[Federal Register Volume 65, Number 175 (Friday, September 8, 2000)]
[Rules and Regulations]
[Pages 54604-54683]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-22392]



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Part II





Department of Commerce





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United States Patent and Trademark Office



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37 CFR Parts 1, 3, 5, and 10



Changes To Implement the Patent Business Goals; Final Rule

  Federal Register / Vol. 65, No. 175 / Friday, September 8, 2000 / 
Rules and Regulations  

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1, 3, 5, and 10

[Docket No.: 980826226-0202-03]
RIN 0651-AA98


Changes To Implement the Patent Business Goals

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) has 
established business goals for the organizations reporting to the 
Commissioner for Patents (Patent Business Goals). The focus of the 
Patent Business Goals is to increase the level of service to the public 
by raising the efficiency and effectiveness of the Office's business 
processes. In furtherance of the Patent Business Goals, the Office is 
changing the rules of practice to eliminate unnecessary formal 
requirements, streamline the patent application process, and simplify 
and clarify the provisions of the rules of practice.

DATES: Effective Dates: This rule is effective November 7, 2000, except 
that the changes to Secs. 1.27, 1.78, 1.131, 1.132, 1.137, 1.152, 
1.155, 1.324, 1.366, 1.740, and 1.760, and the removal of Sec. 1.44 are 
effective September 8, 2000.
    Applicability Dates: Computer program listings in compliance with 
former Sec. 1.96 will be accepted until March 1, 2001. After that date, 
computer program listings must comply with revised Sec. 1.96. 
Amendments in compliance with former Sec. 1.121 will be accepted until 
March 1, 2001. After that date, amendments must comply with revised 
Sec. 1.121.
    The new two-year limit for requesting refunds under Sec. 1.26 will 
be applied to any fee paid regardless of when it was paid. For 
previously paid fees, the two-year time period for requesting a refund 
will expire on the later of November 7, 2000 or the date that is two 
years from the date the fee was paid.

FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((703) 305-8713) or 
Robert W. Bahr ((703) 308-6906), Senior Legal Advisors, or Robert J. 
Spar, Director ((703) 308-5107), Office of Patent Legal Administration 
(OPLA), directly by phone, or by facsimile to (703) 305-1013, marked to 
the attention of Mr. Bernstein, or by mail addressed to: Box Comments--
Patents, Commissioner for Patents, Washington, D.C. 20231.
    Additionally, the following members of OPLA may be called directly 
for the matters indicated:

Robert Bahr ((703) 308-6906): Secs. 1.22, 1.25, 1.26, 1.53, 1.55, 1.72, 
1.76, 1.78, 1.112, 1.131, 1.132, 1.137, 1.138, 1.193, 1.311 through 
1.313, 1.366, Part 5, and Part 10.
Hiram Bernstein ((703) 305-8713): Secs. 1.9, 1.22, 1.26 through 1.28, 
1.41, 1.48, 1.56, 1.85(c), 1.97, 1.98, 1.105, 1.111, 1.115, 1.133, 
1.136, 1.322 through 1.324, and Part 3.
Robert Clarke ((703) 305-9177): Processing and petition fees, and 
Sec. 1.52(b)(2).
James Engel ((703) 308-5106): Secs. 1.152 et seq.
Eugenia Jones ((703) 306-5586): Secs. 1.9, 1.27, and 1.28.
Jay Lucas ((703) 308-6868) or Anton Fetting ((703) 305-8449): 
Secs. 1.96, and 1.821 et seq.
Joe Narcavage ((703) 305-1795): Secs. 1.52(b)(6), 1.121, 1.125, and 
1.173 et seq.
Kenneth Schor ((703) 308-6710): Secs. 1.97, 1.98, 1.173 et seq., 1.510 
et seq., and Part 3.
Fred Silverberg ((703) 305-8986): Sec. 1.63 (oath or declaration) form.
Karin Tyson ((703) 306-3159): Secs. 1.14, 1.33, 1.44, 1.47, 1.51, 1.52 
(except (b)(2) and (b)(6)), 1.59, 1.63, 1.64, 1.67, 1.77, 1.84, 1.85 
(except (c)), 1.163, and 1.720 et seq.

SUPPLEMENTARY INFORMATION: The organizations reporting to the 
Commissioner for Patents have established five business goals (Patent 
Business Goals) to meet the Office's Year 2000 commitments. The Patent 
Business Goals have been adopted as part of the Fiscal Year 1999 
Corporate Plan Submission to the President. The five Patent Business 
Goals are:
    Goal 1: Reduce Office processing time (cycle time) to twelve months 
or less for all inventions.
    Goal 2: Establish fully-supported and integrated Industry Sectors.
    Goal 3: Receive applications and publish patents electronically.
    Goal 4: Exceed our customers' quality expectations, through the 
competencies and empowerment of our employees.
    Goal 5: Align fees commensurate with resource utilization and 
customer efficiency.
    This final rule makes changes to the regulations to support the 
Patent Business Goals. A properly reengineered or reinvented system 
eliminates the redundant or unnecessary steps that slow down processing 
and frustrate customers. In furtherance of the Patent Business Goals, 
these changes to the rules of practice take a fresh view of the 
business end of issuing patents, and continue a process of 
simplification. Formal requirements of rules that are no longer useful 
are eliminated. Once the intent of an applicant is understood, the 
Office will simply go forward with the processing. The essentials are 
maintained, while formalities are greatly reduced. The object is to 
focus on the substance of examination and decrease the time that an 
application for patent is sidelined with unnecessary procedural issues.
    In streamlining this process, the Office will be able to issue a 
patent in a shorter time by eliminating formal requirements that must 
be performed by the applicant, his or her representatives and the 
Office itself. Applicants will benefit from a reduced overall cost to 
them for receiving patent protection and from a faster receipt of their 
patents.
    The Office initially published an advance notice of proposed 
rulemaking containing twenty-one initiatives. See Changes to Implement 
the Patent Business Goals, Advance Notice of Proposed Rulemaking, 63 FR 
53497 (October 5, 1998), 1215 Off. Gaz. Pat. Office (October 27, 1998) 
(Advance Notice). The Office published a notice of proposed rulemaking, 
proposing a number of changes to the rules of practice to implement the 
Patent Business Goals that contained about half of the topics set forth 
in the advance notice plus additional items. See Changes to Implement 
the Patent Business Goals, Notice of Proposed Rulemaking, 64 FR 53771 
(October 4, 1999), 1228 Off. Gaz. Pat. Office 15 (November 2, 1999). 
This final rule contains a number of changes to the text of the rules 
as proposed for comment. The significant changes (as opposed to 
additional grammatical corrections) are discussed below. Familiarity 
with the Advance Notice and Notice of Proposed Rulemaking is assumed.
    The title ``Commissioner of Patents and Trademarks'' was changed to 
``Director of the United States Patent and Trademark Office'' by 
Sec. 4732 of the ``American Inventors Protection Act of 1999'' (Title 
IV of the ``Intellectual Property and Communications Omnibus Reform Act 
of 1999'') that 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). To avoid inconsistent use of the title ``Commissioner'' 
and ``Director'' in the rules of practice, the Office plans to change 
the title ``Commissioner'' wherever it appears in the rules of practice 
to ``Director'' in a separate rule change.

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Discussion of Specific Rules and Response to Comments

    The Office received forty-eight written comments (from Intellectual 
Property Organizations, Law Firms, Businesses, Patent Practitioners, 
and others) in response to the Notice of Proposed Rulemaking. The 
written comments have been analyzed. For contextual purposes, the 
comment on a specific rule and response to the comment are provided 
with the discussion of the specific rule. Comments in support of 
proposed rule changes generally have not been reported in the responses 
to comments sections.
    Two general comments were received that the Office should conduct a 
public hearing for every major rulemaking, and that in a proposed 
notice of rulemaking the Office should use markings to indicate the 
proposed changes in the rules.
    Response: The suggestions are not adopted. The Office determined 
that a public hearing was not warranted for this rulemaking. Further, 
while markings to indicate the proposed changes might be helpful, on 
balance, the additional delay in preparing the rulemaking with markings 
outweighed the helpfulness of providing the markings.
    Title 37 of the Code of Federal Regulations, Parts 1, 3, 5, and 10, 
are amended as follows:

Part 1

    Section 1.4: Section 1.4(b) is amended to refer to a patent or 
trademark application, patent file, trademark registration file, or 
other proceeding, rather than only an application file. Section 1.4(b) 
is also amended to provide that the filing of duplicate copies of 
correspondence in a patent or trademark application, patent file, 
trademark registration file, or other proceeding should be avoided 
(except in situations in which the Office requires the filing of 
duplicate copies), and that the Office may dispose of duplicate copies 
of correspondence in a patent or trademark application, patent file, 
trademark registration file, or other proceeding. Finally, Secs. 1.4(b) 
and 1.4(c) are also amended to change ``should'' to ``must'' because 
the Office needs separate copies of papers directed to two or more 
files, or of papers dealing with different subjects.
    The explicit ability under Sec. 1.4 to dispose of duplicate 
correspondence papers will be effective retroactively to any present 
duplicate correspondence.
    Section 1.6: Section 1.6(d)(9) is amended to delete the reference 
to recorded answers under Sec. 1.684(c), as Sec. 1.684(c) has been 
removed and reserved.
    Section 1.9: Sections 1.9(c) through (f) relating to small entities 
are removed and reserved with that subject matter transferred to 
amended Sec. 1.27(a).
    For additional changes to small entity requirements see Secs. 1.27 
and 1.28.
    Section 1.9(i) is added to define ``national security classified'' 
as used in 37 CFR Chapter 1 as meaning ``specifically authorized under 
criteria established by an Act of Congress or Executive order to be 
kept secret in the interest of national defense or foreign policy and, 
in fact, properly classified pursuant to such Act of Congress or 
Executive order.''
    Comment 1: One comment requested that the definitions in 
Sec. 1.9(f) pertaining to small entity status be moved to the small 
entity provisions found in Sec. 1.27 to provide a more cohesive policy 
statement, and to provide a consolidated location, which would be 
helpful to small entities.
    Response: The comment has been adopted. Other comments related to 
Sec. 1.9(f) are treated in the context of Sec. 1.27(a) to which the 
subject matter has been transferred.
    Comment 2: The remaining comments confirmed the Office's analysis 
that the proposed changes would be beneficial.
    Section 1.12: Section 1.12(c)(1) is amended to change the reference 
to the fee set forth in ``Sec. 1.17(i)'' to the fee set forth in 
``Sec. 1.17(h).'' This change is for consistency with the changes to 
Secs. 1.17(h) and 1.17(i). See discussion of changes to Secs. 1.17(h) 
and 1.17(i).
    Section 1.14: Section 1.14 was proposed to be amended to eliminate 
the provisions making continuity data of an application identified in a 
patent available because such liberal public access to patent 
application information was inconsistent with patent applications being 
generally maintained in confidence. Since patent applications that are 
also filed abroad are subject to the eighteen-month publication 
provisions of the ``American Inventors Protection Act of 1999'' 
(Subtitle E--Domestic Publication of Patent Applications Published 
Abroad), any application that claims priority to a U.S. patent is 
likely to be published. Accordingly, continuity data for applications 
that rely upon the filing date of a U.S. patent should continue to be 
released and the provision for doing so is retained in Sec. 1.14(b)(4).
    Section 1.14 has been reformatted and amended to make it easier to 
understand.
    Section 1.14(a) is amended to define ``status information'' and 
``access.'' ``Status information'' is defined as information that the 
application is pending, abandoned, or patented, as well as the 
application's numeric identifier. An application's numeric identifier 
is (1) the eight digit application number, or (2) the six digit serial 
number and the filing date, or the date of entry into the national 
stage. ``Access'' is defined as providing the application file for 
review and copying of any material in the file.
    Section 1.14(b) is amended to state when status information may be 
supplied, retaining the reasons set forth in prior Sec. 1.14(a)(1)(i). 
Section 1.14(b)(3) is simplified so as to indicate that status 
information will be given for international applications in which the 
United States is designated, even if that application has not yet 
entered the national stage. If, however, an international application 
has not yet been assigned a U.S. application number, no such 
application number can be provided by the Office. The material in 
former Sec. 1.14(b) (timing of destruction) was proposed to be revised 
and was set forth as proposed Sec. 1.14(f), but the material has been 
deleted instead. The timing of any destruction of patent files and 
papers is governed by 44 U.S.C. 33 and 36 CFR 12, which require that 
records be retained in accordance with the agency records schedules 
approved by the National Archives and Records Administration (NARA) or 
the General Records Schedule issued by NARA. The law also requires that 
the Office generate a list of records and the dispositions of those 
records, and the Comprehensive Records Schedule is such a list. 
According to this schedule, an abandoned national patent application 
filed before June 8, 1995, will be destroyed after twenty years from 
the date of abandonment unless it is referenced in a U.S. patent. 
Furthermore, the schedule provides that national applications filed on 
or after June 8, 1995, will be destroyed twenty-three years after the 
date of abandonment unless referenced in a U.S. patent. In addition, 
the records schedule provides that International application (home and 
search copy) files are destroyed 20 years after their filing or deposit 
date. Since former Sec. 1.14(b) could not change any records retention 
schedule, it was decided to delete former Sec. 1.14(b) (proposed as 
Sec. 1.14(f)) and to redesignate proposed Secs. 1.14(g) through (k) as 
(f) through (j). For additional information about the Office's 
Comprehensive Records Schedule or the Office's records management 
program in general, the Office's Records Officer should be

[[Page 54606]]

contacted by telephone at (703) 308-7400, or by facsimile at (703) 308-
7407.
    Section 1.14(c) is amended to state that a copy of an application-
as-filed may be obtained, upon payment of the appropriate fee, when a 
U.S. patent incorporates the application by reference.
    Section 1.14(d) is amended to correspond to prior 
Sec. 1.14(a)(3)(iii) with additional text from prior Sec. 1.14(e)(2). 
Section 1.14(d) is revised to state that an applicant, an attorney or 
agent of record, or an applicant's assignee may authorize access to an 
application by filing a power to inspect. In addition, Sec. 1.14(d) 
provides that if an executed oath or declaration has not been filed, a 
registered attorney or agent named in the papers filed with the 
application may have access, or authorize another person to have 
access, to an application by filing a power to inspect. A registered 
practitioner named in a letterhead would not be sufficient, but rather 
a clear identification of the individual as being a representative 
would be required. The form for a power to inspect is PTO/SB/67.
    Section 1.14(e) is amended to correspond to prior Sec. 1.14(a)(3) 
and states that any person may obtain access to an application by 
submitting a request for access if certain conditions apply. The form 
for a request for access to an abandoned application is PTO/SB/68. 
Access to international phase application files is governed by the 
provisions of the PCT and not by Sec. 1.14. Section 1.14(e)(1), as 
amended, corresponds to prior Sec. 1.14(a)(3)(ii). Section 
1.14(e)(2)(i) corresponds to prior Sec. 1.14(a)(3)(iv)(A). Section 
1.14(e)(2)(ii), as revised, corresponds to prior 
Sec. 1.14(a)(3)(iv)(B). Section 1.14(e) does not include the provisions 
of prior Sec. 1.14(a)(3)(iv)(C). This will now enable an abandoned 
application that claims benefit of the filing date of an application 
that is open to public inspection to be maintained in confidence unless 
the abandoned application is open to public inspection for some other 
reason.
    Sections 1.14(f), (g), (h), and (i) contain the material of prior 
Secs. 1.14(c), (d), (f), and (g), respectively.
    Section 1.14(j) is added to contain the material of prior 
Sec. 1.14(e) and amendment is made to explain the requirements of a 
petition for access and include the provisions of former 
Sec. 1.14(e)(1). Section 1.14(j) is also revised to indicate that the 
Office, either sua sponte or on petition, may provide access or copies 
of an application if necessary to carry out an Act of Congress or if 
warranted by other special circumstances. The Office may, for example, 
provide access to, or copies of, applications to another Federal 
Government agency, such as a law enforcement agency, whether the Office 
is acting on its own initiative or in response to a petition from the 
other agency when access is needed for a criminal investigation.
    Comment 3: Two comments urged the Office to continue to provide 
status information on applications that claim the benefit of the filing 
date of an application for which status information is available. The 
information was said to be very useful to the public and to provide 
some measure of certainty as to whether any continuing applications 
have been filed.
    Response: The comments are adopted. The Office will continue to 
release continuity data for all applications for which status 
information may be given.
    Comment 4: Several comments supported proposed Sec. 1.14, but 
addressed proposed Sec. 1.14(d)(4), arguing that the filing of a power 
of attorney, not an executed oath or declaration, should control 
whether the registered attorney or agent named in the application 
papers under Sec. 1.53 or the national stage documents under Sec. 1.494 
or Sec. 1.495 can sign a power to inspect. The comments noted that the 
power of attorney need not be filed with the oath or declaration, and 
that the attorney who filed the application should be able to sign a 
power to inspect until a power of attorney is filed wherein he is not 
named as an attorney.
    Response: The suggestion is not adopted. Once an executed oath or 
declaration is filed, the omission of a power of attorney may be 
intentional on the part of the applicant and the attorney who filed the 
application should not continue to be allowed to sign a power to 
inspect. Provision has been made for the attorney who filed the 
application to sign a power to inspect because an application without 
an executed oath or declaration would not otherwise have anyone 
entitled to inspect the application. Inventorship is not set until an 
executed oath or declaration is filed (see Sec. 1.41(a)(1)). An 
attorney or agent is not of record until an executed oath or 
declaration and a power of attorney are filed (see Sec. 1.34(b)). An 
assignee is not permitted to take action until an executed oath or 
declaration and an assignment are filed (see Sec. 3.73(b)). 
Accordingly, without an executed oath or declaration, an executed power 
of attorney would be insufficient to make an attorney of record. 
Furthermore, once an executed oath or declaration is filed, any one of 
the named inventors may execute a power of attorney and it is no longer 
necessary to have the attorney or agent who filed the application be 
permitted to execute a power to inspect.
    Comment 5: Two comments suggested allowing public inspection of all 
applications relied upon for priority without a petition for access, 
and not just those that are abandoned.
    Response: Applications are normally maintained in confidence 
pursuant to 35 U.S.C. 122 and public access to any application relied 
upon for priority in a U.S. Patent is not appropriate. An application 
that issues as a patent may be a divisional application of a pending 
application and the prosecution of the parent application may have 
little, if any, subject matter in common with the patent. Accordingly, 
if a petition for access is filed, only that part of the prosecution 
history and application that relates to the subject matter claimed in 
the patent is released to petitioner.
    Comment 6: One comment suggested that the term ``special 
circumstances'' be defined in the rule.
    Response: The suggestion is not adopted. How the Office defines the 
term ``special circumstances'' as used in 35 U.S.C. 122 and 
Sec. 1.14(j) is addressed in the Manual of Patent Examining Procedure 
(MPEP)(February 2000) in Sec. 103 under the subsection titled 
``Petition for Access,'' and whether ``special circumstances'' are 
present depends upon the particular facts involved, which facts may be 
varied.
    Section 1.17: Sections 1.17(h) and 1.17(i) are amended to restate 
the introductory reference to the sections referring to Secs. 1.17(h) 
and (i). Sections 1.17(h) and (i) are also amended to characterize the 
fee set forth in Sec. 1.17(h) as a petition fee, and the fee set forth 
in Sec. 1.17(i) as a processing fee. Section 1.17(h) is amended to list 
only those matters that require the exercise of judgment or discretion 
in determining whether the request/petition will be granted or denied 
(e.g., 1.47, 1.53, 1.182, 1.183, 1.313). Section 1.17(i) is amended to 
list those matters that do not require the exercise of judgment or 
discretion, but which are routinely granted once the applicant has 
complied with the stated requirements (e.g., 1.41, 1.48, 1.55). Thus, 
the Office is amending Sec. 1.17(h) and Sec. 1.17(i) to locate matters 
requiring a petition in Sec. 1.17(h), and those matters that do not 
require a petition, but only a processing fee, in Sec. 1.17(i). Section 
1.17(i) is also amended to provide a processing fee for: (1) Filing a 
nonprovisional application in a language other than English 
(Sec. 1.52(d)), previously in Sec. 1.17(k); and (2) filing an oath or 
declaration pursuant to 35 U.S.C. 371(c)(4) naming an inventive entity 
different from the inventive entity

[[Page 54607]]

set forth in the international stage (Sec. 1.497(d)).
    Section 1.17(k) provides a fee for filing a request for expedited 
examination under Sec. 1.155(a).
    Sections 1.17(l) and (m) are amended for clarity, to eliminate 
unassociated text, and to reflect fiscal year 2001 fee amounts.
    Section 1.17(p) is amended to include a reference to Sec. 1.97(d) 
as well as to Sec. 1.97(c) in view of the amendment to Sec. 1.97(d) 
referencing Sec. 1.17(p) rather than Sec. 1.17(i). The fee set forth in 
Sec. 1.17(p) is also changed from $240 to $180.
    Section 1.17(q) is amended for consistency with Secs. 1.17(h) and 
1.17(i), as the matters listed therein apply to provisional 
applications.
    Comment 7: Comments were received opposing the change to 
Sec. 1.17(p).
    Response: See the discussion thereof in Sec. 1.97(d).
    Section 1.19: Section 1.19(a) is amended to clarify that the fees 
set forth in Sec. 1.19(a)(1) do not apply to patents containing a color 
photograph or drawing, that the fee in Sec. 1.19(a)(2) applies to plant 
patents in color, and that the fee in Sec. 1.19(a)(3) applies to 
patents (other than plant patents) containing a color drawing.
    Former sections 1.19(b)(1) and (b)(2) are divided into three 
sections (Secs. 1.19(b)(1), 1.19(b)(2), and 1.19(b)(3)), with the 
former provisions of Secs. 1.19(b)(3) and 1.19(b)(4) being redesignated 
as Secs. 1.19(b)(4) and 1.19(b)(5). Section 1.19(b)(1) refers to the 
application as filed. Section 1.19(b)(2) is limited to charges for the 
paper portion of the complete patent application file wrapper, namely: 
$200 for copies of the first 400 pages of a patent application file 
wrapper and contents and $40 for each additional one hundred pages, or 
fraction thereof. Section 1.19(b)(3) provides for a charge of $55 for a 
copy of a compact disc in a patent application file wrapper, and $15 
for each additional compact disc when it is part of the same order. The 
submission of application information on compact disc is now provided 
for in Secs. 1.52(e), 1.96 and 1.821 et seq.
    Section 1.19(g) is removed and reserved. The practice of comparing 
and certifying documents not produced by the Office is being 
eliminated. The Office considers it appropriate to certify copies of 
documents only when the copy of the document has been prepared by the 
Office.
    Section 1.19(h) is also removed and reserved. The $25 fee under 
Sec. 1.19(h) for obtaining a corrected or duplicate filing receipt is 
no longer necessary as the Office is now performing that service 
without charge. Consequently, where there is an error in a filing 
receipt, applicants need no longer provide a showing that the error was 
due to Office mistake or pay a $25 fee for the corrected receipt. See 
Changes In Practice In Supplying Certified Copies And Filing Receipts, 
1199 Off. Gaz. Pat. Office 38 (June 10, 1997).
    Comment 8: One comment stated that the proposed fee of $250 for 
copies of certified and uncertified patent-related file wrappers and 
contents of 400 or fewer pages was excessive, and that $100 for the 
first 400 pages would be more reasonable, if it costs 25 cents a page 
for copying. In addition, the comment stated that there should be no 
reason why a flat page charge cannot be used; that with the proposed 
rule, the number of pages would have to be counted to see whether the 
initial 400-page limit has been reached, and that it should not be a 
burden to determine the number of pages that have been copied.
    Response: The comment is adopted to the extent that the cost for 
the first 400 pages has been reduced to $200. Much of the cost per page 
for copying a given application depends upon the difficulty in 
obtaining the application, the time required putting the papers in 
condition for copying and returning those same papers to the file in 
their original condition, and the number of pages being fed instead of 
copied as a single sheet. A fee of $200 has been determined to be the 
appropriate price for locating, preparing, copying and mailing the 
average application. As to charging based upon the number of pages, 
this suggestion has been carefully considered but has not been adopted. 
In order to improve efficiency, the Office needs to have a procedure 
which will generally require the least communications between the 
requester and the Office. If a flat $200 fee is charged for file 
wrappers with fewer than 400 pages, then most requesters of file 
wrappers can pay the set fee and receive their order without any 
additional communication with the Office. When the file wrapper is 
larger than 400 pages, then the Office either will have to receive a 
deposit account authorization for any fees due which can be debited or 
request the additional money from the requester. Since many requesters 
do not have deposit accounts and others will be reluctant to allow any 
charge to be made to their deposit account or credit card, having a 
system where the Office charges a set fee for most orders and possibly 
contacting the requester to obtain additional fees when the order is 
very large will assist requesters in minimizing the risk of 
unexpectedly large charges.
    Section 1.22: Section 1.22(b) is amended to change ``should'' to 
``must'' because the Office needs fees to be submitted in such a manner 
that it is clear for which purpose the fees are paid. Section 1.22(b) 
is also amended to provide that the Office may return fees that are not 
itemized as required by Sec. 1.22(b), and that the provisions of 
Sec. 1.5(a) do not apply to the resubmission of fees returned pursuant 
to Sec. 1.22.
    Section 1.22 was proposed to be amended to add Secs. 1.22(c)(1) and 
(2) to define by rule when a fee had been paid, such as when payment is 
made by authorization to charge a deposit account, or by submission of 
a check. An effect of the rule change would have been to change the 
treatment for refund purposes of payments made by authorization to 
charge a deposit account. The proposed amendment will not be made as 
amendment is unnecessary in view of payment receipt dates already being 
governed by other rules (e.g., Secs. 1.6, 1.8 and 1.10). 
Notwithstanding the lack of amendment to Sec. 1.22, the Office is 
changing in one aspect its treatment of authorizations to charge 
deposit accounts for refund purposes, which aspect is not explicitly 
governed by other rules. The Office will no longer treat authorizations 
to charge a deposit account as being received by the Office as of the 
date that the deposit account is actually debited for purposes of 
refund payments under Secs. 1.26 and 1.28. As of the effective date of 
this final rule, payment by authorization to charge a deposit account 
will be treated for refund purposes the same as payments by other means 
(e.g., check or credit card charge authorization), with each being 
treated as paid (for refund purposes) on the date of receipt in the 
Office as defined by Sec. 1.6 (Example 1). The advantage of using a 
certificate of mailing under Sec. 1.8 for timely reply to an Office 
action, while using the date of receipt by the Office (Sec. 1.6) of the 
payment for refund purposes, will be retained (Example 2). The MPEP 
will be revised to contain the substance of the formerly proposed 
amendment to Sec. 1.22(c).

    Example 1: Payment of a large entity basic filing fee by 
authorization to charge a deposit account is hand-carried to the 
Office on October 2, 2000. The deposit account is debited by the 
Office on February 2, 2001. A request for refund of a portion of the 
filing fee, based on a request for small entity status, is hand-
carried to the Office on March 30, 2001. Under prior practice, the 
request for refund would be granted as timely submitted within two 
months of debiting of the deposit account. Under the new practice, 
the request for refund would be denied as untimely made. Applicant 
would, however, under the amended rule, have three months (rather

[[Page 54608]]

than two) from the October 2, 2000 payment date to submit the refund 
request.
    Example 2: A Notice to File Missing Parts of Application was 
mailed on November 10, 2000, requiring a large entity basic filing 
fee with the standard period for reply of two months. A check for 
payment of the large entity basic filing fee is mailed with a 
Sec. 1.8 certificate of mailing date of January 10, 2001, and is 
actually received in the Office on January 15, 2001. Under prior and 
current practice, the January 10, 2001 reply to the November 10, 
2000 Notice to File Missing Parts of Application, which was received 
in the Office on January 15, 2001, is a timely reply without the 
need for an extension of time under Sec. 1.136(a), and the (new) 
three-month period for submission of a request for refund based on 
small entity status under amended Sec. 1.28(a) would expire on April 
16, 2001 (April 15, 2001 being a Sunday). For a fee payment made by 
authorization to charge a deposit account, the payment is also 
timely and results in the same expiration for the refund period. For 
express mail fee payments under Sec. 1.10, the express mail date is 
the receipt date for the payment and calculating the three month 
refund period and not the actual date of receipt of the payment in 
the Office.
    Comment 9: One comment requested that explicit guidance be provided 
in the MPEP as to what would constitute a sufficiently clear statement 
of the purpose for which fees are being paid under Sec. 1.22(b). In 
particular, the example was raised as to whether a statement that 
``filing fees were being paid'' would be sufficient if the fees being 
paid included both a basic filing fee and an additional independent 
claim fee.
    Response: The comment is adopted. The MPEP will be revised to 
provide examples that will clarify what constitutes a sufficiently 
clear statement. The intent of the amendment is to encourage a better 
explanation by applicants so that Office employees can properly account 
for the payments being made by applicants and not to find ways to hold 
a statement deficient. Specifically, the reference to filing fees would 
be sufficient to cover filing fees of all different types of 
applications and all types of claims fees.
    Comment 10: One comment opposed the addition of Sec. 1.22(c), as 
the addition was confusing, particularly in regard to Secs. 1.8 and 
1.10 payments, and the addition was not necessary to support the 
proposed amendment to Sec. 1.26(b) for a two-year period for refunds 
from a date certain.
    Response: The comment is adopted and the proposed addition of 
Sec. 1.22(c) will not be made. The amendment is not in fact necessary 
to define when a fee has been paid, in view of the change in practice 
regarding treatment of deposit account practices, supra, Secs. 1.8, or 
Sec. 1.10, and the actual date of receipt (in the absence of Secs. 1.8 
or 1.10 being utilized). The MPEP will be modified to better clarify 
date of payments, particularly as refund time periods are impacted.
    Section 1.25: Section 1.25(b) is amended to provide that an 
authorization to charge fees under Sec. 1.16 (which relates to national 
application filing fees) in an application filed under 35 U.S.C. 371 
will be treated as an authorization to charge fees under Sec. 1.492 
(which relates to national stage fees). There are many instances in 
which papers filed for the purpose of entering the national stage under 
35 U.S.C. 371 and Sec. 1.494 or Sec. 1.495 include an authorization to 
charge fees under Sec. 1.16 (rather than fees under Sec. 1.492) which 
relates to national applications under 35 U.S.C. 111. In such 
instances, the Office treats the authorization as an authorization to 
charge fees under Sec. 1.492 since: (1) timely payment of the 
appropriate national fee under Sec. 1.492 is necessary to avoid 
abandonment of the application as to the United States; and (2) the 
basic filing fee under Sec. 1.16 is not applicable to such papers or 
applications. Therefore, the Office is changing Sec. 1.25(b) to place 
persons filing papers to enter the national stage under 35 U.S.C. 371 
and Sec. 1.494 or Sec. 1.495 on notice as to how an authorization to 
charge fees under Sec. 1.16 will be treated.
    Section 1.25(b) is also amended to provide that an authorization to 
charge fees set forth in Sec. 1.18 to a deposit account is subject to 
the provisions of Sec. 1.311(b), and to bring together the two 
sentences relating to sufficient funds.
    Comment 11: See comment for Sec. 1.311.
    Section 1.26: The Office is amending the rules of practice to 
provide that all requests for refund must be filed within specified 
time periods. The rules of practice do not (other than in the situation 
in which a request for refund is based upon subsequent entitlement to 
small entity status) set any time period (other than ``a reasonable 
time'') within which a request for refund must be filed. In the absence 
of such a time period, Office fee record keeping systems and business 
planning must account for the possibility that a request for refund may 
be filed at any time, including many years after payment of the fee at 
issue.
    The new two year limit for requesting refunds under Sec. 1.26 will 
be applied to any fee paid regardless of when it was paid. The two year 
time period for requesting a refund will end two years and sixty days 
from the date of publication in the Federal Register for fees paid 
prior to sixty days from the date of publication in the Federal 
Register, or two years from payment of the fee for fees paid on or 
after sixty days from the date of publication in the Federal Register.
    It is a severe burden on the Office to treat a request for refund 
filed years after payment of the fee at issue. Since Office fee record 
keeping systems change over time, the Office must check any system on 
which fees for the application, patent, or trademark registration have 
been posted to determine what fees were in fact paid. In addition, 
changes in fee amounts, which usually occur on October 1 of each year, 
make it difficult to determine with certainty whether a fee paid years 
ago was the correct fee at the time and under the condition it was 
paid.
    Accounting for the possibility that a request for refund may be 
filed years after payment of the fee at issue causes business planning 
problems. Without any set time period within which a request for refund 
must be filed, the Office must maintain fee records, in any automated 
fee record keeping system ever used by the Office, in perpetuity. 
Finally, as the Office can never be absolutely certain that a submitted 
fee was not paid by mistake or in excess of that required, the absence 
of such a time period subjects the Office to unending and uncertain 
financial obligations.
    Accordingly, the Office is amending Sec. 1.26 to provide non-
extendable time periods within which any request for refund must be 
filed to be timely.
    Section 1.26(a) is amended by dividing its first sentence into two 
sentences. Section 1.26(a) is further amended for consistency with 35 
U.S.C. 42(d) (the Office ``may refund any fee paid by mistake or any 
amount paid in excess of that required''). Under 35 U.S.C. 42(d), the 
Office may refund: (1) A fee paid when no fee is required (a fee paid 
by mistake); or (2) any fee paid in excess of the amount of fee that is 
required. See Ex parte Grady, 59 USPQ 276, 277 (Comm'r Pat. 1943) (the 
statutory authorization for the refund of fees under the ``by mistake'' 
clause is applicable only to a mistake relating to the fee payment). In 
the situation in which an applicant or patentee takes an action ``by 
mistake'' (e.g., files an application or maintains a patent in force 
``by mistake''), the submission of fees required to take that action 
(e.g., a filing fee submitted with such application or a maintenance 
fee submitted for such patent) is not a ``fee paid by mistake'' within 
the meaning of 35 U.S.C. 42(d). Section 1.26(a) is also amended to 
revise the ``change of purpose'' provisions to read ``[a] change of 
purpose after the payment of a fee, as

[[Page 54609]]

when a party desires to withdraw a patent or trademark filing for which 
the fee was paid, including an application, an appeal, or a request for 
an oral hearing, will not entitle a party to a refund of such fee.''
    Section 1.26(a) is also amended to change the sentence ``[a]mounts 
of twenty-five dollars or less will not be returned unless specifically 
requested within a reasonable time, nor will the payor be notified of 
such amount; amounts over twenty-five dollars may be returned by check 
or, if requested, by credit to a deposit account'' to ``[t]he Office 
will not refund amounts of twenty-five dollars or less unless a refund 
is specifically requested, and will not notify the payor of such 
amounts.'' Except as discussed below, the Office intends to continue to 
review submitted fees to determine that they have not been paid by 
mistake or in excess of that required, and to sua sponte refund fees 
(of amounts over twenty-five dollars) determined to have been paid by 
mistake or in excess of that required. Section 1.26(a), however, is 
amended to eliminate language that appears to obligate the Office to 
sua sponte refund fees to be consistent with the provisions of 
Sec. 1.26(b) which requires that any request for refund be filed within 
a specified time period.
    Section 1.26(a) is also amended to facilitate refunds by electronic 
funds transfer. Section 31001(x) of the Omnibus Consolidated 
Rescissions and Appropriations Act of 1996, Pub. L. 104-134, 110 Stat. 
1321 (1996) (the Debt Collection Improvement Act of 1996), amended 31 
U.S.C. 3332 to require that all disbursements by Federal agencies 
(subject to certain exceptions and waivers) be made by electronic funds 
transfer. The Department of the Treasury has implemented this 
legislation at 31 CFR part 208. See Management of Federal Agency 
Disbursements, Final Rule Notice, 63 FR 51489 (September 25, 1998). 
Thus, Sec. 1.26(a) is amended to enable the Office to: Obtain the 
banking information necessary for making refunds by electronic funds 
transfer in accordance with 31 U.S.C. 3332 and 31 CFR part 208, or 
obtain the deposit account information to make the refund to the 
deposit account, or to have the option of refunding by treasury check.
    Specifically, Sec. 1.26(a) is also amended such that if a party 
paying a fee or requesting a refund does not instruct that refunds be 
credited to a deposit account, the Office will attempt to make the 
refund by electronic funds transfer. If such party does not provide the 
banking information necessary for making refunds by electronic funds 
transfer, or instruct the Office that refunds are to be credited to a 
deposit account, the Commissioner may either require such banking 
information or use the banking information on the payment instrument to 
make a refund. This provision will authorize the Office to: (1) Use the 
banking information on the payment instrument (e.g., a personal check 
is submitted to pay the fee) when making a refund due to an excess 
payment; or (2) require such banking information including the 
existence of a deposit account in other situations (e.g., a refund is 
requested or a money order or certified bank check is submitted 
containing an excess payment). The purpose of this change to 
Sec. 1.26(a) is to encourage parties to submit the banking information 
necessary for making refunds by electronic funds transfer (if not on 
the payment instrument) up-front, and not to add a step (requiring such 
banking information) to the refund process. If it is not cost-effective 
to require the banking information necessary for making refunds by 
electronic funds transfer, the Office may either: Obtain the deposit 
account information, or simply issue any refund by treasury check. See 
31 CFR 208.4(f).
    Section 1.26(a) also provides that any refund of a fee paid by 
credit card will be by a credit to the credit card account to which the 
fee was charged. The Office will not refund a fee paid by credit card 
by Treasury check, electronic funds transfer, or credit to a deposit 
account (Sec. 1.25).
    Section 1.26(b) provides that any request for refund must be filed 
within two years from the date the fee was paid, except as otherwise 
provided in Sec. 1.26(b) or in Sec. 1.28(a).
    Section 1.26(b) also provides that if the Office charges a deposit 
account by an amount other than an amount specifically indicated in an 
authorization (Sec. 1.25(b)), any request for refund based upon such 
charge must be filed within two years from the date of the deposit 
account statement indicating such charge, and that such request must be 
accompanied by a copy of that deposit account statement. This provision 
of Sec. 1.26(b) will apply, for example, in the following types of 
situations: (1) A deposit account is charged for an extension of time 
as a result of there being a prior general authorization in the 
application (Sec. 1.136(a)(3)); or (2) a deposit account is charged for 
the outstanding balance of a fee as a result of an insufficient fee 
being submitted with an authorization to charge the deposit account for 
any additional fees that are due. In these situations, the party 
providing the authorization is not in a position to know the exact 
amount by which the deposit account will be charged until the date of 
the deposit account statement indicating the amount of the charge.
    Finally, Sec. 1.26(b) provides that the time periods set forth in 
Sec. 1.26(b) are not extendable.
    Section 1.27: The Office is simplifying applicant's request for 
small entity status under Sec. 1.27. The currently used small entity 
statement forms are eliminated as they are no longer needed. Some 
material in Secs. 1.9 and 1.28 is reorganized into Sec. 1.27.
    The new standard for asserting a claim for small entity status 
under Sec. 1.27 will be effective on the date of publication in the 
Federal Register.
    Small entity status is established at any time by a simple 
assertion of entitlement to small entity status. The previously 
required statements, which include a formalistic reference to Sec. 1.9, 
are no longer required. Payment of an exact small entity basic filing 
(Secs. 1.16(a), (f), (g), (h), or (k)) or national stage 
(Secs. 1.492(a)(1), (a)(2), (a)(3), (a)(4), or (a)(5)) fee is also 
considered an assertion of small entity status. This is so even if the 
wrong exact basic filing or national fee was selected. To establish 
small entity status after payment of the basic filing or national stage 
fee as a non-small entity, a written assertion of small entity status 
is required to be submitted.
    The parties who can assert small entity status have been expanded/
liberalized to include one of several inventors (rather than all the 
inventors), a partial assignee (rather than all the assignees), or any 
attorney or agent identified in Sec. 1.33. Written assertion of small 
entity status and the filing of a written assertion are not necessarily 
performed by the same party. Compare Sec. 1.27(c)(2)(ii) with 
Sec. 1.27(c)(2)(iii).
    Other clarifying changes are made including a transfer of material 
into Sec. 1.27 from Sec. 1.9 drawn towards definitions of a small 
entity and from Sec. 1.28 drawn towards: (1) Assertions in related, 
continuing and reissue applications; (2) notification of loss of 
entitlement to small entity status; and (3) fraud on the Office in 
regard to establishing small entity status or paying small entity fees.
    While there is no change in the current requirement to make an 
investigation in order to determine entitlement to small entity status, 
a recitation is added noting the need for a determination of 
entitlement prior to an assertion of status; the Office is only 
changing the ease with which small entity status could be claimed once 
it

[[Page 54610]]

has been determined that a claim to such status is appropriate.
    For additional changes to small entity requirements see Sec. 1.28.
    Problem and Background: Section 1.27 formerly required that a 
request for small entity status be accompanied by submission of an 
appropriate statement that the party seeking small entity status 
qualified in accordance with former Sec. 1.9. Either a reference to 
former Sec. 1.9 or a specific statement relating to the former 
provisions of Sec. 1.9 was mandatory. For a small business concern, the 
small business concern had to either state that exclusive rights remain 
with the small business concern, or if not, had to identify the party 
to which some rights had been transferred so that the party to which 
rights have been transferred could submit its own small entity 
statement (former Sec. 1.27(c)(1)(iii)). This led to the submission of 
multiple small entity statements for each request for small entity 
status where rights in the invention were split. In part, to ensure 
that at least the reference to Sec. 1.9 was complied with, the Office 
produced four types of small entity statement forms (for inventors, 
small business concerns, non-profit organizations, and non-inventor 
supporting a claim by another) that included the required reference to 
Sec. 1.9 and specific statements as to exclusive rights in the 
invention. Where an application had not been assigned and there were 
multiple inventors, each inventor had to actually sign a small entity 
statement, the execution of which must have all been coordinated and 
submitted concurrently. Similarly, coordination of execution and 
submission of statements were needed where there was more than one 
assignee. Additionally, the statement forms relating to small business 
concerns and non-profit organizations had to be signed by an 
appropriate official empowered to act on behalf of the small business 
concern or non-profit organizations. Refunds of non-small entity fees 
could only be obtained if a refund was specifically requested within 
two months of the payment of the full (non-small entity) fee and was 
supported by all required small entity statements. See former 
Sec. 1.28(a)(1). The former two-month refund window under Sec. 1.28 was 
not extendable.
    The rigid requirements of Secs. 1.27 and 1.28 led to a substantial 
number of problems. Applicants, particularly pro se applicants, did not 
always recognize that a particular reference to former Sec. 1.9 was 
required in their request to establish small entity status. They 
believed that all they had to do was pay the small entity fee and state 
that they were a small entity. Further, the time required to ascertain 
who were the appropriate officials to sign the statement and to have 
the statements (referring to former Sec. 1.9) signed and collected 
(where more than one was necessary), resulted, in many instances, in 
small entities having to pay the higher non-small entity fees and then 
seek a refund. These situations resulted in: (1) Small entity 
applicants also having to pay additional fees (e.g., surcharges and 
extension(s) of time fees for the delayed submission of the small 
entity statement form); (2) additional correspondence with the Office 
to perfect a claim for small entity status; and (3) the filing of 
petitions with petition fees to revive abandoned applications. This 
increased the pendency of the prosecution of the application in the 
Office and, in some cases, resulted in the loss of patent term. For 
example, under former procedures, if a pro se applicant filed a new 
application with small entity fees but without a small entity 
statement, the Office mailed a notice to the pro se applicant requiring 
the full basic filing fee of a non-small entity. Even if the applicant 
timely filed a small entity statement, the applicant needed to timely 
pay the small entity surcharge for the delayed submission of the small 
entity statement to avoid abandonment of the application. A second 
example was a non-profit organization paying the basic filing fee as a 
non-small entity because of difficulty in obtaining the non-profit 
small entity statement form signed by an appropriate official. In this 
situation, a refund pursuant to Sec. 1.26, based on establishing status 
as a small entity, could only be obtained if a statement under 
Sec. 1.27 and the request for a refund of the excess amount were filed 
within the non-extendable two-month period from the date of the timely 
payment of the full fee. A third example was an application filed 
without the basic filing fee on behalf of a small business concern by a 
practitioner who included the standard authorization to pay additional 
fees. The Office would have immediately charged the non-small entity 
basic filing fee without specific notification thereof at the time of 
the charge. By the time the deposit account statement was received and 
reviewed, the two-month period for refund could have expired.
    Accordingly, a simpler procedure to establish small entity status 
will reduce processing time within the Office and will be a tremendous 
benefit to small entity applicants as it will eliminate the time-
consuming and aggravating processing requirements that were mandated by 
the former rules. Thus, the instant simplification will help small 
entity applicants to receive patents sooner with fewer expenditures in 
fees and resources and the Office can issue the patent with fewer 
resources.
    Assertion as to entitlement to small entity status; assertion by 
writing: The Office will now allow small entity status to be 
established by the submission of a simple written assertion of 
entitlement to small entity status. The former formal requirements of 
Sec. 1.27, which included a reference to either former Sec. 1.9, or to 
the exclusive rights in the invention, are eliminated.
    The written assertion is not required to be presented in any 
particular form. Written assertions of small entity status or 
references to small entity fees will be liberally interpreted to 
represent the required assertion. The written assertion can be made in 
any paper filed in or with the application and need be no more than a 
simple sentence or a box checked on an application transmittal letter 
or reply cover sheet. It is the intent of the Office to modify its 
application transmittal forms to provide for such a check box. 
Accordingly, small entity status can be established without submission 
of any of the former small entity statement forms (PTO/SB/09-12) that 
embody and comply with the former requirements of Sec. 1.27 and which 
were previously used to establish small entity status. Practitioners 
may, of course, continue to use such forms or similar forms if they 
believe small entity forms serve an educational purpose for their 
clients.
    Assertion by Payment of Small Entity Basic Filing or Basic National 
Fee: The payment of an exact small entity basic filing (Secs. 1.16(a), 
(f), (g), (h), or (k)) or basic national fee (Secs. 1.492(a)(1), 
(a)(2), (a)(3), (a)(4), or (a)(5)) is also considered to be a 
sufficient assertion of entitlement to small entity status. An 
applicant filing a patent application and paying an exact small entity 
basic filing or basic national fee automatically establishes small 
entity status for the application even without any further written 
assertion of small entity status. This is so even if an applicant 
inadvertently selects the wrong type of small entity basic filing or 
basic national fee for the application being filed. If small entity 
status was not established when the basic filing or basic national fee 
was paid, such as by payment of a large entity basic filing or basic 
national fee, a later claim to small entity status requires an (actual) 
written assertion. Payment of a small entity fee other than a small 
entity basic filing or basic national fee (e.g., extension of time, or

[[Page 54611]]

issue fee) without inclusion of a written assertion is not sufficient.
    Even though applicants can assert small entity status only by 
payment of an exact small entity basic filing or basic national fee, 
the Office encourages applicants to also file a written assertion of 
small entity status as well as pay the exact amount of the small entity 
basic filing or basic national fee. To that end, the Office intends to 
amend the application transmittal forms (PTO/SB/05, PTO/SB/18, PTO/SB/
19) to include a check box that can be used as a written assertion of 
small entity status. A written assertion will provide small entity 
status should applicant fail to pay the exact small entity basic filing 
or basic national fee. The limited provision providing for small entity 
status by payment of an exact small entity basic filing or basic 
national fee is only intended to act as a safety net to avoid possible 
financial loss to inventors or small businesses that qualify for small 
entity status. As noted in the discussion relating to Sec. 1.33(a), one 
may not wish to solely rely upon use of a written assertion and pay the 
exact amount of the basic filing or basic national fee, particularly 
for assignees and submissions by one of the inventors, after an 
executed oath or declaration under Sec. 1.63 has been submitted.
    Caution: Even though small entity status is accorded where the 
wrong type of small entity basic filing fee or basic national fee is 
selected but the exact amount of the fee is paid, applicant still needs 
to pay the correct small entity amount for the basic filing or basic 
national fee where selection of the wrong type of fee results in a 
deficiency. While an accompanying general authorization to charge any 
additional fees suffices to pay the balance due of the proper small 
entity basic filing or basic national fee, specific authorizations to 
charge fees under Sec. 1.17 or extension of time fees do not suffice to 
pay any balance due of the proper small entity basic filing or basic 
national fee because they do not actually authorize payment of small 
entity amounts.
    Examples: Applications under 35 U.S.C. 111(a): If an applicant were 
to file a utility application under 35 U.S.C. 111(a), yet only pay the 
exact small entity amount for a design application (currently the small 
entity filing fees for utility and design applications are $345 and 
$155, respectively), small entity status for the utility application 
would be accorded. See the following examples:
    (1) Where the utility application under 35 U.S.C. 111(a) was filed 
inadvertently with the exact small entity basic filing fee for a design 
application rather than for a utility application and an authorization 
to charge the filing fee was not present, the Office would accord small 
entity status and mail a Notice to File Missing Parts of Application, 
requiring the $190 difference between the small entity utility 
application filing fee owed and the small entity design application 
filing fee actually paid plus a small entity surcharge (of $65) for the 
late submission of the correct filing fee.
    (2) Where the utility application under 35 U.S.C. 111(a) was filed 
without any filing fee but the $155 exact small entity filing fee for a 
design application was inadvertently paid in reply to a Notice to File 
Missing Parts of Application, small entity status would be established 
even though the correct small entity filing fee for a utility 
application was not fully paid. While the Office would notify applicant 
of the remaining amount due, including the need for a small entity 
surcharge in view of the deficiency in the filing fee, the period for 
reply to pay the correct small entity utility basic filing fee and 
surcharge would, however, continue to run. Small entity extensions of 
time under Sec. 1.136(a) would be needed for the later submission of 
the $190 difference between the $345 small entity utility basic filing 
fee owed and the $155 small entity design filing fee inadvertently paid 
as well as the small entity surcharge. If there was an authorization to 
charge a deposit account in the reply to the Notice, the $190 
difference would have been charged along with the small entity $65 
surcharge and the period for reply to the Notice to File Missing Parts 
of Application would not continue to run.
    Applications entering the national stage under 35 U.S.C. 371: 
Section 1.492(a) sets forth five (5) different basic national fee 
amounts which apply to different situations. If an applicant pays a 
basic national fee which is the exact small entity amount for one of 
the fees set forth in Sec. 1.492(a), but not the particular fee which 
applies to that application, the applicant will be considered to have 
made an assertion of small entity status. This is true whether the fee 
paid is higher or lower than the actual fee required. See the following 
examples.
    (1) An applicant pays $485 (the small entity amount due under 
Sec. 1.492(a)(3), where the United States was neither the International 
Searching Authority (ISA) nor the International Preliminary Examining 
Authority (IPEA) and the search report was not prepared by the European 
Patent Office (EPO) or Japanese Patent Office (JPO)) when in fact the 
required small entity fee is $420 under Sec. 1.492(a)(5), because the 
JPO or EPO prepared the search report. The applicant will be considered 
to have made the assertion of small entity status. The office will 
apply $420 to the payment of the basic national stage fee and refund 
the overpayment of $65.
    (2) An applicant pays $420 (the small entity fee due under 
Sec. 1.492(a)(5) where the search report was prepared by the EPO or 
JPO). In fact, the search report was prepared by the Australian Patent 
Office and no preliminary examination fee was paid to the United States 
Patent and Trademark Office. Thus, the required small entity fee is 
$485 under Sec. 1.492(a)(3). The applicant will be considered to have 
made the assertion of small entity status. If the applicant has 
authorized payment of fee deficiencies to a deposit account, the Office 
will charge the $65 to the deposit account and apply it and the $420 to 
the basic national fee. If there is no authorization or there are 
insufficient funds in the deposit account, the basic national fee 
payment is insufficient and the balance is due. If the balance is not 
provided before 20 or 30 months from the priority date has expired, the 
application will be abandoned.
    If payment is attempted of the proper type of basic filing or basic 
national fee (applicant correctly identifies the type of fee for the 
type of application being filed), but the amount of the fee paid is not 
the exact small entity fee required (an incorrect fee amount is 
supplied) and a written assertion of small entity status is not 
present, small entity status will not be accorded. The Office will mail 
a notice of insufficient basic filing or basic national fee with a 
surcharge due as in prior practice if an authorization to charge the 
basic filing or basic national fee is not present. The Office does not 
consider a basic filing or basic national fee submitted in an amount 
above the correct fee amount, but below the non-small entity fee 
amount, as a request to establish small entity status unless an 
additional written assertion is also present. The submission of a basic 
filing or basic national fee below the correct fee amount also does not 
serve to establish small entity status.
    Where an application is originally filed by a party, who is in fact 
a small entity, with an authorization to charge fees (including basic 
filing or national fees) and there is no indication (assertion) of 
entitlement to small entity status present, that authorization is not 
sufficient to establish small entity status unless the authorization is 
specifically directed to small entity basic filing or basic national 
fees. The general

