design, reissue utility, provisional) of
application, and whether the application discloses any significant part
of the subject matter of an application under a secrecy order pursuant
to Sec. 5.2 of this chapter (see Sec. 5.2(c)).
(4) Representative information. This information includes the
registration number of each practitioner, or the customer number,
having a power of attorney or authorization of agent in the
application. Providing this information in the application data sheet
does not constitute a power of attorney or authorization of agent in
the application (see Sec. 1.34(b)).
(5) Domestic priority information. This information includes the
application number, the filing date, the status (including patent
number if available), and relationship of each application for which a
benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c).
Providing this information in the application data sheet constitutes
the specific reference required by 35 U.S.C. 119(e) or 120 and
Sec. 1.78(a)(2) or Sec. 1.78(a)(4) of this part.
(6) Foreign priority information. This information includes the
application number, country, and filing date of each foreign
application for which priority is claimed, as well as any foreign
application having a filing date before that of the application for
which priority is claimed. Providing this information in the
application data sheet constitutes the claim for priority as required
by 35 U.S.C. 119(b) and Sec. 1.55(a) of this part.
(c) If an application contains an application data sheet, any
inconsistency between the information provided in the application data
sheet and the oath or declaration under Sec. 1.63 will be resolved in
favor of the information provided in the application data sheet. A
supplemental application data sheet may be submitted to correct or
update information provided in a previous application data sheet.
30. Section 1.77 is proposed to be revised to read as follows:
Sec. 1.77 Arrangement of application elements.
(a) The elements of the application, if applicable, should appear
in the following order:
(1) Utility application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see Sec. 1.76).
(4) Specification.
(5) Drawings.
(6) Executed oath or declaration.
(b) The specification should include the following sections in
order:
(1) Title of the invention, which may be accompanied by an
introductory portion stating the name, citizenship and residence of the
applicant.
(2) Cross-reference to related applications (unless included in the
application data sheet).
(3) Statement regarding federally sponsored research or
development.
(4) Reference to a ``computer program listing appendix'' (see
Sec. 1.96 (c)).
(5) Background of the invention.
(6) Brief summary of the invention.
(7) Brief description of the several views of the drawing.
(8) Detailed description of the invention.
(9) A claim or claims.
(10) Abstract of the disclosure.
(11) Sequence listing (see Secs. 1.821 through 1.825).
(c) The text of the specification sections defined in paragraphs
(b)(1) through (b)(3) and (b)(5) through (b)(11) of this section, if
applicable, should be preceded by a section heading in uppercase and
without underlining or bold type.
31. Section 1.78 is proposed to be amended by revising paragraphs
(a)(2), (a)(4) and (c) to read as follows:
Sec. 1.78 Claiming benefit of earlier filing date and cross-references
to other applications.
(a) * * *
(2) Except for a continued prosecution application filed under
Sec. 1.53(d), any nonprovisional application claiming the benefit of
one or more prior filed copending nonprovisional applications or
international applications designating the United States of America
must contain a reference to each such prior application, identifying it
by application number (consisting of the series code and serial number)
or international application number and international filing date and
indicating the relationship of the applications. Unless the reference
required by this paragraph is included in an application data sheet
(Sec. 1.76), the specification must contain or be amended to contain
such reference in the first sentence following the title. The request
for a continued prosecution application under Sec. 1.53(d) is the
specific reference required by 35 U.S.C. 120 to the prior application.
The identification of an application by application number under this
section is the specific reference required by 35 U.S.C. 120 to every
application assigned that application number. Cross-references to other
related applications may be made when appropriate (see Sec. 1.14).
* * * * *
(4) Any nonprovisional application claiming the benefit of one or
more prior filed copending provisional applications must contain a
reference to each such prior provisional application, identifying it as
a provisional application, and including the provisional application
number (consisting of series code and serial number). Unless the
reference required by this paragraph is included in an
[[Page 53831]]
application data sheet (Sec. 1.76), the specification must contain or
be amended to contain such reference in the first sentence following
the title.
* * * * *
(c) If an application or a patent under reexamination and at least
one other application naming different inventors are owned by the same
party and contain conflicting claims, and there is no statement of
record indicating that the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person at the time
the later invention was made, the Office may require the assignee to
state whether the claimed inventions were commonly owned or subject to
an obligation of assignment to the same person at the time the later
invention was made, and, if not, indicate which named inventor is the
prior inventor.
32. Section 1.84 is proposed to be revised to read as follows:
Sec. 1.84 Standards for drawings.
(a) Drawings. There are two acceptable categories for presenting
drawings in utility patent applications:
(1) Black ink. Black and white drawings are normally required.
India ink, or its equivalent that secures solid black lines, must be
used for drawings, or
(2) Color. On rare occasions, color drawings may be necessary as
the only practical medium by which to disclose the subject matter
sought to be patented in a utility patent application or the subject
matter of a statutory invention registration. The Patent and Trademark
Office will accept color drawings in utility patent applications and
statutory invention registrations only if color drawings are necessary
for the understanding of the claimed invention and upon payment of the
fee set forth in Sec. 1.17(k) and submission of three sets of the color
drawings. Color drawings are not permitted in international
applications (see PCT Rule 11.13). If the subject matter of the
application admits of illustration by a black and white drawing, the
examiner may require a black and white drawing in place of the color
drawing. The color drawings must be of sufficient quality so that all
details in the drawings are reproducible in the printed patent. If
color drawings are submitted, the specification must contain or be
amended to contain the following language as the first paragraph of the
brief description of the drawings:
The file of this patent contains at least one drawing executed
in color. Copies of this patent with color drawing(s) will be
provided by the Patent and Trademark Office upon request and payment
of the necessary fee.
(b)(1) Photographs. Photographs are not ordinarily permitted in
utility patent applications. The Office will accept photographs in
utility patent applications, however, if photographs are the only
practicable medium for illustrating the claimed invention. If the
subject matter of the application admits of illustration by a drawing,
the examiner may require a drawing in place of the photograph. The
photographs must be of sufficient quality so that all details in the
photographs are reproducible in the printed patent.
(2) Color photographs. Color photographs will be accepted in
utility patent applications if the conditions for accepting color
drawings and photographs have been satisfied. See paragraphs (a)(2) and
(b)(1) of this section.
(c) Identification of drawings. Identifying indicia, if provided,
should include the title of the invention, inventor's name, and
application number, or docket number (if any) if an application number
has not been assigned to the application. If this information is
provided, it must be placed on the front of each sheet and centered
within the top margin.
(d) Type of paper. Drawings submitted to the Office must be made on
paper which is flexible, strong, white, smooth, non-shiny, and durable.
All sheets must be reasonably free from cracks, creases, and folds.
Only one side of the sheet may be used for the drawing. Each sheet must
be reasonably free from erasures and must be free from alterations,
overwritings, and interlineations. Photographs must be developed on
paper or be permanently mounted on Bristol board meeting the sheet-size
requirements of paragraph (e) of this section and the margin
requirements of paragraph (f) of this section. See paragraph (b) of
this section for other requirements for photographs.
(e) Size of paper. All drawing sheets in an application must be the
same size. One of the shorter sides of the sheet is regarded as its
top. The size of the sheets on which drawings are made must be:
(1) 21.0 cm by 29.7 cm (DIN size A4); or
(2) 21.6 cm by 27.9 cm (8\1/2\ by 11 inches).
(f) Margins. The sheets must not contain frames around the sight
(i.e., the usable surface), but should have scan target points (i.e.,
cross-hairs) printed on two catercorner margin corners. Each sheet must
include a top margin of at least 2.5 cm (1 inch), a left side margin of
at least 2.5 cm (1 inch), a right side margin of at least 1.5 cm (\5/8\
inch), and a bottom margin of at least 1.0 cm (\3/8\ inch), and must
leave a sight no greater than 17.0 cm by 26.2 cm on 21.0 cm by 29.7 cm
(DIN size A4) drawing sheets, and a sight no greater than 17.0 cm by
24.4 cm (6\3/4\ by 9\5/8\ inches) on 21.6 cm by 27.9 cm (8\1/2\ by 11
inch) drawing sheets.
(g) Scale. The scale to which a drawing is made must be large
enough to show the mechanism without crowding when the drawing is
reduced in size to two-thirds in reproduction. Indications such as
``actual size'' or ``scale \1/2\'' on the drawings are not permitted
since these lose their meaning with reproduction in a different format.
(h) Character of lines, numbers, and letters. All drawings must be
made by a process which will give them satisfactory reproduction
characteristics. Every line, number, and letter must be durable, clean,
black (except for color drawings), sufficiently dense and dark, and
uniformly thick and well-defined. The weight of all lines and letters
must be heavy enough to permit adequate reproduction. This requirement
applies to all lines however fine, to shading, and to lines
representing cut surfaces in sectional views. Lines and strokes of
different thicknesses may be used in the same drawing where different
thicknesses have a different meaning.
(i) Legends. Suitable descriptive legends may be used subject to
approval by the Office, or may be required by the examiner where
necessary for understanding of the drawing. They should contain as few
words as possible.
(j) Numbers, letters, and reference characters. (1) Reference
characters (numerals are preferred), sheet numbers, and view numbers
must be plain and legible, and must not be used in association with
brackets or inverted commas, or enclosed within outlines, e.g.,
encircled. They must be oriented in the same direction as the view so
as to avoid having to rotate the sheet.
(2) The English alphabet must be used for letters, except where
another alphabet is customarily used, such as the Greek alphabet to
indicate angles, wavelengths, and mathematical formulas.
(3) Numbers, letters, and reference characters must measure at
least 0.32 cm (\1/8\ inch) in height.
(4) The same part of an invention appearing in more than one view
of the drawing must always be designated by the same reference
character, and the same reference character must never be used to
designate different parts.
(5) Only reference characters mentioned in the description may
appear in the drawings. Reference
[[Page 53832]]
characters mentioned in the description must appear in the drawings.
(k) Lead lines. Lead lines are those lines between the reference
characters and the details to which they refer. Such lines may be
straight or curved and should be as short as possible. They must
originate in the immediate proximity of the reference character and
extend to the feature indicated. Lead lines must not cross each other.
Lead lines are required for each reference character except for those
which indicate the surface or cross section on which they are placed.
Such a reference character must be underlined to make it clear that a
lead line has not been left out by mistake. Lead lines must be executed
in the same way as lines in the drawing. See paragraph (h) of this
section.
(l) Numbering of sheets of drawings. The sheets of drawings should
be numbered in consecutive Arabic numerals, starting with 1, within the
sight as defined in paragraph (g) of this section. These numbers, if
present, must be placed in the middle of the top of the sheet, but not
in the margin. The numbers can be placed on the right-hand side if the
drawing extends too close to the middle of the top edge of the usable
surface. The drawing sheet numbering must be clear and larger than the
numbers used as reference characters to avoid confusion. The number of
each sheet may be shown by two Arabic numerals placed on either side of
an oblique line, with the first being the sheet number and the second
being the total number of sheets of drawings, with no other marking.
