[Federal Register Volume 65, Number 54 (Monday, March 20, 2000)]
[Rules and Regulations]
[Pages 14865-14873]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-6514]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. 000301056-0056-01]
RIN 0651-AB13


Changes to Application Examination and Provisional Application 
Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Interim rule.

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SUMMARY:  The United States Patent and Trademark Office (Office) is 
revising the rules of practice in patent cases to implement certain 
provisions of the ``American Inventors Protection Act of 1999.'' These 
provisions of the ``American Inventors Protection Act of 1999'' provide 
for continued examination of an application for a fee, extend the 
pendency of a provisional application if the date that is twelve months 
after the filing date of the provisional application falls on a 
Saturday, Sunday, or a Federal holiday within the District of Columbia, 
eliminate the copendency requirement for a nonprovisional application 
to claim the benefit of a provisional application, provide for the 
conversion of a provisional application to a nonprovisional 
application, and to provide a prior art exclusion for certain commonly 
assigned patents.

DATES: Effective Date: May 29, 2000.

Comments: To be ensured of consideration, written comments must be 
received on or before May 19, 2000. 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) 872-9411, marked to the attention of Robert W. Bahr. Although 
comments may be submitted by mail or facsimile, the Office prefers to 
receive comments via the Internet. If comments are submitted by mail, 
the Office would prefer that the comments be submitted on a DOS 
formatted 3\1/2\ 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: http://www.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: Robert W. Bahr, Karin L. Tyson, or 
Robert A. Clarke by telephone at (703) 308-6906, or by mail addressed 
to: Box Comments--Patents, Assistant Commissioner for Patents, 
Washington, DC 20231, or by facsimile to (703) 872-9411, marked to the 
attention of Robert W. Bahr.

SUPPLEMENTARY INFORMATION: The ``American Inventors Protection Act of 
1999'' (Title IV of the ``Intellectual Property and Communications 
Omnibus Reform Act of 1999'' (S. 1948) as introduced in the 106th 
Congress on November 17, 1999) was incorporated and enacted into law on 
November 29, 1999, by Sec. 1000(a)(9), Division B, of Public Law 106-
113, 113 Stat. 1501 (1999). The ``American Inventors Protection Act of 
1999'' contains a number of changes to title 35, United States Code. 
This interim rule changes the rules of practice to implement the 
provisions of Secs. 4403, 4801, and 4807 of the ``American Inventors 
Protection Act of 1999.''
    Section 4403 of the ``American Inventors Protection Act of 1999'' 
is effective on the date six months after the date of enactment of the 
``American Inventors Protection Act of 1999'' (May 29, 2000), and 
applies to applications (other than for a design patent) filed on or 
after June 8, 1995. Section 4801 of the ``American Inventors Protection 
Act of 1999'' is effective on the date of enactment of the ``American 
Inventors Protection Act of 1999'' (November 29, 1999) and applies to 
all provisional applications (with limited exception) filed on or after 
June 8, 1995. Section 4807 of the ``American Inventors Protection Act 
of 1999'' is effective on the date of enactment of the ``American 
Inventors Protection Act of 1999'' (November 29, 1999) and applies to 
all applications filed on or after November 29, 1999.
    Section 4403 (Continued Examination of Patent Applications): 
Section 4403 of the ``American Inventors Protection Act of 1999'' 
amends 35 U.S.C. 132 to state that the Office ``shall prescribe 
regulations to provide for the continued examination of applications 
for patent at the request of the applicant,'' and that the Office ``may 
establish appropriate fees for such continued examinations and shall 
provide a 50 percent reduction in such fees for small entities that 
qualify for reduced fees under [35 U.S.C. 41(h)(1)].'' Currently, an 
applicant must file a continuing application (a continuing application 
under Sec. 1.53(b) or a continued prosecution application under 
Sec. 1.53(d)) to obtain continued examination of an application for a 
fee (the application filing fee). Section 4403 of the ``American 
Inventors Protection Act of 1999'' will provide statutory authority for 
the continued examination of an application for a fee (to which the 
small entity reduction will be applicable) without requiring the 
applicant to file a continuing application.
    Section 4801 (Provisional Applications): Section 4801(a) of the 
``American Inventors Protection Act of 1999'' amends 35 U.S.C. 
111(b)(5) to provide that ``[n]otwithstanding the absence of a claim, 
upon timely request and as prescribed by the Director, a provisional 
application may be treated as an application filed under [35 U.S.C. 
111(a)]'' but that if ``no such request is made, the provisional 
application shall be regarded as abandoned 12 months after the filing 
date of such application and shall not be subject to revival

[[Page 14866]]

