[Federal Register Volume 65, Number 66 (Wednesday, April 5, 2000)]
[Proposed Rules]
[Pages 17946-17971]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-7939]



[[Page 17945]]

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Part II





Department of Commerce





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Patent and Tradmark Office



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37 CFR Parts 1 and 5



Changes To Implement Eighteen-Month Publication of Patent Applications; 
Proposed Rule

  Federal Register / Vol. 65, No. 66 / Wednesday, April 5, 2000 / 
Proposed Rules  

[[Page 17946]]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 5

[Docket No.: 000308065-0065-01]
RIN 0651-AB05


Changes To Implement Eighteen-Month Publication of Patent 
Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing changes to 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, with certain exceptions, for the publication of pending 
patent applications (other than for a design patent) at eighteen months 
from the earliest claimed priority date.

DATES: Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before May 22, 2000. No public hearing 
will be held.

ADDRESSES: Comments should be sent by electronic mail message via 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: Concerning this notice of proposed 
rulemaking: 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, D.C. 20231, or 
by facsimile to (703) 872-9411, marked to the attention of Robert W. 
Bahr.
    Concerning the electronic filing system (EFS): Jay Lucas or Michael 
Lewis by electronic mail message via the Internet addressed to 
[email protected].

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 notice proposes changes to the rules of practice to implement the 
provisions of Secs. 4501 through 4508 (Subtitle E, Domestic Publication 
of Patent Applications Published Abroad) of the ``American Inventors 
Protection Act of 1999.'' These provisions of the ``American Inventors 
Protection Act of 1999'' provide that, with certain exceptions, 
applications for patent shall be published promptly after the 
expiration of a period of eighteen months from the earliest filing date 
for which a benefit is sought under title 35, United States Code 
(``eighteen-month publication'').
    Section 4502 of the ``American Inventors Protection Act of 1999'' 
amends 35 U.S.C. 122 (35 U.S.C. 122(b)) to provide that applications 
for patent shall be published promptly after the expiration of a period 
of eighteen months from the earliest filing date for which a benefit is 
sought under title 35, United States Code, and that an application may 
be published earlier than the end of such eighteen-month period at the 
request of the applicant. Section 4502 of the ``American Inventors 
Protection Act of 1999'' (35 U.S.C. 122(b)) also contains a number of 
exceptions to eighteen-month publication of patent applications.
    First: An application shall not be published if it is: (1) no 
longer pending; (2) subject to a secrecy order under 35 U.S.C. 181 or 
an application for which publication or disclosure would be detrimental 
to national security; (3) a provisional application under 35 U.S.C. 
111(b); or (4) an application for a design patent under 35 U.S.C. 
chapter 16. See 35 U.S.C. 122(b)(2)(A) and (d).
    Second: An application shall not be published if an applicant makes 
a request upon filing, certifying that the invention disclosed in the 
application has not and will not be the subject of an application filed 
in another country, or under a multilateral international agreement, 
that requires eighteen-month publication. An applicant may rescind such 
a request at any time. In addition, an applicant who has made such a 
request but who subsequently files an application directed to the 
invention disclosed in the application filed in the Office in a foreign 
country, or under a multilateral international agreement, that requires 
eighteen-month publication, must notify the Office of such filing 
within forty-five days after the date of the filing of such foreign or 
international application. An applicant's failure to timely provide 
such a notice to the Office will result in abandonment of the 
application (subject to revival if it is shown that the delay in 
submitting the notice was unintentional). If an applicant rescinds such 
a request or notifies the Office that an application was filed in a 
foreign country or under a multilateral international agreement that 
requires eighteen-month publication, the application is subject to 
eighteen-month publication. See 35 U.S.C. 122(b)(2)(B)(i)-(iv).
    Third: If an applicant has filed applications in one or more 
foreign countries, directly or through a multilateral international 
agreement, and such foreign-filed applications or the description of 
the invention in such foreign-filed applications is less extensive than 
the application or description of the invention in the application 
filed in the Office, the applicant may submit a redacted copy of the 
application filed in the Office eliminating any part or description of 
the invention in such application that is not also contained in any of 
the corresponding applications filed in a foreign country. The Office 
may only publish the redacted copy of the application unless the 
redacted copy of the application is not received within sixteen months 
after the earliest filing date for which a benefit is sought under 
title 35, United States Code. See 35 U.S.C. 122(b)(2)(B)(v).
    Section 4503(a) of the ``American Inventors Protection Act of 
1999'' amends 35 U.S.C. 119(b) to provide that no application for 
patent shall be entitled to a right of priority under 35 U.S.C. 119(a)-
(d) unless a claim is filed in the Office, identifying the foreign 
application by specifying the application number of that foreign 
application, the intellectual property

[[Page 17947]]

authority or country in or for which the application was filed, and the 
date of filing the application, at such time during the pendency of the 
application as required by the Director. Section 4503(a) of the 
``American Inventors Protection Act of 1999'' also amends 35 U.S.C. 
119(b) to provide that the Director may consider the failure of the 
applicant to file a timely claim for priority as a waiver of any such 
claim, and may establish procedures, including the payment of a 
surcharge, to accept an unintentionally delayed claim under 35 U.S.C. 
119(b)-(d). Section 4503(a) of the ``American Inventors Protection Act 
of 1999'' also amends 35 U.S.C. 119(b) to authorize the Director to 
determine whether to require a certified copy of the original foreign 
application.
    Section 4503(b)(1) of the ``American Inventors Protection Act of 
1999'' amends 35 U.S.C. 120 to provide that no application shall be 
entitled to the benefit of an earlier filed application under 35 U.S.C. 
120 unless an amendment containing the specific reference to the 
earlier filed application is submitted at such time during the pendency 
of the application as required by the Director. Section 4503(b)(1) of 
the ``American Inventors Protection Act of 1999'' also amends 35 U.S.C. 
120 to provide that the Director may consider the failure to submit 
such an amendment within that time period as a waiver of any benefit 
under 35 U.S.C. 120, and may establish procedures, including the 
payment of a surcharge, to accept an unintentionally delayed submission 
of an amendment under 35 U.S.C. 120.
    Section 4503(b)(2) of the ``American Inventors Protection Act of 
1999'' amends 35 U.S.C. 119(e) to provide that no application shall be 
entitled to the benefit of an earlier filed provisional application 
under 35 U.S.C. 119(e) unless an amendment containing the specific 
reference to the earlier filed provisional application is submitted at 
such time during the pendency of the application as required by the 
Director. Section 4503(b)(2) of the ``American Inventors Protection Act 
of 1999'' also amends 35 U.S.C. 119(e) to provide that the Director may 
consider the failure to submit such an amendment within that time 
period as a waiver of any benefit under 35 U.S.C. 119(e), and the 
Director may establish procedures, including the payment of a 
surcharge, to accept an unintentionally delayed submission of an 
amendment under 35 U.S.C. 119(e) during the pendency of the 
application.
    Case law has indicated that, in certain instances, priority claims 
may be perfected after issuance. The U.S. Court of Appeals for the 
District of Columbia has held that the equitable or remedial provisions 
of 35 U.S.C. 251 authorize patentees to correct or perfect a claim for 
priority under 35 U.S.C. 119 in an issued patent by reissue. See 
Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 
1968). The U.S. District Court for the District of Columbia applied 
this rationale to permit a patentee to amend an intermediate abandoned 
application in a chain of applications for which a benefit was claimed 
under 35 U.S.C. 120 to include the specific reference required by 35 
U.S.C. 120. See Sampson v. Commissioner, 195 USPQ 136 (D.D.C. 1976). In 
appropriate circumstances, the Office has permitted patentees to state 
claims under 35 U.S.C. 119, 120 or 121 in an issued patent by 
certificate of correction under 35 U.S.C. 255 and Sec. 1.323. See In re 
Schuurs, 218 USPQ 443 (Comm'r Pat. 1983); In re Lambrech, 202 USPQ 620 
(Comm'r Pat. 1976); In re Van Esdonk, 187 USPQ 671 (Comm'r Pat. 1975).
    The amendments to 35 U.S.C. 119 and 120 provide that the Director 
may consider the failure of the applicant to file a timely claim under 
35 U.S.C. 119 or 120 as a waiver of any such claim. Sections 1.55 and 
1.78 as proposed implement these amendments to 35 U.S.C. 119 and 120 by 
specifying time periods during the pendency of the application within 
which claims under 35 U.S.C. 119(a)-(d), 119(e), and 120 must be stated 
(or are considered waived). 35 U.S.C. 119(b), 119(e), and 120 each 
provide that the Director may establish procedures to accept an 
unintentionally delayed submission of a claim under 35 U.S.C. 119(b), 
119(e), or 120 (respectively); however, 35 U.S.C. 119(e) requires that 
such unintentionally delayed claim (amendment) be submitted during the 
pendency of the application. Thus, a claim under 35 U.S.C. 119(a)-(d) 
or 120 for the benefit of a prior application may be added (or 
corrected) in an issued patent by reissue or certificate of correction 
(assuming the conditions for reissue or certificate of correction are 
otherwise met) by submitting such untimely claim under the procedures 
established in Sec. 1.55 or Sec. 1.78 (including payment of any 
applicable surcharge). A claim under 35 U.S.C. 119(e) for the benefit 
of a prior provisional application, however, must be added or corrected 
during the pendency of the application.
    Section 4504 of the ``American Inventors Protection Act of 1999'' 
amends 35 U.S.C. 154 to provide that, subject to a number of 
conditions, a patent includes the right to obtain a reasonable royalty 
during the period beginning on the date of publication of the 
application for such patent under 35 U.S.C. 122(b) (or the date of 
publication under Patent Cooperation Treaty (PCT) Article 21(2) of an 
international application designating the United States) and ending on 
the date the patent is issued (``provisional rights'').
    Section 4505 of the ``American Inventors Protection Act of 1999'' 
amends 35 U.S.C. 102(e) to, inter alia, set forth the conditions under 
which an application published under 35 U.S.C. 122(b) or under PCT 
Article 21(2) is prior art as of its filing date.
    Section 4506 of the ``American Inventors Protection Act of 1999'' 
provides that the Office shall recover the cost of early publication 
required by 35 U.S.C. 122(b) by charging a separate publication fee 
after a notice of allowance is given under 35 U.S.C. 151.
    Section 4508 of the ``American Inventors Protection Act of 1999'' 
provides that its eighteen-month publication provisions take effect on 
November 29, 2000, and apply to applications (other than for a design 
patent) filed under 35 U.S.C. 111(a) on or after November 29, 2000, and 
to applications in compliance with 35 U.S.C. 371 that resulted from 
international applications filed under 35 U.S.C. 363 on or after 
November 29, 2000.
    In August of 1995, the Office published a notice of proposed 
rulemaking to implement legislation pending before the 104th Congress 
that (if enacted) would have provided for the eighteen-month 
publication of pending patent applications. See Changes to Implement 
18-Month Publication of Patent Applications, Notice of Proposed 
Rulemaking, 60 FR 42352 (August 15, 1995), 1177 Off. Gaz. Pat. Office 
61 (August 15, 1995). The Office is now publishing a notice of proposed 
rulemaking, rather than simply adopting changes based upon the notice 
of proposed rulemaking published in 1995, because: (1) The eighteen-
month publication provisions of the ``American Inventors Protection Act 
of 1999'' are different from those pending before the 104th Congress; 
and (2) the Office's planning approach to implementing eighteen-month 
publication is different from its 1995 planning approach. The Office's 
current planning approach to eighteen-month publication includes: (1) 
Disseminating a publication document (patent application publication) 
for each published application; and (2) providing (under conditions set 
forth below) any member of the public with access to the file wrapper 
and contents of each published application (which may be limited to a

[[Page 17948]]

copy of the file wrapper and contents of the application).
    Patent application publication: The patent application publication 
will include a front page containing information similar to that 
contained on the front page of a patent, and the drawings (if any) and 
specification (including claims) of the published application. To 
create the patent application publication, the Office plans to use its 
Patent Application Capture and Review (PACR) system to create an 
electronic database (PACR database) containing: (1) The application 
papers and drawings deposited on the filing date of the application; 
and (2) any subsequently filed application papers and drawings needed 
to create the patent application publication. The application 
information contained in the Office's PACR database will be used to 
create the patent application publication, unless the applicant 
provides a copy of the application via the Office's electronic filing 
system (EFS) to be used to create the patent application publication 
(discussed below).
    The Office currently uses the PACR database as the Office's record 
of the application papers submitted on the filing date of the 
application (i.e., the original disclosure of the invention). The 
application papers submitted on the filing date of the application, 
however, may not include the content needed (e.g., an abstract), and 
the application papers or drawings may not be of sufficient quality 
(e.g., papers not having sufficient contrast to permit electronic 
capture by digital imaging and conversion to text by optical character 
recognition or drawings not having sufficient quality) to be used, to 
create a patent application publication. Since the patent application 
publication will be a prior art document (and, in most cases, the prior 
art document having the earliest effective date under 35 U.S.C. 102(a), 
(b), and (e)), the Office must consider the usability of the patent 
application publication as a prior art document when determining what 
drawing quality is needed to create the patent application publication.
    If the application papers submitted on the filing date of the 
application do not include the content needed, or the application 
papers or drawings are not of sufficient quality to be used, to create 
a patent application publication, the Office of Initial Patent 
Examination (OIPE) will issue a notice requiring that the applicant 
submit the needed application content, or application papers or 
drawings of sufficient quality, for use in creating a patent 
application publication. The applicant's reply to that notice 
(application papers and drawings needed to create the patent 
application publication) will then be added to the PACR database. The 
Office must separate the application papers and drawings deposited on 
the filing date of the application and the subsequently filed 
application papers and drawings in its PACR database because the PACR 
database is also used to create any requested certified copy of the 
application (which may only include the application papers and drawings 
deposited on the filing date of the application).
    Initially, an application filed under 35 U.S.C. 111(a) 
(nonprovisional) must be entitled to a filing date (i.e., contains a 
written description of the invention, a drawing (if necessary for an 
understanding of the invention), and at least one claim) for the 
application to be in condition for publication. In addition, if an 
application filed under 35 U.S.C. 111(a) otherwise entitled to a filing 
date appears to omit a portion of the description or a drawing figure, 
the omitted portion of the description or drawing figure(s) must be 
supplied, or the period for supplying such portion of the description 
or drawing figure(s) must have expired, for the application to be in 
condition for publication. The requirements for an application filed 
under 35 U.S.C. 111(a) to be entitled to a filing date and the 
treatment of an application filed under 35 U.S.C. 111(a) that appears 
to omit a portion of the description or a drawing figure is set forth 
in sections 601.01(d) through 601.01(g) of the Manual of Patent 
Examining Procedure (7th ed. 1998) (MPEP).
    In addition, an application filed under 35 U.S.C. 111(a) must 
include an executed oath or declaration (Sec. 1.63), an abstract 
(Sec. 1.72(b)), and an English translation (if filed in a language 
other than English), for the application to have the content necessary 
to create the patent application publication. For eighteen-month 
publication purposes, the oath or declaration must at a minimum: (1) 
Name each inventor at least by a family and given name; and (2) be 
signed by each inventor or a party qualified to sign under Secs. 1.42, 
1.43, or 1.47 in compliance with Sec. 1.64. Finally, an application 
filed under 35 U.S.C. 111(a) will not be published until the basic 
filing fee (Sec. 1.16(a) or (g)) is paid.
    A PCT international application must satisfy the requirements of 35 
U.S.C. 371 to be subject to eighteen-month publication under 35 U.S.C. 
122(b) (and to have the content necessary to create the patent 
application publication).
    Even if an application has the content necessary to create the 
patent application publication, the application papers and drawings 
must also be reviewed to determine whether they are of sufficient 
quality to be used in creating the patent application publication. To 
be of sufficient quality to create the patent application publication, 
the specification must be on sheets of paper that: (1) Are flexible, 
strong, smooth, non-shiny, durable, and white; (2) are either A4 (21 cm 
x 29.7 cm) or 8\1/2\" x 11" with each sheet having a left margin of at 
least 2.5 cm (1") and top, bottom and right margins of at least 2.0 cm 
(\3/4\"); (3) are written on one side only in portrait orientation; (4) 
are plainly and legibly written either by a typewriter or machine 
printer in permanent dark ink or its equivalent; (5) have lines that 
are either 1\1/2\ or double-spaced; and (6) have sufficient clarity and 
contrast between the paper and the writing on the paper to permit 
direct reproduction and electronic capture by digital imaging and 
optical character recognition. These quality standards and requirements 
are currently set forth in Sec. 1.52(a) and (b). In addition, the title 
must meet the character type and length requirements of Sec. 1.72(a); 
the abstract must commence on a separate sheet and meet the word-length 
requirement of Sec. 1.72(b); the claims must commence on a separate 
sheet; and the sequence listing (if applicable) must comply with 
Secs. 1.821 through 1.825.
    As discussed above, the Office must consider not only whether 
drawings are of sufficient quality to create a publication (the patent 
application publication), but whether they are sufficient for the 
publication to be routinely used as a prior art document. Thus, the 
drawing sheets (if drawings are included) must comply with the 
following requirements of Sec. 1.84. Drawings must be done in dark ink 
(not pencil), except where color drawings or photographs are permitted. 
Photographs (or photomicrographs) are not permitted unless they are 
reproducible and the invention cannot be clearly illustrated in an ink 
drawing. See Interim Waiver of 37 C.F.R. 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). Drawing sheets must be reasonably free from erasures and must be 
free from alterations, overwritings, interlineations, folds, and copy 
marks. Drawing sheets must be either 21.0 cm by 29.7 cm (DIN size A4) 
or 21.6 cm by 27.9 cm (8\1/2\ by 11 inches). Each drawing 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),