[[Page 54612]]

authorization to charge fees will continue to be acted upon immediately 
and the full (not small entity) basic filing or basic national fees 
will be charged. Applicant will have three months to request a refund 
by asserting entitlement to small entity status. This is so even if the 
application is a continuing application where small entity status had 
been established in the prior application.
    Parties who can assert entitlement to small entity status by 
writing: The parties who can assert entitlement to small entity status 
by writing includes all parties permitted by Sec. 1.33(b) to file a 
paper in an application. This eliminates the additional requirement of 
obtaining the signature of an appropriate party other than the party 
prosecuting the application. By way of example, in the case of three 
pro se inventors for a particular application, the three inventors upon 
filing the application can submit a written assertion of entitlement to 
small entity status and thereby establish small entity status for the 
application. For small business concerns and non-profit organizations, 
the practitioner can supply the assertion rather than require an 
appropriate official of the small business concern or organization to 
execute a small entity statement form. In addition, a written assertion 
of entitlement to small entity status can be made by one of several 
inventors or a partial assignee. Former practice did not require an 
assignee asserting small entity status to submit a Sec. 3.73(b) 
certification, and such certification is not now required under the 
current revision either for partial assignees or for an assignee of the 
entire right, title, and interest.
    Inventors asserting small entity status: Any inventor (of record) 
is permitted to submit a written assertion of small entity status, 
including individuals identified as inventors but who are not 
officially named of record as an executed Sec. 1.63 oath/declaration 
has not yet been submitted. See Sec. 1.41(a)(1). Where an application 
is filed without an executed oath/declaration pursuant to Sec. 1.53(f), 
the Office will accept the written assertion of an individual who has 
merely been identified as an inventor on filing of the application 
(e.g., application transmittal letter) as opposed to having to be named 
as an inventor by the filing of an executed Sec. 1.63 oath or 
declaration (Secs. 1.41(a)(1)). Sections 1.4(d)(2) and 10.18(b) are 
seen as sufficient basis to permit any individual to provide a written 
assertion so long as the individual identifies himself or herself as an 
inventor. An actual inventor who has not been identified as an inventor 
(e.g., by way of application transmittal letter) or named as an 
inventor (i.e., executed Sec. 1.63 oath or declaration) in the file 
record may not file a written assertion as to small entity entitlement.
    Where a Sec. 1.63 oath or declaration is later filed, any original 
written assertion as to small entity status (which has been submitted 
to the Office by an appropriate party under Sec. 1.33(b)) will remain 
unless changed by an appropriate party under Sec. 1.27(f)(2). Where a 
later-filed Sec. 1.63 oath or declaration sets forth an inventive 
entity that does not include the person who initially was identified as 
an inventor and who asserted small entity status, small entity status 
will also remain.
    A distinction exists, however, as to who can file a written 
assertion of entitlement to small entity status once the written 
assertion is signed. Sections 1.27(c)(2)(ii) and 1.33(b) permit one of 
several inventors to file as well as sign a written assertion. The same 
is not true for a partial assignee. Section 1.27(c)(2)(iii). While a 
partial assignee may sign a written assertion, the written assertion 
must be filed by an appropriate party under Sec. 1.33(b).
    Parties who can assert entitlement to small entity status by 
payment of basic filing or national fee: Where small entity status is 
sought by way of payment of the basic filing or basic national fee, any 
party, such as a partial assignee, may submit payment, such as by 
check, and small entity status will be accorded.
    Policy Considerations: Office policy and procedures already permit 
establishment of small entity status in certain applications through 
simplified procedures. For example, small entity status previously 
could be established in a continuing or reissue application simply by 
payment of the small entity basic filing fee if the prior application/
patent had small entity status. See former Sec. 1.28(a)(2). The instant 
concept of payment of the small entity basic statutory filing fee to 
establish small entity status in a new application is merely a logical 
extension of that practice.
    There may be some concern that elimination of the small entity 
statement forms will result in applicants who are not actually entitled 
to small entity status requesting such status. On balance, it seems 
that the requirements produce more errors where small entity applicants 
who are entitled to such status run afoul of procedural hurdles created 
by the former requirements of Sec. 1.27 than the requirements prevent 
status claims for those who are not in fact entitled to such status.
    Continued Obligations for Thorough Investigation of Small Entity 
Status: Applicants should not confuse the fact that the Office is 
making it easier to assert small entity status with the need to do a 
complete and thorough investigation before an assertion is made that 
they do, in fact, qualify for small entity status. It should be clearly 
understood that, even though it is much easier to assert and thereby 
establish small entity status, applicants will continue to need to make 
a full and complete investigation of all facts and circumstances before 
making a determination of actual entitlement to small entity status. 
Where entitlement to small entity status is uncertain, it should not be 
claimed. See MPEP 509.03. The assertion of small entity status (even by 
mere payment of the exact small entity basic filing fee) is not 
appropriate until such an investigation has been completed. Thus, in 
the previous example of the three pro se inventors, before one of the 
inventors pays the small entity basic filing or basic national fee to 
establish small entity status, the single inventor asserting 
entitlement to small entity status needs to check with the other two 
inventors to determine whether small entity status is appropriate.
    If small entity status is desired on the basis that the entity is a 
small business concern, the investigation should include a review of 
whether the business is a small business concern as defined by section 
3 of the Small Business Act (Public Law 85-536 as amended by Public Law 
106-50). Review of whether the business is a ``concern'' as the term is 
used in the regulations promulgated by the Small Business 
Administration at 13 CFR 121 is also appropriate. Applicants should 
recognize that more is involved than merely determining that the number 
of employees of the business does not exceed a numerical cap. While 13 
CFR 121.802 specifically addresses the size standards for paying 
reduced patent fees, it is emphasized that the provisions of general 
applicability set forth in 13 CFR 121 also apply. Thus, the definition 
of ``business concern'' set forth in 13 CFR 121.105, the provisions 
regarding what is an affiliation as set forth in 13 CFR 121.103, and 
the provisions on the manner in which the number of employees should be 
calculated as set forth in 13 CFR 121.106 are all read into 13 CFR 
121.802. Additionally, if the business has assigned, granted, conveyed 
or licensed (or is under an obligation to do so) any rights in the 
invention to others directly or indirectly, the same review

[[Page 54613]]

for each other entity would also be appropriate.
    Furthermore, once status as a small entity has been established in 
an application, a new determination of entitlement to small entity 
status is needed when the issue fee is due and when any maintenance fee 
is due. It should be appreciated that the costs incurred in 
appropriately conducting the initial and subsequent investigations may 
outweigh the benefit of claiming small entity status. For some 
applicants it may be desirable to file as a large entity (by not filing 
a small entity statement and by submitting large entity fees) rather 
than undertaking the appropriate investigations which may be both 
difficult and time-consuming.
    The intent of Sec. 1.27 is that the person making the assertion of 
entitlement to small entity status is the person in a position to know 
the facts about whether or not status as a small entity can be properly 
established. That person, thus, has a duty to investigate the 
circumstances surrounding entitlement to small entity status to the 
fullest extent. Therefore, while the Office is interested in making it 
easier to claim small entity status, it is important to note that small 
entity status must not be claimed unless the person or persons can 
unequivocally make the required self-certification. Sections 1.27(h)(1) 
and (2) recite former provisions in Secs. 1.28(d)(1) and (2) relating 
to fraud practiced on the Office.
    Consistent with Sec. 1.4(d)(2), the payment of a small entity basic 
filing or national fee constitutes a certification under Sec. 10.18(b). 
Thus, a simple payment of the small entity basic filing or basic 
national fee, without a specific written assertion, activates the 
provisions of Sec. 1.4(d)(2) and, by that, invokes the self-
certification requirement set forth in Sec. 10.18(b), regardless of 
whether the party is a practitioner or non-practitioner.
    Clarification of Need for Investigation: Section 1.27(f) is 
clarified by explicitly providing that a determination ``should'' be 
made of entitlement to small entity status according to the requirement 
set forth in Sec. 1.27(a) prior to asserting small entity status. The 
need for such a determination of entitlement to small entity status 
prior to assertion of small entity status is set forth in terms of that 
there ``should'' be such a determination, rather than that there 
``must'' be such a determination. In view of the ease with which small 
entity status will now be obtainable, it is deemed advisable to provide 
an explicit direction that a determination of entitlement to small 
entity status, pursuant to Sec. 1.27(a), should be made before its 
assertion. Consideration was given to making the need for a 
determination a requirement rather than advisory; however, the decision 
was made to make it advisory, particularly in view of the following 
possible scenario: One of three inventors submits a written assertion 
of entitlement to small entity status without making any determination 
of entitlement to such status, such as by checking with the other two 
inventors to see if they have assigned any rights in the invention. 
Small entity status is proper at the time asserted notwithstanding the 
lack of a proper determination. If the determination is set forth as a 
requirement (``must''), the lack of such a determination might act to 
cause an unduly harsh result where small entity status was in fact 
appropriate and the failure to check prior to assertion is innocent. It 
is recognized that the use of ``should'' may cause concern that a 
cavalier approach to asserting entitlement to small entity status may 
be taken by encouraging some who are asserting status not to make a 
complete determination as the determination is not set forth as being 
mandatory. On balance, it is thought that the use of ``should'' will 
lead to more equitable results. The danger of encouraging the assertion 
of small entity status without a prior determination as to 
qualification for small entity status is thought to be small, because 
if the status turns out to be improper, the lack of a prior 
determination may result in a failure to meet the lack of deceptive 
intent requirements under Sec. 1.27(h) or Sec. 1.28(c). The Office has 
noted that any attempt to improperly establish status as a small entity 
will be viewed as a serious matter. See MPEP 509.03.
    Removal of Status: Section 1.27(g)(2) is also clarified by 
providing that once small entity status is established in an 
application, any change in status from small to large entity also 
requires a specific written assertion to that extent, rather than only 
payment of a large entity fee, similar to current practice. For 
example, when paying the issue fee in an application that has 
previously been accorded small entity status and the required new 
determination of continued entitlement to small entity status reveals 
that status has been lost, applicant should not just simply pay the 
large issue fee or cross out the recitation of small entity status on 
the returned copy of the notice of allowance (PTOL-85(b)), but should 
submit a separate paper requesting removal of small entity status 
pursuant to Sec. 1.27(g)(2).
    Correction of any inadvertent and incorrect establishment of small 
entity status is by way of a paper under Sec. 1.28(c) as in former 
practice.
    Paragraph by paragraph analysis: Section 1.27 is amended: (1) in 
its title to reflect placement of the definitions for small entities in 
the section (transferred from former Sec. 1.9(f)), (2) to indicate that 
an establishment of small entity status permits the payment of small 
entity fees, and (3) to reflect transfer of subject matter from 
Sec. 1.28 relating to determination of entitlement to and notification 
of loss of entitlement to small entity status, and fraud on the Office.
    Section 1.27 is amended to provide the definition of who can 
qualify to pay small entity fees: the amendments (1) define a 
``person'' to include inventors and also noninventors holding rights in 
the invention; (2) explain that qualification depends on whether any 
rights in the invention were transferred and to whom; (3) provide that 
a license by a person to the Government under certain situations does 
not bar entitlement to small entity status.
    Section 1.27(a) contains the subject matter relating to definitions 
of small entities: (1) Persons, (2) small business concerns; and (3) 
nonprofit organizations, in one paragraph rather than previously in 
Secs. 1.9(c) through (e). The expression ``independent inventor'' of 
former Sec. 1.9(c) is replaced with the term ``person'' in current 
Sec. 1.27(a)(1) (and other paragraphs of this section). The term 
``person'' in Sec. 1.27(a) includes individuals who are inventors and 
also individuals who are not inventors but who have been transferred 
some right or rights in the invention. This clarifies that individuals 
who are not inventors but who have rights in the invention are covered 
by the provisions of Sec. 1.27.
    Sections 1.27(a)(2)(i) and (a)(3)(i) retain the requirement of 
former Sec. 1.27 that in order for small entity businesses and 
nonprofit organizations to remain entitled to small entity status, they 
must not in some manner transfer or be under an obligation to transfer 
any rights in the invention to any party that would not qualify for 
small entity status. The absence of this requirement from former 
Secs. 1.9(d) and (e) (small business concern and nonprofit 
organization, respectively), notwithstanding its presence in former 
Sec. 1.9(c) (independent inventor), led to confusion as to the 
existence of such a requirement for small businesses concerns and 
nonprofit organizations. Former Secs. 1.9(d) and (e), where this 
requirement was absent, have been deleted and it is now made clear that 
these rights transfer requirement applies to all parties (independent 
inventors, small business concerns and nonprofit organizations, 
respectively).

[[Page 54614]]

    Section 1.27(a)(2)(ii) has the term ``size'' removed from the 
reference to standards set by the SBA as possibly misleading as the SBA 
standards for entitlement to small entity status for small businesses 
require more than a size determination.
    Section 1.27(a)(4)(i) provides a new exception, relating to the 
granting of a license to the U.S. Government by a person, that results 
from a particular rights determination. Such a license would not bar 
entitlement to small entity status. Similarly, Sec. 1.27 (a)(4)(ii) has 
transferred to it (from former Secs. 1.27(c)(2) and (d)(2)) the current 
exceptions relating to a licence to a Federal agency by a small 
business or a nonprofit organization resulting from a particular 
funding agreement.
    Sections 1.27(b) through (e) are reformatted and amended to recite 
``assertion'' as a new means for establishing small entity status to 
replace ``statement,'' and new Sections 1.27 (f), (g)(1) and (g)(2), 
and (h) are added.
    Section 1.27(c) is reformatted to add Secs. 1.27(c)(1) through 
(c)(4).
    Section 1.27(c)(1) permits assertion of small entity status by a 
writing that is clearly identifiable (Sec. 1.27(c)(1)(i)), is signed 
(Sec. 1.27(c)(1)(ii)), and conveys the concept of small entity status 
without the need for specific words but with a clear indication of an 
intent to assert entitlement to small entity status 
(Sec. 1.27(c)(1)(iii)).
    Section 1.27(c)(2) makes submission of a written assertion to 
obtain small entity status easier in view of increased categories of 
parties who could sign and file such a paper. The parties who can sign 
the written assertion are identified as: one of the parties who can 
currently submit a paper under Sec. 1.33(b) (Sec. 1.27(c)(2)(i)), at 
least one of the individuals identified as an inventor (even though a 
Sec. 1.63 executed oath or declaration has not been filed) 
(Sec. 1.27(c)(2)(ii)) rather than all the inventors (applicants) as 
required by Sec. 1.33(b)(4) for other types of papers, or a partial 
assignee (Sec. 1.27(c)(2)(iii)) rather than all the partial assignees 
and any applicant retaining an interest as required by Sec. 1.33(b)(3) 
for other types of papers. A Sec. 3.73(b) certification is not required 
for an assignee under either Secs. 1.27(c)(2)(i) or (iii). The parties 
who can file the signed written assertion include any one of the 
identified inventors (Sec. 1.27(c)(2)(ii)), but not a partial assignee 
(Sec. 1.27(c)(2)(iii)) unless resort is made to a party identified 
under Sec. 1.33(b).
    Section 1.27(c)(3) permits the payment, by any party, of an exact 
amount of one of the small entity basic filing (Secs. 1.16(a), (f), 
(g), (h), or (k)) or basic national (Secs. 1.492(a)(1) through (a)(5)) 
fees to be treated as a written assertion of entitlement to small 
entity status even where an incorrect type of basic filing or basic 
national fee is inadvertently selected in error. Section 1.27(c)(3)(i) 
provides that where small entity status was accorded based on the 
payment of a wrong type of small entity basic filing or basic national 
fee, the correct small entity amount would still be owed along with the 
surcharge set forth in Secs. 1.16(e) or (l) for the basic filing fee 
(there is no surcharge for the basic national fee). Section 
1.27(c)(3)(ii) provides that payment of a small entity fee in its exact 
amount for a fee other than what is provided for in Sec. 1.27(c)(3) is 
not sufficient to establish small entity status absent a concomitant 
written assertion of entitlement to small entity status. After a basic 
filing or basic national fee is paid as a large entity, a refund under 
Sec. 1.28(a) of the large entity portion can only be obtained by 
establishing small entity status by a written assertion and not by 
paying a second basic filing or basic national fee in a small entity 
amount. Payment of a large entity basic filing or basic national fee 
precludes paying a second basic filing or national fee in a small 
entity amount to establish small entity status.
    Section 1.27(c)(4) recites material transferred from former 
Sec. 1.28(a)(2).
    Section 1.27(d) is amended to provide that fees other than the 
basic filing and basic national fees can only be paid in small entity 
amounts if submitted with or subsequent to a written assertion of 
entitlement to small entity status. For refunds, where the small entity 
assertion is submitted after payment of a large entity fee (rather than 
with or subsequent to payment of a small entity fee), the paragraph 
clarifies that an exception exists for Sec. 1.28(a) refunds (of the 
large entity portion of a fee within three months of payment thereof if 
the refund request is accompanied by a written assertion of entitlement 
to small entity status).
    Section 1.27(e)(1) is added to reference Sec. 1.27(g)(1) as the 
means of changing small entity status. It is clarified that where 
rights in an invention are assigned, or where there is an obligation to 
assign, to a small entity subsequent to an assertion of entitlement to 
small entity status, a second assertion is not required. Section 
1.27(e)(2) clarifies that once small entity status is withdrawn a new 
written assertion is required to again obtain small entity status.
    Section 1.27(f) is added to clarify the need to determine 
entitlement to small entity status prior to asserting small entity 
status, and that the Office generally does not question assertions of 
entitlement to small entity status.
    Section 1.27(g)(1) is added to contain material transferred from 
former Sec. 1.28. Section 1.27(g)(2) is added to revise the current 
reference to the party who can sign a notification of loss of 
entitlement to small entity status to require a party identified in 
Sec. 1.33(b).
    Sections 1.27(h)(1) and (2) are added to contain material 
transferred from former Secs. 1.28(d)(1) and (d)(2) relating to fraud 
attempted or committed on the Office in regard to paying small entity 
fees. The material has been reformatted slightly to create 
Secs. 1.27(h)(1)(i) and (ii), and Secs. 1.27(h)(2)(i) and (ii).
    Comment 12: Two comments state that the term ``person'' as proposed 
in Sec. 1.9(f) (now transferred to Sec. 1.27(a)(1)) is confusing. While 
person is defined in the first sentence as an inventor or other 
individual, the second sentence rather than using person uses inventor 
or other individual as if to imply that an inventor or individual who 
has transferred some rights is not a person within the meaning of 
Sec. 1.27. This seems to be inconsistent with Sec. 1.27(c) that 
qualifies ``person'' as a party entitled to small entity status even if 
an inventor has agreed to license rights in the invention to another 
small entity. It was suggested that the second sentence be deleted and 
combined with the first sentence. An additional argument was made that 
while it is understood that ``person'' was being used in the context of 
Sec. 1.27 small entity rights, the normal legal definition of 
``person'' includes corporations and the term is therefore broader than 
the use made of it in Sec. 1.27. It was suggested that another word be 
used or the term ``natural'' be used as a modifier.
    Response: The comments are not adopted. The use of ``person'' in 
the first sentence of Sec. 1.27(a)(1) is intended to refer to those who 
can qualify for small entity status. That the second sentence starts 
with ``[a]n inventor or other individual who has transferred some 
rights'' is intentional in that it may be that such inventor or 
individual cannot qualify for small entity status if rights have been 
transferred to a party who cannot qualify for small entity status. It 
is intended under Sec. 1.27(c) that an inventor who has transferred 
rights to another who can qualify shall not be disqualified from 
claiming small entity status whether an individual, small business or 
nonprofit organization. The use of two sentences enables the separation 
of two different concepts--where no transfer of rights has occurred, 
and where some transfer of rights has occurred. Use of the suggested

[[Page 54615]]

combined sentence may not make it clear to small entities that 
circumstances where there is no transfer of rights are included. 
Similarly, it is believed that the use of the term ``person'' without a 
modifier of ``natural'' would have the best opportunity for being 
understood by the target audience of Sec. 1.27.
    Comment 13: Several comments supported the proposed change to 
Sec. 1.27, as well as to Secs. 1.9 and 1.28.
    Comment 14: Two comments opposed the ability to obtain small entity 
status based on payment of a small entity filing fee in Sec. 1.27(c)(3) 
(proposed as Sec. 1.27(b)(3)) maintaining that the entire procedure is 
now very complex and would not be understood by the great majority of 
practitioners and their support staffs and the Office support staff 
that must administer the program. It is believed that it is not too 
much to ask that someone seeking to claim small entity status make an 
affirmative statement regarding eligibility for such status. Although 
these procedures affect small entities to a greater extent, large 
entities are affected by the costs that would be associated with trying 
to implement a complex scheme of which small entities could not 
properly avail themselves.
    Response: The comments are not adopted. Sixty percent of all refund 
requests that the Office handles are related to small entity status. As 
outlined in the proposed rulemaking and again in this final rule, small 
entities are having a very difficult time obtaining, in a timely 
manner, a benefit that they are clearly entitled to, particularly for 
pro se inventors. The amended rule will obviate many of the 
difficulties now encountered by small entities. The payment of an exact 
amount of small entity filing fee is seen to be just as much an 
affirmative act as the submission of a statement of entitlement, and is 
probably far clearer an act of intention to claim small entity status 
than resort only to wide variants of language inevitably submitted by 
pro se applicants that must then be interpreted by the Office. The 
Office will, however, endeavor to have applicants supply an actual 
statement of entitlement to small entity status by providing a check 
box for such (with a clear easily understood statement) on application 
transmittal forms.
    Comment 15: One comment states that Sec. 1.27(a)(4)(ii) (formerly 
Sec. 1.9(f)(4)(ii)) is confusing because it states that a ``license'' 
to a Federal agency is not a ``license'' per se. Alternative language 
is suggested to clarify the section.
    Response: The comment is adopted.
    Comment 16: One comment suggested a further simplification by 
permitting any person authorized to act on behalf of the inventor/
applicant to make an assertion of entitlement to small entity status. 
The Office should have an announced policy of not verifying whether the 
person making the assertion is in fact authorized with the burden 
resting with applicant that the person making the assertion is 
authorized to do so. The situations where a person would not be 
authorized are thought to be so rare as to justify the Office removing 
itself from determining proper authorization.
    Response: The comment is not adopted. Sections 1.27(c)(2)(i) 
through (c)(2)(iii) identifies certain parties who can sign a written 
assertion of entitlement to small entity status. The parties, while not 
all encompassing, are nevertheless broadly defined and include all the 
parties who can reasonably be expected to desire to submit a written 
assertion. It is not seen that the Office should accept a written paper 
from a party not so included. Section 1.27(c)(3), as made final, 
permits any party (in addition to those parties defined in 
Sec. 1.27(c)(2)) to pay the basic small entity filing fee and thereby 
assert entitlement to small entity status. If a need were to arise for 
some party other than those defined in Sec. 1.27(c)(2) to assert small 
entity status, it would be expected to be close to the time of filing 
the application and when the filing fee needs to be paid. In such 
circumstances, any party could pay the small entity filing fee. To 
permit the acceptance of a paper by a third party with whatever 
statements both germane to small entity entitlement and whatever other 
matters might be raised therein would seem to be burdening applicants 
with unnecessary problems.
    Section 1.28: Section 1.28 is amended to be entirely reformatted 
with some material transferred to Sec. 1.27.
    Section 1.28(a) is amended to allow a three-month period (formerly 
a two-month period) for refunds based on later establishment of small 
entity status. See further discussion in Sec. 1.28(b)(1).
    Section 1.28(b) is amended to set forth Sec. 1.28(b)(1), defining 
the start date of the three-month refund period of Sec. 1.28(a) to be 
the date that the full fee has been paid (transferred from former 
Sec. 1.28(a)(1)), and Sec. 1.28(b)(2), stating that the deficiency 
amount owed under Sec. 1.28(c) is calculated by using the date on which 
the deficiency was paid in full (transferred from former Sec. 1.28(c)).
    Sections 1.28(b)(1) and (2) were proposed to be amended to refer to 
Sec. 1.22(c) setting forth a definition of when a fee has been paid by 
the means used to pay the fee, but will not be so amended as the 
proposed amendment to Sec. 1.22(c) will not be made. The subject matter 
of proposed Sec. 1.22(c), which proposed to set forth that the filing 
date for an authorization to charge fees starts the period for refunds 
under Sec. 1.28(a) will, however, be given effect by internal 
instruction as of the effective date of the instant final rule and will 
be reflected in the MPEP. See the discussion of Sec. 1.22, above. The 
previous time period for a refund request was two months from payment 
of the full fee. The date of payment for refund purposes varied 
depending on the means the applicant used to pay the required fee. For 
example, if the applicant paid the required fee by check, the date of 
payment was the date on which the fee paper, including the check, was 
filed in the Office. If the applicant authorized a charge to a deposit 
account, however, the date of payment was the date the Office debited 
the deposit account. In view of the change in practice that results in 
Sec. 1.28(b)(1) according the same date of payment for checks and 
authorizations to charge deposit accounts, the refund period of 
Sec. 1.28(a) is extended to three months. This will in part offset any 
shortening of the refund time period that may result from starting the 
time period as of the receipt (or Secs. 1.8 or 1.10) date of the fee 
paper instead of the debit date for an authorization to charge a 
deposit account. Additionally, in view of changes in practice under 
Sec. 1.27 to ease the claiming of small entity status, the need for 
refunds should diminish, and the different payment date of an 
authorization to charge a deposit account for small entity refund 
purposes should not cause much inconvenience to applicants.
    Section 1.28(c) is amended to require that deficiency payments must 
be submitted separately for each file (Sec. 1.28(c)(1)) and must 
include the itemization of the deficiency payment by identifying: the 
type of fee along with the current fee amount (Sec. 1.28(c)(2)(ii)(A)), 
the small entity amount paid and when (Sec. 1.28(c)(2)(ii)(B)), the 
deficiency owed for each individual fee paid in error 
(Sec. 1.28(c)(2)(ii)(C)), and the total deficiency payment owed 
(Sec. 1.28(c)(2)(ii)(D)), and is amended to provide that any failure to 
comply with the separate payment and itemization requirements will 
allow the Office at its option to charge a processing fee or set a non-
extendable one-month period for compliance to avoid return of the paper 
(Sec. 1.28(c)(3)).
    In each of Fiscal Years 1999 and 2000, certain patent fees were 
reduced. See

[[Page 54616]]

Revision of Patent and Trademark Fees for Fiscal Year 2000, Final Rule, 
64 FR 67774 (December 3, 1999), and Revision of Patent Fees for Fiscal 
Year 1999, Final Rule, 63 FR 67578 (December 8, 1998). Thus, a sentence 
was added in Sec. 1.28(c)(2)(i) that requires a deficiency payment to 
be at least equal to the amount paid in error as a small entity and is 
also calculated as of the date the deficiency is paid in full. For 
example, the basic filing fee for a utility application was reduced 
from $760 to $690. Where the small entity basic filing fee had been 
improperly paid by submission of $380 under the prior fee amount, if 
the error was determined and paid in full when the new amount is in 
effect, the balance owed at the date of payment in full would be $380 
(the amount that is at least equal to the amount paid in error and not 
$310 (the new large entity amount of $690--the small entity amount paid 
in error of $380). (Note, for revival under Sec. 1.137, if abandonment 
occurred for failure to pay a basic filing fee, the amount owed would 
be the fee in effect when the Sec. 1.137 petition was filed and not the 
fee previously owed causing abandonment.).
    Paragraph by Paragraph Analysis: The title of Sec. 1.28 is revised 
in view of transfer of material to Sec. 1.27 to focus on refunds and on 
how errors in status are excused.
    Sections 1.28(a) through (c) are reformatted.
    Section 1.28(a)(1) is amended as Sec. 1.28(a).
    Section 1.28(a) is amended to clarify that the period for a refund 
runs from payment of the ``full fee,'' and that it is the payment of 
the full fee that is considered the significant event relative to 
establishing status for a particular fee. Additionally, Sec. 1.28(a) 
amends the time period for requesting a refund based upon later 
establishment of small entity status. The time period is three months 
measured from the date of the timely payment of the full fee.
    Some subject matter in former Sec. 1.28(a)(2) has been transferred 
to Sec. 1.27(c)(4). The next to last sentence, relating to filing a 
continuing or reissue application and referencing a small entity 
statement in the prior application or patent, has been deleted as 
unnecessary. The formerly required reference to status in the prior 
application or patent is replaced by the equally easily written 
assertion of Sec. 1.27(c)(4) in the related, continuing or reissue 
application. Written references to small entity status in a prior 
application, including submission of a copy of the small entity 
statement in a prior application, submitted in a continuing application 
subsequent to the effective date of any final rule, will be liberally 
construed under Sec. 1.27(c)(1)(iii). Similarly, the last sentence of 
current Sec. 1.28(a)(2) is deleted as the payment option for 
establishing small entity status in continuing or reissue applications 
has been expanded in Sec. 1.27(c)(3) to include all applications.
    Caution: Although the Office intends to liberally construe what is 
deemed to be an assertion of small entity status, the concept of 
entitlement must be clearly conveyed.

    Example 1: A prior application has been accorded small entity 
status. A continued prosecution application (CPA) under Sec. 1.53(d) 
is filed with a general authorization to charge fees that does not 
state that the fees to be charged are small entity fees. Even though 
the CPA contains the same application number as its prior 
application (and the small entity statement), it would not be 
accorded small entity status and large entity filing fees would be 
immediately charged. This would be so because a new determination of 
entitlement to small entity status must be made upon filing of a new 
application, such as a CPA. Accordingly, in filing the CPA there 
must be some affirmative act to indicate that the determination has 
been done anew and small entity status is still appropriate. Where a 
copy of the small entity statement from the prior application, or a 
written assertion in the CPA application transmittal letter, or an 
authorization to charge small entity fees was present, the result 
would be reversed and small entity status would be accorded the CPA 
application on filing.
    Example 2: A request for continued examination under Sec. 1.114 
is not the filing of a new application and the application would 
retain any small entity status previously accorded without the need 
to do a new investigation or request status by written assertion or 
payment of an exact small entity Sec. 1.17(e) fee.

    The subject matter in former Sec. 1.28(a)(3) has been transferred 
to Sec. 1.27(e)(1).
    Section 1.28(b) is amended to have its subject matter transferred 
to Secs. 1.27(g)(1) and (2). New Secs. 1.28(b)(1) and (b)(2) are added. 
Sections 1.28(b)(1) and (b)(2) were proposed to reference Sec. 1.22(c) 
which was proposed to define the date that a fee was considered paid. 
In view of the decision not to go forward with the proposed change to 
Sec. 1.22(c), the references to Sec. 1.22(c) in Secs. 1.28(b)(1) and 
(2) will not proceed.
    Section 1.28(b)(1) defines the date a fee is paid for the purpose 
of starting the three-month period for refund. Former practice for 
authorizations to charge deposit accounts was to give benefit of the 
date that the deposit account was actually debited by the Office, which 
was a later time than when the paper authorizing charge of the fee to a 
deposit account was filed with the Office. That practice is now 
changed, see discussion re Sec. 1.22, and the change will be reflected 
in the MPEP. It is the date the fee paper is considered received in the 
Office, not the date of debit of the fee to a deposit account, that 
will start the three-month refund period.
    Section 1.28(b)(2) states that the date when a deficiency payment, 
pursuant to Sec. 1.28(c), is paid in full determines the amount of 
deficiency that is due.

    Example: A small entity issue fee has been paid in error in 
January and a paper under Sec. 1.28(c) was submitted the following 
June with the deficiency payment calculated based on the fees in 
effect as of June. The deficiency payment was incorrectly determined 
so that the full amount owed (for the issue fee) was not submitted 
in June. If the mistake in the June payment is not discovered until 
the following November, the extra amount owed must be recalculated 
to take into account any (later legislation, October 1) increase in 
the issue fee.

    Section 1.28(c) is amended to recite that separate submissions, 
including separate payments and itemizations, are required for any 
deficiency payment.
    Section 1.28(c)(1) requires that a deficiency paper/itemization/
submission be limited to one application or one patent file. Where, for 
example, the same set of facts has caused errors in payment in more 
than one application and/or patent file, a separate paper would need to 
be submitted in each file for which an error is to be excused.
    Section 1.28(c)(2) requires that for each fee that was erroneously 
paid as a small entity, the deficiencies owed must be paid, and the 
payment of the deficiencies must be itemized. Section 1.28(c)(2)(i) 
provides in part where there has been a fee decrease, the deficiency 
owed is equal to the amount (previously) paid in error and not the 
difference between the amount (previously) paid in error and the new 
lower large entity fee. Section 1.28(c)(2)(ii) requires the following 
itemizations: the particular fee involved (e.g., basic filing fee, 
extension of time fee) (Sec. 1.28(c)(2)(ii)(A)), the small entity fee 
amount actually paid and when (for example, distinguishing between two 
one-month extension of time fees erroneously paid on two different 
dates) (Sec. 1.28(c)(2)(ii)(B)), the actual deficiency owed for each 
fee previously paid in error (Sec. 1.28(c)(2)(ii)(C)), and the total 
deficiency owed that is the sum of the individual deficiencies owed 
(Sec. 1.28(c)(2)(ii)(D)).
    Section 1.28(c)(3) addresses the failure to comply with the 
separate submission, including separate payment

[[Page 54617]]

and itemization requirements of Secs. 1.28(c)(1) and (c)(2). Section 
1.28(c)(3), upon failure to comply, permits the Office at its option 
either to charge a processing fee (Sec. 1.17(i) is suitably amended) to 
process the paper or require compliance within a one-month non-
extendable time period to avoid return of the paper.
    Former Secs. 1.28(d)(1) and (d)(2) are amended to have the material 
relating to fraud attempted or committed on the Office as to paying of 
small entity fees, transferred to Secs. 1.27(h)(1) and (2). New 
Sec. 1.28(d) is added to clarify that any paper submitted under 
Sec. 1.28(c) is also treated as a notification of loss of small entity 
status under Sec. 1.27(g)(2).
    Section 1.33: Section 1.33(a) is reformatted to create additional 
Secs. 1.33(a)(1) and (a)(2) to separately identify the parties who can 
change a correspondence address depending upon the presence or absence 
of a Sec. 1.63 oath/declaration. The revision is intended to make clear 
what may be a confusing practice to applicants as to which parties can 
set forth or change a correspondence address when an application does 
not yet have an executed Sec. 1.63 oath or declaration by any of the 
inventors. See Sec. 1.14(d)(4) for a similar change regarding status 
and access information. In this section references to a Sec. 1.63 oath/
declaration are intended to mean an executed oath/declaration by any 
inventor, but not necessarily all the inventors.
    Section 1.33(a) is amended to provide that in a patent application 
the applicant must, either in an application data sheet (Sec. 1.76), or 
in a clearly identifiable manner elsewhere, in any papers submitted 
with an application filing, specify a correspondence address to which 
the Office will send notices, letters and other communications relating 
to the application. It is now stated that where more than one 
correspondence address is specified, the Office would determine which 
one to establish as the correspondence address. This is intended to 
cover the situation where an unexecuted application is submitted with 
conflicting addresses, such as one correspondence address being given 
in the application transmittal letter, and a different one in an 
accompanying unexecuted Sec. 1.63, or other similar situations. The 
determination of which of the conflicting correspondence addresses to 
use will be made on a case by case basis, to include such factors as: 
use of the correspondence address in the earliest of two unexecuted 
declarations submitted at different times, or if conflicting addresses 
appear in the same declaration, use of the first correspondence 
address.
    Section 1.33(a) requests the submission of a daytime telephone 
number of the party to whom correspondence is to be addressed. While 
business is to be conducted on the written record (Sec. 1.2), a daytime 
telephone number would be useful in initiating contact that could later 
be reduced to a writing. The phone number would be changeable by any 
party who could change the correspondence address. The term 
``registered'' has been placed before the expression ``attorney or 
agent'' for clarification purposes. See also Sec. 1.33(b) of this 
section and sections 1.34 and 1.36.
    Section 1.33(a)(1) provides that any party filing the application 
and setting forth a correspondence address could later change the 
correspondence address provided that a Sec. 1.63 oath/declaration by 
any of the inventors has not been submitted. The parties who may so 
change the correspondence address would include only the one inventor 
filing the application, even if more than one inventor was identified 
on the application transmittal letter. If two of three inventors filed 
the application, the two inventors filing the application would be 
needed to change the correspondence address. Additionally, any 
registered practitioner named in the application transmittal letter, or 
a person who has the authority to act on behalf of the party that will 
be the assignee (if the application was filed by the party that will be 
the assignee), could change the correspondence address. A registered 
practitioner named in a letterhead would not be sufficient, but rather 
a clear identification of the individual as being a representative 
would be required. A company (to whom the invention has been assigned, 
or to whom there is an obligation to assign the invention) who files an 
application, is permitted to designate the correspondence address, and 
to change the correspondence address, until such time as a (first) 
Sec. 1.63 oath/declaration is filed. The mere filing of a Sec. 1.63 
oath/declaration that does not include a correspondence address does 
not affect any correspondence address previously established on filing 
of the application, or changed per Sec. 1.63(a)(1), even if the 
application was filed by a company that is only a partial assignee. The 
expression ``party that will be the assignee,'' rather than assignee, 
is used in that until a declaration is submitted, inventors have only 
been identified, and any attempted assignment, or partial assignment, 
cannot operate for Office purposes until the declaration is supplied. 
Hence, if the application transmittal letter indicates that the 
application is being filed on behalf of XYZ company, with an assignment 
to be filed later, XYZ company would be allowed to change the 
correspondence address without resort to Sec. 3.73(b) until an executed 
oath or declaration is filed, and with resort to Sec. 3.73(b) after the 
oath or declaration is filed.
    Section 1.33(a)(2) retains the current requirements for changing a 
correspondence address when a Sec. 1.63 oath/declaration by any of the 
inventors has been filed. Where a correspondence address was set forth 
or changed pursuant to Sec. 1.33(a)(1) (prior to the filing of a 
Sec. 1.63 oath or declaration), that correspondence address remains in 
effect upon filing of a Sec. 1.63 declaration and can then only be 
changed pursuant to Sec. 1.33(a)(2).
    Section 1.33(b) has been simplified to make it easier to understand 
who are appropriate parties to file papers, particularly in view of the 
change to Sec. 3.71(b). The paragraph has also been amended to provide 
an exception for the filing of a written assertion of small entity 
status under Sec. 1.27(c)(2)(ii). One of several inventors will now be 
able to sign a written assertion of small entity status and be an 
appropriate party to file such assertion/paper.
    Section 1.33(b)(1) has the term ``registered'' placed before the 
expression ``attorney or agent'' for clarification purposes. See also 
Sec. 1.33(a) and Secs. 1.34 and 1.36.
    Section 1.33(b)(3) is amended to add a reference to Sec. 3.71.
    Comment 17: One comment was received requesting that the ability to 
change the correspondence address not be keyed to the filing of a 
Sec. 1.63 oath/declaration, especially when such oath/declaration is 
signed by less than all the inventors and when it may in no way involve 
the correspondence address. The flexibility to change the 
correspondence address established by Sec. 1.33(a)(1) should remain 
until a party set forth in Sec. 1.33(b), except Sec. 1.33(b)(2), 
establishes a correspondence address.
    Response: The comment is not adopted. Section 1.33(a)(1) increases 
the flexibility in changing a correspondence address. Such increased 
flexibility, however, should not extend past the time that applicants 
can reasonably be expected to set forth a correspondence address, such 
as when the inventors are named by the submission of an oath/
declaration. The submission of the oath/declaration will not alter the 
current correspondence address of record unless the oath/declaration 
intentionally does so by identifying a correspondence address, or an 
accompanying paper to the oath/declaration does so. Upon

[[Page 54618]]

submission of the oath/declaration, the inventors are known for the 
first time and it is now their call as to the appropriate 
correspondence address absent intervention by the assignee of the 
entire right, title, and interest. It is inappropriate that once an 
oath/declaration is submitted, a practitioner without power of attorney 
or only one of the inventors can continue to change the correspondence 
address.
    Section 1.34: Sections 1.34(a) and (b) are amended to incorporate a 
reference to Sec. 1.31. Section 1.34(b) is amended to place the term 
``registered'' before the expression ``attorney or agent.'' Unlike 
Sec. 1.31, which provides for an applicant being represented by 
registered patent attorney or agent, former Sec. 1.34(b) (and 
Sec. 1.36) refers to an attorney or agent who represents an applicant. 
The Office of Enrollment and Discipline receives calls inquiring if 
Sec. 1.34(b) (and Sec. 1.36) explicitly or implicitly authorize 
unregistered attorneys to practice before the Office in view of the 
absence of the term ``registered'' in these sections, which is not the 
case. The amendments to Secs. 1.34(a) and (b) (and Sec. 1.36) bring 
Secs. 1.34(a) and (b) (and Sec. 1.36) into conformity with Sec. 1.31, 
which permits an applicant to be represented by a registered attorney, 
or a registered agent, and clarifies that the attorney or agent 
referenced in Secs. 1.34(a) and (b) (and Sec. 1.36) is only the 
registered attorney or registered agent referenced in Sec. 1.31. See 
also Secs. 1.33(a) and (a)(1), and Sec. 1.36.
    Section 1.36: See the discussion relating to Sec. 1.34.
    Section 1.41: Section 1.41(a)(1) is amended to indicate that a 
paper including the processing fee set forth in Sec. 1.17(i) is 
required for supplying or changing the name(s) of the inventor(s) where 
an oath or declaration prescribed in Sec. 1.63 is not filed during 
pendency of a nonprovisional application, rather than a petition 
including a petition fee, for consistency with the amendment to 
Sec. 1.17(i).
    Section 1.41(a)(2) is amended to indicate that a paper including 
the processing fee set forth in Sec. 1.17(q) is required for supplying 
or changing the name(s) of the inventor(s) where a cover sheet 
prescribed by Sec. 1.51(c)(1) is not filed during the pendency of a 
provisional application, rather than a petition including a petition 
fee, for consistency with the amendment to Sec. 1.17(q).
    Section 1.41(a)(3) is amended to delete the language concerning an 
alphanumeric identifier, and to provide that the name, residence, and 
citizenship of each person believed to be an actual inventor should be 
provided when the application papers pursuant to Sec. 1.53(b) are filed 
without an oath or declaration, or the application papers pursuant to 
Sec. 1.53(c) are filed without a cover sheet.
    Section 1.41(a)(4) is added to set forth that the inventors who 
submitted an application under Sec. 1.494 or Sec. 1.495 are the 
inventors in the international application designating the United 
States and that the provisions of Sec. 1.48(f)(1), whereby submission 
of an executed oath/declaration operates to change the inventorship, do 
not apply to applications entering the national stage.
    Section 1.41(c) is amended by replacement of the term ``file'' with 
a recitation of physical or electronic delivery of the application to 
the Office. Section 1.41(c) permits any person authorized by the 
applicant to file a patent application in order to receive a filing 
date. The amendment clarifies that Sec. 1.41(c) is intended to apply 
solely to the (physical or electronic) delivery of a patent application 
to the Office as opposed to being inclusive of acts preceding delivery 
of the application relating to drafting or otherwise preparing an 
application.
    Comment 18: One comment opposed the change to Sec. 1.41(a)(3). The 
comment noted that the Office gave no justification for the change 
deleting the instruction that an alphanumeric identifier should be 
supplied where no inventor's name is being given. The change is 
believed to give the impression of reversing the practice of not 
requiring identification of inventors on filing of the application.
    Response: The comment is not adopted. The availability of an 
alphanumeric identifier is no longer explicitly set forth as the Office 
much prefers that at least one inventor be identified, particularly to 
aid in the national security screening of applications. To the extent 
that the presence of the instruction would seem to encourage use of an 
identifier other than the inventors, it is desirable to eliminate it. 
There is, however, no intent on the part of the Office to reverse the 
current practice and ban the use of an identifier other than an 
inventor's name. It is noted that where an inventor's name is not 
supplied, some other identifier is usually present, such as an attorney 
docket number, and that may continue to be used as an identifier in the 
absence of an inventor's name.
    Comment 19: One comment opposed the change to Sec. 1.41(a)(4) 
stating that it is unclear as to what the change means and that it 
would seem to preclude correction of the inventorship after an 
international application is filed.
    Response: The comment is adopted in part as a clarifying 
parenthesis has been added to the paragraph stating that Sec. 1.48(f) 
does not apply. The intent of the change is not to preclude correction 
of inventorship in a 35 U.S.C. 371 national stage application, but to 
reflect that filing an international application signed by all 
applicants and publishing it locks in the naming of the inventors. 
Filing of a declaration does not reset the inventors as it does in 
national 35 U.S.C. 111 practice. Correction of inventorship for a 
national stage application can be done under the provisions of 
Secs. 1.48(a) through (c).
    Section 1.44: Section 1.44 is removed and reserved to eliminate the 
requirement that proof of the power or authority of the legal 
representative be recorded in the Office or filed in an application 
under Secs. 1.42 or 1.43. Although proof of authority is no longer 
required to be submitted to the Office, applicants may wish to consider 
obtaining proof of authority of the legal representative and recording 
such a document with any assignment documents for record-keeping 
purposes. In order to make a patent application on behalf of a deceased 
or incapacitated inventor, the legal representative may now simply sign 
the Sec. 1.63 oath or declaration (which includes the full name and 
citizenship of the deceased inventor as well as the residence and 
mailing address, if not provided on an application data sheet) as the 
legal representative of the particular inventor with the title ``Legal 
Representative'' placed under the signature. In other words, in a 
signature block containing the deceased or incapacitated inventor's 
name, the legal representative will sign ``for'' the deceased or 
incapacitated inventor supplying the representative's name and stating 
that he or she is the legal representative. In addition, the legal 
representative should provide his or her mailing address so that the 
Office can directly communicate with the legal representative if 
necessary. See Sec. 1.64(b).
    The deletion of the Sec. 1.44 proof requirement for the legal 
representative of Secs. 1.42 and 1.43 will be effective on the date of 
publication in the Federal Register with Sec. 1.64 as to all pending 
papers under Secs. 1.42 and 1.43 that have not had the proof 
requirement satisfied. If a requirement for proof of authority has been 
made by an examiner, the requirement can be satisfied by a reply 
referencing this final rule.
    Section 1.47: Section 1.47 is amended to refer to ``the fee set 
forth in Sec. 1.17(h)'' for consistency with the amendment to 
Sec. 1.17(h) and (i). See discussion of the amendment to Sec. 1.17. 
Section 1.47 is also amended to add a new Sec. 1.47(c) providing that 
the Office will send

[[Page 54619]]

notice of the filing of the application to all inventors who have not 
joined in the application at the address(es) provided in the petition 
under Sec. 1.47, and will publish notice of the filing of the 
application in the Official Gazette. This provision is currently 
included in each of Secs. 1.47(a) and 1.47(b). Section 1.47(c) also 
provides that the Office may dispense with such notice provisions in a 
continuation or divisional application where notice regarding the 
filing of the prior application has already been sent to the nonsigning 
inventor(s). The patent statute gives the Office great latitude as to 
the notice that must be given to an inventor who has not joined in an 
application for patent. See 35 U.S.C. 116, para. 2 (``after such notice 
to the omitted inventor as [the Commissioner] prescribes''), and 118 
(``upon such notice to [the inventor as the Commissioner] deems 
sufficient''). Providing notice to a nonjoined inventor in a 
continuation or divisional application places a significant burden on 
the Office, especially when such continuation or divisional application 
is filed using a copy of the oath or declaration from a prior 
application under Sec. 1.63(d). In addition, providing additional 
notice to the nonjoined inventor in the continuation or divisional 
application provides little actual benefit to the nonjoined inventor, 
as a similar notice was previously given during the processing of the 
prior application. Thus, the Office considers it appropriate to 
dispense with notice under Sec. 1.47 in situations (continuations or 
divisionals of an application accorded status under Sec. 1.47) in which 
the nonjoined inventor was previously given such notice in a prior 
application.
    Section 1.48: Section 1.48 is amended to have the title revised to 
reference the statutory basis for the rule, 35 U.S.C. 116.
    Sections 1.48(a) through (c) are amended to: Delete the recitation 
of ``other than a reissue application'' as such words are unnecessary 
in view of the indication in the title of the section that the section 
does not apply to reissue applications and the revision to Sec. 1.48(a) 
(discussed below), to change ``When'' to ``If,'' and to add 
``nonprovisional'' before ``application'' where it does not already 
appear.
    Sections 1.48(a)(1) through (e)(1) are revised to replace the 
reference to a ``petition'' with a reference to a ``request.'' What is 
meant to be encompassed by the term ``petition,'' as it was used in the 
sections, may be better defined by the term ``request.'' The presence 
of ``petition'' formerly in the sections was misleading to the extent 
that it may indicate to applicants that papers under this section have 
to be filed with the Office of Petitions when in fact amendments to 
correct the inventorship under Sec. 1.48 are to be decided by the 
primary examiners in the Technology Centers and should be submitted 
there. See MPEP 1002.02(e). Where, however, the Sec. 1.48 request is 
accompanied by a petition under Sec. 1.183 seeking waiver of a 
requirement under Sec. 1.48, both papers should be directed to the 
Office of Petitions.
    The requirements for a statement formerly in Secs. 1.48(a)(1), 
(c)(1), and (e)(1) are placed in Secs. 1.48(a)(2), (c)(2), and (e)(2) 
and corresponding changes made in subsequent paragraphs.
    Sections 1.48(b) and (d) are revised to indicate that a request to 
correct the inventorship thereunder must be signed by a party as set 
forth in Sec. 1.33(b) (which would enable a practitioner alone to sign 
all the needed papers). The inventors, whether being added, deleted, or 
retained, are not required to participate in a correction under these 
paragraphs. Thus, the inventor(s) to be deleted pursuant to 
Sec. 1.48(b) in a nonprovisional application, or added pursuant to 
Sec. 1.48(d) in a provisional application, and those inventors that are 
retained in either situation, are not required to participate in the 
inventorship correction, such as by signing a statement of facts, or an 
oath or declaration under Sec. 1.63.
    Sections 1.48(a) through (e) are revised to define the fee required 
as a ``processing'' fee, to delete the reference to a ``petition,'' and 
to indicate that amendment of the application to correct the 
inventorship would require the filing of a request to correct the 
inventorship along with other items, as set forth in the respective 
paragraphs of this . The latter change is not one of substance but a 
clarification that the amendment requirement of the statute, 35 U.S.C. 
116, merely refers to the change in Office records (face of the 
application file wrapper corrected, notation on a previously submitted 
Sec. 1.63 oath/declaration, change in Patent Application Location and 
Monitoring (PALM) data, and a corrected filing receipt issued) that 
would be made upon the grant of a Sec. 1.48 request. Thus, amendment of 
the inventorship in an application is not made as an amendment under 
Sec. 1.121. Where there is a need to make an actual amendment under 
Sec. 1.121, such as when a cover page of the specification recites the 
inventive entity, an amendment should also be submitted. In the absence 
of such an amendment, the Office may, at its option, correct the 
inventor's names on the cover sheet or in the specification. Where an 
application needs a correction of inventorship under Sec. 1.48 and a 
paper is submitted with a title that does not set forth the paper as a 
request under Sec. 1.48, but it is clear from the paper submitted that 
an inventorship correction is desired, a request for a correction of 
inventorship under Sec. 1.48 will be inferred from the paper submitted 
and will be treated under Sec. 1.48.
    A request for a corrected filing receipt correcting a typing or 
office error in the names of the inventors will not ordinarily be 
treated under Sec. 1.48. Any request to correct inventorship should be 
presented as a separate paper. For example, placing a request under 
Sec. 1.48(b) to correct the inventorship in the remarks section of an 
amendment may cause the Office to overlook the request and not act on 
it.
    Section 1.48(f)(1) is clarified to recite that its provision for 
changing the inventorship only applies if an oath or declaration under 
Sec. 1.63 has not been submitted by any of the inventors, and that 
submission of an oath or declaration under Sec. 1.63 by any of the 
inventors is sufficient to correct an earlier identification of the 
inventorship.
    Example 1: An unexecuted application is filed identifying A, B, 
and C as the inventors. A Sec. 1.63 declaration is also submitted 
signed only by A and naming A, B, and C as the inventors. To 
complete the application (Sec. 1.53(f)), a Sec. 1.63 oath or 
declaration by B and C identifying the inventors as A, B, and C is 
needed. In attempting to reply to a Notice to File Missing Parts of 
Application requiring the missing oath or declaration by B and C, it 
is discovered that D is also an inventor. A declaration by A, B, C, 
and D, if submitted without a request under Sec. 1.48(a) to correct 
the inventorship to A-D from A-C, will not be accepted as a reply to 
the Notice to File Missing Parts of Application.

    Thus, it should be clear that a first oath or declaration under 
Sec. 1.63 completed by less than all the inventors initially identified 
(whether the oath or declaration is submitted at the time of filing of 
the application or thereafter), will, under Sec. 1.48(f)(1), lock in 
the inventorship, and the later filing of another declaration by a 
different but, the actual entire inventive entity, will not be 
effective under Sec. 1.48(f)(1) to correct the inventorship.

    Example 2: An application is filed identifying A, B, and C as 
the inventors in the application transmittal letter, and a Sec. 1.63 
declaration is concomitantly submitted only by A, naming only A, as 
the sole inventor. The inventorship of the application is A (because 
of the declaration of A). A later submitted Sec. 1.63 declaration by 
A, B, and C would require a request under Sec. 1.48(a) to correct 
the inventorship to A, B, and C before the declaration by A, B, and 
C could be accepted.