thereafter.'' Section 1.53(c), which currently provides for the 
conversion of a nonprovisional application (35 U.S.C. 111(a) and 
Sec. 1.53(b)) to a provisional application (35 U.S.C. 111(b) and 
Sec. 1.53(c)), is thus being amended to also provide for the conversion 
of a provisional application (35 U.S.C. 111(b) and Sec. 1.53(c)) to a 
nonprovisional application (35 U.S.C. 111(a) and Sec. 1.53(b)).
    Section 4801 of the ``American Inventors Protection Act of 1999'' 
contains no provision for according the resulting nonprovisional 
application a filing date other than the original filing date of the 
provisional application. Thus, under 35 U.S.C. 154(b), the term of a 
nonprovisional application resulting from the conversion of a 
provisional application pursuant to 35 U.S.C. 111(b)(5) will be 
measured from the original filing date of the provisional application 
(which is the filing date accorded the nonprovisional application 
resulting from conversion under Sec. 4801 of the ``American Inventors 
Protection Act of 1999''). Applicants are strongly cautioned to 
consider the patent term implications of converting a provisional 
application into a nonprovisional application pursuant to 35 U.S.C. 
111(b)(5), rather than simply filing a nonprovisional application 
within twelve months of the filing date of the provisional application 
and claiming the benefit of that provisional application under 35 
U.S.C. 119(e).
    Section 4801(b) of the ``American Inventors Protection Act of 
1999'' also amends 35 U.S.C. 119(e) to provide that ``[i]f the day that 
is 12 months after the filing date of a provisional application falls 
on a Saturday, Sunday, or Federal holiday within the District of 
Columbia, the period of pendency of the provisional application shall 
be extended to the next succeeding secular or business day.''
    Section 4801(c) of the ``American Inventors Protection Act of 
1999'' also amends 35 U.S.C. 119(e) to eliminate the requirement that a 
provisional application be pending on the filing date of the 
nonprovisional application for the nonprovisional application to claim 
the benefit of the provisional application.
    Section 4807 (Prior Art Exclusion): 35 U.S.C. 103 was amended in 
1984 to exclude subject matter developed by another person which 
qualifies as prior art only under 35 U.S.C. 102(f) or (g) as prior art 
under 35 U.S.C. 103 against a claimed invention, provided that the 
subject matter and the claimed invention were commonly owned by the 
same person or organization or subject to an obligation of assignment 
to the same person or organization at the time the claimed invention 
was made. See Public Law 98-622, Sec. 103, 98 Stat. 3384 (1984). 
Section 4807 of the ``American Inventors Protection Act of 1999'' 
amends 35 U.S.C. 103(c) to exclude subject matter developed by another 
person which qualifies as prior art only under one or more of 35 U.S.C. 
102(e), (f), or (g) as prior art under 35 U.S.C. 103 against a claimed 
invention, again provided that the subject matter and the claimed 
invention were commonly owned by the same person or organization or 
subject to an obligation of assignment to the same person or 
organization at the time the claimed invention was made. The Office is 
in the process of developing guidelines concerning the implementation 
of this change to 35 U.S.C. 103(c).

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is amended as 
follows:
    Section 1.7 is amended by designating the current text as paragraph 
(a) and adding a new paragraph (b) to provide that if the day that is 
twelve months after the filing date of a provisional application under 
35 U.S.C. 111(b) and Sec. 1.53(c) falls on Saturday, Sunday, or a 
Federal holiday within the District of Columbia, the period of pendency 
shall be extended to the next succeeding secular or business day which 
is not a Saturday, Sunday, or a Federal holiday.
    Section 1.17(e) sets forth the fee to request continued examination 
pursuant to new Sec. 1.114, which is set at an amount equal to the 
basic filing fee for a utility application. Therefore, the fee for 
considering a submission pursuant to Sec. 1.114 is $690.00 ($345.00 for 
a small entity).
    Section 1.17(i) is amended to include a reference to the fee to 
convert a provisional application filed under Sec. 1.53(c) to a 
nonprovisional application under Sec. 1.53(b), and to eliminate the 
reference to Sec. 1.312.
    Section 1.53 is amended by redesignating paragraph (c)(3) as 
paragraph (c)(4) and adding a new paragraph (c)(3) to provide for the 
conversion of a provisional application to a nonprovisional 
application. Section 1.53(c)(3) provides that a request to convert a 
provisional application filed under Sec. 1.53(c) to a nonprovisional 
application under Sec. 1.53(b) must be accompanied by the fee set forth 
in Sec. 1.17(i) and an amendment including at least one claim as 
prescribed by the second paragraph of 35 U.S.C. 112, unless the 
provisional application otherwise contains at least one claim. Section 
1.53(c)(3) also provides that such a request must be filed prior to the 
earliest of: (1) abandonment of the provisional application; or (2) 
expiration of twelve months after the filing date of the provisional 
application. Section 1.53(c)(3) also provides that the conversion of a 
provisional application to a nonprovisional application will not result 
in either the refund of any fee properly paid in the provisional 
application or the application of any such fee to the filing fee, or 
any other fee, for the nonprovisional application.
    The conversion of a provisional application to a nonprovisional 
application will not result in any savings in filing fees over the 
filing of a nonprovisional application claiming the benefit under 35 
U.S.C. 119(e) and Sec. 1.78 of the earlier provisional application. 
Thus, an applicant may simply file a nonprovisional application 
claiming the benefit under 35 U.S.C. 119(e) and Sec. 1.78 of the 
earlier provisional application and avoid the fee set forth in 
Sec. 1.17(i) required to convert a provisional application to a 
nonprovisional application (as well as the adverse patent term effects 
discussed above).
    Section 1.53(d)(1)(i) is amended to provide that continued 
prosecution application (CPA) practice under Sec. 1.53(d) does not 
apply to applications (other than design) if the prior application has 
a filing date on or after May 29, 2000. Thus, an application (except 
for a design application) must have an actual filing date before May 
29, 2000, for the applicant to be able to file a CPA of that 
application. While the Office uses the filing date (and application 
number) of the prior application of a CPA for identification purposes, 
the filing date of a CPA under Sec. 1.53(d) is the date the request for 
a CPA is filed. See Sec. 1.53(d)(2). Thus, if a CPA of an application 
(other than for a design patent) is filed on or after May 29, 2000, 
Sec. 1.53(d)(1)(i) does not permit the filing of a further CPA, 
regardless of the filing date of the prior application as to the first 
CPA (i.e., the filing date used for identification purposes for the 
CPA).
    In the event that an applicant files a request for a CPA of a 
utility or plant application that was filed on or after May 29, 2000 
(to which CPA practice no longer applies), the Office will 
automatically treat the improper CPA as a request for continued 
examination of the prior application (identified in the request for 
CPA) under new Sec. 1.114. If an applicant files a request for a CPA of 
an application to which CPA practice no longer applies and does not 
want the request for a CPA to be treated as a request for continued 
examination