[[Page 17949]]

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). Lines, numbers, and letters 
must be clean, dark (not of poor line quality), uniformly thick, and 
well defined. 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). Numbers, 
letters, and reference characters must measure at least 0.32 cm (\1/8\ 
inch) in height. Lead lines are required for each reference character 
(except for those which indicate the surface or cross section on which 
they are placed, in which case the reference character must be 
underlined to make it clear that a lead line has not been left out by 
mistake). Finally, drawing views must be numbered in consecutive Arabic 
numerals, starting with 1.
    In September of 1996, the Office revised the standard and format 
requirements for the specification (including the abstract and claims), 
drawings, and other application papers set forth in Sec. 1.52 and 
Sec. 1.84 for the purpose of obtaining initial application papers in 
condition for eighteen-month publication. See Miscellaneous Changes in 
Patent Practice, Final Rule Notice, 61 FR 42790 (August 19, 1996), 1190 
Off. Gaz. Pat. Office 67 (September 17, 1996). Applicants are advised 
that the Office will: (1) Begin more rigorous enforcement of the 
provisions of Sec. 1.52(a) and (b) and Sec. 1.84; and (2) no longer 
permit applicants to request that objections under Sec. 1.84 be held in 
abeyance pending allowance of the application.
    As discussed below, if applicant timely provides the Office with a 
copy of the application via the Patent and Trademark Office electronic 
filing system, the Office will use the electronic copy provided by the 
applicant (rather than the PACR database records) to create the patent 
application publication. Applicants may use this procedure to obtain 
inclusion of amendments submitted during prosecution in the patent 
application publication. Applicants must use this procedure when 
requesting: (1) Voluntary publication of an application; (2) 
republication of a previously published application; or (3) publication 
of only a redacted copy of an application.
    The electronic filing system (EFS) is an electronic system for the 
submission of patent applications to the Office. The EFS encompasses 
the preparation of the application parts in a special manner on the 
applicant's computer (authoring), the assembling of the pieces of the 
application so authored, and the secure communication of that 
application to the Office.
    The EFS is currently in place as a pilot program for use by a 
limited number of applicants, who on a voluntary basis, file 
applications under the EFS program. The same EFS software must be used 
by applicants who wish to submit a copy of the application for the 
patent application publication.
    The steps for submission of an electronic version of a patent 
application are as follows: (1) Obtaining a digital certificate; (2) 
obtaining the authoring and the submission software packages from the 
Office; (3) authoring the patent application; and (4) assembling the 
parts of the application, and validating, digitally signing, and 
submitting the application.
    To file a copy of an application using the EFS, an applicant (or 
representative) must submit a request and receive an Office digital 
certificate to enable secure communication between the applicant and 
the Office. A digital certificate will allow the authorized person to 
conduct electronic filing, as well as have access to the Office's 
Patent Application Information Retrieval (PAIR) software to display 
patent application status information.
    The digital certificate is given to individuals and firms that 
obtain a customer number, and also request the digital certificate. 
Instructions on how to obtain the necessary digital certificate are 
located at the Office's Electronic Business Center on the Office's 
Internet Web site (http://www.uspto.gov) (under the section Electronic 
Business Center, select New User for the PAIR system).
    The Office makes its branded version of the security software 
product called Entrust Direct software available to authorized persons. 
The software operates in conjunction with an Office Public Key 
Infrastructure (PKI) that is secure and enables communication only 
between authorized persons who are registered with the Office and the 
Office.
    A person signing up for EFS application filing receives a package 
with his or her digital certificate including: (1) The software that 
will attach a digital signature to a document or set of documents; (2) 
an authoring tool that will allow the applicant to convert a standard 
patent application into a specialized format; and (3) the electronic 
Packaging and Validation Engine (ePave) program that will assemble the 
parts of the application, validate that the parts are complete, encrypt 
and digitally sign them, and then send them to the Office.
    The applicant is responsible for correctly authoring the electronic 
application, which is defined as reformatting the application into a 
form that complies with the requirements of XML (the standard 
eXtensible Markup Language of Internet authoring). The XML requires 
that all the pieces of information in the application (e.g., the 
inventor's name, title of the invention, the claims) are tagged with 
standard XML named tags before and after each piece of information. For 
example, XML could require that the title be tagged:

MAKING A WIDGIT

    The tagged information, in turn, is ordered and positioned on the 
submitted document according to the formula for that document in the 
document type definition (DTD). The DTD contains a list of all the 
tagged data elements (pieces of information) that should be on that 
document, and the relative positioning of the elements. When combined 
with the document's style sheet (which contains formatting 
information), the DTD will completely define what the document should 
contain and, when printed or viewed, what it will look like.
    The applicant does the authoring using the software authoring tool 
given to him or her by the Office and operating on the applicant's 
computer. The authoring tool displays on the left of the applicant's 
computer screen a list of all of the data elements that should be in a 
patent application (according to the Office's DTD). The applicant 
clicks each element in the list, and when a window opens, types the 
information requested into the window. For example, the applicant 
clicks the data element ``TITLE'' and types ``MAKING A WIDGIT'' when 
the window opens. The authoring tool will add the tags, paragraph 
numbers, and other elements that are required by XML. The applicant can 
continue through this whole process adding the required information to 
each of the data elements until the application is fully authored.
    The applicant can also use the authoring tool to ``cut and paste'' 
a fully written application into the proper format. In this mode, the 
applicant will open up that written application, and also open up the 
authoring tool to reveal all of the data elements. When the applicant 
clicks the data element to reveal the data entry window, the applicant 
will copy the relevant section from the previously written application 
and paste that section into the window (for tagging by the authoring 
tool).

[[Page 17950]]

    Paper copies of the oath or declaration (Sec. 1.63), drawings, and 
certain other documents are scanned on the applicant's digital scanner 
and stored in tagged image file format (TIFF). The TIFF is not tagged 
by the authoring tool, but is similar to an electronic photograph.
    Using either mode, the applicant will produce a copy of the 
application in compliance with the Office EFS, including a 
specification and claims (in XML), an oath or declaration (in TIFF), 
and drawings (also in TIFF).
    Once the various parts of the application are prepared, the 
applicant will use the software tool ePave to assemble those parts and 
submit the application to the Office. The ePave software interacts with 
the applicant to fill out an electronic transmittal and fee information 
letter. This document is developed in the tagged XML format. The 
applicant then uses the ePave software to associate these documents 
with the previously produced application.
    This association of the related files to be submitted is called 
bundling. The bundle of files that will be sent to the Office will be 
compressed using Zip technology to reduce their size. Then ePave will 
apply the digital signature to the compressed bundle, to both indicate 
who is sending the package to the Office and to check the file's 
integrity. The digital signature process also encrypts the bundle, for 
safety during transmission.
    Obviously, fees submitted via EFS must be by an authorization to 
charge the fee to a credit card or Office deposit account. Therefore, 
any publication fee or processing fee required for a copy of an 
application submitted via EFS for use in the patent application 
publication must be by an authorization to charge the fee to a credit 
card or Office deposit account.
    The authoring tool and ePave software on the applicant's computer 
perform all of this activity almost invisibly. The applicant must enter 
a password to apply the digital signature, and the software will finish 
processing the application for submission to the Office. During the 
processing of a copy of an application for submission to the Office for 
use in a patent application publication, the applicant will be advised 
that the application of a digital signature constitutes a statement 
that the EFS copy of the application contains no new matter, and, 
except for a redacted copy of an application (which requires the 
concurrent submission of other certifications on paper), that the EFS 
copy of the application corresponds to the application as amended by 
any amendment filed in the application. When processing is finished, 
the software will ask the applicant if the list of displayed files 
should be sent to the Office. The applicant will click or otherwise 
express his or her concurrence, and the EFS application files are 
electronically transmitted to the Office.
    On receipt of the bundle of files comprising the application, the 
Office stores the bundle and takes it apart. The bundle is decrypted, 
the digital signature is checked, and the integrity of the package is 
confirmed. In the course of events, the Office sends an acknowledgment 
back to the applicant's computer listing the date and time of 
submission, the names and sizes of the files received, and other 
information to confirm the submission.
    If a copy of an application being submitted to the Office for 
eighteen-month publication purposes contains a sequence listing, and 
the sequence listing is identical to a sequence listing previously 
submitted to the Office (e.g., the sequence listing is not amended or 
redacted) in compliance with Secs. 1.821 through 1.825, the EFS copy of 
the application may contain a reference to the previously filed 
sequence listing in lieu of a copy of the previously filed sequence 
listing.
    Finally, EFS is currently a pilot program. The Office anticipates 
that EFS will be capable of receiving copies of applications for 
eighteen-month publication purposes on a routine basis by November 29, 
2000. In the event that EFS is not capable of receiving copies of 
applications for eighteen-month publication purposes on a routine basis 
by November 29, 2000, the Office will provide for submission by paper 
of copies of applications for applicants requesting: (1) A patent 
application publication reflecting amendments to the application; (2) 
voluntary publication of an application; (3) republication of a 
previously published application; or (4) publication of only a redacted 
copy of an application.
    Publication process: The current planning approach involves a 
fourteen-week publication cycle that results in the publication of 
patent application publications on Thursday of each week. Ideally, the 
publication date of an application will be the first Thursday after the 
date that is eighteen months after the filing date of the application, 
or if the application claims the benefit of an earlier filing date, the 
first Thursday after the date that is eighteen months after the 
earliest filing date for which a benefit is sought. An application, 
however, may not be published the first Thursday after the date that is 
eighteen months after the earliest filing date for which a benefit is 
sought if the application is not in condition for publication 
approximately fourteen months after the earliest filing date for which 
a benefit is sought (eighteen months less the fourteen-week publication 
cycle).
    Obviously, there are events that will delay publication of some 
applications until a later date: e.g., (1) the application claims the 
benefit under 35 U.S.C. 120 of an application filed more than eighteen 
months before the actual filing date of the application; (2) the basic 
filing fee or oath (or declaration) is not provided within eighteen 
months after the earliest filing date for which a benefit is sought; or 
(3) the application does not contain papers or drawings of publication 
quality within eighteen months after the earliest filing date for which 
a benefit is sought. In such situations, the publication date of an 
application will be the first Thursday after the date that is fourteen 
weeks after the application is in condition for publication. Applicants 
who attempt to delay publication by intentionally delaying the 
submission of the application content necessary for publication, 
however, will encounter a reduction (under regulations established 
pursuant to 35 U.S.C. 154(b)(2)(C)(iii)) in any patent term adjustment 
under 35 U.S.C. 154(b).
    The Office plans to indicate a projected publication date on the 
filing receipt or indicate ``to be determined'' if the application is 
not in condition for publication. If events change the projected 
publication date by more than two weeks (e.g., claim for priority under 
35 U.S.C. 119(e) presented after mailing of the filing receipt) or the 
application content necessary for publication is provided, the Office 
will issue a change notification indicating the revised projected 
publication date.
    The publication process involves producing weekly volumes of patent 
application publications on a variety of media: e.g., the Office's 
Examiner Automated Search Tool (EAST) and Web-based Examiner Search 
Tool (WEST) search systems, optical disk products for sale to the 
public, and exchange with the Office's Intellectual Property exchange 
partners. Patent application publications will be available for viewing 
by the public in the Public Search Room via an on-line search system. 
The Office does not plan to provide paper copies of the patent 
application publications for placement in either the Public Search Room 
or the examiners' search rooms. The Office, however, will provide paper 
copies of the patent application publications to

[[Page 17951]]

any member of the public on request (for a fee) in the manner that 
paper copies of patents are currently provided.
    The publication process provides for: (1) Assembly of application 
bibliographic information for the patent application publication at 
fourteen weeks prior to the projected publication date; (2) assembly of 
the technical content (specification, including claims and abstract, 
and drawings) of the application for the patent application publication 
at nine weeks prior to the projected publication date; and (3) placing 
the application information as assembled into the patent application 
publication on publication media (e.g., optical disks, magnetic tape) 
at four weeks prior to the projected publication date.
    Any applicant seeking to abandon the application for the purpose of 
avoiding publication must take appropriate action (see Sec. 1.138 
discussed below) well prior to the projected publication date. If the 
application is not expressly abandoned at least four weeks prior to the 
projected publication date, the Office will probably not be able to 
avoid publication of the application or at least some application 
information because the Office will place the application (along with 
the thousands of other applications being published each week) on 
publication media (e.g., optical disks, magnetic tape) four weeks prior 
to the projected date. This does not imply that a request to expressly 
abandon an application to avoid publication (Sec. 1.138) filed prior to 
this ``four-week'' time frame will ensure that the Office will be able 
to remove an application from publication. The Office simply cannot 
ensure that it can remove an application from publication or avoid 
publication of application information any time after the publication 
process for the application is initiated.
    Access to the file wrapper and contents of a published application: 
The Office plans to permit: (1) Any member of the public to obtain (for 
a fee) a copy of the complete file wrapper and contents of, or a copy 
of a specific paper in, any published application, provided that no 
redacted copy was timely submitted for publication; (2) any member of 
the public to obtain (for a fee) an appropriately redacted copy of the 
file wrapper and contents of, or a copy of a specific paper in, any 
published application for which a redacted copy was timely submitted 
for publication; and (3) any member of the public to physically inspect 
(under the conditions that inspection of patented files is permitted) 
the file of any abandoned published application, provided that no 
redacted copy was timely submitted for publication.
    Any member of the public may obtain status information concerning 
any published application via the Office's PAIR system. Permitting 
physical inspection of pending published applications, however, would 
interfere with the Office's ability to act on the applications within 
the time frames set forth in 35 U.S.C. 154(b)(1)(A) and (B). Thus, the 
Office must limit public access to the file wrapper of pending 
published applications to obtaining a copy produced by the Office (for 
a fee) to avoid conferring patent term adjustment on the applicant due 
to actions by members of the public.
    Section 4805 of the ``American Inventors Protection Act of 1999'' 
provides that the Comptroller General (in consultation with the Office) 
shall conduct a study and submit a report to Congress on the potential 
risks to the United States biotechnology industry relating to 
biological deposits in support of biotechnology patents, and that the 
Office shall consider the recommendations of such study in drafting 
regulations affecting biological deposits (including any modification 
of Sec. 1.801 et seq.). Therefore, this notice does not contain any 
proposed amendment to Sec. 1.801 et seq. concerning the treatment of 
biological deposits in applications subject to eighteen-month 
publication.
    The term ``Commissioner'' wherever it is present in the rules of 
practice affected by this notice is proposed to be changed to 
``Director'' for consistency with Sec. 4732 of the ``American Inventors 
Protection Act of 1999.'' The provisions of the rules of practice not 
involved in this notice will be revised for consistency with Sec. 4732 
of the ``American Inventors Protection Act of 1999'' in due course.
    Finally, the Office proposed a number of changes to the rules of 
practice in a rulemaking to support the Patent Business Goals. See 
Changes to Implement the Patent Business Goals, Notice of Proposed 
Rulemaking, 64 FR 53772 (October 4, 1999), 1228 Off. Gaz. Pat. Office 
15 (November 2, 1999). The Office indicated in the Patent Business 
Goals Notice of Proposed Rulemaking that it would have to reconsider 
its business processes and make such further changes to the rules of 
practice as are necessary in the event of enactment of patent 
legislation. See Id. Sections 1.9, 1.14, 1.17, 1.55, 1.72, 1.78, 1.89, 
1.131, 1.132, 1.137, 1.138, 1.311, and 5.1 as proposed to be amended in 
this notice also reflect changes proposed in the Patent Business Goals 
Notice of Proposed Rulemaking.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Parts 1 and 5, are 
proposed to be amended as follows:
    Section 1.9: Section 1.9(c) is proposed to be amended to define a 
published application as used in 37 CFR chapter I to mean an 
application for patent which has been published under 35 U.S.C. 122(b).
    Section 1.9 as proposed also reflects changes proposed in the 
Patent Business Goals Notice of Proposed Rulemaking.
    Section 1.11: Section 1.11(a) is proposed to be amended to include 
the file of an abandoned published application (except if a redacted 
copy of the application was used for the patent application 
publication) among the files that are open to inspection by the public.
    Section 1.12: Section 1.12(a)(1) is proposed to be amended to 
include the assignment records of a published patent application among 
the patent assignment records that are available to the public. Section 
1.12(b) is proposed to be amended to provide the patent assignment 
records, digests, and indexes that are available to the public unless 
they relate to pending or abandoned patent applications that have not 
been published under 35 U.S.C. 122(b).
    Section 1.13: Section 1.13 is proposed to be amended to include 
patent application publications among the records of the United States 
Patent and Trademark Office that are open to the public, and of which a 
copy (certified or uncertified) will be furnished (upon payment of the 
fee therefor).
    Section 1.14: Section 1.14(a) is proposed to be amended to 
generally maintain the confidentiality of applications that have not 
been published as a U.S. patent application publication (see 35 U.S.C. 
122(b)) pursuant to 35 U.S.C. 122(a). Status information is defined to 
include identification of whether the application has been published 
under 35 U.S.C. 122(b), as well as whether the application is pending, 
abandoned, or patented, and the application numerical identifier.
    Section 1.14(b) is proposed to be amended to provide that status 
information may also be supplied when the application is referred to by 
its numerical identifier in a U.S. patent application publication as 
well as a U.S. patent or a published international application. Section 
1.14(b) is also proposed to be amended to provide that status 
information may be supplied for an application which claims the benefit 
of the filing date of an application for which status information may 
be