(m) Numbering of views. (1) The different views must be numbered in
consecutive Arabic numerals, starting with 1, independent of the
numbering of the sheets and, if possible, in the order in which they
appear on the drawing sheet(s). Partial views intended to form one
complete view, on one or several sheets, must be identified by the same
number followed by a capital letter. View numbers must be preceded by
the abbreviation ``FIG.'' Where only a single view is used in an
application to illustrate the claimed invention, it must not be
numbered and the abbreviation ``FIG.'' must not appear.
(2) Numbers and letters identifying the views must be simple and
clear and must not be used in association with brackets, circles, or
inverted commas. The view numbers must be larger than the numbers used
for reference characters.
(n) Security markings. Authorized security markings may be placed
on the drawings provided they are outside the sight, preferably
centered in the top margin.
(o) Corrections. Any corrections on drawings submitted to the
Office must be durable and permanent.
(p) See Sec. 1.152 for design drawings, Sec. 1.165 for plant
drawings, and Sec. 1.173 for reissue drawings.
33. Section 1.85 is proposed to be revised to read as follows:
Sec. 1.85 Corrections to drawings.
(a) If a drawing meets the requirements of Sec. 1.84(d), (e) and
(f) and is suitable for reproduction, but is not otherwise in
compliance with Sec. 1.84, the drawing may be admitted for examination.
(b) The Office will not release drawings for purposes of
correction. If corrections are necessary, new corrected drawings must
be submitted within the time set by the Office.
(c) If a corrected drawing is required or if a drawing does not
comply with Sec. 1.84 at the time an application is allowed, the Office
may notify the applicant and set a three month period of time from the
mail date of the notice of allowability within which the applicant must
file a corrected or formal drawing in compliance with Sec. 1.84 to
avoid abandonment. This time period is not extendable under
Sec. 1.136(a) or (b).
34. Section 1.91 is proposed to be amended by revising paragraph
(a)(3)(i) to read as follows:
Sec. 1.91 Models or exhibits not generally admitted as part of
application or patent.
(a) * * *
(3) * * *
(i) The fee set forth in Sec. 1.17(h); and
* * * * *
35. Section 1.96 is proposed to be amended by revising paragraphs
(b) and (c) to read as follows:
Sec. 1.96 Submission of computer program listings.
* * * * *
(b) Material which will be printed in the patent. If the computer
program listing is contained on one sheet, it may be submitted either
as a drawing or as part of the specification.
(1) Drawings. If the listing is submitted as a drawing, it must be
submitted in the manner and complying with the requirements for
drawings as provided in Sec. 1.84. At least one figure numeral is
required on the sheet of drawing.
(2) Specification. (i) If the listing is submitted as part of the
specification, it must be submitted in accordance with the provisions
of Sec. 1.52, at the end of the description but before the claims.
(ii) Any listing submitted as part of the specification must be a
direct printout (i.e., not a copy) from the computer's printer with
dark solid black letters not less than 0.21 cm high, on white, unshaded
and unlined paper, and the sheet should be submitted in a protective
cover. Any amendments must be made by way of submission of a substitute
sheet.
(c) As an appendix which will not be printed. Any computer program
listing may, and any computer program listing that would be contained
on more than one sheet must, be submitted on a Compact Disk-Read Only
Memory (CD-ROM) or Compact Disk-Recordable (CD-R), which must be
referred to in the specification (see Sec. 1.77(b)(4)). A CD-ROM or CD-
R containing such a computer program listing is to be referred to as a
``computer program listing appendix.'' The ``computer program listing
appendix'' will not be part of the printed patent. Reference in the
application to the ``computer program listing appendix'' must be made
at the location indicated in Sec. 1.77(b)(4). Any amendment to the
``computer program listing appendix'' must be by way of a new CD-ROM or
CD-R containing a substitute computer program listing.
(1) Availability of appendix. Such ``computer program listing
appendix'' will be available to the public for inspection, and copies
thereof will be available for purchase with the file wrapper and
contents, after a patent based on such application is granted or the
application is otherwise made publicly available.
(2) Submission requirements--(i) A ``computer program listing
appendix'' must be submitted on a CD-ROM or CD-R in accordance with the
standards set forth in 36 CFR 1228.188(c) and (d).
(ii) The computer program listing must be written in American
Standard Code for Information Interchange (ASCII) in the form of
textual document files on a disk that complies with Sec. 1.824(b). No
other format shall be allowed. The CD-ROM or CD-R must be accompanied
by documentation on paper in accordance with Sec. 1.52(a) that contains
the machine format (e.g., IBM-PC, Macintosh)), the operating system
(e.g., MS-DOS, Macintosh, Unix) and any other special information that
is necessary to identify, maintain, and interpret the ``computer
program listing appendix.''
(iii) Multiple computer program listings for a single application
may be placed on a single CD-ROM or CD-R. Multiple CD-ROMs or CD-Rs may
be submitted for a single application if necessary. A separate CD-ROM
or CD-R is required for each application containing a computer program
listing
[[Page 53833]]
that must be submitted on a ``computer program listing appendix.''
(iv) A CD-ROM or CD-R ``computer program listing appendix'' must be
labeled with the following information:
(A) The name of each inventor (if known);
(B) Title of the invention;
(C) The docket number used by the person filing the application to
identify the application (if applicable).
36. Section 1.97 is proposed to be amended by revising paragraphs
(a) through (e) to read as follows:
Sec. 1.97 Filing of information disclosure statement.
(a) In order for an applicant for a patent or for a reissue of a
patent to have an information disclosure statement in compliance with
Sec. 1.98 considered by the Office during the pendency of the
application, it must satisfy one of paragraphs (b), (c), or (d) of this
section.
(b) An information disclosure statement shall be considered by the
Office if filed by the applicant within any one of the following time
periods:
(1) Within three months of the filing date of a national
application other than a continued prosecution application under
Sec. 1.53(d);
(2) Within three months of the date of entry of the national stage
as set forth in Sec. 1.491 in an international application; or
(3) Before the mailing date of a first Office action on the merits.
(c) An information disclosure statement shall be considered by the
Office if filed after the period specified in paragraph (b) of this
section, provided that the information disclosure statement is filed
before the mailing date of any of a final action under Sec. 1.113, a
notice of allowance under Sec. 1.311, or an action that otherwise
closes prosecution in the application, and it is accompanied by one of:
(1) A statement as specified in paragraph (e) of this section; or
(2) The fee set forth in Sec. 1.17(p).
(d) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in
paragraph (c) of this section, provided that the information disclosure
statement is filed on or before payment of the issue fee and is
accompanied by:
(1) A statement as specified in paragraph (e) of this section; and
(2) The fee set forth in Sec. 1.17(p).
(e) A statement under this section must state either:
(1) That each item of information contained in the information
disclosure statement was first cited in a communication from a foreign
patent office in a counterpart foreign application not more than three
months prior to the filing of the information disclosure statement; or
(2) That no item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application, and, to the knowledge of
the person signing the certification after making reasonable inquiry,
no item of information contained in the information disclosure
statement was known to any individual designated in Sec. 1.56(c) more
than three months prior to the filing of the information disclosure
statement.
* * * * *
37. Section 1.98 is proposed to be revised to read as follows:
Sec. 1.98 Content of information disclosure statement.
(a) Any information disclosure statement filed under Sec. 1.97
shall include:
(1) A list of all patents, publications or other information
submitted for consideration by the Office;
(2) A legible copy of:
(i) Each U.S. and foreign patent;
(ii) Each publication or that portion which caused it to be listed;
(iii) For each cited pending U.S. application, the application
specification including the claims, and any drawing of the application,
or that portion of the application which caused it to be listed
including any claims directed to that portion; and
(iv) All other information or that portion which caused it to be
listed; and
(3) A concise explanation of the relevance, as it is presently
understood by the individual designated in Sec. 1.56(c) most
knowledgeable about the content of the information, of each patent,
publication, or other information listed that is not in the English
language. The concise explanation may be either separate from the
specification or incorporated therein. If a written English-language
translation of a non-English-language document, or portion thereof, is
within the possession, custody, or control of, or is readily available
to any individual designated in Sec. 1.56(c), a copy of the translation
shall accompany the information disclosure statement.
(b) Each U.S. patent listed in an information disclosure statement
shall be identified by patentee, patent number and issue date. Each
listed U.S. application shall be identified by the inventor,
application number and filing date. Each listed foreign patent or
published foreign patent application shall be identified by the country
or patent office which issued the patent or published the application,
an appropriate document number, and the publication date indicated on
the patent or published application. Each listed publication shall be
identified by author (if any), title, relevant pages of the
publication, date, and place of publication.
(c) When the disclosures of two or more patents or publications
listed in an information disclosure statement are substantively
cumulative, a copy of one of the patents or publications may be
submitted without copies of the other patents or publications provided
that a statement is made that these other patents or publications are
cumulative.
(d) A copy of any patent, publication, application, or other
information listed in an information disclosure statement is not
required to be provided if it was previously cited by or submitted to
the Office in a prior application, provided that:
(1) The prior application is properly identified in the statement
and relied on for an earlier filing date under 35 U.S.C. 120; and
(2) Where the listed information was not cited by the Office, the
information submission made in the prior application complied with
paragraphs (a) through (c) of this section, and except for an
application filed under Sec. 1.53(d) the submission made in the prior
application complied with Sec. 1.97.
38. Section 1.102 is proposed to be amended by revising paragraph
(d) to read as follows:
Sec. 1.102 Advancement of examination.
* * * * *
(d) A petition to make an application special on grounds other than
those referred to in paragraph (c) of this section must be accompanied
by the fee set forth in Sec. 1.17(h).
39. Section 1.103 is proposed to be revised to read as follows:
Sec. 1.103 Suspension of action by the Office.
(a) Suspension for cause. On request of the applicant, the Office
may grant a suspension of action under this paragraph for good and
sufficient cause. The Office will not suspend action if a reply by
applicant to an Office action is outstanding. Any petition for
suspension of action under this paragraph must specify a period of
suspension not exceeding six months. Any petition for suspension of
action under this paragraph must also include:
(1) A showing of good and sufficient cause for suspension of
action; and
(2) The fee set forth in Sec. 1.17(h), unless such cause is the
fault of the Office.