[[Page 14867]]

under Sec. 1.114 (e.g., the CPA is a divisional CPA), the applicant may 
file a petition under Sec. 1.53(e) requesting that the improper CPA be 
converted to an application under Sec. 1.53(b). The requirements for 
such a petition under Sec. 1.53(e) are identical to those set forth in 
section 201.06(b) of the Manual of Patent Examining Procedure (7th 
ed.1998) (MPEP) for converting an improper file wrapper continuing 
(FWC) application under former Sec. 1.62 to an application under 
Sec. 1.53(b). The Office will not grant such a petition unless it is 
before the appropriate deciding official before an Office action has 
been mailed in response to the request for continued examination under 
Sec. 1.114 (as the improper CPA is being treated). If an Office action 
has been mailed in response to the request for continued examination 
under Sec. 1.114, the applicant should simply file an application under 
Sec. 1.53(b) within the period for reply to such Office action.
    Section 1.53(d)(1)(ii)(A) is amended to refer to ``Sec. 1.313(c)'' 
rather than ``Sec. 1.313(b)(5)'' for consistency with the change to 
Sec. 1.313.
    Section 1.78 is amended to eliminate the requirement that a 
nonprovisional application be ``copending'' with a provisional 
application for the nonprovisional application to claim the benefit 
under 35 U.S.C. 119(e) of a provisional application. Section 1.78 is 
also amended to require that, for a nonprovisional application to claim 
the benefit of a provisional application, the provisional application 
must be entitled to a filing date as set forth in Sec. 1.53(c), and 
have paid therein the basic filing fee set forth in Sec. 1.16(k) within 
the time period set forth in Sec. 1.53(g), and have any required 
English-language translation filed therein within the time period set 
forth in Sec. 1.52(d).
    Section 1.97(b) is amended to indicate that an information 
disclosure statement will also be considered if it is filed before the 
mailing of a first Office action after the filing of a request for 
continued examination under Sec. 1.114.
    Section 1.104(c)(4) is revised to replace ``35 U.S.C. 102(f) or 
(g)'' with ``35 U.S.C. 102(e), (f) or (g)'' for consistency with 35 
U.S.C. 103(c) as amended by Sec. 4807 of the ``American Inventors 
Protection Act of 1999.''
    Section 1.113 is amended to take into account that an applicant's 
after final reply options include filing a request for continued 
examination under Sec. 1.114. Section 1.113 is also amended to locate 
the last two sentences of paragraph (a) in a new paragraph (c).
    Section 1.114 is added to implement Sec. 4403 of the ``American 
Inventors Protection Act of 1999.'' The Office is providing a procedure 
under which an applicant may obtain continued examination of an 
application by filing a submission and paying a specified fee, even if 
the application is under a final rejection, appeal, or a notice of 
allowance. If a subsequent rejection or action is made final (or if the 
application is subsequently allowed), the applicant may again obtain 
continued examination of an application (consideration of a submission) 
upon the filing of a submission and an additional payment of the 
specified fee prior to abandonment of the application. This procedure 
will not be available for: (1) a provisional application (which is not 
examined under 35 U.S.C. chapter 12); (2) an application for a utility 
or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995; (3) 
an international application filed under 35 U.S.C. 363 before June 8, 
1995; (4) an application for a design patent; or (5) a patent under 
reexamination.
    Under this procedure, the filing of a request for continued 
examination after the filing of a Notice of Appeal to the Board of 
Patent Appeals and Interferences, but prior to a decision on the 
appeal, will be considered a request to withdraw the appeal and to 
reopen prosecution of the application before the examiner. The filing 
of a request for continued examination (accompanied by the fee and a 
submission) after a decision by the Board of Patent Appeals and 
Interferences, but before the filing of a Notice of Appeal to the Court 
of Appeals for the Federal Circuit (Federal Circuit) or the 
commencement of a civil action, will also result in the finality of the 
rejection or action being withdrawn and the submission being 
considered.
    In addition to the res judicata effect of a Board of Patent Appeals 
and Interferences decision in an application (see MPEP 706.03(w)), a 
Board of Patent Appeals and Interferences decision in an application is 
the ``law of the case,'' and is thus controlling in that application 
and any subsequent related application. See MPEP 1214.01 (where a new 
ground of rejection is entered by the Board of Patent Appeals and 
Interferences pursuant to Sec. 1.196(b), argument without either 
amendment of the claims so rejected or the submission of a showing of 
facts can only result in a final rejection of the claims, since the 
examiner is without authority to allow the claims unless amended or 
unless the rejection is overcome by a showing of facts not before the 
Board of Patent Appeals and Interferences). As such, a submission 
containing arguments without either amendment of the rejected claims or 
the submission of a showing of facts will not be effective to remove 
such rejection.
    The procedure set forth in Sec. 1.114 will not be available in an 
application after the filing of a Notice of Appeal to the Federal 
Circuit or the commencement of a civil action, unless the appeal or 
civil action is terminated and the application is still pending. Unless 
an application contains allowed claims (or the court's mandate clearly 
indicates that further action is to be taken in the Office), the 
termination of an unsuccessful court appeal or civil action results in 
the abandonment of the application. See MPEP 1216.01.
    If the application is under final rejection, the fee acts only to 
withdraw the finality of an Office action. If reply to a final or non-
final Office action is outstanding, a submission meeting the reply 
requirements of Sec. 1.111 must be timely received to continue 
prosecution of an application. Put simply, the mere payment of the fee 
for continued examination will not operate to toll the running of any 
time period set in the previous Office action for reply to avoid 
abandonment of the application. Likewise, payment of the fee (and a 
submission) in an allowed application without a petition under 
Sec. 1.313 to withdraw the application from issue will not operate to 
toll the period for payment of the issue fee (if running) or avoid 
issuance of the application as a patent (if the issue fee has been 
paid).
    To avoid confusion as to whether an applicant desires to amend the 
application prior to receiving continued examination of the 
application, an appeal brief under Sec. 1.192 or a reply brief under 
Sec. 1.193(b), or related submissions, are expressly excluded as a 
submission for the purposes of Sec. 1.114. The submission, however, may 
consist of the arguments in a previously filed appeal brief or reply 
brief submitted as a reply to the final rejection, or may simply 
consist of a submission that incorporates by reference the arguments in 
a previously filed appeal brief or reply brief.
    35 U.S.C. 132 provides that ``[n]o amendment shall introduce new 
matter into the disclosure of the invention.'' Any amendment entered 
pursuant to Sec. 1.114 that is determined to contain new matter will be 
treated in the same manner that a reply under Sec. 1.111 determined to 
contain new matter is currently treated. In those instances in which an 
applicant seeks to add new matter to the disclosure of an application, 
the procedure in Sec. 1.114 is not available, and the applicant must 
file a continuation-in-part application under Sec. 1.53(b) containing 
such new matter. In addition, as 35 U.S.C. 132(b)