[[Page 17952]]

supplied. As a result, the public will be able to obtain continuity 
data for applications that have been published as a U.S. patent 
application publication or as a U.S. patent.
    Section 1.14(c)(1) as proposed provides that a copy of an 
application-as-filed or a file wrapper and contents may be supplied 
where the appropriate fee is paid, and: (1) the application is 
incorporated by reference in a U.S. patent application publication or 
U.S. patent; or (2) the application is relied upon for priority under 
35 U.S.C. 119(e) or 120 in a U.S. patent application publication or 
U.S. patent.
    Section 1.14(c)(2) as proposed provides that copies of the file 
wrapper and contents of an application are available to the public when 
the application has been published as a U.S. patent application 
publication.
    Section 1.14(e) is proposed to be amended to provide public access 
to an abandoned application that is referenced in a U.S. patent 
application publication as well as a U.S. patent, or another 
application that is open to public inspection.
    Section 1.14(i) is proposed to provide for greater access to 
international application files kept by the Office. Specifically, 35 
U.S.C. 374 equates the publication under the PCT of an international 
application designating the U.S. to the publication of a U.S. 
application under 35 U.S.C. 122(b). As a result of the publication 
under 35 U.S.C. 122(b) of applications having an international filing 
date on or after November 29, 2000, the Office will make available 
copies of the application files and also allow for access to those 
files in accordance with Sec. 1.14(c) and (e), respectively. Therefore, 
after publication of an international application having an 
international filing date on or after November 29, 2000, and 
designating the U.S. under PCT Article 21, the Office will make 
available copies of, and allow access to, those international 
application files which are kept in the Office (the Home, Search, and 
Examination Copies) to the extent permitted under the PCT. 
Additionally, Sec. 1.14(i)(2) provides that copies of English language 
translations of international applications, which were published in a 
non-English language and which designated the U.S., and which have been 
submitted to the Office pursuant to 35 U.S.C. 154(d)(4), will also be 
available to the public. Requests for copies of, or access to, an 
application file under Sec. 1.14(i) must be in the form of a written 
request and must include a showing that the international application 
has been published and that the U.S. was designated. Such a showing 
should preferably be in the form of the submission of a copy of the 
front page of the published international application. Additionally, 
requests for copies of international application files must also be 
accompanied by the appropriate fee.
    Section 1.14(j) is proposed to be amended to provide that this 
section not only applies when the Office provides access to or copies 
of the application, but also when the Office provides access to or 
copies of part of an application.
    Section 1.14 as proposed also reflects changes proposed in the 
Patent Business Goals Notice of Proposed Rulemaking.
    Section 1.17: Section 1.17(h) is proposed to be amended to include 
a petition under Sec. 1.138 to expressly abandon an application to 
avoid publication among the petitions requiring the fee ($130) set 
forth in Sec. 1.17(h).
    Section 1.17(i) is proposed to be amended to include processing a 
redacted copy of a paper submitted in the file of an application in 
which a redacted copy was submitted for the patent application 
publication (Sec. 1.217), a request for voluntary publication or 
republication of an application (Sec. 1.221), and for processing a 
belated submission under Sec. 1.99 (Sec. 1.99(e)) to the processing 
services requiring the processing fee ($130) set forth in Sec. 1.17(i).
    Sections 1.17(l) and 1.17(m) (and the heading of Sec. 1.17) are 
proposed to be amended to set forth the fees for filing a petition 
under Sec. 1.137 for revival of a terminated reexamination proceeding 
(on the basis of unavoidable and unintentional delay), and are 
discussed in a separate rulemaking (to implement the optional inter 
partes reexamination provisions of the ``American Inventors Protection 
Act of 1999'').
    Section 1.17(p) is proposed to be amended to make its fee ($240) 
applicable to a third party submission under Sec. 1.99, as well as an 
information disclosure statement under Sec. 1.97(c) or (d).
    Section 1.17(u) is proposed to be added to set forth the surcharge 
($1,210) for accepting an unintentionally delayed claim for priority 
under 35 U.S.C. 119, 120, 121, or 365 (Secs. 1.55 and 1.78).
    Section 1.17 as proposed also reflects changes proposed in the 
Patent Business Goals Notice of Proposed Rulemaking.
    Section 1.18: Section 1.18(d) is proposed to be added to specify 
the publication fee ($300). In view of this proposed addition to 
Sec. 1.18, the heading of Sec. 1.18 is also proposed to be amended to 
refer to ``post-allowance (including issue) fees'' (instead of only 
``issue fees'').
    Section 1.24: Section 1.24 is proposed to be removed and reserved. 
The practice of using coupons to purchase patents, statutory invention 
registrations, trademark registrations, etc., is inefficient as 
compared to alternatives such as payment by credit card (especially for 
orders placed via the Internet). Coupons sold by the Office (before 
coupon practice is abolished) may still be used but cannot be redeemed.
    Section 1.52: Section 1.52(d) is proposed to be amended to provide 
for nonprovisional applications and provisional applications filed in a 
language other than English. The treatment of nonprovisional 
applications filed in a language other than English are revised for 
clarity, but otherwise remain unchanged (Sec. 1.52(d)(1)).
    Section 1.52(d)(2) as proposed provides that if a provisional 
application is filed in a language other than English, an English 
translation will not be required in the provisional application. 
Section 1.52(d)(2) as proposed also contains a reference to 
Sec. 1.78(a) concerning the requirements for claiming the benefit of 
the filing date of such a provisional application in a later filed 
nonprovisional application.
    Section 1.55: Section 1.55 is proposed to be amended to implement 
the provisions of 35 U.S.C. 119(b) as amended by Sec. 4503(a) of the 
``American Inventors Protection Act of 1999,'' by providing: (1) a time 
period within which a claim for the benefit of a prior foreign 
application must be stated or waived; and (2) provisions for the 
acceptance of an unintentionally delayed submission of a claim to the 
benefit of a prior foreign application.
    Section 1.55(a) is proposed to be amended to provide that: (1) in 
an original application filed under 35 U.S.C. 111(a) (other than a 
design application), the claim for priority must be presented during 
the pendency of the application, and within the later of four months 
from the actual filing date of the application or sixteen months from 
the filing date of the prior foreign application; (2) 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 
during the pendency of the application and within the time limit set 
forth in the PCT and the Regulations under the PCT; and (3) the claim 
for priority and the certified copy of the foreign application 
specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be 
filed before the patent is granted.

[[Page 17953]]

    Section 1.55(c) is proposed to provide that any claim for priority 
under 35 U.S.C. 119(a)-(d), or 365(a) or (b) not presented within the 
time period provided by Sec. 1.55(a) is considered to have been waived. 
Section 1.55(c) as proposed also provides that if a claim to priority 
under 35 U.S.C. 119(a)-(d) or 365(a) or (b) is presented after the time 
period provided by Sec. 1.55(a), the claim may be accepted if the claim 
identifying the prior foreign application by specifying its application 
number, country, and the day, month and year of its filing was 
unintentionally delayed. Section 1.55(c) as proposed also provides that 
a petition to accept a delayed claim for priority under 35 U.S.C. 
119(a)-(d) or 365(a) or (b) must be accompanied by: (1) The surcharge 
set forth in Sec. 1.17(u); and (2) a statement that the entire delay 
between the date the claim was due under Sec. 1.55(a)(1) and the date 
the claim was filed was unintentional, and that the Director may 
require additional information where there is a question whether the 
delay was unintentional.
    Section 1.55 as proposed also reflects changes proposed in the 
Patent Business Goals Notice of Proposed Rulemaking.
    Section 1.72: Section 1.72(a) is proposed to be amended to provide 
that the title of the invention may include only characters capable of 
being created by a keyboard and may not exceed 500 characters in 
length. The title character type and number limitations are necessary 
to ensure that the title can be completely and accurately captured in 
the Office's Patent Application Locating and Monitoring (PALM) system. 
Section 1.72 as proposed also reflects changes proposed in the Patent 
Business Goals Notice of Proposed Rulemaking.
    Section 1.78: Section 1.78(a) is proposed to be amended to 
implement the provisions of 35 U.S.C. 119(e) and 120 as amended by 
Sec. 4503(b) of the ``American Inventors Protection Act of 1999,'' by 
providing: (1) A time period within which a claim to the benefit of a 
prior nonprovisional or provisional application must be stated or 
waived; and (2) provisions for the acceptance of the unintentionally 
delayed submission of a claim to the benefit of a prior nonprovisional 
or provisional application.
    Section 1.78(a)(2) is proposed to be amended to provide that 
(except for a continued prosecution application filed under 
Sec. 1.53(d)) any claim to the benefit of a nonprovisional application 
or international application must be made during the pendency of the 
application and within the later of four months from the actual filing 
date of the application or sixteen months from the filing date of the 
prior application. Section 1.78(a)(2) as proposed also provides that 
the failure to timely submit the reference required by 35 U.S.C. 120 
and Sec. 1.78(a)(2) is considered a waiver of any benefit under 35 
U.S.C. 120, 121, or 365(c) to such prior application, but that the time 
period set forth in Sec. 1.78(a)(2) does not apply to an application 
for a design patent.
    Section 1.78(a)(2) also provides that if the application claims the 
benefit of an international application, the first sentence of the 
specification must include an indication of whether the international 
application was published under PCT Article 21(2) in English 
(regardless of whether benefit to such application is claimed in the 
application data sheet).
    Sections 1.78(a)(3) and 1.78(a)(4) are proposed to be redesignated 
as Secs. 1.78(a)(4) and 1.78(a)(5), respectively.
    Section 1.78(a)(3) as proposed provides that if the reference 
required by 35 U.S.C. 120 and paragraph (a)(2) of this section is 
presented in a nonprovisional application after the time period 
provided by Sec. 1.78(a)(2), the claim under 35 U.S.C. 120, 121, or 
365(c) for the benefit of a prior filed copending nonprovisional 
application or international application designating the United States 
may be accepted if the claim identifying the prior application by 
application number or international application number and 
international filing date was unintentionally delayed. Section 
1.78(a)(3) as proposed also provides that a petition to accept an 
unintentionally delayed claim under 35 U.S.C. 120, 121, or 365(c) for 
the benefit of a prior filed copending application must be accompanied 
by: (1) The surcharge set forth in Sec. 1.17(u); and (2) a statement 
that the entire delay between the date the claim was due under 
Sec. 1.78(a)(2) and the date the claim was filed was unintentional, but 
the Director may require additional information where there is a 
question whether the delay was unintentional.
    Section 1.78(a)(4) is proposed to be amended to provide 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 the basic filing fee set forth 
in Sec. 1.16(k) must be paid within the time period set forth in 
Sec. 1.53(g).
    Section 1.78(a)(5) as proposed provides that any nonprovisional 
application claiming the benefit of a provisional application filed in 
a language other than English must (in addition to the reference 
required by 35 U.S.C. 119(e) and proposed Sec. 1.78(a)(5)) contain an 
English language translation of the non-English language provisional 
application and a statement that the translation is accurate. Section 
1.78(a)(5) as proposed also provides any claim for the benefit of a 
provisional application and English language translation of a non-
English language provisional application must be submitted during the 
pendency of the nonprovisional application, and within the later of 
four months from the actual filing date of the nonprovisional 
application or sixteen months from the filing date of the prior 
provisional application. Section 1.78(a)(5) as proposed also provides 
that the failure to timely submit the reference and English language 
translation of a non-English language provisional application required 
by 35 U.S.C. 119(e) and Sec. 1.78(a)(5) is considered a waiver of any 
benefit under 35 U.S.C. 119(e) to such prior provisional application.
    Section 1.78(a)(6) as proposed provides that if the reference or 
English language translation of a non-English language provisional 
application required by 35 U.S.C. 119(e) and Sec. 1.78(a)(5) is 
presented in a nonprovisional application after the time period 
provided by Sec. 1.78(a)(5), the claim under 35 U.S.C. 119(e) for the 
benefit of a prior filed provisional application may be accepted during 
the pendency of the nonprovisional application if the claim identifying 
the prior application by provisional application number and any English 
language translation of a non-English language provisional application 
were unintentionally delayed. Section 1.78(a)(6) as proposed also 
provides that a petition to accept an unintentionally delayed claim 
under 35 U.S.C. 119(e) for the benefit of a prior filed provisional 
application must be accompanied by: (1) The surcharge set forth in 
Sec. 1.17(u); and (2) a statement that the entire delay between the 
date the claim was due under Sec. 1.78(a)(5) and the date the claim was 
filed was unintentional, but that the Director may require additional 
information where there is a question whether the delay was 
unintentional.
    Section 1.78 as proposed also reflects changes proposed in the 
Patent Business Goals Notice of Proposed Rulemaking.
    Section 1.84: Section 1.84(a)(2) as proposed is amended to provide 
that color drawings are not permitted in an application, or copy 
thereof, submitted under the Office electronic filing system. Section 
1.84(a)(2) as proposed is also amended to provide that any petition to 
accept color drawings must include a black and white photocopy that 
accurately depicts, to the extent possible, the subject matter shown in 
the color drawing. Since Sec. 1.84(b)