[[Page 53834]]
(b) Limited suspension of action in a continued prosecution
application (CPA) under Sec. 1.53(d). On request of the applicant, the
Office may grant a suspension of action under this paragraph in a
continued prosecution application under Sec. 1.53(d) for a period not
exceeding three months. Any request for suspension of action under this
paragraph must be filed with the request for an application under
Sec. 1.53(d), specify the period of suspension, and include the
processing fee set forth in Sec. 1.17(i).
(c) Notice of suspension on initiative of the Office. The Office
will notify applicant if the Office suspends action by the Office on an
application on its own initiative.
(d) Suspension of action for public safety or defense. The Office
may suspend action by the Office by order of the Commissioner if the
following conditions are met:
(1) The application is owned by the United States;
(2) Publication of the invention may be detrimental to the public
safety or defense; and
(3) The appropriate department or agency requests such suspension.
(e) Statutory invention registration. The Office will suspend
action for the entire pendency of an application if the Office has
accepted a request to publish a statutory invention registration in the
application, except for purposes relating to patent interference
proceedings under subpart E of this part.
40. A new Sec. 1.105 is proposed to be added to read as follows:
Sec. 1.105 Requirements for information.
(a)(1) In the course of examining or treating a matter in a pending
or abandoned application filed under 35 U.S.C. 111 or 371 (including a
reissue application), in a patent, or in a reexamination proceeding,
the examiner or other Office employee may require the submission of
such information as may be reasonably necessary to properly examine or
treat the matter.
(2) Any reply that states that the information required to be
submitted is unknown and/or is not available will be accepted as a
complete reply.
(b) The requirement for information of paragraph (a)(1) of this
section may be included in an Office action, or sent separately.
(c) A reply, or a failure to reply, to a requirement for
information under this rule will be governed by Secs. 1.135 and 1.136.
41. Section 1.111 is proposed to be amended by revising the heading
and paragraphs (a) and (c) to read as follows:
Sec. 1.111 Reply by applicant or patent owner to a non-final Office
action.
(a) If the Office action after the first examination (Sec. 1.104)
is adverse in any respect, the applicant or patent owner, if he or she
persists in his or her application for a patent or reexamination
proceeding, must reply thereto and request reconsideration or further
examination, with or without amendment. See Sec. 1.135 and Sec. 1.136
for time for reply to avoid abandonment. A second or subsequent
supplemental reply will be entered unless disapproved by the
Commissioner.
* * * * *
(c) In amending in reply to a rejection of claims in an application
or patent under reexamination, the applicant or patent owner must
clearly point out the patentable novelty which he or she thinks the
claims present in view of the state of the art disclosed by the
references cited or the objections made. The applicant or patent owner
must also show how the amendments avoid such references or objections.
42. Section 1.112 is proposed to be revised to read as follows:
Sec. 1.112 Reconsideration before final action.
After reply by applicant or patent owner (Sec. 1.111) to a non-
final action, the application or patent under reexamination will be
reconsidered and again examined. The applicant or patent owner will be
notified if claims are rejected, or objections or requirements made, in
the same manner as after the first examination (Sec. 1.104). Applicant
or patent owner may reply to such Office action in the same manner
provided in Sec. 1.111, with or without amendment, unless such Office
action indicates that it is made final (Sec. 1.113) or an appeal
(Sec. 1.191) has been taken.
43. A new Sec. 1.115 is proposed to be added to read as follows:
Sec. 1.115 Preliminary amendments.
(a) A preliminary amendment is an amendment that is received in the
Office (Sec. 1.6) on or before the mail date of the first Office action
under Sec. 1.104.
(b) A preliminary amendment will be entered unless disapproved by
the Commissioner. A preliminary amendment will not be disapproved if it
is filed no later than:
(1) Three months from the filing date of an application under
Sec. 1.53(b);
(2) The filing date of a continued prosecution application under
Sec. 1.53(d); or
(3) Three months from the date the national stage is entered as set
forth in Sec. 1.491 in an international application.
(c) The time periods specified in paragraph (b) of this section are
not extendable.
44. Section 1.121 is proposed to be amended by revising paragraphs
(a) and (b) to read as follows:
Sec. 1.121 Manner of making amendments.
(a) Amendments in applications, other than reissue applications.
Amendments in applications, excluding reissue applications, are made by
filing a paper, in compliance with Sec. 1.52, directing that specified
amendments be made.
(1) Specification other than the claims--(i) Amendment by
instruction to delete, replace or add a paragraph: If the paragraphs of
the specification are numbered as provided in Sec. 1.52(b)(6),
amendments to the specification, other than the claims, may be made by
submitting an instruction, referencing the paragraph number, to delete
one or more paragraphs of the specification, to replace a deleted
paragraph with one or more replacement paragraphs, or to add one or
more paragraphs, along with the replacement or added paragraph(s). The
replacement or added paragraph(s) must not include any markings to
indicate the changes that have been made. The amendment must be
accompanied by a copy of any replacement paragraph(s), on one or more
pages separate from the amendment, marked-up to show all the changes
made by brackets (for deleted matter) or underlining (for added
matter), or by any equivalent marking system. If a deleted paragraph is
replaced by a single paragraph, the replacement paragraph must retain
the same number as the deleted paragraph. If a deleted paragraph is
replaced by more than one paragraph, the numbering of the replacement
paragraphs must begin with the number of the deleted paragraph with
following paragraphs beginning with the number of the deleted paragraph
followed by a single decimal and sequential integers (e.g., paragraph
0071 is replaced by 0071, 0071.1, and 0071.2). Any paragraph(s) added
between existing paragraphs must have the same number as the paragraph
immediately above the added one, followed by a period and a new
sequential number series (e.g., 0071.1, 0071.2). When numbered
paragraphs are added or deleted by amendment, the numbering of any
unaffected paragraphs must remain unchanged. Subsequent amendments
which may involve further replacement paragraphs are added in the same
manner using existing paragraph numbers along with increasing numbers
following a decimal. For clarity, a total renumbering of all previously
added
[[Page 53835]]
paragraphs or the submission of a substitute specification with totally
renumbered paragraphs may be required.
(ii) Amendment by replacement section. If the sections of the
specification contain section headings as provided in Sec. 1.77(b),
Sec. 1.154(b), or Sec. 1.163(c), amendments to the specification, other
than the claims, may be made by referring to the section heading along
with an instruction to delete that section of the specification and to
replace such deleted section with a replacement section. The
replacement section must be in clean form and must not include any
markings to indicate the changes that have been made. The amendment
must be accompanied by a copy of the replacement section, on one or
more pages separate from the amendment, marked-up to show all changes
made by brackets (for deleted matter) or underlining (for added
matter), or by any equivalent marking system.
(iii) Amendment by substitute specification. The specification,
other than the claims, may also be amended by submission of a
substitute specification in compliance with Sec. 1.125. If the
paragraphs of the specification are not numbered as provided in
Sec. 1.52(b)(6), and the sections of the specification do not contain
section headings as provided in Sec. 1.77(b), Sec. 1.154(b), or
Sec. 1.163(c), the specification, other than the claims, may be amended
only by submission of a substitute specification in compliance with
Sec. 1.125. The paragraphs of the substitute specification, other than
the claims, should be individually numbered in Arabic numerals so that
any further amendment to the specification may be made by replacement
paragraph(s) in accordance with paragraph (a)(1)(i) of this section.
The amendment must be accompanied by a copy of the substitute
specification marked-up to show all changes made by brackets (for
deleted matter), or underlining (for added matter), or by any
equivalent marking system.
(iv) Matter deleted by amendment pursuant to paragraph (a)(1) of
this section can be reinstated only by a subsequent amendment
presenting the previously deleted matter.
(2) Claims. Amendments to a claim must be made by rewriting such
claim with all changes (e.g., additions, deletions, modifications)
included therein, or by directions to cancel or delete such claim. The
rewriting of a claim (with the same or a new number) will be construed
as directing the deletion of the previous version of that claim. A
rewritten or newly added claim must be in clean form without markings
as to the changes from the previous version of the claim or a canceled
claim. If a claim is amended by rewriting such claim with the same
number, the amendment must be accompanied by a copy of the rewritten
claim, on one or more pages separate from the amendment, marked-up to
show all the changes made by brackets (for deleted matter) or
underlining (for added matter) or by any equivalent marking system,
relative to the previous version of that claim. A claim canceled by
amendment (deleted in its entirety) can be reinstated only by a
subsequent amendment presenting the claim as a new claim with a new
claim number.
(3) Drawings. Application drawings are amended in the following
manner: Any change to the patent drawings must be submitted as a sketch
on a separate paper showing the proposed changes in red for approval by
the examiner. Upon approval by the examiner, new drawings in compliance
with Sec. 1.84 including the changes must be filed.
(4) Disclosure consistency. The disclosure must be amended, when
required by the Office, to correct inaccuracies of description and
definition, and to secure substantial correspondence between the
claims, the remainder of the specification, and the drawings.
(5) No new matter. No amendment may introduce new matter into the
disclosure of an application.
(b) Amendments in reissue applications. Any amendment to the
description and claims of a reissue application must be made in
accordance with Sec. 1.173.
* * * * *
45. Section 1.125 is proposed to be amended by revising paragraphs
(b)(2) and (c) to read as follows:
Sec. 1.125 Substitute specification.
* * * * *
(b) * * *
(2) A marked-up copy of the substitute specification showing all
the changes to (including the matter being added to and the matter
being deleted from) the specification of record. Numbering the
paragraphs of the specification of record is not considered a change
that must be shown pursuant to this paragraph.
(c) A substitute specification submitted under this section must be
submitted in clean form without markings as to amended material. The
paragraphs of any substitute specification, other than the claims,
should be individually numbered in Arabic numerals so that any
amendment to the specification may be made by replacement paragraph in
accordance with Sec. 1.121(a)(1)(i).
* * * * *
46. Section 1.131 is proposed to be amended by revising its heading
and paragraph (a) to read as follows:
Sec. 1.131 Affidavit or declaration of prior invention.
(a) When any claim of an application or a patent under
reexamination is rejected, the inventor of the subject matter of the
rejected claim, the owner of the patent under reexamination, or the
party qualified under Secs. 1.42, 1.43, or 1.47, may submit an
appropriate oath or declaration to establish invention of the subject
matter of the rejected claim prior to the effective date of the
reference or activity on which the rejection is based. The effective
date of a U.S. patent is the date that such U.S. patent is effective as
a reference under 35 U.S.C. 102(e). Prior invention may not be
established under this section in any country other than the United
States, a NAFTA country, or a WTO member country. Prior invention may
not be established under this section before December 8, 1993, in a
NAFTA country other than the United States, or before January 1, 1996,
in a WTO member country other than a NAFTA country. Prior invention may
not be established under this section if either:
(1) The rejection is based upon a U.S. patent to another or others
which claims the same patentable invention as defined in Sec. 1.601(n);
or
(2) The rejection is based upon a statutory bar.