[[Page 14868]]

and Sec. 1.114 provide continued examination of an application (and not 
examination of a continuing application), the Office will not permit an 
applicant to obtain continued examination on the basis of claims that 
are independent and distinct from the claims previously claimed and 
examined (see Sec. 1.145).
    The request for continued examination procedure in Sec. 1.114 
should not be confused with the transitional procedure for the further 
limited examination of patent applications set forth in Sec. 1.129(a) 
(see Changes to Implement 20-Year Patent Term and Provisional 
Applications, Final Rule Notice, 60 FR 20195 (April 25, 1995), 1174 
Off. Gaz. Pat. Office 15 (May 2, 1995)) or the continued prosecution 
application (CPA) procedure set forth in Sec. 1.53(d) (see Changes to 
Patent Practice and Procedure; Final Rule Notice, 62 FR 53131 (October 
10, 1997), 1203 Off. Gaz. Pat. Office 63 (October 21, 1997)).
    Comparison of the request for continued examination procedure in 
Sec. 1.114 with the transitional procedure for the further limited 
examination of patent application set forth in Sec. 1.129(a): The 
procedure set forth in this notice does not apply to any application 
that was filed prior to June 8, 1995. The transitional procedure set 
forth in Sec. 1.129(a) applies only to applications, other than for 
reissue or design patent, that have been pending for at least two years 
as of June 8, 1995, taking into account any references in such 
applications to any earlier filed application under 35 U.S.C. 120, 121, 
or 365(c), and is not applicable to any application filed after June 8, 
1995. Therefore, an application eligible for the transitional procedure 
set forth in Sec. 1.129(a) (unless filed on June 8, 1995), or any 
application filed before June 8, 1995, is not eligible for the 
procedure for continued examination set forth in this notice.
    In addition, an applicant in an application eligible for the 
procedure for continued examination set forth in this notice is not 
limited in the number of times the fee for continued examination may be 
submitted. An applicant in an application eligible for the transitional 
procedure set forth in Sec. 1.129(a), however, is limited to two 
opportunities to pay the fee for further examination of the 
application.
    Moreover, under the transitional procedure set forth in 
Sec. 1.129(a), a submission after final rejection or action will be 
considered if the submission and the requisite fee are filed prior to 
abandonment of the application and prior to the filing of an appeal 
brief. Under the request for continued examination procedure set forth 
in this notice, a submission will be considered if the submission and 
the requisite fee is filed prior to abandonment of the application. 
That is, under the request for continued examination procedure, a 
submission (and requisite fee) need not be filed prior to the filing of 
an appeal brief. In addition, under the request for continued 
examination procedure, a submission will be considered in an allowed 
application if the submission and the requisite fee are filed prior to 
payment of the issue fee (or later if a petition under Sec. 1.313(c) to 
withdraw the application from issue is granted).
    Comparison of the request for continued examination procedure in 
Sec. 1.114 with the CPA procedure set forth in Sec. 1.53(d): Section 
1.53(d) is amended to make CPA practice inapplicable to applications 
(other than for a design patent) filed under 35 U.S.C. 111(a) on or 
after May 29, 2000, or resulting from international applications filed 
under 35 U.S.C. 363 on or after May 29, 2000. CPA practice was adopted 
to permit applicants to obtain continued examination of an application 
(for a fee) via the filing of a continuing application. 35 U.S.C. 
132(b), however, provides statutory authority for the Office to 
prescribe regulations to permit applicants to obtain continued 
examination of an application (for a fee) without the need for a 
continuing application. The Office is not completely abolishing CPA 
practice in favor of the request for continued examination practice in 
Sec. 1.114 because the request for continued examination practice in 
Sec. 1.114 is not applicable to applications filed before June 8, 1995 
(or design applications), and the patent term adjustment provisions of 
Public Law 106-113 do not apply to applications filed before May 29, 
2000. The Office, however, is restricting CPA practice to utility and 
plant applications filed before May 29, 2000, and design applications 
because maintaining two practices (as to applications eligible for the 
continued examination procedure of Sec. 1.114) designed for the same 
purpose (obtaining continued examination of an application) is 
unnecessary and will result in confusion.
    Since the request for continued examination practice in Sec. 1.114 
is applicable to utility and plant applications filed on or after June 
8, 1995, and continued prosecution application (CPA) practice in 
Sec. 1.53(d) is applicable to utility and plant applications filed 
before May 29, 2000 (and design applications), an applicant in a 
utility or plant application filed on or after June 8, 1995, but before 
May 29, 2000, may obtain further examination either by filing a request 
for continued examination under Sec. 1.114 or by filing a CPA under 
Sec. 1.53(d). Since the patent term adjustment provisions of Public Law 
106-113 do not apply to applications filed before May 29, 2000, and a 
request for continued examination practice under Sec. 1.114 (unlike a 
CPA under Sec. 1.53(d)) is not the filing of a new application, whether 
further examination of such an application is sought by a request for 
continued examination under Sec. 1.114 or a CPA under Sec. 1.53(d) has 
an impact on whether any resulting patent is entitled to the patent 
term adjustment provisions of Public Law 106-113. Specifically, if an 
applicant in a utility or plant application filed before May 29, 2000 
files a CPA under Sec. 1.53(d) after May 29, 2000, the application 
being prosecuted (now a CPA) is an application filed on or after May 
29, 2000 and is entitled to the patent term adjustment provisions of 
Public Law 106-113. If, however, an applicant in a utility or plant 
application filed before May 29, 2000 (but on or after June 8, 1995) 
files a request for continued examination under Sec. 1.114, the 
application being prosecuted is not an application filed on or after 
May 29, 2000, and is not entitled to the patent term adjustment 
provisions of Public Law 106-113.
    In addition, there are a number of additional differences between 
request for continued examination procedure set forth in this notice 
with the CPA procedure set forth in Sec. 1.53(d) resulting from the 
fact that a CPA is the filing of a new application whereas continued 
examination under Sec. 1.114 merely continues the examination of the 
same application: (1) the fee for continued examination under 
Sec. 1.114 (Sec. 1.17(e)) does not include additional claims fees (cf. 
1.53(d)(3)(ii)); (2) the fee for continued examination under Sec. 1.114 
may not be deferred (cf. Sec. 1.53(f)); (3) a request for continued 
examination under Sec. 1.114 is entitled to the benefit of a 
certificate of mailing under Sec. 1.8 (cf. 1.8(a)(2)(i)(A)); (4) an 
applicant may not obtain examination of a different or non-elected 
invention (e.g., a divisional) in a request for continued examination 
under Sec. 1.114; and (5) any change of inventors must be via the 
procedure set forth in Sec. 1.48 (cf. 1.53(d)(4)).
    Discussion of the specific provisions of new Sec. 1.114: Section 
1.114 is added to provide for continued examination of an application 
under 35 U.S.C. 132(b).
    Section 1.114(a) provides that an applicant may obtain continued 
examination of an application by filing a submission and the fee set 
forth in Sec. 1.17(e) prior to the earliest of: (1)