[[Page 17954]]

provides that color photographs will be accepted in utility patent 
applications if the conditions for accepting color drawings have been 
satisfied, the provisions and restrictions in amended Sec. 1.84(a)(2) 
would also apply to color photographs.
    Section 1.84(e) is proposed to be amended to provide that 
photographs must be developed on paper meeting the sheet-size 
requirements of Sec. 1.84(f) and the margin requirements of 
Sec. 1.84(g).
    Section 1.84(j) is proposed to be amended to refer to the view 
suitable for the front page, rather than the view suitable for the 
Official Gazette, since the front page of the patent (and patent 
application publication) includes the information that is (or would be) 
included in the Official Gazette, and the Office does not plan on 
creating an Official Gazette for patent application publications. 
Section 1.84(j) is also proposed to be amended to provide that: (1) One 
of the views should be suitable for inclusion on the front page of the 
patent application publication and patent as the illustration of the 
invention; and (2) applicant may suggest a single view (by figure 
number) for inclusion on the front page of the patent application 
publication and patent. Applicants should indicate in the application 
transmittal letter the figure number of the view suggested for 
inclusion on the front page of the patent application publication and 
patent. The Office, however, is not bound by applicant's suggestion.
    Section 1.85: Section 1.85(a) is proposed to be amended to provide 
that a utility or plant application will not be placed on the files for 
examination until objections to the drawings have been corrected. As 
discussed above, these objections will concern deficiencies that must 
be corrected for the drawings to be of sufficient quality for use in 
creating a patent application publication. Since the Office plans to 
use the copy of the application (including the drawings) from its PACR 
database to create the patent application publication, the Office must 
require that new or corrected drawings correcting the objections to the 
drawings be filed before the application is released from OIPE and 
placed on the files for examination.
    Even if an applicant files the application with a request that the 
application not be published pursuant to 35 U.S.C. 122(b), the 
applicant may rescind that request at any time. See 35 U.S.C. 
122(b)(2)(B)(ii). In addition, at the time the Office is recording a 
copy of the application in its PACR database, the Office is not in a 
position to know whether the applicant will file an electronic filing 
system copy of the application for use creating the patent application 
publication. Therefore, the Office must be prepared to create a patent 
application publication from its PACR database for each application and 
insist that objections to the drawings be corrected in all utility and 
plant applications before the application can be released from OIPE.
    Section 1.85(a) is also proposed to be amended to provide that 
(except as provided in Sec. 1.215(c)), any patent application 
publication will not include drawings filed after the application has 
been placed on the files for examination. Thus, corrected drawings 
submitted after the application has been released from OIPE will not be 
added to the PACR database or used to create the patent application 
publication.
    Section 1.85(a) is also proposed to be amended to provide that, 
unless applicant is otherwise notified in an Office action, objections 
to the drawings in a utility or plant application will not be held in 
abeyance, and a request to hold objections to the drawings in abeyance 
will not be considered a bona fide attempt to advance the application 
to final action (Sec. 1.135(c)). That is, if an Office action or notice 
contains an objection to the drawings (and does not expressly permit 
such objection to be held in abeyance) and the applicant's reply does 
not correct the objection, the applicant will be advised that the reply 
is non-responsive and given the remainder of the period set in the 
original Office action or notice (and not a new period under 
Sec. 1.135(c)) within which to correct the objection.
    Since design applications are not subject to the eighteen-month 
publication provisions of 35 U.S.C. 122(b), drawings in a design 
application will continue to be admitted for examination if the 
drawings meet the requirements of Sec. 1.84(e), (f), and (g) and are 
suitable for reproduction.
    Section 1.98: Section 1.98(a)(2)(i) is proposed to be amended to 
also refer to U.S. patent application publications. Section 1.98(b) is 
proposed to be amended to provide that each U.S. patent application 
publication listed in an information disclosure statement shall be 
identified by applicant, patent application publication number, and 
publication date. The proposed changes to Sec. 1.98 also reflect 
changes proposed in the Patent Business Goals Notice of Proposed 
Rulemaking.
    Section 1.99: Section 1.99(a) as proposed provides that a 
submission by a member of the public of patents or publications 
relevant to a pending published application will be entered in the 
application file if the submission complies with the requirements of 
Sec. 1.99 and the application is still pending when the submission and 
application file are brought before the examiner. The entry of such a 
submission does not mean that the patents or printed publications 
contained in the submission will be necessarily considered and cited by 
the examiner. If the examiner considers a patent or printed publication 
contained in the submission to be pertinent in determining 
patentability, the examiner will initial that patent or printed 
publication on the listing of the patents or publications submitted for 
consideration by the Office.
    Section 1.99(b) as proposed provides that a submission under 
Sec. 1.99 must identify the application to which it is directed by 
application number and include: (1) The fee set forth in Sec. 1.17(p); 
(2) a listing of the patents or publications submitted for 
consideration by the Office; (3) a copy of each listed patent or 
publication in written form or at least the pertinent portions thereof; 
and (4) an English language translation of all the necessary and 
pertinent parts of any non-English language patent or publication in 
written form relied upon.
    Section 1.99(c) as proposed provides that a submission under 
Sec. 1.99 must be served upon the applicant in accordance with 
Sec. 1.248.
    Section 1.99(d) as proposed provides that a submission under 
Sec. 1.99 may not include any explanation of the patents, publications, 
or any other information, and is limited to twenty total patents or 
publications.
    Section 1.99(e) as proposed also provides that a submission under 
Sec. 1.99 must be filed within two months of the date of publication of 
the application (Sec. 1.215(a)), or prior to the mailing of a notice of 
allowance (Sec. 1.311), whichever is earlier, and that any submission 
under Sec. 1.99 not filed within this period is permitted only when the 
patents or publications could not have been submitted to the Office 
earlier, and must also be accompanied by the processing fee set forth 
in Sec. 1.17(i). Section 1.99(e) as proposed also provides that a 
submission by a member of the public to a pending published application 
that does not comply with the requirements of Sec. 1.99 will be 
returned or disregarded.
    Section 1.99(f) as proposed provides that the involvement of a 
member of the public in filing a submission under Sec. 1.99 ends with 
the filing of the submission.
    Section 1.104: Section 1.104(d) is proposed to be amended to 
provide that if domestic (U.S.) patent application publications are 
cited by the examiner,

[[Page 17955]]

their publication number, publication date, and the names of the 
applicants will be stated.
    Section 1.130: Section 1.130(a) is proposed to be amended to refer 
to published applications (as well as patents). Specifically, 
Sec. 1.130 is proposed to also be applicable to a rejection of a claim 
in an application or patent under reexamination based upon a patent 
application publication in the situation in which the application or 
patent under reexamination and the published application are currently 
owned by the same party.
    Section 1.131: Section 1.131(a) is proposed to be amended to 
provide that: (1) The effective date of a U.S. patent, U.S. patent 
application publication, or international application publication under 
PCT Article 21(2) is the date that it is effective as a reference under 
35 U.S.C. 102(e); and (2) prior invention may not be established under 
Sec. 1.131 if the rejection is based upon either a U.S. patent or a 
U.S. patent application publication of a pending or patented 
application to another or others which claims the same patentable 
invention as defined in Sec. 1.601(n).
    Section 1.131 as proposed also reflects changes proposed in the 
Patent Business Goals Notice of Proposed Rulemaking.
    Section 1.132: Section 1.132 is proposed to be amended to provide 
that an oath or declaration may not be submitted under Sec. 1.132 to 
traverse a rejection if the rejection is based upon a U.S. patent or a 
U.S. patent application publication of a pending or patented 
application to another or others which claims the same patentable 
invention as defined in Sec. 1.601(n).
    Section 1.132 as proposed also reflects changes proposed in the 
Patent Business Goals Notice of Proposed Rulemaking.
    Section 1.137: Section 1.137 is proposed to be amended to: (1) Make 
its provisions applicable to the revival of a terminated reexamination 
proceeding; (2) provide for the revival of an application abandoned 
pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify 
the Office of the filing of an application in a foreign country or 
under a multinational treaty; and (3) reorganize certain provisions for 
clarity.
    The provisions for revival of a terminated reexamination proceeding 
(on the basis of unavoidable and unintentional delay) are discussed in 
a separate rulemaking (to implement the optional inter partes 
reexamination provisions of the ``American Inventors Protection Act of 
1999'').
    As discussed above, if an applicant makes a request (nonpublication 
request) upon filing with the appropriate certifications, the 
application will not be published under 35 U.S.C. 122(b)(1). See 35 
U.S.C. 122(b)(2)(B)(i). An applicant who has made a nonpublication 
request but who subsequently files an application directed to the 
invention disclosed in the application filed in the Office in a foreign 
country, or under a multilateral international agreement, that requires 
eighteen-month publication, must notify the Office of such filing 
within forty-five days after the date of such filing, with the failure 
to timely provide such a notice to the Office resulting in abandonment 
of the application. See 35 U.S.C. 122(b)(2)(B)(iii). 35 U.S.C. 
122(b)(2)(B)(iii), however, also provides that an application abandoned 
as a result of the failure to timely provide such a notice to the 
Office is subject to revival if the ``delay in submitting the notice 
was unintentional.'' See id.
    Section 1.137(f) as proposed provides for the revival of an 
application abandoned for failure to timely notify the Office of a 
foreign filing. 35 U.S.C. 122(b)(2)(B)(iii) provides for revival only 
on the basis of unintentional delay, and not on the basis of 
unavoidable delay. Compare 35 U.S.C. 122(b)(2)(B)(iii)(``delay * * * 
was unintentional'') with 35 U.S.C. 111(a)(4) (``delay * * * was 
unavoidable or unintentional''). Therefore, Sec. 1.137(f) as proposed 
provides that a nonprovisional application abandoned pursuant to 35 
U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the 
filing of an application in a foreign country or under a multinational 
treaty that requires eighteen-month publication may be revived only 
pursuant to Sec. 1.137(b). Section 1.137(f) as proposed also provides 
that the reply requirement of Sec. 1.137(c) is met by the notification 
of such filing in a foreign country or under a multinational treaty, 
but the filing of a petition under Sec. 1.137 will not operate to stay 
any period for reply that may be running against the application. Since 
the Office cannot ascertain whether an application is abandoned under 
35 U.S.C. 122(b)(2)(B)(iii), the Office may continue to process and 
examine the application until the applicant notifies the Office that 
the application is abandoned. Therefore, Sec. 1.137(f) provides that 
the filing of a petition under Sec. 1.137 to revive such an application 
will not operate to stay any period for reply that may be running 
against the application.
    Section 1.137 is also proposed to be amended to locate the ``reply 
requirement'' provisions in Sec. 1.137(c), rather than include 
duplicative provisions concerning the reply requirement in each of 
Sec. 1.137(a) and (b). Thus, the terminal disclaimer provisions of 
Sec. 1.137(c), reconsideration provisions of Sec. 1.137(d), and 
provisional application provisions of Sec. 1.137(e) are proposed to be 
moved to Sec. 1.137(d), Sec. 1.137(e), and Sec. 1.137(g), respectively. 
In addition, Sec. 1.137(c) also provides that in an application 
abandoned for failure to pay the publication fee, the required reply 
must include payment of the publication fee. Thus, even if an 
application abandoned for failure to pay the publication fee is being 
revived solely for purposes of continuity with a continuing 
application, the petition to revive under Sec. 1.137 must include 
payment of the publication fee (unless previously submitted).
    Section 1.137 is also proposed to be amended to take into account 
the provisions of 35 U.S.C. 119(e)(3), which extend the pendency of a 
provisional application to the next succeeding secular or business day 
if the day that is twelve months after the filing date of the 
provisional application falls on a Saturday, Sunday, or Federal holiday 
within the District of Columbia.
    Section 1.137 as proposed also reflects changes proposed in the 
Patent Business Goals Notice of Proposed Rulemaking.
    Section 1.138: Section 1.138(a) is proposed to be amended to add 
``or publication'' to clarify that a letter of express abandonment may 
not be recognized by the Office unless it is actually received by 
appropriate officials in time to act thereon before the date of 
publication.
    Section 1.138(c) is proposed to be added to provide for a petition 
for express abandonment to avoid publication. Section 1.138(c) as 
proposed provides that an applicant seeking to abandon an application 
to avoid publication of the application (see Sec. 1.211(a)(1)) must 
submit a declaration of express abandonment by way of a petition 
including the fee set forth in Sec. 1.17(h) in sufficient time to 
permit the appropriate officials to recognize the abandonment and 
remove the application from the publication process. The petition will 
be granted when it is recognized in sufficient time to avoid 
publication of application information and will be denied when it is 
not recognized in sufficient time to avoid publication of application 
information. This will avert the situation in which an applicant files 
a letter of express abandonment to avoid publication, the letter of 
express abandonment is not recognized in sufficient time to avoid 
publication, upon publication the applicant wishes to rescind the 
letter of express

[[Page 17956]]

abandonment, and the Office cannot revive the application (once the 
letter of express abandonment is recognized) because the application 
was expressly and intentionally abandoned by the applicant.
    As discussed above, the publication process is a fourteen-week 
process, and applicant should expect that the petition will not be 
granted and application will be published in regular course unless such 
declaration of express abandonment and petition are received by the 
appropriate officials more than four weeks prior to the projected date 
of publication.
    Section 1.138 as proposed (Sec. 1.138(b)) also reflects changes 
proposed in the Patent Business Goals Notice of Proposed Rulemaking.
    Section 1.165: Section 1.165 is proposed to be amended to provide 
that if plant application drawings include a color drawing or 
photograph, a black and white photocopy that accurately depicts, to the 
extent possible, the subject matter shown in the color drawing or 
photograph must be submitted.
    Section 1.211: Sections 1.211, 1.213, 1.215, 1.217, 1.219, and 
1.221 are proposed to be added to provide for the pre-grant publication 
of applications under 35 U.S.C. 122(b).
    Section 1.211(a) as proposed provides that (with certain 
exceptions) each U.S. national application for patent filed in the 
Office under 35 U.S.C. 111(a) and each international application in 
compliance with 35 U.S.C. 371 will be published promptly after the 
expiration of a period of eighteen months from the earliest filing date 
for which a benefit is sought under title 35, United States Code.
    Section 1.211(a)(1) as proposed provides that the Office will not 
publish applications that are recognized as no longer pending. The 
phrase ``that are recognized by the Office as no longer pending'' is 
meant to cover the situation in which the period for reply (either the 
shortened statutory period or the maximum extendable period for reply) 
to an Office action has expired, but the Office has not yet entered the 
change of status (to abandoned) of the application in the PALM system 
and mailed a notice of abandonment. An application will remain in the 
publication process until the PALM system indicates that the 
application is abandoned. Obviously, once the PALM system indicates 
that an application is abandoned, the Office will attempt to remove the 
application from the publication process and avoid dissemination of 
application information. How much dissemination of application 
information can be avoided depends upon how close it is to the 
publication date when the Office recognizes the application as 
abandoned. Unless an applicant has received a notice of abandonment, an 
applicant who wants to abandon the application to avoid publication 
must file a petition under Sec. 1.138(c) to expressly abandon the 
application and avoid publication. An applicant permitting an 
application to become abandoned (for failure to reply to an Office 
action) to avoid publication by passively waiting for the Office to 
recognize that the application has become abandoned must bear the risk 
that the Office will not recognize that the application has become 
abandoned and change the status of the application in the PALM system 
in sufficient time to avoid publication.
    Section 1.211(a)(2) as proposed provides that the Office will not 
publish applications that are national security classified (see 
Sec. 5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under 
national security review.
    Section 1.211(a)(3) as proposed provides that the Office will not 
publish applications that have issued as a patent in sufficient time to 
be removed from the publication process. If the pre-grant publication 
process coincides with the patent issue process, the Office will 
continue with the pre-grant publication process until a patent actually 
issues. This is because there are many instances in which the Office 
mails a notice of allowance (Sec. 1.311) in an application but the 
application does not issue as a patent in regular course (abandonment 
due to failure to pay the issue fee, or withdrawal from issue either 
sua sponte by the Office or on petition of the applicant). Therefore, 
the Office will not discontinue the pre-grant publication process until 
a patent has actually issued. Since the Office cannot discontinue the 
pre-grant publication process during the last two weeks of the 
publication process, this will result in a few applications being 
issued as a patent and subsequently being published as a patent 
application publication. The Office will refund the publication fee (if 
paid) if the application is not published as a patent application 
publication, but will not refund the publication fee if the application 
is published as a patent application publication, even if published 
after the patent issues.
    Section 1.211(a)(4) as proposed also provides that the Office will 
not publish applications that were filed with a nonpublication request 
in compliance with Sec. 1.213(a).
    Section 1.211(b) as proposed provides that provisional applications 
under 35 U.S.C. 111(b) shall not be published. Section 1.211(b) as 
proposed also provides that design applications under 35 U.S.C. chapter 
16 and reissue applications under 35 U.S.C. chapter 25 shall not be 
published under Sec. 1.211. Provisional applications under 35 U.S.C. 
111(b) and design applications under 35 U.S.C. chapter 16 are excluded 
from the pre-grant publication provisions of 35 U.S.C. 122(b). See 35 
U.S.C. 122(b)(2)(A)(iii) and (iv). Reissue applications under 35 U.S.C. 
chapter 25 are not maintained in confidence under 35 U.S.C. 122(a). See 
Sec. 1.11(b).
    Section 1.211(c) as proposed provides that the Office will not 
publish an application filed under 35 U.S.C. 111(a) until it includes 
the basic filing fee, an English translation if in a language other 
than English, and an executed oath or declaration. Section 1.211(c) as 
proposed also provides that publishing may be delayed until the 
application includes a specification on papers in compliance with 
Sec. 1.52 and having an abstract (Sec. 1.72(b)), drawings in compliance 
with Sec. 1.84, and a sequence listing in compliance with Secs. 1.821 
through 1.825 (if applicable), and until any petition under Sec. 1.47 
is granted. That is, if an application does not contain the application 
content on papers or drawings of sufficient quality to create a patent 
application publication by eighteen months from its earliest claimed 
filing date, the Office will publish the application as soon as 
practical after these deficiencies are corrected.
    Section 1.211(d) as proposed provides that the Office may refuse to 
publish an application, or to include a portion of an application in 
the patent application publication (Sec. 1.215), if publication of the 
application or portion thereof would violate Federal or state law, or 
if the application or portion thereof contains offensive or disparaging 
material. A similar provision exists in PCT practice, in that the 
International Bureau may omit expressions or drawings in an 
international application from its publications if the expressions or 
drawings are contrary to morality or public order, or contain 
disparaging statements. See PCT Article 21(6) and Rule 9.
    Section 1.211(e) as proposed provides that the publication fee set 
forth in Sec. 1.18(d) must be paid in each application published under 
this section before the patent will be granted, but does not require 
that the publication fee be paid prior to publication. If an 
application is subject to publication under this section, the sum 
specified in the notice of allowance under Sec. 1.311 will also include 
the publication fee