[[Page 54620]]


    Section 1.48(f)(1) is amended to reference Sec. 1.497(d) for 
submission of an executed oath or declaration naming an inventive 
entity different from the inventive entity set forth in the 
international stage when entering the national stage under 35 U.S.C. 
371 and Sec. 1.494 or Sec. 1.495.
    Section 1.48(h) is added to indicate that the provisions of this 
section do not apply to reissue applications, and to reference 
Secs. 1.171 and 1.175 for correction of inventorship in reissue 
applications.
    Section 1.48(i) is added to reference Secs. 1.324 and 1.634 for 
corrections of inventorship in patents and interference proceedings, 
respectively.
    Sections 1.48(a) through (i) are amended to have titles added to 
make locating the appropriate paragraph easier.
    Section 1.51: Section 1.51(b) is amended to include a reference to 
Sec. 1.53(d), as a proper continued prosecution application under 
Sec. 1.53(d) in which the basic filing fee has been paid is a complete 
application under Sec. 1.51(b).
    Section 1.52: The title of Sec. 1.52 is amended to reflect the 
addition of Sec. 1.52(e).
    Sections 1.52(a) and (b) are amended to clarify the paper standard 
requirements for papers submitted as part of the record of a patent 
application or a reexamination proceeding. Section 1.52(a) sets forth 
the paper standard requirements for all papers that are to become a 
part of the permanent records of the Office, and Sec. 1.52(b) sets 
forth the paper standard requirements for the application 
(specification, including the claims, drawings, and oath or 
declaration) or a reexamination proceeding where applicable and any 
amendments or corrections to the application or proceeding. Papers 
making up the application or proceeding where applicable or an 
amendment or correction to the application or proceeding must meet the 
requirements of Secs. 1.52(a) and (b), but papers submitted for the 
record that do not make up the application (e.g., a declaration under 
Sec. 1.132) or proceeding need not meet the requirements of 
Sec. 1.52(b).
    Section 1.52(a)(5) provides that for papers not in compliance with 
Sec. 1.52(a)(1), that applicant must, within a set time period, provide 
appropriate substitute papers.
    Section 1.52(b)(6) is being added to include optional paragraph 
numbering as a basis for the new amendment practice in Sec. 1.121 and 
as an aid to transitioning into total electronic filing. The amended 
rule language sets forth a procedure for numbering the paragraphs of 
the specification at the time of filing. This procedure will facilitate 
the entry of amendments by providing a more uniform method for 
identifying paragraphs in the specification to be amended, thus 
overcoming any differences created by word processor formatting and 
pagination variations.
    The paragraph numbering procedure, in the interest of uniformity, 
encourages applicants to use four digit Arabic numerals enclosed within 
square brackets and including leading zeroes as the first element of 
the paragraph. The numbers and brackets should be highlighted in bold 
(e.g., [0001]), and should appear as the first part of the paragraph 
immediately to the right of the left margin. Approximately four 
character spaces should follow the bracketed number before the 
beginning of the actual text of the paragraph.
    A paragraph is defined as a distinct passage, or section, of the 
specification which has unity of meaning. A paragraph shall not contain 
headers or drawings, but may contain nontext elements such as tables, 
mathematical formulae, chemical structures, etc. The nontext elements 
shall not normally, by themselves, be considered as paragraphs but must 
always form part of the paragraph, either above, or around, the nontext 
elements, and should not be independently numbered. Any type of list, 
e.g., a bulleted or numbered list, should be treated as part of the 
paragraph around or preceding the list, and should not be independently 
numbered. Paragraph (or section) headers, such as ``Description of the 
Invention'' or ``Example 3,'' are not considered part of any paragraph 
and should not be numbered.
    The procedure for paragraph numbering encourages applicants to use 
any method provided by existing word processing software to provide a 
number as the first element of the paragraph. Handwriting of paragraphs 
numbers while not encouraged will be permitted.
    The Office will neither number the paragraphs or sections of the 
specification, nor accept any instructions from applicants to do the 
same.
    Section 1.52(b)(7) provides that where papers not in compliance 
with Secs. 1.52(b)(1) through (b)(5) are submitted, the applicant, 
patent owner, or requester in a reexamination proceeding, after notice 
by the Office, must provide papers that do comply (Secs. 1.52(b)(1) 
through (b)(5)) within a set time period in the notice.
    Section 1.52(c) is amended to provide that: (1) alterations to the 
application papers must (rather than ``should'') be made before the 
oath or declaration is signed; (2) a substitute specification 
(Sec. 1.125) is required if the application papers do not comply with 
Sec. 1.52(a) and (b) due to interlineations, erasures, cancellations or 
other alterations of the application papers; and (3) if an oath or 
declaration is a copy of the oath or declaration from a prior 
application, the application for which such copy is submitted may 
contain alterations that do not introduce matter that would have been 
new matter in the prior application.
    Section 1.52(d) was proposed to provide separately for 
nonprovisional applications and provisional applications filed in a 
language other than English. The proposal was not carried forward in 
the instant rulemaking but will be treated in rulemaking relating to 
implementation of the eighteen-month publication provisions of the 
``American Inventors Protection Act of 1999.'' See Changes to Implement 
Eighteen-Month Publication of Patent Applications, Notice of Proposed 
Rulemaking, 65 FR 17046, 17964 (April 5, 2000), 1233 Off. Gaz. Pat. 
Office 121 (April 25, 2000).
    Section 1.52(e) is amended to itemize the parts of the 
specification that may be submitted on a compact disc, and to specify 
that a compact disc (CD-ROM or CD-R) meeting ISO 9660 format standards 
with ASCII data files is the only acceptable archival electronic media 
for submissions. The Office indicated in the Notice of Proposed 
Rulemaking that submissions on microfiche placed a burden on the Office 
and the applicant. The Office indicated that it intended to accept 
archival electronic media. The burden of submitting and processing 
large biotechnology ``Sequence Listing'' submissions in paper form can 
also be avoided using archival electronic media. Large tables, common 
in the biotechnology arts but sometimes received in other technologies, 
are now also included among the items that may be submitted on 
acceptable compact discs. Note that these specifications do not apply 
to the computer readable form of Section 1.821(e), which is specified 
therein.
    Section 1.52(e)(1) recites the three types of submissions that are 
acceptable on the compact disc format: (1) Computer listings; (2) 
nucleotide and/or amino acid ``Sequence Listings'; and (3) large 
tables.
    Section 1.52(e)(2) defines which compact disc formatted media the 
Office will accept for the listed submissions: compact disc--recordable 
(CD-Rs) and compact disc--read only memory (CD-ROMs).

[[Page 54621]]

    Section 1.52(e)(3) set forth the standards that must be used in 
formatting the information on the compacts discs: ASCII and ISO 9660. 
Section 1.52(e)(3) also discusses the packaging of the compact discs 
for submission to the Office, and the contents of the associated 
transmittal letter.
    Section 1.52(e)(4) specifies that the two copies of each compact 
disc are required, how the two copies must be labeled, and how the 
Office will treat the compact discs if they are not indeed identical 
(Copy 1 will be used for processing.). Replacement copies are also 
discussed.
    Section 1.52(e)(5) indicates how the material on the compact discs 
will be incorporated by reference into the specification, by way of a 
statement under Sec. 1.77(b)(4). Section 1.52(e)(5) also provides that 
the Office may require that parts of the specification that were 
submitted on compact disc be resubmitted on paper. Only the paper 
portions of the application will, under our current procedures, be 
published, either as published applications or patents. The Office can 
thus require that certain information, such as related to an elected 
species, be submitted in the proper form (paper) to be printed.
    Section 1.52(e)(6) indicates the information that shall be placed 
on the labels of the compact discs to help identify them.
    Section 1.52(e)(7) indicates that if a file is unreadable, on the 
compact discs that we have received, the Office will treat that 
information as not having been received. Examples of the types of 
difficulties that render a file unreadable are given: non-standard 
formatting, computer viruses and defective media. The applicant is well 
advised to test that the compact disc can be read by a standard office 
computer and is compliant with Office requirements before submission.
    Comment 20: One comment opposed Secs. 1.52(a)(5) and (b)(7) as 
proposed in that the Office would be providing a service that was not 
requested and charging an open-ended fee.
    Response: The comment has been adopted. The rule language has been 
modified to provide for the mailing of a notice of the noncompliance, 
which notice will require the applicant, patent owner, or requester in 
a reexamination proceeding to submit compliant papers in reply to the 
notice within the time period set in the notice. The proposed option, 
allowing the Office to prepare compliant papers for a fee, has not been 
adopted as final.
    Comment 21: One comment suggested that sequence listing be exempted 
from the requirements of Sec. 1.52(b)(2).
    Response: The comment has been adopted. The computer readable form 
requirements of Sec. 1.821(e) have not been modified and an exclusion 
placed in Sec. 1.52(b)(2) for Secs. 1.821-1.825.
    Comment 22: The proposal to encourage the use of paragraph 
numbering first appeared in the Advance Notice in conjunction with the 
replacement paragraph concept as part of Topic 13, and was later 
carried forward in the Notice of Proposed Rulemaking as 
Secs. 1.52(b)(6) and 1.121. Strenuous opposition was received to 
paragraph numbering as proposed where a substitute specification would 
be required for amendments to the specification in the absence of 
paragraph numbering. The proposal for paragraph numbering is viewed as 
burdensome and inconsistent with the requirements of other countries.
    Response: The comments have been adopted in that the linkage to 
substitute specifications for amendments where paragraph numbering has 
not been utilized is dropped. Paragraph numbering has been retained as 
an option with no negative consequences if not utilized.
    Comment 23: Some of the comments suggested identification of 
paragraphs under Sec. 1.52(b)(6) by page and line number, rather than 
by paragraph numbering.
    Response: This suggestion of requiring identification by page and 
line number could not be adopted and would, in fact, be unworkable as a 
transition into electronic filing since fixed pages do not exist in 
documents created on a computer. Page and line numbering are affected 
by font size, line spacing and formatting and can vary between 
different hardware and software components. Once each paragraph has 
been individually identified and tagged with a number, however, all 
future processing of the application, whether by paper or electronic 
version, may be done uniformly and accurately by both the Office and 
the applicant. For the time being, the concept of having applicants 
provide numbered paragraphs will be encouraged, although still 
optional.
    Comment 24: One comment suggested that the paragraph numbering 
should be modified with the left digit in the first paragraph number 
being a ``1.''
    Response: While it was not stated why use of a ``1'' would be 
superior to the format suggested, the rule permits applicants to use 
any numbering system and does not require use of the form suggested in 
Sec. 1.52(b)(6).
    Comment 25: One comment, in addition to opposing the proposal under 
Sec. 1.52(b)(6), suggested that implementation apply only to 
applications filed after publication of the final rule.
    Response: The suggestion is inherently incorporated in the rule, in 
that paragraph numbering is both optional and can only be used when an 
application is first filed.
    Comment 26: The comments regarding Sec. 1.52(e), which were 
generally supportive of the rule, were concerned with the issues of 
alteration of the data and future readability of the electronic media.
    Response: The issue of alteration and changes to the data are of 
great concern to the Office. Accordingly, the only electronic media 
that are permitted under the rule are limited to those that cannot be 
changed or erased. Compact Disc-Read-Write (CD-RW) media which can be 
erased and rewritten are not allowed under the amended rule since they 
do not satisfy this concern. Another concern with CD-RW media is 
compatibility with existing Office hardware since older CD-ROM drives 
may not be able to read CD-RW media. Similarly, the Office is limiting 
the data format to the International Standard ISO 9660 format 
containing ASCII data files which is supported by all of the major 
computer operating systems and hardware makers. In view of the media 
types and data formats selected, it is expected that the authenticity 
and reliability of Office records should be incontrovertible well into 
the future.
    Section 1.53: Section 1.53(c)(1) is amended to clearly provide that 
the cover sheet required by Sec. 1.51(c)(1) may be an application data 
sheet (Sec. 1.76).
    Section 1.53(c)(2) is amended for clarity and to refer to ``the 
processing fee set forth in Sec. 1.17(q)'' for consistency with the 
amendment to Sec. 1.17(q).
    Section 1.53(d)(4) is amended to eliminate the reference to a 
``petition'' under Sec. 1.48 for consistency with the amendment to 
Sec. 1.48. Section 1.53(d) is also amended to add a new 
Sec. 1.53(d)(10) to provide a reference to Sec. 1.103(b) for requesting 
a limited suspension of action in a continued prosecution application 
(CPA) under Sec. 1.53(d).
    Section 1.53(e)(2) is also amended to require that a petition under 
Sec. 1.53(e) be accompanied by the fee set forth in Sec. 1.17(h), 
regardless of whether the application is filed under Secs. 1.53(b), 
1.53(c), or Sec. 1.53(d). While provisional applications filed under 
Sec. 1.53(c) are not subject to examination under 35 U.S.C. 131 (35 
U.S.C. 111(b)(8)), petitions under Sec. 1.53(e) in provisional 
applications filed under Sec. 1.53(c) are as

[[Page 54622]]

burdensome as petitions under Sec. 1.53(e) in nonprovisional 
applications filed under Sec. 1.53(b) or Sec. 1.53(d). Therefore, it is 
appropriate to charge the petition fee set forth in Sec. 1.17(h) for 
petitions under Sec. 1.53(e) in applications filed under Sec. 1.53(c), 
as well as for applications filed under Sec. 1.53(b), or Sec. 1.53(d).
    Sections 1.53(f) and (g) are amended for clarity and to include a 
reference to ``or reissue'' in the paragraph heading to clarify that 
the provisions of Sec. 1.53(f) apply to all nonprovisional 
applications, which include continuation, divisional, and continuation-
in-part applications, as well as reissue applications and continued 
prosecution applications.
    Section 1.53(f) is also amended to provide that if applicant does 
not pay one of either the basic filing fee or the processing and 
retention fee set forth in Sec. 1.21(l) during the pendency of the 
application (rather than within one year of the mailing of a Notice to 
File Missing Parts of Application), the Office may dispose of the 
application. The former one-year period in Sec. 1.53(f) for submitting 
the processing and retention fee confused applicants into believing 
that a continuing application could be filed anytime within that one-
year period. This resulted in a lack of copendency (and the loss of 
benefits under 35 U.S.C. 120) when the prior application became 
abandoned for failure to timely reply to a Notice to File Missing Parts 
of Application and a ``continuing'' application was not filed until the 
end of the former one-year period in Sec. 1.53(f) and after the 
expiration of the period for reply to the Notice to File Missing Parts 
of Application.
    The new timeframe for submission of an application retention fee 
under Sec. 1.53(f)(5) will be applicable to all applications filed on 
or after sixty days after the date of publication in the Federal 
Register.
    Section 1.55: Section 1.55(a)(2)(iv) is amended to refer to ``the 
processing fee set forth in Sec. 1.17(i)'' for consistency with the 
amendment to Sec. 1.17(h) and (i). See discussion of the amendment to 
Sec. 1.17.
    Sections 1.55(a)(2)(i) through (iii) clarify the current Office 
practice concerning when the claim for priority and the certified copy 
of the foreign application specified in 35 U.S.C. 119(b) must be filed. 
Specifically, Sec. 1.55(a)(2)(i) clarifies current Office practice. In 
an application filed under 35 U.S.C. 111(a), the Office requires the 
claim for priority and the certified copy of the foreign application to 
be filed before a patent is granted. Section 1.55(a)(2)(ii) clarifies 
current Office practice. In an application that entered the national 
stage of an international application after compliance with 35 U.S.C. 
371, the time limits set in the PCT and the Regulations under the PCT 
control the time limit for making the claim for priority, while the 
certified copy of the foreign application must be filed before the 
patent is granted if the certified copy was not filed in accordance 
with the PCT and the Regulation under the PCT. Section 1.55(a)(2)(iii) 
clarifies current Office practice. The Office may require both the 
claim for priority and certified copy of the foreign application be 
filed at an earlier time than in Secs. 1.55(a)(2)(i) or 1.55(a)(2)(ii) 
under certain enumerated circumstances.
    Section 1.55(a)(2)(iv) provides that priority claims and documents 
may be submitted after payment of the issue fee but before the patent 
is granted (published), however, no further review by the Office other 
than placement in the application file will occur at that time.
    Thus, it is now difficult for the Office to match a petition 
containing a priority claim or certified priority document filed after 
payment of the issue fee with an application file, and determine 
whether the applicant has met the conditions of 35 U.S.C. 119(a)-(d) to 
make the priority claim, before the date the application will issue as 
a patent. Nevertheless, it is also undesirable to prohibit applicants 
from filing a priority claim or certified priority document between the 
date the issue fee is paid and the date a patent is issued. Therefore, 
the Office will permit applicants to file a priority claim or certified 
priority document (with the processing fee set forth in Sec. 1.17(i)) 
between the date the issue fee is paid and the date a patent is issued. 
The Office will, however, merely place such submission in the 
application file but will not attempt to determine whether the 
applicant has met the conditions of 35 U.S.C. 119(a)-(d) to make the 
priority claim nor include the priority claim information in the text 
of the patent. In such a situation, the patent will not contain the 
priority claim information. The patentee may request a certificate of 
correction under 35 U.S.C. 255 and Sec. 1.323 and a determination of 
entitlement for such priority will be made after the patent is granted.
    Comment 27: One comment requested that it be clarified that a claim 
of priority and documents filed after payment of the issue fee, but 
before the patent issues, will not be reviewed by the Office, and that 
a determination of priority entitlement will be made upon issuing a 
certificate of correction.
    Response: The comment has been adopted and the proposed language of 
Sec. 1.55(a)(2)(iv) modified.
    Comment 28: Two comments have suggested that one fee of $130 rather 
than two fees, one under Sec. 1.55(a) and one under Sec. 1.323, would 
be more appropriate. At least the Office should propose to reduce the 
Sec. 1.55(a) fee in that the Office is no longer doing a substantive 
review. One of the comments suggested that a procedure should be set up 
to issue the certificate of correction (automatically) after the patent 
issues based on the previously received Sec. 1.55(a) submission (rather 
than require patentee to send in a subsequent request for a certificate 
of correction).
    Response: The comments are not adopted. Applicants may of course 
submit a Sec. 1.323 certificate of correction at the same time the 
Sec. 1.55(a) submission is submitted, but any procedure that would have 
the Office automatically later treat a Sec. 1.55(a) submission as a 
certificate of correction is not workable. It is unlikely that a 
Sec. 1.55(a) submission would be routinely recognized as triggering a 
need for the Office to issue a certificate of correction. Moreover, 
even if such recognition initially occurred when the Sec. 1.55(a) 
submission were received, the required lapse of time between the 
Sec. 1.55(a) submission and whatever time after publication that the 
certificate of correction would then be acted upon may cause the need 
to issue a certificate of correction to be overlooked. Both the 
processing of the Sec. 1.55(a) submission and the Sec. 1.323 submission 
generate significant costs for the Office, which costs must be 
recovered. A single fee would not be sufficient to recover the total 
cost for both treatment of the Sec. 1.55(a) submission and the issuance 
of the Sec. 1.323 certificate of correction. It should be recognized 
that ``just placing'' a paper in a file that is in line for printing is 
not as simple a process as the comments would indicate. Associating the 
paper with the file and replacing of the file in the printing queue for 
the contractor requires many steps by many individuals. The actual 
processing of the paper represents the most significant portion of the 
cost of the prior review process to evaluate the priority claim.
    Comment 29: One comment suggested that the proposed change would 
negatively impact predictability of the effective filing date of issued 
patents where a request for a certificate of correction is not 
submitted. It is believed that it is better for the Office to continue 
to review the claims for priority submitted after payment of the issue 
fee rather than shift the burden to

[[Page 54623]]

anyone reviewing the file history where a certificate of correction has 
not been requested.
    Response: The comment is not adopted. Absent issuance by the Office 
of a certificate of correction, patentee cannot rely upon a foreign 
priority date. While it is true that the public would not know whether 
patentee will ever file a certificate of correction to obtain a 
priority claim (there is no time limit under Sec. 1.323), that was also 
true under previous practice. Even though previous practice permitted a 
determination of the right to priority before issuance, a patentee 
could request and the Office would issue a certificate of correction 
after issuance (recourse via reissue to correct the lack of a priority 
claim pursuant to Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 
584 (D.C. Cir. 1968) was not required).
    Comment 30: Two comments suggested that the Office consider a 
further rule change in regard to bypass applications (continuations of 
international applications filed under 35 U.S.C. 111(a) and claiming 
benefit of the international application under 35 U.S.C. 365(c), rather 
than as national stage applications) that would permit the use of a 
photocopy of the foreign priority document that has been sent by the 
International Bureau to the Office as a Designated or Elected Office 
under the PCT. It is argued that the statute does not specify who must 
make the certification and that therefore the certification can be made 
and was in fact made when the copy of the foreign application was 
prepared by WIPO (rather than the certification being made by country).
    Response: The comments are not adopted. The photocopy received from 
the International Bureau does not constitute a certified copy (it is 
merely a photocopy of the priority application and is not certified by 
WIPO), and would not satisfy the provision that a certified copy be 
provided in applications filed under 35 U.S.C. 111(a). 35 U.S.C. 119(b) 
defines how a certified copy must be made, which requires that a 
statement be made by the foreign intellectual property authority in 
which the foreign application was filed. The procedure suggested by the 
comment would not meet this definition. In addition, the copy of the 
priority application communicated by the International Bureau is placed 
in a folder and is not assigned a U.S. application number unless the 
national stage is entered. Such folders are disposed of if the national 
stage is not entered. Therefore, such copies may not be available if 
needed later in the prosecution of a continuing application. 
Accordingly, the priority documents in folders of international 
applications which have not entered the national stage may not be 
relied on.
    Section 1.56: Section 1.56 is amended to add a new Sec. 1.56(e) to 
provide that in any continuation-in-part application, the duty under 
Sec. 1.56 includes the duty to disclose to the Office all information 
known to the person to be material to patentability which became 
available between the filing date of the prior application and the 
national or PCT international filing date of the continuation-in-part 
application. Section 1.63(e) (second sentence) formerly required that 
the oath or declaration in a continuation-in-part application 
acknowledge that the duty under Sec. 1.56 includes the duty to disclose 
to the Office all information known to the person to be material to 
patentability (as defined in Sec. 1.56(b)) which became available 
between the filing date of the prior application and the national or 
PCT international filing date of the continuation-in-part application. 
Thus, the examiner must object to an oath or declaration in a 
continuation-in-part that does not contain this statement. By amending 
Sec. 1.56 to expressly provide that the duty under Sec. 1.56 includes 
this duty, an acknowledgment of the duty of disclosure under Sec. 1.56 
is an acknowledgment of this duty in a continuation-in-part 
application, and an express statement to that effect in the oath or 
declaration will no longer be required (Sec. 1.63(e) is also amended by 
deletion of the second sentence).
    Comment 31: Two comments stated that the purpose of the language, 
proposed to no longer be required in the Sec. 1.63 oath/declaration, is 
to remind inventors who must sign the document of their duty in regard 
to continuation-in-part applications. The presence of such information 
in Sec. 1.56 would not put on notice an inventor in the same manner as 
if it appeared in the oath/declaration.
    Additionally, there does not appear to be more reason to add such a 
provision to Sec. 1.56 since Sec. 1.56 does not include other reminders 
about the duty of disclosure such as public use or sale, or, indeed, 
every other provision regarding a form of prior art.
    Response: The comments are adopted to the limited extent indicated. 
Where a practitioner believes that there is an educational purpose to 
be served from the appearance of such language in an oath/declaration, 
the practitioner is free to provide the inventors an oath/declaration 
form that contains such language. Declarations that do not contain such 
an informational reminder, however, will no longer be treated as 
informal with a new declaration required. In view of the expressed 
concern that the language should be present in a declaration, the 
Office will continue to supply Sec. 1.63 forms containing the language 
being deleted as a Sec. 1.63(e) requirement. The Office's Standard 
Declaration form (PTO/SB/01) will be modified to move the continuation-
in-part language relating to information that became available between 
the filing date of a prior application and the filing date of an 
instant (continuing) application from page 2 to page 1. (The current 
placement of the continuation-in-part language on page 2 is in a 
portion of the Standard Declaration form that requires completion by 
the applicant as to continuing data. If such portion were not 
completed, it is unclear whether the averment concerning continuation-
in-part applications actually serves any purpose. By placing the 
continuation-in-part language on page 1, where it would not be 
dependent on completion of a portion of the form relating to continuing 
date, the averment will automatically be made upon execution of the 
form).
    Section 1.58: Section 1.58(b) is specifically added to provide for 
placing very large tables on archival electronic media rather than in a 
paper specification, with the additional requirement that the 
information, including chemical and mathematical symbols, be positioned 
to maintain their intended meaning. See, for example, Secs. 1.96(c) and 
1.821(c). Tables convey information by the arrangement of the data in 
the table: rows and columns must line up. Formulae also rely on 
character position for their meaning. Data must be submitted under the 
amended rule properly positioned, in ASCII encoding, with no 
proprietary formats allowed. Very limited special formatting characters 
are found in ASCII so that it is necessary for the information to be 
arranged using only ASCII characters in a manner that retains the 
spatial arrangement of the data. The intent is that the tables and 
formulae will display properly when viewed with a text viewer. Great 
care must be exercised in preparing any such tables since any 
amendments to correct lost formatting may convey previously undisclosed 
subject matter and be considered new matter.
    Section 1.59: Section 1.59(b) is amended to refer to ``the fee set 
forth in Sec. 1.17(h)'' for consistency with the amendment to 
Secs. 1.17(h) and (i). See discussion of the amendment to Sec. 1.17.
    Section 1.63: Section 1.63 is amended for clarity and simplicity. 
Specifically,

[[Page 54624]]

Sec. 1.63(a) is amended to provide that an oath or declaration filed 
under Sec. 1.51(b)(2) as a part of a nonprovisional application must: 
(1) be executed (i.e., signed) in accordance with either Sec. 1.66 or 
Sec. 1.68 (Sec. 1.63(a)(1)); (2) identify each inventor by full name 
(Sec. 1.63(a)(2)); (3) identify the country of citizenship of each 
inventor (Sec. 1.63(a)(3)); and (4) state that the person making the 
oath or declaration believes the named inventor or inventors to be the 
original and first inventor or inventors of the subject matter which is 
claimed and for which a patent is sought (Sec. 1.63(a)(4)). Section 
1.63(a)(1) clarifies that there is no minimum age requirement for the 
person signing the oath or declaration, but rather that the person 
signing must be competent to understand what is being signed.
    Section 1.63(b) is amended to provide that in addition to meeting 
the requirements of Sec. 1.63(a), the oath or declaration must also: 
(1) identify the application to which it is directed; (2) state that 
the person making the oath or declaration has reviewed and understands 
the contents of the application, including the claims, as amended by 
any amendment specifically referred to in the oath or declaration; and 
(3) state that the person making the oath or declaration acknowledges 
the duty to disclose to the Office all information known to the person 
to be material to patentability as defined in Sec. 1.56. These 
requirements were formerly located at Secs. 1.63(a)(2), (b)(1), and 
(b)(3).
    Section 1.63(c) provides that an applicant may provide identifying 
information either in an application data sheet (Sec. 1.76) or in the 
oath or declaration. Permitting applicants to provide such identifying 
information in an application data sheet (rather than in the oath or 
declaration) should result in: (1) an increase in the use of 
application data sheets; and (2) a decrease in the need for 
supplemental oaths or declarations (providing omitted information) for 
applications in which an application data sheet was submitted. Note: 
when one of the inventors needs to update information, such as 
residence, the single inventor is not a party authorized by 
Sec. 1.33(b) to submit a paper. The inventor may complete a new data 
sheet relating only to information concerning that inventor, but it 
must be submitted by an appropriate party according to Sec. 1.33(b). 
The amendment to Sec. 1.63(c)(1) has replaced ``post office address'' 
with ``mailing address'' to avoid the confusion of some applicants who 
do not understand that the use of ``post office address'' was intended 
to mean the ``mailing address'' (instead believing a post office box 
was required), which is seen as a plainer way of stating the 
requirement. The requirement for a mailing address is equivalent to the 
requirement for post office address, and therefore the same information 
supplied for the post office address may continue to be supplied for 
the mailing address (see also the discussion of Sec. 1.76(a)(3)). 
Accordingly, information relating to where applicant normally receives 
mail is acceptable if identified under the prior Sec. 1.63(a)(3) (that 
used the expression post office address) as the mailing address, or if 
identified under the current Sec. 1.63(c)(1) (reciting mailing address) 
as the post office address.
    Section 1.63(e) is amended to eliminate the requirement that an 
oath or declaration in a continuation-in-part application state that 
the person making the oath or declaration also acknowledge that the 
duty under Sec. 1.56 includes the duty to disclose to the Office all 
information known to the person to be material to patentability (as 
defined in Sec. 1.56(b)) which became available between the filing date 
of the prior application and the national or PCT international filing 
date of the continuation-in-part application. See discussion of the 
amendment to Sec. 1.56(e).
    Comment 32: One comment appears to object to a change made in 
Sec. 1.63(c)(2) (replacing ``post office address'' with ``mailing 
address'') and apparently wishes to have ``residence'' further defined 
in the rule either in terms of city, and state, or foreign country, or 
not required at all. It is argued that terms such as residence are 
confusing to inventors based on the different types of geographic areas 
that exist throughout the world.
    Response: The comments are not adopted. The change from ``post 
office address'' to ``mailing address'' was made in view of many 
queries relating that an inventor does not have a ``post office box.'' 
As is recognized in the comment, residence has a variable identity 
depending on where one resides. It is not practical to attempt to 
identify the residence by rule language. Rather, the MPEP will continue 
to be relied upon for further definition, particularly as the Office 
believes it is desirable to retain a requirement that the inventor's 
residence be identified.
    Section 1.64: Section 1.64 is amended to also refer to any 
supplemental oath or declaration (Sec. 1.67). In addition, Sec. 1.64(b) 
is amended to provide that if the person making the oath or declaration 
is the legal representative, the oath or declaration shall state that 
the person is the legal representative and shall also state the 
citizenship (pursuant to 35 U.S.C. 115 and 117), residence and mailing 
address of the legal representative.
    The deletion of the Sec. 1.44 proof requirement for the legal 
representative of Secs. 1.42 and 1.43 will be effective on the date of 
publication in the Federal Register with Sec. 1.64 as to all pending 
papers under Secs. 1.42 and 1.43 that have not had the proof 
requirement satisfied.
    Section 1.67: Section 1.67(a) is amended to create Secs. 1.67(a)(1) 
through (a)(4). Section 1.67(a) is amended to refer to Sec. 1.162. 
Deficiencies or inaccuracies in an oath or declaration may be corrected 
by a supplemental oath or declaration identifying the entire inventive 
entity. The oath or declaration must be signed: by all the inventors 
when the correction relates to all the inventors or (Secs. 1.42, 1.43, 
or 1.47) applicants (Sec. 1.67(a)(1)), or by only those inventor(s) or 
(Secs. 1.42, 1.43, or 1.47) applicant(s) to whom the correction relates 
(Sec. 1.67(a)(2)). A deficiency or inaccuracy relating to Sec. 1.63(c) 
may also be corrected with an application data sheet (paragraph 
(a)(3)). Note: Section 1.67(a)(4) clarifies that the party signing the 
supplemental oath, declaration, or application data sheet may be 
someone other than the party who must submit the oath, declaration, or 
application data sheet pursuant to Sec. 1.33(a)(2) and (b). Only those 
parties identified in Secs. 1.33(a)(2) and (b) are those that may 
submit a paper notwithstanding who may sign the paper to be submitted. 
See Example 5.

    Example 1: An application was filed with a Sec. 1.63 declaration 
executed by inventors A-C. If it is later determined that the 
citizenship of inventor C was in error, a supplemental declaration 
identifying inventors A-C may be signed by C alone correcting C's 
citizenship and submitted pursuant to Sec. 1.33.
    Example 2: Same as example 1, but it is later determined that 
the Sec. 1.56 clause was omitted. A new declaration would be 
required by each of inventors A-C with each declaration identifying 
the entire inventive entity. If separate declarations had been 
executed by each of the inventors and the Sec. 1.56 clause had been 
omitted only by the declaration by B, then only B would need to 
execute a new declaration identifying the entire inventive entity.
    Example 3: An application was filed by inventors A, B, and the 
legal representative of deceased inventor C. It is later determined 
that an error was made in the citizenship of C. A supplemental 
declaration identifying A and B as the inventors would be required 
to be signed by the legal representative of C alone correcting C's 
citizenship and submitted pursuant to Sec. 1.33.
    Example 4: An application is filed by inventors A and B with an 
executed declaration. If it is later determined that an error exists 
in the mailing address of B, either

[[Page 54625]]

a supplemental declaration may be signed by B and submitted pursuant 
to Sec. 1.33(b), or an application data sheet pursuant to Sec. 1.76 
containing only a change in B's mailing address may be submitted 
pursuant to Sec. 1.33(a)(2) (the supplemental application data sheet 
need contain no more than B's name and the (new) mailing address of 
B.
    Example 5: Inventor C (of inventors A-C) seeks to correct his/
her residence and completes a supplemental application data sheet. 
The sheet signed only by inventor C must be submitted by all 
inventors (e.g., signing a cover letter), or by a registered 
practitioner acting on behalf of all the inventors.

    Section 1.67(c) is deleted as unnecessary because it simply 
reiterates other provisions of the patent rules of practice. If the 
application was altered after the oath or declaration was signed 
(except as permitted by Sec. 1.52(c)), Sec. 1.52(c) requires a 
supplemental oath or declaration under Sec. 1.67. If the oath or 
declaration was signed in blank (while incomplete), without review 
thereof by the person making the oath or declaration, or without review 
of the specification, including the claims, the oath or declaration 
does not meet the requirements of Sec. 1.63. In this situation, 
Sec. 1.67(a) requires a supplemental oath or declaration.
    Comment 33: Two comments requested: (1) identification of the 
``deficiencies or inaccuracies'' present in an oath or declaration for 
which a supplemental oath or declaration may be submitted to correct, 
and (2) clarification as to what is intended by the language ``an 
applicant other than the inventor'' who may file a supplemental oath or 
declaration.
    Response: The comments have been adopted. The language of 
Sec. 1.67(a) has been amended to: (1) specify that the deficiencies or 
inaccuracies that may be corrected by a supplemental oath or 
declaration by fewer than all of the inventors are those deficiencies 
or inaccuracies that relate only to the inventor(s) or applicant making 
the supplemental oath or declaration, and (2) clarify that the 
applicants other than the inventor who may file a supplemental oath or 
declaration are applicants under Secs. 1.42, 1.43, or Sec. 1.47. The 
deficiencies or inaccuracies that may be corrected by the language of 
the supplemental oath or declaration rule include all information 
previously omitted or erroneously supplied by the inventors or 
applicants so long as all the parties to which the omission or error 
pertained make the supplemental oath or declaration.
    Section 1.72: Section 1.72(a) is amended to state ``[u]nless the 
title is supplied in an application data sheet (Sec. 1.76)'' to clarify 
that the title is not requested to be a heading on the first page of 
the specification if supplied in an application data sheet. Section 
1.72(b) is amended to provide that ``[t]he abstract in an application 
filed under 35 U.S.C. 111 may not exceed 150 words in length'' to 
harmonize with PCT guidelines.
    Comment 34: One comment requested that the title should still be 
required to be placed on the specification (rather than permitting it 
only in the application data sheet) so that the specification can be 
identified in the oath or declaration being executed by the inventors. 
The title on the application data sheet will not serve this important 
purpose.
    Response: The comment is not adopted. The use of a title has never 
been a requirement (under the previous version of Sec. 1.72 or the 
currently amended version). To the extent that practitioners feel an 
important identification purpose is served by supplying a title on the 
specification, they may continue to do so as the amended rule does not 
prohibit its presence on the specification even if it is supplied in 
the application data sheet. Section 1.77(b)(1) indicates that the title 
of the invention may be part of the specification whether or not it is 
supplied in the application data sheet of Sec. 1.76. It should be noted 
that Sec. 1.76(a) makes the application data sheet part of the 
application, and the presence of the title only on the application data 
sheet submitted with the specification can serve as an identification 
of the application for a later submitted oath or declaration under 
Sec. 1.63.
    Section 1.76: A new Sec. 1.76 is added to provide for the voluntary 
inclusion of an application data sheet in provisional and 
nonprovisional applications. A guide to preparing an application data 
sheet (Patent Application Bibliographic Data Entry Format) can be found 
on the Office's Web site ``http:\\www.uspto.gov'' by clicking on 
``Patents'' then in the ``Applications'' column, click on ``PrintEFS.'' 
In addition to an authorizing guide in two formats, there are also 
instructions for downloading the needed PrintEFS software, and 
frequently asked questions about this software.
    Section 1.76(a) explains that: (1) an application data sheet is a 
sheet or set of sheets containing bibliographic data, which is arranged 
in a format specified by the Office; and (2) when an application data 
sheet is provided in a provisional or nonprovisional application, the 
application data sheet becomes part of the provisional or 
nonprovisional application. While the use of an application data sheet 
is optional, the Office prefers its use to help facilitate the 
electronic capturing of this important data. The data that is suggested 
to be supplied by way of an application data sheet can also be provided 
otherwise (and the Office is considering providing an attachment form 
to the application transmittal form), but it is to applicant's 
advantage to submit the data via an application data sheet. To help 
ensure that the Office can, in fact, electronically capture the data, 
the Office specifies a particular format to be used (but does not 
provide an application data sheet paper form). Electronic capture of 
the information from the application data sheet coupled with automated 
entry into Office records is quicker and more accurate than the current 
practice of manually extracting the information from numerous documents 
in the application file.
    Applicants benefit from their use of application data sheets as the 
Office will electronically capture the data provided by application 
data sheets and, in return, provide applicants with more accurate 
filing receipts and published applications. Electronic capture of the 
application data sheet information by scanning occurs at the same time 
that the application papers are scanned during initial processing. 
Accordingly, for applicant to obtain the maximum benefit from use of an 
application data sheet, it should be submitted with the application 
when it is filed. Application data sheets or supplemental application 
data sheets submitted after the application is filed will have their 
information captured by operators manually keying in the information 
from the application data sheets or supplemental application data 
sheets.
    Section 1.76(b) provides that bibliographic data as used in 
Sec. 1.76(a) includes: (1) Applicant information; (2) correspondence 
information; (3) application information; (4) representative 
information; (5) domestic priority information; and (6) foreign 
priority information. Section 1.76(b) also reminds applicants that the 
citizenship of each inventor must be provided in the oath or 
declaration under Sec. 1.63 (as is required by 35 U.S.C. 115) even if 
this information is provided in the application data sheet.
    Applicant information includes the name, residence, mailing 
address, and citizenship of each applicant (Sec. 1.41(b)). The name of 
each applicant must include the family name, and at least one given 
name without abbreviation together with any other given name or 
initial. If the applicant is not an inventor, this information also 
includes the applicant's authority (Secs. 1.42, 1.43,

[[Page 54626]]

and 1.47) to apply for the patent on behalf of the inventor. The 
recitation of ``mailing address'' reflects the replacement of ``post 
office address'' with ``mailing address'' in Sec. 1.63(c). What has 
been previously submitted to meet the requirement for a post office 
address may continue to be submitted to meet the requirement for a 
mailing address. The change in terminology is not a change in the type 
of information to be supplied but is an attempt to respond to 
applicants' confusion thinking post office address required them to 
have a post office box (see discussion related to Sec. 1.63(c)(1) and 
Response to Comment 32, above).
    Correspondence information includes the correspondence address, 
which may be indicated by reference to a customer number, to which 
correspondence is to be directed (see Sec. 1.33(a)).
    Application information includes the title of the invention, a 
suggested classification by class and subclass, the Technology Center 
to which the subject matter of the invention is assigned, the total 
number of drawing sheets, a suggested drawing figure for publication 
(in a nonprovisional application), any docket number assigned to the 
application, and the type of application (e.g., utility, plant, design, 
reissue, provisional). Application information also includes whether 
the application discloses any significant part of the subject matter of 
an application under a secrecy order pursuant to Sec. 5.2 of this 
chapter (see Sec. 5.2(c)). For plant applications, application 
information also includes the Latin name of the genus and species of 
the plant claimed, as well as the variety denomination.
    Although the submission of the information related to a suggested 
classification and Technology Center is desired for both provisional 
and nonprovisional applications, the Office shall not be bound to 
follow such information if submitted, as the Office shall continue to 
follow its present procedures for classifying and assigning new 
applications. Similarly for the suggested drawing figure, the Office 
may decide to print another figure on the front page of any patent 
issuing from the application.
    Application information also includes information about provisional 
applications, particularly their class and subclass, and the Technology 
Center. The receipt by the Office of provisional applications is now up 
to around 70,000 per year. Provisional applications are not examined or 
even processed (e.g., having a class and subclass assigned or being 
forwarded to a Technology Center). Even though provisional applications 
are not examined, the Technology Center and the class and subclass, if 
known to applicants, would be of benefit to the Office in giving an 
indication of where nonprovisional applications may be eventually 
received in the Office and their technologies so that the Office will 
be better able to plan for future workloads.
    Section 1.76(b)(3) also requests that the plant patent applicant 
state the Latin name and the variety denomination for the plant 
claimed. The Latin name and the variety denomination of the claimed 
plant are usually included in the specification of the plant patent 
application, and will be included in any plant patent or plant patent 
application publication if included in an application data sheet or 
patent application. The Office, pursuant to the ``International 
Convention for the Protection of New Varieties of Plants'' (generally 
known by its French acronym as the UPOV convention), has been asked to 
compile a database of the plants patented and the database must include 
the Latin name and the variety denomination of each patented plant. 
Having this information in separate sections of the plant patent will 
make the process of compiling this database more efficient.
    Representative information includes the registration number 
appointed with a power of attorney or authorization of agent in the 
application (preferably by reference to a customer number). Section 
1.76(b)(4) states that providing this information in the application 
data sheet does not constitute a power of attorney or authorization of 
agent in the application (see Sec. 1.34(b)). This is because the Office 
does not expect the application data sheet to be executed (signed) by 
the party (applicant or assignee) who may appoint a power of attorney 
or authorization of agent in the application.
    Domestic priority information includes the application number 
(series code and serial number), the filing date, the status (including 
patent number if available), and relationship of each application for 
which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). 
Section 1.76(b)(5) states that providing this information in the 
application data sheet constitutes the specific reference required by 
35 U.S.C. 119(e) or 120. While the patent rules of practice 
(Sec. 1.78(a)(2) or Sec. 1.78(a)(4)) formerly required that this claim 
or specific reference be in the first line of the specification, the 
relevant patent statute is broader and only requires that a claim to 
the benefit of (specific reference to) a prior provisional (35 U.S.C. 
119(e)(1)) or a prior nonprovisional (35 U.S.C. 120) application be in 
the application which is making the priority claim. Since the 
application data sheet, if provided, is considered part of the 
application, the specific reference to an earlier filed provisional or 
nonprovisional application in the application data sheet satisfies the 
``specific reference'' requirement of 35 U.S.C. 119(e)(1) or 120, and 
it also complies with Sec. 1.78(a)(2) or Sec. 1.78(a)(4) of this part, 
which sections are also correspondingly revised in this final rule to 
accept a specific reference in an application data sheet. Thus, a 
specific reference does not otherwise have to be made in the 
specification, such as in the first line of the specification. If 
continuity data is included in an application data sheet, but not in 
the first sentence of the specification, the continuity data to be set 
forth in the first line of the patent will be taken from the 
application data sheet. Section 1.76(b)(5) does not apply to 
provisional applications.
    Foreign priority information includes the application number, 
country, and filing date of each foreign application for which priority 
is claimed, as well as any foreign application having a filing date 
before that of the application for which priority is claimed. Section 
1.76(b)(6) states that providing this information in the application 
data sheet constitutes the claim for priority as required by 35 U.S.C. 
119(b) and Sec. 1.55(a). The patent statute (35 U.S.C. 119(b)) does not 
require that a claim to the benefit of a prior foreign application take 
any particular form. Section 1.76(b)(6) does not apply to provisional 
applications.
    Section 1.76(c)(1) provides that supplemental application data 
sheets may be subsequently supplied prior to payment of the issue fee 
to either correct or update information in a previously submitted 
application data sheet, or an oath or declaration under Secs. 1.63 or 
1.67, except that inventorship changes are governed by Sec. 1.48, 
correspondence changes are governed by Sec. 1.33(a), and citizenship 
changes are governed by Sec. 1.63 or Sec. 1.67. Section 1.76(c)(2) 
provides that supplemental application data sheets should indicate the 
information that is being supplemented, and therefore they need not 
contain information previously supplied that has not changed. 
Submission of a supplemental application data sheet containing all the 
information previously supplied as well as new or updated information 
without identifying the changes would be harder for the Office to 
process as the supplemental application data sheets will not be scanned 
but captured manually.

[[Page 54627]]

    Section 1.76(d) provides for resolution between inconsistencies 
between information that is supplied by both an application data sheet 
and the oath or declaration under Secs. 1.63, or 1.67. Section 
1.76(d))(1) provides that the latest submitted information will govern 
notwithstanding whether supplied by an application data sheet or by an 
oath or declaration under Sec. 1.63, or Sec. 1.67. Section 1.76(d)(2) 
provides that the information in the application data sheet will govern 
when the inconsistent information is supplied at the same time by a 
Sec. 1.63 or Sec. 1.67 oath or declaration. This is because the 
application data sheet (and not the oath or declaration) is intended as 
the means by which applicants will provide most information to the 
Office that will be captured by scanning to avoid manual input of data. 
The Office does not wish to check two documents (the application data 
sheet and the oath/declaration) for the same piece of information, or 
to automatically correct the data when the oath or declaration is 
inconsistent with the application data sheet. In the small number of 
instances where an oath or declaration under Sec. 1.63 or Sec. 1.67 has 
more accurate information than a concurrently supplied application data 
sheet (Sec. 1.76(d)(2)), a supplemental (corrected) application data 
sheet should be submitted to conform the information presented by the 
data sheets with the correct information in the oath or declaration 
(Sec. 1.76(d)(1)). Alternatively, an oath or declaration under 
Secs. 1.63, 1.67 (Sec. 1.76(d)(1)), or a letter pursuant to 
Sec. 1.33(b) can be used. (See also Sec. 1.76(d)(4)), below.)
    For example, if an application is filed with an application data 
sheet improperly identifying the residence of one of the inventors, 
inventor B, and an executed Sec. 1.63 declaration setting forth the 
correct but different residence of inventor B, the Office will capture 
the residence of inventor B found in the application data sheet as the 
residence of B, and include it in the filing receipt. If applicant 
desires correction of the residence, applicant should submit a 
supplemental application data sheet under Sec. 1.76(c), with the name 
of inventor B and the corrected residence for inventor B.
    For inconsistencies between an application data sheet and an oath 
or declaration under Sec. 1.63 or Sec. 1.67 exceptions are made by 
reference to Sec. 1.76(d)(3) in Secs. 1.76(d)(1) and (d)(2) for the 
naming of inventors (Sec. 1.41(a)(1)) and setting forth their 
citizenship (35 U.S.C. 115). If different inventors are listed on the 
application data sheet than are named in the oath or declaration for 
the application, the inventors named in the oath or declaration are 
considered to be the inventors named in the patent application. Any 
change in the inventorship set forth in the oath or declaration under 
Sec. 1.63 must be by way of petition under Sec. 1.48(a) notwithstanding 
identification of the correct inventive entity in an application data 
sheet or supplemental application data sheet. Similarly, if the oath or 
declaration under Sec. 1.63 incorrectly sets forth the citizenship of 
one of the inventors, that inventor must submit a Sec. 1.67 
supplemental oath or declaration with the correct citizenship 
notwithstanding the correct identification of the citizenship in an 
application data sheet or supplemental application data sheet.
    Section 1.76(d)(4) clarifies the Office's intent to rely upon 
information supplied in the application data sheet over an oath or 
declaration even where the type of information supplied (citizenship, 
inventorship) is governed by the oath or declaration according to 
statute (35 U.S.C. 115) or other rule (Sec. 1.41(a)(1)). Where the oath 
or declaration under Sec. 1.63 or Sec. 1.67 contains the correct 
information regarding inventors or their citizenship and the 
application data sheet does not, even though the oath or declaration 
governs pursuant to Sec. 1.76(d)(3), the information on the application 
data sheet must be corrected by submission of a request that the Office 
recapture the information and a supplemental application data sheet, or 
an oath or declaration under Secs. 1.63 or 1.67, or a letter pursuant 
to Sec. 1.33(b) showing the correct information.
    For example, if an application is filed with an application data 
sheet correctly setting forth the citizenship of inventor B, and an 
executed Sec. 1.63 declaration setting forth a different incorrect 
citizenship of inventor B, the Office will capture the citizenship of 
inventor B found in the application data sheet. Applicant, however, 
must submit a supplemental oath or declaration under Sec. 1.67 by 
inventor B (a supplemental application data sheet or letter pursuant to 
Sec. 1.33(b) cannot be used) setting forth the correct citizenship even 
though it appears correctly in the application data sheet. If, however, 
the error was one of residence, no change would be required 
(Sec. 1.76(d)(2)).
    Nothing in Sec. 1.76 is intended to change the practice in MPEP 
201.03 regarding correction of a typographical or transliteration error 
in the spelling of an inventor's name whereby all that is required is 
notification of the error to the Office. Such notification should be 
done by filing an application data sheet or a supplemental data sheet, 
but may continue to be done by filing a simple statement, such as by a 
practitioner, and a supplemental oath or declaration is not required.
    Comment 35: One comment opposed the proposal if use of the optional 
data sheet by the public is being motivated by the Office's plans for 
some future electronic program.
    Response: The comment is not adopted. The driver for the optional 
application data sheet is the expectation that once such information is 
supplied in a standard format the Office will currently be able to 
process the data more accurately. The benefits applicants will receive 
by its use is not dependent upon an electronic filing or an electronic 
file wrapper but will accrue both in the issuance of a more accurate 
filing receipt, and on publication of an application with fewer errors.
    Comment 36: One comment suggested that the application data sheet 
provide an entry option for applicant to identify the appropriate Art 
Unit for examination of the application and that the Office honor such 
identification. There is apparently some concern that the Office will 
attempt to minimize the granting of patent term adjustment for delays 
in the 14 months to first Office action or other delays by assigning 
applications for examination to Art Units with entirely foreign 
technology but small docket loads.
    Response: The suggestion to include additional information in the 
application data sheet is adopted, although an application data sheet 
format requesting such information may not be available when this rule 
becomes effective. The application data sheet is not a (paper) form but 
an electronic format provided to applicants by the Office. Since Office 
information systems are designed for information on the application 
data sheet to be arranged in a certain sequence, redesigning the 
electronic format is more labor intensive and expensive than redoing a 
paper form, and a revised application data sheet electronic format, 
which has a place for such information, will be made available in due 
course. The Office will accept such information if separately provided 
until the revised application data sheet format is made available.
    Additionally, there is a distinction between permitting applicants 
to aid in identification of the appropriate Art Unit to examine the 
application and requiring the Office to always honor such 
identification/request, which could lead to misuse by some applicants 
as a means of forum shopping. Even when an applicant's identification 
of an Art Unit is appropriate, internal staffing/workload requirements 
may

[[Page 54628]]

dictate that the application be handled by another Art Unit qualified 
to do so, particularly where the art or claims encompass the areas of 
expertise of more than one Art Unit.
    Section 1.77: Section 1.77(a) is separated into sections 1.77(a) 
and 1.77(b). New Sec. 1.77(a) lists the order of the papers in a 
utility patent application, including the application data sheet (see 
Sec. 1.76). New Sec. 1.77(b) lists the order of the sections in the 
specification of a utility patent application. Former Sec. 1.77(b) is 
redesignated as Sec. 1.77(c). Section 1.77(b)(4), former 
Sec. 1.77(a)(6), has been amended to provide for a description of the 
submissions of certain parts of the application on compact discs, and 
their incorporation by reference.
    Section 1.78: Section 1.78(a)(2) is amended to provide that the 
specification must contain or be amended to contain a specific 
reference required by 35 U.S.C. 120 in the first sentence following the 
title, unless the reference is included in an application data sheet.
    The ability under Sec. 1.78(a)(2) to provide the specific reference 
under 35 U.S.C. 120 in the application data sheet of Sec. 1.76 and not 
in the first sentence of the specification is effective on the date of 
publication in the Federal Register.
    Section 1.78(a)(4) is amended to provide that the specification 
must contain or be amended to contain a specific reference required by 
35 U.S.C. 119(e)(1) in the first sentence following the title, unless 
the reference is included in an application data sheet. See discussion 
of Sec. 1.76(b)(5). Section 1.78(a)(4) is additionally amended by 
deletion of the term ``copending'' as a requirement for a 
nonprovisional application claiming priority to a provisional 
application in view of the ``American Inventors Protection Act of 
1999.''
    Section 1.78(c) is amended for consistency with Sec. 1.110 and for 
clarity.
    Section 1.84: Section 1.84 had been proposed to be extensively 
revised to remove provisions that were not necessary for reproducible 
drawings, although they did set forth standards for drawings that are 
easy to understand. For example, Sec. 1.84(m), shading, was proposed to 
be deleted because shading is encouraged, but not required for drawings 
that are understandable and reproducible. After careful consideration 
of the many comments concerning drawings, it was decided not to pursue 
many of the proposed amendments. Most comments explained that quality 
drawings are necessary for understanding of the drawings and that 
Sec. 1.84 should set high standards for drawings. Accordingly, the 
amendments made to Sec. 1.84 are largely either to conform with 
existing practice (i.e., the elimination of the petition requirement 
for black and white photographs), or to clarify the rule (e.g., color 
photographs must meet the requirements of both Secs. 1.84(a)(2) and 
1.84(b)(1)).
    The resulting standards set forth in Sec. 1.84 define conditions 
met by quality drawings, and applicants should be mindful of Sec. 1.84 
in submitting drawings to the Office. Applicants should submit quality 
drawings in order to ensure that any patent application publication or 
patent is printed with quality drawings. The Office's implementation of 
Sec. 1.84 will include reviewing drawings to ensure that what has been 
submitted can be scanned and has no obvious errors, but will not 
include objecting to drawings merely because they could have been drawn 
more clearly or with more suitable views or shading.
    Sections 1.84(a), (a)(2), (b)(1), and (b)(2) are amended to clarify 
that design applications are covered.
    Section 1.84(a)(2) is amended to clarify that color drawings must 
be reproducible in black and white in the printed patent and that a 
petition (with petition fee) is required. The petition must show that 
color drawings are necessary for the understanding of the claimed 
invention.
    Section 1.84(b)(1) is amended to eliminate the requirement for 
three copies of black and white photographs and a petition to accept 
such photographs. Section 1.84(b)(1) is also amended to specify that 
black and white photographs may be accepted where photographs are the 
only practical medium of illustrating the claimed invention and to give 
a list of examples when photographs are acceptable. For example, 
photographs or photomicrographs of electrophoresis gels, blots (e.g., 
immunological, western, southern, and northern), autoradiographs, cell 
cultures (stained and unstained), histological tissue cross sections 
(stained and unstained), animals, plants, in vivo imaging, thin layer 
chromatography plates, crystalline structures, and, in a design patent 
application, ornamental effects, are acceptable. If photographs are 
submitted where the subject matter is capable of illustration by 
drawing, for example if a photograph of a syringe is submitted, the 
examiner may require a drawing.
    Section 1.84(b)(2) is amended to clarify that both the requirements 
of Secs. 1.84(a)(2) and 1.84(b)(1) must be met for color photographs to 
be acceptable.
    Section 1.84(c) is amended to provide that identifying indicia 
should be placed on the front of drawing sheets, in the top margin.
    Section 1.84(j) is amended to provide that one of the views must be 
suitable for publication on the cover page of the printed patent as the 
illustration of the invention.
    Section 1.84(k) is amended to clarify that indications such as 
``actual size'' or ``scale \1/2\'' on the drawings are not permitted 
since these lose their meaning with reproduction in a different format.
    Section 1.84(o) has been reworded for clarity.
    Section 1.84(y) contains text that was previously contained in 
Sec. 1.84(x).
    Comment 37: Many comments were received applauding the decision of 
the Office to publish utility and design patents with color drawings in 
color. Some of these comments, however, expressed concern that the 
standard for accepting color drawings or color photographs was not 
clear.
    Response: The plans to publish design and utility applications with 
color drawings in color will not be pursued at this time in order to 
allow the Office's automation efforts to focus on implementation of the 
eighteen-month publication provisions of the ``American Inventors 
Protection Act of 1999'' and filing of applications electronically.
    Comment 38: Many comments were received arguing against the 
proposed changes to Sec. 1.84. The comments argued that the proposed 
changes would make drawings harder to understand, thereby decreasing 
the quality of patents, make examination more difficult, and make a 
patent harder to defend and understand. Several noted that low 
standards for patent drawings would result in loss of jobs for patent 
illustrators. Many other comments were received supporting the proposed 
changes, stating that the burden to submit quality drawings should be 
on the applicant and not the Office, and that the technical objections 
made by the Office are a waste of time.
    Response: Section 1.84 has largely not been amended as proposed in 
order to have standards for quality drawings in one place and not 
spread out among the rules, the MPEP, and other materials. Although the 
Office has explained the requirements of quality drawings in Sec. 1.84, 
this does not mean that the Office will require applicant to submit the 
best quality drawings possible. It is in applicant's interest that the 
drawings be of the best possible quality. Applicants will be informed 
by the Office when drawings (e.g., informal drawings) are not of the 
normal publication standard. Accordingly, enforcement of Sec. 1.84 will 
be limited to insisting upon drawings that are correct and 
reproducible.