* * * * *
47. Section 1.132 is proposed to be revised to read as follows:
Sec. 1.132 Affidavits or declarations traversing rejections or
objections.
When any claim of an application or a patent under reexamination is
rejected or objected to, the inventor of the subject matter of the
rejected claim, an oath or declaration may be submitted to traverse the
rejection or objection. An oath or declaration may not be submitted
under this section to traverse a rejection if the rejection is based
upon a U.S. patent to another or others which claims the same
patentable invention as defined in Sec. 1.601(n).
48. Section 1.133 is proposed to be amended by revising paragraph
(a) to read as follows:
Sec. 1.133 Interviews.
(a) Interviews with examiners concerning applications and other
matters pending before the Office must be conducted on Office premises
and within office hours, as the respective
[[Page 53836]]
examiners may designate. Interviews will not be permitted at any other
time or place without the authority of the Commissioner. Interviews for
the discussion of the patentability of pending applications will not
occur before the first Office action. The examiner may require that an
interview be scheduled in advance.
* * * * *
49. Section 1.136 is proposed to be amended by adding paragraph (c)
to read as follows:
Sec. 1.136 Extensions of time.
* * * * *
(c) If an applicant is notified in a ``Notice of Allowability''
that an application is otherwise in condition for allowance, the
following time periods are not extendable if set in the ``Notice of
Allowability'' or in an Office action having a mail date on or after
the mail date of the ``Notice of Allowability'':
(1) The period for submitting an oath or declaration in compliance
with Sec. 1.63;
(2) The period for submitting formal drawings set under
Sec. 1.85(c); and
(3) The period for making a deposit set under Sec. 1.809(c).
50. Section 1.137 is proposed to be amended by revising paragraph
(c) to read as follows:
Sec. 1.137 Revival of abandoned application or lapsed patent.
* * * * *
(c)(1) Any petition to revive pursuant to this section in a design
application must be accompanied by a terminal disclaimer and fee as set
forth in Sec. 1.321 dedicating to the public a terminal part of the
term of any patent granted thereon equivalent to the period of
abandonment of the application. Any petition to revive pursuant to this
section in either a utility or plant application filed before June 8,
1995, must be accompanied by a terminal disclaimer and fee as set forth
in Sec. 1.321 dedicating to the public a terminal part of the term of
any patent granted thereon equivalent to the lesser of:
(i) The period of abandonment of the application; or
(ii) The period extending beyond twenty years from the date on
which the application for the patent was filed in the United States or,
if the application contains a specific reference to an earlier filed
application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on
which the earliest such application was filed.
(2) Any terminal disclaimer pursuant to paragraph (c)(1) of this
section must also apply to any patent granted on a continuing utility
or plant application filed after June 8, 1995, or a continuing design
application, that contains a specific reference under 35 U.S.C. 120,
121, or 365(c) to the application for which revival is sought.
(3) The provisions of paragraph (c)(1) of this section do not apply
to applications for which revival is sought solely for purposes of
copendency with a utility or plant application filed on or after June
8, 1995, or to lapsed patents.
* * * * *
51. Section 1.138 is proposed to be revised to read as follows:
Sec. 1.138 Express abandonment.
(a) An application may be expressly abandoned by filing in the
Patent and Trademark Office a written declaration of abandonment
identifying the application. Express abandonment of the application may
not be recognized by the Office unless it is actually received by
appropriate officials in time to act thereon before the date of issue.
(b) A written declaration of abandonment must be signed by a party
authorized under Sec. 1.33(b)(1), (b)(3) or (b)(4) to sign a paper in
the application, except as otherwise provided in this paragraph. A
registered attorney or agent not of record who acts in a representative
capacity under the provisions of Sec. 1.34(a) when filing a continuing
application may expressly abandon the prior application as of the
filing date granted to the continuing application.
52. Section 1.152 is proposed to be revised to read as follows:
Sec. 1.152 Design drawings.
The design must be represented by a drawing that complies with the
requirements of Sec. 1.84, and must contain a sufficient number of
views to constitute a complete disclosure of the appearance of the
design. Appropriate and adequate surface shading should be used to show
the character or contour of the surfaces represented. Solid black
surface shading is not permitted except when used to represent the
color black as well as color contrast. Broken lines may be used to show
visible environmental structure, but may not be used to show hidden
planes and surfaces which cannot be seen through opaque materials.
Alternate positions of a design component, illustrated by full and
broken lines in the same view are not permitted in a design drawing.
Photographs and ink drawings are not permitted to be combined as formal
drawings in one application. Photographs submitted in lieu of ink
drawings in design patent applications must not disclose environmental
structure but must be limited to the design for the article claimed.
53. Section 1.154 is proposed to be revised to read as follows:
Sec. 1.154 Arrangement of application elements.
(a) The elements of the design application, if applicable, should
appear in the following order:
(1) Design application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see Sec. 1.76).
(4) Specification.
(5) Drawings or photographs.
(6) Executed oath or declaration (see Sec. 1.153(b)).
(b) The specification should include the following sections in
order:
(1) Preamble, stating name of the applicant, title of the design,
and a brief description of the nature and intended use of the article
in which the design is embodied.
(2) Cross-reference to related applications (unless included in the
application data sheet).
(3) Statement regarding federally sponsored research or
development.
(4) Description of the figure or figures of the drawing.
(5) Feature description.
(6) A single claim.
(c) The text of the specification sections defined in paragraph (b)
of this section, if applicable, should be preceded by a section heading
in uppercase and without underlining or bold type.
54. Section 1.155 is proposed to be revised to read as follows:
Sec. 1.155 Expedited examination of design patents.
(a) The applicant may request that the Office expedite the
examination of a design application. To qualify for expedited
examination:
(1) The application must include drawings in compliance with
Sec. 1.84;
(2) The applicant must have conducted a preexamination search; and
(3) The applicant must file a request for expedited examination
including:
(i) The fee set forth in Sec. 1.17(t); and
(ii) A statement that a preexamination search was conducted. The
statement must also indicate the field of search and include an
information disclosure statement in compliance with Sec. 1.98.
(b) The Office will not examine an application that is not in
condition for examination (e.g., missing basic filing fee) even if the
applicant files a request for expedited examination under this section.
55. Section 1.163 is proposed to be revised to read as follows:
[[Page 53837]]
Sec. 1.163 Specification and arrangement of application elements.
(a) The specification must contain as full and complete a
disclosure as possible of the plant and the characteristics thereof
that distinguish the same over related known varieties, and its
antecedents, and must particularly point out where and in what manner
the variety of plant has been asexually reproduced. For a newly found
plant, the specification must particularly point out the location and
character of the area where the plant was discovered.
(b) The elements of the plant application, if applicable, should
appear in the following order:
(1) Plant application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see Sec. 1.76).
(4) Specification.
(5) Drawings (in duplicate).
(6) Executed oath or declaration (Sec. 1.162).
(c) The specification should include the following sections in
order:
(1) Title of the invention, which may include an introductory
portion stating the name, citizenship, and residence of the applicant.
(2) Cross-reference to related applications (unless included in the
application data sheet).
(3) Statement regarding federally sponsored research or
development.
(4) Latin name of the genus and species of the plant claimed.
(5) Variety denomination.
(6) Background of the invention.
(7) Brief summary of the invention.
(8) Brief description of the drawing.
(9) Detailed botanical description.
(10) A single claim.
(11) Abstract of the disclosure.
(d) The text of the specification or sections defined in paragraph
(c) of this section, if applicable, should be preceded by a section
heading in upper case, without underlining or bold type.
56. Section 1.173 is proposed to be revised to read as follows:
Sec. 1.173 Reissue specification, drawings, and amendments.
(a) Contents of a reissue application. An application for reissue
must contain the entire specification, including the claims, and the
drawings of the patent. No new matter shall be introduced into the
application.
(1) Specification, including claims. The entire specification,
including the claims, of the patent for which reissue is requested must
be furnished in the form of a copy of the printed patent, but with only
a single column of the printed patent securely mounted, or otherwise
reproduced in permanent form, on a single page. If an amendment of the
reissue application is to be included, it must be made pursuant to
paragraph (b) of this section.
(2) Drawings. Applicant must submit a clean copy of each drawing
sheet of the printed patent at the time the reissue application is
filed. If such copy complies with Sec. 1.84, no further drawings will
be required. Where a drawing of the reissue application is to include
any changes relative to the patent being reissued, the changes to the
drawing must be made in accordance with paragraph (b)(3) of this
section. The Office will not transfer the drawings from the patent file
to the reissue application.
(b) Making amendments in a reissue application. An amendment in a
reissue application is made either upon filing, by incorporating the
changes physically within the specification, including the claims,
using markings pursuant to paragraph (d) of this section, or by filing
an amendment paper as a preliminary amendment or during prosecution
directing that specified changes be made to the application
specification, including the claims, or to the drawings.
(1) Specification other than the claims. Changes to the
specification, other than to the claims, must be made by submission of
the entire text of an added or rewritten paragraph, including markings
pursuant to paragraph (d) of this section, except that an entire
paragraph may be deleted by a statement deleting the paragraph without
presentation of the text of the paragraph. The precise point in the
specification must be identified where any added or rewritten paragraph
is located.
(2) Claims. An amendment paper must include the entire text of each
claim being changed by such amendment paper and of each claim being
added by such amendment paper. For any claim changed by the amendment
paper, a parenthetical expression ``amended,'' ``twice amended,'' etc.,
should follow the claim number. Each changed patent claim and each
added claim must include markings pursuant to paragraph (d) of this
section, except that a patent claim or added claim should be canceled
by a statement canceling the claim without presentation of the text of
the claim.
(3) Drawings. Any change to the patent drawings must be submitted
as a sketch on a separate paper showing the proposed changes in red for
approval by the examiner. Upon approval by the examiner, new drawings
in compliance with Sec. 1.84 including the approved changes must be
filed. Amended figures must be identified as ``Amended,'' and any added
figure must be identified as ``New.'' In the event that a figure is
canceled, the figure must be surrounded by brackets and identified as
``Canceled.''
(c) Status of claims and support for claim changes. Whenever there
is an amendment to the claims pursuant to paragraph (b) of this
section, there must also be supplied, on pages separate from the pages
containing the changes, the status (i.e., pending or canceled), as of
the date of the amendment, of all patent claims and of all added
claims, and an explanation of the support in the disclosure of the
patent for the changes to the claims made by the amendment paper.
(d) Changes shown by markings. Any changes relative to the patent
being reissued which are made to the specification, including the
claims, upon filing, or by an amendment paper in the reissue
application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in
brackets; and
(2) The matter to be added by reissue must be underlined.