[[Page 17957]]

which must be paid within three months from the date of mailing of the 
notice of allowance to avoid abandonment of the application. This 
three-month period is not extendable. If the application is not 
published under this section, the publication fee (if paid) will be 
refunded.
    Section 1.213: Section 1.213 implements the provisions of 35 U.S.C. 
122(b)(2)(B)(i)-(iii). An applicant may request that the application 
not be published under 35 U.S.C. 122(b) and Sec. 1.211 if the invention 
disclosed in an application has not been and will not be the subject of 
an application filed in another country, or under a multilateral 
international agreement, that requires publication of applications 
eighteen months after filing. Section 1.213(a) requires that a request 
that an application not be published under 35 U.S.C. 122(b) 
(nonpublication request) must: (1) Be submitted with the application 
upon filing; (2) state in a conspicuous manner that the application is 
not to be published under 35 U.S.C. 122(b); (3) contain a certification 
that the invention disclosed in the application has not been and will 
not be the subject of an application filed in another country, or under 
a multilateral agreement, that requires publication at eighteen months 
after filing; and (4) be signed in compliance with Sec. 1.33(b). The 
requirement that a nonpublication request be submitted ``upon filing'' 
is a requirement of statute (35 U.S.C. 122(b)(2)(B)(i)), and, as such, 
the Office must deny any petition requesting a waiver of this provision 
of Sec. 1.213(a).
    Section 1.213(b) as proposed provides that the applicant may 
rescind a nonpublication request at any time. See 35 U.S.C. 
122(b)(2)(B)(ii). Section 1.213(b) as proposed also provides that a 
request to rescind a nonpublication request under Sec. 1.213(a) must: 
(1) Identify the application to which it is directed (Sec. 1.5); (2) 
state in a conspicuous manner that the request that the application is 
not to be published under 35 U.S.C. 122(b) is rescinded; and (3) be 
signed in compliance with Sec. 1.33(b). Once a request under 
Sec. 1.213(b) to rescind a nonpublication request is filed and 
processed by the Office, the application will be scheduled for 
publication in accordance with Sec. 1.211(a).
    Section 1.213(c) reiterates the provisions of 35 U.S.C. 
122(b)(2)(B)(iii). Section 1.213(c) specifically states that if an 
applicant who has submitted a nonpublication request under 
Sec. 1.213(a) subsequently files an application directed to the 
invention disclosed in the application in which the nonpublication 
request was submitted in another country, or under a multilateral 
international agreement, that requires publication of applications 
eighteen months after filing, the applicant must notify the Office of 
such filing within forty-five days after the date of the filing of such 
foreign or international application. The failure to timely notify the 
Office of the filing of such foreign or international application shall 
result in abandonment of the application in which the nonpublication 
request was submitted. See 35 U.S.C. 122(b)(2)(B)(iii).
    Section 1.215: Section 1.215(a) as proposed indicates that the 
publication of an application under 35 U.S.C. 122(b) shall include a 
patent application publication. The Office will not mail a paper copy 
of the patent application publication to the applicant, but will mail a 
notice to the applicant indicating that the application has been 
published.
    Section 1.215(a) as proposed also provides that the date of 
publication shall be indicated on the patent application publication.
    Section 1.215(a) as proposed also provides that (except as 
discussed below in Sec. 1.215(c)) the patent application publication 
will be based upon the application papers deposited on the filing date 
of the application, except for preliminary amendments, as well as the 
executed oath or declaration submitted to complete the application, and 
any application papers or drawings submitted in reply to a 
preexamination notice requiring a title and abstract in compliance with 
Sec. 1.72, application papers in compliance with Sec. 1.52, drawings in 
compliance with Sec. 1.84, or a sequence listing in compliance with 
Secs. 1.821 through 1.825. That is, the patent application publication 
will not reflect the application as it was amended during the 
examination process, but will only reflect the application as recorded 
in the Office's PACR database.
    Section 1.215(b) as proposed provides a mechanism by which 
applicants may have assignee information (the name and address of the 
assignee of the entire right, title, and interest in an application) 
included on the patent application publication. To have assignee 
information included on the patent application publication, the 
applicant must include a separate paper indicating that such 
information is being provided for inclusion on the patent application 
publication. The assignee information might not be included on the 
patent application publication if such paper is not included with the 
application on filing. Finally, Sec. 1.215(b) clarifies that providing 
assignee information for inclusion on the patent application 
publication does not substitute for an assignment submitted to the 
Office for recording under 37 CFR part 3.
    Section 1.215(c) as proposed provides a mechanism by which 
applicants may have the patent application publication reflect the 
application as amended during the examination process (rather than the 
application as recorded in the Office's PACR database). Section 
1.215(c) as proposed provides that the Office will use an applicant-
supplied copy of the application (specification, drawings, and oath or 
declaration), provided that: (1) The copy is in compliance with the 
Office electronic filing system (EFS) requirements; and (2) the EFS 
copy is filed within one month of the actual filing date of the 
application or fourteen months of the earliest filing date for which a 
benefit is sought, whichever is later.
    The fourteen-month period differs from the sixteen-month period 
provided in Sec. 1.217 for submitting a redacted copy of an application 
because the sixteen-month period provided in Sec. 1.217 is not based 
upon the fourteen-week publication cycle but is provided for by statute 
(35 U.S.C. 122(b)(2)(B)(v)).
    Section 1.215(d) as proposed provides that if the copy of the 
application does not comply with the Office EFS requirements, the 
Office will publish the application based upon the application records 
in the Office's PACR database (as provided in Sec. 1.215(a)). If, 
however, the Office has not started the publication process, the Office 
may use an untimely filed copy of the application supplied by the 
applicant under Sec. 1.215(c) in creating the patent application 
publication.
    Section 1.217: Section 1.217(a) as proposed implements the 
provisions of 35 U.S.C. 122(b)(2)(B)(v), and provides that if an 
applicant has filed applications in one or more foreign countries, 
directly or through a multilateral international agreement, and such 
foreign-filed applications or the description of the invention in such 
foreign-filed applications is less extensive than the application or 
description of the invention in the application filed in the Office, 
the applicant may submit a redacted copy of the application filed in 
the Office for publication, eliminating any part or description of the 
invention that is not also contained in any of the corresponding 
applications filed in a foreign country. Section 1.217(a) as proposed 
also provides that the Office will publish the application as provided 
in Sec. 1.215(a) unless the applicant files a redacted copy of the 
application in

[[Page 17958]]

compliance with Sec. 1.217 within sixteen months after the earliest 
filing date for which a benefit is sought under title 35, United States 
Code. This sixteen-month period is provided by statute (35 U.S.C. 
122(b)(2)(B)(v)), and as such, requests for waiver of this sixteen-
month period will be denied.
    As discussed above, this sixteen-month period provided in 
Sec. 1.217 differs from the fourteen-month period provided in 
Sec. 1.215(c) because the sixteen-month period provided in Sec. 1.217 
is not based upon the fourteen-week publication cycle but is provided 
for by statute (35 U.S.C. 122(b)(2)(B)(v)). If a redacted copy of an 
application is submitted in compliance with Sec. 1.217 but later than 
four months prior to the projected publication date, the Office will be 
required to reprocess the patent application publication (for which 
assembly will have already started) using the redacted copy of the 
application provided by applicant.
    Section 1.217(b) as proposed provides that the redacted copy of the 
application must be submitted in compliance with the Office EFS 
requirements. Section 1.217(b) as proposed also provides that the title 
of the invention in the redacted copy of the application must 
correspond to the title of the application at the time the redacted 
copy of the application is submitted to the Office. The Office uses the 
title of the invention (among other information) as provided in an EFS 
copy of an application to confirm the identity of the application for 
which the EFS copy is submitted. Thus, if a portion of the title has 
been redacted such that the title (as redacted) in the EFS copy of the 
application is different from the title of the invention for the 
application as shown in PALM, it will appear that the redacted EFS copy 
of the application incorrectly identifies the application for which the 
redacted EFS copy is submitted. If an applicant wants to redact a 
portion of the title, the applicant must first submit an amendment to 
the title of the invention such that it will correspond to the title as 
redacted. Section 1.217(b) as proposed also provides that if the 
redacted copy of the application does not comply with the Office EFS 
requirements, the Office will publish the application based upon the 
unredacted records in the Office's PACR database.
    Section 1.217(c) as proposed provides that the applicant must also 
concurrently submit in paper (Sec. 1.52(a)) to be filed in the 
application: (1) A certified copy of each foreign-filed application 
that corresponds to the application for which a redacted copy is 
submitted; (2) a translation of each such foreign-filed application 
that is in a language other than English, and a statement that the 
translation is accurate; (3) a marked-up copy of the application 
showing the redactions in brackets; and (4) a certification that the 
redacted copy of the application eliminates only a part or description 
of the invention that is not contained in any application filed in a 
foreign country, directly or through a multilateral international 
agreement, that corresponds to the application filed in the Office. The 
provisions of Sec. 1.217(c) are designed to ensure that any patent 
application publication based upon a redacted copy of an application 
contains the parts and description of the invention contained in any of 
the corresponding applications filed in a foreign country.
    Section 1.217(d) as proposed provides a mechanism for obtaining an 
appropriately redacted copy of the application contents to provide to 
members of the public requesting a copy of the file wrapper and 
contents of the application. Section 1.217(d) as proposed provides that 
the Office will provide a complete unredacted copy of the file wrapper 
and contents of an application for which a redacted copy was submitted 
under Sec. 1.217 (upon payment of a fee) unless the applicant complies 
with the requirements of Sec. 1.217(d). Since the processing required 
to provide redacted copies of the application content is the result of 
an applicant choosing to submit a redacted copy under Sec. 1.217, it is 
appropriate to require the applicant to timely provide appropriate 
redacted copies of Office correspondence and applicant submissions, and 
to pay a processing fee for the special handling required for these 
papers, should the applicant wish to maintain the redacted portions of 
the application in confidence prior to the grant of a patent.
    Section 1.217(d)(1) as proposed provides that the applicant must 
accompany the submission required by Sec. 1.217(c) with: (1) a copy of 
any Office correspondence previously received by applicant including 
any desired redactions, and a second copy of all Office correspondence 
previously received by applicant showing the redacted material in 
brackets; and (2) a copy of each submission previously filed by the 
applicant including any desired redactions, and a second copy of each 
submission previously filed by the applicant showing the redacted 
material in brackets. Section 1.217(d)(2) as proposed provides that the 
applicant must also: (1) Within one month of the date of mailing of any 
correspondence from the Office, file a copy of such Office 
correspondence including any desired redactions, and a second copy of 
such Office correspondence showing the redacted material in brackets; 
and (2) with each submission by the applicant, include a copy of such 
submission including any desired redactions, and a second copy of such 
submission showing the redacted material in brackets. Section 
1.217(d)(3) as proposed provides that each submission under 
Sec. 1.217(d)(1) or Sec. 1.217(d)(2) must also be accompanied by the 
processing fee set forth in Sec. 1.17(i) and a certification that the 
redactions included therein are limited to the elimination of material 
that is relevant only to the part or description of the invention that 
is not contained in the redacted copy of the application submitted for 
publication. If the applicant fails to comply with these requirements, 
the Office will provide a complete unredacted copy of the file wrapper 
and contents of the application to any member of the public (upon 
payment of a fee).
    Section 1.217(e) provides that the certificate of mailing or 
transmission procedure set forth in provisions of Sec. 1.8 do not apply 
to the time periods set forth in Sec. 1.217.
    Section 1.219: Section 1.219 implements the provisions of 35 U.S.C. 
122(b)(1) that authorize (but do not require) the Office to publish 
earlier than at the eighteen-month period set forth in 35 U.S.C. 
122(b)(1) at the request of the applicant. Section 1.219 as proposed 
provides that any request for early publication must be accompanied by 
the publication fee set forth in Sec. 1.18(d). Section 1.219 as 
proposed provides that if the applicant does not submit a copy of the 
application in compliance with the Office EFS requirements, the Office 
will publish the application based upon the application records in the 
Office's PACR database (as provided in Sec. 1.215(a)). Section 1.219 as 
proposed also provides that no consideration will be given to requests 
for publication on a certain date (which includes a request that 
certain applications be published on the same date), and such requests 
will be treated as a request for publication as soon as possible.
    Section 1.221: Section 1.221 provides for voluntary publication of 
applications filed before, but pending on, November 29, 2000, and for 
requests for republication of applications previously published under 
Sec. 1.211. Applicants may request republication of an application 
under Sec. 1.221 to obtain a patent application publication that: (1) 
corrects immaterial errors or errors not the result of Office mistake; 
or (2)