[[Page 54629]]

    Section 1.85: Sections 1.85(a) through (c) are amended to remove 
superfluous material.
    Section 1.85(a) is amended to remove the discussion of strict 
enforcement of Sec. 1.84 drawing requirements. See the discussion under 
Sec. 1.84.
    Section 1.85(c) is amended to make the period for filing corrected 
or formal drawings in reply to a Notice of Allowability a nonextendable 
period. Extensions under Secs. 1.136(a) or (b) will no longer be 
permitted. Thus, the time period for submitting the issue fee and any 
corrected or new drawings will be uniform, three months from the Notice 
of Allowability. Any Notice of Allowability that is mailed under the 
former rule permitting an extension of time under Sec. 1.136 may be 
replied to after the effective date of the instant amended rule with 
the use of a Sec. 1.136 extension of time.
    Elimination of the Sec. 1.85(c) (and Sec. 1.136) extension of time 
for filing corrected or formal drawings applies only where a Notice of 
Allowability requiring the corrected or formal drawing has been mailed 
on or after sixty days after publication in the Federal Register.
    The Office is taking positive steps to make it easier for 
applicants to submit drawings which will be approved. See Sec. 1.84 and 
the change to Sec. 1.85(a). Therefore, the instances where formal 
drawings will be required when the application is allowable will be 
reduced because more drawings will be approved as submitted.
    The elimination of extensions of time, it is hoped, will encourage 
applicants to submit drawings that can be approved as submitted. This 
will not only save applicants from paying for an extension of time to 
correct the drawings (and cause a possible loss of patent term 
adjustment, 35 U.S.C. 154), but will support eighteen-month publication 
of applications that is also instituted by recent statutory changes.
    Comment 39: Two comments supported the change to the extension of 
time period. A few comments opposed the change. One comment thought it 
premature to eliminate the extension until such time as the Office 
achieves a goal of four weeks to publication from payment of the issue 
fee. At that point the Office could implement not by a rule change but 
by a statement on the notice of allowability. Even then extensions for 
cause under Sec. 1.136(b) should be allowed as in some instances it 
will be impossible to meet the three-month deadline for good reasons. 
No corresponding benefit was seen for the change.
    Response: The need to publish application drawings as required by 
eighteen-month publication of applications, rather than the need to 
publish quickly once the issue fee is paid, is a driver for the change. 
This coupled with the changes to Sec. 1.84 will help ensure that there 
are very few drawings that still need correction at the time of 
allowance. Elimination of a need for extensions of time, which may 
result in loss of patent term, coupled with a uniform time frame for 
submission of both issue fee and drawing corrections will benefit 
applicants.
    Comment 40: One comment urged that the change should be implemented 
so that requirements for corrections already into extensions of time on 
the date that the rule goes into effect should be grandfathered in.
    Response: The comment is adopted. It is intended that the change 
only apply to requirements for corrections issued on or after the 
effective date of the rule.
    Section 1.91: Section 1.91(a)(3)(i) is amended to refer to ``[t]he 
fee set forth in Sec. 1.17(h)'' for consistency with the changes to 
Sec. 1.17(h) and Sec. 1.17(i). See discussion of changes to 
Sec. 1.17(h) and Sec. 1.17(i).
    Section 1.96: The Office indicated in the Notice of Proposed 
Rulemaking that the submission of computer program listings on 
microfiche placed a burden on applicants and the Office, and that it 
was considering changes to Sec. 1.96 to permit machine readable 
computer program listings to be submitted on electronic media in lieu 
of microfiche. Section 1.96 is amended to provide for voluminous 
program listings containing over 300 lines of code to be submitted on 
archival electronic media instead of microfiche. Section 1.96(b) is 
amended to limit computer program listings that may be submitted as 
drawings or part of the specification to 300 lines or fewer, with each 
line comprising 72 or fewer characters.
    Under Sec. 1.96 as amended, any computer program listing may and 
all computer program listings over 300 lines in length (up to 72 
characters per line) must be submitted as a computer program listing 
appendix on a compact disc pursuant to Sec. 1.96(c) (subject to the 
``transitional'' practice discussed below).
    Computer program listings in compliance with former Sec. 1.96 will 
be accepted until March 1, 2001. After that date, computer program 
listings must comply with revised Sec. 1.96.
    Section 1.96(c) is specifically amended to provide that a 
``computer program listing appendix'' be submitted on a compact disc, 
as defined in Sec. 1.52(e). The information submitted will be 
considered a ``computer program listing appendix'' (rather than a 
microfiche appendix). Section 1.96(c) will continue to require a 
reference at the beginning of the specification as itemized in 
Sec. 1.77(b)(4), as amended. As with a microfiche appendix, the 
contents of the ``computer program listing appendix'' on a compact disc 
will not be printed with the published patent, but will be available 
from the Office on a medium to be specified by the Office. The contents 
of a ``computer program listing appendix'' on a compact disc may not be 
amended pursuant to Sec. 1.121, but must be submitted on a substitute 
compact disc. Section 1.96(c) does not apply to international 
applications filed in the United States Receiving Office.
    Section 1.96(c) provides that the availability of the computer 
program will be directly analogous to that of the microfiche. A compact 
disc appendix will be stored in the file wrapper just as microfiche 
appendices are currently stored. Sec. 1.96(c)(1) it is specified that 
multiple program listings may be placed on a single compact disc, but a 
separate compact disc is required for each application.
    Section 1.96(c)(2) provides that the submission requirements are 
specified in Sec. 1.52(e) and adds further requirements concerning the 
formatting of the ``computer program listing appendix.''
    Until March 1, 2001, the Office will continue to accept a computer 
program listing that complies with current Sec. 1.96 provisions (i.e., 
a computer program listing contained on ten or fewer sheets as drawings 
or part of the specification, or a ``computer program listing 
appendix'' on microfiche).
    The amendments to Secs. 1.96 and 1.821 et seq. (discussed below) 
for computer program listings and sequence listings will eliminate the 
need for submissions of hard to handle and reproduce microfiche 
computer program listings and voluminous paper sequence listings. To 
focus specifically on the Office's difficult paper handling problem, 
and to simplify this project so it can be deployed in a short time 
span, only the computer program listings, large table information, and 
the nucleotide and/or amino acid sequences will be accepted in machine 
readable format. As the Office gains experience with this new 
electronic medium for submission, the use of it may expand, or be 
subsumed into other more flexible electronic submission methods.
    Relationship to Office automation plans: These changes are the 
initial steps toward solutions to difficult Office paper-handling 
problems. The Office is

[[Page 54630]]

planning for voluntary full electronic submission of applications and 
related documents by fiscal year 2001. The changes in this final rule 
are an initial step in that direction, permitting certain application 
and related material to be submitted on an acceptable archival medium.
    Comment 41: The comments (almost without exception) were supportive 
of this proposal. Comments specifically indicated that this proposal 
was ``long overdue,'' and that the proposal should include provisional 
applications and other technologies, including chemical and 
manufacturing processes requiring precise computer control. The 
comments provided advice, including the concepts of safeguarding the 
information from alteration, of making the public access and examiner 
access easy and of assuring the submissions are readable in a 
nonproprietary format. The only negative comment was an expression of 
disbelief that the Office was equipped to handle electronic media 
submissions.
    Response: The Office is amending Sec. 1.96 to provide for 
voluminous program listings to be submitted on archival electronic 
media instead of microfiche.
    Section 1.97: Sections 1.97(a) through (e), and (i) have been 
modified for purposes of grammar and consistency within the section.
    Section 1.97(b)(1) has been amended to insert ``other than an 
application under Sec. 1.53(d)'' to eliminate the three-month window 
for filing an information disclosure statement (IDS) in a continued 
prosecution application (CPA). Because of the streamlined processing 
for CPAs, it is expected that the examiner will issue an action on the 
merits before three months from the filing date. Under the former rule, 
should an examiner issue an action on the merits prior to three months 
from the filing date and an IDS was submitted after the Office action 
was mailed but within the three-month window, the examiner was required 
to redo the action to consider the IDS. A CPA is a continuing 
application, and, thus, applicant should have had ample opportunity to 
file an IDS. Note that Sec. 1.103(b) now provides for a request of a 
three-month suspension of action upon filing of a CPA; thus, in an 
unusual instance where a need to file an IDS newly arises, applicant 
can request the three-month suspension based upon that need. In view of 
the above, it is appropriate to require that any IDS be filed before 
filing the CPA, or concurrently with the filing of the CPA.
    Section 1.97(b)(1) applies to all continued prosecution 
applications under Sec. 1.53(d) filed on or after 60 days from 
publication of this final rule in the Federal Register.
    Section 1.97(b)(3) has been amended to delete unassociated text. 
The phrase ``whichever event occurs last'' appeared at the end of 
Sec. 1.97(b)(3), and thus it physically appeared to apply only to 
Sec. 1.97(b)(3). In reality, ``whichever event occurs last'' should be 
associated with each of Secs. 1.97(b)(1), (b)(2), and (b)(3). 
Accordingly, ``whichever event occurs last'' has been deleted from 
Sec. 1.97(b)(3), and ``within any one of the following time periods'' 
has been added in Sec. 1.97(b). This eliminates the unassociated text 
``whichever event occurs last'' from Sec. 1.97(b)(3), while, at the 
same time, making it clear that the IDS will be entered if it is filed 
within any of the time periods of Secs. 1.97(b)(1), (b)(2), (b)(3) or 
(b)(4).
    As the filing of a RCE under Sec. 1.114 is not the filing of an 
application, but merely continuation of the prosecution in the current 
application, Sec. 1.97(b)(4) does not provide a three-month window for 
submitting an IDS after the filing of a request for continued 
examination.
    Section 1.97(c) is amended in conformance with paragraph (b) to 
delete ``whichever occurs first.'' Additionally, Sec. 1.97(c) is 
amended to include, in addition to a final action under Sec. 1.113 and 
a notice of allowance under Sec. 1.311, other Office actions which 
close prosecution in the application. This would typically occur when 
an Office action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11 
(Comm'r Pat. 1935), is issued. No reason is seen for including only two 
of the types of actions which close prosecution (Secs. 1.113, and 
1.311), while not including other types.
    The fee for a Sec. 1.97(c)(2) submission has been lowered from $240 
to $180, see Sec. 1.17(p) and the discussion of the change to the fee 
for submissions under Sec. 1.97(d). The new fee for Sec. 1.97(c) IDS 
submissions applies to any IDS filed on or after two months from the 
date of publication in the Federal Register.
    Section 1.97(d)(2) has been deleted in its entirety to remove all 
reference to the filing of a petition and the associated petition fee 
of $130. A petition unduly complicates the matter, while there is 
really no issue to be decided other than the entry of the IDS, and this 
issue of entry is ordinarily decided by the patent examiner without the 
need for a petition. Section 1.97(d)(2) simply requires (for an IDS 
submitted after the close of prosecution and before payment of the 
issue fee) the combination of the IDS fee (in Sec. 1.17(p)) and the 
statement as is specified in Sec. 1.97(e).
    Consistent with the change to the fee required by Sec. 1.97(c), the 
fee referred to in Sec. 1.97(d) has been changed from a petition fee of 
$130 to a submission fee of $180, see Sec. 1.17(p). The Office has 
reevaluated the processing of submissions under Secs. 1.97(c) and (d) 
and determined that the steps and costs involved are so similar that 
charging different fees was not necessary. The average cost of 
processing the submissions was determined to be $180, which fee is 
required for submissions under either Sec. 1.97(c) or Sec. 1.97(d), see 
Sec. 1.17(p). The new fee for Sec. 1.97(d) IDS submissions applies to 
any IDS filed on or after two months from the date of publication in 
the Federal Register.
    The material in former Sec. 1.97(d)(3) is now in Sec. 1.97(d)(2), 
in view of the deletion of former Sec. 1.97(d)(2), and is amended to 
delete reference to the fee as a petition fee under Sec. 1.17(i) and 
instead make reference to the fee as an IDS fee under Sec. 1.17(p).
    Section 1.97(e)(1) is amended to specify that an item first cited 
in a communication from a foreign patent office in a counterpart 
foreign application not more than three months prior to the filing of 
the IDS is entitled to special consideration for entry into the record. 
An item first cited by a foreign patent office (for example) a year 
before the filing of the IDS in a communication from that foreign 
patent office, which item is once again cited by another foreign patent 
office within three months prior to the filing of the IDS in the 
Office, is not entitled to special consideration for entry, since 
applicant was aware of the item a year ago, yet did not submit that 
item. Similarly, a document cited in an examination report cannot 
support timely submission where the document was first previously cited 
more than three months previously in a search report from the same 
foreign office. The term ``a'' was replaced with the term ``any'' (in 
the second line of Sec. 1.97(e)(1)) to make the distinction clear.
    Section 1.97(i) is amended to delete ``filed before the grant of a 
patent.'' This phrase is surplusage since there can be no information 
disclosure statement after the grant of the patent. A submission of 
information items after the patent grant is a ``prior art citation'' 
which is made, and treated, under Sec. 1.501. Section 1.97(i) is also 
amended to make it a little clearer that both Secs. 1.97 and 1.98 must 
be complied with to obtain consideration of an IDS (by the Office), and 
to change Sec. 1.97(i) plural recitation of information disclosure 
statements to a singular recitation, which would be in conformance with 
the rest of Sec. 1.97.

[[Page 54631]]

    Comment 42: One comment opposed the elimination of the three-month 
window to file an IDS in a CPA under Sec. 1.97(b)(1) and the charging 
of a fee to obtain the three-month suspension of action under 
Sec. 1.103. It was suggested that no fee should be charged for the 
suspension request, or a lower CPA filing fee should offset the 
suspension fee. It was felt that there is no rational basis to require 
applicants to pay an additional fee simply to have the CPA obtain the 
same benefits (i.e., the ability to file an IDS without fee during the 
first three-month period) as a non-CPA filing, since the full 
application fee is already required for the CPA filing.
    Response: The proposal to amend Sec. 1.103 was not proceeded with 
in this final rule, but has been included in the final rule to 
implement request for continued examination practice (the final rule 
resulting from Changes to Application Examination and Provisional 
Application Practice, Interim Rule, 65 FR 14865 (March 20, 2000), 1233 
Off. Gaz. Pat. Office 47 (April 11, 2000)). The comment has been 
treated in that final rule.
    Comment 43: Some comments believed that the Office has not 
justified raising the cost for submission of an IDS under Sec. 1.97(d) 
and opposed the amendment. The previous higher fee for earlier 
submission was intended as an inducement to submit the IDS earlier, 
while the lower fee for later submission existed because an applicant 
must be able to certify that the art cited in the IDS is being promptly 
made of record. A request was made for information on the percentage of 
time prosecution is reopened when art was considered after final 
determination.
    Response: The comment relating to cost justification has been 
adopted and the cost for submission has been reevaluated. The only 
factor in determining IDS submission fees is cost to the Office to 
process the submissions. The Office has accordingly reevaluated the 
cost for processing both Secs. 1.97(c) and (d) fees and has determined 
that the appropriate cost recovery fee should be the same for both and 
the fee amount should be $180.
    Comment 44: One comment requested clarification of the amendment to 
Sec. 1.97(e)(1). It was not clear whether the requirement of ``first 
cited'' refers to a citation by the foreign patent office that cites 
the information in an official action, or refers to the citation by any 
patent office in a counterpart application. For example, if a patent is 
cited in a German Office action, and it is the first time that the 
patent is cited in that application, but the same patent was previously 
cited in a Japanese counterpart application, could the item of 
information be cited as the first citation in a communication from the 
German Patent Office? Unless the German citation could be used as the 
first citation, the coordination of citations among a plurality of 
foreign applications would create a very significant administrative 
burden on applicants and their representatives.
    Response: The comment is adopted to the extent that Sec. 1.97(e)(1) 
has been amended to make clear that the German citation could not be 
relied upon as the first citation. The term ``a'' was replaced with the 
term ``any'' (as noted in the discussion under Sec. 1.97(e)(1)). The 
amendment to the rule is a clarification and does not represent a 
change in practice. The intent of the rule is to encourage IDS 
disclosures as early in the prosecution as is possible and in 
particular before payment of the issue fee.
    Comment 45: One comment noted that the change discussed in the 
preamble of the notice of proposed rule changes for Sec. 1.97(i) was 
not reflected in the rule language portion of the notice. Section 
1.97(i) was not presented in the rule language.
    Response: The language representing the clarifications discussed 
but not presented for Sec. 1.97(i) has been placed in the rule 
language.
    Section 1.98: The Office has gone forward, at the present time, 
with only one aspect of the plan for information disclosure statement 
(IDS) revision that was set forth in the Advance Notice: the proposal 
to require that an IDS include a legible copy of each cited pending 
U.S. application or that portion of the application which caused it to 
be listed including any claims directed to that portion. The IDS rules 
are also being revised for consistency and grammar, and to tie up a 
number of loose ends, as will be discussed below.
    Other than the proposed requirement for a copy of each cited U.S. 
application, the IDS proposals as set forth in Topics 9 and 10 of the 
Advance Notice were withdrawn in the Notice of Proposed Rulemaking. 
Accordingly, there is no proposal at this time for a statement of 
personal review or for a unique description as were called for in the 
Advance Notice, and the number of citations that may be submitted is 
not presently limited. The Office issued a notice of hearing and 
request for public comments to obtain views of the public on issues 
associated with the identification and consideration of prior art 
during patentability determinations. See Notice of Public Hearing and 
Request for Comments on Issues Related to the Identification of Prior 
Art During the Examination of a Patent Application, Notice of Hearing 
and Request for Public Comments, 64 FR 28803 (May 27, 1999), 1223 Off. 
Gaz. Pat. Office 91 (June 15, 1999). Pursuant to that notice, the 
Office held public hearings on June 28, 1999, and July 14, 1999, on the 
issues. These prior art issues are related to the changes presently 
being considered by the Office, independent of the instant final rule, 
to impose requirements/limits on IDS submissions in Sec. 1.98 and in 
Sec. 1.56. Thus, it would be premature to go forward with a 
comprehensive new IDS alternative until the results of the hearings and 
comments submitted in response to the notice have been appropriately 
evaluated. It is contemplated that any new IDS/Sec. 1.56 alternatives 
will be advanced in a future rulemaking.
    The specifics of the current revisions to Sec. 1.98 will now be 
discussed. The discussion will include the changes proposed in the 
Notice of Proposed Rulemaking, in addition to the application copy 
requirement that was also present in the Advance Notice of Proposed 
Rulemaking.
    Sections 1.98(a) through (d) are amended for purposes of clarity.
    Section 1.98(a)(2)(iii) is amended to be directed solely to a new 
requirement: For each pending U.S. application citation listed in an 
IDS, applicant must submit either a copy of the application 
specification, including the claims, and any drawing of the 
application, or as a minimum, the portion of the application which 
caused it to be listed, including any claims directed to the portion 
which caused it to be listed. The Office noted, in the Advance Notice 
(and in the Notice of Proposed Rulemaking), its concern that current 
Sec. 1.98 does not require applicant to supply copies of U.S. 
application citations. It was pointed out that there is a real burden 
on the examiner to locate and copy one or more pending applications, 
thus delaying the examination of the application being examined (in 
which the U.S. application citation is made). Further, copying a cited 
pending application has the potential for interfering with the 
processing and examination of the cited application. This revision 
would, additionally, be a benefit to the public since the copy of the 
application would be readily available upon issuance of the application 
as a patent. Additionally, Sec. 1.98(a)(2)(iv) has been added to 
contain some material removed by the change to Sec. 1.98(a)(2)(iii). To 
the extent that the cited pending application represents proprietary 
information which applicant does not wish to be

[[Page 54632]]

publicly available once the patent issues, applicant may submit, prior 
to issue, a petition that it be expunged pursuant to Sec. 1.59(b).
    Sections 1.98(a)(3) and (b) were amended to create subparagraphs.
    Section 1.98(b) was further amended to set forth the required 
identification for listed U.S. applications, to change ``shall'' to 
``must,'' to require in Sec. 1.98(b)(1) identification of the 
``inventor'' rather than of the ``patentee'' (to conform to the 
language of Sec. 1.98(b)(2)), and to require in Sec. 1.98(b)(4) 
identification of the ``publisher.''
    Section 1.98(c) was amended to move the last sentence to 
Sec. 1.98(a)(3)(ii).
    Section 1.98(d) provides that copies of information cited in an IDS 
are required to be supplied to the Office with the IDS even if such 
copies had been previously supplied to the Office in an IDS submission 
in an earlier application, unless excepted under Secs. 1.98(d)(1) and 
(2) relating to a continuing application.
    Section 1.98(d)(1) states the requirement that the prior 
application must be relied on for a benefit claim under 35 U.S.C. 120 
and that the earlier application must be properly identified in the 
IDS.
    Section 1.98(d)(2) states that the IDS submitted in the prior 
application must comply with Secs. 1.98(a) through (c) as amended in 
this notice.
    Therefore, in an IDS, filed on or after the effective date of this 
rule, which cites a pending U.S. application, a copy of that pending 
application (or the portion of the application which caused it to be 
listed, including any claims directed to that portion) must be 
submitted unless:
    1. The application for which the IDS was submitted claims benefit 
to an earlier application under 35 U.S.C. 120 and that earlier 
application is properly identified in the IDS; and
    2. The earlier application cites, and has a copy of, the same 
pending U.S. application (or the portion of the application which 
caused it to be listed, including any claims directed to that portion).

    Example 1: Application A has an IDS statement which cites 
pending U.S. application X. This IDS was filed prior to the 
effective date of the rule change to Sec. 1.98, and applicants did 
not submit a copy of pending U.S. application X (as they were not 
required to under former Sec. 1.98(d)). Application B is filed as a 
continuing application of Application A. In Application B, 
applicants file an IDS after the effective date of the rule change, 
in which the IDS lists the same pending U.S. application (i.e., 
application X) and refers to Application A. Applicants fail to 
submit a copy of pending U.S. application X with the IDS filed in 
Application B. The examiner will not consider pending U.S. 
application X during the examination of Application B since the IDS 
does not comply with Sec. 1.98(a)(2)(iii). Applicants must submit a 
copy of pending U.S. application X in order to ensure that pending 
U.S. application X is considered by the examiner.
    Example 2: Application C cites, and has a copy of, pending U.S. 
application Y. Application D is filed and claims the benefit of 
Application C under 35 U.S.C. 120. In Application D, applicants file 
an IDS, which lists the same pending U.S. application Y and refers 
to Application C, after the effective date of the rule change. 
Applicants fail to submit a copy of pending U.S. application Y. The 
examiner will consider pending U.S. application Y during examination 
of Application D, since a copy of pending U.S. application Y is not 
required under Sec. 1.98(d).

    This amendment to Secs. 1.98(d), (d)(1), and (d)(2) is applicable 
to all IDS submissions filed on or after the effective date of this 
rule.
    Comment 46: While some comments supported the amendment, others did 
not. It is argued that submissions of cited applications are relatively 
rare, and the Office's justification is based on false presumptions 
that the cited application file is routinely copied or that the 
examiner must have a copy rather than simply review the (cited) 
application as is done for references in a subclass. Additional 
arguments against the amendment are: (a) There is no guarantee that 
pending cited applications would be expunged from the file in which it 
is being cited prior to issuance of a patent, (b) it creates a 
significant burden to applicants and very large paper files in the PTO, 
(c) most pending applications will soon be available to the examiner in 
electronic form thus rendering the problem moot, and (d) it violates 
the confidentiality of 35 U.S.C. 122. It is also argued that as there 
is no requirement to submit a copy of an application that is cited 
under Cross Reference to Related Applications, there is no reason to 
have a different standard where the same application is cited under 
Sec. 1.98. One suggestion supporting the amendment thought that 
applicants should be required to submit a copy of the prior art that 
was submitted in the cited application as well as the copy of the cited 
application. One comment in support of the amendment noted that the 
burden on applicants was minor compared to the benefit to examiners 
during prosecution and to the public after the application issues in 
obtaining papers and reducing risk of lost and misplaced papers.
    Response: The comments opposing the amendment are not adopted. It 
is the Office's belief that it is faster access to the cited 
application and faster examination of the application having the cite, 
and not the frequency of such application citations, that is 
determinative. Additionally, supplying a copy of the cited application 
to the examiner prevents, in most cases, the need to disrupt 
examination of the cited application. Even where a cited application 
might not be copied by the examiner, if a copy of the cited application 
were not supplied, there would still be significant disruption to 
examination of the cited application, since the examiner would need to 
obtain the file and usually remove it so that it could be studied in 
the examiner's office. A cited application is more analogous, not to 
the totality of references in the search files that an examiner reviews 
on site, but to the references that the examiner removes from the 
search file to study further in the examiner's office. An applicant 
concerned with nondisclosure of the cited application has recourse to 
Sec. 1.59 expungement provided that the cited application is deemed by 
the Office to not be material to the examination of the application in 
which it is cited. On balance, when weighing the burden on applicants 
to produce a copy versus the Office's need to examine both the 
application in which another application is cited and the cited 
application expeditiously, it is believed that the amendment is 
appropriate. When electronic copies of applications become available to 
the examiners, the issue will be reconsidered. To the extent that 
applicants are concerned about supplying a copy of an application cited 
in an IDS, applicants may refer to the ``cited'' application in the 
specification of the ``examined'' application, rather than by IDS 
submission and would then not need to supply a copy of the referred to 
application; however, the Office does not review an application 
referred to in the specification in the same light as it does a 
specific IDS citation of the application with a copy supplied. For 
example, references in the specification may only be for purposes of 
supplying background information as opposed to utilizing an IDS to 
comply with a duty of disclosure under Sec. 1.56.
    Comment 47: One comment opposed the requirement in Sec. 1.98(b)(2) 
that each listed U.S. application be identified by the inventor, 
application number, and filing date, as such information can be easily 
obtained from PALM. It was suggested that the first named inventor or 
identification number be used.
    Response: The comment is not adopted. The burden to supply the 
required information is slight, and there is no need to require 
examiners to look the information up under PALM. Additionally, if only 
one piece of

[[Page 54633]]

information is supplied, e.g., application number, any error in the 
information would significantly delay identification of the application 
being cited.
    Comment 48: One comment suggested that the change to Sec. 1.98(d) 
adds a great deal of complexity for very little benefit, particularly 
as the examiners should be considering the prosecution history, which 
is independent of whether the IDS in the prior application complied 
with Sec. 1.97. Additionally, there is no justification to apply 
Sec. 1.98(d)(2) retroactively.
    Response: The comment has been adopted. The proposed required 
compliance with Sec. 1.97 for the IDS in the prior application has not 
been carried forward in the final rule. It is also the intent of the 
Office, as stated in the preamble to the instant final rule, not to 
apply Sec. 1.98(d)(2) retroactively.
    Section 1.102: Section 1.102(d) is amended to refer to ``the fee 
set forth in Sec. 1.17(h)'' for consistency with the changes to 
Secs. 1.17(h) and 1.17(i). See discussion of changes to Secs. 1.17(h) 
and 1.17(i).
    Section 1.103: The proposal to amend Sec. 1.103 was not proceeded 
with in this final rule, but has been included in the final rule to 
implement request for continued examination practice (the final rule 
resulting from Changes to Application Examination and Provisional 
Application Practice, Interim Rule, 65 FR 14865 (March 20, 2000), 1233 
Off. Gaz. Pat. Office 47 (April 11, 2000)). The comments on the 
proposed amendment to Sec. 1.103 have been treated in that final rule.
    Section 1.104: Section 1.104(a)(2) (second sentence) is amended to 
add the phrase ``in an Office action'' to provide basis for the phrase 
``Office action'' in Secs. 1.111(a), (b), and 1.115(a).
    Section 1.104(e) has been revised by deleting the last sentence 
thereof. The last sentence previously stated:

    Failure to file such a statement does not give rise to any 
implication that the applicant or patent owner agrees with or 
acquiesces in the reasoning of the examiner.

    This statement of the rule is inconsistent with recent decisions by 
the United States Supreme Court (Supreme Court) and the United States 
Court of Appeals for the Federal Circuit (Federal Circuit), which 
highlight the crucial role a prosecution history plays in determining 
the validity and scope of a patent. See e.g., Warner-Jenkinson Co. v. 
Hilton Davis Chem. Co., 520 U.S. 17, 41 USPQ2d 1865 (1997); Markman v. 
Westview Instruments, 52 F.3d 967, 34 USPQ2d 1321 (Fed. Cir. 1995), 
aff'd 517 U.S. 320, 38 USPQ2d 1461 (1996); Vitronics Corp. v. 
Conceptronic Inc., 90 F.3d 1576, 39 USPQ2d 1573 (Fed. Cir. 1996). The 
examiner's statement of reasons for allowance is an important source of 
prosecution file history. See for example Zenith Labs., Inc. v. 
Bristol-Myers Squibb Co., 19 F.3d 1418, 30 USPQ2d 1285 (Fed. Cir. 
1996), which references MPEP 1302.14 to this effect (Footnote 7 of the 
case).
    In view of the recent case law dealing with prosecution history, 
the failure of an applicant to comment on damaging reasons for 
allowance would give rise to a presumption of acquiescence to those 
reasons, and the negative inferences that flow therefrom. Accordingly, 
the statement in the rule that failure to file comments on reasons for 
allowance does not give rise to any implication that an applicant (or 
patent owner) agrees with or acquiesces in the reasoning of the 
examiner is obsolete and out of step with recent case law. The deletion 
of this statement from the rule should require applicant to set forth 
his or her position in the file if he or she disagrees with the 
examiner's reasons for allowance, or be subject to inferences or 
presumptions to be determined on a case-by-case basis by a court 
reviewing the patent, the Office examining the patent in a reissue or 
reexamination proceeding, the Board of Patent Appeals and Interferences 
reviewing the patent in an interference proceeding, etc.
    That the examiner does not respond to a statement by the applicant 
commenting on reasons for allowance does not mean that the examiner 
agrees with or acquiesces in the reasoning of such statement. While the 
Office may review and comment upon such a submission, the Office has no 
obligation to do so.
    This revision of Sec. 1.104(e) does not provide any new policy, but 
rather tracks the state of the case law established in the decisions of 
the Supreme Court and the Federal Circuit.
    Section 1.105: Section 1.105 is a new section containing 
Secs. 1.105(a) through (c), relating to requirements by the Office that 
certain information be supplied.
    Section 1.105(a)(1) provides examiners or other Office employees 
explicit authority to require submission, from individuals identified 
under Sec. 1.56(c) or any assignee, of such information as may be 
reasonably necessary for the Office to properly examine or treat a 
matter being addressed in an application filed under 35 U.S.C. 111 or 
371, in a patent, or in a reexamination proceeding. The examples given 
that contain specific references in Secs. 1.105(a)(1)(i), (iii), and 
(vii) to inventors, and in Sec. 1.105(a)(2) to assignees who have 
exercised their right to prosecute under Sec. 3.71 are not intended to 
limit the scope of general applicability for all individuals identified 
in Sec. 1.56(c). Abandoned applications also fall within the scope of 
the rule to provide for handling of petition matters. New Sec. 1.105 is 
simply an explicit recitation of inherent authority that exists 
pursuant to 35 U.S.C. 131 and 132, and continues the practice of 
providing explicit authority to Office employees as was done with the 
Board of Patent Appeals and Interferences under Sec. 1.196(d) and with 
trademark examiners under Sec. 2.61.
    The explicit authority of the examiner under Sec. 1.105 to require 
such information as may be reasonably necessary to properly examine an 
application or treat a matter therein will be effective for any Office 
action written on or after the date that is sixty days after the date 
of publication in the Federal Register.
    The inherent authority of the Office to require applicants to reply 
to requirements for information under 35 U.S.C. 131 and 132 was made 
explicit in Sec. 1.105(a)(1) to encourage its use by Office employees 
so that the Office can perform the best quality examination possible. 
The authority is not intended to be used by examiners without a 
reasonable basis, but to address legitimate concerns that may arise 
during the examination of an application or consideration of some 
matter.
    Sections 1.105(a)(1)(i) through (a)(1)(vii) identify examples of 
the types of information that may be required to be submitted. Section 
1.105(a)(1)(i) relates to the existence of any particularly relevant 
commercial database known to any of the inventors that could be 
searched for a particular aspect of the invention. Section 
1.105(a)(1)(ii) relates to whether a search was made, and if so, what 
was searched. Section 1.105(a)(1)(iii) relates to a copy of any non-
patent literature, published application, or patent (U.S. or foreign), 
by any of the inventors, that relates to the claimed invention. Section 
1.105(a)(1)(iv) relates to a copy of any non-patent literature, 
published application, or patent (U.S. or foreign) that was used to 
draft the application. Section 1.105(a)(1)(v) relates to a copy of any 
non-patent literature, published application, or patent (U.S. or 
foreign) that was used in the invention process, such as by designing 
around or providing a solution to accomplish an invention result. 
Section 1.105(a)(1)(vi) relates to identification of improvements. 
Section 1.105(a)(1)(vii)

[[Page 54634]]

relates to uses of the claimed invention known to any of the inventors 
at the time the application is filed notwithstanding the date of the 
use. Knowing a particular use/application of an invention may be 
helpful in determining a field of search for the invention.
    Other examples where the Office may require the submission of 
information are:
    (1) A reply to a matter raised in a protest under Sec. 1.291;
    (2) An explanation of technical material in a publication, such as 
one of the inventor's publications;
    (3) The identification of changes made in a reformatted continuing 
application filed under Sec. 1.53(b);
    (4) A mark-up for a continuation-in-part application showing the 
new matter where there is an intervening reference;
    (5) Comments on a new decision by the Federal Circuit that appears 
on point;
    (6) The publication date of an undated document mentioned by 
applicant which may qualify as printed publication prior art (35 U.S.C. 
102(a) or (b)); or
    (7) Information of record which raises a question of whether 
applicant derived the invention from another under 35 U.S.C. 102(f).
    The Office intends to provide training for its employees on the 
appropriate use of Sec. 1.105. Any abuse in implementation of the 
authority, such as a requirement for information that is not in fact 
reasonably necessary to properly examine the application, may be 
addressed by way of petition under Sec. 1.181.
    Section 1.105 does not change current Office practice in regard to 
questions of fraud under Sec. 1.56, and inquiries from examiners 
relating thereto are not authorized. See MPEP 2010.
    Section 1.105(a)(2) provides that where an assignee has asserted 
its right to prosecute an application pursuant to Sec. 3.71(a), matters 
such as Secs. 1.105(a)(1)(i), (iii), and (vii) that especially relate 
to the inventors may also be applied to the assignee. It is also 
contemplated that these paragraphs may be applied to other individuals 
identified by Sec. 1.56(c).
    Section 1.105(a)(3) provides a safety net by specifically 
recognizing that where the information required to be submitted is 
unknown and/or is not readily available, a complete reply to the 
requirement for information would be a statement to that effect. There 
would be no requirement for a showing that in fact the information was 
unknown or not readily available such as by way of disclosing what was 
done to attempt to satisfy the requirement for information. 
Nonetheless, it should be understood that a good faith attempt must be 
made to obtain the information and a reasonable inquiry made once the 
information is requested even though the Office will not look behind 
the answer that the information required to be submitted is unknown 
and/or is not readily available. An Office employee should not continue 
to question the scope of a specific answer merely because it is not as 
complete as the Office employee desires. (See Example below.)

    Example: In a first action on the merits of an application with 
an effective filing date of May 1, 1999, the examiner notes the 
submission of a protest under Sec. 1.291 relating to a public sale 
of the subject matter of the invention and requests a date of 
publication for a business circular authored by the assignee of the 
invention, which circular was submitted with the protest. It is 
expected that the attempt to reply to the requirement for 
information would involve contacting the assignee who would then 
make a good faith attempt to determine the publication date of the 
circular. The reply to the requirement states that the publication 
date of the circular is ``around May 1, 1998.'' As ``around May 1, 
1998'' covers dates both prior and subsequent to May 1, 1998, a 
prima facie case under 35 U.S.C. 102(b) would not exist. The 
examiner cannot require that the reply be more specific or hold the 
reply to be incomplete based on such information. The examiner can, 
however, in the next Office action seek confirmation that this is 
the most specific date that was obtained or can be obtained based on 
a reasonable inquiry being made if that is not already clear from 
the reply to the initial requirement for information.

    Section 1.105(b) provides that the requirement for information may 
be included in an Office action, which includes a restriction 
requirement if appropriate, or can be sent as a separate letter 
independent of an Office action on the merits, such as when the 
information required is critical to an issue or issues that need to be 
addressed in a subsequent Office action. Each Technology Center can 
determine how best to implement the section. For example, a Technology 
Center having certain technologies where pertinent prior art is highly 
likely to be found in a commercial data base may choose to implement 
Sec. 1.105(a)(1)(i) routinely for those technologies, sending out 
requirements for information either when such applications are first 
forwarded to the Technology Center, or at the time they are assigned to 
an examiner.
    Section 1.105(c) provides that a reply to a requirement for 
information or failure to reply is governed by Secs. 1.135 and 1.136. 
Note the Example provided in the discussion of Sec. 1.105(a)(2).
    Comment 49: Several comments either oppose or strongly oppose the 
rule. Three comments argue that the Office is without statutory basis 
to support the rule and in fact violates 35 U.S.C. 103(a) 
(patentability shall not be negatived by the manner in which the 
invention was made), while two others argue that there is no need for 
the rule in view of the Office's inherent authority. All the comments 
opposing the rule argue that the rule imposes an unreasonable burden on 
the applicants. One comment argues that the rule imposes an 
unreasonable burden on the examiners to prepare the request. Objections 
to the rule include:
    (1) It will slow the examination process where applicant is 
required to reply;
    (2) It sets a standard of ``reasonably necessary'' that is new and 
different from the materiality standard in Sec. 1.56;
    (3) The information may be protected by attorney-client privilege;
    (4) The information may be voluminous;
    (5) It may be difficult to make a good faith search when large 
corporate teams or foreign entities are involved;
    (6) New issues are created in subsequent litigation as to whether a 
good faith search was made and whether the duty of candor was complied 
with, particularly if the reply was that the information is unknown or 
not available; and
    (7) It may be used to shift the burden of examination from the 
examiner to the applicant.
    There was also a concern that the Office did not address any 
mechanism to assure a uniform policy among the 3,000 examiners.
    Response: The comments objecting to the new rule are not adopted. 
The Office will, however, actively work toward ensuring that examiners 
apply the rule uniformly and fairly, and the Office will provide a 
petition remedy to achieve those purposes. As to the specific burdens 
that the rule is said to create, it must be kept in mind that the rule 
is aimed at resolving an issue that is reasonably necessary for the 
examiner to resolve for the proper examination of the application. The 
requirement for information under Sec. 1.105 thus cannot be avoided in 
our system of examination (as opposed to registration) and would have 
been made under the Office's inherent authority. Accordingly, the 
authority set forth in the rule is not contrary to statute. The rule is 
propounded not to create a new cause celebre among the bar but to 
encourage examiners to do the best examination

[[Page 54635]]

possible. Implementation of the rule is no different than what other 
parts of the examination process create when rejections and objections 
are made to which applicants must reply. Each of the claimed ill 
effects of Sec. 1.105 can be equally charged against the normal 
examination process where a requirement under Sec. 1.105 is not an 
issue.
    As to fears that examiners will use such authority as a fishing 
expedition or a tool of harassment causing applicants extensive 
expenses to either attempt to comply or challenge the need for the 
information, as noted above, the Office will in its implementation of 
the rule work hard to minimize such problems. The Office recognizes 
that with a large examining staff there are bound to be a small number 
of cases that need corrective action, and the Office will be sensitive 
to that. The Office, however, cannot hold itself hostage to fears that 
a few of these situations will arise and force examination to the 
lowest common denominator by not permitting examiners to resolve issues 
that are reasonably necessary to be resolved for a quality examination.
    Comment 50: One comment suggested that any Requirement for 
Information first be reviewed by an SPE or Director in the Technology 
Center before being sent.
    Response: As the Office moves to implement Sec. 1.105 the comment 
will be evaluated to study its feasibility.
    Section 1.111: The heading of Sec. 1.111 is amended to clarify that 
it applies to a reply by the applicant or patent owner to a non-final 
Office action.
    Section 1.111 is amended to divide former Sec. 1.111(a) into 
Secs. 1.111(a)(1) and (a)(2). Section 1.111(a)(1) is amended to: (1) 
Provide a reference to Sec. 1.104 concerning the first examination of 
an application; and (2) move the reference of Secs. 1.135 and 1.136 
(for time for reply to avoid abandonment) from Sec. 1.111(c) to 
Sec. 1.111(a).
    Section 1.111(a)(2) is amended to provide that a second (or 
subsequent) supplemental reply will be entered unless disapproved by 
the Commissioner, and that disapproval may occur if the second (or 
subsequent) supplemental reply unduly interferes with an Office action 
being prepared in response to the previous reply. Factors that will be 
considered in disapproving a second (or subsequent) supplemental reply 
include: The state of preparation of the Office action responsive to 
the previous reply as of the date of receipt by the Office (Sec. 1.6) 
of the second (or subsequent) supplemental reply (Sec. 1.111(a)(2)(i)); 
and the nature of any changes to the specification or claims that would 
result from entry of the second (or subsequent) supplemental reply 
(Sec. 1.111(a)(2)(ii)).
    Disapproval of a second or subsequent reply applies to replies 
filed on or after two months from the date of publication in the 
Federal Register.
    Disapproval of a second (or subsequent) supplemental reply will be 
delegated to the appropriate Technology Center Group Director under 
MPEP 1002.02(c). As most supplemental replies cause only a minor 
inconvenience to the Office, the Office is not inclined to adopt a 
change that would preclude the ability to file a second (or subsequent) 
supplemental reply when such is warranted. There are, however, some 
applicants who routinely file supplemental (or preliminary, see 
Sec. 1.115) replies that place a significant burden on the Office by: 
(1) Canceling the pending claims and adding many new claims; (2) adding 
numerous new claims; or (3) being filed approximately two months from 
the date the original reply was filed (i.e., when the examiner is 
likely to be preparing an Office action responsive to the original 
reply). These applicants also tend to be those having many applications 
simultaneously on file in the Office. These actions are calculated to 
interfere with the timely examination of an application and can be 
particularly detrimental to the Office.
    The provision that the entry of a second (or subsequent) 
supplemental reply may be disapproved by the Commissioner (or his or 
her delegate) gives the Office the latitude to permit entry of those 
second (or subsequent) supplemental replies that do not unduly 
interfere with the preparation of an Office action, but also gives the 
Office the latitude to refuse entry of those second (or subsequent) 
replies that do unduly interfere with the preparation of an Office 
action. Factors that will be taken into consideration when deciding 
whether to disapprove entry of such a second (or subsequent) 
supplemental reply include: (1) The state of preparation of an Office 
action responsive to the initial or previous reply as of the date of 
receipt (Sec. 1.6, which does not include Sec. 1.8 certificate of 
mailing dates) of the second (or subsequent) supplemental reply by the 
Office; and (2) the nature of the change to the specification or claims 
that would result from entry of the second (or subsequent) supplemental 
reply. That is, if the examiner has devoted a significant amount of 
time to preparing an Office action before such a second (or subsequent) 
supplemental amendment is received, and the nature of the change to the 
specification or claims that would result from entry of the second (or 
subsequent) supplemental reply would require significant additional 
time (see examples below), it is appropriate for the Office to 
disapprove entry of the second (or subsequent) supplemental reply.

    Example 1: If the second (or subsequent) supplemental reply 
amends the pending claims, adds numerous new claims, or amends the 
specification to change the scope of the claims, which the reply 
requires the examiner to devote significant additional time to 
prepare the Office action, the entry of such supplemental reply may 
be appropriately disapproved when the examiner has devoted a 
significant amount of time to preparing an Office action before such 
reply is received.
    Example 2: If the second (or subsequent) supplemental reply 
amends the specification so that a new matter issue is raised, the 
entry of such reply may be appropriately disapproved when the 
examiner has devoted a significant amount of time to preparing an 
Office action before such reply is received.

    Both conditions in Sec. 1.111(a)(2) must be met, although it is not 
intended that the amount of time required to address the changes amount 
to the same period of time already spent by the examiner in preparing 
the initial response. Where a second (or subsequent) supplemental 
amendment merely cancels claims (as opposed to canceling claims and 
adding claims, or simply adding claims)(see below for additional 
examples), it is not appropriate to disapprove entry of such a second 
(or subsequent) supplemental amendment even if the examiner has devoted 
a significant amount of time to preparing an Office action before such 
a second (or subsequent) supplemental amendment is filed.

    Example 3: If the second (or subsequent) supplemental reply 
amends the pending claims to alleviate rejections under 35 U.S.C. 
112, para. 2, it would not be appropriate to disapprove the entry of 
such reply under Sec. 1.111(a)(2).
    Example 4: If the second (or subsequent) supplemental reply 
includes only changes that were previously suggested by the 
examiner, it may not be appropriate to disapprove the entry of such 
reply under Sec. 1.111(a)(2).

    Obviously, if a supplemental reply is received in the Office 
(Sec. 1.6) after the mail date of the Office action responsive to the 
original (or supplemental) reply, and it is not responsive to that 
Office action, the Office will continue the current practice of not 
mailing a new Office action responsive to that supplemental reply, but 
simply advising the applicant that the supplemental reply is 
nonresponsive to such Office action and that a responsive reply (under 
Sec. 1.111 or Sec. 1.113 as the situation may be) must be timely filed 
to avoid

[[Page 54636]]

abandonment. Put simply, the mailing of an Office action responsive to 
the original (or supplemental) reply will cut off the applicant's right 
to have any later-filed supplemental reply considered by the Office.
    Comment 51: The proposal was widely opposed. Supplemental filings 
are felt to speed prosecution and remove issues. Disapproving entry 
will cause unnecessary work and a repeat of the filing. It was 
suggested that a handling fee be imposed rather than disapproving 
entry. The proposal places an additional administrative burden on 
examiners and Technology Center Group Directors in deciding 
appropriateness of disapproving entry.
    Response: The amendment is believed to strike a reasonable balance 
between permitting an unlimited number of supplemental replies to be 
filed: (1) prior to preparation of an Office action by the examiner, 
and (2) after preparation of an Office action by the examiner (that is 
not yet mailed) that do not require a significant amount of rework 
versus disapproval of second or subsequent replies that unduly 
interfere with the preparation of an Office action. The imposition of a 
handling fee would not prevent this type of abuse.
    Comment 52: It was argued that it is fundamentally unfair to 
evaluate the amount of time an examiner has spent preparing an Office 
action as of the date the second (or subsequent) supplemental reply is 
matched with the file as was initially proposed. Applicants should not 
be punished because of paper handling problems in the Office.
    Response: The comment has been adopted. The rule now reflects that 
the amount of preparation time devoted to an Office action will be 
evaluated as of the date of receipt by the Office of the second (or 
subsequent) supplemental reply.
    Comment 53: Clarification was requested as to whether a second * * 
*supplemental reply is the third reply or the second reply.
    Response: The expression ``second * * * supplemental reply'' is 
seen to clearly state that only a third (or subsequent) reply will be 
subject to disapproval.
    Comment 54: One comment suggested that the rule should set forth a 
standard for disapproval.
    Response: The comment is adopted. The rule as proposed set forth 
only that second or subsequent replies will be entered unless 
disapproved. The rule language has been modified to recite the factors 
that will be used; that is, the state of preparation of the Office 
action, and the nature of the changes.
    Comment 55: One comment objected to the paragraph (a) amendment 
where the language was changed from ``must reply thereto and may 
request reconsideration'' (underlining added) to ``must reply thereto 
and request reconsideration.'' It is urged that the Office should treat 
the filing of a reply as an implicit request for reconsideration rather 
than require a separate explicit statement and the Office should 
include language to that effect in the rule.
    Response: The language change is not considered to be a change in 
practice but a clarification. Replies that appear to be requests for 
reconsideration are treated as such whether or not there is a specific 
statement requesting reconsideration. There are, however, some replies 
that state that they are in response to an Office action, but they do 
not in fact represent a request for reconsideration and are not treated 
as such. For example, the Office has experienced replies that amount to 
incoherent ramblings that reply to an Office action but provide no 
means for an examiner to determine upon what basis reconsideration is 
being requested or that reconsideration is being requested for any 
particular ground of rejection or objection, and the reply will not be 
treated as a request for reconsideration.
    Section 1.112: Section 1.112 is amended to provide a reference to 
Sec. 1.104 concerning the first examination of an application. Section 
1.112 is also amended to add the phrase ``or an appeal (Sec. 1.191) has 
been taken'' to the last sentence. This addition is to clarify that 
once an appeal has been taken in an application, any amendment is 
subject to the provisions of Secs. 1.116(b) and (c), even if the appeal 
is in reply to a non-final Office action.
    Section 1.115: Section 1.115(a) provides that a preliminary 
amendment is an amendment that is received in the Office (Sec. 1.6) on 
or before the mail date of the first Office action under Sec. 1.104. 
That is, an amendment received in the Office (Sec. 1.6) after the mail 
date of the first Office action is not a preliminary amendment, even if 
it is nonresponsive to the first Office action and seeks to amend the 
application prior to the first examination.
    Section 1.115(b)(1) provides that a preliminary amendment will be 
entered unless disapproved by the Commissioner, and that disapproval 
may occur if the preliminary amendment unduly interferes with the 
preparation of a first Office action in an application. Factors that 
will be considered in disapproving a preliminary amendment include: the 
state of preparation of a first Office action as of the date of receipt 
(Sec. 1.6, which does not include Sec. 1.8 certificate of mailing 
dates) of the preliminary amendment by the Office (paragraph 
(b)(1)(i)); and the nature of any changes to the specification or 
claims that would result from entry of the preliminary amendment 
(paragraph (b)(1)(ii)). See the discussion for Sec. 1.111(a)(2).
    Disapproval of a preliminary amendment applies to applications (not 
amendments) filed on or after two months from the date of publication 
in the Federal Register.
    Section 1.115(b)(2) provides that a preliminary amendment will not 
be disapproved if it is filed no later than: (1) three months from the 
filing date of an application under Sec. 1.53(b); (2) the filing date 
of a continued prosecution application under Sec. 1.53(d); or (3) three 
months from the date the national stage is entered as set forth in 
Sec. 1.491 in an international application. Thus, the entry of a 
preliminary amendment will not be disapproved under Sec. 1.115(b)(1) if 
it is filed within one of the periods specified in Secs. 1.115(b)(2)(i) 
through (iii). Nevertheless, if a ``preliminary'' amendment is filed 
after the mail date of the first Office action, it is not a preliminary 
amendment under Sec. 1.115(a). If a (``preliminary'') amendment is 
received in the Office (Sec. 1.6) after the mail date of the first 
Office action and is not responsive to the first Office action, the 
Office will continue the current practice of not mailing a new Office 
action responsive to that amendment, but simply advising the applicant 
that the amendment is nonresponsive to the first Office action and that 
a responsive reply must be timely filed to avoid abandonment. Put 
simply, the mailing of the first Office action will continue to cut off 
the applicant's right to have any later-filed preliminary amendment 
considered by the Office, even if that amendment is filed within the 
time periods specified in Sec. 1.115(b). See also Sec. 1.111.
    Section 1.115(c) provides that the time periods specified in 
Sec. 1.115(b)(2) are not extendable.
    It is expected that disapproval of a preliminary amendment filed 
outside the period specified in Sec. 1.115(b)(2) will be delegated to 
the appropriate Technology Center Group Director under MPEP 1002.02(c). 
The provision that the entry of a preliminary amendment filed outside 
the period specified in Sec. 1.115(b)(2) may be disapproved by the 
Commissioner gives the Office the latitude to permit entry of those 
preliminary amendments filed outside the period specified in 
Sec. 1.115(b)(2) that do not unduly

[[Page 54637]]

interfere with the preparation of an Office action, but also gives the 
Office the latitude to refuse entry of those preliminary amendments 
filed outside the period specified in Sec. 1.115(b)(2) that do unduly 
interfere with the preparation of an Office action.
    In an application filed under 35 U.S.C. 111(a) and Sec. 1.53(b) or 
a PCT international application entering the national stage under 
Sec. 1.491, the time periods specified in Sec. 1.115(b)(2) should give 
the applicant time between the mailing of a filing receipt and the 
mailing of a first Office action to file any necessary preliminary 
amendment. CPA practice under Sec. 1.53(d), however, is designed to 
provide a first Office action sooner than if the application had been 
filed as a continuation under Sec. 1.53(b) (or under former Sec. 1.60 
or Sec. 1.62). See Continued Prosecution Application (CPA) Practice, 
Notice, 1214 Off. Gaz. Pat. Office 32, 32 (September 8, 1998). An 
applicant filing a CPA under Sec. 1.53(d) who needs time to prepare a 
preliminary amendment should file a request for suspension of action 
under Sec. 1.103(b) with the CPA request.
    Comment 56: The proposal was widely opposed.
    Response: See the responses to comments relating to Sec. 1.111.
    Comment 57: It is believed that there is adequate incentive at 
present for filing preliminary amendments as soon as possible after 
filing of the application.
    Response: Obviously if an applicant wishes an early action on the 
merits for a newly filed application, submission of a preliminary 
amendment around the time the application is to be taken up for action 
is not advisable. The Office has noticed, however, that certain 
applicants routinely submit preliminary amendments that, due to 
submission times and content, cause undue delays in the issuance of a 
first Office action and cause the Office to needlessly expend its 
resources, which also affects the preparation of Office actions for 
other applicants.
    Comment 58: It is suggested that a one-month grace period for 
submission of a preliminary amendment be provided for a CPA or that 
applicants be permitted to grant themselves extensions of time.
    Response: The suggestions were not adopted. The purpose of CPA 
filing is for a speedy first action. Section 1.103 has been amended for 
applicants to request up to a three-month suspension of a first Office 
action to permit the filing of a preliminary amendment. The ability for 
applicants to grant themselves extensions of time would further 
aggravate the problem of examiners preparing Office actions that would 
then have to be redone, or require the Office to hold off on examining 
an application until it could be determined whether an extension had 
been applied for.
    Section 1.121: The title to Sec. 1.121 has been amended to add ``in 
applications'' to reinforce the fact that the section is limited to 
making amendments in applications, and it does not apply to making 
amendments in reexamination proceedings. The reference in Sec. 1.121(i) 
to reexamination proceedings is only an advisory reference to look to 
Sec. 1.530.
    Section 1.121 is amended to change the manner of making amendments 
in non-reissue applications. Section 1.121 is also completely rewritten 
and reformatted to make it easier to understand. The new amendment 
practice, wherein amendments to the specification must be made by the 
submission of clean new or replacement paragraph(s), section(s), 
specification, or claim(s) will essentially eliminate (1) the need for 
the Office to enter changes to the text of application portions by 
handwriting in red ink, and (2) the presence of hard to scan brackets 
and underlining in amended claims. This will provide a specification 
(including claims) in clean, or substantially clean, form that can be 
effectively captured and converted by optical character recognition 
(OCR) scanning during the patent publishing process. The new practice 
also requires the applicant to provide a marked up version of the 
changed specification, section(s) of specification, paragraph(s), or 
claim(s), using applicant's choice of a marking system to indicate the 
changes, which will aid the examiner in identifying the changes that 
have been made. The marked up version must be based on the previous 
version and indicate (by markings) how the previous version has been 
modified to produce the clean replacement paragraph(s), section(s), 
specification, or claim(s) submitted in the current amendment. The term 
``previous version'' means the version of record in the application as 
originally filed or from a previously entered amendment. Applicants 
will also be able to submit a clean set of all pending claims. This 
will also be helpful during the patent printing process, and should 
lead to reduced printing errors in claims in patents.
    Amendments in compliance with former Sec. 1.121 will be accepted 
until March 1, 2001. After that date, amendments must comply with 
revised Sec. 1.121. It is the intent of the Office to send out 
reminders of the new manner of making amendments prior to March 1, 
2001, in the form of flyers along with correspondence to applicants.
    The change to Sec. 1.121 involves concurrent changes to 
Sec. 1.52(b) (see discussion of Sec. 1.52(b)(6)), which provides for 
the option of numbering paragraphs of the specification, except for the 
claims. If the paragraphs of the specification are numbered as provided 
for in Sec. 1.52, applicant will be able to amend the specification by 
merely submitting a replacement paragraph with the same number 
containing the desired changes in the replacement paragraph.
    As discussed above, the changes to Sec. 1.121 will result in 
relatively clean (e.g., without underlining, bracketing, or red ink) 
application specifications, including claims, that can be effectively 
OCR scanned as part of the printing process in the Office of Patent 
Publications, which, in turn, will result in a higher quality of 
printed patents. Clean application specifications, including claims, 
can more easily and accurately be scanned and converted into readable 
text by OCR in the patent printing process. While text marked with 
underlining and bracketing can be scanned, extra processing is required 
to delete the brackets, the text within the brackets, and to correct 
misreading of letters caused by the underlining. Thus, using clean 
replacement sections, or paragraphs, and claims will permit complete 
OCR scanning that is a faster and more accurate method of capturing the 
application for printing while eliminating an extensive amount of key-
entry of subject matter. This will result in patents with fewer errors 
in need of correction by certificate of correction, which will be a 
clear benefit to patentees and also conserve Office resources.
    In addition to submitting a replacement section, or paragraph, or 
claim to make an amendment, applicant is required to submit a marked up 
version of the section, or paragraph, or claim to show the differences 
between the replacement and either the original or the most recently 
filed and entered version immediately prior to the amendment. The 
marked up version may be created by any automated or manually entered 
method applicant chooses, such as underlining and bracketing, 
redlining, or by any system designed to provide text comparison. Where 
a paragraph or a claim has been added or deleted, a marked up version 
is not required. If a marked up version is otherwise supplied, however, 
any added or deleted paragraph or claim should be identified with a 
statement, such as, ``The paragraph beginning at page 6, line 3, has 
been deleted.'' The