[[Page 14869]]

payment of the issue fee, unless a petition under Sec. 1.313 is 
granted; (2) abandonment of the application; or (3) the filing of a 
notice of appeal to the U.S. Court of Appeals for the Federal Circuit 
under 35 U.S.C. 141, or the commencement of a civil action under 35 
U.S.C. 145 or 146, unless the appeal or civil action is terminated. The 
action immediately subsequent to the filing of a submission and fee 
under Sec. 1.114 may be made final only if the conditions set forth in 
MPEP 706.07(b) for making a first action final in a continuing 
application are met.
    Section 1.114(b) provides that a submission as used in Sec. 1.114 
includes, but is not limited to, an information disclosure statement, 
an amendment to the written description, claims, or drawings, new 
arguments, or new evidence in support of patentability. This definition 
in Sec. 1.114 for ``submission'' is taken from Sec. 1.129(a). Section 
1.114(b) also provides that if reply to a final or non-final Office 
action under 35 U.S.C. 132 is outstanding, the submission must meet the 
reply requirements of Sec. 1.111. This will permit applicants to file a 
submission under Sec. 1.114 containing only an information disclosure 
statement (Secs. 1.97 and 1.98) in an application subject to a notice 
of allowance under 35 U.S.C. 151.
    Section 1.114(c) provides that if an applicant timely files the fee 
set forth in Sec. 1.17(e) and a submission, the Office will withdraw 
the finality of any Office action to which a reply is outstanding and 
the submission will be entered and considered. The phrase ``withdraw 
the finality of any Office action'' includes the withdrawal of the 
finality of a final rejection, as well as the closing of prosecution by 
an Office action under Ex parte Quayle, 1935 Comm'r Dec. 11 (1935), or 
notice of allowance under 35 U.S.C. 151 (or notice of allowability). 
Section 1.114(c) also provides that if an applicant files a request for 
continued examination under Sec. 1.114 after appeal, but prior to a 
decision on the appeal, it will be treated as a request to withdraw the 
appeal and to reopen prosecution of the application before the 
examiner. Thus, the filing of a request for continued examination under 
Sec. 1.114 in an application containing an appeal awaiting decision 
after appeal will be treated as a withdrawal of the appeal by the 
applicant, regardless of whether the request for continued examination 
under Sec. 1.114 includes the appropriate fee (Sec. 1.17(e)) or a 
submission (Sec. 1.114(b)). Applicants should advise the Board of 
Patent Appeals and Interferences when a request for continued 
examination under Sec. 1.114 is filed in an application containing an 
appeal awaiting decision. Otherwise, the Board of Patent Appeals and 
Interferences may refuse to vacate a decision rendered after the filing 
(but before recognition by the Office) of a request for continued 
examination under Sec. 1.114. Section 1.114(c) also provides that an 
appeal brief or a reply brief (or related papers) will not be 
considered submission under Sec. 1.114 (discussed above).
    Section 1.114(d) provides that an applicant cannot request 
continued examination of an application until after the Office acts on 
the application by mailing at least one of an Office action under 35 
U.S.C. 132 or a notice of allowance under 35 U.S.C. 151. Section 
1.114(d) also provides that the request for continued examination 
provisions of Sec. 1.114 do not apply to: (1) a provisional 
application; (2) an application for a utility or plant patent filed 
under 35 U.S.C. 111(a) before June 8, 1995; (3) an international 
application filed under 35 U.S.C. 363 before June 8, 1995; (4) an 
application for a design patent; or (5) a patent under reexamination.
    Section 1.116 is amended to add a paragraph (a) that takes into 
account that an applicant's after final amendment options include 
filing a request for continued examination under Sec. 1.114, and to 
redesignate existing paragraphs (a), (b), and (c) as paragraphs (b), 
(c), and (d), respectively.
    Section 1.198 is amended to take into account that an application 
in which an appeal has been decided by the Board of Patent Appeals and 
Interferences may also be reopened under the request for continued 
examination provisions of Sec. 1.114.
    Section 1.312 is amended based upon previously proposed changes to 
that section. See Changes to Implement the Patent Business Goals, 
Notice of Proposed Rulemaking, 64 FR 53772, 53810, 53838 (October 4, 
1999), 1228 Off. Gaz. Pat. Office 15, 49, 76 (November 2, 1999). These 
changes are being adopted in this interim rule because of the overlap 
between the continued examination provisions of new Sec. 1.114 and the 
withdrawal from issue provisions of Sec. 1.313 (which in turn overlaps 
with the provisions of Sec. 1.312).
    The Office proposed changing Sec. 1.312 to provide that any 
amendment 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 Office is 
adopting this change to Sec. 1.312 by clarifying that an amendment 
under Sec. 1.312 (after allowance) must be filed prior to or with 
payment of the issue fee, and eliminating Sec. 1.312(b) (since the 
provisions of proposed Sec. 1.312(b) are duplicative of the provisions 
of proposed and adopted Sec. 1.313(c)(1)).
    Section 1.313 is amended to provide that an application may also be 
withdrawn from issue after payment of the issue fee on petition by the 
applicant for consideration of a submission pursuant to Sec. 1.114. 
Section 1.313, as amended, also adopts previously proposed changes to 
that section. See Changes to Implement the Patent Business Goals, 64 FR 
at 53810-11, 53838-39, 1228 Off. Gaz. Pat. Office at 49-50, 76-77.
    Of the comments submitted in response to that notice of proposed 
rulemaking, three comments addressed the proposed changes to 
Secs. 1.312 and 1.313.
    Comment (1): One comment addressing the proposed change to 
Sec. 1.313 favored the proposed change to Sec. 1.313, but suggested 
that Sec. 1.313(c) and Sec. 1.53(d) be amended to clarify that an 
application may be withdrawn from issue after payment of the issue fee 
for express abandonment in favor of a continued prosecution application 
(CPA) under Sec. 1.53(d). The comment also suggested that the Office 
provide a notice of rule change to accompany the notice of allowance 
for some time after adoption of the change to provide further notice to 
the public of the rule change.
    Response: Section 1.53(d)(1)(ii)(A) as amended provides that a CPA 
under Sec. 1.53(d) must be filed prior to payment of the issue fee on 
the prior application unless a petition under Sec. 1.313(c) is granted 
in the prior application. Since a CPA under Sec. 1.53(d) is a 
continuing application, there is no need to amend Sec. 1.313(c) to 
specifically refer to a CPA. Specifically referring to a CPA under 
Sec. 1.53(d) in Sec. 1.313(c) may result in confusion because: (1) An 
application may be withdrawn from issue after payment of the issue fee 
for express abandonment (without the filing of any type of continuing 
application); (2) an application may also be withdrawn from issue after 
payment of the issue fee for express abandonment in favor of a 
continuing application under Sec. 1.53(b); and (3) an application may 
be withdrawn from issue after payment of the issue fee for continued 
examination under Sec. 1.114 (if eligible for that practice). The 
suggestion concerning the notice of rule change will be taken into 
account in preparing training materials