[[Page 17959]]

reflects the application as amended during prosecution of the 
application.
    Section 1.221(a) as proposed provides that a request for voluntary 
publication or republication must include a copy of the application in 
compliance with the Office EFS requirements and be accompanied by the 
publication fee set forth in Sec. 1.18(d) and the processing fee set 
forth in Sec. 1.17(i). Since voluntary publication or republication of 
applications is not mandated by 35 U.S.C. 122(b)(1), if a request for 
voluntary publication or republication does not comply with the 
requirements of Sec. 1.221, or the copy of the application does not 
comply with the Office EFS requirements, the Office will not publish 
the application based upon the application records in the Office's PACR 
database (as provided in Sec. 1.215(a)) but will simply not publish the 
application and will refund the publication fee (but not the processing 
fee).
    Section 1.221(b) as proposed provides that the Office will grant a 
request for a corrected or revised patent application publication other 
than as provided in Sec. 1.221(a) only when the Office makes a material 
mistake which is apparent from Office records. The phrase ``material 
mistake'' means a mistake that affects the public's ability to 
appreciate the technical disclosure of the patent application 
publication or determine the scope of the provisional rights that an 
applicant may seek to enforce upon issuance of a patent (e.g., error in 
the claims, serious error in a portion of the written description or 
drawings that is necessary to support the claims). The Office will 
permit applicants to review the bibliographic information contained in 
the Office's PALM database via its PAIR system. Therefore, applicants 
are expected to review that information and bring errors to the 
Office's attention at least fourteen weeks before the projected date of 
publication. Section 1.221(b) as proposed also provides that any 
request for a corrected or revised patent application publication other 
than as provided in Sec. 1.221(a) must be filed within two months from 
the date of the patent application publication, and that this period is 
not extendable.
    Section 1.291: Section 1.291(a)(1) implements the provisions of 35 
U.S.C. 122(c), which specify that the Office shall establish 
appropriate procedures to ensure that no protest or other form of pre-
issuance opposition to the grant of a patent may be initiated after 
publication of the application without the applicant's express written 
consent. Section 1.291 is proposed to be amended to provide that a 
protest must be submitted prior to the date the application was 
published or the mailing of a notice of allowance under Sec. 1.311, 
whichever occurs first.
    Section 1.292: Section 1.292(b)(3) is proposed to be amended to 
require that any petition to institute a public use proceeding be 
submitted prior to the date the application was published or mailing of 
a notice of allowance under Sec. 1.311, whichever occurs first.
    Section 1.311: Section 1.311(a) is proposed to be amended to 
provide that the sum specified in the notice of allowance may (in 
addition to the issue fee) also include the publication fee, in which 
case the issue fee and publication fee (Sec. 1.211(f)) must both be 
paid within three months from the date of mailing of the notice of 
allowance to avoid abandonment of the application. Section 1.311(a) is 
also amended to provide that this three-month period is not extendable. 
Section 1.311(b) is proposed to be amended to provide that an 
authorization to charge any of the post-allowance fees set forth in 
Sec. 1.18 to a deposit account may be filed in an individual 
application only after mailing of the notice of allowance.
    Section 1.311(b) as proposed also reflects changes proposed in the 
Patent Business Goals Notice of Proposed Rulemaking.
    Section 1.417: Section 1.417 is proposed to be added to provide for 
the submission of international publications or English language 
translations of international applications pursuant to 35 U.S.C. 
154(d)(4). This section as proposed sets forth the requirements for the 
filing of an English language international publication or translation 
of an international application in order to ensure proper handling by 
the Office. Section 1.417 as proposed provides that such a submission 
must clearly identify the international application to which it 
pertains under Sec. 1.5(a), and unless it is being submitted pursuant 
to Sec. 1.494 or Sec. 1.495, must be clearly identified as a submission 
pursuant to 35 U.S.C. 154(d)(4). Failure to properly identify such 
submissions will result in the English language international 
publication or translation of the description and claims of the 
international application being processed as the filing of a national 
application under 35 U.S.C. 111(a). Additionally, failure to properly 
identify the international publication or translation as a submission 
under 35 U.S.C. 154(d)(4) may cause the Office to be unable to properly 
track or retrieve the international publication or translation in 
relation to its international application number. Section 1.417 as 
proposed also provides that such submissions should be marked ``Box 
PCT.''
    The submission of an international publication or translation of an 
international application for the purposes of national stage entry in 
accordance with Sec. 1.494 or Sec. 1.495 may also be relied upon as the 
submission for the purposes of 35 U.S.C. 154(d)(4). Likewise, an 
earlier filed international publication or translation (submitted for 
the purposes of 35 U.S.C. 154(d)(4) and properly identified as such) 
may also be relied upon for the purpose of satisfying the requirement 
of 35 U.S.C. 371(c)(2). If applicant intends to rely on such an earlier 
filed international publication or translation, the submission of 
documents under Sec. 1.494(f) and Sec. 1.495(g) should include an 
indication that the international publication or translation has been 
previously submitted for the purposes of 35 U.S.C. 154(d)(4) to avoid 
the mailing of either a Notice of Abandonment (PCT/DO/EO/909) 
indicating that a copy of the international application was not timely 
filed, or a Notice of Missing Requirements (PCT/DO/EO/905) indicating 
that a translation of the international application is required. While 
(as discussed above) applicants may rely on an earlier filed 
international publication or translation for the purposes of national 
stage entry and processing, the Office strongly recommends that a 
second copy of the international publication or translation be included 
with the initial national stage papers in order to ensure the integrity 
of the first submitted international publication or translation. 
Otherwise, processing of the national stage application may result in 
the alteration of the originally filed international publication or 
translation through, e.g., the entry of amendments.
    Section 1.494: Section 1.494(f) is amended to exempt a copy of the 
international publication or translation of the international 
application identified as provided in Sec. 1.417 from the documents 
that must be clearly identified as a submission to enter the national 
stage under 35 U.S.C. 371 to avoid being considered a submission under 
35 U.S.C. 111(a).
    Section 1.495: Section 1.495(g) is amended to exempt a copy of the 
international publication or translation of the international 
application identified as provided in Sec. 1.417 from the documents 
that must be clearly identified as a submission to enter the national 
stage under 35 U.S.C. 371 to avoid being considered a submission under 
35 U.S.C. 111(a).
    Part 5
    Section 5.1: Section 5.1 is proposed to be amended to implement the 
provisions of 35 U.S.C. 122(d), which

[[Page 17960]]

specify that the application will not be published under 35 U.S.C. 
122(b)(1) if publication or disclosure of the application would be 
detrimental to national security. Section 5.1 as proposed provides that 
an application under national security review will not be published at 
least until six months from its filing date or three months from the 
date the application was referred to a defense agency, whichever is 
later. These are the current national security review screening time 
frames for foreign filing license purposes. Section 5.1 as proposed 
also provides that a national security classified patent application 
will not be published under Sec. 1.211 of this chapter or allowed under 
Sec. 1.311 of this chapter until the application is declassified and 
any secrecy order under Sec. 5.2(a) has been rescinded.
    Section 5.1 as proposed also reflects changes proposed in the 
Patent Business Goals Notice of Proposed Rulemaking.

Classification

Regulatory Flexibility Act

    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 notice, if adopted, 
would not have a significant impact on a substantial number of small 
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). This rulemaking 
implements the eighteen-month publication provisions of Secs. 4501 
through 4508 of the ``American Inventors Protection Act of 1999.'' The 
changes proposed in this notice (if adopted) would provide procedures 
for the eighteen-month publication of patent applications.
    An applicant may file a nonpublication request (opt-out of 
eighteen-month publication) if the invention disclosed in the 
application has not and will not be the subject of an application filed 
in another country, or under a multilateral international agreement, 
that requires eighteen-month publication. Since almost all small 
entities file patent applications only in the United States, almost all 
small entities can choose whether they want their applications to be 
subject to eighteen-month publication. The Office receives roughly 
60,000 applications each year from small entities. Based upon input 
from small entity groups during the legislative process, the Office 
expects that small entities will file a nonpublication request for 
roughly 30,000 applications (fifty percent) with the remaining 30,000 
applications being subject to eighteen-month publication. Since the 
current application allowance rate is roughly sixty-seven percent, 
roughly 20,000 applications subject to eighteen-month publication will 
be allowed, at which time a publication fee ($300.00) will be due. 
Since the publication fee is less than one-third of the combined cost 
of the application filing fee ($345.00) and patent issue fee ($605.00), 
there will not be a significant economic impact on a substantial number 
of small entities due to eighteen-month publication.

Executive Order 13132

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

Paperwork Reduction Act

    This notice of proposed rulemaking 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 
of proposed rulemaking have been reviewed and previously approved by 
OMB under OMB control numbers: 0651-0021, 0651-0027, 0651-0031, 0651-
0032, 0651-0033, and 0651-0034.
    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 number 0651-0031 and 0651-
0032. The Patent and Trademark Office is submitting these information 
collections to OMB for its review and approval because this notice of 
proposed rulemaking will add the nonpublication request, rescission of 
the nonpublication request, electronic filing system copy of the 
application (for publication purposes), copy of the application file 
content showing redactions, and petition to accept a delayed priority 
claim to these collections.
    As discussed above, this notice of proposed rulemaking also 
involves currently approved information collections under OMB control 
numbers: 0651-0021, 0651-0027, 0651-0033, and 0651-0034. The Patent and 
Trademark Office is not resubmitting those information collection 
packages to OMB for its review and approval because the changes in this 
notice of proposed rulemaking do not affect the information collection 
requirements associated with the information collections under those 
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.

    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 Institutions, 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 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: 0651-0027.
    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 Institutions.
    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.

[[Page 17961]]

    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 of 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 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: 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 Institutions, 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 Institutions, 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 on the 
filing of applications for patent in foreign countries.
    The principal impact of the changes in this notice of proposed 
rulemaking is to implement the changes to Office practice necessitated 
by Secs. 4501 through 4508 of the ``American Inventors Protection Act 
of 1999'' (enacted into law by Sec. 1000(a)(9), Division B, of Public 
Law 106-113).
    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, 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, N.W., Room 10235, Washington, D.C. 20503, 
Attention: Desk Officer for the Patent and Trademark Office.
    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

37 CFR Part 1

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

37 CFR Part 5

    Classified information, foreign relations, inventions and patents.
    For the reasons set forth in the preamble, 37 CFR Parts 1 and 5 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. 2(b)(2), unless otherwise noted.

    2. Section 1.9 is amended by revising paragraph (c) to read as 
follows:


Sec. 1.9  Definitions.

* * * * *
    (c) A published application as used in this chapter means an 
application for patent which has been published under 35 U.S.C. 122(b).
* * * * *
    3. Section 1.11 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.11  Files open to the public.

    (a) The specification, drawings, and all papers relating to the 
file of an abandoned published application, except if a redacted copy 
of the application was used for the patent application publication, a 
patent, or a statutory invention registration are open to inspection by 
the public, and copies may be obtained upon the payment of

[[Page 17962]]

the fee set forth in Sec. 1.19(b)(2). See Sec. 2.27 for trademark 
files.
* * * * *
    4. Section 1.12 is amended by revising paragraphs (a)(1) and (b) to 
read as follows:


Sec. 1.12  Assignment records open to public inspection.

    (a)(1) Separate assignment records are maintained in the Patent and 
Trademark Office for patents and trademarks. The assignment records, 
relating to original or reissue patents, including digests and indexes, 
for assignments recorded on or after May 1, 1957, published patent 
applications, and assignment records relating to pending or abandoned 
trademark applications and to trademark registrations, for assignments 
recorded on or after January 1, 1955, are open to public inspection at 
the Patent and Trademark Office, and copies of those assignment records 
may be obtained upon request and payment of the fee set forth in 
Sec. 1.19 and Sec. 2.6 of this chapter.
* * * * *
    (b) Assignment records, digests, and indexes relating to any 
pending or abandoned patent application which has not been published 
under 35 U.S.C. 122(b) are not available to the public. Copies of any 
such assignment records and information with respect thereto shall be 
obtainable only upon written authority of the applicant or applicant's 
assignee or attorney or agent or upon a showing that the person seeking 
such information is a bona fide prospective or actual purchaser, 
mortgagee, or licensee of such application, unless it shall be 
necessary to the proper conduct of business before the Office or as 
provided by these rules.
* * * * *
    5. Section 1.13 is revised to read as follows:


Sec. 1.13  Copies and certified copies.

    (a) Non-certified copies of patents, patent application 
publications, and trademark registrations and of any records, books, 
papers, or drawings within the jurisdiction of the United States Patent 
and Trademark Office and open to the public, will be furnished by the 
United States Patent and Trademark Office to any person, and copies of 
other records or papers will be furnished to persons entitled thereto, 
upon payment of the fee therefor.
    (b) Certified copies of patents, patent application publications, 
and trademark registrations and of any records, books, papers, or 
drawings within the jurisdiction of the United States Patent and 
Trademark Office and open to the public or persons entitled thereto 
will be authenticated by the seal of the United States Patent and 
Trademark Office and certified by the Director, or in his or her name 
attested by an officer of the United States Patent and Trademark Office 
authorized by the Director, upon payment of the fee for the certified 
copy.
    6. Section 1.14 is amended by revising paragraphs (a), (b), (c) and 
(e), and adding paragraphs (h), (i) and (j) to read as follows:


Sec. 1.14  Patent applications preserved in confidence.

    (a) Confidentiality of patent application information. Patent 
applications that have not been published under 35 U.S.C. 122(b) are 
generally preserved in confidence pursuant to 35 U.S.C. 122(a). 
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;
    (ii) Whether the application has been published under 35 U.S.C. 
122(b); and
    (iii) 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 one 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, a U.S. patent 
application publication, or an international application publication), 
or in a U.S. application open to public inspection (Sec. 1.11(b), or 
paragraph (e)(2)(i) or (e)(2)(ii) 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.
    (4) The application claims the benefit of the filing date of an 
application for which status information may be provided pursuant to 
paragraphs (b)(1) through (b)(3) of this section.
    (c) When copies may be supplied. A copy of an application-as-filed 
or a file wrapper and contents may, subject to paragraph (j) of this 
section (addresses international applications), be supplied by the 
Office to the public if any of the following apply:
    (1) Application-as-filed. If a U.S. patent application publication 
or patent incorporates by reference, or includes a specific reference 
under 35 U.S.C. 119(e) or 120 to, a pending or abandoned application, a 
copy of that application-as-filed may be provided to any person upon 
written request, including the fee set forth in Sec. 1.19(b)(1).
    (2) File wrapper and contents. A copy of the specification, 
drawings, and all papers relating to the file of an abandoned or 
pending published application may be provided to any person upon 
written request, including the fee set forth in Sec. 1.19(b)(2). If a 
redacted copy of the application was used for the patent application 
publication, the copy of the specification, drawings, and papers may be 
limited to a redacted copy.
* * * * *
    (e) Public access to a pending or abandoned application may be 
provided. Access to an application may, subject to paragraph (j) of 
this section, 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 application publication or 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.
* * * * *
    (h) [Reserved]
    (i) International applications. (1) Copies of international 
application files for international applications filed on or after 
November 29, 2000, and which designate the U.S. and which have been 
published in accordance with PCT Article 21(2), or copies of a document 
in such application files, will be furnished in accordance with Patent 
Cooperation Treaty (PCT) Articles 30 and 38 and PCT Rules 94.2 and 
94.3, upon written request including a showing that the publication of 
the application has occurred and that the U.S. was

[[Page 17963]]

designated, and upon payment of the appropriate fee (Sec. 1.19(b)(2) or 
Sec. 1.19(b)(3)), if:
    (i) With respect to the Home Copy, the international application 
was filed with the U.S. Receiving Office;
    (ii) With respect to the Search Copy, the U.S. acted as the 
International Searching Authority; or
    (iii) With respect to the Examination Copy, the United States acted 
as the International Preliminary Examining Authority, an International 
Preliminary Examination Report has issued, and the United States was 
elected.
    (2) A copy of an English language translation of an international 
application, which has been filed in the Patent and Trademark Office 
pursuant to 35 U.S.C. 154(2)(d)(4) will be furnished upon written 
request including a showing that the publication of the application in 
accordance with PCT Article 21(2) has occurred and that the U.S. was 
designated, and upon payment of the appropriate fee (Sec. 1.19(b)(2) or 
Sec. 1.19(b)(3)).
    (3) Access to international application files for international 
applications filed on or after November 29, 2000, and which designate 
the U.S. and which have been published in accordance with PCT Article 
21(2), or copies of a document in such application files, will be 
furnished in accordance with Patent Cooperation Treaty (PCT) Articles 
30 and 38 and PCT Rules 94.2 and 94.3, upon written request including a 
showing that the publication of the application has occurred and that 
the U.S. was designated.
    (4) In accordance with PCT Article 30, copies of an international 
application-as-filed under paragraph (c)(1) of this section will not be 
provided prior to the international publication of the application 
pursuant to PCT Article 21(2).
    (5) Access to international application files under paragraphs (e) 
and (i)(3) of this section will not be permitted with respect to the 
Examination Copy in accordance with PCT Article 38.
    (j) Access or copies in other circumstances. The Office, either sua 
sponte or on petition, may also provide access or copies of all or part 
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, all or part 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 all or part of the 
application.
    7. Section 1.17 is amended by revising its heading and paragraphs 
(h), (i), (l), (m) and (p) and adding paragraph (u) to read as follows:


Sec. 1.17  Patent application and reexamination processing fees.

* * * * *
    (h) For filing a petition 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. 1.47--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. 1.84--for accepting color drawings or photographs.
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. 1.138(c)--to expressly abandon an application to avoid 
publication.
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. 1.644(e)--for petition in an interference.
Sec. 1.644(f)--for request for reconsideration of a decision on 
petition in an interference.
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 one of the following 
sections which refers to this paragraph: 130.00

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. 1.99(e)--for processing a belated submission under Sec. 1.99.
Sec. 1.103(b)--for requesting limited suspension of action in 
continued prosecution application.
Sec. 1.217--for processing a redacted copy of a paper submitted in 
the file of an application in which a redacted copy was submitted 
for the patent application publication.
Sec. 1.221--for requesting voluntary publication or republication of 
an 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.