[[Page 54638]]

size of the marked up version, and the burden associated with its 
preparation, will be minimized, while still retaining the requirement 
to show changes involving any paragraph or claim that would otherwise 
be difficult to ascertain.
    Section 1.121(b) now provides for amending application 
specifications by replacing Secs. 1.121(a)(1) through (a)(6) of the 
former rule with new Secs. 1.121(b) through (g), which treat the manner 
of making amendments in applications other than reissue applications. 
Section 1.121(h) relates to amendments in reissue applications, and it 
references Sec. 1.173, where the provisions for making amendments in 
reissue applications have been transferred from former paragraph (b) of 
this section. Section 1.121(i) relates to amendments in reexamination 
proceedings and it references Sec. 1.530, a reference to Sec. 1.530(d) 
being in former Sec. 1.121(c). Section 1.121(j) provides for amendments 
made in provisional applications.
    Section 1.121(b)(1) provides procedures to delete, replace, or add 
a paragraph to the specification of an application. Section 1.121(b)(1) 
does not apply to amendments to materials submitted under Secs. 1.96 
and 1.825. Sec. 1.121(b)(1)(i) requires an instruction to unambiguously 
identify the location of the amendment. If a paragraph is to be 
replaced by one or more paragraphs, the instruction should 
unambiguously identify the paragraph to be replaced either by paragraph 
number, page and line, or any other unambiguous method, and be 
accompanied by the replacement paragraph(s) in clean form.
    Where paragraph numbering has been included in an application as 
provided in Sec. 1.52(b)(6), applicants can easily refer to a specific 
paragraph by number when presenting an amendment. If a numbered 
paragraph is to be replaced by a single paragraph, the added 
replacement paragraph should be numbered with the same number as the 
paragraph being replaced. Where more than one paragraph is to replace a 
single original paragraph, the added paragraphs should be numbered 
using the number of the original paragraph for the first replacement 
paragraph, followed by increasing decimal numbers for the second and 
subsequent added paragraphs, i.e., original paragraph [0071] has been 
replaced with paragraphs [0071], [0071.1], and [0071.2]. If a numbered 
paragraph is deleted, the numbering of subsequent paragraphs should 
remain unchanged.
    Section 1.121(b)(1)(ii) requires that the replacement or added 
paragraph(s) be in clean form. This means that the added or replacement 
paragraph(s) must not include any markings to indicate the changes that 
have been made. Section 1.121(b)(1)(iii) requires a separate version of 
the replacement paragraph(s) to accompany the amendment. The separate 
version must include each replacement paragraph with markings to show 
the changes relative to the previous version as an aid to the examiner. 
A marked up version, however, does not have to be supplied for any 
added paragraph(s) or any deleted paragraph(s), as it is sufficient to 
merely indicate or identify any paragraph which has been added or 
deleted.
    Section 1.121(b)(2) permits applicants to amend the specification 
by replacement sections (e.g., as provided in Secs. 1.77(b), 1.154(b), 
or Sec. 1.163(c)). As with replacement paragraphs, the amended version 
of a replacement section is required to be provided in clean form, that 
is, without any markings to show the changes which have been made. A 
separate marked up version showing the changes in the section relative 
to the previous version must accompany the actual amendment as an aid 
to the examiner.
    Section 1.121(b)(3) also permits applicants to amend the 
specification by submitting a substitute specification, provided the 
requirements of Sec. 1.125(b) are met. An accompanying separate marked 
up version showing the changes in the specification relative to the 
previous version is also required.
    Section 1.121(b)(4) requires that matter deleted by amendment 
pursuant to any of the earlier sections of Sec. 1.121 can only be 
reinstated by a subsequent amendment presenting the previously deleted 
subject matter. A direction by applicant to simply remove a previously 
entered amendment will not be permitted.
    Section 1.121(c)(1) requires that all amendments to a claim be 
presented in the form of a rewritten claim. Any rewriting of a claim 
will be construed as a direction to cancel the previous version of the 
claim. See In re Byers, 230 F.2d 451, 455, 109 USPQ 53, 55 (CCPA 
1956)(amendment of a claim by inclusion of an additional limitation had 
exactly the same effect as if the claim as originally presented had 
been cancelled and replaced by a new claim including that limitation). 
Section 1.121(c)(1)(i) requires that any rewritten or newly added claim 
be submitted in clean form, that is, with no markings to indicate the 
changes that have been made. A parenthetical expression should follow 
the claim number indicating the status of the claim as amended or newly 
added, e.g., ``amended,'' ``twice amended,'' or ``new.'' Section 
1.121(c)(1)(ii) requires that a marked up version of any amended claim 
be submitted, including a parenthetical expression ``amended,'' ``twice 
amended,'' etc., that should follow the claim number, on pages separate 
from the amendment, to show the changes that have been made by way of 
brackets (for deleted matter) and underlining (for added matter), or by 
any other suitable method of comparison. This will assist the examiner 
in the examination process. The parenthetical expression ``amended,'' 
``twice amended,'' etc. should be the same for both the clean version 
of the claim under Sec. 1.121(c)(1)(i) and the marked up version under 
this paragraph. A marked up version does not have to be supplied for 
any added claims or any canceled claims. If a marked up version is 
supplied to show changes made to amended claims, however, applicant 
should identify (in the marked up version) any added or canceled claims 
with a statement, such as, ``Claim 6 has been canceled.''
    Section 1.121(c)(2) requires that a cancelled claim can be 
reinstated only by a subsequent amendment presenting the claim as a new 
claim with a new claim number.
    Section 1.121(c)(3) provides for the optional submission of a clean 
version (with no markings) of all of the pending claims in one 
amendment paper. The provisions under Sec. 1.121(c)(1)(i) of this 
section provide for only the submission of newly added or amended 
claims in clean form and compliance with this section is required by 
March 1, 2001. During the transition phase, there will be a large 
number of pending applications having claims with underlining and 
bracketing (from amendments made prior to the effective date of the 
rule change) and claims in clean form (from amendments made after the 
effective date of the rule change) in the pending claim set. Applicants 
may wish to consolidate all previous versions of pending claims from a 
series of separate amendment papers into a single clean version in a 
single amendment paper. Providing this consolidation of claims in the 
file will be beneficial to both the Office and the applicant for patent 
printing purposes. When rewriting a claim in the clean set, the 
parenthetical expression, if any, from the claim to be rewritten should 
not be repeated in the clean set. Thus, the only time a parenthetical 
expression should appear in the clean set is when a claim is being 
amended.
    Entry of an entire clean claim set is subject to the provisions of 
Secs. 1.116(b)

[[Page 54639]]

and 1.312. For example, after receipt of a notice of allowance, 
applicant may wish to submit an entire clean set of claims under 
Sec. 1.312, making no changes, to make publication of the patent as 
accurate as possible. This type of amendment will be entered. Where, 
however, an amendment is submitted under either Sec. 1.116 or 
Sec. 1.312 which contains an entire clean set of claims, some of which 
may be amended, the examiner may choose not to enter the amendment 
pursuant to the provisions of Sec. 1.116 or Sec. 1.312.
    The submission of a clean version of all the pending claims shall 
be construed as directing the cancellation of all previous versions of 
any pending claims. A marked up version would only be needed for claims 
being changed by the current amendment (see Sec. 1.121(c)(1)(ii)). Any 
claim not accompanied by a marked up version will constitute an 
assertion that it has not been modified relative to the immediate prior 
version. Thus, if applicant is not making any amendments to the claims, 
but is merely presenting all pending claims in clean form, without any 
underlining or bracketing, a marked up version should not also be 
submitted. The examiner has no responsibility or burden to ensure the 
accuracy of applicant's claim rewriting.
    Section 1.121(d) is amended to clarify the requirements for 
amending figures of drawings in an application. A marked up copy 
showing changes in red must be filed for approval by the examiner. Upon 
approval by the examiner, new drawings in compliance with Sec. 1.84 
must be filed.
    Sections 1.121(e) and (f) correspond to Secs. 1.121(a)(5) and 
(a)(6) of the former rule and now include section titles.
    Section 1.121(g) permits the Office to make amendments to the 
specification, including the claims, by examiner's amendments without 
paragraph/section/claim replacement in the interest of expediting 
prosecution and reducing cycle time. Additions or deletions of subject 
matter in the specification, including the claims, may be made by 
instructions to make the change at a precise location in the 
specification or the claims. The examiner's amendment can be created by 
the examiner from a facsimile transmission or e-mailed amendment 
received by the examiner and referenced in the examiner's amendment and 
attached thereto. Any subject matter, in clean version form, to be 
added to the specification/claims should be set forth separately by 
applicant/practitioner in the e-mail or facsimile submission apart from 
the remainder of the submission. Only that portion of an e-mail or 
facsimile directed to a clean version of the subject matter to be added 
should be copied and attached to the examiner's amendment. A paper copy 
of the entire e-mail or facsimile submission should be entered in the 
file. Examiners would not be required to electronically save any e-
mails once any e-mails or attachments thereto were printed and became 
part of an application file record. The e-mail practice that is an 
exception for examiner's amendments is restricted to e-mails to the 
examiner from the attorney/applicant and should not be generated by the 
examiner to the attorney/applicant unless such e-mails are in 
compliance with all of the requirements set out in MPEP 502.03.
    Comment 59: Many of the comments received were opposed to the 
proposed change in amendment practice which would require usage of 
numbered paragraphs.
    Response: In view of the objections to requiring numbered 
paragraphs, revised Sec. 1.121(b)(1)(i) merely provides for the 
optional use of numbered paragraphs. Further, Sec. 1.121(b)(1)(i) does 
not require amendment via substitute specification if numbered 
paragraphs are not used. Revised Sec. 1.121(b)(1)(i) provides that 
applicants may submit amended replacement or new paragraphs if a 
specific location in the specification is identified.
    Comment 60: A concern was raised in a number of comments that 
replacement paragraphs would make the identification of changes more 
obscure than the present system of using bracketing and underlining, 
would place an extra burden on practitioners and their staffs, and 
would work against reducing paper submissions if applicants were 
required to submit marked up copies of the desired changes.
    Response: The comments have not been adopted. The replacement 
paragraph requirement, as well as the rewritten claim requirement, are 
both necessary to facilitate the publication of patents more 
expeditiously and with fewer errors. The Office's goal is to eliminate 
the use of red ink and bracketing/underlining in the amendment of 
patent applications, because OCR scanning techniques now employed in 
the preparation of patents for publication can best accommodate ``clean 
form'' insertions of amended subject matter. The submission of marked 
up versions may, for a time, increase file size but will provide the 
examiner with an easy way to compare the most recent amendments with 
earlier versions in the application files. While it may be possible for 
examiners to compare the clean version with the previous version in 
order to detect changes, in the interest of reduced cycle time, a 
review of a marked up version of an amendment to show the changes that 
have been made, is still a very effective and useful tool to the 
examiner during the examination process. Sections 1.121 (b)(1)(3) and 
(c)(1)(ii), however, do not require that marked up versions of added or 
new claims, or paragraphs, be supplied so the size of the marked up 
version, and the burden on the practitioner to prepare the marked up 
version, should be minimized. The new requirements provide the needed 
comparative basis (for paper copies) during the transition phase into 
an electronic file wrapper (EFW) environment.
    Comment 61: Several comments suggested identifying the replacement 
paragraphs by page number and line number or through the use of 
replacement pages.
    Response: The changes to Sec. 1.121 are intended, in part, to serve 
the Office and its customers during a transition into an electronic 
file wrapper (EFW) environment. Accordingly, total paragraph 
replacement will most effectively achieve the desired results. The 
suggestion to permit identification of paragraphs by any unambiguous 
method (e.g., paragraph beginning at identified page number and line 
number) is reasonable, and it will be permitted in Sec. 1.121(b)(1)(i). 
The suggestion to permit use of replacement pages, however, will not be 
adopted as it will not be practical in an EFW environment.
    Comment 62: One comment suggested that the instruction to present 
all amendments to claims as rewritten claims is likely to be understood 
by most practitioners as requiring the indication of insertions and 
deletions, and not as a requirement to submit a clean version of the 
amended claim. This might encourage applicants to submit a new schedule 
of amended claims in the form of new renumbered claims, thereby 
avoiding the requirement for both a clean version and a marked up 
version of pending claims.
    Response: The requirement of the rule to provide a clean version 
along with a marked up version is not ambiguous. The intent of the 
change is twofold: (1) To provide a clean version for scanning purposes 
in the publication process with a concomitant reduction in the number 
of processing errors; and (2) to provide an aid to the examiner in the 
examination process by way of a marked up version indicating changes 
from the previous version of the claim. While circumventing the intent 
of the rule may

[[Page 54640]]

be possible, it seems to be in the best interest of applicants, as true 
partners in the examination process, to assist the examination process 
wherever possible. Providing a marked up version, in today's 
environment of easy-to-use software to accomplish this result, is not 
anticipated to be that burdensome to applicants.
    Comment 63: One comment suggested that the requirement for 
replacement paragraphs/claims not be made applicable to examiner 
amendment practice in order to encourage amendments that expedite 
prosecution.
    Response: This suggestion has been adopted with the inclusion of an 
exception for examiners when preparing examiner's amendments. Examiners 
will not be required to rewrite paragraphs of the specification or 
claims in an examiner's amendment when preparing an application for 
allowance, nor will a marked up version be required.
    Comment 64: One comment questioned whether applicants could present 
in a single paper, a clean version of all of the pending claims in the 
application.
    Response: In view of the fact that many pending applications will 
include amendments made prior to the effective date of the rule change 
as well as amendments made subsequent to the effective date of the rule 
change, the suggestion that all of the claims be re-presented in a 
single paper in clean form is reasonable and will be permitted in the 
final rule as an option. See Sec. 1.121(c)(3). No accompanying marked 
up version will be necessary, unless the paper being submitted also 
includes amendments to some of the claims. In that case, a marked up 
version of only the claims being amended in the current paper will be 
required. It will be understood by the Office that any claims not 
accompanied by a marked up version will constitute an assertion that 
they have not been changed relative to the immediate prior version.
    Section 1.125: Section 1.125(b)(2) is amended to require that all 
the changes to the specification (rather than simply all additions and 
deletions) be shown in a marked up version, with the term ``version'' 
being substituted for the term ``copy'' to avoid any confusion as to 
what is supposed to be supplied. Section 1.125(b)(2) is also amended to 
provide that numbering the paragraphs of the specification of record is 
not considered a change that must be shown. Thus, the marked up version 
of the substitute specification need not show the numbering of the 
paragraphs of the specification of record, and no marked up version of 
the substitute specification is required if the only change is 
numbering of the paragraphs of the specification of record. Section 
1.125(c) is amended to encourage that the paragraphs of any substitute 
specification be numbered in a manner consistent with Sec. 1.52(b)(6).
    Section 1.131: The heading of Sec. 1.131 is amended to clarify that 
it applies to overcoming other activities in addition to cited patents 
or publication (by deletion of the recitation to only a cited patent or 
publication). Section 1.131(a) is also amended for simplicity.
    Section 1.131(a) is specifically amended to provide that when any 
claim of an application or a patent under reexamination is rejected, 
the inventor of the subject matter of the rejected claim, the owner of 
the patent under reexamination, or a party qualified under Secs. 1.42, 
1.43, or Sec. 1.47 may submit an appropriate oath or declaration to 
establish invention of the subject matter of the rejected claim prior 
to the effective date of the reference or activity on which the 
rejection is based. Section 1.131(a) is amended to eliminate the 
provisions that specify which bases for rejection must be applicable 
for Sec. 1.131 to apply. Instead, the approach is that Sec. 1.131 is 
applicable to overcome a rejection unless the rejection is based upon a 
U.S. patent to another or others which claims the same patentable 
invention as defined in Sec. 1.601(n) (Sec. 1.131(a)(1)) or a statutory 
bar. This avoids the situation in which the basis for rejection is not 
a statutory bar (under 35 U.S.C. 102(a) based upon prior use by others 
in the United States) and should be capable of being antedated, but the 
rejection is not specified as a basis for rejection that must be 
applicable for Sec. 1.131 to apply.
    Affidavits under Sec. 1.131 to overcome rejections based on prior 
knowledge or use under 35 U.S.C. 102(a) are effective on the date of 
publication in the Federal Register for all pending applications where 
such issue needs to be addressed (to include appropriately filed 
requests for reconsideration).
    Section 1.131(a) is also amended to provide that the effective date 
of a U.S. patent is the date that such U.S. patent is effective as a 
reference under 35 U.S.C. 102(e). MPEP 2136.03 provides a general 
discussion of the date a U.S. patent is effective as a reference under 
35 U.S.C. 102(e). Finally, Sec. 1.131(a) is amended to provide that 
prior invention may not be established under Sec. 1.131 if either: (1) 
The rejection is based upon a U.S. patent to another or others which 
claims the same patentable invention as defined in Sec. 1.601(n); or 
(2) the rejection is based upon a statutory bar.
    Section 1.132: Section 1.132 is amended to eliminate the provisions 
that specify which bases for rejection must be applicable for 
Sec. 1.132 to apply. Instead, the approach is that Sec. 1.132 is 
applicable to overcome a rejection unless the rejection is based upon a 
U.S. patent to another or others that claims the same patentable 
invention as defined in Sec. 1.601(n). Section 1.132 is specifically 
amended to state that: (1) When any claim of an application or a patent 
under reexamination is rejected or objected to, an oath or declaration 
may be submitted to traverse the rejection or objection; and (2) an 
oath or declaration may not be submitted under this section to traverse 
a rejection if the rejection is based upon a U.S. patent to another or 
others that claims the same patentable invention as defined in 
Sec. 1.601(n).
    Affidavits under Sec. 1.132 to overcome rejections based on prior 
knowledge or use under 35 U.S.C. 102(a) are effective on the date of 
publication in the Federal Register for all pending applications where 
such issue needs to be addressed (to include appropriately filed 
requests for reconsideration).
    Sections 1.131 and 1.132 are procedural in nature providing 
mechanisms for the submission of evidence to antedate or otherwise 
traverse a rejection; however, they do not address the substantive 
effect of the submission of such evidence on the objection or rejection 
at issue. See, e.g., In re Zletz, 893 F.2d 319, 322-23, 13 USPQ2d 1320, 
1322-23 (Fed. Cir. 1989) (Sec. 1.131 provides an ex parte mechanism 
whereby a patent applicant may antedate subject matter in a reference); 
Newell Cos. v. Kenney Mfg., 864 F.2d 757, 768-69, 9 USPQ2d 1417, 1426-
27 (Fed. Cir. 1988) (the mere submission of evidence under Sec. 1.132 
does not mandate a conclusion of patentability). An applicant's 
compliance with Secs. 1.131 or 1.132 means that the applicant is 
entitled to have the evidence considered in determining the 
patentability of the claim(s) at issue. It does not mean that the 
applicant is entitled as a matter of right to have the rejection of or 
objection to the claim(s) withdrawn.
    Section 1.133: Section 1.133 (a) is amended to create 
Secs. 1.133(a)(1) through (a)(3). Section 1.133(a)(1) provides that 
interviews must be conducted on ``Office premises'' (rather than ``in 
the examiner's rooms''). The purpose of this change is to account for 
interviews conducted in conference rooms or by video conference.
    Section 1.133(a)(2) is amended to conform to the practice in MPEP 
713.02 (of ordinarily) providing for an interview relating to 
patentability of a pending application where the

[[Page 54641]]

application is a continuing or substitute application. The paragraph is 
also amended by changing interview to the singular to clarify that 
ordinarily a single interview prior to first Office action is permitted 
in a continuing or substitute application.
    Comment 65: One comment urged that interviews be allowed in a CPA 
prior to a first Office action.
    Response: The comment has been adopted in a broader manner to apply 
to all continuations and substitute applications that conform to 
practice set forth in the MPEP.
    Section 1.136: Section 1.136(c) is added to provide that if an 
applicant is notified in a ``Notice of Allowability'' that an 
application is otherwise in condition for allowance, the following time 
periods are not extendable if set in the ``Notice of Allowability'' or 
in an Office action having a mail date on or after the mail date of the 
``Notice of Allowability'': (1) The period for submitting an oath or 
declaration in compliance with Sec. 1.63; and (2) the period for 
submitting formal drawings set under Sec. 1.85(c). It had also been 
proposed to add a third item: The period for making a deposit that is 
set under Sec. 1.809(c). This portion has been held in abeyance in view 
of Sec. 4805 of the ``American Inventor's Protection Act of 1999.'' 
Section 4805(c) requires that in drafting regulations affecting 
biological deposits (including any modification of title 37, Code of 
Federal Regulations, Sec. 1.801 et seq.), the Office shall consider the 
recommendations of a study that is mandated under that section. Any 
change relating to time periods for deposits after mailing of the 
``Notice of Allowability'' will be postponed until the study is 
completed. See also the change that was proposed to Sec. 1.809.
    Elimination of the Sec. 1.136 (and Sec. 1.85(c)) extension of time 
for filing corrected or formal drawings applies only where a Notice of 
Allowability requiring the corrected or formal drawing has been mailed 
on or after sixty days after publication in the Federal Register.
    Section 1.137: Section 1.137(c) is amended to provide that any 
petition under Sec. 1.137 in either a utility or plant application 
filed before June 8, 1995, must be accompanied by a terminal disclaimer 
and fee as set forth in Sec. 1.321 dedicating to the public a terminal 
part of the term of any patent granted equivalent to the lesser of: (1) 
The period of abandonment of the application; or (2) the period 
extending beyond twenty years from the date on which the application 
for the patent was filed in the United States or, if the application 
contains a specific reference to an earlier filed application(s) under 
35 U.S.C. 120, 121, or 365(c), from the date on which the earliest such 
application was filed. This change will further harmonize effective 
treatment under the patent term provisions of 35 U.S.C. 154 (b) and (c) 
of utility and plant applications filed before June 8, 1995, with 
utility and plant applications filed on or after June 8, 1995. Section 
1.137(c) also provides that its terminal disclaimer requirement does 
not apply to applications for which revival is sought solely for 
purposes of copendency with a utility or plant application filed on or 
after June 8, 1995, or to lapsed patents.
    The amendments to revivals under Sec. 1.137 is effective on the 
date of publication in the Federal Register.
    When a terminal disclaimer (under Sec. 1.137(c)) is filed with a 
petition under Sec. 1.137 to revive an abandoned application, the 
Office currently indicates the period disclaimed in the decision 
granting such petition. The Office, however, cannot determine (at the 
time a petition to revive is granted) the period disclaimed under 
revised Sec. 1.137(c) (i.e., which period is lesser: The period of 
abandonment of the application, or 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). Therefore, the Office will discontinue indicating the period 
disclaimed under Sec. 1.137(c) in its decision granting a petition 
under Sec. 1.137 to revive an abandoned application.
    The period of abandonment is the number of days between the date of 
abandonment and the mailing date of the decision reviving the abandoned 
application. MPEP 710.01(a) provides an explanation of how the date of 
abandonment is determined. The date that is 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, should be 
ascertainable from the filing date and continuity information provided 
on the front page of the patent. The period extending beyond that date 
is the number of days between that date and the day that is seventeen 
years from the date of grant of the patent. The period disclaimed is 
the lesser of these two periods.
    Section 1.138: Section 1.138 is amended to create Secs. 1.138(a) 
and (b), and to clarify the signature requirement for a letter (or 
written declaration) of express abandonment. Section 1.138(a) provides 
that: (1) An application may be expressly abandoned by filing in the 
United States Patent and Trademark Office a written declaration of 
abandonment identifying the application; and (2) express abandonment of 
the application may not be recognized by the Office unless it is 
actually received by appropriate officials in time to act before the 
date of issue. Section 1.138(b) also provides that a written 
declaration of abandonment must be signed by a party authorized under 
Secs. 1.33(b)(1), (b)(3), or (b)(4) to sign a paper in the application, 
except that a registered attorney or agent, not of record, who acts in 
a representative capacity under the provisions of Sec. 1.34(a) when 
filing a continuing application, may expressly abandon the prior 
application as of the filing date granted to the continuing 
application.
    Section 1.152: Section 1.152 was amended to delete the reference to 
the requirement for a petition for color photographs and drawings as 
unnecessary in view of the clarifications to Secs. 1.84(a), (a)(2), 
(b)(1), and (b)(2) that now include a specific reference to design 
applications. Former Secs. 1.152(a), (a)(1), and (a)(2) were deleted 
with the remaining text combined into a single paragraph.
    Section 1.152 was amended in 1997 to clarify Office practice that 
details disclosed in the drawings or photographs filed with a design 
application are considered to be an integral part of the disclosed and 
claimed design, unless disclaimed. See Changes to Patent Practice and 
Procedure, Final Rule Notice, 62 FR 53131, 53164 (October 10, 1997), 
1203 Off. Gaz. Pat. Office 63, 91 (October 21, 1997). A subsequent 
decision by the Federal Circuit, however, has called this practice into 
question. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 
1998), rev'g, Ex parte Daniels, 40 USPQ2d 1394 (Bd. Pat. App. & Int. 
1996). Accordingly, the Office is amending Sec. 1.152 to eliminate 
these provisions. See Removal of Surface Treatment From Design Drawings 
Permitted, Notice, 1217 Off. Gaz. Pat. Office 19 (December 1, 1998).
    The elimination of provisions relating to the integral nature of 
designs in Sec. 1.152 is effective on the date of publication in the 
Federal Register.

[[Page 54642]]

    Section 1.154: Section 1.154(a) is separated into Secs. 1.154(a) 
and (b) and the material clarified. The order of the papers in a design 
patent application, including the application data sheet (see 
Sec. 1.76), is listed in Sec. 1.154(a). The order of the sections in 
the specification of a design patent application is listed in 
Sec. 1.154(b). New Sec. 1.154(c) corresponds to Sec. 1.77(c) and 
provides that the section headings should be in uppercase letters 
without underlining or bold type.
    Comment 66: One comment suggested adding the words ``in a design 
application'' to the end of the Sec. 1.154 header for clarity.
    Response: The comment has been adopted.
    Section 1.155: Section 1.155 is revised to eliminate all former 
Sec. 1.155 provisions as being unnecessarily duplicative of the 
provisions of Secs. 1.311(a) and 1.316, which apply to the issuance of 
all patents, including designs. Revised Sec. 1.155 establishes an 
expedited procedure for design applications. The procedure is available 
to all design applicants who first conduct a preliminary examination 
search and file a request for expedited treatment accompanied by a fee 
commensurate with the Office cost of the expedited treatment and 
handling (Sec. 1.17(k)). This cost-based expedited treatment is 
intended to fulfill a particular need by affording rapid design patent 
protection that may be especially important where marketplace 
conditions are such that new designs on articles are typically in vogue 
for limited periods of time. The Office requires a statement that a 
preexamination search was conducted, which must also indicate the field 
of search and include an information disclosure statement in compliance 
with Sec. 1.98. Formal drawings in compliance with Sec. 1.84 are also 
required. The applications will be individually examined with priority, 
and the clerical processing will be conducted and/or monitored by 
specially designated personnel to achieve expeditious processing 
through initial application processing and the Design Examining Group. 
The Office will not examine an application that is not in condition for 
examination even if the applicant files a request for expedited 
examination under this section.
    The expedited procedure for design applications under Sec. 1.155 is 
effective on the date of publication in the Federal Register.
    Comment 67: Two comments considered the $900 fee for the expedited 
processing of design applications to be excessive when compared to the 
fee for a ``Petition to Make Special.''
    Response: Based on a conservative cost estimate, the $900 fee 
specified in Sec. 1.17(k) for the expedited examination of design 
applications is the fee necessary to recover the Office's cost of 
providing such expedited examination. See 35 U.S.C. 41(d). An 
application granted special status pursuant to a successful ``Petition 
to Make Special'' is prioritized while it is on the examiner's docket 
so that the application will be examined out of turn responsive to each 
successive communication from the applicant requiring Office action. 
The expedited treatment available under Sec. 1.155, however, occurs 
through initial application processing and the Design Examining Group. 
For a patentable design application, the expedited treatment would be a 
streamlined filing-to-issuance procedure. This procedure further 
expedites design application processing by decreasing clerical 
processing time as well as the time spent routing the application 
between processing steps. Specially designated personnel will be 
required to conduct and/or monitor the expedited clerical processing. 
Also, expedited design applications may be individually treated 
throughout the examination process where necessary for expedited 
treatment, whereas normally, the search phase of design application 
examination is conducted in groups. Further, the ``Petition to Make 
Special'' procedure will continue to be made available without any 
anticipated increase in the required petition fee.
    Comment 68: Two comments suggested requiring a fee in exchange for 
expedited examination instead of requiring a fee ``[F]or filing a 
request for expedited examination under Sec. 1.155(a)'' as stated in 
Sec. 1.17(k). According to the comments, the suggested 
recharacterization of the fee would permit refunding the fee as a 
payment made ``in excess of that required'' (Sec. 1.26) if the 
expedited service is not in fact provided.
    Response: The comments are not adopted. Statutory authority for 
Sec. 1.26 is found at 35 U.S.C. 42(d) which permits a refund ``of any 
fee paid by mistake or any amount paid in excess of that required.'' 
According to the statute, any refund of an ``amount paid in excess'' 
must be based upon an overpayment of a fee that was, in fact, 
``required'' when the fee was paid. The suggested fee characterization 
would have no effect in that regard. The required amount is the 
Sec. 1.17(k) fee whether it is for a request for expedited examination 
or for an actual expedited examination. Furthermore, the rule is silent 
as to any timeframe definition of expedited treatment. It is the 
Office's intent to set forth an objective for examination, such as 
three months, and an objective for printing. Should the Office fail to 
meet a stated objective for any one particular design application, 
applicant may still have received significant benefit, particularly if 
the objective was missed only by a week or month. Applicants can choose 
whether to spend the additional fee in part based on the Office's 
performance in meeting its objectives with other design applications.
    Comment 69: One comment reasoned that in order to provide the 
expedited service without compromising examination quality, design 
application examiners would have to be allotted extra time to 
individually search expedited applications.
    Response: Individual searching of a design application may not 
necessarily be required to meet the objective of expedited treatment. 
Where an individual search is required, the Technology Center will 
address the matter on a case-by-case basis.
    Section 1.163: The title of Sec. 1.163 is amended for clarity by 
the addition of ``in a plant application.''
    Section 1.163(a) second sentence is amended by substituting ``For'' 
for ``[i]n the case of.''
    Section 1.163(b) is amended to delete the requirement for two 
copies of the specification for consistency with the current Office 
practice. See Interim Waiver of 37 CFR Sec. 1.163(b) for Two Copies of 
a Specification of an Application for a Plant Patent, Notice, 1213 Off. 
Gaz. Pat. Office 109 (August 4, 1998). Section 1.163(c) is separated 
into Secs. 1.163(b) and (c). The order of the papers in a plant patent 
application, including the application data entry sheet (see Sec. 1.76) 
is listed in Sec. 1.163(b). The order of the sections in the 
specification of a plant patent application are listed in 
Sec. 1.163(c). New Sec. 1.163(d) corresponds to Sec. 1.77(c) and 
provides that the section headings should be in uppercase letters 
without underlining or bold type.
    New Sec. 1.163(c)(4) and Sec. 1.163(c)(5) request that the plant 
patent applicant state the Latin name and the variety denomination for 
the plant claimed. As discussed above, the Office, has been asked to 
compile a database of the plants patented and the database must include 
the Latin name and the variety denomination of each patented plant, and 
having this information in separate sections of the plant patent 
application will make the process of compiling this database more 
efficient.

[[Page 54643]]

    Current Secs. 1.163(c)(3) through (c)(5) are redesignated 
Secs. 1.163(c)(1) through (c)(3), respectively.
    Sections 1.163(c)(14) and (d) are amended to delete the reference 
to a plant patent color coding sheet. The color codes and the color 
coding system are generally included in the specification. Repeating 
the color coding information in a color coding sheet increases the risk 
of error and inconsistencies.
    Comment 70: One comment suggested that the title be amended for 
clarity by addition of ``in a plant application.''
    Response: The suggestion has been adopted.
    Section 1.173: Section 1.173 is amended to consolidate (1) the 
requirements for the filing of reissue applications formerly in 
Sec. 1.173, (2) the requirements for amending reissue applications 
formerly in Sec. 1.121, and (3) the requirements for reissue drawings 
formerly in Sec. 1.174. Section 1.174 is being eliminated as the 
requirements for filing drawings in reissue applications have been 
moved to Sec. 1.173. Section 1.173 also has been amended to include the 
same basic filing requirements for reissue applications that are 
currently only set forth in the MPEP. All of these changes have been 
made so that applicants will be able to find, in a single rule section, 
all of these critical requirements that must be complied with when 
preparing and filing a reissue application. Further, the requirements 
for the specification, claims and drawings are now set forth in 
separate paragraphs, which are clearer and easier to understand.
    The title of Sec. 1.173 is amended to ``Reissue specification, 
drawings, and amendments'' in order to more aptly describe the 
inclusion of all filing and amendment requirements for the 
specification, including the claims, and the drawings of reissue 
applications in a single section.
    Section 1.173(a) provides the current requirements for the contents 
of a reissue application at filing. The existing prohibition against 
new matter in a reissue application, and the statutory provision 
permitting enlarging the scope of the original patent claims within two 
years of the patent date, formerly in Sec. 1.121(b)(5), are added to 
this section.
    Section 1.173(a)(1) now requires that the specification, including 
the claims, be furnished in the form of a copy of the printed patent in 
double column format (as the patent can be simply copied without 
cutting into single columns) with one page of the patent appearing on 
only one side of each individual page of the specification of the 
reissue application. This format for submitting a reissue application 
represents a change from what was formerly set out as an option in MPEP 
1411. Section 1.173(a)(1) also provides that amendments made to the 
specification at filing be made according to Sec. 1.173(b). A cross-
reference has been added to Sec. 1.52, wherein form requirements are 
provided for papers in patent applications, including reissue 
applications. Additionally, a copy of any disclaimer (Sec. 1.321), 
certificate of correction (Secs. 1.322 through 1.324), or reexamination 
certificate (Sec. 1.570) issued in the patent must be supplied. See 
also Sec. 1.178.
    Section 1.173(a)(1) applies to reissue applications filed on or 
after two months from the date of publication of the rule in the 
Federal Register.
    Section 1.173(a)(2) sets forth the requirements for the drawings at 
the time the reissue application is filed. If clean copies (i.e., good 
quality photocopies free of any extraneous markings) of the drawings 
from the original patent are supplied by applicant at the time of 
filing the reissue application, and the copies meet the requirements of 
Sec. 1.84, no further (formal) drawings will be required. The former 
provision of Sec. 1.174 requiring temporary drawings is eliminated in 
view of this amendment to Sec. 1.173. The Office will now print a 
reissue patent using clean copies of the patent drawings. How changes 
to the patent drawings may be made at the time of filing of the reissue 
application, or during the prosecution, is now specifically set forth. 
Such changes must be made in accordance with the requirements of 
amended Sec. 1.173(b)(3) (which are essentially the requirements of 
former Secs. 1.121(b)(3)(i) and (ii)). If applicant does not provide 
clean copies of the patent drawings, or if changes are made to the 
drawings during the reissue prosecution, drawings in compliance with 
Sec. 1.84 will be required at the time of allowance. The practice of 
transferring drawings from the patent file is eliminated since clean 
photocopies of patent drawings will be acceptable for use in the 
printing of the reissue patent.
    Section 1.173(b) provides for the manner of making amendments in a 
reissue application. Amendments may be made either by physically 
incorporating the changes within the body of the specification 
(including the claims) as filed, or by a separate amendment paper 
(either at filing or during the prosecution of the application), 
directing that specified changes be made to the application 
specification, including the claims, or to the drawings. If amendments 
are submitted as part of the specification as filed, they may be 
incorporated by cutting the column, inserting the added material and 
rejoining the remainder of the column.
    Sections 1.173(b)(1) and (b)(2) incorporate the provisions formerly 
part of Secs. 1.121(b)(1) and (b)(2) as to the manner of amending the 
specification and claims, respectively. Section 1.173(b)(1) is 
clarified to note that the paragraph applies whether or not an 
amendment is submitted on paper or compact disc pursuant to 
Secs. 1.52(e)(1) and 1.821(c) but not for discs submitted under 
Sec. 1.821(e).
    Section 1.173(b)(3) incorporates the provisions formerly set forth 
in Sec. 1.121(b)(3) as to amending reissue drawings.
    Section 1.173(c) now requires that whenever an amendment is made to 
the claims, either at the time of filing or during the prosecution, the 
amendment must be accompanied by a statement as to the status of all 
patent claims and all added claims, and an explanation as to the 
support in the disclosure for any concurrently made changes to the 
claims.
    Section 1.173(c) applies to any pending or newly filed application 
two months from the date of publication of the rule in the Federal 
Register.
    Section 1.173(d) incorporates the provisions of former 
Secs. 1.121(b)(1)(iii) and (b)(2)(i)(C) as to how changes in reissue 
applications are shown in the specification and claims, respectively. 
An exception to the normal underlining requirement is made for compact 
disc submissions. Instead of underlining the material, the following 
XML tag must be used to identify the material that is being added: 
start with U> and end with U> to properly identify the material being 
added.
    Sections 1.173(e), (f), and (g) merely reiterate requirements for 
retaining original claim numbering, amending the disclosure when 
required, and making amendments relative to the original patent, which 
were formerly set out in Secs. 1.121(b)(2)(B), (b)(4), and (b)(6), 
respectively.
    Comment 71: A comment was made calling attention to the fact that 
amendments made to sequence listings are provided for in sections on 
sequence listings (Sec. 1.821 et seq.).
    Response: The comment has been adopted. With respect to the 
existing practice of making submissions under Sec. 1.821(e), Sec. 1.173 
has been amended to limit the application of this section to computer 
programs and tables (see Sec. 1.52(e)(1)) and to Sec. 1.821(c), but not 
to submissions under Sec. 1.821(e).

[[Page 54644]]

    Section 1.174: Section 1.174 is removed (and reserved) in view of 
the inclusion of all filing and amendment requirements for reissue 
drawings in amended Sec. 1.173. Thus, in addition to the reissue filing 
requirements of former Sec. 1.173, the reissue amendment requirements 
of former Sec. 1.121(b) and the reissue drawing requirements of former 
Sec. 1.174 are all included in a single rule, amended Sec. 1.173. The 
changes consolidating several former rules into a single rule should 
make the requirements for all reissue filings and amendments quicker to 
locate and easier to understand.
    Section 1.176: Section 1.176 is amended to create Secs. 1.176(a) 
and (b). Section Sec. 1.176(a) contains material retained from the 
former rule, while Sec. 1.176(b) contains new material permitting 
certain restrictions.
    Section 1.176 is amended to eliminate the prohibition against 
requiring division in a reissue application. The Federal Circuit has 
indicated that 35 U.S.C. 251 does not, under certain circumstances, 
prohibit an applicant in a reissue application from adding claims 
directed to an invention which is separate and distinct from the 
invention defined by the original patent claims. See In re Amos, 953 
F.2d 613, 21 USPQ2d 1271 (Fed. Cir. 1991). Former Sec. 1.176, however, 
prohibited the Office from making a restriction requirement in a 
reissue application. This prohibition in former Sec. 1.176, in 
combination with the Federal Circuit's decision in Amos, frequently 
placed an unreasonable burden on the Office in requiring the 
examination of multiple inventions in a single reissue application.
    Elimination of the prohibition against restriction in divisional 
application under Sec. 1.176 is effective for reissue applications 
filed on or after the date that is sixty days after the date of 
publication in the Federal Register.
    Section 1.176(b) now allows the Office to make a restriction 
requirement in a reissue application between claims added in a reissue 
application and the original patent claims, where the added claims are 
directed to an invention which is separate and distinct from the 
invention(s) defined by the original patent claims. The criteria for 
making a restriction requirement in a reissue application between added 
claims and original patent claims is the same as that applied in an 
original application. See MPEP 806 through 806.05(i). Where a 
restriction requirement is made, the original patent claims will be 
held to be constructively elected and the examiner will issue an Office 
action on the merits providing notification of the restriction 
requirement in such Office action.
    If a requirement for restriction between the claims of the original 
patent and those added claims which are directed towards previously 
unclaimed subject matter is made by the examiner, the group containing 
the original patent claims (amended or unamended) will be held to be 
constructively elected, unless a disclaimer of all the patent claims is 
filed in the reissue application, which disclaimer cannot be withdrawn 
by applicant.
    The original patent claims (which have been constructively elected) 
will receive a complete examination on their merits, while the 
nonelected (added) claims (to any added invention(s)) will be held in 
abeyance in a withdrawn status. These nonelected (added) claims will 
only be examined if filed in a divisional reissue application. If the 
reissue application contains only original unamended claims and is 
found to be allowable, further action in the reissue application may 
have to be suspended, since the Office will not allow a reissue patent 
which does not correct any error in the original patent. If the 
divisional reissue application containing the added claims is examined 
and is found to be allowable, the Office may recombine the several sets 
of examined and allowable claims into one of the reissue applications, 
which then can be allowed. See the discussion of Sec. 1.177 for 
additional details for presenting multiple reissue applications.
    The Office is requiring a constructive election of the original 
(patented) claims to ensure that the original (patented) claims receive 
an examination on their merits. If a reissue applicant was permitted to 
elect the added claims directed toward previously unclaimed subject 
matter, and, after an examination of only these added claims, the 
divisional claims were determined to be unpatentable, applicant would 
most likely let the reissue application go abandoned and not file a 
divisional reissue application directed toward the original claims of 
the patent. In this circumstance, no examination of the original claims 
of the patent would be made. This would not be appropriate as the 
filing of the reissue application would mandate that the original 
patent claims be reevaluated/examined again. Thus, a constructive 
election of the original patent claims and an examination thereof in 
the first reissue application would force the applicant to file a 
divisional reissue application with claims to the added invention in 
order to secure an examination of such added claims.
    The Office will continue to not require restriction among original 
claims of the patent (i.e., among claims that were in the patent prior 
to filing the reissue application) and the rule has been amended to 
reflect that practice. In order for restriction to be required between 
the original patent claims and added claims, the added claims must be 
directed toward inventions which are separate and distinct from the 
invention(s) defined by the original patent claims. Restriction between 
multiple inventions in the added claims will be permitted provided the 
added claims are drawn to several separate and distinct inventions.
    Section 1.176 has been further amended to delete the two-month 
portion of the rule relating to when a reissue application will be 
acted upon. When any particular reissue application is taken up for 
action is an internal Office policy that need not be set forth in the 
rules of practice. Moreover, it is the intent of the Office to consider 
acting on divisional reissue applications prior to expiration of the 
two-month period after announcement of the reissue filing in the 
Official Gazette.
    The amendments to this section are not intended to affect the types 
of errors that are or are not appropriate for correction under 35 
U.S.C. 251 (e.g., applicant's failure to timely file a divisional 
application is not considered to be the type of error that can be 
corrected by a reissue). See In re Watkinson, 900 F.2d 230, 14 USPQ2d 
1407 (Fed. Cir. 1990); In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 
1978); and In re Orita, 550 F.2d 1277, 193 USPQ 145 (CCPA 1977).
    Section 1.177: The title to Sec. 1.177 has been amended to read 
``Issuance of multiple reissue patents'' in order to include procedures 
pertaining to continuation reissue applications as well as divisional 
reissue applications.
    Section 1.177 is amended to eliminate former requirements that 
divisional reissues be limited to separate and distinct parts of the 
thing patented, and that they be issued simultaneously unless ordered 
by the Commissioner. The rule is expanded to include continuations of 
reissues as well as divisionals. See In re Graff, 111 F.3d 874, 876-77, 
42 USPQ2d 1471, 1473 (Fed. Cir. 1997). The Federal Circuit specifically 
stated:

. . . [35 U.S.C. 251, para. 3,] provides that the general rules for 
patent applications apply also to reissue applications, and [35 
U.S.C. 251, para. 2,] expressly recognizes that there may be more 
than one reissue patent for distinct and separate parts of the thing 
patented. [35

[[Page 54645]]

U.S.C. 251] does not prohibit divisional or continuation reissue 
applications, and does not place stricter limitations on such 
applications when they are presented by reissue, provided of course 
that the statutory requirements specific to reissue applications are 
met. See [35 U.S.C. 251, para. 3]

. . . [35 U.S.C. 251, para. 2,] is plainly intended as enabling, not 
limiting. [35 U.S.C. 251, para. 2,] has the effect of assuring that 
a different burden is not placed on divisional or continuation 
reissue applications, compared with divisions and continuations of 
original applications, by codifying [The Corn-Planter Patent, 90 
U.S. 181 (1874),] which recognized that more than one patent can 
result from a reissue proceeding. Thus, [35 U.S.C. 251, para. 2,] 
places no greater burden on [a] continuation reissue application 
than upon a continuation of an original application; [35 U.S.C. 251, 
para. 2,] neither overrides, enlarges, nor limits the statement in 
[35 U.S.C. 251, para. 3,] that the provisions of Title 35 apply to 
reissues.

See id. at 876-77, 42 USPQ2d at 1473.