(e) Numbering of patent claims preserved. Patent claims may not be
renumbered. The numbering of any claims added in the reissue
application must follow the number of the highest numbered patent
claim.
(f) Amendment of disclosure may be required. The disclosure must be
amended, when required by the Office, to correct inaccuracies of
description and definition, and to secure substantial correspondence
between the claims, the remainder of the specification, and the
drawings.
(g) Amendments made relative to patent. All amendments must be made
relative to the patent specification, including the claims, and
drawings, which are in effect as of the date of filing of the reissue
application.
Sec. 1.174 [Removed and Reserved]
57. Section 1.174 is proposed to be removed and reserved.
58. Section 1.176 is proposed to be revised to read as follows:
Sec. 1.176 Examination of reissue.
(a) A reissue application will be examined in the same manner as a
non-reissue nonprovisional application, and will be subject to all the
requirements of the rules related to non-reissue applications.
Restriction between subject matter of the original patent claims and
previously unclaimed subject matter may be required.
(b) The examiner will act on applications for reissue in advance of
[[Page 53838]]
other nonprovisional applications. An application for reissue, other
than a continued prosecution application under Sec. 1.53(d), will not
be acted on sooner than two months after the announcement of the filing
of the reissue application in the Official Gazette.
59. Section 1.177 is proposed to be revised to read as follows:
Sec. 1.177 Issuance of multiple reissue patents.
(a) The Office may reissue a patent as multiple reissue patents. If
applicant files more than one application for the reissue of a single
patent, each such application must contain or be amended to contain in
the first sentence of the specification a notice stating that more than
one reissue application has been filed and identifying each of the
reissue applications by relationship, application number and filing
date. The Office may correct any reissue patent resulting from an
application to which this paragraph applies and not containing the
required notice by certificate of correction under Sec. 1.322.
(b) If applicant files more than one application for the reissue of
a single patent, each claim of the patent being reissued must be
presented in each of the reissue applications as an amended, unamended,
or canceled (shown in brackets) claim, with each such claim bearing the
same number as in the patent being reissued. The same claim of the
patent being reissued may not be presented in its original unamended
form for examination in more than one of such multiple reissue
applications. The numbering of any added claims in any of the multiple
reissue applications must follow the number of the highest numbered
original patent claim.
(c) If any one of the several reissue applications by itself fails
to correct an error in the original patent as required by 35 U.S.C.
251, but is otherwise in condition for allowance, the Office may
suspend action in the allowable application until all issues are
resolved as to at least one of the remaining reissue applications. The
Office may also merge two or more of the multiple reissue applications
into a single reissue application. No reissue application containing
only unamended patent claims and not correcting an error in the
original patent will be passed to issue by itself.
60. Section 1.178 is proposed to be revised to read as follows:
Sec. 1.178 Original patent.
The application for a reissue should be accompanied by an offer to
surrender the original patent. The application should also be
accompanied by the original patent, or if the original is lost or
inaccessible, by a statement to that effect. The application may be
accepted for examination in the absence of the original patent or the
statement, but one or the other must be supplied before the application
is allowed. If a reissue is refused, the original patent will be
returned to applicant upon request.
61. Section 1.193 is proposed to be amended by revising paragraph
(b)(1) to read as follows:
Sec. 1.193 Examiner's answer and reply brief.
* * * * *
(b)(1) Appellant may file a reply brief to an examiner's answer or
a supplemental examiner's answer within two months from the date of
such examiner's answer or supplemental examiner's answer. See
Sec. 1.136(b) for extensions of time for filing a reply brief in a
patent application and Sec. 1.550(c) for extensions of time for filing
a reply brief in a reexamination proceeding. The primary examiner must
either acknowledge receipt and entry of the reply brief or withdraw the
final rejection and reopen prosecution to respond to the reply brief. A
supplemental examiner's answer is not permitted, unless the application
has been remanded by the Board of Patent Appeals and Interferences for
such purpose.
* * * * *
62. Section 1.303 is proposed to be amended by revising paragraph
(a) to read as follows:
Sec. 1.303 Civil action under 35 U.S.C. 145, 146, 306.
(a) Any applicant or any owner of a patent involved in a
reexamination proceeding dissatisfied with the decision of the Board of
Patent Appeals and Interferences, and any party to an interference
dissatisfied with the decision of the Board of Patent Appeals and
Interferences may, instead of appealing to the U.S. Court of Appeals
for the Federal Circuit (Sec. 1.301), have remedy by civil action under
35 U.S.C. 145 or 146, as appropriate. Such civil action must be
commenced within the time specified in Sec. 1.304.
* * * * *
63. Section 1.311 is proposed to be amended by revising paragraph
(b) to read as follows:
Sec. 1.311 Notice of allowance.
* * * * *
(b) An authorization to charge the issue fee (Sec. 1.18) to a
deposit account may be filed in an individual application only after
mailing of the notice of allowance.
64. Section 1.312 is proposed to be revised to read as follows:
Sec. 1.312 Amendments after allowance.
(a) No amendment may be made as a matter of right in an application
after the mailing of the notice of allowance. Any amendment pursuant to
this paragraph filed before the payment of the issue fee may be entered
on the recommendation of the primary examiner, approved by the
Commissioner, without withdrawing the application from issue.
(b) Any amendment pursuant to paragraph (a) of this section filed
after the date the issue fee is paid must be accompanied by a petition
under Sec. 1.313(c)(1) to withdraw the application from issue, an
unequivocal statement that one or more claims are unpatentable, and an
explanation as to how the amendment is necessary to render such claim
or claims patentable.
65. Section 1.313 is proposed to be revised to read as follows:
Sec. 1.313 Withdrawal from issue.
(a) Applications may be withdrawn from issue for further action at
the initiative of the Office or upon petition by the applicant. To
request that the Office withdraw an application from issue, the
applicant must file a petition under this section including the fee set
forth in Sec. 1.17(h) and a showing of good and sufficient reasons why
withdrawal of the application is necessary. If the Office withdraws the
application from issue, the Office will issue a new notice of allowance
if the Office again allows the application.
(b) Once the issue fee has been paid, the Office will not withdraw
the application from issue at its own initiative for any reason except:
(1) A mistake on the part of the Office;
(2) A violation of Sec. 1.56 or illegality in the application;
(3) Unpatentability of one or more claims; or
(4) For interference.
(c) Once the issue fee has been paid, the application will not be
withdrawn from issue upon petition by the applicant for any reason
except:
(1) Unpatentability of one of more claims, which petition must be
accompanied by a statement of such unpatentability and an amendment in
compliance with Sec. 1.312(b); or
(2) Express abandonment of the application. Such express
abandonment may be in favor of a continuing application.
(d) A petition under this section will not be effective to withdraw
the application from issue unless it is actually received and granted
by the
[[Page 53839]]
appropriate officials before the date of issue. Withdrawal of an
application from issue after payment of the issue fee may not be
effective to avoid publication of application information.
66. Section 1.314 is proposed to be revised to read as follows:
Sec. 1.314 Issuance of patent.
If applicant timely pays the issue fee, the Office will issue the
patent in regular course unless the application is withdrawn from issue
(Sec. 1.313), or the Office defers issuance of the patent. To request
that the Office defer issuance of a patent, applicant must file
petition under this section including the fee set forth in Sec. 1.17(h)
and a showing of good and sufficient reasons why it is necessary to
defer issuance of the patent.
67. Section 1.322 is proposed to be amended by revising paragraph
(a) to read as follows:
Sec. 1.322 Certificate of correction of Office mistake.
(a) The Office may issue a certificate of correction under the
conditions specified in 35 U.S.C. 254 at the request of the patentee or
the patentee's assignee or on its own initiative. If the request
relates to a patent involved in an interference, the request must
comply with the requirements of this section and be accompanied by a
motion under Sec. 1.635. The Office will not issue such a certificate
on its own initiative without first notifying the patentee (including
any assignee of record) at the correspondence address of record as
specified in Sec. 1.33(a) and affording the patentee an opportunity to
be heard.
* * * * *
68. Section 1.323 is proposed to be revised to read as follows:
Sec. 1.323 Certificate of correction of applicant's mistake.
The Office may issue a certificate of correction under the
conditions specified in 35 U.S.C. 255 at the request of the patentee or
the patentee's assignee, upon payment of the fee set forth in
Sec. 1.20(a). If the request relates to a patent involved in an
interference, the request must comply with the requirements of this
section and be accompanied by a motion under Sec. 1.635.
69. Section 1.324 is proposed to be amended by revising its heading
and paragraph (b)(1) and adding paragraph (c) to read as follows:
Sec. 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C.
256.
* * * * *
(b) * * *
(1) Where one or more persons are being added, a statement from
each person who is being added as an inventor that the inventorship
error occurred without any deceptive intention on his or her part;
* * * * *
(c) For correction of inventorship in an application see Secs. 1.48
and 1.497, and in an interference see Sec. 1.634.
70. Section 1.366 is proposed to be amended by revising paragraph
(c) to read as follows:
Sec. 1.366 Submission of maintenance fees.
* * * * *
(c) In submitting maintenance fees and any necessary surcharges,
identification of the patents for which maintenance fees are being paid
must include the patent number, and the application number of the
United States application for the patent on which the maintenance fee
is being paid. If the payment includes identification of only the
patent number (i.e., does not identify the application number of the
United States application for the patent on which the maintenance fee
is being paid), the Office may apply the payment to the patent
identified by patent number in the payment or may return the payment.
* * * * *
71. Section 1.446 is proposed to be amended by revising paragraphs
(a) and (b) to read as follows:
Sec. 1.446 Refund of international application filing and processing
fees.
(a) Money paid for international application fees, where paid by
actual mistake or in excess, such as a payment not required by law or
Treaty and it Regulations, may be refunded. A mere change of purpose
after the payment of a fee will not entitle a party to a refund of such
fee. The Office will not refund amounts of twenty-five dollars or less
unless a refund is specifically requested, and will not notify the
payor of such amounts. If the payor or party requesting a refund does
not provide the banking information necessary for making refunds by
electronic funds transfer, the Office may use the banking information
provided on the payment instrument to make any refund by electronic
funds transfer.
(b) Any request for refund under paragraph (a) must be filed within
two years from the date the fee was paid. If the Office charges a
deposit account by an amount other than an amount specifically
indicated in an authorization under Sec. 1.25(b), any request for
refund based upon such charge must be filed within two years from the
date of the deposit account statement indicating such charge, and
include a copy of that deposit account statement. The time periods set
forth in this paragraph are not extendable.
* * * * *
72. Section 1.497 is proposed to be amended by revising paragraph
(b)(2) and adding paragraph (d) to read as follows:
Sec. 1.497 Oath or declaration under 35 U.S.C. 371(c)(4).