* * * * *
    (l) For filing a petition for the revival of an unavoidably 
abandoned application under 35 U.S.C. 111, 133, 364, or 371, for 
delayed payment of the issue fee under 35 U.S.C. 151, or for the 
revival of an unavoidably terminated reexamination proceeding under 35 
U.S.C. 133 (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 revival of an unintentionally 
abandoned application, for the unintentionally delayed payment of the 
fee for issuing a patent, or for the revival of an unintentionally 
terminated reexamination proceeding 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

* * * * *
    (p) For an information disclosure statement under Sec. 1.97(c) or 
(d) or a submission under Sec. 1.99: 240.00
* * * * *
    (u) For the acceptance of an unintentionally delayed claim for 
priority under 35 U.S.C. 119, 120, 121, or 365 (Secs. 1.55 and 1.78): 
1,210.00
    8. Section 1.18 is amended by revising its heading and adding 
paragraph (d) to read as follows:


Sec. 1.18    Patent post-allowance (including issue) fees.

* * * * *
    (d) Publication fee: 300.00


Sec. 1.24    [Removed and Reserved]

    9. Section 1.24 is removed and reserved.
    10. Section 1.52 is amended by revising paragraph (d) to read as 
follows:


Sec. 1.52  Language, paper, writing, margins.

* * * * *

[[Page 17964]]

    (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 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. See Sec. 1.78(a) for the requirements 
for claiming the benefit of such provisional application in a 
nonprovisional application.
    11. Section 1.55 is amended by revising paragraph (a) and adding 
paragraph (c) 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(a) and (b).
    (1)(i) In an original application filed under 35 U.S.C. 111(a), the 
claim for priority must be presented during the pendency of the 
application, and within the later of four months from the actual filing 
date of the application or sixteen months from the filing date of the 
prior foreign application. This time period is not extendable. The 
claim must identify the foreign application for which priority is 
claimed, as well as any foreign application for the same subject matter 
and having a filing date before that of the application for which 
priority is claimed, by specifying the application number, country (or 
intellectual property authority), day, month, and year of its filing. 
The time period in this paragraph does not apply to an application for 
a design patent.
    (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 during the pendency of the application 
and within the time limit set forth in the PCT and the Regulations 
under the PCT.
    (2) The claim for priority and the certified copy of the foreign 
application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any 
event, be filed before the patent is granted. 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) 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 paragraphs 
(a)(1) or (a)(2) of this section.
    (4) 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.
* * * * *
    (c) Unless such claim is accepted in accordance with the provisions 
of this paragraph, any claim for priority under 35 U.S.C. 119(a)-(d), 
or 365(a) or (b) not presented within the time period provided by 
paragraph (a) of this section is considered to have been waived. If a 
claim for priority under 35 U.S.C. 119(a)-(d) or 365(a) or (b) is 
presented after the time period provided by paragraph (a) of this 
section, the claim may be accepted if the claim identifying the prior 
foreign application by specifying its application number, country, and 
the day, month and year of its filing was unintentionally delayed. A 
petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-
(d) or 365(a) or (b) must be accompanied by:
    (1) The surcharge set forth in Sec. 1.17(u); and
    (2) A statement that the entire delay between the date the claim 
was due under paragraph (a)(1) of this section and the date the claim 
was filed was unintentional. The Director may require additional 
information where there is a question whether the delay was 
unintentional.
    12. Section 1.72 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.72  Title and abstract.

    (a) The title of the invention may include only characters capable 
of being created by a keyboard and may not exceed 500 characters in 
length. The title should be as short and specific as possible. Unless 
the title is supplied in an application data sheet (Sec. 1.76), the 
title of the invention should appear as a heading on the first page of 
the specification.
* * * * *
    13. Section 1.78 is amended by revising paragraphs (a)(2), (a)(3), 
and (a)(4), and adding new paragraphs (a)(5) and (a)(6) to read as 
follows:


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

    (a)(1) * * *
    (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. This reference must be 
submitted during the pendency of the application, and within the later 
of four months from the actual filing date of the application or 
sixteen months from the filing date of the prior application. This time 
period is not extendable. 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. If the application claims the 
benefit of an international application, the first sentence of the 
specification must include an indication of whether the international 
application was published under PCT Article 21(2) in English 
(regardless of whether benefit for such application is claimed in the 
application data sheet). 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). Except as provided in 
paragraph (a)(3) of this section, the failure to timely submit the 
reference required by 35 U.S.C. 120 and this paragraph is considered a 
waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such prior 
application. The time period set forth in this paragraph does not

[[Page 17965]]

apply to an application for a design patent.
    (3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2) 
of this section is presented in a nonprovisional application after the 
time period provided by paragraph (a)(2) of this section, the claim 
under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior filed 
copending nonprovisional application or international application 
designating the United States of America may be accepted if the 
reference identifying the prior application by application number or 
international application number and international filing date was 
unintentionally delayed. A petition to accept an unintentionally 
delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a 
prior filed application must be accompanied by:
    (i) The surcharge set forth in Sec. 1.17(u); and
    (ii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(2) of this section and the date the claim 
was filed was unintentional. The Director may require additional 
information where there is a question whether the delay was 
unintentional.
    (4) 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), and the basic filing fee set forth in Sec. 1.16(k) must 
be paid within the time period set forth in Sec. 1.53(g).
    (5) 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), and, if the 
provisional application is filed in a language other than English, an 
English language translation of the non-English language provisional 
application and a statement that the translation is accurate. This 
reference and English language translation of a non-English language 
provisional application must be submitted during the pendency of the 
nonprovisional application, and within the later of four months from 
the actual filing date of the nonprovisional application or sixteen 
months from the filing date of the prior provisional application. This 
time period is not extendable. 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. Except as provided in paragraph 
(a)(6) of this section, the failure to timely submit the reference and 
English language translation of a non-English language provisional 
application required by 35 U.S.C. 119(e) and this paragraph is 
considered a waiver of any benefit under 35 U.S.C. 119(e) to such prior 
provisional application.
    (6) If the reference or English language translation of a non-
English language provisional application required by 35 U.S.C. 119(e) 
and paragraph (a)(5) of this section is presented in a nonprovisional 
application after the time period provided by paragraph (a)(5) of this 
section, the claim under 35 U.S.C. 119(e) for the benefit of a prior 
filed provisional application may be accepted during the pendency of 
the nonprovisional application if the claim identifying the prior 
application by provisional application number and any English language 
translation of a non-English language provisional application were 
unintentionally delayed. A petition to accept an unintentionally 
delayed claim under 35 U.S.C. 119(e) for the benefit of a prior filed 
provisional application must be accompanied by:
    (i) The surcharge set forth in Sec. 1.17(u); and
    (ii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(5) of this section and the date the claim 
was filed was unintentional. The Director may require additional 
information where there is a question whether the delay was 
unintentional.
* * * * *
    14. Section 1.84 is amended by revising paragraphs (a)(2), (e), and 
(j) to read as follows:


Sec. 1.84  Standards for drawings.

    (a) * * *
    (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 or design patent application or the 
subject matter of a statutory invention registration. The color 
drawings must be of sufficient quality such that all details in the 
drawings are reproducible in black and white in the printed patent. 
Color drawings are not permitted in international applications (see PCT 
Rule 11.13), or in an application, or copy thereof, submitted under the 
Office electronic filing system. The Office will accept color drawings 
in utility or design patent applications and statutory invention 
registrations only after granting a petition filed under this paragraph 
explaining why the color drawings are necessary. Any such petition must 
include the following:
    (i) The fee set forth in Sec. 1.17(h);
    (ii) Three (3) sets of color drawings;
    (iii) A black and white photocopy that accurately depicts, to the 
extent possible, the subject matter shown in the color drawing; and
    (iv) An amendment to the specification to insert (unless the 
specification contains or has been previously amended to contain) the 
following language as the first paragraph of the brief description of 
the drawings:

    The patent or application file contains at least one drawing 
executed in color. Copies of this patent or patent application 
publication with color drawing(s) will be provided by the Patent and 
Trademark Office upon request and payment of the necessary fee.

* * * * *
    (e) 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 meeting the sheet-size requirements of paragraph (f) of this 
section and the margin requirements of paragraph (g) of this section. 
See paragraph (b) of this section for other requirements for 
photographs.
* * * * *
    (j) Front page view. One of the views should be suitable for 
inclusion on the front page of the patent application publication and 
patent as the illustration of the invention. Applicant may suggest a 
single view (by figure number) for inclusion on the front page of the 
patent application publication and patent.
* * * * *
    15. Section 1.85 is amended by revising paragraph (a) to read as 
follows:

[[Page 17966]]

Sec. 1.85  Corrections to drawings.

    (a) A utility or plant application will not be placed on the files 
for examination until objections to the drawings have been corrected. 
Except as provided in Sec. 1.215(c), any patent application publication 
will not include drawings filed after the application has been placed 
on the files for examination. Unless applicant is otherwise notified in 
an Office action, objections to the drawings in a utility or plant 
application will not be held in abeyance, and a request to hold 
objections to the drawings in abeyance will not be considered a bona 
fide attempt to advance the application to final action 
(Sec. 1.135(c)). If a drawing in a design application meets the 
requirements of Sec. 1.84(e), (f), and (g) and is suitable for 
reproduction, but is not otherwise in compliance with Sec. 1.84, the 
drawing may be admitted for examination.
* * * * *
    16. Section 1.98 is amended by revising paragraphs (a)(2) and (b) 
to read as follows:


Sec. 1.98  Content of information disclosure statement.

    (a) * * *
    (2) A legible copy of:
    (i) Each U.S. patent application publication and 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
* * * * *
    (b) Each U.S. patent listed in an information disclosure statement 
shall be identified by patentee, patent number, and issue date. Each 
U.S. patent application publication listed in an information disclosure 
statement shall be identified by applicant, patent application 
publication number, and publication 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.
* * * * *
    17. A new Sec. 1.99 is added to read as follows:


Sec. 1.99  Third party submission in published application.

    (a) A submission by a member of the public of patents or 
publications relevant to a pending published application will be 
entered in the application file if the submission complies with the 
requirements of this section and the application is still pending when 
the submission and application file are brought before the examiner.
    (b) A submission under this section must identify the application 
to which it is directed by application number and include:
    (1) The fee set forth in Sec. 1.17(p);
    (2) A listing of the patents or publications submitted for 
consideration by the Office;
    (3) A copy of each listed patent or publication in written form or 
at least the pertinent portions thereof; and
    (4) An English language translation of all the necessary and 
pertinent parts of any non-English language patent or publication in 
written form relied upon.
    (c) The submission under this section must be served upon the 
applicant in accordance with Sec. 1.248.
    (d) A submission under this section may not include any explanation 
of the patents, publications, or any other information, and is limited 
to twenty total patents or publications.
    (e) A submission under this section must be filed within two months 
of the date of publication of the application (Sec. 1.215(a)) or prior 
to the mailing of a notice of allowance (Sec. 1.311), whichever is 
earlier. Any submission under this section not filed within this period 
is permitted only when the patents or publications could not have been 
submitted to the Office earlier, and must also be accompanied by the 
processing fee set forth in Sec. 1.17(i). A submission by a member of 
the public to a pending published application that does not comply with 
the requirements of this section will be returned or discarded.
    (f) A member of the public may include a self-addressed postcard 
with a submission to receive an acknowledgment by the Office that the 
submission has been received. A member of the public filing a 
submission under this section will not receive any communications from 
the Office relating to the submission other than the return of a self-
addressed postcard. In the absence of a request by the Office, an 
applicant has no duty to, and need not, reply to a submission under 
this section. The limited involvement of the member of the public 
filing a submission pursuant to this section ends with the filing of 
the submission, and no further submission on behalf of the member of 
the public will be considered, except for additional prior art, or 
unless such submission raises new issues which could not have been 
earlier presented.
    18. Section 1.104 is amended by revising paragraph (d)(1) to read 
as follows:


Sec. 1.104  Nature of examination.

* * * * *
    (d) Citation of references. (1) If domestic patents are cited by 
the examiner, their numbers and dates, and the names of the patentees 
will be stated. If domestic patent application publications are cited 
by the examiner, their publication number, publication date, and the 
names of the applicants will be stated. If foreign published 
applications or patents are cited, their nationality or country, 
numbers and dates, and the names of the patentees will be stated, and 
such other data will be furnished as may be necessary to enable the 
applicant, or in the case of a reexamination proceeding, the patent 
owner, to identify the published applications or patents cited. In 
citing foreign published applications or patents, in case only a part 
of the document is involved, the particular pages and sheets containing 
the parts relied upon will be identified. If printed publications are 
cited, the author (if any), title, date, pages or plates, and place of 
publication, or place where a copy can be found, will be given.
* * * * *
    19. Section 1.130 is amended by revising its heading and paragraph 
(a) to read as follows:


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

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

[[Page 17967]]

disqualified as prior art by submission of:
    (1) A terminal disclaimer in accordance with Sec. 1.321(c); and
    (2) An oath or declaration stating that the application or patent 
under reexamination and patent or published application are currently 
owned by the same party, and that the inventor named in the application 
or patent under reexamination is the prior inventor under 35 U.S.C. 
104.
* * * * *
    20. Section 1.131 is 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, U.S. patent application publication, or 
international application publication under PCT Article 21(2) is the 
date that it 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 or U.S. patent 
application publication of a pending or patented application 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.
* * * * *
    21. Section 1.132 is 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, 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 or a U.S. patent application publication of 
a pending or patented application to another or others which claims the 
same patentable invention as defined in Sec. 1.601(n).
    22. Section 1.137 is revised to read as follows:


Sec. 1.137  Revival of abandoned application, terminated reexamination 
proceeding, or lapsed patent.

    (a) Unavoidable. Where the delay in reply by applicant or patent 
owner was unavoidable, a petition may be filed to revive an abandoned 
application, a terminated reexamination proceeding, or a lapsed patent 
pursuant to this paragraph. A grantable petition pursuant to this 
paragraph must be accompanied by:
    (1) The reply required to the outstanding Office action or notice, 
unless previously filed;
    (2) The petition fee as set forth in Sec. 1.17(l);
    (3) A showing to the satisfaction of the Director that the entire 
delay in filing the required reply from the due date for the reply 
until the filing of a grantable petition pursuant to this paragraph was 
unavoidable; and
    (4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d)) 
required pursuant to paragraph (d) of this section.
    (b) Unintentional. Where the delay in reply by applicant or patent 
owner was unintentional, a petition may be filed to revive an abandoned 
application, a terminated reexamination proceeding, or a lapsed patent 
pursuant to this paragraph. A grantable petition pursuant to this 
paragraph must be accompanied by:
    (1) The reply required to the outstanding Office action or notice, 
unless previously filed;
    (2) The petition fee as set forth in Sec. 1.17(m);
    (3) A statement that the entire delay in filing the required reply 
from the due date for the reply until the filing of a grantable 
petition pursuant to this paragraph was unintentional. The Director may 
require additional information where there is a question whether the 
delay was unintentional; and
    (4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d)) 
required pursuant to paragraph (d) of this section.
    (c) Reply. In a nonprovisional application abandoned for failure to 
prosecute, the required reply may be met by the filing of a continuing 
application. In a nonprovisional utility or plant application filed 
after June 8, 1995, and abandoned for failure to prosecute, the 
required reply may also be met by the filing of a request for continued 
examination in compliance with Sec. 1.114. In an application or patent, 
abandoned or lapsed for failure to pay the issue fee or any portion 
thereof, the required reply must include payment of the issue fee or 
any outstanding balance thereof. In an application, abandoned for 
failure to pay the publication fee, the required reply must include 
payment of the publication fee.
    (d) Terminal disclaimer. (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 (d)(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 (d)(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, to lapsed patents, or to reexamination proceedings.
    (e) Request for reconsideration. Any request for reconsideration or 
review of a decision refusing to revive an abandoned application or 
lapsed patent upon petition filed pursuant to this section, to be 
considered timely, must be filed within two months of the decision 
refusing to revive or within such time as set in the decision. Unless a 
decision indicates otherwise, this time period may be extended under 
the provisions of Sec. 1.136 for an abandoned

[[Page 17968]]

application or lapsed patent; under the provisions of Sec. 1.550(c) for 
a terminated ex parte reexamination proceeding filed under Sec. 1.510; 
and under the provisions of Sec. 1.956 for a terminated inter partes 
reexamination proceeding filed under Sec. 1.913.
    (f) Abandonment for failure to notify the Office of a foreign 
filing. A nonprovisional application abandoned pursuant to 35 U.S.C. 
122(b)(2)(B)(iii) for failure to timely notify the Office of the filing 
of an application in a foreign country or under a multinational treaty 
that requires publication of applications eighteen months after filing, 
may be revived only pursuant to paragraph (b) of this section. The 
reply requirement of paragraph (c) of this section is met by the 
notification of such filing in a foreign country or under a 
multinational treaty, but the filing of a petition under this section 
will not operate to stay any period for reply that may be running 
against the application.
    (g) Provisional applications. A provisional application, abandoned 
for failure to timely respond to an Office requirement, may be revived 
pursuant to this section. Subject to the provisions of 35 U.S.C. 
119(e)(3) and Sec. 1.7(b), a provisional application will not be 
regarded as pending after twelve months from its filing date under any 
circumstances.
    23. Section 1.138 is 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 
or publication.
    (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.
    (c) An applicant seeking to abandon an application to avoid 
publication of the application (see Sec. 1.211(a)(1)) must submit a 
declaration of express abandonment by way of a petition under this 
section including the fee set forth in Sec. 1.17(h) in sufficient time 
to permit the appropriate officials to recognize the abandonment and 
remove the application from the publication process. Applicant should 
expect that the petition will not be granted and the application will 
be published in regular course unless such declaration of express 
abandonment and petition are received by the appropriate officials more 
than four weeks prior to the projected date of publication.
    24. Section 1.165 is amended by revising paragraph (b) to read as 
follows:


Sec. 1.165  Plant drawings.