[[Page 14870]]

related to the implementation of the rule changes related to the Patent 
Business Goals and the ``American Inventors Protection Act of 1999.''
    Comment (2): Two comments addressing the proposed change to 
Sec. 1.313 suggested that the conditions under which an applicant could 
withdraw an application from issue after payment of the issue fee was 
too limited, and that Sec. 1.313 should not preclude a request to 
withdraw an application from issue when reasonably efficient processing 
could prevent the patent from issuing without having some important 
matter considered.
    Response: The Office must limit withdrawal from issue after payment 
of the issue fee (at applicant's initiative) to those conditions 
specified in Sec. 1.313(c) due to changes to the patent printing 
process, which will dramatically reduce the period between the date of 
issue fee payment and the date a patent is issued. An applicant who 
must have an important matter considered by the Office before a patent 
is issued must file a petition under Sec. 1.313(c) to withdraw the 
application from issue to have such matter considered during continued 
examination under Sec. 1.114 (if eligible) or in a continuing 
application, unless the applicant can meet the conditions specified in 
Sec. 1.313(c)(1).
    The Office cannot ensure that any petition under Sec. 1.313(c) will 
be acted upon prior to the date of patent grant. See Filing of 
Continuing Applications, Amendments, or Petitions after Payment of 
Issue Fee, Notice, 1221 Off. Gaz. Pat. Office 14 (April 6, 1999). Since 
a request for continued examination under Sec. 1.114 (unlike a CPA 
under Sec. 1.53(d)) is not any type of new application filing, the 
Office cannot grant a petition to convert an untimely request for 
continued examination under Sec. 1.114 to a continuing application 
under Sec. 1.53(b). Therefore, applicants are strongly cautioned to 
file any desired request for continued examination under Sec. 1.114 
prior to payment of the issue fee. In addition, applicants considering 
filing a request for continued examination under Sec. 1.114 after 
payment of the issue fee are strongly cautioned to call the Office of 
Petitions to determine whether sufficient time remains before the 
patent issue date to consider (and grant) a petition under 
Sec. 1.313(c) and what steps are needed to ensure that a grantable 
petition under Sec. 1.313(c) is before an appropriate official in the 
Office of Petitions in sufficient time to grant the petition before the 
patent is issued. Finally, applicants filing a request for continued 
examination under Sec. 1.114 after allowance but prior to payment of 
the issue fee are cautioned against subsequently paying the issue fee 
because doing so may result in the prompt issuance of a patent.

Classification

Administrative Procedure Act

    The changes in this interim rule concern only the manner by which 
an applicant obtains continued examination of a nonprovisional 
application, requests conversion of a provisional application into a 
nonprovisional application, or claims the benefit of a provisional 
application, as provided for in Secs. 4403 and 4801 of the ``American 
Inventors Protection Act of 1999'' (Title IV of S. 1948, incorporated 
into Pub. L. 106-113). Therefore, prior notice and an opportunity for 
public comment are not required pursuant to 5 U.S.C. 553(b)(A), or any 
other law.

Regulatory Flexibility Act

    As prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553 (or any other law), the analytical 
requirements of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) 
are inapplicable.

Executive Order 13132

    This interim rule does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (August 4, 1999).

Executive Order 12866

    This interim rule has been determined to be not significant for 
purposes of Executive Order 12866 (September 30, 1993).

Paperwork Reduction Act

    This interim rule 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 interim rule 
have been reviewed and previously approved by OMB under the following 
control numbers: 0651-0031, 0651-0032, and 0651-0033. The United States 
Patent and Trademark Office is not resubmitting information collection 
packages to OMB for its review and approval because the changes in this 
interim rule 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. The principal 
impact of the changes in this interim rule is to implement the changes 
to Office practice necessitated by sections 4403, 4801, and 4807 of the 
``American Inventors Protection Act of 1999.''
    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 October of 2002.
    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 United States Patent and Trademark 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 October of 2002.
    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 United States Patent and Trademark Office to determine 
whether an application meets the criteria set forth in the patent 
statute and regulations.

[[Page 14871]]

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 United States Patent and Trademark 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.
    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    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, United 
States Patent and Trademark Office, Washington, D.C. 20231, or to the 
Office of Information and Regulatory Affairs, OMB, 725 17th Street, 
N.W., Washington, D.C. 20503, (Attn: PTO Desk Officer).
    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.