* * * * *
(b) * * *
(2) If the person making the oath or declaration or any
supplemental oath or declaration is not the inventor (Secs. 1.42, 1.43,
or 1.47), the oath or declaration shall state the relationship of the
person to the inventor, and, upon information and belief, the facts
which the inventor would have been required to state. If the person
signing the oath or declaration is the legal representative of a
deceased inventor, the oath or declaration shall also state that the
person is a legal representative and the citizenship, residence and
mailing address of the legal representative.
* * * * *
(d) If the oath or declaration filed pursuant to 35 U.S.C.
371(c)(4) and this section names an inventive entity different from the
inventive entity set forth in the international stage, the oath or
declaration must be accompanied by:
(1) A statement from each person being added as an inventor and
from each person being deleted as an inventor that any error in
inventorship in the international stage occurred without deceptive
intention on his or her part;
(2) The processing fee set forth in Sec. 1.17(i); and
(3) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Sec. 3.73(b)).
73. Section 1.510 is proposed to be amended by revising paragraph
(b)(4) to read as follows:
Sec. 1.510 Request for reexamination.
* * * * *
(b) * * *
(4) The entire specification, including the claims, of the patent
for which reexamination is requested, in the form of a copy of the
printed patent, but with only a single column of the printed patent
securely mounted, or otherwise reproduced in permanent form, on a
single sheet. A clean copy of each drawing sheet of the printed patent
must also be furnished. Additionally, a copy of any disclaimer,
certificate of correction, or reexamination certificate issued in the
patent must be included.
* * * * *
[[Page 53840]]
74. Section 1.530 is proposed to be amended by revising its heading
and paragraph (d), and adding paragraphs (e) through (l) to read as
follows:
Sec. 1.530 Statement; amendment by patent owner; inventorship change.
* * * * *
(d) Making amendments in a reexamination proceeding. A proposed
amendment in a reexamination proceeding is made by filing a paper
directing that proposed specified changes be made to the patent
specification, including the claims, or to the drawings. An amendment
paper directing that proposed specified changes be made in a
reexamination proceeding may be submitted as an accompaniment to a
request filed by the patent owner in accordance with Sec. 1.510(e), as
part of a patent owner statement in accordance with paragraph (b) of
this section, or, where permitted, during the conduct of the
reexamination proceeding pursuant to Sec. 1.550(a).
(1) Specification other than the claims. Changes to the
specification, other than to the claims, must be made by submission of
the entire text of an added or rewritten paragraph including markings
pursuant to paragraph (f) of this section, except that an entire
paragraph may be deleted by a statement deleting the paragraph, without
presentation of the text of the paragraph. The precise point in the
specification must be identified where any added or rewritten paragraph
is located.
(2) Claims. An amendment paper must include the entire text of each
patent claim which is being proposed to be changed by such amendment
paper and of each new claim being proposed to be added by such
amendment paper. For any claim changed by the amendment paper, a
parenthetical expression ``amended,'' ``twice amended,'' etc., should
follow the claim number. Each patent claim proposed to be changed and
each proposed added claim must include markings pursuant to paragraph
(f) of this section, except that a patent claim or proposed added claim
should be canceled by a statement canceling the claim, without
presentation of the text of the claim.
(3) Drawings. Any change to the patent drawings must be submitted
as a sketch on a separate paper showing the proposed changes in red for
approval by the examiner. Upon approval of the changes by the examiner,
only new sheets of drawings including the changes and in compliance
with Sec. 1.84 must be filed. Amended figures must be identified as
``Amended,'' and any added figure must be identified as ``New.'' In the
event a figure is canceled, the figure must be surrounded by brackets
and identified as ``Canceled.''
(e) Status of claims and support for claim changes. Whenever there
is an amendment to the claims pursuant to paragraph (d) of this
section, there must also be supplied, on pages separate from the pages
containing the changes, the status (i.e., pending or canceled), as of
the date of the amendment, of all patent claims and of all added
claims, and an explanation of the support in the disclosure of the
patent for the changes to the claims made by the amendment paper.
(f) Changes shown by markings. Any changes relative to the patent
being reexamined which are made to the specification, including the
claims, must include the following markings:
(1) The matter to be omitted by the reexamination proceeding must
be enclosed in brackets; and
(2) The matter to be added by the reexamination proceeding must be
underlined.
(g) Numbering of patent claims preserved. Patent claims may not be
renumbered. The numbering of any claims added in the reexamination
proceeding must follow the number of the highest numbered patent claim.
(h) Amendment of disclosure may be required. The disclosure must be
amended, when required by the Office, to correct inaccuracies of
description and definition, and to secure substantial correspondence
between the claims, the remainder of the specification, and the
drawings.
(i) Amendments made relative to patent. All amendments must be made
relative to the patent specification, including the claims, and
drawings, which are in effect as of the date of filing the request for
reexamination.
(j) No enlargement of claim scope. No amendment may enlarge the
scope of the claims of the patent or introduce new matter. No amendment
may be proposed for entry in an expired patent. Moreover, no amendment,
other than the cancellation of claims, will be incorporated into the
patent by a certificate issued after the expiration of the patent.
(k) Amendments not effective until certificate. Although the Office
actions will treat proposed amendments as though they have been
entered, the proposed amendments will not be effective until the
reexamination certificate is issued.
(l) Correction of inventorship in reexamination proceedings. (1)
When it appears that the correct inventor or inventors were not named
in a patent being reexamined through error without deceptive intention
on the part of the actual inventor or inventors, the Commissioner may,
on petition of all the parties and the assignees and satisfactory proof
of the facts and payment of the fee set forth in Sec. 1.20(b), or on
order of a court before which such matter is called in question,
include in the reexamination certificate to be issued under Sec. 1.570
an amendment naming only the actual inventor or inventors. The petition
must be submitted as part of the reexamination proceeding, and must
satisfy the requirements of Sec. 1.324.
(2) Notwithstanding paragraph (l)(1) of this section, if a petition
to correct inventorship satisfying the requirements of Sec. 1.324 is
filed in a reexamination proceeding, and the reexamination proceeding
is terminated other than in a reexamination certificate under
Sec. 1.570, a certificate of correction indicating the change of
inventorship stated in the petition will be issued upon request by the
patentee.
75. Section 1.550 is proposed to be amended by revising paragraphs
(a) through (c) to read as follows:
Sec. 1.550 Conduct of reexamination proceedings.
(a) All reexamination proceedings, including any appeals to the
Board of Patent Appeals and Interferences, will be conducted with
special dispatch within the Office. After issuance of the reexamination
order and expiration of the time for submitting any responses thereto,
the examination will be conducted in accordance with Secs. 1.104,
1.105, 1.110-1.113, 1.115, and 1.116 and will result in the issuance of
a reexamination certificate under Sec. 1.570.
(b) The patent owner will be given at least thirty days to respond
to any Office action. Such response may include further statements in
response to any rejections and/or proposed amendments or new claims to
place the patent in a condition where all claims, if amended as
proposed, would be patentable.
(c)(1) On or before the day on which an action by the patent owner
is due in a reexamination proceeding, the time for taking action by a
patent owner will be extended only for sufficient cause, and for a
reasonable time specified. Any request for such extension must be filed
on or before the day on which action by the patent owner is due, but in
no case will the mere filing of a request effect any extension. See
Sec. 1.304(a) for extensions of time for filing a notice of appeal to
the U.S. Court of Appeals for the Federal Circuit or for commencing a
civil action.
(2) After the day on which an action by the patent owner is due in
a
[[Page 53841]]
reexamination proceeding, the time for taking action by a patent owner
will be extended only upon the granting of a petition for extension of
time to accept late papers on the grounds that submission of the papers
was unintentionally delayed. A petition must be:
(i) Accompanied by papers effecting the action by the patent owner
required to continue prosecution of the reexamination proceeding;
(ii) Accompanied by the petition fee as set forth in Sec. 1.17(h);
(iii) Accompanied by a statement that the delay was unintentional.
The Commissioner may require additional information where there is a
question whether the delay was unintentional; and
(iv) Filed as a complete petition within the full statutory time
period for submission of the papers that were unintentionally delayed.
* * * * *
76. Section 1.666 is proposed to be amended by revising paragraph
(b) to read as follows:
Sec. 1.666 Filing of interference settlement agreements.
* * * * *
(b) If any party filing the agreement or understanding under
paragraph (a) of this section so requests, the copy will be kept
separate from the file of the interference, and made available only to
Government agencies on written request, or to any person upon petition
accompanied by the fee set forth in Sec. 1.17(h) and on a showing of
good cause.
* * * * *
77. Section 1.720 is proposed to be amended by revising paragraphs
(b) and (g) to read as follows:
Sec. 1.720 Conditions for extension of patent term.
* * * * *
(b) The term of the patent has never been previously extended,
except for extensions issued pursuant to Sec. 1.701, Sec. 1.760, or
Sec. 1.790;
* * * * *
(g) The term of the patent, including any interim extension issued
pursuant to Sec. 1.790, has not expired before the submission of an
application in compliance with Sec. 1.741; and
* * * * *
78. Section 1.730 is proposed to be revised to read as follows:
Sec. 1.730 Applicant for extension of patent term; signature
requirements.
(a) Any application for extension of a patent term must be
submitted by the owner of record of the patent or its agent and must
comply with the requirements of Sec. 1.740.
(b) If the application is submitted by the patent owner, the
application must be signed either by:
(1) The patent owner in compliance with Sec. 3.73(b) of this
chapter; or
(2) A registered practitioner on behalf of the patent owner.
(c) If the application is submitted on behalf of the patent owner
by an agent of the patent owner (e.g., a licensee of the patent owner),
the application must be signed by a registered practitioner on behalf
of the agent. The Office may require proof that the agent is authorized
to act on behalf of the patent owner.
(d) If the application is signed by a registered practitioner, the
Office may require proof that the practitioner is authorized to act on
behalf of the patent owner or agent of the patent owner.
79. Section 1.740 is proposed to be amended by revising its
heading, the introductory text of paragraph (a), and paragraphs (a)(9),
(a)(10), (a)(14), (a)(15), (b) and (c) to read as follows:
Sec. 1.740 Formal requirements for application for extension of patent
term; correction of informalities.