    Thus, the Federal Circuit has indicated that a continuation or 
divisional reissue application is not subject to any greater burden 
other than the burden imposed by 35 U.S.C. 120 and 121 on a 
continuation or divisional non-reissue application, except that a 
continuation or divisional reissue application must also comply with 
the statutory requirements specific to reissue applications (e.g., the 
``error without any deceptive intention'' requirement of 35 U.S.C. 251, 
para. 1).
    Following Graff, the Office has adopted a policy of treating 
continuations/divisionals of reissue applications in much the same 
manner as continuations/divisionals of non-reissue applications. 
Accordingly, the former requirements of Sec. 1.177 as to petitioning 
for non-simultaneous issuance of multiple reissue patents, suspending 
prosecution in an allowable reissue application while the other is 
prosecuted, and limiting the content of each reissue application to 
separate and distinct parts of the thing patented, are all eliminated. 
These requirements were considered unique to reissue continuations/
divisionals, imposed additional burdens on reissue applicants, and are 
now inconsistent with the Federal Circuit's discussion of 35 U.S.C. 
251, para. 2, in Graff.
    The changes to Sec. 1.177 relating to divisional reissues are 
effective on the date of publication of the rule in the Federal 
Register for all pending and new reissue applications.
    Additionally, Sec. 1.177(a) is amended to require that all multiple 
reissue applications of a single patent include as the first line of 
the respective specifications a cross-reference to the other reissue 
application(s). The cross-reference will provide the public with notice 
that more than one reissue application has been filed to correct an 
error (or errors) in a single patent. If one reissue has already issued 
without the appropriate cross-reference, a certificate of correction 
will be issued to provide the cross-reference in the issued reissue 
patent. The Office will initiate a certificate of correction under 
Sec. 1.322 to include the appropriate cross-reference in the already 
issued first reissue patent before passing the pending reissue 
application to issue.
    Section 1.177(b) is amended to require that all of the claims of 
the patent be presented in each application as amended, unamended or 
canceled, and that the same claim not be presented for examination in 
more than one application in its original unamended version. Any added 
claims must be numbered beginning with the next highest number 
following the last patent claim.
    If the same or similar claims are presented in more than one of the 
multiple reissue applications, statutory double patenting (35 U.S.C. 
101) or non-statutory (judicially created doctrine) double patenting 
may be considered by the examiner during examination, and appropriate 
rejections will be made. If needed to overcome the rejections, terminal 
disclaimers will be required in order to ensure common ownership of any 
non-distinct claims throughout each of the patents' lifetimes.
    Amendments are concurrently made to permit restriction in reissue 
applications between the original patent claims and any added claims to 
separate and distinct subject matter (see change to Sec. 1.176). If one 
or more divisional applications are filed after such a restriction 
requirement, Sec. 1.177(c) provides that the resulting multiple reissue 
applications will be issued alone or together, but each of the reissue 
applications will be required to include changes which correct an error 
in the original patent before it can be issued as a reissue patent. If 
one of the applications resulting from the restriction requirement is 
found to be allowable without any changes relative to the patent (i.e., 
it includes only all the original patent claims), further action will 
be suspended until one other reissue application becomes allowable; 
then, the two will be recombined and issued as a single reissue patent. 
If the several reissue applications resulting from the restriction each 
include changes correcting some error in the original patent, the 
reissue applications could be issued separately, with an appropriate 
cross-reference to the other(s) in each of the respective 
specifications.
    Section 1.178: The title of Sec. 1.178 is amended to reflect the 
addition of the material in new Sec. 1.178(b), and the rule is amended 
to create Sec. 1.178(a) containing some of the material in the former 
rule, and Sec. 1.178(b).
    Section 1.178(a) is amended to no longer require an offer to 
surrender the original patent at the time of filing as part of the 
reissue application filing requirements. Omission of this formality by 
applicants in the past has resulted in processing delays due to the 
Office's sending of a Notice to File Missing Parts of Application. The 
change to this section relaxes the former requirement and permits 
examination to commence without the ``offer'' to surrender the original 
patent. The requirement for actual surrender of the original patent (or 
a ``statement'' of its loss, as set out below) before the reissue 
application is allowed, however, is retained.
    Section 1.178(a) is also amended to change ``affidavit or 
declaration'' (attesting to the loss or inaccessibility of the original 
patent) to ``statement.'' This change will eliminate the verification 
requirements of the former rule, which are formalities covered by 
Secs. 1.4 and 10.18.
    Replacement in Sec. 1.178(a) of the oath or declaration with a 
statement that the original patent is lost or inaccessible is effective 
on the date of publication in the Federal Register for all pending or 
new reissue applications.
    Section 1.178(b) has been added to require reissue applicants to 
call to the attention of the Office any prior or concurrent proceeding 
in which the patent (for which reissue is requested) is or was 
involved, such as interferences, reissues, reexaminations, or 
litigation (litigation covers any papers filed in the court or issued 
by the court, such as, for example, motions, pleadings, and court 
decisions including court orders) and the results of such proceedings. 
The duty to submit such information is a continuing duty and runs from 
the time the reissue application is filed until the reissue application 
is abandoned or issues as a reissue patent. The addition of 
Sec. 1.178(b) is intended to further the Office's desire to make 
consistent both reissue and reexamination proceedings as much as 
possible (see Secs. 1.565(a) and (b)). See also Sec. 1.173(a)(1).
    The need to call the attention of the Office to prior or concurrent 
proceedings in which the patent (for which reissue is requested) is or 
was involved applies to pending and new reissue applications.
    Section 1.181: Section 1.181 provides generically for petitions to 
the

[[Page 54646]]

Commissioner of Patents and Trademarks concerning patent-related 
matters. Section 1.181(f) is amended to provide that any petition under 
37 CFR part 1 not filed within two months of the mailing date of the 
action or notice from which relief is requested may be dismissed as 
untimely (except as otherwise provided). Thus, any petition under 
Sec. 1.182 or Sec. 1.183 not filed within two months from the mailing 
date of the action or notice placing petitioner on notice of the 
situation from which relief is requested may be dismissed as untimely.
    The Office has long considered the two-month period in 
Sec. 1.181(f) to be the benchmark for determining the timeliness of 
petitions. See Changes to Patent Practice and Procedure, 62 FR at 
53161, 1203 Off. Gaz. Pat. Office at 88 (the Office considers the two-
month period in Sec. 1.181(f) to be the appropriate period by which the 
timeliness of a petition should be determined). Nevertheless, there 
appears to be some confusion as to when other petitions (e.g., 
Secs. 1.182 and 1.183) must be filed to be timely, or even whether 
there is any period within which other petitions must be filed to be 
timely. See Helfgott v. Dickinson, 209 F.3d 1328, 1333 n.3, 54 USPQ2d 
1425, 1428 n.3 (Fed. Cir. 2000).
    Therefore, the Office is revising Sec. 1.181(f) to clarify that its 
two-month time period applies to any petition under 37 CFR part 1, 
except as otherwise provided. Section 1.181(f) is also amended to 
provide that this two-month period is not extendable. A number of 
sections (e.g., Secs. 1.377, 1.378, 1.644, 1.740) specify the time 
period within which a petition must be filed (or may be dismissed as 
untimely). The two-month time period in Sec. 1.181(f) applies to a 
petition under any section that does not specify the time period within 
which a petition must be filed.
    Section 1.193: Section 1.193(b)(1) is amended to provide that 
appellant may file a reply brief to an examiner's answer ``or a 
supplemental examiner's answer.'' The purpose of this amendment is to 
clarify the current practice that the appellant may file a (or another) 
reply brief within two months of a supplemental examiner's answer 
(Sec. 1.193), but the appellant must file any request for an oral 
hearing within two months of the examiner's answer (Sec. 1.194).
    Section 1.303: Section 1.303(a) is amended to add the phrase ``to 
an interference'' between ``any party'' and ``dissatisfied with the 
decision of the Board of Patent Appeals and Interferences'' to correct 
an inadvertent omission.
    Section 1.311: Section 1.311(b) is amended to create 
Secs. 1.311(b), (b)(1), and (b)(2). Section 1.311(b) provides that an 
authorization to charge the issue fee (Sec. 1.18) to a deposit account 
may be filed in an individual application only after the mailing of the 
notice of allowance. Accordingly, general authorizations to pay fees 
and specific authorizations to pay the issue fee that are filed prior 
to the mailing of a notice of allowance will generally not be treated 
as requesting payment of the issue fee and will not be given effect to 
act as a reply to the notice of allowance. Applicant, when paying the 
issue fee, should submit a new authorization to charge fees, such as by 
completing box 6b. on the current PTOL-85B form. Where no reply to the 
notice of allowance is received, the application will stand abandoned 
notwithstanding the presence of general authorizations to pay fees or a 
specific authorization to pay the issue fee that were submitted prior 
to mailing of the notice of allowance. Where an attempt is made to pay 
the issue fee but an incorrect amount is submitted, Sec. 1.311(b)(1), 
or where the Office's issue fee transmittal form (currently PTOL-85(B)) 
is completed by applicant and submitted, Sec. 1.311(b)(2), in reply to 
a notice of allowance, an exception will be made. Such submissions will 
operate as a request to charge the issue fee to any deposit account 
identified in a previously filed authorization to charge fees, 
Sec. 1.311(b). See also the change to Sec. 1.26(b).
    The limitation on authorization to charge issue fees to a deposit 
account under Sec. 1.311(b) will apply only where a Notice of Allowance 
requiring the issue fee has been mailed on or after the date that is 60 
days after publication in the Federal Register.
    Previous Sec. 1.311(b) caused problems for the Office that tended 
to increase Office processing time. The language used by applicants to 
authorize that fees be charged to a deposit account often varies from 
one application to another. As a result, conflicts arise between the 
Office and applicants as to the proper interpretation of authorizing 
language found in their applications. For example, some applicants are 
not aware that it is current Office policy to interpret broad language 
to ``charge any additional fees which may be required at any time 
during the prosecution of the application'' as authorization to charge 
the issue fee on applications filed on or after October 1, 1982. See 
Deposit Account Authorization to Charge Issue Fee, 1095 Off. Gaz. Pat. 
Office 44 (October 25, 1988), reprinted at 1206 Off. Gaz. Pat. Office 
95 (January 6, 1998).
    Even when the language preauthorizing payment of the issue fee was 
clear, the preauthorization presented problems for both the Office and 
practitioners. One problem was because it may not be clear to the 
Office whether a preauthorization is still valid after the practitioner 
withdraws or the practitioner's authority to act as a representative is 
revoked. If the Office charges the issue fee to the practitioner's 
deposit account, the practitioner may have difficulty getting 
reimbursement from the practitioner's former client. Another problem 
was that when the issue fee was actually charged at the time the notice 
of allowance is mailed, a notice to that effect was printed on the 
notice of allowance (PTOL-85) and applicant was given one month to 
submit/return the PTOL-85B with information to be printed on the 
patent. Applicants were sometimes confused, however, by the usual 
three-month time period provided for paying the issue fee and did not, 
therefore, return the PTOL-85B until the end of the normal three-month 
period. Since the Office does not wait for the PTOL-85B to be returned 
to begin electronic capture of the data to be printed as a patent, any 
PTOL-85B received more than a month after the issue fee has been paid 
may not be matched with the application file in time for the 
information thereon to be included on the patent.
    Clerical problems are not the main reason for eliminating the 
practice. The Office would like all of the information necessary for 
printing a patent to be in the application when the issue fee is paid. 
Thus, the Office is eliminating petitions under Sec. 3.81(b), see 
below, and intends to no longer print any assignee data that is 
submitted after payment of the issue fee. As explained in the previous 
two Notices, it is not generally in applicant's best interest to pay 
the issue fee at the time the notice of allowance is mailed, since it 
is much easier to have a necessary amendment or an information 
disclosure statement considered if filed before the issue fee is paid 
rather than after the issue fee is paid. See current Secs. 1.97 and 
1.312(b). Also, once the issue fee has been paid, applicant's window of 
opportunity for filing a continuing application is reduced and the 
applicant no longer has the option of filing a continuation or 
divisional application as a continued prosecution application (CPA) 
under Sec. 1.53(d). See Patents to Issue More Quickly After Issue Fee 
Payment, 1220 Off. Gaz. Pat. Office 42, and Filing of Continuing 
Applications, Amendments, or Petitions after Payment of Issue Fee,

[[Page 54647]]

1221 Off. Gaz. Pat. Office 14. Many applicants find the time period 
between the mailing date of the notice of allowance and the due date 
for paying the issue fee useful for re-evaluating the scope of 
protection afforded by the allowed claim(s) and for deciding whether to 
pay the issue fee and/or to file one or more continuing applications.
    If prompt issuance of the patent is a high priority, after receipt 
of the notice of allowance applicant may promptly return the PTOL-85B 
(supplying any desired assignee and attorney information) and pay the 
issue fee. In this way, the Office will be able to process the payment 
of the issue fee and the information on the PTOL-85B as a part of a 
single processing step. Further, no time would be saved even if the 
issue fee was preauthorized for payment as the Office would not have 
the assignee and attorney data which is taken from the PTOL-85B.
    As an additional aid to applicants, the rule as proposed has been 
further amended to include Secs. 1.311(b)(1) and (b)(2) that can act as 
safety mechanisms. Where it is clear that an applicant actually intends 
to pay the issue fee such as by submitting an incorrect issue fee 
amount, or completing the issue fee transmittal form provided by the 
Office with the notice of allowance, a general authorization to pay 
fees or a specific authorization to pay the issue fee, submitted prior 
to the mailing of a notice of allowance, will be allowed to act as 
payment of the correct issue fee.
    Thus, it is not seen that the proposal to eliminate the 
preauthorization to pay the issue fee would have any adverse effects on 
our customers.
    The suggestion of eliminating preauthorization of payment of the 
issue fee was discussed in Topic 19 of the Advance Notice and received 
a generally favorable response. Many patent attorneys stated that they 
considered preauthorization a dangerous practice which they would not 
use. Others thought that preauthorization was an important safety 
feature, and that the Office should fix the internal clerical problems 
which were motivating the change.
    Comment 72: One comment was received in response to the Notice of 
Proposed Rulemaking. The comment supported the change, particularly in 
view of the stricter standards proposed to Secs. 1.312 and 1.313.
    Section 1.312: The proposal to amend Sec. 1.312 was not proceeded 
with in this final rule, but has been included in the interim rule 
Changes to Application Examination and Provisional Application 
Practice, 65 FR 14865 (March 20, 2000), 1233 Off. Gaz. Pat. Office 47 
(April 11, 2000).
    Section 1.313: The proposal to amend Sec. 1.313 was not proceeded 
with in this final rule, but has been included in the interim rule 
Changes to Application Examination and Provisional Application 
Practice, 65 FR 14865 (March 20, 2000), 1233 Off. Gaz. Pat. Office 47 
(April 11, 2000).
    Section 1.314: Section 1.314 is amended to change the reference to 
the fee set forth in ``Sec. 1.17(i)'' to the fee set forth in 
``Sec. 1.17(h).'' This change is for consistency with the changes to 
Secs. 1.17(h) and 1.17(i). See discussion of changes to Secs. 1.17(h) 
and 1.17(i).
    Section 1.322: Section 1.322(a) is amended to create 
Secs. 1.322(a)(1) through (a)(4), and to incorporate the provisions of 
35 U.S.C. 254.
    Section 1.322(a)(1) provides that the Commissioner may issue a 
certificate of correction to correct a mistake in a patent, incurred 
through the fault of the Office, which mistake is clearly disclosed in 
the records of the Office. Section 1.322(a)(1)(i) provides that a 
certificate of correction may be issued at the request of patentee or 
the patentee's assignee. Section 1.322(a)(1)(ii) provides that a 
certificate of correction may be issued sua sponte by the Commissioner 
for mistakes that the Office discovers. Section 1.322(a)(1)(iii) 
provides that a certificate of correction may be issued based on 
information supplied by a third party.
    Section 1.322(a)(2)(i) provides that there is no obligation on the 
Office to act on or respond to submissions of information or requests 
to issue a certificate of correction by a third party under 
Sec. 1.322(a)(1)(iii). The provisions of Secs. 1.322(a)(1)(iii) and 
(a)(2) are intended to provide the Office flexibility in handling a 
request by a third party without an obligation to do so. Section 
1.322(a)(2)(ii) provides that a paper submitted by a third party under 
this section will not be made of record in the file that it relates to 
nor be retained by the Office. The Office, however, will review such 
paper to determine whether the Office wishes to proceed with a 
certificate of correction based on the information supplied in such a 
paper.
    Section 1.322(a)(3) continues to provide that if the request 
relates to a patent involved in an interference, the request must 
comply with the requirements of this section and be accompanied by a 
motion under Sec. 1.635.
    Section 1.322(a)(4) continues to provide that the Office will not 
issue such a certificate on its own initiative without first notifying 
the patentee (including any assignee of record) at the correspondence 
address of record and affording the patentee an opportunity to be 
heard.
    The certificate of correction practice re third parties applies to 
requests by third parties filed on or after two months from the date of 
publication in the Federal Register.
    The former wording of Sec. 1.322(a) contained language 
(``certificate will not be issued at the request or suggestion of 
anyone not owning an interest in the patent * * * without first 
notifying the patentee'') which has led third parties to conclude that 
they have standing to demand that the Office issue, or refuse to issue, 
a certificate of correction. Third parties do not have standing to 
demand that the Office issue, or refuse to issue, a certificate of 
correction. See Hallmark Cards, Inc. v. Lehman, 959 F. Supp. 539, 543-
44, 42 USPQ2d 1134, 1138 (D.D.C. 1997). Section 1.322(a)(2), therefore, 
has been amended to clarify that third parties do not have standing to 
demand that the Office act on, respond to, issue, or refuse to issue a 
certificate of correction.
    The Office is, however, cognizant of the need for the public to 
have correct information about published patents and may therefore 
accept information about mistakes in patents from third parties and may 
issue certificates of correction based upon that information (whether 
or not it is accompanied by a specific request for issuance of a 
certificate of correction), Sec. 1.322(a)(1)(iii). The Office intends 
to retain its discretion under 35 U.S.C. 254 and may not issue a 
certificate of correction even if a mistake is identified, particularly 
if the identified mistake is not a significant one that would justify 
the cost and time to issue a certificate of correction even if 
requested by the patentee or patentee's assignee.
    When such information (about mistakes in patents) is received by 
the Office, the Office does not intend to correspond with third parties 
about the information they submitted either to inform the third parties 
of whether it intends to issue a certificate of correction or to issue 
a denial of any request for issuance of a certificate of correction 
that may accompany the information. The Office will confirm to the 
party submitting such information that such information has in fact 
been received by the Office if a stamped, self-addressed post card has 
been submitted. See MPEP 503.
    The proposed amendment to the rule set forth in the Notice of 
Proposed Rulemaking was intended to exclude third parties from 
submitting requests for certificates of correction. The final rule 
language has been modified to

[[Page 54648]]

permit third parties to submit information about mistakes in patents, 
while clarifying that the Office need not act on that information or 
deny any accompanying request for issuance of a certificate of 
correction. The Office may choose to issue a certificate of correction 
on its own initiative based on the information supplied by a third 
party if it desires to do so. Accordingly, a fee for submission of the 
information by a third party has not been imposed.
    The Office in implementing the rule (and in setting forth the 
implementation in the MPEP) will consider establishing guidelines for 
the types of mistakes that it will issue a certificate of correction 
for (as the rule does not represent a requirement on the Office but is 
permissive in nature as is 35 U.S.C. 254 that states that the 
``Commissioner may issue a certificate of correction'' but does not 
require the Commissioner to do so).
    Comment 73: One comment supported the proposed amendment as it 
clarified that third parties do not have a right to demand issuance of 
a certificate of correction. Two comments opposed the proposed 
amendment arguing that the public has a right to know about apparent 
errors, such as by a third party requesting a certificate of 
correction.
    Response: The comments have been adopted in a compromise whereby 
the rule has been amended to clarify that third parties do not have a 
right to request issuance of a certificate of correction, but that the 
Office will accept information regarding mistakes about published 
patents and may issue at its own initiative, after notice to the 
patentee or the patentee's assignee, a certificate of correction for 
significant mistakes.
    Section 1.323: Section 1.323 is amended to provide that the Office 
may issue a certificate of correction under the conditions specified in 
35 U.S.C. 255 at the request of the patentee or the patentee's 
assignee, upon payment of the fee set forth in Sec. 1.20(a). The 
specific conditions set forth in the statute that were previously set 
forth in the rule have been replaced by a reference in the rule to the 
statute. Section 1.323 continues to provide that if the request relates 
to a patent involved in an interference, the request must comply with 
the requirements of this section and be accompanied by a motion under 
Sec. 1.635.
    Section 1.324: Section 1.324 has its title revised to reference the 
statutory basis for the rule, 35 U.S.C. 256. It is particularly 
important to recognize that 35 U.S.C. 256, the statutory basis for 
corrections of inventorship in patents under Sec. 1.324, is stricter 
than 35 U.S.C. 116, the statutory basis for corrections of inventorship 
in applications under Sec. 1.48. 35 U.S.C. 256 requires ``on 
application of all the parties and assignees,'' while 35 U.S.C. 116 
does not have the same requirement. Thus, the flexibility under 35 
U.S.C. 116, and Sec. 1.48, wherein waiver requests under Sec. 1.183 may 
be submitted (e.g., MPEP 201.03 (under the heading ``Statement of Lack 
of Deceptive Intention'')), is not possible under 35 U.S.C. 256, and 
Sec. 1.324.
    Section 1.324(b)(1) is revised to eliminate the requirement for a 
statement from an inventor being deleted stating that the inventorship 
error occurred without deceptive intent. The revision is made to 
conform Office practice to judicial practice as enunciated in Stark v. 
Advanced Magnetics, Inc., 119 F.3d 1551, 43 USPQ2d 1321 (Fed. Cir. 
1997), which held that 35 U.S.C. 256 only requires an inquiry into the 
intent of a nonjoined inventor. The clause stating ``such error arose 
without deceptive intent on his part'' was interpreted by the court as 
being applicable only when there is an error where an inventor is not 
named and not when there is an error where a person is named as an 
inventor. While the decision recognized that the Office's former 
additional inquiry as to inventors named in error was appropriate under 
35 U.S.C. 256 when read in conjunction with inequitable conduct 
standards, the Office no longer wishes to conduct an inquiry broader in 
scope than what would be conducted had the matter been raised in a 
court proceeding rather than under Sec. 1.324.
    Elimination in Sec. 1.324 of the requirement for a statement from 
the inventor being deleted to correct an inventorship error in a patent 
is effective on the date of publication in the Federal Register.
    Section 1.324(b)(2), which requires a statement from the current 
named inventors either agreeing to the requested change or stating that 
they have no disagreement to the requested change, is not revised. 
Section 1.324(b)(2) in combination with Sec. 1.324(b)(1) ensures 
compliance with the requirement of the statute for application by all 
the parties, which requirement is separate from the requirement that 
certain parties address the lack of deceptive intent in the 
inventorship error.
    Section 1.324(c) is a newly added paragraph to reference 
Secs. 1.48, 1.497, and 1.634 for corrections of inventorship in 
national applications, international applications, and interferences, 
respectively.
    Comment 74: Two comments state that when adding an inventor to a 
patent, a new oath or declaration under Sec. 1.63 should be required 
for all inventors, including the inventor to be added. This is seen to 
be required by 35 U.S.C. 115.
    Response: The comments are not adopted. The change proposed to 
Sec. 1.324 was directed to statements of lack of deceptive intent and 
not to the advisability of adding a Sec. 1.63 declaration requirement; 
however, the suggested change will be addressed substantively.
    35 U.S.C. 115 requires an applicant to make an oath that he 
believes himself to be the original and first inventor of the invention 
for which he solicits a patent. The statute is directed to applicant's 
filing of an application for a patent. 35 U.S.C. 256 is directed to 
correction of the inventorship in an issued patent and does not 
explicitly require the execution of a new oath/declaration. The statute 
does require application of all the parties and assignees, a 
requirement that is met by the provisions of Secs. 1.324(b)(1) and 
(b)(2) (for the inventors), and Sec. 1.324(c) (for the assignees).
    Moreover, the major utility of a Sec. 1.63 declaration, as far as 
the Office is concerned, is providing the inventors specific 
recognition of the need to disclose material information to the Office 
to aid in examination of their applications. Corrections relating to 
Sec. 1.324 are directed to changes in inventorship and cannot at that 
time cause further examination of the application notwithstanding any 
change in the inventorship viz-a-viz prior art.
    Section 1.366: Section 1.366(c) is amended to continue to provide 
that a maintenance fee payment must include the patent number and the 
application number of the United States application for the patent on 
which the maintenance fee is being paid, and to further provide that if 
the payment includes identification of only the patent number (i.e., 
does not identify the application number for the patent on which the 
maintenance fee is being paid), the Office may apply the payment to the 
patent identified by patent number in the payment or may return the 
payment. The Office requires the application number to detect 
situations in which a maintenance payment is submitted for the 
incorrect patent (e.g., due to a transposition error in the patent 
number). Nevertheless, a significant number of maintenance fee payments 
contain only the patent number and not the application number for the 
patent on which the maintenance fee is being paid.

[[Page 54649]]

    That the Office under Sec. 1.366 may apply a maintenance fee 
payment where only the patent number is identified is effective on the 
date of publication in the Federal Register.
    The change to Sec. 1.366(c) will permit the Office to streamline 
processing of maintenance fee payments that lack the application number 
for the patent on which the maintenance fee is being paid. The Office 
intends to treat payments that do not contain both a patent number and 
application number as follows: First, a reasonable attempt will be made 
to contact the person who submitted the payment (patentee or agent) by 
telephone to confirm the patent number and application number of the 
patent for which the maintenance fee is being paid. Second, if such an 
attempt is not successful but the payment includes at least a patent 
number, the payment will be processed as a maintenance fee paid for the 
patent number provided, and the person who submitted the payment will 
be sent a letter informing him or her of the patent number and 
application number of the patent to which the maintenance fee was 
posted and given a period of time within which to file a petition under 
Sec. 1.377 along with the petition fee if the maintenance fee was not 
posted to the patent for which the payment was intended. If the payment 
does not include a patent number (e.g., includes only an application 
number), the payment will be returned to the person who submitted the 
payment.
    Section 1.446: Section 1.446 is amended so that its refund 
provisions are consistent with the refund provisions of Sec. 1.26. See 
discussion of Sec. 1.26.
    Section 1.497: Section 1.497(b)(2) has been amended in a manner 
consistent with Sec. 1.64(b). Therefore, Sec. 1.497(b)(2) is amended to 
refer to any supplemental oath or declaration and to provide that if 
the person making the oath or declaration is the legal representative, 
the oath or declaration shall state that the person is the legal 
representative and shall state the citizenship (pursuant to 35 U.S.C. 
115 and 117), residence, and mailing address of the legal 
representative. In addition, Sec. 1.497(b)(2) is amended to delete the 
requirement that the oath or declaration state the facts required by 
Secs. 1.42, 1.43, and 1.47. These facts are not required to be in the 
Sec. 1.497 oath or declaration and should be included in a separate 
paper or a petition under Sec. 1.47 and be signed by a person with 
firsthand knowledge of the facts.
    Section 1.497(d) provides for the situation in which an oath or 
declaration filed pursuant to 35 U.S.C. 371(c)(4) and Sec. 1.497 names 
an inventive entity different from the inventive entity set forth in 
the international application. Section 1.497(d) is added to provide 
that such an oath or declaration must be accompanied by: (1) A 
statement from each person being added as an inventor and from each 
person being deleted as an inventor that any error in inventorship in 
the international application occurred without deceptive intention on 
his or her part; (2) the processing fee set forth in Sec. 1.17(i); and 
(3) if an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b)). 
Thus, naming a different inventive entity in an oath or declaration 
filed to enter the national stage under 35 U.S.C. 371 in an 
international application is not analogous to the filing of an oath or 
declaration to complete an application under 35 U.S.C. 111(a) (which 
operates to name the new inventive entity under Secs. 1.41(a)(1) and 
1.48(f)(1)), but is analogous to correction of inventorship under 
Sec. 1.48(a).
    Section 1.497(e) is added to explicitly state that the Office may 
require such other information as may be deemed appropriate under the 
particular circumstances surrounding the correction of inventorship. 
See also Sec. 1.48(g).
    Section 1.510: Section 1.510(b)(4) is amended to correspond to 
1.173(a) as amended by the instant final rule, see the discussion as to 
the amendment of Sec. 1.173. Section 1.510(b)(4) now sets forth the 
requirement that a copy of the patent for which reexamination is 
requested must be submitted in double column format, on single-sided 
sheets only. It is considered advantageous for the reexamination and 
reissue provisions to correspond with each other to the maximum extent 
possible, in order to eliminate confusion.
    The double column format on single sided sheets requirement applies 
only to requests for reexamination filed on or after two months from 
the date of publication of the rule in the Federal Register.
    Section 1.510(e) is provided with a conforming amendment to the 
amendment made to Sec. 1.530. The reference in Sec. 1.510(e) to 
``Sec. 1.530(d)'' is changed to ``Sec. 1.530'' in view of the presence 
of amendment material in Secs. 1.530(d) through (f).
    Section 1.530: The title of Sec. 1.530 has been amended to include 
procedures for changes in inventorship which can now be made during a 
reexamination proceeding.
    Sections 1.530(d)(1), (d)(2), and (d)(6) are amended and rewritten 
as Secs. 1.530(d)(1), (d)(2), and (d)(3). Sections 1.530(d)(3) and 
(d)(4) are redesignated as Secs. 1.530(j) and (k). Section 1.530(d)(5) 
has been removed and replaced with a new Sec. 1.530(d)(4) that cross-
references Sec. 1.52. Section 1.52 has been amended to extend the form 
requirements of applications to reexaminations proceedings where 
applicable.
    Sections 1.530(e) through (i) are added, to provide a 
correspondence to Secs. 1.173(b) et seq. as amended by the instant 
final rule, see the discussion as to the amendment of Sec. 1.173. It is 
considered advantageous for the reexamination and reissue provisions to 
correspond with each other to the maximum extent possible, in order to 
eliminate confusion. The amendments make no substantive changes to 
reexamination practice.
    Section 1.530(d)(1) is clarified to note that the paragraph applies 
whether or not an amendment is submitted on paper or compact disc 
pursuant to Secs. 1.96 and 1.825.
    Section 1.530(l) is added to make it clear that where the 
inventorship of a patent being reexamined is to be corrected, a 
petition for correction of inventorship which complies with Sec. 1.324 
must be submitted during the prosecution of the reexamination 
proceeding. If the petition under Sec. 1.324 is granted, a certificate 
of correction indicating the change of inventorship will not be issued, 
because the reexamination certificate that will ultimately issue will 
contain the appropriate change-of-inventorship information (i.e., the 
certificate of correction is, in effect, merged with the reexamination 
certificate). In the rare instances where the reexamination proceeding 
terminates but does not result in a reexamination certificate under 
Sec. 1.570 (reexamination is vacated or the order for reexamination is 
denied), patentee may then request that the inventorship be corrected 
by a certificate of correction indicating the change of inventorship.
    Section 1.550: Section 1.550(a) is amended to add references to 
newly added Secs. 1.105, and 1.115.
    Section 1.550(b) is amended to clarify that responses by the owner 
to any rejection may include further statements ``and/'' or proposed 
amendments or new claims.
    Section 1.550(c) had been proposed to be revised into 
Sec. 1.550(c)(1), containing the current subject matter of 
Sec. 1.550(c), and a Sec. 1.550(c)(2) containing a proposal to add an 
``unintentional delay'' relief alternative (to that of ``unavoidable

[[Page 54650]]

delay'') for a reexamination proceeding that is terminated analogous to 
what is available for an application which is abandoned. The relief 
would have been provided in the form of an extension of time. The 
proposal will not be carried forward in view of Sec. 4605(a) of the 
``American Inventors Protection Act of 1999,'' which establishes 
unintentional delay relief for reexaminations. Section 4605(a) of the 
``American Inventors Protection Act of 1999'' will become effective on 
November 29, 2000. The Office plans to provide unintentional delay 
relief for both ``ex parte'' and ``inter partes'' reexamination under 
Sec. 4605(a) of the ``American Inventors Protection Act of 1999.''
    Section 1.565: Section 1.565(a) is amended to change ``shall'' to 
``must,'' as a conforming change with Secs. 1.510(b)(4), 1.173(a)(1), 
and 1.178(b). This is not a change in substance.
    Section 1.666: Section 1.666(b) is amended to change the reference 
to the fee set forth in ``Sec. 1.17(i)'' to the fee set forth in 
``Sec. 1.17(h).'' This change is for consistency with the changes to 
Secs. 1.17(h) and 1.17(i). See discussion of changes to Secs. 1.17(h) 
and 1.17(i).
    Section 1.720: Section 1.720(b) is amended to clarify that a patent 
extended under Sec. 1.701 or Sec. 1.790 would also be eligible for 
patent term extension. Section 1.720(g) is amended to clarify that an 
application for patent term extension may be timely filed during the 
period of an interim extension under Sec. 1.790.
    Section 1.730: Section 1.730 is amended to add new Secs. 1.730(b), 
(c), and (d) which state who should sign the patent term extension 
application and what proof of authority may be required of the person 
signing the application. 35 U.S.C. 156 provides that an application for 
patent term extension must be filed by the patent owner of record or an 
agent of the patent owner. An agent of a patent owner could be either a 
licensee of the patent owner (for example, the party that sought 
permission from the Food and Drug Administration for permission to 
commercially use or sell a product, i.e., the marketing applicant), or 
a registered attorney or agent. Section 1.730(b) explains that, if the 
application is submitted by the patent owner, the correspondence must 
be signed by the patent owner or a registered practitioner. Section 
1.730(c) states that, if the application is submitted by an agent of 
the patent owner, the correspondence must be signed by a registered 
practitioner, and that the Office may require proof that the agent 
(e.g., marketing applicant or registered practitioner) is authorized to 
act on behalf of the patent owner. This proof is generally in the form 
of a letter signed by the patent owner authorizing the marketing 
applicant to act on behalf of the patent owner in applying for term 
extension. Lastly, Sec. 1.730(d) states that the Office may require 
proof of authority of a registered practitioner who signs the 
application for patent term extension on behalf of the patent owner or 
the agent of the patent owner. This proof of authority would generally 
be in the form of a power of attorney signed by the patent owner and 
establishing ownership of the patent by reference to an attached 
assignment document or the reel and frame number of the recorded 
assignment document as set forth in Sec. 3.73(b).
    Section 1.740: Currently, for each product claim, method of use 
claim, and method of manufacturing claim which reads on the approved 
product, a showing is required demonstrating the manner in which each 
applicable claim reads on the approved product. 35 U.S.C. 156 provides 
that a patent, which includes one of the following three categories of 
claims: An approved product, method of using an approved product, and 
method of manufacturing an approved product, shall be extended if 
certain conditions apply, and provides rights specific to the three 
claim categories. See 35 U.S.C. 156(a) and (b). 35 U.S.C. 156(d) 
requires that an application for extension identify each relevant claim 
of the patent but does not require an explanation of how each 
identified claim of the patent claims the approved product, or a method 
of use of an approved product, or a method of manufacturing an approved 
product. Often one patent contains many claims to an approved product, 
but once it is explained how one such claim of the patent claims the 
approved product, further explanation as to other claims of the patent 
which claim the approved product is redundant. It is similarly 
redundant to explain how multiple claims of the patent claim the method 
of using an approved product, or the method of manufacturing the 
approved product. In order to reduce the time required to prepare and 
review an application for patent term extension, the rule now provides 
that only one claim, in each of the three categories of claims must be 
explained but retains the statutory requirement that all claims 
relevant to each of the three categories of claims be identified.
    Section 1.740(a)(9) is amended to provide that the application for 
patent term extension need only explain how one product claim of the 
patent claims the approved product, if there is a claim to the product. 
In addition, the application need only explain how one method of use 
claim of the patent claims the method of use of the approved product, 
if there is a claim to the method of use of the product. Lastly, the 
application need only explain how one claim of the patent claims the 
method of manufacturing the approved product, if there is a claim to 
the method of manufacturing the approved product. With this change, 
applicants for patent term extension should be able to reduce the time 
required to prepare the application since at the most only three claims 
have to be addressed rather than all the claims that read on the three 
categories. Each claim that claims the approved product, the method of 
use of the approved product, or the method of manufacturing the 
approved product is still required to be listed. See 35 U.S.C. 
156(d)(1)(B).
    The need under Sec. 1.740(a)(9) for an explanation of how only one 
claim in a category reads on the approved product, or method of using, 
or method of manufacturing is effective on the date of publication in 
the Federal Register.
    Sections 1.740(a)(10)(i) through (a)(10)(v) are amended to separate 
the text therein into aid in comprehension of the text.
    Section 1.740(a)(14) is amended to add ``and'' after the semicolon, 
since the paragraph is now the next to last paragraph.
    Section 1.740(a)(15) is amended to change the semicolon to a 
period.
    Former Sec. 1.740(a)(16) is moved to Sec. 1.740(b), the number of 
copies is changed from two to three, and the express ``certification'' 
requirement is eliminated.
    Former Sec. 1.740(a)(17) is deleted as the requirement for an oath 
or declaration is being deleted in Sec. 1.740(b).
    Section 1.740(b) is amended to delete the requirement for an oath 
or declaration since the averments set forth in Sec. 1.740(b) are 
implicit in the submission of an application for patent term extension 
and the signature on the application, and now contains subject matter 
transferred from former Sec. 1.740(a)(16).
    The deletion of the oath/declaration requirement in Sec. 1.740(b) 
is effective on the date of publication in the Federal Register.
    Section 1.740(c) is amended to increase the time period for reply 
to a notice of informality for an application for patent term extension 
from one month to two months, where the notice of informality does not 
set a time period.
    Section 1.741: Section 1.741(a) is amended to clarify the language 
to

[[Page 54651]]

reference Secs. 1.8 and 1.10 instead of referencing the rules and the 
titles of the rules. Section 1.741(a)(5) is amended to correct the 
format of the citation of the statute.
    Section 1.741(b) is amended to provide that requests for review of 
a decision that the application for patent term extension is 
incomplete, or review of the filing date accorded to the application, 
must be filed as a petition under Sec. 1.741 accompanied by the fee set 
forth in Sec. 1.17(h), rather than a petition under Sec. 1.181, that 
the petition must be filed within two months of the date of the notice, 
and that the extension of time provisions of Sec. 1.136 apply, unless 
the notice indicates otherwise.
    Section 1.760: Section 1.760 is amended to correct the spelling of 
``Official Gazette.''
    Section 1.780: Section 1.780, including the title, is amended to 
use terminology consistent with current practice by inserting the term 
``order.''
    Section 1.809: The following proposed changes to Sec. 1.809 are 
being held in abeyance in view of the statutory mandate to consider 
recommendations of a required study (that will need to be done) prior 
to drafting regulatory changes affecting biological deposits (see 
discussion in Sec. 1.136): Section 1.809(b) to change ``respond'' to 
``reply'' (see Sec. 1.111); Section 1.809(b)(1) to eliminate the 
language discussing payment of the issue fee; Section 1.809(c) to 
provide that if an application for patent is otherwise in condition for 
allowance except for a needed deposit and the Office has received a 
written assurance that an acceptable deposit will be made, applicant 
will be notified and given a period of time within which the deposit 
must be made in order to avoid abandonment; Section 1.809(c) to provide 
that this time period is not extendable under Sec. 1.136(a) or (b) (see 
Sec. 1.136(c)); Section 1.809(c) to eliminate the language stating that 
failure to make a needed deposit will result in abandonment for failure 
to prosecute, because abandonment for failure to prosecute occurs by 
operation of law when an applicant fails to timely comply with such a 
requirement (see 35 U.S.C. 133).
    Section 1.821: The Office indicated in the Notice of Proposed 
Rulemaking that the submission of sequence listings on paper is a 
significant burden on the applicants and the Office, and that it was 
considering changes to Sec. 1.821 et seq. to: (1) permit a machine-
readable submission of the nucleotide and/or amino acid sequence 
listings to be submitted in an appropriate archival medium; and (2) no 
longer require the voluminous paper submission of nucleotide and/or 
amino acid sequence listings.
    Unlike a computer program listing appendix under Sec. 1.96(c), a 
sequence listing under Sec. 1.821 is part of the official disclosure of 
the application. Nevertheless, as Sec. 4804(a) of the ``American 
Inventors Protection Act of 1999'' amended 35 U.S.C. 22 to provide that 
the Office ``may require papers filed in the Patent and Trademark 
Office to be printed, typewritten or on an electronic medium,'' the 
Office may accept or even require the electronic filing of material in 
a patent application.
    As discussed above with regard to the amendments to Sec. 1.96, CD-
ROM and CD-R are the only practical electronic media of archival 
quality. The ``Sequence Listing'' on a compact disc, specified by 
Sec. 1.52(e) and Sec. 1.821(c), would serve as the ``original'' of the 
sequence listing, in lieu of the paper, yet offers the conveniences of 
small size and ease in viewing. Thus, the Office is specifically 
revising Sec. 1.821 et seq. to permit applicants to submit the official 
copy of the sequence listing either on paper or on compact discs.
    Though the sequence listing on the compact disc will not be entered 
into the text search system of the Office, it will be searchable 
through the usual facilities of the Automated Biotech Search System 
after the patent is issued or the application is published. It will be 
available to the public through channels already provided.
    Section 1.821(c) is amended to provide that a ``Sequence Listing'' 
must be submitted either: (1) on paper, or (2) on a compact disc, as 
defined in the amended Sec. 1.52(e) and as further specified in 
Sec. 1.823(a)(2). For nucleotide and/or amino acid sequences, no change 
is made to the computer readable form (CRF) practice under 
Sec. 1.821(e). The requirement for a paper copy of the sequences under 
Sec. 1.821(c) is modified to allow applicants to satisfy Sec. 1.821(c) 
with either a paper version as under the former practice or a 
submission on a CD-ROM or CD-R presented in duplicate. Any submission 
on CD-ROM or CD-R under Sec. 1.821(c) is in addition to and not a 
replacement for the CRF required under Sec. 1.821(e).
    Section 1.821(e) concerning the computer readable form has been 
amended only as to matters of form. The compact disc submitted under 
Sec. 1.821(c) may, if it contains no tables, be identical to the CRF 
submitted under Sec. 1.821(e) and Sec. 1.824, if that CRF is submitted 
on a compact disc. Even if the compact discs submitted under 
Secs. 1.821(c) and (e) are identical, each compact disc submitted under 
Sec. 1.821(c) must be submitted in duplicate, in addition to the CRF 
copy under Sec. 1.821(e). However, the right of the applicant to submit 
the CRF on other media, such as magnetic disks, tape or Zip disks has 
been maintained.
    Section 1.821(f) is amended for consistency with the provisions in 
Sec. 1.821(c) that permit the official copy of the ``Sequence Listing'' 
required by Sec. 1.821(c) to be a paper or a CD-ROM or CD-R.
    Section 1.823: Section 1.823(a)(2) is added to set forth the new 
requirements if the ``Sequence Listing'' submitted pursuant to 
Sec. 1.821(c) is on a compact disc.
    Section 1.823(a)(2) is amended to provide that any ``Sequence 
Listing'' submitted under Sec. 1.821(c) must conform to the 
specifications in Sec. 1.52(e). The compact disc that is used to submit 
the ``Sequence Listing'' may also contain tables or text information 
from the figures when such sections of the application are also of 
inconvenient size (over 50 pages). The tables are often used as 
explanatory devices in the biotechnology applications to describe the 
sequences and their purposes and differences. They can be quite 
lengthy. As an example, a table of over 30,000 pages has been 
submitted.
    Section 1.824: Section 1.824 is amended as to matters of form. 
Section 1.824(b) is amended only to recognize the acceptability of 
electronic ``Sequence Listings'' created under the MS-Windows operating 
system, as well as DOS and the other operating systems itemized in 
Sec. 1.824(b)(2). Section 1.824(c) is amended to recognize the 
acceptability of compact discs, recordable (CD-Rs) as a submission 
medium, in addition to CD-ROMs. The generic term compact disc is 
indicated.
    Section 1.825: Section 1.825(a) is amended to provide that any 
amendment to the compact disc copy of the ``Sequence Listing'' 
submitted pursuant to Sec. 1.821(c) must be made by submission of a new 
compact disc containing a substitute ``Sequence Listing'' and that such 
amendments must be accompanied by a statement that indicates support 
for the amendment in the application-as-filed, and a statement that the 
new compact disc includes no new matter. Section 1.825(b) is amended to 
provide that any amendment to the CD-ROM or CD-R copy of the ``Sequence 
Listing'' pursuant to Sec. 1.825(a) must be accompanied by a substitute 
copy of the computer readable form of the ``Sequence Listing'' required 
pursuant to Sec. 1.821(e), including all previously submitted data with 
the amendment

[[Page 54652]]

incorporated therein, and accompanied by a statement that the computer 
readable form copy is the same as the new compact disc copy of the 
``Sequence Listing.''
    Comments received on this section are addressed above in the 
discussion of the change to Sec. 1.96.

Part 3

    Section 3.27: Section 3.27 is amended to eliminate separate 
Secs. 3.27(a) and (b). The rule is also amended to eliminate the 
reference, under former Sec. 3.27(b), to a document required by 
Executive Order 9424 which does not affect title, and to replace the 
reference to a ``petition'' with a reference to a ``request'' in 
conformance with the change to Sec. 3.81.
    Section 3.71: Section 3.71 is revised as discussed below. In 
conjunction with this revision, the section is broken into 
Secs. 3.71(a) through (d), with each section being given a heading, in 
order to more clearly delineate the topics of the sections.
    Section 3.71(a) clarifies that the assignee must be of record 
pursuant to Sec. 3.71(c) in a U.S. national patent application or 
reexamination proceeding in order to conduct prosecution in place of 
the inventive entity (the inventors of the application) or any previous 
assignee that was entitled to conduct prosecution.
    Section 3.71(b) is added to clarify and define what is meant by the 
Sec. 3.71(a) assignee which may conduct the prosecution of a U.S. 
national application for a patent or reexamination proceeding.
    A national patent application is owned by the inventor(s), the 
assignee(s) of the inventor(s), or some combination of the two. All 
parties having a portion of the ownership must act together in order to 
be entitled to conduct the prosecution.
    If there is an assignee of the entire right, title and interest in 
the patent application, Sec. 3.71(b)(1) states that the single assignee 
may act alone to conduct the prosecution of an application.
    If there is no assignee of the entire right, title and interest of 
the patent application, then two possibilities exist: First: the 
application is not assigned; thus, ownership resides solely in the 
inventor(s) (i.e., the applicant(s)). In this situation, Sec. 3.71 does 
not apply since there is no assignee, and the single inventor, or the 
combination of all the joint inventors, is needed to conduct the 
prosecution of an application. Second: the application has been 
assigned; thus, there is at least one ``partial assignee.'' As pointed 
out in Sec. 3.71(b)(2), a partial assignee is any assignee of record 
who has less than the entire right, title and interest in the 
application (or patent being reexamined). The application will be owned 
by the combination of all partial assignees and all inventors who have 
not assigned away their right, title, and interest in the application. 
Section 3.71(b)(2) points out that where at least one inventor retains 
an ownership interest together with the partial assignee(s), the 
combination of all partial assignees and all inventors retaining 
ownership interest is needed to conduct the prosecution of an 
application. Where no inventor retains an ownership interest, the 
combination of all partial assignees is needed to conduct the 
prosecution of an application.
    To illustrate this, note as follows. Inventors A and B invent a 
process and file their application. Inventors A and B together may 
conduct prosecution. Inventor A then assigns his/her rights in the 
application to Corporation X. As soon as Corporation X (now a partial 
assignee) is made of record in the application as a partial assignee 
(by filing a statement pursuant to Sec. 3.73(b) stating fifty percent 
ownership), Corporation X and Inventor B together may conduct 
prosecution. Corporation X and Inventor B then both assign their rights 
in the application to Corporation Y. As soon as Corporation Y (now an 
assignee of the entire right, title and interest) is made of record in 
the application as the assignee (by filing a statement pursuant to 
Sec. 3.73(b) stating one-hundred percent ownership), Corporation Y may, 
by itself, conduct prosecution.
    This definition of the assignee would apply wherever the assignee 
is permitted to take action in the prosecution of an application for 
patent or reexamination proceeding.
    Section 3.71(c) defines the meaning of the term ``of record'' used 
in Sec. 3.71(b). An assignee is made of record in an application by 
filing a statement which is in compliance with Sec. 3.73(b). The 
statement must be signed by a party authorized to act on behalf of the 
assignee as defined in Sec. 3.73(b)(2). See also MPEP 324. Note that 
the assignee being made ``of record'' in an application is different 
from the recording of an assignment in the assignment records of the 
Office pursuant to Sec. 3.11. Recording in the assignment records is 
not sufficient to establish a new assignee in an individual application 
or reexamination proceeding; a Sec. 3.73(b) statement must be filed in 
the individual application or proceeding to establish the new assignee 
for that application or reexamination proceeding.
    Sections 3.71(a) through (c) have been drafted to allow for the 
situation where an assignee takes action in the prosecution of a 
reexamination proceeding (in addition to that where a patent 
application is involved). In a reexamination proceeding, the assignee 
must have the entire right, title and interest in the patent upon which 
reexamination is based.
    Section 3.71(d), concerning trademarks, expands the list of actions 
an assignee may take or request. Specifically, an assignee may also 
rely on its Federal trademark application or registration when filing 
papers against a third party. This subsection also corrects the 
inappropriate use of the term ``prosecution'' when referring to 
maintaining a registered trademark.
    In various places in Sec. 3.71, ``national'' has been added before 
``application.'' Section 3.71 is directed to national applications as 
defined in Sec. 1.9(a)(1) and not to international (PCT) applications. 
In an international (PCT) application the assignee is often the 
applicant for some, or all, of the designated states (except the U.S.) 
and may control prosecution as the applicant. Section 3.71 would apply 
to international applications after entry into the U.S. national stage 
under 35 U.S.C. 371.
    Section 3.73: Section 3.73(a), the second sentence is revised to 
include a trademark registration, in addition to a trademark 
application which is currently recited. The sentence has been revised 
to read: ``The original applicant is presumed to be the owner of a 
trademark application or registration, unless there is an assignment.''
    Section 3.73(b) is revised for clarity and paragraph formatting, 
creating Secs. 3.73(b)(1) and (b)(2). Section 3.73(b)(1) clarifies that 
the statement establishing ownership must explicitly identify the 
assignee (by adding the language ``a signed statement identifying the 
assignee''). Section 3.73(b)(1) makes it clear that while the 
submission establishing ownership is separate from, and in addition to, 
the specific action taken by the assignee (e.g., appointing a new 
attorney), the two may be presented together as part of the same paper. 
This clarification has been effected by adding ``The establishment of 
ownership by the assignee may be combined with the paper that requests 
or takes the action.''
    Previously, Sec. 3.73(b) required that the submission (statement) 
establishing ownership ``must be signed by a party authorized to act on 
behalf of the assignee.'' Section 3.73(b)(2) now clarifies what is 
acceptable to show that the party signing the submission is authorized 
to act on behalf of the

[[Page 54653]]

assignee. The submission could include a statement that the party 
signing the submission is authorized to act on behalf of the assignee, 
pursuant to Sec. 3.73(b)(2)(i). Alternatively, the submission could be 
signed by a person having apparent authority to sign on behalf of the 
assignee, e.g., an officer of the assignee, pursuant to 
Sec. 3.73(b)(2)(ii).
    In the first case, the statement that the party signing the 
submission is authorized to act on behalf of the assignee could be an 
actual statement included in the text of the submission that the 
signing person ``is authorized to act on behalf of the assignee.'' 
Alternatively, it could be in the form of a resolution by the 
organization or business entity owning the property (e.g., a corporate 
resolution, a partnership resolution) included with the submission.
    In the second case, the title of the person signing must be given 
in the submission, or in some other paper of record, and it must be a 
title which empowers the person to act on behalf of the assignee. The 
president, vice-president, secretary, treasurer, and chairman of the 
board of directors are presumed to have authority to act on behalf of 
the organization. Modifications of these basic titles are acceptable, 
such as vice-president for sales, executive vice-president, assistant 
treasurer, vice-chairman of the board of directors. A title such as 
manager, director, administrator, or general counsel does not clearly 
set forth that the person is an officer of the organization, and as 
such, does not provide a presumption of authority to sign the statement 
on behalf of the assignee. A power of attorney from the inventors or 
the assignee to a practitioner to prosecute an application does not 
make that practitioner an official of an assignee and does not empower 
that practitioner to sign the statement on behalf of the assignee.
    New Sec. 3.73(c)(1) requires that the submission establishing 
ownership by the assignee must be submitted prior to, or at the same 
time, as the paper requesting or taking action is submitted. If the 
submission establishing ownership is not present, the action sought to 
be taken will not be given effect. If the submission establishing 
ownership is submitted at a later date, that date will be the date of 
the request for action or action taken.
    New Sec. 3.73(c)(2) points out that for patents, if an assignee of 
less than the entire right, title and interest (i.e., a partial 
assignee) fails to indicate in the submission the extent (e.g., by 
percentage) of its ownership interest, the Office may refuse to accept 
the submission as an establishment of ownership.
    Section 3.81: Section 3.81 was proposed to be amended to eliminate 
entirely the provisions of Sec. 3.81(b), which provide a petition 
remedy to have the patent issue to the assignee where a petition for 
such issuance is submitted after the date of payment of the issue fee. 
The Office is not proceeding with this proposal in this final rule but 
it is eliminating the requirement for a petition.
    Section 3.81 has been amended to reformat the section by removing 
material from Sec. 3.81(a) relating to partial assignees and placing it 
in new Sec. 3.81(c) that applies to both Secs. 3.81(a) and (b). Titles 
for Secs. 3.81(a) through (c) have been added.
    Section 3.81 has been amended to permit proof of the application's 
assignment to be submitted with or after the payment of the issue fee 
so that a patent may issue in the name(s) of the assignee(s) consistent 
with the application's assignment. The need for a petition after the 
issue fee has been paid has been eliminated as the Office intends to 
comply with requests to issue patents in the names of assignee(s). 
Obviously, the extent to which the Office can comply with such requests 
will depend upon the time frames of when the request is filed, the time 
it takes to match the request with the file, and when the application 
is due to issue as a patent.
    Section 3.81 formerly required that the assignment had to have been 
recorded among the Office's assignment records before a patent could be 
issued to the assignee(s). An applicant could comply with this 
requirement by submitting the assignment along with directions to 
record it among the Office's assignment records at the same time that 
the issue fee and the PTOL-85B form are filed. Revised Sec. 3.81 now 
provides another option. It is now permitted to rely on a Sec. 3.73(b) 
statement, which would require that a copy of the assignment be 
supplied but the assignment would not have to be recorded. Thus, if the 
assignment is already recorded in the Office, applicant would probably 
not choose the Sec. 3.73(b) option. Where the Sec. 3.73(b) option is 
chosen, reliance may be had on a Sec. 3.73(b) statement previously made 
of record in the application (if the statement is still accurate at the 
time the request is filed), or the Sec. 3.73(b) statement may be filed 
with the issue fee and the PTOL-85B filing.
    This amendment is consistent with current practice under Secs. 3.71 
and 3.73 for other matters, where a statement rather than a recording 
is required. Adding the option of relying on a Sec. 3.73(b) statement 
and the elimination of the ``petition'' requirement should result in 
faster processing of Sec. 3.81 requests by the Office of Patent 
Publications, particularly as a separate assignment paper, if submitted 
at the time the issue fee is paid, would not need to be sent to 
Assignment Division for recording.

Part 5

    Section 5.1: Section 5.1 is amended to locate its current text in 
Sec. 5.1(a), and to remove the term ``Assistant'' in the title of the 
Office official who should be the addressee.
    Section 5.1 is also amended to add a Sec. 5.1(b) to clarify that 
``application'' as used in Part 5 includes provisional applications 
filed under 35 U.S.C. 111(b) (Sec. 1.9(a)(2)), nonprovisional 
applications filed under 35 U.S.C. 111(a) or entering the national 
stage from an international application after compliance with 35 U.S.C. 
371 (Sec. 1.9(a)(3)), or international applications filed under the 
Patent Cooperation Treaty prior to entering the national stage of 
processing (Sec. 1.9(b)).
    Section 5.1 is also amended to add a Sec. 5.1(c) to state current 
practice that: (1) Patent applications and documents relating thereto 
that are national security classified (see Sec. 1.9(i)) and contain 
authorized national security markings (e.g., ``Confidential,'' 
``Secret'' or ``Top Secret'') are accepted by the Office; and (2) 
national security classified documents filed in the Office must be 
either hand-carried to Licensing and Review or mailed to the Office in 
compliance with Sec. 5.1(a).
    Section 5.1 is also amended to add a Sec. 5.1(d) to provide that: 
(1) The applicant in a national security classified patent application 
must obtain a secrecy order pursuant to Sec. 5.2(a); (2) if a national 
security classified patent application is filed without a notification 
pursuant to Sec. 5.2(a), the Office will set a time period within which 
either the application must be declassified, or the application must be 
placed under a secrecy order pursuant to Sec. 5.2(a), or the applicant 
must submit evidence of a good faith effort to obtain a secrecy order 
pursuant to Sec. 5.2(a) from the relevant department or agency in order 
to prevent abandonment of the application; and (3) if evidence of a 
good faith effort to obtain a secrecy order pursuant to Sec. 5.2(a) 
from the relevant department or agency is submitted by the applicant 
within the time period set by the Office, but the application has not 
been declassified or placed under a secrecy order pursuant to 
Sec. 5.2(a), the Office

[[Page 54654]]

will again set a time period within which either the application must 
be declassified, or the application must be placed under a secrecy 
order pursuant to Sec. 5.2(a), or the applicant must submit evidence of 
a good faith effort to again obtain a secrecy order pursuant to 
Sec. 5.2(a) from the relevant department or agency in order to prevent 
abandonment of the application. Section 5.1(d) sets forth the treatment 
of national security classified applications that is currently set 
forth in MPEP 130.
    Section 5.1 is also amended to add a Sec. 5.1(e) to provide that a 
national security classified patent application will not be allowed 
pursuant to Sec. 1.311 of this chapter until the application is 
declassified and any secrecy order pursuant to Sec. 5.2(a) has been 
rescinded.
    Section 5.1 is also amended to add a Sec. 5.1(f) to clarify that 
applications on inventions not made in the United States and on 
inventions in which a U.S. Government defense agency has a property 
interest will not be made available to defense agencies.
    Section 5.2: Section 5.2(c) is added to provide that: (1) An 
application disclosing any significant part of the subject matter of an 
application under a secrecy order pursuant to Sec. 5.2(a) also falls 
within the scope of such secrecy order; (2) any such application that 
is pending before the Office must be promptly brought to the attention 
of Licensing and Review, unless such application is itself under a 
secrecy order pursuant to Sec. 5.2(a); and (3) any subsequently filed 
application containing any significant part of the subject matter of an 
application under a secrecy order pursuant to Sec. 5.2(a) must either 
be hand-carried to Licensing and Review or mailed to the Office in 
compliance with Sec. 5.1(a).
    Section 5.12: Section 5.12(b) is amended to require that the fee 
set forth in Sec. 1.17(h) is required for any petition under Sec. 5.12 
for a foreign filing license. As a practical matter, all petitions 
under Sec. 5.12 are treated on an expedited basis. Therefore, it is 
appropriate to require the fee set forth in Sec. 1.17(h) for all 
petitions under Sec. 5.12.

Part 10

    The title has been amended to reflect the name change of the Office 
by the addition of ``United States.''
    Section 10.23: Section 10.23(c)(11) is amended to add the phrase 
``[e]xcept as permitted by Sec. 1.52(c)'' for consistency with the 
amendment to Sec. 1.52(c).