List of Subjects in 37 CFR Part 1

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

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

PART 1--RULES OF PRACTICE IN PATENT CASES

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

    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

    2. Section 1.7 is revised to read as follows:


Sec. 1.7  Times for taking action; Expiration on Saturday, Sunday or 
Federal holiday.

    (a) Whenever periods of time are specified in this part in days, 
calendar days are intended. When the day, or the last day fixed by 
statute or by or under this part for taking any action or paying any 
fee in the United States Patent and Trademark Office falls on Saturday, 
Sunday, or on a Federal holiday within the District of Columbia, the 
action may be taken, or the fee paid, on the next succeeding business 
day which is not a Saturday, Sunday, or a Federal holiday. See 
Sec. 1.304 for time for appeal or for commencing civil action.
    (b) If the day that is twelve months after the filing date of a 
provisional application under 35 U.S.C. 111(b) and Sec. 1.53(c) falls 
on Saturday, Sunday, or on a Federal holiday within the District of 
Columbia, the period of pendency shall be extended to the next 
succeeding secular or business day which is not a Saturday, Sunday, or 
a Federal holiday.

    3. Section 1.17 is amended by adding paragraph (e) and revising 
paragraph (i) to read as follows:


Sec. 1.17  Patent application processing fees.

* * * * *
    (e) To request continued examination pursuant to Sec. 1.114:
    By a small entity      345.00
    By other than a small entity      690.00
* * * * *
    (i) For filing a petition to the Commissioner under one of the 
following sections which refers to this paragraph      130.00
    Sec. 1.12--for access to an assignment record.
    Sec. 1.14--for access to an application.
    Sec. 1.41--to supply 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. 1.47--for filing by other than all the inventors or a person 
not the inventor.
    Sec. 1.48--for correction of inventorship, except in provisional 
applications.
    Sec. 1.53--to accord a filing date, except in provisional 
applications.
    Sec. 1.53(c)--to convert a provisional application filed under 
Sec. 1.53(c) to a nonprovisional application under Sec. 1.53(b).
    Sec. 1.55--for entry of late priority papers.
    Sec. 1.59--for expungement and return of information.
    Sec. 1.84--for accepting color drawings or photographs.
    Sec. 1.91--for entry of a model or exhibit.
    Sec. 1.97(d)--to consider an information disclosure statement.
    Sec. 1.102--to make an application special.
    Sec. 1.103--to suspend action in application.
    Sec. 1.177--for divisional reissues to issue separately.
    Sec. 1.313--to withdraw an application from issue.
    Sec. 1.314--to defer issuance of a patent.
    Sec. 1.666(b)--for access to an interference settlement agreement.
    Sec. 3.81--for a patent to issue to assignee, assignment submitted 
after payment of the issue fee.
* * * * *

    4. Section 1.53 is amended by redesignating paragraph (c)(3) as 
paragraph (c)(4), adding a new paragraph (c)(3), and revising paragraph 
(d)(1) to read as follows:


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

* * * * *
    (c) * * *
    (3) A provisional application filed under paragraph (c) of this 
section may be converted to a nonprovisional application filed under 
paragraph (b) of this section and accorded the original filing date of 
the provisional application. The conversion of a provisional 
application to a nonprovisional application will not result in either 
the refund of any fee properly paid in the provisional application or 
the application of any such fee to the filing fee, or any other fee, 
for the nonprovisional application. A request to convert a provisional 
application to a nonprovisional application must be accompanied by the 
fee set forth in Sec. 1.17(i) and an

[[Page 14872]]

amendment including at least one claim as prescribed by the second 
paragraph of 35 U.S.C. 112, unless the provisional application under 
paragraph (c) of this section otherwise contains at least one claim as 
prescribed by the second paragraph of 35 U.S.C. 112. A request to 
convert a provisional application to a nonprovisional application must 
also be filed prior to the earliest of:
    (i) Abandonment of the provisional application filed under 
paragraph (c) of this section; or
    (ii) Expiration of twelve months after the filing date of the 
provisional application filed under paragraph (c) of this section.
* * * * *
    (d) * * *
    (1) A continuation or divisional application (but not a 
continuation-in-part) of a prior nonprovisional application may be 
filed as a continued prosecution application under this paragraph, 
provided that:
    (i) The prior nonprovisional application is:
    (A) A utility or plant application that was filed under 35 U.S.C. 
111(a) before May 29, 2000, and is complete as defined by Sec. 1.51(b);
    (B) A design application that is complete as defined by 
Sec. 1.51(b); or
    (C) The national stage of an international application that was 
filed under 35 U.S.C. 363 before May 29, 2000, and is in compliance 
with 35 U.S.C. 371; and
    (ii) The application under this paragraph is filed before the 
earliest of:
    (A) Payment of the issue fee on the prior application, unless a 
petition under Sec. 1.313(c) is granted in the prior application;
    (B) Abandonment of the prior application; or
    (C) Termination of proceedings on the prior application.
* * * * *
    Section 1.78 is amended by revising paragraph (a)(3) to read as 
follows:


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

    (a) * * *
    (3) A nonprovisional application other than for a design patent may 
claim an invention disclosed in one or more prior filed provisional 
applications. In order for a nonprovisional application to claim the 
benefit of one or more prior filed provisional applications, each prior 
provisional application must name as an inventor at least one inventor 
named in the later filed nonprovisional application and disclose the 
named inventor's invention claimed in at least one claim of the later 
filed nonprovisional application in the manner provided by the first 
paragraph of 35 U.S.C. 112. In addition, each prior provisional 
application must be entitled to a filing date as set forth in 
Sec. 1.53(c), have any required English-language translation filed 
therein within the time period set forth in Sec. 1.52(d), and have paid 
therein the basic filing fee set forth in Sec. 1.16(k) within the time 
period set forth in Sec. 1.53(g).
* * * * *

    5. Section 1.97 is amended by revising paragraph (b) to read as 
follows:


Sec. 1.97  Filing of information disclosure statement.