* * * * *
    (b) The drawings may be in color. The drawing must be in color if 
color is a distinguishing characteristic of the new variety. Two copies 
of color drawings or photographs and a black and white photocopy that 
accurately depicts, to the extent possible, the subject matter shown in 
the color drawing or photograph must be submitted.
    25. A new, undesignated center heading and new sections 1.211, 
1.213, 1.215, 1.217, 1.219, and 1.221 are added to Subpart B to read as 
follows:

Publication of Applications


Sec. 1.211  Publication of applications.

    (a) Each U.S. national application for patent filed in the Office 
under 35 U.S.C. 111(a) and each international application in compliance 
with 35 U.S.C. 371 will be published promptly after the expiration of a 
period of eighteen months from the earliest filing date for which a 
benefit is sought under title 35, United States Code, unless:
    (1) The application is recognized by the Office as no longer 
pending;
    (2) The application is national security classified (see 
Sec. 5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under 
national security review;
    (3) The application has issued as a patent in sufficient time to be 
removed from the publication process; or
    (4) The application was filed with a nonpublication request in 
compliance with Sec. 1.213(a).
    (b) Provisional applications under 35 U.S.C. 111(b) shall not be 
published, and design applications under 35 U.S.C. chapter 16 and 
reissue applications under 35 U.S.C. chapter 25 shall not be published 
under this section.
    (c) An application filed under 35 U.S.C. 111(a) will not be 
published until it includes the basic filing fee (Sec. 1.16(a) or 
1.16(g)), any English translation required by Sec. 1.52(d), and an 
executed oath or declaration under Sec. 1.63. The Office may delay 
publishing any application until it includes a specification on papers 
in compliance with Sec. 1.52 and having an abstract (Sec. 1.72(b)), 
drawings in compliance with Sec. 1.84, and a sequence listing in 
compliance with Secs. 1.821 through 1.825 (if applicable), and until 
any petition under Sec. 1.47 is granted.
    (d) The Office may refuse to publish an application, or to include 
a portion of an application in the patent application publication 
(Sec. 1.215), if publication of the application or portion thereof 
would violate Federal or state law, or if the application or portion 
thereof contains offensive or disparaging material.
    (e) The publication fee set forth in Sec. 1.18(d) must be paid in 
each application published under this section before the patent will be 
granted. If an application is subject to publication under this 
section, the sum specified in the notice of allowance under Sec. 1.311 
will also include the publication fee which must be paid within three 
months from the date of mailing of the notice of allowance to avoid 
abandonment of the application. This three-month period is not 
extendable. If the application is not published under this section, the 
publication fee (if paid) will be refunded.


Sec. 1.213  Nonpublication request.

    (a) If the invention disclosed in an application has not been and 
will not be the subject of an application filed in another country, or 
under a multilateral international agreement, that requires publication 
of applications eighteen months after filing, the application will not 
be published under 35 U.S.C. 122(b) and Sec. 1.211 provided:
    (1) A request (nonpublication request) is submitted with the 
application upon filing;
    (2) The request states in a conspicuous manner that the application 
is not to be published under 35 U.S.C. 122(b);
    (3) The request contains a certification that the invention 
disclosed in the application has not been and will not be the subject 
of an application filed in another country, or under a multilateral 
agreement, that requires publication at eighteen months after filing; 
and
    (4) The request is signed in compliance with Sec. 1.33(b).
    (b) The applicant may rescind a nonpublication request at any time. 
A request to rescind a nonpublication request under paragraph (a) of 
this section must:
    (1) Identify the application to which it is directed;
    (2) State in a conspicuous manner that the request that the 
application is not to be published under 35 U.S.C. 122(b) is rescinded; 
and

[[Page 17969]]

    (3) Be signed in compliance with Sec. 1.33(b).
    (c) If an applicant who has submitted a nonpublication request 
under paragraph (a) of this section subsequently files an application 
directed to the invention disclosed in the application in which the 
nonpublication request was submitted in another country, or under a 
multilateral international agreement, that requires publication of 
applications eighteen months after filing, the applicant must notify 
the Office of such filing within forty-five days after the date of the 
filing of such foreign or international application. The failure to 
timely notify the Office of the filing of such foreign or international 
application shall result in abandonment of the application in which the 
nonpublication request was submitted (35 U.S.C. 122(b)(2)(B)(iii)).


Sec. 1.215  Patent application publication.

    (a) The publication of an application under 35 U.S.C. 122(b) shall 
include a patent application publication. The date of publication shall 
be indicated on the patent application publication. The patent 
application publication will be based upon the application papers 
deposited on the filing date of the application, except for preliminary 
amendments, as well as the executed oath or declaration submitted to 
complete the application, and any application papers or drawings 
submitted in reply to a preexamination notice requiring a title and 
abstract in compliance with Sec. 1.72, application papers in compliance 
with Sec. 1.52, drawings in compliance with Sec. 1.84, or a sequence 
listing in compliance with Secs. 1.821 through 1.825, except as 
otherwise provided in this section.
    (b) If applicant wants the patent application publication to 
include assignee information, the applicant must include a separate 
paper indicating that such information is being provided for inclusion 
on the patent application publication. Assignee information might not 
be included on the patent application publication if such paper is not 
included with the application on filing. Assignee information as used 
in this paragraph means the name and address of the assignee of the 
entire right, title, and interest in an application. Providing this 
information does not substitute for compliance with any requirement of 
part 3 of this chapter to have an assignment recorded by the Office.
    (c) At applicant's option, the patent application publication will 
be based upon the copy of the application (specification, drawings, and 
oath or declaration) as amended during examination, provided that 
applicant supplies such a copy in compliance with the Office electronic 
filing system requirements within one month of the actual filing date 
of the application or fourteen months of the earliest filing date for 
which a benefit is sought under title 35, United States Code, whichever 
is later.
    (d) If the copy of the application submitted pursuant to paragraph 
(c) of this section does not comply with the Office electronic filing 
system requirements, the Office will publish the application as 
provided in paragraph (a) of this section. If, however, the Office has 
not started the publication process, the Office may use an untimely 
filed copy of the application supplied by the applicant under paragraph 
(c) of this section in creating the patent application publication.


Sec. 1.217  Publication of a redacted copy of an application.

    (a) If an applicant has filed applications in one or more foreign 
countries, directly or through a multilateral international agreement, 
and such foreign-filed applications or the description of the invention 
in such foreign-filed applications is less extensive than the 
application or description of the invention in the application filed in 
the Office, the applicant may submit a redacted copy of the application 
filed in the Office for publication, eliminating any part or 
description of the invention that is not also contained in any of the 
corresponding applications filed in a foreign country. The Office will 
publish the application as provided in Sec. 1.215(a) unless the 
applicant files a redacted copy of the application in compliance with 
this section within sixteen months after the earliest filing date for 
which a benefit is sought under title 35, United States Code.
    (b) The redacted copy of the application must be submitted in 
compliance with the Office electronic filing system requirements. The 
title of the invention in the redacted copy of the application must 
correspond to the title of the application at the time the redacted 
copy of the application is submitted to the Office. If the redacted 
copy of the application does not comply with the Office electronic 
filing system requirements, the Office will publish the application as 
provided in Sec. 1.215(a).
    (c) The applicant must also concurrently submit in paper 
(Sec. 1.52(a)) to be filed in the application:
    (1) A certified copy of each foreign-filed application that 
corresponds to the application for which a redacted copy is submitted;
    (2) A translation of each such foreign-filed application that is in 
a language other than English, and a statement that the translation is 
accurate;
    (3) A marked-up copy of the application showing the redactions in 
brackets; and
    (4) A certification that the redacted copy of the application 
eliminates only the part or description of the invention that is not 
contained in any application filed in a foreign country, directly or 
through a multilateral international agreement, that corresponds to the 
application filed in the Office.
    (d) The Office will provide a copy of the complete file wrapper and 
contents of an application for which a redacted copy was submitted 
under this section to any person upon written request pursuant to 
Sec. 1.14(c)(2), unless applicant complies with the requirements of 
paragraphs (d)(1), (d)(2), and (d)(3) of this section.
    (1) Applicant must accompany the submission required by paragraph 
(c) of this section with the following:
    (i) A copy of any Office correspondence previously received by 
applicant including any desired redactions, and a second copy of all 
Office correspondence previously received by applicant showing the 
redacted material in brackets; and
    (ii) A copy of each submission previously filed by the applicant 
including any desired redactions, and a second copy of each submission 
previously filed by the applicant showing the redacted material in 
brackets.
    (2) In addition to providing the submission required by paragraphs 
(c) and (d)(1) of this section, applicant must:
    (i) Within one month of the date of mailing of any correspondence 
from the Office, file a copy of such Office correspondence including 
any desired redactions, and a second copy of such Office correspondence 
showing the redacted material in brackets; and
    (ii) With each submission by the applicant, include a copy of such 
submission including any desired redactions, and a second copy of such 
submission showing the redacted material in brackets.
    (3) Each submission under paragraph (d)(1) or (d)(2) of this 
paragraph must also be accompanied by the processing fee set forth in 
Sec. 1.17(i) and a certification that the redactions included therein 
are limited to the elimination of material that is relevant

[[Page 17970]]

only to the part or description of the invention that were not 
contained in the redacted copy of the application submitted for 
publication.
    (e) The provisions of Sec. 1.8 do not apply to the time periods set 
forth in this section.


Sec. 1.219  Early publication.

    (a) Applications that will be published under Sec. 1.211 may be 
published earlier than as set forth in Sec. 1.211(a) at the request of 
the applicant. Any request for early publication must be accompanied by 
the publication fee set forth in Sec. 1.18(d). If the applicant does 
not submit a copy of the application in compliance with the Office 
electronic filing system requirements, the Office will publish the 
application as provided in Sec. 1.215(a). No consideration will be 
given to requests for publication on a certain date, and such requests 
will be treated as a request for publication as soon as possible.


Sec. 1.221  Voluntary publication or republication of patent 
application publication.

    (a) Any request for publication of an application filed before, but 
pending on, November 29, 2000, and any request for republication of an 
application previously published under Sec. 1.211, must include a copy 
of the application in compliance with the Office electronic filing 
system requirements and be accompanied by the publication fee set forth 
in Sec. 1.18(d) and the processing fee set forth in Sec. 1.17(i). If 
the request does not comply with the requirements of this paragraph or 
the copy of the application does not comply with the Office electronic 
filing system requirements, the Office will not publish the application 
and will refund the publication fee.
    (b) The Office will grant a request for a corrected or revised 
patent application publication other than as provided in paragraph (a) 
of this section only when the Office makes a material mistake which is 
apparent from Office records. Any request for a corrected or revised 
patent application publication other than as provided in paragraph (a) 
of this section must be filed within two months from the date of the 
patent application publication. This period is not extendable.
    26. Section 1.291 is amended by revising paragraph (a)(1) to read 
as follows:


Sec. 1.291  Protests by the public against pending applications.

    (a) * * *
    (1) The protest is submitted prior to the date the application was 
published or the mailing of a notice of allowance under Sec. 1.311, 
whichever occurs first; and
* * * * *
    27. Section 1.292 is amended by revising paragraph (b)(3) to read 
as follows:


Sec. 1.292  Public use proceedings.

* * * * *
    (b) * * *
    (3) The petition is submitted prior to the date the application was 
published or the mailing of a notice of allowance under Sec. 1.311, 
whichever occurs first.
* * * * *
    28. Section 1.311 is revised to read as follows:


Sec. 1.311  Notice of allowance.

    (a) If, on examination, it shall appear that the applicant is 
entitled to a patent under the law, a notice of allowance will be sent 
to the applicant at the correspondence address indicated in Sec. 1.33. 
The notice of allowance shall specify a sum constituting the issue fee 
which must be paid within three months from the date of mailing of the 
notice of allowance to avoid abandonment of the application. The sum 
specified in the notice of allowance may also include the publication 
fee, in which case the issue fee and publication fee (Sec. 1.211(f)) 
must both be paid within three months from the date of mailing of the 
notice of allowance to avoid abandonment of the application. This 
three-month period is not extendable.
    (b) An authorization to charge the issue or other post-allowance 
fees set forth in Sec. 1.18 to a deposit account may be filed in an 
individual application only after mailing of the notice of allowance.
    29. A new Sec. 1.417 is added to read as follows:


Sec. 1.417  Submission of translation of international application.

    The submission of the international publication or an English 
language translation of an international application pursuant to 35 
U.S.C. 154(d)(4) must clearly identify the international application to 
which it pertains (Sec. 1.5(a)) and, unless it is being submitted 
pursuant to Sec. 1.494 or Sec. 1.495, be clearly identified as a 
submission pursuant to 35 U.S.C. 154(d)(4). Otherwise, the submission 
will be treated as a filing under 35 U.S.C. 111(a). Such submissions 
should be marked ``Box PCT.''
    30. Section 1.494 is amended by revising paragraph (f) to read as 
follows:


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

* * * * *
    (f) The documents and fees submitted under paragraphs (b) and (c) 
of this section must, except for a copy of the international 
publication or translation of the international application that is 
identified as provided in Sec. 1.417, be clearly identified as a 
submission to enter the national stage under 35 U.S.C. 371. Otherwise, 
the submission will be considered as being made under 35 U.S.C. 111(a).
* * * * *
    31. Section 1.495 is amended by revising paragraph (g) to read as 
follows:


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

* * * * *
    (g) The documents and fees submitted under paragraphs (b) and (c) 
of this section must, except for a copy of the international 
publication or translation of the international application that is 
identified as provided in Sec. 1.417, be clearly identified as a 
submission to enter the national stage under 35 U.S.C. 371. Otherwise, 
the submission will be considered as being made under 35 U.S.C. 111(a).
* * * * *

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

    32. The authority citation for 37 CFR Part 5 is revised to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 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 Director (15 CFR 370.10(j), 22 CFR 125.04, and 10 
CFR 810.7).

    33. Section 5.1 as proposed to be revised at 64 FR 53844 is amended 
by revising paragraph (e) to read as follows:


Sec. 5.1  Applications and correspondence involving national security.

* * * * *
    (e) An application will not be published under Sec. 1.211 of this 
chapter or allowed under Sec. 1.311 of this chapter if publication or 
disclosure of the application would be detrimental to national 
security. An application under national security review will not be 
published at least until six months from its filing date or three 
months from the

[[Page 17971]]

date the application was referred to a defense agency, whichever is 
later. A national security classified patent application will not be 
published under Sec. 1.211 of this chapter or allowed under Sec. 1.311 
of this chapter until the application is declassified and any secrecy 
order under Sec. 5.2(a) has been rescinded.
* * * * *

    Dated: March 24, 2000.
Q. Todd Dickinson,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 00-7939 Filed 4-4-00; 8:45 am]
BILLING CODE 3510-16-P