(a) An application for extension of patent term must be made in
writing to the Commissioner. A formal application for the extension of
patent term must include:
* * * * *
(9) A statement that the patent claims the approved product or a
method of using or manufacturing the approved product, and a showing
which lists each applicable patent claim and demonstrates the manner in
which at least one such patent claim reads on:
(i) The approved product, if the listed claims include any claim to
the approved product;
(ii) The method of using the approved product, if the listed claims
include any claim to the method of using the approved product; and
(iii) The method of manufacturing the approved product, if the
listed claims include any claim to the method of manufacturing the
approved product;
(10) A statement beginning on a new page, of the relevant dates and
information pursuant to 35 U.S.C. 156(g) in order to enable the
Secretary of Health and Human Services or the Secretary of Agriculture,
as appropriate, to determine the applicable regulatory review period as
follows:
(i) For a patent claiming a human drug, antibiotic, or human
biological product:
(A) The effective date of the investigational new drug (IND)
application and the IND number;
(B) The date on which a new drug application (NDA) or a Product
License Application (PLA) was initially submitted and the NDA or PLA
number; and
(C) The date on which the NDA was approved or the Product License
issued;
(ii) For a patent claiming a new animal drug:
(A) The date a major health or environmental effects test on the
drug was initiated, and any available substantiation of that date, or
the date of an exemption under subsection (j) of section 512 of the
Federal Food, Drug, and Cosmetic Act became effective for such animal
drug;
(B) The date on which a new animal drug application (NADA) was
initially submitted and the NADA number; and
(C) The date on which the NADA was approved;
(iii) For a patent claiming a veterinary biological product:
(A) The date the authority to prepare an experimental biological
product under the Virus-Serum-Toxin Act became effective;
(B) The date an application for a license was submitted under the
Virus-Serum-Toxin Act; and
(C) The date the license issued;
(iv) For a patent claiming a food or color additive:
(A) The date a major health or environmental effects test on the
additive was initiated and any available substantiation of that date;
(B) The date on which a petition for product approval under the
Federal Food, Drug and Cosmetic Act was initially submitted and the
petition number; and
(C) The date on which the FDA published a Federal Register notice
listing the additive for use;
(v) For a patent claiming a medical device:
(A) The effective date of the investigational device exemption
(IDE) and the IDE number, if applicable, or the date on which the
applicant began the first clinical investigation involving the device
if no IDE was submitted and any available substantiation of that date;
(B) The date on which the application for product approval or
notice of completion of a product development protocol under section
515 of the Federal Food, Drug and Cosmetic Act was initially submitted
and the number of the application; and
(C) The date on which the application was approved or the protocol
declared to be completed;
* * * * *
(14) The prescribed fee for receiving and acting upon the
application for extension (see Sec. 1.20(j)); and
[[Page 53842]]
(15) The name, address, and telephone number of the person to whom
inquiries and correspondence relating to the application for patent
term extension are to be directed.
(b) The application under this section must be accompanied by two
additional copies of such application.
(c) If an application for extension of patent term is informal
under this section, the Office will so notify the applicant. The
applicant has two months from the mail date of the notice, or such time
as is set in the notice, within which to correct the informality.
Unless the notice indicates otherwise, this time period may be extended
under the provisions of Sec. 1.136.
80. Section 1.741 is proposed to be amended by revising its
heading, the introductory text of paragraph (a) and paragraphs (a)(5)
and (b) to read as follows:
Sec. 1.741 Complete application given a filing date; petition
procedure.
(a) The filing date of an application for extension of a patent
term is the date on which a complete application is received in the
Office or filed pursuant to the procedures set forth in Sec. 1.8 or
Sec. 1.10. A complete application must include:
* * * * *
(5) Sufficient information to enable the Commissioner to determine
under subsections (a) and (b) of 35 U.S.C. 156 the eligibility of a
patent for extension and the rights that will be derived from the
extension and information to enable the Commissioner and the Secretary
of Health and Human Services or the Secretary of Agriculture to
determine the length of the regulatory review period; and
* * * * *
(b) If an application for extension of patent term is incomplete
under this section, the Office will so notify the applicant. If
applicant requests review of a notice that an application is
incomplete, or review of the filing date accorded an application under
this section, applicant must file a petition pursuant to this paragraph
accompanied by the fee set forth in Sec. 1.17(h) within two months of
the mail date of the notice that the application is incomplete, or the
notice according the filing date complained of. Unless the notice
indicates otherwise, this time period may be extended under the
provisions of Sec. 1.136.
81. Section 1.780 is proposed to be revised to read as follows:
Sec. 1.780 Certificate or order of extension of patent term.
If a determination is made pursuant to Sec. 1.750 that a patent is
eligible for extension and that the term of the patent is to be
extended, a certificate of extension, under seal, or an order granting
interim extension under 35 U.S.C. 156(d)(5), will be issued to the
applicant for the extension of the patent term. Such certificate or
order will be recorded in the official file of the patent and will be
considered as part of the original patent. Notification of the issuance
of the certificate or order of extension will be published in the
Official Gazette of the Patent and Trademark Office. Notification of
the issuance of the order granting an interim extension under 35 U.S.C.
156(d)(5), including the identity of the product currently under
regulatory review, will be published in the Official Gazette of the
Patent and Trademark Office and in the Federal Register. No certificate
of, or order granting, an extension will be issued if the term of the
patent cannot be extended, even though the patent is otherwise
determined to be eligible for extension. In such situations, the final
determination made pursuant to Sec. 1.750 will indicate that no
certificate or order will issue.
82. Section 1.809 is proposed to be amended by revising paragraphs
(b) introductory text, (b)(1) and (c) to read as follows:
Sec. 1.809 Examination procedures.
* * * * *
(b) The applicant for patent or patent owner shall reply to a
rejection under paragraph (a) of this section by--
(1) In the case of an applicant for patent, making an acceptable
original or replacement or supplemental deposit or assuring the Office
in writing that an acceptable deposit will be made, or, in the case of
a patent owner, requesting a certificate of correction of the patent
which meets the terms of paragraphs (b) and (c) of Sec. 1.805, or
* * * * *
(c) If an application for patent is otherwise in condition for
allowance except for a needed deposit and the Office has received a
written assurance that an acceptable deposit will be made, applicant
will be notified and given a period of time within which the deposit
must be made in order to avoid abandonment. This time period is not
extendable under Sec. 1.136(a) or (b) (see Sec. 1.136(c)).
* * * * *
83. Section 1.821 is proposed to be amended by revising paragraphs
(c), (e) and (f) to read as follows:
Sec. 1.821 Nucleotide and/or amino acid sequence disclosures in patent
applications.
* * * * *
(c) Patent applications which contain disclosures of nucleotide
and/or amino acid sequences must contain such nucleotide and/or amino
acid sequences disclosure and associated information as a separate part
of the disclosure using the symbols and format in accordance with the
requirements of Secs. 1.822 and 1.823. This disclosure is hereinafter
referred to as the ``Sequence Listing.'' Each sequence disclosed must
appear separately in the ``Sequence Listing.'' Each sequence set forth
in the ``Sequence Listing'' shall be assigned a separate sequence
identifier. The sequence identifiers shall begin with 1 and increase
sequentially by integers. If no sequence is present for a sequence
identifier, the code ``000'' shall be used in place of the sequence.
The response for the numeric identifier <160> (see Sec. 1.823(b)) shall
include the total number of SEQ ID NOs, whether followed by a sequence
or by the code ``000.'' The ``Sequence Listing'' must be submitted
either on:
(1) Paper in compliance with Sec. 1.823; or
(2) A Compact Disk-Read Only Memory (CD-ROM) or Compact Disk-
Recordable (CD-R) in compliance with Sec. 1.823. Applicant may submit a
second copy of such a CD-ROM or CD-R ``Sequence Listing'' to satisfy
the requirement for a ``Sequence Listing'' in a computer readable
format pursuant to paragraph (e) of this section, provided that the CD-
ROM or CD-R ``Sequence Listing'' meets the requirements of
Sec. 1.824(b) and (c)(4).
* * * * *
(e) In addition to the submission of the ``Sequence Listing''
referred to in paragraph (c) of this section, a copy of this ``Sequence
Listing'' must also be submitted in computer readable form in
accordance with the requirements of Sec. 1.824. The computer readable
form submitted pursuant to this paragraph must be a copy of the
``Sequence Listing'' submitted pursuant to paragraph (c) of this
section and will not necessarily be retained as a part of the patent
application file. If the computer readable form of a new application is
to be identical with the computer readable form of another application
of the applicant on file in the Patent and Trademark Office, reference
may be made to the other application and computer readable form in lieu
of filing a duplicate computer readable form in the new application if
the computer readable form in the other application was compliant with
all of the
[[Page 53843]]
requirements of this subpart. The new application shall be accompanied
by a letter making such reference to the other application and computer
readable form, both of which shall be completely identified. In the new
application, applicant must also request the use of the compliant
computer readable form (CRF) ``Sequence Listing'' that is already on
file for the other application and must state that the paper or CD-ROM
or CD-R copy of the ``Sequence Listing'' in the new application is
identical to the computer readable (CRF) copy filed for the other
application.
(f) In addition to the paper or CD-ROM or CD-R copy required by
paragraph (c) of this section and the computer readable form required
by paragraph (e) of this section, a statement that the content of the
paper, CD-ROM, or CD-R submission under paragraph (c) of this section
and the computer readable (CRF) copy under paragraph (e) of this
section are the same must be submitted with the computer readable form
(e.g., a statement that ``the information recorded in computer readable
form is identical to the paper (or CD-ROM or CD-R) copy of the sequence
listing submitted under Sec. 1.821(c)'' submitted under Sec. 1.821(c)).
* * * * *
84. Section 1.823 is proposed to be amended by revising its heading
and paragraph (a) to read as follows:
Sec. 1.823 Requirements for nucleotide and/or amino acid sequences as
part of the application.
(a)(1) If the ``Sequence Listing'' required by Sec. 1.821(c) is
submitted on paper: The ``Sequence Listing,'' setting forth the
nucleotide and/or amino acid sequence and associated information in
accordance with paragraph (b) of this section, must begin on a new page
and must be titled ``Sequence Listing.'' The ``Sequence Listing''
preferably should be numbered independently of the numbering of the
remainder of the application. Each page of the ``Sequence Listing''
should contain no more than 66 lines and each line should contain no
more than 72 characters. A fixed-width font should be used exclusively
throughout the ``Sequence Listing.''
(2) If the ``Sequence Listing'' required by Sec. 1.821(c) is
submitted on a CD-ROM or CD-R: The ``Sequence Listing'' must be
submitted as a text file in the American Standard Code for Information
Interchange (ASCII) in accordance with the standards for that medium
set forth in 36 CFR 1228.188(c) and (d). No other format shall be
allowed. The CD-ROM or CD-R ``Sequence Listing'' must also be
accompanied by documentation on paper that is adequate to identify,
maintain, and interpret the electronic ``Sequence Listing.'' A notation
that a ``Sequence Listing'' is submitted on a CD-ROM or CD-R must be
placed conspicuously in the specification (see Sec. 1.77(b)(11)). The
CD-ROM or CD-R ``Sequence Listing'' also must be labeled with the
following information:
(i) The name of each inventor (if known);
(ii) The title of the invention;
(iii) The sequence identifiers of the ``Sequence Listings'' on that
CD-ROM or CD-R; and
(iv) The docket number used by the person filing the application to
identify the application (if applicable).