* * * * *
    (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;
    (2) Within three months of the date of entry of the national stage 
as set forth in Sec. 1.491 in an international application;
    (3) Before the mailing of a first Office action on the merits; or
    (4) Before the mailing of a first Office action after the filing of 
a request for continued examination under Sec. 1.114.
* * * * *

    6. Section 1.104 is amended by revising paragraph (c)(4) to read as 
follows:


Sec. 1.104  Nature of examination.

* * * * *
    (c) * * *
    (4) Subject matter which is developed by another person which 
qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g) may be 
used as prior art under 35 U.S.C. 103 against a claimed invention 
unless the entire rights to the subject matter and the claimed 
invention were commonly owned by the same person or organization or 
subject to an obligation of assignment to the same person or 
organization at the time the claimed invention was made.
* * * * *

    7. Section 1.113 is revised to read as follows:


Sec. 1.113  Final rejection or action.

    (a) On the second or any subsequent examination or consideration by 
the examiner the rejection or other action may be made final, whereupon 
applicant's or patent owner's reply is limited to appeal in the case of 
rejection of any claim (Sec. 1.191), or to amendment as specified in 
Sec. 1.114 or Sec. 1.116. Petition may be taken to the Commissioner in 
the case of objections or requirements not involved in the rejection of 
any claim (Sec. 1.181). Reply to a final rejection or action must 
comply with Sec. 1.114 or paragraph (c) of this section.
    (b) In making such final rejection, the examiner shall repeat or 
state all grounds of rejection then considered applicable to the claims 
in the application, clearly stating the reasons in support thereof.
    (c) Reply to a final rejection or action must include cancellation 
of, or appeal from the rejection of, each rejected claim. If any claim 
stands allowed, the reply to a final rejection or action must comply 
with any requirements or objections as to form.

    8. Section 1.114 is added immediately following Sec. 1.113 to read 
as follows:


Sec. 1.114  Request for continued examination.

    (a) An applicant may request continued examination of the 
application by filing a submission and the fee set forth in 
Sec. 1.17(e) prior to the earliest of:
    (1) Payment of the issue fee, unless a petition under Sec. 1.313 is 
granted;
    (2) Abandonment of the application; or
    (3) The filing of a notice of appeal to the U.S. Court of Appeals 
for the Federal Circuit under 35 U.S.C. 141, or the commencement of a 
civil action under 35 U.S.C. 145 or 146, unless the appeal or civil 
action is terminated.
    (b) A submission as used in this section includes, but is not 
limited to, an information disclosure statement, an amendment to the 
written description, claims, or drawings, new arguments, or new 
evidence in support of patentability. If reply to an Office action 
under 35 U.S.C. 132 is outstanding, the submission must meet the reply 
requirements of Sec. 1.111.
    (c) If an applicant timely files a submission and fee set forth in 
Sec. 1.17(e), the Office will withdraw the finality of any Office 
action and the submission will be entered and considered. If an 
applicant files a request for continued examination under this section 
after appeal, but prior to a decision on the appeal, it will be treated 
as a request to withdraw the appeal and to reopen prosecution of the 
application before the examiner. An appeal brief under Sec. 1.192 or a 
reply brief under Sec. 1.193(b), or related papers, will not be 
considered a submission under this section.
    (d) The provisions of this section do not apply in any application 
in which the Office has not mailed at least one of an Office action 
under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151. The 
provisions of this section also do not apply to:
    (1) A provisional application;

[[Page 14873]]

    (2) An application for a utility or plant patent filed under 35 
U.S.C. 111(a) before June 8, 1995;
    (3) An international application filed under 35 U.S.C. 363 before 
June 8, 1995;
    (4) An application for a design patent; or
    (5) A patent under reexamination.

    9. Section 1.116 is revised to read as follows:


Sec. 1.116  Amendments after final action or appeal.

    (a) An amendment after final action or appeal must comply with 
Sec. 1.114 or this section.
    (b) After a final rejection or other final action (Sec. 1.113), 
amendments may be made canceling claims or complying with any 
requirement of form expressly set forth in a previous Office action. 
Amendments presenting rejected claims in better form for consideration 
on appeal may be admitted. The admission of, or refusal to admit, any 
amendment after final rejection, and any related proceedings, will not 
operate to relieve the application or patent under reexamination from 
its condition as subject to appeal or to save the application from 
abandonment under Sec. 1.135.
    (c) If amendments touching the merits of the application or patent 
under reexamination are presented after final rejection, or after 
appeal has been taken, or when such amendment might not otherwise be 
proper, they may be admitted upon a showing of good and sufficient 
reasons why they are necessary and were not earlier presented.
    (d) No amendment can be made as a matter of right in appealed 
cases. After decision on appeal, amendments can only be made as 
provided in Sec. 1.198, or to carry into effect a recommendation under 
Sec. 1.196.

    10. Section 1.198 is revised to read as follows:


Sec. 1.198  Reopening after decision.

    Cases which have been decided by the Board of Patent Appeals and 
Interferences will not be reopened or reconsidered by the primary 
examiner except under the provisions of Sec. 1.114 or Sec. 1.196 
without the written authority of the Commissioner, and then only for 
the consideration of matters not already adjudicated, sufficient cause 
being shown.

    11. Section 1.312 is revised to read as follows:


Sec. 1.312  Amendments after allowance.

    No amendment may be made as a matter of right in an application 
after the mailing of the notice of allowance. Any amendment filed 
pursuant to this section must be filed before or with the payment of 
the issue fee, and may be entered on the recommendation of the primary 
examiner, approved by the Commissioner, without withdrawing the 
application from issue.

    12. Section 1.313 is 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, applicant 
must file a petition under this section including the fee set forth in 
Sec. 1.17(i) 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 an unequivocal statement that one or more claims are 
unpatentable, an amendment to such claim or claims, and an explanation 
as to how the amendment causes such claim or claims to be patentable;
    (2) Consideration of a submission pursuant to Sec. 1.114; or
    (3) 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 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.

    Dated: March 10, 2000.
Q. Todd Dickinson,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 00-6514 Filed 3-17-00; 8:45 am]
BILLING CODE 3510-16-P