Classification

    Administrative Procedure Act: The change to Sec. 1.181 was not 
included in the Notice of Proposed Rulemaking. This change to the rules 
of practice simply sets a time period within which any petition must be 
filed to avoid being dismissed as untimely. Therefore, this change 
concerns only rules of Office procedure, and prior notice and an 
opportunity for public comment for this change is not required pursuant 
to 5 U.S.C. 553(b)(A), or any other law. In addition, pursuant to the 
authority at 5 U.S.C. 553(d)(1), the changes to Secs. 1.27, 1.78, 
1.131, 1.132, 1.137, 1.152, 1.155, 1.324, 1.366, 1.740, and 1.760, and 
the removal of Sec. 1.44, may be made effective immediately because 
they relieve restrictions in the rules of practice.
    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)). In furtherance of the Patent Business Goals, the Office 
is proposing changes to the rules of practice to eliminate unnecessary 
formal requirements, streamline the patent application process, and 
simplify and clarify procedures. In streamlining this process, the 
Office will be able to issue a patent in a shorter time by eliminating 
formal requirements that must be performed by the applicant, his or her 
representatives and the Office. All applicants will benefit from a 
reduced overall cost to them for receiving patent protection and from a 
faster receipt of their patents. In addition, small entities will 
benefit from the proposed changes to the requirements for establishing 
small entity status under Sec. 1.27 for purposes of paying reduced 
patent fees under 35 U.S.C. 41(h). The currently used small entity 
statement forms are proposed to be eliminated. Small entity status 
would be established at any time by a simple assertion of entitlement 
to small entity status. A simpler procedure to establish small entity 
status would reduce processing time with the Office and would be a 
benefit to small entity applicants as it would eliminate the time-
consuming and aggravating processing requirements that are mandated by 
the former rules.
    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: 
0651-0016, 0651-0020, 0651-0021, 0651-0022, 0651-0024, 0651-0027, 0651-
0031, 0651-0032, 0651-0033, 0651-0034, and 0651-0035.
    As required by the Paperwork Reduction Act of 1995 (44 U.S.C. 
3507(d)), the United States Patent and Trademark Office submitted an 
information collection package to OMB for its review and approval of 
the proposed information collections under OMB control numbers 0651-
0031, 0651-0032, and 0651-0035. The Office submitted these information 
collections to OMB for its review and approval because the following 
changes in this final rule affect the information collection 
requirements associated with the information collections under OMB 
control numbers 0651-0031, 0651-0032, and 0651-0035: (1) The change to 
Sec. 1.27 and permits an applicant to establish small entity status in 
an application by a simple assertion of entitlement to small entity 
status (without a statement having a formalistic reference to Sec. 1.9 
or a standard form (PTO/SB/09/10/11/12)); (2) the change to Secs. 1.55, 
1.63 and 1.78 eliminates the need for an applicant using the 
application data sheet (Sec. 1.76) to provide priority claims in the 
oath or declaration or specification; (3) the change to Sec. 1.96 
requires applicants to submit lengthy computer listings on a CD-ROM or 
CD-R (rather than microfiche); (4) the change to Secs. 1.821, 1.823, 
and 1.825 permits applicants to submit sequence listings on a CD-ROM or 
CD-R (rather than paper); and (5) the change to Sec. 1.155 allows an 
applicant to seek expedited examination of a design application by 
filing a request for expedited examination.
    As discussed above, this final rule also involves currently 
approved information collections under OMB control numbers: 0651-0016, 
0651-0020, 0651-0021, 0651-0022, 0651-0024, 0651-0027, 0651-0033, 0651-
0034, and 0651-0037. The Office did not resubmit information collection 
packages to OMB for its review and approval of these information 
collections because the changes in this final rule do not affect the 
information collection requirements associated with the information 
collections under these OMB control numbers.

[[Page 54655]]

    The title, description and respondent description of each of the 
information collections are shown below with an estimate of each of the 
annual reporting burdens. Included in each estimate is the time for 
reviewing instructions, gathering and maintaining the data needed, and 
completing and reviewing the collection of information. The principal 
impact of the changes in this final rule is to raise the efficiency and 
effectiveness of the Office's business processes to make the Office a 
more business-like agency and increase the level of the Office's 
service to the public.
    OMB Number: 0651-0016.
    Title: Rules for Patent Maintenance Fees.
    Form Numbers: PTO/SB/45/47/65/66.
    Type of Review: Approved through December of 2002.
    Affected Public: Individuals or Households, Business or Other For-
Profit, Not-For-Profit Institutions and Federal Government.
    Estimated Number of Respondents: 326,101.
    Estimated Time Per Response: 0.08 hour.
    Estimated Total Annual Burden Hours: 26,099 hours.
    Needs and Uses: Maintenance fees are required to maintain a patent, 
except for design or plant patents, in force under 35 U.S.C. 41(b). 
Payment of maintenance fees are required at 3\1/2\, 7\1/2\ and 11\1/2\ 
years after the grant of the patent. A patent number and application 
number of the patent on which maintenance fees are paid are required in 
order to ensure proper crediting of such payments.

    OMB Number: 0651-0020.
    Title: Patent Term Extension.
    Form Numbers: None.
    Type of Review: Approved through September of 2001.
    Affected Public: Individuals or Households, Businesses or Other 
For-Profit, Not-For-Profit Institutions, Farms, Federal Government, and 
State, Local, or Tribal Governments.
    Estimated Number of Respondents: 57.
    Estimated Time Per Response: 22.8 hours.
    Estimated Total Annual Burden Hours: 1,302 hours.
    Needs and Uses: The information supplied to the Office by an 
applicant seeking a patent term extension is used by the Office, the 
Department of Health and Human Services, and the Department of 
Agriculture to determine the eligibility of a patent for extension and 
to determine the period of any such extension. The applicant can apply 
for patent term and interim extensions, petition the Office to review 
final eligibility decisions, and withdraw patent term extensions. If 
there are multiple patents, the applicant can designate which patents 
should be extended. An applicant can also declare their eligibility to 
apply for a patent term extension.

    OMB Number: 0651-0021.
    Title: Patent Cooperation Treaty.
    Form Numbers: PCT/RO/101,ANNEX/134/144, PTO-1382, PCT/IPEA/401, 
PCT/IB/328.
    Type of Review: Approved through August of 2000.
    Affected Public: Individuals or Households, Business or Other For-
Profit, Federal Agencies or Employees, Not-for-Profit Institutions, 
Small Businesses or Organizations.
    Estimated Number of Respondents: 102,950.
    Estimated Time Per Response: 0.9538 hour.
    Estimated Total Annual Burden Hours: 98,195 hours.
    Needs and Uses: The information collected is required by the Patent 
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify 
the filing of patent applications on the same invention in different 
countries. It provides for a centralized filing procedure and a 
standardized application format.

    OMB Number: 0651-0022.
    Title: Deposit of Biological Materials for Patent Purposes.
    Form Numbers: None.
    Type of Review: Approved through December of 2000.
    Affected Public: Individuals or Households, State or Local 
Governments, Farms, Business or Other For-Profit, Federal Agencies or 
Employees, Not-for-Profit Institutions, Small Businesses or 
Organizations.
    Estimated Number of Respondents: 3,300.
    Estimated Time Per Response: 1.0 hour.
    Estimated Total Annual Burden Hours: 3,300 hours.
    Needs and Uses: Information on depositing of biological materials 
in depositories is required for (1) Office determination of compliance 
with the patent statute where the invention sought to be patented 
relies on biological material subject to deposit requirement, which 
includes notifying interested members of the public where to obtain 
samples of deposits, and (2) depositories desiring to be recognized as 
suitable by the Office.

    OMB Number: 0651-0024.
    Title: Requirements for Patent Applications Containing Nucleotide 
Sequence and/or Amino Acid Sequence Disclosures.
    Form Numbers: None.
    Type of Review: Approved through November of 1999. Resubmitted on 
April 6, 2000.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions, and Federal 
Government.
    Estimated Number of Respondents: 4,600.
    Estimated Time Per Response: 1.33 hours.
    Estimated Total Annual Burden Hours: 6,133 hours.
    Needs and Uses: This information is used by the Office during the 
examination process, the public and the patent bar. The Patent and 
Trademark Office also participates with the EPO and JPO in a Trilateral 
Sequence Exchange project to facilitate the international exchange of 
published sequence data.

    OMB Number: 0651-0027.
    Title: Changes in Patent and Trademark Assignment Practices.
    Form Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41.
    Type of Review: Approved through May of 2002.
    Affected Public: Individuals or Households and Businesses or Other 
For-Profit 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.
    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

[[Page 54656]]

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.

    OMB Number: 0651-0035.
    Title: Address-Affecting Provisions.
    Form Numbers: PTO/SB/81-84/121-125.
    Type of Review: Approved through October of 2002.
    Affected Public: Individuals or Households, Business or Other For-
Profit, Not-For-Profit Institutions and Federal Government.
    Estimated Number of Respondents: 263,520.
    Estimated Time Per Response: 0.05 hour.
    Estimated Total Annual Burden Hours: 13,386 hours.
    Needs and Uses: Under existing law, a patent applicant or assignee 
may appoint, revoke or change a representative to act in a 
representative capacity. Also, an appointed representative may withdraw 
from acting in a representative capacity. This collection includes the 
information needed to ensure that Office correspondence reaches the 
appropriate individual.
    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, Office of Patent Legal 
Administration, United States Patent and Trademark Office, Washington, 
D.C. 20231, or to the Office of Information and Regulatory Affairs, 
Office of Management and Budget, 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 3

    Administrative practice and procedure, Inventions and patents, 
Reporting and recordkeeping requirements.

37 CFR Part 5

    Classified information, Foreign relations, Inventions and patents.

37 CFR Part 10

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.


    For the reasons set forth in the preamble, 37 CFR parts 1, 3, 5, 
and 10 are amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).


    2. Section 1.4 is amended by revising paragraphs (b) and (c) to 
read as follows:


Sec. 1.4  Nature of correspondence and signature requirements.

* * * * *
    (b) Since each file must be complete in itself, a separate copy of 
every paper to be filed in a patent or trademark

[[Page 54657]]

application, patent file, trademark registration file, or other 
proceeding must be furnished for each file to which the paper pertains, 
even though the contents of the papers filed in two or more files may 
be identical. The filing of duplicate copies of correspondence in the 
file of an application, patent, trademark registration file, or other 
proceeding should be avoided, except in situations in which the Office 
requires the filing of duplicate copies. The Office may dispose of 
duplicate copies of correspondence in the file of an application, 
patent, trademark registration file, or other proceeding.
    (c) Since different matters may be considered by different branches 
or sections of the United States Patent and Trademark Office, each 
distinct subject, inquiry or order must be contained in a separate 
paper to avoid confusion and delay in answering papers dealing with 
different subjects.
* * * * *

    3. Section 1.6 is amended by revising paragraph (d)(9) to read as 
follows:


Sec. 1.6  Receipt of correspondence.

* * * * *
    (d) * * *
    (9) Correspondence to be filed in an interference proceeding which 
consists of a preliminary statement under Sec. 1.621; a transcript of a 
deposition under Sec. 1.676 or of interrogatories, or cross-
interrogatories; or an evidentiary record and exhibits under 
Sec. 1.653.
* * * * *

    4. Section 1.9 is amended by removing and reserving paragraphs (c) 
through (f), and adding a new paragraph (i) to read as follows:


Sec. 1.9  Definitions.

* * * * *
    (i) National security classified as used in this chapter means 
specifically authorized under criteria established by an Act of 
Congress or Executive Order to be kept secret in the interest of 
national defense or foreign policy and, in fact, properly classified 
pursuant to such Act of Congress or Executive Order.
* * * * *

    5. Section 1.12 is amended by revising paragraph (c)(1) to read as 
follows:


Sec. 1.12  Assignment records open to public inspection.

* * * * *
    (c) * * *
    (1) Be in the form of a petition including the fee set forth in 
Sec. 1.17(h); or
* * * * *

    6. Section 1.14 is revised to read as follows:


Sec. 1.14  Patent applications preserved in confidence.

    (a) Confidentiality of patent application information. Patent 
applications are generally preserved in confidence pursuant to 35 
U.S.C. 122. Information concerning the filing, pendency, or subject 
matter of an application for patent, including status information, and 
access to the application, will only be given to the public as set 
forth in Sec. 1.11 or in this section.
    (1) Status information is:
    (i) Whether the application is pending, abandoned, or patented; and
    (ii) The application ``numerical identifier'' which may be:
    (A) The eight digit application number (the two digit series code 
plus the six digit serial number); or
    (B) The six digit serial number and either the filing date of the 
national application, the international filing date, or the date of 
entry into the national stage.
    (2) Access is defined as providing the application file for review 
and copying of any material.
    (b) When status information may be supplied. Status information of 
an application may be supplied by the Office to the public if any of 
the following apply:
    (1) Access to the application is available pursuant to paragraph 
(e) of this section;
    (2) The application is referred to by its numerical identifier in a 
published patent document (e.g., a U.S. patent or a foreign application 
or patent publication) or in a U.S. application open to public 
inspection (Sec. 1.11(b) or paragraph (e)(2)(i) of this section); or
    (3) The application is a published international application in 
which the United States of America has been indicated as a designated 
state.
    (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) Copy of application-as-filed. If a U.S. patent incorporates by 
reference a pending or abandoned application, a copy of that 
application-as-filed may be provided to any person upon written request 
accompanied by the fee set forth in Sec. 1.19(b)(1).
    (d) Power to inspect a pending or abandoned application. Access to 
an application may be provided to any person if the application file is 
available, and the application contains written authority (e.g., a 
power to inspect) granting access to such person. The written authority 
must be signed by:
    (1) An applicant;
    (2) An attorney or agent of record;
    (3) An authorized official of an assignee of record (made of record 
pursuant to Sec. 3.71 of this chapter); or
    (4) A registered attorney or agent named in the papers accompanying 
the application papers filed under Sec. 1.53 or the national stage 
documents filed under Sec. 1.494 or Sec. 1.495, if an executed oath or 
declaration pursuant to Sec. 1.63 or Sec. 1.497 has not been filed.
    (e) Public access to a pending or abandoned application. Access to 
an application may be provided to any person if a written request for 
access is submitted, the application file is available, and any of the 
following apply:
    (1) The application is open to public inspection pursuant to 
Sec. 1.11(b); or
    (2) The application is abandoned, it is not within the file jacket 
of a pending application under Sec. 1.53(d), and it is referred to:
    (i) In a U.S. patent; or
    (ii) In another U.S. application which is open to public inspection 
either pursuant to Sec. 1.11(b) or paragraph (e)(2)(i) of this section.
    (f) Applications reported to Department of Energy. Applications for 
patents which appear to disclose, purport to disclose or do disclose 
inventions or discoveries relating to atomic energy are reported to the 
Department of Energy, which Department will be given access to the 
applications. Such reporting does not constitute a determination that 
the subject matter of each application so reported is in fact useful or 
is an invention or discovery, or that such application in fact 
discloses subject matter in categories specified by 42 U.S.C. 2181(c) 
and (d).
    (g) Decisions by the Commissioner or the Board of Patent Appeals 
and Interferences. Any decision by the Commissioner or the Board of 
Patent Appeals and Interferences which would not otherwise be open to 
public inspection may be published or made available for public 
inspection if:
    (1) The Commissioner believes the decision involves an 
interpretation of patent laws or regulations that would be of 
precedential value; and
    (2) The applicant, or a party involved in an interference for which 
a decision was rendered, is given notice and an opportunity to object 
in writing within two months on the ground that the decision discloses 
a trade secret or other confidential information. Any objection must 
identify the deletions in the text of

[[Page 54658]]

the decision considered necessary to protect the information, or 
explain why the entire decision must be withheld from the public to 
protect such information. An applicant or party will be given time, not 
less than twenty days, to request reconsideration and seek court review 
before any portions of a decision are made public under this paragraph 
over his or her objection.
    (h) Publication pursuant to Sec. 1.47. Information as to the filing 
of an application will be published in the Official Gazette in 
accordance with Secs. 1.47(a) and (b).
    (i) International applications. Copies of an application file for 
which the United States acted as the International Preliminary 
Examining Authority, or copies of a document in such an application 
file, will be furnished in accordance with Patent Cooperation Treaty 
(PCT) Rule 94.2 or 94.3, upon payment of the appropriate fee 
(Sec. 1.19(b)(2) or Sec. 1.19(b)(3)).
    (j) Access or copies in other circumstances. The Office, either sua 
sponte or on petition, may also provide access or copies of an 
application if necessary to carry out an Act of Congress or if 
warranted by other special circumstances. Any petition by a member of 
the public seeking access to, or copies of, any pending or abandoned 
application preserved in confidence pursuant to paragraph (a) of this 
section, or any related papers, must include:
    (1) The fee set forth in Sec. 1.17(h); and
    (2) A showing that access to the application is necessary to carry 
out an Act of Congress or that special circumstances exist which 
warrant petitioner being granted access to the application.

    7. Section 1.17 is amended by revising paragraphs (h), (i), (k), 
(l), (m), (p), and (q) to read as follows:


Sec. 1.17  Patent application processing fees.

* * * * *
    (h) For filing a petition to the Commissioner under one of the 
following sections which refers to this paragraph--$130.00

Sec. 1.12--for access to an assignment record.
Sec. 1.14--for access to an application.
Sec. 1.47--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 an application.
Sec. 1.182--for decision on a question not specifically provided 
for.
Sec. 1.183--to suspend the rules.
Sec. 1.295--for review of refusal to publish a statutory invention 
registration.
Sec. 1.313--to withdraw an application from issue.
Sec. 1.314--to defer issuance of a patent.
Sec. 1.377--for review of decision refusing to accept and record 
payment of a maintenance fee filed prior to expiration of a patent.
Sec. 1.378(e)--for reconsideration of decision on petition refusing 
to accept delayed payment of maintenance fee in an expired patent.
Sec. 1.644(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 an 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 a 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. 1.53(c)(3)--to convert a provisional application filed under 
Sec. 1.53(c) to a nonprovisional application under Sec. 1.53(b).
Sec. 1.55--for entry of late priority papers.
Sec. 1.103(b)--for requesting limited suspension of action in 
continued prosecution application (Sec. 1.53(d)).
Sec. 1.103(c)--for requesting limited suspension of action after a 
request for continued examination (Sec. 1.114).
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.
Sec. 3.81--for a patent to issue to assignee, assignment submitted 
after payment of the issue fee.
* * * * *
    (k) For filing a request for expedited examination under 
Sec. 1.155(a)--$900.00
    (l) For filing a petition for the revival of an unavoidably 
abandoned application under 35 U.S.C. 111, 133, 364, or 371, or the 
unavoidably delayed payment of the issue fee under 35 U.S.C. 151 
(Sec. 1.137(a)):

By a small entity (Sec. 1.27(a))--$55.00
By other than a small entity--$110.00

    (m) For filing a petition for the revival of an unintentionally 
abandoned application or the unintentionally delayed payment of the 
issue fee under 35 U.S.C. 41(a)(7) (Sec. 1.137(b)):

By a small entity (Sec. 1.27(a))--$620.00
By other than a small entity--$1,240.00
* * * * *
    (p) For submission of an information disclosure statement under 
Sec. 1.97(c) and (d)--$180.00
    (q) Processing fee for taking action under one of the following 
sections which refers to this paragraph--$50.00

Sec. 1.41--to supply the name or names of the inventor or inventors 
after the filing date without a cover sheet as prescribed by 
Sec. 1.51(c)(1) in a provisional application.
Sec. 1.48--for correction of inventorship in a provisional 
application.
Sec. 1.53(c)(2)--to convert a nonprovisional application filed under 
Sec. 1.53(b) to a provisional application under Sec. 1.53(c).
* * * * *

    8. Section 1.19 is amended by revising its introductory text and 
paragraphs (a) and (b) and removing and reserving paragraphs (g) and 
(h) to read as follows:


Sec. 1.19  Document supply fees.

    The United States Patent and Trademark Office will supply copies of 
the following documents upon payment of the fees indicated. The copies 
will be in black and white unless the original document is in color, a 
color copy is requested and the fee for a color copy is paid.
    (a) Uncertified copies of patents:
    (1) Printed copy of the paper portion of a patent, including a 
design patent, statutory invention registration, or defensive 
publication document:
    (i) Regular service--$3.00
    (ii) Overnight delivery to Office Box or overnight facsimile--$6.00
    (iii) Expedited service for copy ordered by expedited mail or 
facsimile delivery service and delivered to the customer within two 
workdays--$25.00
    (2) Printed copy of a plant patent in color--$15.00
    (3) Color copy of a patent (other than a plant patent) or statutory 
invention registration containing a color drawing--$25.00
    (b) Certified and uncertified copies of Office documents:
    (1) Certified or uncertified copy of the paper portion of patent 
application as filed:
    (i) Regular service--$15.00
    (ii) Expedited regular service--$30.00
    (2) Certified or uncertified copy of paper portion of patent-
related file wrapper and contents:
    (i) File wrapper and paper contents of 400 or fewer pages--$200.00

[[Page 54659]]

    (ii) Additional fee for each additional 100 pages or portion 
thereof--$40.00
    (iii) Additional fee for certification--$25.00
    (3) Certified or uncertified copy on compact disc of patent-related 
file-wrapper contents that were submitted on compact disc:
    (i) First compact disc in a single order--$55.00
    (ii) Each additional compact disc in the single order of paragraph 
(b)(3)(i) of this section--$15.00
    (4) Certified or uncertified copy of Office records, per document 
except as otherwise provided in this section--$25.00
    (5) For assignment records, abstract of title and certification, 
per patent--$25.00
* * * * *

    9. Section 1.22 is amended by revising paragraph (b) to read as 
follows:


Sec. 1.22  Fee payable in advance.

* * * * *
    (b) All fees paid to the United States Patent and Trademark Office 
must be itemized in each individual application, patent, trademark 
registration file, or other proceeding in such a manner that it is 
clear for which purpose the fees are paid. The Office may return fees 
that are not itemized as required by this paragraph. The provisions of 
Sec. 1.5(a) do not apply to the resubmission of fees returned pursuant 
to this paragraph.
* * * * *

    10. Section 1.25 is amended by revising paragraph (b) to read as 
follows:


Sec. 1.25  Deposit accounts.

* * * * *
    (b) Filing, issue, appeal, international-type search report, 
international application processing, petition, and post-issuance fees 
may be charged against these accounts if sufficient funds are on 
deposit to cover such fees. A general authorization to charge all fees, 
or only certain fees, set forth in Sec. 1.16 to Sec. 1.18 to a deposit 
account containing sufficient funds may be filed in an individual 
application, either for the entire pendency of the application or with 
respect to a particular paper filed. An authorization to charge a fee 
to a deposit account will not be considered payment of the fee on the 
date the authorization to charge the fee is effective as to the 
particular fee to be charged unless sufficient funds are present in the 
account to cover the fee. An authorization to charge fees under 
Sec. 1.16 in an application filed under 35 U.S.C. 371 will be treated 
as an authorization to charge fees under Sec. 1.492. An authorization 
to charge fees set forth in Sec. 1.18 to a deposit account is subject 
to the provisions of Sec. 1.311(b). An authorization to charge to a 
deposit account the fee for a request for reexamination pursuant to 
Sec. 1.510 and any other fees required in a reexamination proceeding in 
a patent may also be filed with the request for reexamination.
* * * * *

    11. Section 1.26 is amended by revising paragraph (a) and adding 
paragraph (b) to read as follows:


Sec. 1.26  Refunds.

    (a) The Commissioner may refund any fee paid by mistake or in 
excess of that required. A change of purpose after the payment of a 
fee, such as when a party desires to withdraw a patent or trademark 
filing for which the fee was paid, including an application, an appeal, 
or a request for an oral hearing, will not entitle a party to a refund 
of such fee. The Office will not refund amounts of twenty-five dollars 
or less unless a refund is specifically requested, and will not notify 
the payor of such amounts. If a party paying a fee or requesting a 
refund does not provide the banking information necessary for making 
refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 
208), or instruct the Office that refunds are to be credited to a 
deposit account, the Commissioner may require such information, or use 
the banking information on the payment instrument to make a refund. Any 
refund of a fee paid by credit card will be by a credit to the credit 
card account to which the fee was charged.
    (b) Any request for refund must be filed within two years from the 
date the fee was paid, except as otherwise provided in this paragraph 
or in Sec. 1.28(a). If the Office charges a deposit account by an 
amount other than an amount specifically indicated in an authorization 
(Sec. 1.25(b)), any request for refund based upon such charge must be 
filed within two years from the date of the deposit account statement 
indicating such charge, and include a copy of that deposit account 
statement. The time periods set forth in this paragraph are not 
extendable.
* * * * *

    12. Section 1.27 is revised to read as follows:


Sec. 1.27  Definition of small entities and establishing status as a 
small entity to permit payment of small entity fees; when a 
determination of entitlement to small entity status and notification of 
loss of entitlement to small entity status are required; fraud on the 
Office.

    (a) Definition of small entities. A small entity as used in this 
chapter means any party (person, small business concern, or nonprofit 
organization) under paragraphs (a)(1) through (a)(3) of this section.
    (1) Person. A person, as used in paragraph (c) of this section, 
means any inventor or other individual (e.g., an individual to whom an 
inventor has transferred some rights in the invention), who has not 
assigned, granted, conveyed, or licensed, and is under no obligation 
under contract or law to assign, grant, convey, or license, any rights 
in the invention. An inventor or other individual who has transferred 
some rights, or is under an obligation to transfer some rights in the 
invention to one or more parties, can also qualify for small entity 
status if all the parties who have had rights in the invention 
transferred to them also qualify for small entity status either as a 
person, small business concern, or nonprofit organization under this 
section.
    (2) Small business concern. A small business concern, as used in 
paragraph (c) of this section, means any business concern that:
    (i) Has not assigned, granted, conveyed, or licensed, and is under 
no obligation under contract or law to assign, grant, convey, or 
license, any rights in the invention to any person, concern, or 
organization which would not qualify for small entity status as a 
person, small business concern, or nonprofit organization.
    (ii) Meets the standards set forth in 13 CFR part 121 to be 
eligible for reduced patent fees. Questions related to standards for a 
small business concern may be directed to: Small Business 
Administration, Size Standards Staff, 409 Third Street, S.W., 
Washington, D.C. 20416.
    (3) Nonprofit Organization. A nonprofit organization, as used in 
paragraph (c) of this section, means any nonprofit organization that:
    (i) Has not assigned, granted, conveyed, or licensed, and is under 
no obligation under contract or law to assign, grant, convey, or 
license, any rights in the invention to any person, concern, or 
organization which would not qualify as a person, small business 
concern, or a nonprofit organization, and
    (ii) Is either:
    (A) A university or other institution of higher education located 
in any country;

[[Page 54660]]

    (B) An organization of the type described in section 501(c)(3) of 
the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from 
taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 
501(a));
    (C) Any nonprofit scientific or educational organization qualified 
under a nonprofit organization statute of a state of this country (35 
U.S.C. 201(i)); or
    (D) Any nonprofit organization located in a foreign country which 
would qualify as a nonprofit organization under paragraphs 
(a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it 
were located in this country.
    (4) License to a Federal agency. (i) For persons under paragraph 
(a)(1) of this section, a license to the Government resulting from a 
rights determination under Executive Order 10096 does not constitute a 
license so as to prohibit claiming small entity status.
    (ii) For small business concerns and nonprofit organizations under 
paragraphs (a)(2) and (a)(3) of this section, a license to a Federal 
agency resulting from a funding agreement with that agency pursuant to 
35 U.S.C. 202(c)(4) does not constitute a license for the purposes of 
paragraphs (a)(2)(i) and (a)(3)(i) of this section.
    (b) Establishment of small entity status permits payment of reduced 
fees. A small entity, as defined in paragraph (a) of this section, who 
has properly asserted entitlement to small entity status pursuant to 
paragraph (c) of this section will be accorded small entity status by 
the Office in the particular application or patent in which entitlement 
to small entity status was asserted. Establishment of small entity 
status allows the payment of certain reduced patent fees pursuant to 35 
U.S.C. 41(h).
    (c) Assertion of small entity status. Any party (person, small 
business concern or nonprofit organization) should make a 
determination, pursuant to paragraph (f) of this section, of 
entitlement to be accorded small entity status based on the definitions 
set forth in paragraph (a) of this section, and must, in order to 
establish small entity status for the purpose of paying small entity 
fees, actually make an assertion of entitlement to small entity status, 
in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, 
in the application or patent in which such small entity fees are to be 
paid.
    (1) Assertion by writing. Small entity status may be established by 
a written assertion of entitlement to small entity status. A written 
assertion must:
    (i) Be clearly identifiable;
    (ii) Be signed (see paragraph (c)(2) of this section); and
    (iii) Convey the concept of entitlement to small entity status, 
such as by stating that applicant is a small entity, or that small 
entity status is entitled to be asserted for the application or patent. 
While no specific words or wording are required to assert small entity 
status, the intent to assert small entity status must be clearly 
indicated in order to comply with the assertion requirement.
    (2) Parties who can sign and file the written assertion. The 
written assertion can be signed by:
    (i) One of the parties identified in Sec. 1.33(b) (e.g., an 
attorney or agent registered with the Office), Sec. 3.73(b) of this 
chapter notwithstanding, who can also file the written assertion;
    (ii) At least one of the individuals identified as an inventor 
(even though a Sec. 1.63 executed oath or declaration has not been 
submitted), notwithstanding Sec. 1.33(b)(4), who can also file the 
written assertion pursuant to the exception under Sec. 1.33(b) of this 
part; or
    (iii) An assignee of an undivided part interest, notwithstanding 
Secs. 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee 
cannot file the assertion without resort to a party identified under 
Sec. 1.33(b) of this part.
    (3) Assertion by payment of the small entity basic filing or basic 
national fee. The payment, by any party, of the exact amount of one of 
the small entity basic filing fees set forth in Secs. 1.16(a), (f), 
(g), (h), or (k), or one of the small entity basic national fees set 
forth in Secs. 1.492(a)(1), (a)(2), (a)(3), (a)(4), or (a)(5), will be 
treated as a written assertion of entitlement to small entity status 
even if the type of basic filing or basic national fee is inadvertently 
selected in error.
    (i) If the Office accords small entity status based on payment of a 
small entity basic filing or basic national fee under paragraph (c)(3) 
of this section that is not applicable to that application, any balance 
of the small entity fee that is applicable to that application will be 
due along with the appropriate surcharge set forth in Sec. 1.16(e), or 
Sec. 1.16(l).
    (ii) The payment of any small entity fee other than those set forth 
in paragraph (c)(3) of this section (whether in the exact fee amount or 
not) will not be treated as a written assertion of entitlement to small 
entity status and will not be sufficient to establish small entity 
status in an application or a patent.
    (4) Assertion required in related, continuing, and reissue 
applications. Status as a small entity must be specifically established 
by an assertion in each related, continuing and reissue application in 
which status is appropriate and desired. Status as a small entity in 
one application or patent does not affect the status of any other 
application or patent, regardless of the relationship of the 
applications or patents. The refiling of an application under Sec. 1.53 
as a continuation, divisional, or continuation-in-part application 
(including a continued prosecution application under Sec. 1.53(d)), or 
the filing of a reissue application, requires a new assertion as to 
continued entitlement to small entity status for the continuing or 
reissue application.
    (d) When small entity fees can be paid. Any fee, other than the 
small entity basic filing fees and the small entity national fees of 
paragraph (c)(3) of this section, can be paid in the small entity 
amount only if it is submitted with, or subsequent to, the submission 
of a written assertion of entitlement to small entity status, except 
when refunds are permitted by Sec. 1.28(a).
    (e) Only one assertion required. (1) An assertion of small entity 
status need only be filed once in an application or patent. Small 
entity status, once established, remains in effect until changed 
pursuant to paragraph (g)(1) of this section. Where an assignment of 
rights or an obligation to assign rights to other parties who are small 
entities occurs subsequent to an assertion of small entity status, a 
second assertion is not required.
    (2) Once small entity status is withdrawn pursuant to paragraph 
(g)(2) of this section, a new written assertion is required to again 
obtain small entity status.
    (f) Assertion requires a determination of entitlement to pay small 
entity fees. Prior to submitting an assertion of entitlement to small 
entity status in an application, including a related, continuing, or 
reissue application, a determination of such entitlement should be made 
pursuant to the requirements of paragraph (a) of this section. It 
should be determined that all parties holding rights in the invention 
qualify for small entity status. The Office will generally not question 
any assertion of small entity status that is made in accordance with 
the requirements of this section, but note paragraph (h) of this 
section.
    (g)(1) New determination of entitlement to small entity status is 
needed when issue and maintenance fees are due. Once status as a small 
entity has been established in an application or patent, fees as a 
small

[[Page 54661]]

entity may thereafter be paid in that application or patent without 
regard to a change in status until the issue fee is due or any 
maintenance fee is due.
    (2) Notification of loss of entitlement to small entity status is 
required when issue and maintenance fees are due. Notification of a 
loss of entitlement to small entity status must be filed in the 
application or patent prior to paying, or at the time of paying, the 
earliest of the issue fee or any maintenance fee due after the date on 
which status as a small entity as defined in paragraph (a) of this 
section is no longer appropriate. The notification that small entity 
status is no longer appropriate must be signed by a party identified in 
Sec. 1.33(b). Payment of a fee in other than the small entity amount is 
not sufficient notification that small entity status is no longer 
appropriate.
    (h) Fraud attempted or practiced on the Office.
    (1) Any attempt to fraudulently establish status as a small entity, 
or pay fees as a small entity, shall be considered as a fraud practiced 
or attempted on the Office.
    (2) Improperly, and with intent to deceive, establishing status as 
a small entity, or paying fees as a small entity, shall be considered 
as a fraud practiced or attempted on the Office.

    13. Section 1.28 is revised to read as follows:


Sec. 1.28  Refunds when small entity status is later established; how 
errors in small entity status are excused.

    (a) Refunds based on later establishment of small entity status. A 
refund pursuant to Sec. 1.26, based on establishment of small entity 
status, of a portion of fees timely paid in full prior to establishing 
status as a small entity may only be obtained if an assertion under 
Sec. 1.27(c) and a request for a refund of the excess amount are filed 
within three months of the date of the timely payment of the full fee. 
The three-month time period is not extendable under Sec. 1.136. Status 
as a small entity is waived for any fee by the failure to establish the 
status prior to paying, at the time of paying, or within three months 
of the date of payment of, the full fee.
    (b) Date of payment. (1) The three-month period for requesting a 
refund, pursuant to paragraph (a) of this section, starts on the date 
that a full fee has been paid;
    (2) The date when a deficiency payment is paid in full determines 
the amount of deficiency that is due, pursuant to paragraph (c) of this 
section.
    (c) How errors in small entity status are excused. If status as a 
small entity is established in good faith, and fees as a small entity 
are paid in good faith, in any application or patent, and it is later 
discovered that such status as a small entity was established in error, 
or that through error the Office was not notified of a loss of 
entitlement to small entity status as required by Sec. 1.27(g)(2), the 
error will be excused upon: compliance with the separate submission and 
itemization requirements of paragraphs (c)(1) and (c)(2) of this 
section, and the deficiency payment requirement of paragraph (c)(2) of 
this section:
    (1) Separate submission required for each application or patent. 
Any paper submitted under this paragraph must be limited to the 
deficiency payment (all fees paid in error), required by paragraph 
(c)(2) of this section, for one application or one patent. Where more 
than one application or patent is involved, separate submissions of 
deficiency payments (e.g., checks) and itemizations are required for 
each application or patent. See Sec. 1.4(b).
    (2) Payment of deficiency owed. The deficiency owed, resulting from 
the previous erroneous payment of small entity fees, must be paid.
    (i) Calculation of the deficiency owed. The deficiency owed for 
each previous fee erroneously paid as a small entity is the difference 
between the current fee amount (for other than a small entity) on the 
date the deficiency is paid in full and the amount of the previous 
erroneous (small entity) fee payment. The total deficiency payment owed 
is the sum of the individual deficiency owed amounts for each fee 
amount previously erroneously paid as a small entity. Where a fee paid 
in error as a small entity was subject to a fee decrease between the 
time the fee was paid in error and the time the deficiency is paid in 
full, the deficiency owed is equal to the amount (previously) paid in 
error;
    (ii) Itemization of the deficiency payment. An itemization of the 
total deficiency payment is required. The itemization must include the 
following information:
    (A) Each particular type of fee that was erroneously paid as a 
small entity, (e.g., basic statutory filing fee, two-month extension of 
time fee) along with the current fee amount for a non-small entity;
    (B) The small entity fee actually paid, and when. This will permit 
the Office to differentiate, for example, between two one-month 
extension of time fees erroneously paid as a small entity but on 
different dates;
    (C) The deficiency owed amount (for each fee erroneously paid); and
    (D) The total deficiency payment owed, which is the sum or total of 
the individual deficiency owed amounts set forth in paragraph 
(c)(2)(ii)(C) of this section.
    (3) Failure to comply with requirements. If the requirements of 
paragraphs (c)(1) and (c)(2) of this section are not complied with, 
such failure will either: be treated as an authorization for the Office 
to process the deficiency payment and charge the processing fee set 
forth in Sec. 1.17(i), or result in a requirement for compliance within 
a one-month non-extendable time period under Sec. 1.136(a) to avoid the 
return of the fee deficiency paper, at the option of the Office.
    (d) Payment of deficiency operates as notification of loss of 
status. Any deficiency payment (based on a previous erroneous payment 
of a small entity fee) submitted under paragraph (c) of this section 
will be treated under Sec. 1.27(g)(2) as a notification of a loss of 
entitlement to small entity status.

    14. Section 1.33 is amended by revising paragraphs (a) and (b) to 
read as follows:


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

    (a) Correspondence address and daytime telephone number. When 
filing an application, a correspondence address must be set forth in 
either an application data sheet (Sec. 1.76), or elsewhere, in a 
clearly identifiable manner, in any paper submitted with an application 
filing. If no correspondence address is specified, the Office may treat 
the mailing address of the first named inventor (if provided, see 
Secs. 1.76(b)(1) and 1.63(c)(2)) as the correspondence address. The 
Office will direct all notices, official letters, and other 
communications relating to the application to the correspondence 
address. The Office will not engage in double correspondence with an 
applicant and a registered attorney or agent, or with more than one 
registered attorney or agent except as deemed necessary by the 
Commissioner. If more than one correspondence address is specified, the 
Office will establish one as the correspondence address. For the party 
to whom correspondence is to be addressed, a daytime telephone number 
should be supplied in a clearly identifiable manner and may be changed 
by any party who may change the correspondence address. The 
correspondence address may be changed as follows:
    (1) Prior to filing of a Sec. 1.63 oath or declaration by any of 
the inventors. If a Sec. 1.63 oath or declaration has not been

[[Page 54662]]

filed by any of the inventors, the correspondence address may be 
changed by the party who filed the application. If the application was 
filed by a registered attorney or agent, any other registered 
practitioner named in the transmittal papers may also change the 
correspondence address. Thus, the inventor(s), any registered 
practitioner named in the transmittal papers accompanying the original 
application, or a party that will be the assignee who filed the 
application, may change the correspondence address in that application 
under this paragraph.
    (2) Where a Sec. 1.63 oath or declaration has been filed by any of 
the inventors. If a Sec. 1.63 oath or declaration has been filed, or is 
filed concurrent with the filing of an application, by any of the 
inventors, the correspondence address may be changed by the parties set 
forth in paragraph (b) of this section, except for paragraph (b)(2).
    (b) Amendments and other papers. Amendments and other papers, 
except for written assertions pursuant to Sec. 1.27(c)(2)(ii) of this 
part, filed in the application must be signed by:
    (1) A registered attorney or agent of record appointed in 
compliance with Sec. 1.34(b);
    (2) A registered attorney or agent not of record who acts in a 
representative capacity under the provisions of Sec. 1.34(a);
    (3) An assignee as provided for under Sec. 3.71(b) of this chapter; 
or
    (4) All of the applicants (Sec. 1.41(b)) for patent, unless there 
is an assignee of the entire interest and such assignee has taken 
action in the application in accordance with Sec. 3.71 of this chapter.
* * * * *

    15. Section 1.34 is revised to read as follows:


Sec. 1.34  Recognition for representation.

    (a) When a registered attorney or agent acting in a representative 
capacity, pursuant to Sec. 1.31, appears in person or signs a paper in 
practice before the United States Patent and Trademark Office in a 
patent case, his or her personal appearance or signature shall 
constitute a representation to the United States Patent and Trademark 
Office that under the provisions of this subchapter and the law, he or 
she is authorized to represent the particular party in whose behalf he 
or she acts. In filing such a paper, the registered attorney or agent 
should specify his or her registration number with his or her 
signature. Further proof of authority to act in a representative 
capacity may be required.
    (b) When a registered attorney or agent shall have filed his or her 
power of attorney, or authorization, duly executed by the person or 
persons entitled to prosecute an application or a patent involved in a 
reexamination proceeding, pursuant to Sec. 1.31, he or she is a 
principal registered attorney or agent of record in the case. A 
principal registered attorney or agent, so appointed, may appoint an 
associate registered attorney or agent who shall also then be of 
record.

    16. Section 1.36 is revised to read as follows:


Sec. 1.36  Revocation of power of attorney or authorization; withdrawal 
of registered attorney or agent.

    A power of attorney or authorization of agent, pursuant to 
Sec. 1.31, may be revoked at any stage in the proceedings of a case, 
and a registered attorney or agent may withdraw, upon application to 
and approval by the Commissioner. A registered attorney or agent, 
except an associate registered attorney or agent whose address is the 
same as that of the principal registered attorney or agent, will be 
notified of the revocation of the power of attorney or authorization, 
and the applicant or patent owner will be notified of the withdrawal of 
the registered attorney or agent. An assignment will not of itself 
operate as a revocation of a power or authorization previously given, 
but the assignee of the entire interest may revoke previous powers and 
be represented by a registered attorney or agent of the assignee's own 
selection. See Sec. 1.613(d) for withdrawal in an interference.

    17. Section 1.41 is amended by revising paragraphs (a) and (c) to 
read as follows:


Sec. 1.41  Applicant for patent.

    (a) A patent is applied for in the name or names of the actual 
inventor or inventors.
    (1) The inventorship of a nonprovisional application is that 
inventorship set forth in the oath or declaration as prescribed by 
Sec. 1.63, except as provided for in Secs. 1.53(d)(4) and 1.63(d). If 
an oath or declaration as prescribed by Sec. 1.63 is not filed during 
the pendency of a nonprovisional application, the inventorship is that 
inventorship set forth in the application papers filed pursuant to 
Sec. 1.53(b), unless applicant files a paper, including the processing 
fee set forth in Sec. 1.17(i), supplying or changing the name or names 
of the inventor or inventors.
    (2) The inventorship of a provisional application is that 
inventorship set forth in the cover sheet as prescribed by 
Sec. 1.51(c)(1). If a cover sheet as prescribed by Sec. 1.51(c)(1) is 
not filed during the pendency of a provisional application, the 
inventorship is that inventorship set forth in the application papers 
filed pursuant to Sec. 1.53(c), unless applicant files a paper 
including the processing fee set forth in Sec. 1.17(q), supplying or 
changing the name or names of the inventor or inventors.
    (3) In a nonprovisional application filed without an oath or 
declaration as prescribed by Sec. 1.63 or a provisional application 
filed without a cover sheet as prescribed by Sec. 1.51(c)(1), the name, 
residence, and citizenship of each person believed to be an actual 
inventor should be provided when the application papers pursuant to 
Sec. 1.53(b) or Sec. 1.53(c) are filed.
    (4) The inventors who submitted an application under Sec. 1.494 or 
Sec. 1.495 are the inventors in the international application 
designating the United States (Sec. 1.48(f)(1) does not apply to 
applications entering the national stage).
* * * * *
    (c) Any person authorized by the applicant may physically or 
electronically deliver an application for patent to the Office on 
behalf of the inventor or inventors, but an oath or declaration for the 
application (Sec. 1.63) can only be made in accordance with Sec. 1.64.
* * * * *


Sec. 1.44  [Reserved]

    18. Section 1.44 is removed and reserved.

    19. Section 1.47 is revised to read as follows:


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

    (a) If a joint inventor refuses to join in an application for 
patent or cannot be found or reached after diligent effort, the 
application may be made by the other inventor on behalf of himself or 
herself and the nonsigning inventor. The oath or declaration in such an 
application must be accompanied by a petition including proof of the 
pertinent facts, the fee set forth in Sec. 1.17(h), and the last known 
address of the nonsigning inventor. The nonsigning inventor may 
subsequently join in the application by filing an oath or declaration 
complying with Sec. 1.63.
    (b) Whenever all of the inventors refuse to execute an application 
for patent, or cannot be found or reached after diligent effort, a 
person to whom an inventor has assigned or agreed in writing to assign 
the invention, or who otherwise shows sufficient proprietary interest 
in the matter justifying such action, may make application for patent 
on behalf of and as agent for all the inventors. The oath or 
declaration in

[[Page 54663]]

such an application must be accompanied by a petition including proof 
of the pertinent facts, a showing that such action is necessary to 
preserve the rights of the parties or to prevent irreparable damage, 
the fee set forth in Sec. 1.17(h), and the last known address of all of 
the inventors. An inventor may subsequently join in the application by 
filing an oath or declaration complying with Sec. 1.63.
    (c) The Office will send notice of the filing of the application to 
all inventors who have not joined in the application at the address(es) 
provided in the petition under this section, and publish notice of the 
filing of the application in the Official Gazette. The Office may 
dispense with this notice provision in a continuation or divisional 
application, if notice regarding the filing of the prior application 
was given to the nonsigning inventor(s).

    20. Section 1.48 is revised to read as follows:


Sec. 1.48  Correction of inventorship in a patent application, other 
than a reissue application, pursuant to 35 U.S.C. 116.

    (a) Nonprovisional application after oath/declaration filed. If the 
inventive entity is set forth in error in an executed Sec. 1.63 oath or 
declaration in a nonprovisional application, and such error arose 
without any deceptive intention on the part of the person named as an 
inventor in error or on the part of the person who through error was 
not named as an inventor, the inventorship of the nonprovisional 
application may be amended to name only the actual inventor or 
inventors. If the nonprovisional application is involved in an 
interference, the amendment must comply with the requirements of this 
section and must be accompanied by a motion under Sec. 1.634. Amendment 
of the inventorship requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) A statement from each person being added as an inventor and 
from each person being deleted as an inventor that the error in 
inventorship occurred without deceptive intention on his or her part;
    (3) An oath or declaration by the actual inventor or inventors as 
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or Sec. 1.47;
    (4) The processing fee set forth in Sec. 1.17(i); and
    (5) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b) of 
this chapter).
    (b) Nonprovisional application--fewer inventors due to amendment or 
cancellation of claims. If the correct inventors are named in a 
nonprovisional application, and the prosecution of the nonprovisional 
application results in the amendment or cancellation of claims so that 
fewer than all of the currently named inventors are the actual 
inventors of the invention being claimed in the nonprovisional 
application, an amendment must be filed requesting deletion of the name 
or names of the person or persons who are not inventors of the 
invention being claimed. If the application is involved in an 
interference, the amendment must comply with the requirements of this 
section and must be accompanied by a motion under Sec. 1.634. Amendment 
of the inventorship requires:
    (1) A request, signed by a party set forth in Sec. 1.33(b), to 
correct the inventorship that identifies the named inventor or 
inventors being deleted and acknowledges that the inventor's invention 
is no longer being claimed in the nonprovisional application; and
    (2) The processing fee set forth in Sec. 1.17(i).
    (c) Nonprovisional application--inventors added for claims to 
previously unclaimed subject matter. If a nonprovisional application 
discloses unclaimed subject matter by an inventor or inventors not 
named in the application, the application may be amended to add claims 
to the subject matter and name the correct inventors for the 
application. If the application is involved in an interference, the 
amendment must comply with the requirements of this section and must be 
accompanied by a motion under Sec. 1.634. Amendment of the inventorship 
requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) A statement from each person being added as an inventor that 
the addition is necessitated by amendment of the claims and that the 
inventorship error occurred without deceptive intention on his or her 
part;
    (3) An oath or declaration by the actual inventors as required by 
Sec. 1.63 or as permitted by Secs. 1.42, 1.43, or Sec. 1.47;
    (4) The processing fee set forth in Sec. 1.17(i); and
    (5) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b) of 
this chapter).
    (d) Provisional application--adding omitted inventors. If the name 
or names of an inventor or inventors were omitted in a provisional 
application through error without any deceptive intention on the part 
of the omitted inventor or inventors, the provisional application may 
be amended to add the name or names of the omitted inventor or 
inventors. Amendment of the inventorship requires:
    (1) A request, signed by a party set forth in Sec. 1.33(b), to 
correct the inventorship that identifies the inventor or inventors 
being added and states that the inventorship error occurred without 
deceptive intention on the part of the omitted inventor or inventors; 
and
    (2) The processing fee set forth in Sec. 1.17(q).
    (e) Provisional application--deleting the name or names of the 
inventor or inventors. If a person or persons were named as an inventor 
or inventors in a provisional application through error without any 
deceptive intention on the part of such person or persons, an amendment 
may be filed in the provisional application deleting the name or names 
of the person or persons who were erroneously named. Amendment of the 
inventorship requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) A statement by the person or persons whose name or names are 
being deleted that the inventorship error occurred without deceptive 
intention on the part of such person or persons;
    (3) The processing fee set forth in Sec. 1.17(q); and
    (4) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b) of 
this chapter).
    (f)(1) Nonprovisional application--filing executed oath/declaration 
corrects inventorship. If the correct inventor or inventors are not 
named on filing a nonprovisional application under Sec. 1.53(b) without 
an executed oath or declaration under Sec. 1.63 by any of the 
inventors, the first submission of an executed oath or declaration 
under Sec. 1.63 by any of the inventors during the pendency of the 
application will act to correct the earlier identification of 
inventorship. See Secs. 1.41(a)(4) and 1.497(d) for submission of an 
executed oath or declaration to enter the national stage under 35 
U.S.C. 371 and Sec. 1.494 or Sec. 1.495 naming an inventive entity 
different from the inventive entity set forth in the international 
stage.
    (2) Provisional application--filing cover sheet corrects 
inventorship. If the correct inventor or inventors are not named on 
filing a provisional application without a cover sheet under 
Sec. 1.51(c)(1), the later submission of a cover sheet under 
Sec. 1.51(c)(1) during the pendency of the application will act to

[[Page 54664]]

correct the earlier identification of inventorship.
    (g) Additional information may be required. The Office may require 
such other information as may be deemed appropriate under the 
particular circumstances surrounding the correction of inventorship.
    (h) Reissue applications not covered. The provisions of this 
section do not apply to reissue applications. See Secs. 1.171 and 1.175 
for correction of inventorship in a patent via a reissue application.
    (i) Correction of inventorship in patent or interference. See 
Sec. 1.324 for correction of inventorship in a patent, and Sec. 1.634 
for correction of inventorship in an interference.

    21. Section 1.51 is amended by revising paragraph (b) to read as 
follows:


Sec. 1.51  General requisites of an application.

* * * * *
    (b) A complete application filed under Sec. 1.53(b) or Sec. 1.53(d) 
comprises:
    (1) A specification as prescribed by 35 U.S.C. 112, including a 
claim or claims, see Secs. 1.71 to 1.77;
    (2) An oath or declaration, see Secs. 1.63 and 1.68;
    (3) Drawings, when necessary, see Secs. 1.81 to 1.85; and
    (4) The prescribed filing fee, see Sec. 1.16.
* * * * *

    22. Section 1.52 is amended by revising paragraphs (a), (b), and 
(c), and adding paragraph (e) to read as follows:


Sec. 1.52  Language, paper, writing, margins, compact disc 
specification.

    (a) Papers that are to become a part of the permanent United States 
Patent and Trademark Office records in the file of a patent application 
or a reexamination proceeding.
    (1) All papers, other than drawings, that are to become a part of 
the permanent United States Patent and Trademark Office records in the 
file of a patent application or reexamination proceeding must be on 
sheets of paper that are the same size, and:
    (i) Flexible, strong, smooth, non-shiny, durable, and white;
    (ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm 
(8\1/2\ by 11 inches), with each sheet including a top margin of at 
least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 
inch), a right side margin of at least 2.0 cm (3/4 inch), and a bottom 
margin of at least 2.0 cm (3/4 inch);
    (iii) Written on only one side in portrait orientation;
    (iv) Plainly and legibly written either by a typewriter or machine 
printer in permanent dark ink or its equivalent; and
    (v) Presented in a form having sufficient clarity and contrast 
between the paper and the writing thereon to permit the direct 
reproduction of readily legible copies in any number by use of 
photographic, electrostatic, photo-offset, and microfilming processes 
and electronic capture by use of digital imaging and optical character 
recognition.
    (2) All papers that are to become a part of the permanent records 
of the United States Patent and Trademark Office should have no holes 
in the sheets as submitted.
    (3) The provisions of this paragraph and paragraph (b) of this 
section do not apply to the pre-printed information on forms provided 
by the Office, or to the copy of the patent submitted in double column 
format as the specification in a reissue application or request for 
reexamination.
    (4) See Sec. 1.58 for chemical and mathematical formulae and 
tables, and Sec. 1.84 for drawings.
    (5) If papers that do not comply with paragraph (a)(1) of this 
section are submitted as part of the permanent record, other than the 
drawings, applicant, or the patent owner, or the requester in a 
reexamination proceeding, will be notified and must provide substitute 
papers that comply with paragraph (a)(1) of this section within a set 
time period.
    (b) The application (specification, including the claims, drawings, 
and oath or declaration) or reexamination proceeding and any amendments 
or corrections to the application or reexamination proceeding. (1) The 
application or proceeding and any amendments or corrections to the 
application (including any translation submitted pursuant to paragraph 
(d) of this section) or proceeding, except as provided for in Sec. 1.69 
and paragraph (d) of this section, must:
    (i) Comply with the requirements of paragraph (a) of this section; 
and
    (ii) Be in the English language or be accompanied by a translation 
of the application and a translation of any corrections or amendments 
into the English language together with a statement that the 
translation is accurate.
    (2) The specification (including the abstract and claims) for other 
than reissue applications and reexamination proceedings, and any 
amendments for applications (including reissue applications) and 
reexamination proceedings to the specification, except as provided for 
in Secs. 1.821 through 1.825, must have:
    (i) Lines that are 1\1/2\ or double spaced;
    (ii) Text written in a nonscript type font (e.g., Arial, Times 
Roman, or Courier) lettering style having capital letters which are at 
least 0.21 cm (0.08 inch) high; and
    (iii) Only a single column of text.
    (3) The claim or claims must commence on a separate sheet 
(Sec. 1.75(h)).
    (4) The abstract must commence on a separate sheet or be submitted 
as the first page of the patent in a reissue application or 
reexamination proceeding (Sec. 1.72(b)).
    (5) Other than in a reissue application or reexamination 
proceeding, the pages of the specification including claims and 
abstract must be numbered consecutively, starting with 1, the numbers 
being centrally located above or preferably, below, the text.
    (6) Other than in a reissue application or reexamination 
proceeding, the paragraphs of the specification, other than in the 
claims or abstract, may be numbered at the time the application is 
filed, and should be individually and consecutively numbered using 
Arabic numerals, so as to unambiguously identify each paragraph. The 
number should consist of at least four numerals enclosed in square 
brackets, including leading zeros (e.g., [0001]). The numbers and 
enclosing brackets should appear to the right of the left margin as the 
first item in each paragraph, before the first word of the paragraph, 
and should be highlighted in bold. A gap, equivalent to approximately 
four spaces, should follow the number. Nontext elements (e.g., tables, 
mathematical or chemical formulae, chemical structures, and sequence 
data) are considered part of the numbered paragraph around or above the 
elements, and should not be independently numbered. If a nontext 
element extends to the left margin, it should not be numbered as a 
separate and independent paragraph. A list is also treated as part of 
the paragraph around or above the list, and should not be independently 
numbered. Paragraph or section headers (titles), whether abutting the 
left margin or centered on the page, are not considered paragraphs and 
should not be numbered.
    (7) If papers that do not comply with paragraphs (b)(1) through 
(b)(5) of this section are submitted as part of the application, 
applicant, or patent owner, or requester in a reexamination proceeding, 
will be notified and the applicant, patent owner or requester in a 
reexamination proceeding must provide substitute papers that comply 
with paragraphs (b)(1) through (b)(5) of this section within a set time 
period.