* * * * *
84a. Section 1.824 is proposed to be amended by revising paragraph
(c)(4) to read as follows:
Sec. 1.824 Form and format for nucleotide and/or amino acid sequence
submissions in computer readable form.
* * * * *
(c) * * *
(4) CD-ROM or CD-R: Format ISO 9660 or High Sierra Format.
* * * * *
85. Section 1.825 is proposed to be amended by revising paragraphs
(a) and (b) to read as follows:
Sec. 1.825 Amendments to or replacement of sequence listing and
computer readable copy thereof.
(a) Any amendment to the paper copy of the ``Sequence Listing''
submitted pursuant to Sec. 1.821 must be made by submission of
substitute sheets. Any amendment to the CD-ROM or CD-R copy of the
``Sequence Listing'' submitted pursuant to Sec. 1.821 must be made by
submission of a new CD-ROM or CD-R containing a substitute ``Sequence
Listing.'' Amendments must be accompanied by a statement that indicates
support for the amendment in the application-as-filed, and a statement
that the substitute sheets or new CD-ROM or CD-R includes no new
matter.
(b) Any amendment to the paper, CD-ROM, or CD-R copy of the
``Sequence Listing'' pursuant to paragraph (a) of this section must be
accompanied by a substitute copy of the computer readable form of the
``Sequence Listing'' required pursuant to Sec. 1.821(e), including all
previously submitted data with the amendment incorporated therein, and
accompanied by a statement that the computer readable form copy is the
same as the substitute paper or new CD-ROM or CD-R copy of the
``Sequence Listing.''
* * * * *
PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
86. The authority citation for 37 CFR part 3 continues to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
87. Section 3.27 is proposed to be revised to read as follows:
Sec. 3.27 Mailing address for submitting documents to be recorded.
Documents and cover sheets to be recorded should be addressed to
the Commissioner of Patents and Trademarks, Box Assignment, Washington,
D.C. 20231, unless they are filed together with new applications.
88. Section 3.71 is proposed to be revised to read as follows:
Sec. 3.71 Prosecution by assignee.
(a) Patents--Conducting of prosecution. One or more assignees as
defined in paragraph (b) of this section may, after becoming of record
pursuant to paragraph (c) of this section, conduct prosecution of a
national patent application or a reexamination proceeding to the
exclusion of either the inventive entity, or the assignee(s) previously
entitled to conduct prosecution.
(b) Patents--Assignee(s) who can prosecute. The assignee(s) who may
conduct either the prosecution of a national application for patent or
a reexamination proceeding are:
(1) A single assignee. An assignee of the entire right, title and
interest in the application or patent being reexamined who is of
record, or
(2) Partial assignee(s) together or with inventor(s). All partial
assignees, or all partial assignees and inventors who have not assigned
their right, title and interest in the application or patent being
reexamined, who together own the entire right, title and interest in
the application or patent being reexamined. A partial assignee is any
assignee of record having less than the entire right, title and
interest in the application or patent being reexamined.
(c) Patents--Becoming of record. An assignee becomes of record
either in a national patent application or a reexamination proceeding
by filing a statement in compliance with Sec. 3.73(b).
(d) Trademarks. The assignee of a trademark application or
registration may prosecute a trademark application; submit documents to
maintain a trademark registration; or file papers against a third party
in reliance on the assignee's trademark application or registration, to
the exclusion of the original applicant or previous assignee. The
assignee must establish ownership in compliance with Sec. 3.73(b).
[[Page 53844]]
89. Section 3.73 is proposed to be revised to read as follows:
Sec. 3.73 Establishing right of assignee to take action.
(a) The inventor is presumed to be the owner of a patent
application, and any patent that may issue therefrom, unless there is
an assignment. The original applicant is presumed to be the owner of a
trademark application or registration, unless there is an assignment.
(b)(1) In order to request or take action in a patent or trademark
matter, the assignee must establish its ownership of the patent or
trademark property to the satisfaction of the Commissioner. The
establishment of ownership by the assignee may be combined with the
paper that requests or takes the action. Ownership is established by
submitting to the Office a signed statement identifying the assignee,
accompanied by either:
(i) Documentary evidence of a chain of title from the original
owner to the assignee (e.g., copy of an executed assignment). The
documents submitted to establish ownership may be required to be
recorded pursuant to Sec. 3.11 in the assignment records of the Office
as a condition to permitting the assignee to take action in a matter
pending before the Office; or
(ii) A statement specifying where documentary evidence of a chain
of title is recorded in the assignment records of the Office (e.g.,
reel and frame number).
(2) The submission establishing ownership must show that the party
signing the submission is a party authorized to act on behalf of the
assignee by:
(i) Including a statement that the party signing the submission is
authorized to act on behalf of the assignee; or
(ii) Being signed by a person having apparent authority to sign on
behalf of the assignee, e.g., an officer of the assignee.
(c) For patent matters only:
(1) Establishment of ownership by the assignee must be submitted
prior to, or at the same time as, the paper requesting or taking action
is submitted.
(2) If the submission under this section is by an assignee of less
than the entire right, title and interest, such assignee must indicate
the extent (by percentage) of its ownership interest or the Office may
refuse to accept the submission.
90. Section 3.81 is proposed to be revised to read as follows:
Sec. 3.81 Issue of patent to assignee.
For a patent application, if an assignment of the entire right,
title, and interest is recorded before the issue fee is paid, the
patent may issue in the name of the assignee. If the assignee holds an
undivided part interest, the patent may issue jointly to the inventor
and the assignee. If the patent is to issue solely or jointly to that
assignee, the name of the assignee must be provided at the time the
issue fee is paid.
PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND
FILE APPLICATIONS IN FOREIGN COUNTRIES
91. The authority citation for 37 CFR part 5 would continue to read
as follows:
Authority: 35 U.S.C. 6, 41, 181-188, as amended by the Patent
Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102
Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C. 2751
et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011
et seq.; and the Nuclear Non-Proliferation Act of 1978, 22 U.S.C.
3201 et seq.; and the delegations in the regulations under these
Acts to the Commissioner (15 CFR 370.10(j), 22 CFR 125.04, and 10
CFR 810.7).
92. Section 5.1 is proposed to be revised to read as follows:
Sec. 5.1 Applications and correspondence involving national security.
(a) All correspondence in connection with this part, including
petitions, should be addressed to ``Assistant Commissioner for Patents
(Attention Licensing and Review), Washington, D.C. 20231.''
(b) Application as used in this part includes provisional
applications filed under 35 U.S.C. 111(b) (Sec. 1.9(a)(2) of this
chapter), nonprovisional applications filed under 35 U.S.C. 111(a) or
entering the national stage from an international application after
compliance with 35 U.S.C. 371 (Sec. 1.9(a)(3)), or international
applications filed under the Patent Cooperation Treaty prior to
entering the national stage of processing (Sec. 1.9(b)).
(c) Patent applications and documents relating thereto that are
national security classified (see Sec. 1.9(i) of this chapter) and
contain authorized national security markings (e.g., ``Confidential,''
``Secret'' or ``Top Secret'') are accepted by the Office. National
security classified documents filed in the Office must be either hand-
carried to Licensing and Review or mailed to the Office in compliance
with paragraph (a) of this section.
(d) The applicant in a national security classified patent
application must obtain a secrecy order pursuant to Sec. 5.2(a). If a
national security classified patent application is filed without a
notification pursuant to Sec. 5.2(a), the Office will set a time period
within which either the application must be declassified, or the
application must be placed under a secrecy order pursuant to
Sec. 5.2(a), or the applicant must submit evidence of a good faith
effort to obtain a secrecy order pursuant to Sec. 5.2(a) from the
relevant department or agency in order to prevent abandonment of the
application. If evidence of a good faith effort to obtain a secrecy
order pursuant to Sec. 5.2(a) from the relevant department or agency is
submitted by the applicant within the time period set by the Office,
but the application has not been declassified or placed under a secrecy
order pursuant to Sec. 5.2(a), the Office will again set a time period
within which either the application must be declassified, or the
application must be placed under a secrecy order pursuant to
Sec. 5.2(a), or the applicant must submit evidence of a good faith
effort to again obtain a secrecy order pursuant to Sec. 5.2(a) from the
relevant department or agency in order to prevent abandonment of the
application.
(e) A national security classified patent application will not be
allowed pursuant to Sec. 1.311 of this chapter until the application is
declassified and any secrecy order pursuant to Sec. 5.2(a) has been
rescinded.
(f) Applications on inventions made outside the United States and
on inventions in which a U.S. Government defense agency has a property
interest will not be made available to defense agencies.
93. Section 5.2 is proposed to be amended by adding a new paragraph
(c) to read as follows:
Sec. 5.2 Secrecy order.
* * * * *
(c) An application disclosing any significant part of the subject
matter of an application under a secrecy order pursuant to paragraph
(a) of this section also falls within the scope of such secrecy order.
Any such application that is pending before the Office must be promptly
brought to the attention of Licensing and Review, unless such
application is itself under a secrecy order pursuant to paragraph (a)
of this section. Any subsequently filed application containing any
significant part of the subject matter of an application under a
secrecy order pursuant to paragraph (a) of this section must either be
hand-carried to Licensing and Review or mailed to the Office in
compliance with Sec. 5.1(a).
94. Section 5.12 is amended by revising paragraph (b) to read as
follows:
[[Page 53845]]
Sec. 5.12 Petition for license.
* * * * *
(b) A petition for license must include the fee set forth in
Sec. 1.17(h), the petitioner's address, and full instructions for
delivery of the requested license when it is to be delivered to other
than the petitioner. The petition should be presented in letter form.
PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK
OFFICE
95. The authority citation for 37 CFR part 10 would continue to
read as follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32,
41.
96. Section 10.23 is proposed to be amended by revising paragraph
(c)(11) to read as follows:
Sec. 10.23 Misconduct.
* * * * *
(c) * * *
(11) Except as permitted by Sec. 1.52(c) of this chapter, knowingly
filing or causing to be filed an application containing any material
alteration made in the application papers after the signing of the
accompanying oath or declaration without identifying the alteration at
the time of filing the application papers.
* * * * *
Dated: September 17, 1999.
Q. Todd Dickinson,
Acting Assistant Secretary of Commerce and Acting Commissioner of
Patents and Trademarks.
[FR Doc. 99-24922 Filed 10-1-99; 8:45 am]
BILLING CODE 3510-16-P