[[Page 54665]]

    (c)(1) Any interlineation, erasure, cancellation or other 
alteration of the application papers filed must be made before the 
signing of any accompanying oath or declaration pursuant to Sec. 1.63 
referring to those application papers and should be dated and initialed 
or signed by the applicant on the same sheet of paper. Application 
papers containing alterations made after the signing of an oath or 
declaration referring to those application papers must be supported by 
a supplemental oath or declaration under Sec. 1.67. In either 
situation, a substitute specification (Sec. 1.125) is required if the 
application papers do not comply with paragraphs (a) and (b) of this 
section.
    (2) After the signing of the oath or declaration referring to the 
application papers, amendments may only be made in the manner provided 
by Sec. 1.121.
    (3) Notwithstanding the provisions of this paragraph, if an oath or 
declaration is a copy of the oath or declaration from a prior 
application, the application for which such copy is submitted may 
contain alterations that do not introduce matter that would have been 
new matter in the prior application.
* * * * *
    (e) Electronic documents that are to become part of the permanent 
United States Patent and Trademark Office records in the file of a 
patent application or reexamination proceeding.
    (1) The following documents may be submitted to the Office on a 
compact disc in compliance with this paragraph:
    (i) A computer program listing (see Sec. 1.96);
    (ii) A ``Sequence Listing'' (submitted under Sec. 1.821(c)); or
    (iii) A table (see Sec. 1.58) that has more than 50 pages of text.
    (2) A compact disc as used in this part means a Compact Disc-Read 
Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance 
with this paragraph. A CD-ROM is a ``read-only'' medium on which the 
data is pressed into the disc so that it cannot be changed or erased. A 
CD-R is a ``write once'' medium on which once the data is recorded, it 
is permanent and cannot be changed or erased.
    (3)(i) Each compact disc must conform to the International 
Standards Organization (ISO) 9660 standard, and the contents of each 
compact disc must be in compliance with the American Standard Code for 
Information Interchange (ASCII).
    (ii) Each compact disc must be enclosed in a hard compact disc case 
within an unsealed padded and protective mailing envelope and 
accompanied by a transmittal letter on paper in accordance with 
paragraph (a) of this section. The transmittal letter must list for 
each compact disc the machine format (e.g., IBM-PC, Macintosh), the 
operating system compatibility (e.g., MS-DOS, MS-Windows, Macintosh, 
Unix), a list of files contained on the compact disc including their 
names, sizes in bytes, and dates of creation, plus any other special 
information that is necessary to identify, maintain, and interpret the 
information on the compact disc. Compact discs submitted to the Office 
will not be returned to the applicant.
    (4) Any compact disc must be submitted in duplicate unless it 
contains only the ``Sequence Listing'' in computer readable form 
required by Sec. 1.821(e). The compact disc and duplicate copy must be 
labeled ``Copy 1'' and ``Copy 2,'' respectively. The transmittal letter 
which accompanies the compact disc must include a statement that the 
two compact discs are identical. In the event that the two compact 
discs are not identical, the Office will use the compact disc labeled 
``Copy 1'' for further processing. Any amendment to the information on 
a compact disc must be by way of a replacement compact disc in 
compliance with this paragraph containing the substitute information, 
and must be accompanied by a statement that the replacement compact 
disc contains no new matter. The compact disc and copy must be labeled 
``COPY 1 REPLACEMENT MM/DD/YYYY'' (with the month, day and year of 
creation indicated), and ``COPY 2 REPLACEMENT MM/DD/YYYY,'' 
respectively.
    (5) The specification must contain an incorporation-by-reference of 
the material on the compact disc in a separate paragraph 
(Sec. 1.77(b)(4)), identifying each compact disc by the names of the 
files contained on each of the compact discs, their date of creation 
and their sizes in bytes. The Office may require applicant to amend the 
specification to include in the paper portion any part of the 
specification previously submitted on compact disc.
    (6) A compact disc must also be labeled with the following 
information:
    (i) The name of each inventor (if known);
    (ii) Title of the invention;
    (iii) The docket number, or application number if known, used by 
the person filing the application to identify the application; and
    (iv) A creation date of the compact disc.
    (v) If multiple compact discs are submitted, the label shall 
indicate their order (e.g. ``1 of X'').
    (vi) An indication that the disk is ``Copy 1'' or ``Copy 2'' of the 
submission. See paragraph (b)(4) of this section.
    (7) If a file is unreadable on both copies of the disc, the 
unreadable file will be treated as not having been submitted. A file is 
unreadable if, for example, it is of a format that does not comply with 
the requirements of paragraph (e)(3) of this section, it is corrupted 
by a computer virus, or it is written onto a defective compact disc.
* * * * *

    23. Section 1.53 is amended by revising paragraphs (c)(1), (c)(2), 
(d)(4), (e)(2), (f) and (g) and adding paragraph (d)(10) to read as 
follows:


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

* * * * *
    (c) * * *
    (1) A provisional application must also include the cover sheet 
required by Sec. 1.51(c)(1), which may be an application data sheet 
(Sec. 1.76), or a cover letter identifying the application as a 
provisional application. Otherwise, the application will be treated as 
an application filed under paragraph (b) of this section.
    (2) An application for patent filed under paragraph (b) of this 
section may be converted to a provisional application and be accorded 
the original filing date of the application filed under paragraph (b) 
of this section. The grant of such a request for conversion will not 
entitle applicant to a refund of the fees that were properly paid in 
the application filed under paragraph (b) of this section. Such a 
request for conversion must be accompanied by the processing fee set 
forth in Sec. 1.17(q) and be filed prior to the earliest of:
    (i) Abandonment of the application filed under paragraph (b) of 
this section;
    (ii) Payment of the issue fee on the application filed under 
paragraph (b) of this section;
    (iii) Expiration of twelve months after the filing date of the 
application filed under paragraph (b) of this section; or
    (iv) The filing of a request for a statutory invention registration 
under Sec. 1.293 in the application filed under paragraph (b) of this 
section.
* * * * *
    (d) * * *
    (4) An application filed under this paragraph may be filed by fewer 
than all the inventors named in the prior application, provided that 
the request for an application under this paragraph

[[Page 54666]]

when filed is accompanied by a statement requesting deletion of the 
name or names of the person or persons who are not inventors of the 
invention being claimed in the new application. No person may be named 
as an inventor in an application filed under this paragraph who was not 
named as an inventor in the prior application on the date the 
application under this paragraph was filed, except by way of correction 
of inventorship under Sec. 1.48.
* * * * *
    (10) See Sec. 1.103(b) for requesting a limited suspension of 
action in an application filed under this paragraph.
    (e) * * *
    (2) Any request for review of a notification pursuant to paragraph 
(e)(1) of this section, or a notification that the original application 
papers lack a portion of the specification or drawing(s), must be by 
way of a petition pursuant to this paragraph accompanied by the fee set 
forth in Sec. 1.17(h). In the absence of a timely (Sec. 1.181(f)) 
petition pursuant to this paragraph, the filing date of an application 
in which the applicant was notified of a filing error pursuant to 
paragraph (e)(1) of this section will be the date the filing error is 
corrected.
* * * * *
    (f) Completion of application subsequent to filing--Nonprovisional 
(including continued prosecution or reissue) application.
    (1) If an application which has been accorded a filing date 
pursuant to paragraph (b) or (d) of this section does not include the 
basic filing fee, or if an application which has been accorded a filing 
date pursuant to paragraph (b) of this section does not include an oath 
or declaration by the applicant pursuant to Secs. 1.63, 1.162 or 
Sec. 1.175, and applicant has provided a correspondence address 
(Sec. 1.33(a)), applicant will be notified and given a period of time 
within which to pay the filing fee, file an oath or declaration in an 
application under paragraph (b) of this section, and pay the surcharge 
required by Sec. 1.16(e) to avoid abandonment.
    (2) If an application which has been accorded a filing date 
pursuant to paragraph (b) of this section does not include the basic 
filing fee or an oath or declaration by the applicant pursuant to 
Secs. 1.63, 1.162 or Sec. 1.175, and applicant has not provided a 
correspondence address (Sec. 1.33(a)), applicant has two months from 
the filing date of the application within which to pay the basic filing 
fee, file an oath or declaration, and pay the surcharge required by 
Sec. 1.16(e) to avoid abandonment.
    (3) This paragraph applies to continuation or divisional 
applications under paragraphs (b) or (d) of this section and to 
continuation-in-part applications under paragraph (b) of this section.
    (4) See Sec. 1.63(d) concerning the submission of a copy of the 
oath or declaration from the prior application for a continuation or 
divisional application under paragraph (b) of this section.
    (5) If applicant does not pay one of the basic filing or the 
processing and retention fees (Sec. 1.21(l)) during the pendency of the 
application, the Office may dispose of the application.
    (g) Completion of application subsequent to filing--provisional 
application.
    (1) If a provisional application which has been accorded a filing 
date pursuant to paragraph (c) of this section does not include the 
cover sheet required by Sec. 1.51(c)(1) or the basic filing fee 
(Sec. 1.16(k)), and applicant has provided a correspondence address 
(Sec. 1.33(a)), applicant will be notified and given a period of time 
within which to pay the basic filing fee, file a cover sheet 
(Sec. 1.51(c)(1)), and pay the surcharge required by Sec. 1.16(l) to 
avoid abandonment.
    (2) If a provisional application which has been accorded a filing 
date pursuant to paragraph (c) of this section does not include the 
cover sheet required by Sec. 1.51(c)(1) or the basic filing fee 
(Sec. 1.16(k)), and applicant has not provided a correspondence address 
(Sec. 1.33(a)), applicant has two months from the filing date of the 
application within which to pay the basic filing fee, file a cover 
sheet (Sec. 1.51(c)(1)), and pay the surcharge required by Sec. 1.16(l) 
to avoid abandonment.
    (3) If applicant does not pay the basic filing fee during the 
pendency of the application, the Office may dispose of the application.
* * * * *

    24. Section 1.55 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.55  Claim for foreign priority.

    (a) An applicant in a nonprovisional application may claim the 
benefit of the filing date of one or more prior foreign applications 
under the conditions specified in 35 U.S.C. 119(a) through (d), 172, 
and 365(a) and (b).
    (1) The claim for priority must identify the foreign application 
for which priority is claimed, as well as any foreign application for 
the same subject having a filing date before that of the application 
for which priority is claimed, by specifying the application number, 
country (or intergovernmental organization), day, month, and year of 
its filing.
    (2)(i) In an application filed under 35 U.S.C. 111(a), the claim 
for priority and the certified copy of the foreign application 
specified in 35 U.S.C. 119(b) must be filed before the patent is 
granted.
    (ii) In an application that entered the national stage from an 
international application after compliance with 35 U.S.C. 371, the 
claim for priority must be made within the time limit set forth in the 
PCT and the regulations under the PCT. If the certified copy of the 
foreign application has not been filed in accordance with the PCT and 
the regulations under the PCT, it must be filed before the patent is 
granted.
    (iii) When the application becomes involved in an interference 
(Sec. 1.630), when necessary to overcome the date of a reference relied 
upon by the examiner, or when deemed necessary by the examiner, the 
Office may require that the claim for priority and the certified copy 
of the foreign application be filed earlier than provided in paragraph 
(a)(2)(i) or (a)(2)(ii) of this section.
    (iv) If the claim for priority or the certified copy of the foreign 
application is filed after the date the issue fee is paid but before 
the patent is granted (published), it must be accompanied by the 
processing fee set forth in Sec. 1.17(i). While the priority claim or 
certified copy filed at such time will be placed in the file record, 
neither will be reviewed and the patent when published will not include 
the priority claim. In such instances, patentee may request a 
certificate of correction under 35 U.S.C. 255 and Sec. 1.323, and a 
determination of entitlement for priority will be made after the patent 
is granted.
    (3) An English-language translation of a non-English-language 
foreign application is not required except when the application is 
involved in an interference (Sec. 1.630), when necessary to overcome 
the date of a reference relied upon by the examiner, or when 
specifically required by the examiner. If an English-language 
translation is required, it must be filed together with a statement 
that the translation of the certified copy is accurate.
* * * * *

    25. Section 1.56 is amended by adding a new paragraph (e) to read 
as follows:


Sec. 1.56  Duty to disclose information material to patentability.

* * * * *
    (e) In any continuation-in-part application, the duty under this 
section includes the duty to disclose to the

[[Page 54667]]

Office all information known to the person to be material to 
patentability, as defined in paragraph (b) of this section, which 
became available between the filing date of the prior application and 
the national or PCT international filing date of the continuation-in-
part application.

    26. Section 1.58 is amended by adding paragraph (b) to read as 
follows:


Sec. 1.58  Chemical and mathematical formulae and tables.

* * * * *
    (b) Tables that are submitted in electronic form (Secs. 1.96(c) and 
1.821(c)) must maintain the spatial relationships (e.g., columns and 
rows) of the table elements and preserve the information they convey. 
Chemical and mathematical formulae must be encoded to maintain the 
proper positioning of their characters when displayed in order to 
preserve their intended meaning.
* * * * *

    27. Section 1.59 is amended by revising paragraph (b) to read as 
follows:


Sec. 1.59  Expungement of information or copy of papers in application 
file.

* * * * *
    (b) An applicant may request that the Office expunge and return 
information, other than what is excluded by paragraph (a)(2) of this 
section, by filing a petition under this paragraph. Any petition to 
expunge and return information from an application must include the fee 
set forth in Sec. 1.17(h) and establish to the satisfaction of the 
Commissioner that the return of the information is appropriate.
* * * * *

    28. Section 1.63 is amended by revising paragraphs (a), (b), (c), 
and (e) to read as follows:


Sec. 1.63  Oath or declaration.

    (a) An oath or declaration filed under Sec. 1.51(b)(2) as a part of 
a nonprovisional application must:
    (1) Be executed, i.e., signed, in accordance with either Sec. 1.66 
or Sec. 1.68. There is no minimum age for a person to be qualified to 
sign, but the person must be competent to sign, i.e., understand the 
document that the person is signing;
    (2) Identify each inventor by full name, including the family name, 
and at least one given name without abbreviation together with any 
other given name or initial;
    (3) Identify the country of citizenship of each inventor; and
    (4) State that the person making the oath or declaration believes 
the named inventor or inventors to be the original and first inventor 
or inventors of the subject matter which is claimed and for which a 
patent is sought.
    (b) In addition to meeting the requirements of paragraph (a) of 
this section, the oath or declaration must also:
    (1) Identify the application to which it is directed;
    (2) State that the person making the oath or declaration has 
reviewed and understands the contents of the application, including the 
claims, as amended by any amendment specifically referred to in the 
oath or declaration; and
    (3) State that the person making the oath or declaration 
acknowledges the duty to disclose to the Office all information known 
to the person to be material to patentability as defined in Sec. 1.56.
    (c) Unless such information is supplied on an application data 
sheet in accordance with Sec. 1.76, the oath or declaration must also 
identify:
    (1) The mailing address, and the residence if an inventor lives at 
a location which is different from where the inventor customarily 
receives mail, of each inventor; and
    (2) Any foreign application for patent (or inventor's certificate) 
for which a claim for priority is made pursuant to Sec. 1.55, and any 
foreign application having a filing date before that of the application 
on which priority is claimed, by specifying the application number, 
country, day, month, and year of its filing.
* * * * *
    (e) A newly executed oath or declaration must be filed in any 
continuation-in-part application, which application may name all, more, 
or fewer than all of the inventors named in the prior application.
* * * * *

    29. Section 1.64 is revised to read as follows:


Sec. 1.64  Person making oath or declaration.

    (a) The oath or declaration (Sec. 1.63), including any supplemental 
oath or declaration (Sec. 1.67), must be made by all of the actual 
inventors except as provided for in Secs. 1.42, 1.43, 1.47, or 
Sec. 1.67.
    (b) If the person making the oath or declaration or any 
supplemental oath or declaration is not the inventor (Secs. 1.42, 1.43, 
1.47, or Sec. 1.67), the oath or declaration shall state the 
relationship of the person to the inventor, and, upon information and 
belief, the facts which the inventor is required to state. If the 
person signing the oath or declaration is the legal representative of a 
deceased inventor, the oath or declaration shall also state that the 
person is a legal representative and the citizenship, residence, and 
mailing address of the legal representative.

    30. Section 1.67 is amended by revising paragraph (a) and removing 
and reserving paragraph (c) to read as follows:


Sec. 1.67  Supplemental oath or declaration.

    (a) The Office may require, or inventors and applicants may submit, 
a supplemental oath or declaration meeting the requirements of 
Sec. 1.63 or Sec. 1.162 to correct any deficiencies or inaccuracies 
present in the earlier filed oath or declaration.
    (1) Deficiencies or inaccuracies relating to all the inventors or 
applicants (Secs. 1.42, 1.43, or Sec. 1.47) may be corrected with a 
supplemental oath or declaration signed by all the inventors or 
applicants.
    (2) Deficiencies or inaccuracies relating to fewer than all of the 
inventor(s) or applicant(s) (Secs. 1.42, 1.43 or Sec. 1.47) may be 
corrected with a supplemental oath or declaration identifying the 
entire inventive entity but signed only by the inventor(s) or 
applicant(s) to whom the error or deficiency relates.
    (3) Deficiencies or inaccuracies due to the failure to meet the 
requirements of Sec. 1.63(c) (e.g., to correct the omission of a 
mailing address of an inventor) in an oath or declaration may be 
corrected with an application data sheet in accordance with Sec. 1.76.
    (4) Submission of a supplemental oath or declaration or an 
application data sheet (Sec. 1.76), as opposed to who must sign the 
supplemental oath or declaration or an application data sheet, is 
governed by Sec. 1.33(a)(2) and paragraph (b) of this section.
* * * * *

    31. Section 1.72 is revised to read as follows:


Sec. 1.72  Title and abstract.

    (a) Unless the title is supplied in an application data sheet 
(Sec. 1.76), the title of the invention, which should be as short and 
specific as possible, should appear as a heading on the first page of 
the specification.
    (b) A brief abstract of the technical disclosure in the 
specification must commence on a separate sheet, preferably following 
the claims, under the heading ``Abstract'' or ``Abstract of the 
Disclosure.'' The abstract in an application filed under 35 U.S.C. 111 
may not exceed 150 words in length. The purpose of the abstract is to 
enable the United States Patent and Trademark

[[Page 54668]]

Office and the public generally to determine quickly from a cursory 
inspection the nature and gist of the technical disclosure. The 
abstract will not be used for interpreting the scope of the claims.

    32. A new Sec. 1.76 is added to read as follows:


Sec. 1.76  Application data sheet.

    (a) Application data sheet. An application data sheet is a sheet or 
sheets, that may be voluntarily submitted in either provisional or 
nonprovisional applications, which contains bibliographic data, 
arranged in a format specified by the Office. If an application data 
sheet is provided, the application data sheet is part of the 
provisional or nonprovisional application for which it has been 
submitted.
    (b) Bibliographic data. Bibliographic data as used in paragraph (a) 
of this section includes:
    (1) Applicant information. This information includes the name, 
residence, mailing address, and citizenship of each applicant 
(Sec. 1.41(b)). The name of each applicant must include the family 
name, and at least one given name without abbreviation together with 
any other given name or initial. If the applicant is not an inventor, 
this information also includes the applicant's authority (Secs. 1.42, 
1.43, and 1.47) to apply for the patent on behalf of the inventor.
    (2) Correspondence information. This information includes the 
correspondence address, which may be indicated by reference to a 
customer number, to which correspondence is to be directed (see 
Sec. 1.33(a)).
    (3) Application information. This information includes the title of 
the invention, a suggested classification, by class and subclass, the 
Technology Center to which the subject matter of the invention is 
assigned, the total number of drawing sheets, a suggested drawing 
figure for publication (in a nonprovisional application), any docket 
number assigned to the application, the type of application (e.g., 
utility, plant, design, reissue, provisional), whether the application 
discloses any significant part of the subject matter of an application 
under a secrecy order pursuant to Sec. 5.2 of this chapter (see 
Sec. 5.2(c)), and, for plant applications, the Latin name of the genus 
and species of the plant claimed, as well as the variety denomination. 
The suggested classification and Technology Center information should 
be supplied for provisional applications whether or not claims are 
present. If claims are not present in a provisional application, the 
suggested classification and Technology Center should be based upon the 
disclosure.
    (4) Representative information. This information includes the 
registration number of each practitioner having a power of attorney or 
authorization of agent in the application (preferably by reference to a 
customer number). Providing this information in the application data 
sheet does not constitute a power of attorney or authorization of agent 
in the application (see Sec. 1.34(b)).
    (5) Domestic priority information. This information includes the 
application number, the filing date, the status (including patent 
number if available), and relationship of each application for which a 
benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). 
Providing this information in the application data sheet constitutes 
the specific reference required by 35 U.S.C. 119(e) or 120, and 
Sec. 1.78(a)(2) or Sec. 1.78(a)(4), and need not otherwise be made part 
of the specification.
    (6) Foreign priority information. This information includes the 
application number, country, and filing date of each foreign 
application for which priority is claimed, as well as any foreign 
application having a filing date before that of the application for 
which priority is claimed. Providing this information in the 
application data sheet constitutes the claim for priority as required 
by 35 U.S.C. 119(b) and Sec. 1.55(a).
    (c) Supplemental application data sheets. Supplemental application 
data sheets:
    (1) May be subsequently supplied prior to payment of the issue fee 
either to correct or update information in a previously submitted 
application data sheet, or an oath or declaration under Sec. 1.63 or 
Sec. 1.67, except that inventorship changes are governed by Sec. 1.48, 
correspondence changes are governed by Sec. 1.33(a), and citizenship 
changes are governed by Sec. 1.63 or Sec. 1.67; and
    (2) Should identify the information that is being changed (added, 
deleted, or modified) and therefore need not contain all the previously 
submitted information that has not changed.
    (d) Inconsistencies between application data sheet and oath or 
declaration. For inconsistencies between information that is supplied 
by both an application data sheet under this section and by an oath or 
declaration under Secs. 1.63 and 1.67:
    (1) The latest submitted information will govern notwithstanding 
whether supplied by an application data sheet, or by a Sec. 1.63 or 
Sec. 1.67 oath or declaration, except as provided by paragraph (d)(3) 
of this section;
    (2) The information in the application data sheet will govern when 
the inconsistent information is supplied at the same time by a 
Sec. 1.63 or Sec. 1.67 oath or declaration, except as provided by 
paragraph (d)(3) of this section;
    (3) The oath or declaration under Sec. 1.63 or Sec. 1.67 governs 
inconsistencies with the application data sheet in the naming of 
inventors (Sec. 1.41(a)(1)) and setting forth their citizenship (35 
U.S.C. 115);
    (4) The Office will initially capture bibliographic information 
from the application data sheet (notwithstanding whether an oath or 
declaration governs the information). Thus, the Office shall generally 
not look to an oath or declaration under Sec. 1.63 to see if the 
bibliographic information contained therein is consistent with the 
bibliographic information captured from an application data sheet 
(whether the oath or declaration is submitted prior to or subsequent to 
the application data sheet). Captured bibliographic information derived 
from an application data sheet containing errors may be recaptured by a 
request therefor and the submission of a supplemental application data 
sheet, an oath or declaration under Sec. 1.63 or Sec. 1.67, or a letter 
pursuant to Sec. 1.33(b).

    33. Section 1.77 is revised to read as follows:


Sec. 1.77  Arrangement of application elements.

    (a) The elements of the application, if applicable, should appear 
in the following order:
    (1) Utility application transmittal form.
    (2) Fee transmittal form.
    (3) Application data sheet (see Sec. 1.76).
    (4) Specification.
    (5) Drawings.
    (6) Executed oath or declaration.
    (b) The specification should include the following sections in 
order:
    (1) Title of the invention, which may be accompanied by an 
introductory portion stating the name, citizenship, and residence of 
the applicant (unless included in the application data sheet).
    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or 
development.
    (4) Reference to a ``Sequence Listing,'' a table, or a computer 
program listing appendix submitted on a compact disc and an 
incorporation-by-reference of the material on the compact disc (see 
Sec. 1.52(e)(5)). The total number of compact discs including 
duplicates and

[[Page 54669]]

the files on each compact disc shall be specified.
    (5) Background of the invention.
    (6) Brief summary of the invention.
    (7) Brief description of the several views of the drawing.
    (8) Detailed description of the invention.
    (9) A claim or claims.
    (10) Abstract of the disclosure.
    (11) ``Sequence Listing,'' if on paper (see Secs. 1.821 through 
1.825).
    (c) The text of the specification sections defined in paragraphs 
(b)(1) through (b)(11) of this section, if applicable, should be 
preceded by a section heading in uppercase and without underlining or 
bold type.

    34. Section 1.78 is amended by revising paragraphs (a)(2), (a)(4) 
and (c) to read as follows:


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

    (a) * * *
    (2) Except for a continued prosecution application filed under 
Sec. 1.53(d), any nonprovisional application claiming the benefit of 
one or more prior filed copending nonprovisional applications or 
international applications designating the United States of America 
must contain a reference to each such prior application, identifying it 
by application number (consisting of the series code and serial number) 
or international application number and international filing date and 
indicating the relationship of the applications. Unless the reference 
required by this paragraph is included in an application data sheet 
(Sec. 1.76), the specification must contain or be amended to contain 
such reference in the first sentence following any title. The request 
for a continued prosecution application under Sec. 1.53(d) is the 
specific reference required by 35 U.S.C. 120 to the prior application. 
The identification of an application by application number under this 
section is the specific reference required by 35 U.S.C. 120 to every 
application assigned that application number. Cross-references to other 
related applications may be made when appropriate (see Sec. 1.14).
* * * * *
    (4) Any nonprovisional application claiming the benefit of one or 
more prior filed provisional applications must contain a reference to 
each such prior provisional application, identifying it as a 
provisional application, and including the provisional application 
number (consisting of series code and serial number). Unless the 
reference required by this paragraph is included in an application data 
sheet (Sec. 1.76), the specification must contain or be amended to 
contain such reference in the first sentence following the title.
* * * * *
    (c) If an application or a patent under reexamination and at least 
one other application naming different inventors are owned by the same 
party and contain conflicting claims, and there is no statement of 
record indicating that the claimed inventions were commonly owned or 
subject to an obligation of assignment to the same person at the time 
the later invention was made, the Office may require the assignee to 
state whether the claimed inventions were commonly owned or subject to 
an obligation of assignment to the same person at the time the later 
invention was made, and, if not, indicate which named inventor is the 
prior inventor.
* * * * *

    35. Section 1.84 is amended by revising paragraphs (a), (b), (c), 
(j), (k), (o), and (x), and adding paragraph (y) to read as follows:


Sec. 1.84  Standards for drawings.

    (a) Drawings. There are two acceptable categories for presenting 
drawings in utility and design patent applications.
    (1) Black ink. Black and white drawings are normally required. 
India ink, or its equivalent that secures solid black lines, must be 
used for drawings; or
    (2) Color. On rare occasions, color drawings may be necessary as 
the only practical medium by which to disclose the subject matter 
sought to be patented in a utility or design patent application or the 
subject matter of a statutory invention registration. The color 
drawings must be of sufficient quality so 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). The Office will accept color drawings in utility and 
design patent applications and statutory invention registrations only 
after granting a petition filed under this paragraph which explains why 
color drawings are necessary for the understanding of the claimed 
invention. Any such petition must include the following:
    (i) The fee set forth in Sec. 1.17(h);
    (ii) Three (3) sets of color drawings; and
    (iii) An indication that the specification contains or is being 
amended to contain the following language as the first paragraph in 
that portion of the brief description of the drawings:

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

    (b) Photographs.--(1) Black and white. Photographs, including 
photocopies of photographs, are not ordinarily permitted in utility and 
design patent applications. The Office will accept photographs in 
utility and design patent applications, however, if photographs are the 
only practicable medium for illustrating the claimed invention. For 
example, photographs or photomicrographs of: electrophoresis gels, 
blots (e.g., immunological, western, Southern, and northern), 
autoradiographs, cell cultures (stained and unstained), histological 
tissue cross sections (stained and unstained), animals, plants, in vivo 
imaging, thin layer chromatography plates, crystalline structures, and, 
in a design patent application, ornamental effects, are acceptable. If 
the subject matter of the application admits of illustration by a 
drawing, the examiner may require a drawing in place of the photograph. 
The photographs must be of sufficient quality so that all details in 
the photographs are reproducible in the printed patent.
    (2) Color photographs. Color photographs will be accepted in 
utility and design patent applications if the conditions for accepting 
color drawings and black and white photographs have been satisfied. See 
paragraphs (a)(2) and (b)(1) of this section.
    (c) Identification of drawings. Identifying indicia, if provided, 
should include the title of the invention, inventor's name, and 
application number, or docket number (if any) if an application number 
has not been assigned to the application. If this information is 
provided, it must be placed on the front of each sheet and centered 
within the top margin.
* * * * *
    (j) Views. The drawing must contain as many views as necessary to 
show the invention. One of the views should be suitable for printing on 
the patent as the illustration of the invention. Views must not be 
connected by projection lines and must not contain center lines.
    (k) Scale. The scale to which a drawing is made must be large 
enough to show the mechanism without crowding when the drawing is 
reduced in size to two-thirds in reproduction. Indications such as 
``actual size'' or ``scale \1/2\'' on the drawings are not permitted 
since these lose their meaning with reproduction in a different format.
* * * * *

[[Page 54670]]

    (o) Legends. Suitable descriptive legends may be used subject to 
approval by the Office, or may be required by the examiner where 
necessary for understanding of the drawing. They should contain as few 
words as possible.
* * * * *
    (x) Holes. No holes should be made by applicant in the drawing 
sheets.
    (y) Types of drawings. See Sec. 1.152 for design drawings, 
Sec. 1.165 for plant drawings, and Sec. 1.174 for reissue drawings.

    36. Section 1.85 is revised to read as follows:


Sec. 1.85  Corrections to drawings.

    (a) If a drawing meets the requirements of Secs. 1.84(d), (e), and 
(f) and is suitable for reproduction, but is not otherwise in 
compliance with Sec. 1.84, the drawing may be admitted for examination.
    (b) The Office will not release drawings for purposes of 
correction. If corrections are necessary, new corrected drawings must 
be submitted within the time set by the Office.
    (c) If a corrected drawing is required or if a drawing does not 
comply with Sec. 1.84 at the time an application is allowed, the Office 
may notify the applicant and set a three month period of time from the 
mail date of the notice of allowability within which the applicant must 
file a corrected or formal drawing in compliance with Sec. 1.84 to 
avoid abandonment. This time period is not extendable under 
Sec. 1.136(a) or Sec. 1.136(b).

    37. Section 1.91 is amended by revising paragraph (a)(3)(i) to read 
as follows:


Sec. 1.91  Models or exhibits not generally admitted as part of 
application or patent.

    (a) * * *
    (3) * * *
    (i) The fee set forth in Sec. 1.17(h); and
* * * * *

    38. Section 1.96 is amended by revising paragraphs (b) and (c) to 
read as follows:


Sec. 1.96  Submission of computer program listings.

* * * * *
    (b) Material which will be printed in the patent: If the computer 
program listing is contained in 300 lines or fewer, with each line of 
72 characters or fewer, it may be submitted either as drawings or as 
part of the specification.
    (1) Drawings. If the listing is submitted as drawings, it must be 
submitted in the manner and complying with the requirements for 
drawings as provided in Sec. 1.84. At least one figure numeral is 
required on each sheet of drawing.
    (2) Specification. (i) If the listing is submitted as part of the 
specification, it must be submitted in accordance with the provisions 
of Sec. 1.52.
    (ii) Any listing having more than 60 lines of code that is 
submitted as part of the specification must be positioned at the end of 
the description but before the claims. Any amendment must be made by 
way of submission of a substitute sheet.
    (c) As an appendix which will not be printed: Any computer program 
listing may, and any computer program listing having over 300 lines (up 
to 72 characters per line) must, be submitted on a compact disc in 
compliance with Sec. 1.52(e). A compact disc containing such a computer 
program listing is to be referred to as a ``computer program listing 
appendix.'' The ``computer program listing appendix'' will not be part 
of the printed patent. The specification must include a reference to 
the ``computer program listing appendix'' at the location indicated in 
Sec. 1.77(b)(4).
    (1) Multiple computer program listings for a single application may 
be placed on a single compact disc. Multiple compact discs may be 
submitted for a single application if necessary. A separate compact 
disc is required for each application containing a computer program 
listing that must be submitted on a ``computer program listing 
appendix.''
    (2) The ``computer program listing appendix'' must be submitted on 
a compact disc that complies with Sec. 1.52(e) and the following 
specifications (no other format shall be allowed):
    (i) Computer Compatibility: IBM PC/XT/AT, or compatibles, or Apple 
Macintosh;
    (ii) Operating System Compatibility: MS-DOS, MS-Windows, Unix, or 
Macintosh;
    (iii) Line Terminator: ASCII Carriage Return plus ASCII Line Feed;
    (iv) Control Codes: the data must not be dependent on control 
characters or codes which are not defined in the ASCII character set; 
and
    (v) Compression: uncompressed data.

    39. Section 1.97 is amended by revising paragraphs (a) through (e) 
and (i) to read as follows:


Sec. 1.97  Filing of information disclosure statement.

    (a) In order for an applicant for a patent or for a reissue of a 
patent to have an information disclosure statement in compliance with 
Sec. 1.98 considered by the Office during the pendency of the 
application, the information disclosure statement must satisfy one of 
paragraphs (b), (c), or (d) of this section.
    (b) An information disclosure statement shall be considered by the 
Office if filed by the applicant within any one of the following time 
periods:
    (1) Within three months of the filing date of a national 
application other than a continued prosecution application under 
Sec. 1.53(d);
    (2) Within three months of the date of entry of the national stage 
as set forth in Sec. 1.491 in an international application;
    (3) Before the mailing of a first Office action on the merits; or
    (4) Before the mailing of a first Office action after the filing of 
a request for continued examination under Sec. 1.114.
    (c) An information disclosure statement shall be considered by the 
Office if filed after the period specified in paragraph (b) of this 
section, provided that the information disclosure statement is filed 
before the mailing date of any of a final action under Sec. 1.113, a 
notice of allowance under Sec. 1.311, or an action that otherwise 
closes prosecution in the application, and it is accompanied by one of:
    (1) The statement specified in paragraph (e) of this section; or
    (2) The fee set forth in Sec. 1.17(p).
    (d) An information disclosure statement shall be considered by the 
Office if filed by the applicant after the period specified in 
paragraph (c) of this section, provided that the information disclosure 
statement is filed on or before payment of the issue fee and is 
accompanied by:
    (1) The statement specified in paragraph (e) of this section; and
    (2) The fee set forth in Sec. 1.17(p).
    (e) A statement under this section must state either:
    (1) That each item of information contained in the information 
disclosure statement was first cited in any communication from a 
foreign patent office in a counterpart foreign application not more 
than three months prior to the filing of the information disclosure 
statement; or
    (2) That no item of information contained in the information 
disclosure statement was cited in a communication from a foreign patent 
office in a counterpart foreign application, and, to the knowledge of 
the person signing the certification after making reasonable inquiry, 
no item of information contained in the information disclosure 
statement was known to any individual designated in Sec. 1.56(c) more 
than three months prior to the filing of the information disclosure 
statement.
* * * * *

[[Page 54671]]

    (i) If an information disclosure statement does not comply with 
either this section or Sec. 1.98, it will be placed in the file but 
will not be considered by the Office.

    40. Section 1.98 is revised to read as follows:


Sec. 1.98  Content of information disclosure statement.

    (a) Any information disclosure statement filed under Sec. 1.97 
shall include:
    (1) A list of all patents, publications, applications, or other 
information submitted for consideration by the Office;
    (2) A legible copy of:
    (i) Each U.S. and foreign patent;
    (ii) Each publication, or that portion which caused it to be 
listed;
    (iii) For each cited pending U.S. application, the application 
specification including the claims, and any drawing of the application, 
or that portion of the application which caused it to be listed 
including any claims directed to that portion; and
    (iv) All other information, or that portion which caused it to be 
listed; and
    (3)(i) A concise explanation of the relevance, as it is presently 
understood by the individual designated in Sec. 1.56(c) most 
knowledgeable about the content of the information, of each patent, 
publication, or other information listed that is not in the English 
language. The concise explanation may be either separate from 
applicant's specification or incorporated therein.
    (ii) A copy of the translation if a written English-language 
translation of a non-English-language document, or portion thereof, is 
within the possession, custody, or control of, or is readily available 
to any individual designated in Sec. 1.56(c).
    (b)(1) Each U.S. patent listed in an information disclosure 
statement must be identified by inventor, patent number, and issue 
date.
    (2) Each listed U.S. application must be identified by the 
inventor, application number, and filing date.
    (3) Each listed foreign patent or published foreign patent 
application must 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.
    (4) Each listed publication must be identified by publisher, author 
(if any), title, relevant pages of the publication, date, and place of 
publication.
    (c) When the disclosures of two or more patents or publications 
listed in an information disclosure statement are substantively 
cumulative, a copy of one of the patents or publications may be 
submitted without copies of the other patents or publications, provided 
that it is stated that these other patents or publications are 
cumulative.
    (d) A copy of any patent, publication, pending U.S. application or 
other information, as specified in paragraph (a) of this section, 
listed in an information disclosure statement is required to be 
provided, even if the patent, publication, pending U.S. application or 
other information was previously submitted to, or cited by, the Office 
in an earlier application, unless:
    (1) The earlier application is properly identified in the 
information disclosure statement and is relied on for an earlier 
effective filing date under 35 U.S.C. 120; and
    (2) The information disclosure statement submitted in the earlier 
application complies with paragraphs (a) through (c) of this section.

    41. Section 1.102 is amended by revising paragraph (d) to read as 
follows:


Sec. 1.102  Advancement of examination.

* * * * *
    (d) A petition to make an application special on grounds other than 
those referred to in paragraph (c) of this section must be accompanied 
by the fee set forth in Sec. 1.17(h).
* * * * *

    42. Section 1.104 is amended by revising paragraph (a)(2) and (e) 
to read as follows:


Sec. 1.104  Nature of examination.

    (a) * * *
    (2) The applicant, or in the case of a reexamination proceeding, 
both the patent owner and the requester, will be notified of the 
examiner's action. The reasons for any adverse action or any objection 
or requirement will be stated in an Office action and such information 
or references will be given as may be useful in aiding the applicant, 
or in the case of a reexamination proceeding the patent owner, to judge 
the propriety of continuing the prosecution.
* * * * *
    (e) Reasons for allowance. If the examiner believes that the record 
of the prosecution as a whole does not make clear his or her reasons 
for allowing a claim or claims, the examiner may set forth such 
reasoning. The reasons shall be incorporated into an Office action 
rejecting other claims of the application or patent under reexamination 
or be the subject of a separate communication to the applicant or 
patent owner. The applicant or patent owner may file a statement 
commenting on the reasons for allowance within such time as may be 
specified by the examiner. Failure by the examiner to respond to any 
statement commenting on reasons for allowance does not give rise to any 
implication.

    43. A new Sec. 1.105 is added to read as follows:


Sec. 1.105  Requirements for information.

    (a)(1) In the course of examining or treating a matter in a pending 
or abandoned application filed under 35 U.S.C. 111 or 371 (including a 
reissue application), in a patent, or in a reexamination proceeding, 
the examiner or other Office employee may require the submission, from 
individuals identified under Sec. 1.56(c), or any assignee, of such 
information as may be reasonably necessary to properly examine or treat 
the matter, for example:
    (i) Commercial databases: The existence of any particularly 
relevant commercial database known to any of the inventors that could 
be searched for a particular aspect of the invention.
    (ii) Search: Whether a search of the prior art was made, and if so, 
what was searched.
    (iii) Related information: A copy of any non-patent literature, 
published application, or patent (U.S. or foreign), by any of the 
inventors, that relates to the claimed invention.
    (iv) Information used to draft application: A copy of any non-
patent literature, published application, or patent (U.S. or foreign) 
that was used to draft the application.
    (v) Information used in invention process: A copy of any non-patent 
literature, published application, or patent (U.S. or foreign) that was 
used in the invention process, such as by designing around or providing 
a solution to accomplish an invention result.
    (vi) Improvements: Where the claimed invention is an improvement, 
identification of what is being improved.
    (vii) In use: Identification of any use of the claimed invention 
known to any of the inventors at the time the application was filed 
notwithstanding the date of the use.
    (2) Where an assignee has asserted its right to prosecute pursuant 
to Sec. 3.71(a) of this chapter, matters such as paragraphs (a)(1)(i), 
(iii), and (vii) of this section may also be applied to such assignee.
    (3) Any reply that states that the information required to be 
submitted is unknown and/or is not readily available to the party or 
parties from which it was

[[Page 54672]]

requested will be accepted as a complete reply.
    (b) The requirement for information of paragraph (a)(1) of this 
section may be included in an Office action, or sent separately.
    (c) A reply, or a failure to reply, to a requirement for 
information under this section will be governed by Secs. 1.135 and 
1.136.

    44. Section 1.111 is amended by revising the heading and paragraphs 
(a) and (c) to read as follows:


Sec. 1.111  Reply by applicant or patent owner to a non-final Office 
action.

    (a)(1) If the Office action after the first examination 
(Sec. 1.104) is adverse in any respect, the applicant or patent owner, 
if he or she persists in his or her application for a patent or 
reexamination proceeding, must reply and request reconsideration or 
further examination, with or without amendment. See Secs. 1.135 and 
1.136 for time for reply to avoid abandonment.
    (2) A second (or subsequent) supplemental reply will be entered 
unless disapproved by the Commissioner. A second (or subsequent) 
supplemental reply may be disapproved if the second (or subsequent) 
supplemental reply unduly interferes with an Office action being 
prepared in response to the previous reply. Factors that will be 
considered in disapproving a second (or subsequent) supplemental reply 
include:
    (i) The state of preparation of an Office action responsive to the 
previous reply as of the date of receipt (Sec. 1.6) of the second (or 
subsequent) supplemental reply by the Office; and
    (ii) The nature of any changes to the specification or claims that 
would result from entry of the second (or subsequent) supplemental 
reply.
* * * * *
    (c) In amending in reply to a rejection of claims in an application 
or patent under reexamination, the applicant or patent owner must 
clearly point out the patentable novelty which he or she thinks the 
claims present in view of the state of the art disclosed by the 
references cited or the objections made. The applicant or patent owner 
must also show how the amendments avoid such references or objections.

    45. Section 1.112 is revised to read as follows:


Sec. 1.112  Reconsideration before final action.

    After reply by applicant or patent owner (Sec. 1.111) to a non-
final action, the application or patent under reexamination will be 
reconsidered and again examined. The applicant or patent owner will be 
notified if claims are rejected, or objections or requirements made, in 
the same manner as after the first examination (Sec. 1.104). Applicant 
or patent owner may reply to such Office action in the same manner 
provided in Sec. 1.111, with or without amendment, unless such Office 
action indicates that it is made final (Sec. 1.113) or an appeal 
(Sec. 1.191) has been taken (Sec. 1.116).

    46. A new Sec. 1.115 is added to read as follows:


Sec. 1.115  Preliminary amendments.

    (a) A preliminary amendment is an amendment that is received in the 
Office (Sec. 1.6) on or before the mail date of the first Office action 
under Sec. 1.104.
    (b)(1) A preliminary amendment will be entered unless disapproved 
by the Commissioner. A preliminary amendment may be disapproved if the 
preliminary amendment unduly interferes with the preparation of a first 
Office action in an application. Factors that will be considered in 
disapproving a preliminary amendment include:
    (i) The state of preparation of a first Office action as of the 
date of receipt (Sec. 1.6) of the preliminary amendment by the Office; 
and
    (ii) The nature of any changes to the specification or claims that 
would result from entry of the preliminary amendment.
    (2) A preliminary amendment will not be disapproved if it is filed 
no later than:
    (i) Three months from the filing date of an application under 
Sec. 1.53(b);
    (ii) The filing date of a continued prosecution application under 
Sec. 1.53(d); or
    (iii) Three months from the date the national stage is entered as 
set forth in Sec. 1.491 in an international application.
    (c) The time periods specified in paragraph (b)(2) of this section 
are not extendable.

    47. Section 1.121 is revised to read as follows:


Sec. 1.121  Manner of making amendments in applications.

    (a) Amendments in applications, other than reissue applications. 
Amendments in applications, other than reissue applications, are made 
by filing a paper, in compliance with Sec. 1.52, directing that 
specified amendments be made.
    (b) Specification other than the claims and listings provided for 
elsewhere (Secs. 1.96 and 1.825).--(1) Amendment by instruction to 
delete, replace, or add a paragraph. Amendments to the specification, 
other than the claims and listings provided for elsewhere (Secs. 1.96 
and 1.825), may be made by submitting:
    (i) An instruction, which unambiguously identifies the location, to 
delete one or more paragraphs of the specification, replace a deleted 
paragraph with one or more replacement paragraphs, or add one or more 
paragraphs;
    (ii) Any replacement or added paragraph(s) in clean form, that is, 
without markings to indicate the changes that have been made; and
    (iii) Another version of any replacement paragraph(s), on one or 
more pages separate from the amendment, marked up to show all the 
changes relative to the previous version of the paragraph(s). The 
changes may be shown by brackets (for deleted matter) or underlining 
(for added matter), or by any equivalent marking system. A marked up 
version does not have to be supplied for an added paragraph or a 
deleted paragraph as it is sufficient to state that a particular 
paragraph has been added, or deleted.
    (2) Amendment by replacement section. If the sections of the 
specification contain section headings as provided in Secs. 1.77(b), 
1.154(b), or Sec. 1.163(c), amendments to the specification, other than 
the claims, may be made by submitting:
    (i) A reference to the section heading along with an instruction to 
delete that section of the specification and to replace such deleted 
section with a replacement section;
    (ii) A replacement section in clean form, that is, without markings 
to indicate the changes that have been made; and
    (iii) Another version of the replacement section, on one or more 
pages separate from the amendment, marked up to show all changes 
relative to the previous version of the section. The changes may be 
shown by brackets (for deleted matter) or underlining (for added 
matter), or by any equivalent marking system.
    (3) Amendment by substitute specification. The specification, other 
than the claims, may also be amended by submitting:
    (i) An instruction to replace the specification;
    (ii) A substitute specification in compliance with Sec. 1.125(b); 
and
    (iii) Another version of the substitute specification, separate 
from the substitute specification, marked up to show all changes 
relative to the previous version of the specification. The changes may 
be shown by brackets (for deleted matter), or underlining (for added 
matter), or by any equivalent marking system.
    (4) Reinstatement: Deleted matter may be reinstated only by a 
subsequent

[[Page 54673]]

amendment presenting the previously deleted matter.
    (c) Claims.--(1) Amendment by rewriting, directions to cancel or 
add: Amendments to a claim must be made by rewriting such claim with 
all changes (e.g., additions, deletions, modifications) included. The 
rewriting of a claim (with the same number) will be construed as 
directing the cancellation of the previous version of that claim. A 
claim may also be canceled by an instruction.
    (i) A rewritten or newly added claim must be in clean form, that 
is, without markings to indicate the changes that have been made. A 
parenthetical expression should follow the claim number indicating the 
status of the claim as amended or newly added (e.g., ``amended,'' 
``twice amended,'' or ``new'').
    (ii) If a claim is amended by rewriting such claim with the same 
number, the amendment must be accompanied by another version of the 
rewritten claim, on one or more pages separate from the amendment, 
marked up to show all the changes relative to the previous version of 
that claim. A parenthetical expression should follow the claim number 
indicating the status of the claim, e.g., ``amended,'' ``twice 
amended,'' etc. The parenthetical expression ``amended,'' ``twice 
amended,'' etc. should be the same for both the clean version of the 
claim under paragraph (c)(1)(i) of this section and the marked up 
version under this paragraph. The changes may be shown by brackets (for 
deleted matter) or underlining (for added matter), or by any equivalent 
marking system. A marked up version does not have to be supplied for an 
added claim or a canceled claim as it is sufficient to state that a 
particular claim has been added, or canceled.
    (2) A claim canceled by amendment (deleted in its entirety) may be 
reinstated only by a subsequent amendment presenting the claim as a new 
claim with a new claim number.
    (3) A clean version of the entire set of pending claims may be 
submitted in a single amendment paper. Such a submission shall be 
construed as directing the cancellation of all previous versions of any 
pending claims. A marked up version is required only for claims being 
changed by the current amendment (see paragraph (c)(1)(ii) of this 
section). Any claim not accompanied by a marked up version will 
constitute an assertion that it has not been changed relative to the 
immediate prior version.
    (d) Drawings. Application drawings are amended in the following 
manner: Any change to the application drawings must be submitted on a 
separate paper showing the proposed changes in red for approval by the 
examiner. Upon approval by the examiner, new drawings in compliance 
with Sec. 1.84 including the changes must be filed.
    (e) Disclosure consistency. The disclosure must be amended, when 
required by the Office, to correct inaccuracies of description and 
definition, and to secure substantial correspondence between the 
claims, the remainder of the specification, and the drawings.
    (f) No new matter. No amendment may introduce new matter into the 
disclosure of an application.
    (g) Exception for examiner's amendments: Changes to the 
specification, including the claims, of an application made by the 
Office in an examiner's amendment may be made by specific instructions 
to insert or delete subject matter set forth in the examiner's 
amendment by identifying the precise point in the specification or the 
claim(s) where the insertion or deletion is to be made. Compliance with 
paragraphs (b)(1), (b)(2) or (c)(1) of this section is not required.
    (h) Amendments in reissue applications. Any amendment to the 
description and claims in reissue applications must be made in 
accordance with Sec. 1.173.
    (i) Amendments in reexamination proceedings. Any proposed amendment 
to the description and claims in patents involved in reexamination 
proceedings must be made in accordance with Sec. 1.530.
    (j) Amendments in provisional applications: Amendments in 
provisional applications are not normally made. If an amendment is made 
to a provisional application, however, it must comply with the 
provisions of this section. Any amendments to a provisional application 
shall be placed in the provisional application file but may not be 
entered.

    48. Section 1.125 is amended by revising paragraphs (b)(2) and (c) 
to read as follows:


Sec. 1.125  Substitute specification.

* * * * *
    (b) * * *
    (2) A marked up version of the substitute specification showing all 
the changes (including the matter being added to and the matter being 
deleted from) to the specification of record. Numbering the paragraphs 
of the specification of record is not considered a change that must be 
shown pursuant to this paragraph.
    (c) A substitute specification submitted under this section must be 
submitted in clean form without markings as to amended material. The 
paragraphs of any substitute specification, other than the claims, 
should be individually numbered in Arabic numerals so that any 
amendment to the specification may be made by replacement paragraph in 
accordance with Sec. 1.121(b)(1).
* * * * *

    49. 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 a party 
qualified under Secs. 1.42, 1.43, or Sec. 1.47 may submit an 
appropriate oath or declaration to establish invention of the subject 
matter of the rejected claim prior to the effective date of the 
reference or activity on which the rejection is based. The effective 
date of a U.S. patent is the date that such U.S. patent is effective as 
a reference under 35 U.S.C. 102(e). Prior invention may not be 
established under this section in any country other than the United 
States, a NAFTA country, or a WTO member country. Prior invention may 
not be established under this section before December 8, 1993, in a 
NAFTA country other than the United States, or before January 1, 1996, 
in a WTO member country other than a NAFTA country. Prior invention may 
not be established under this section if either:
    (1) The rejection is based upon a U.S. patent to another or others 
that claims the same patentable invention as defined in Sec. 1.601(n); 
or
    (2) The rejection is based upon a statutory bar.
* * * * *

    50. 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 to another or others which claims the same 
patentable invention as defined in Sec. 1.601(n).

[[Page 54674]]


    51. Section 1.133 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.133  Interviews.

    (a)(1) Interviews with examiners concerning applications and other 
matters pending before the Office must be conducted on Office premises 
and within Office hours, as the respective examiners may designate. 
Interviews will not be permitted at any other time or place without the 
authority of the Commissioner.
    (2) An interview for the discussion of the patentability of a 
pending application will not occur before the first Office action, 
unless the application is a continuing or substitute application.
    (3) The examiner may require that an interview be scheduled in 
advance.
* * * * *

    52. Section 1.136 is amended by adding paragraph (c) to read as 
follows:


Sec. 1.136  Extensions of time.

* * * * *
    (c) If an applicant is notified in a ``Notice of Allowability'' 
that an application is otherwise in condition for allowance, the 
following time periods are not extendable if set in the ``Notice of 
Allowability'' or in an Office action having a mail date on or after 
the mail date of the ``Notice of Allowability':
    (1) The period for submitting an oath or declaration in compliance 
with Sec. 1.63; and
    (2) The period for submitting formal drawings set under 
Sec. 1.85(c).

    53. Section 1.137 is amended by revising paragraph (c) to read as 
follows:


Sec. 1.137  Revival of abandoned application or lapsed patent.

* * * * *
    (c)(1) Any petition to revive pursuant to this section in a design 
application must be accompanied by a terminal disclaimer and fee as set 
forth in Sec. 1.321 dedicating to the public a terminal part of the 
term of any patent granted thereon equivalent to the period of 
abandonment of the application. Any petition to revive pursuant to this 
section in either a utility or plant application filed before June 8, 
1995, must be accompanied by a terminal disclaimer and fee as set forth 
in Sec. 1.321 dedicating to the public a terminal part of the term of 
any patent granted thereon equivalent to the lesser of:
    (i) The period of abandonment of the application; or
    (ii) The period extending beyond twenty years from the date on 
which the application for the patent was filed in the United States or, 
if the application contains a specific reference to an earlier filed 
application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on 
which the earliest such application was filed.
    (2) Any terminal disclaimer pursuant to paragraph (c)(1) of this 
section must also apply to any patent granted on a continuing utility 
or plant application filed before June 8, 1995, or a continuing design 
application, that contains a specific reference under 35 U.S.C. 120, 
121, or 365(c) to the application for which revival is sought.
    (3) The provisions of paragraph (c)(1) of this section do not apply 
to applications for which revival is sought solely for purposes of 
copendency with a utility or plant application filed on or after June 
8, 1995, or to lapsed patents.
* * * * *

    54. 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 
United States 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 before the date of 
issue.
    (b) A written declaration of abandonment must be signed by a party 
authorized under Sec. 1.33(b)(1), (b)(3), or (b)(4) to sign a paper in 
the application, except as otherwise provided in this paragraph. A 
registered attorney or agent, not of record, who acts in a 
representative capacity under the provisions of Sec. 1.34(a) when 
filing a continuing application, may expressly abandon the prior 
application as of the filing date granted to the continuing 
application.

    55. Section 1.152 is revised to read as follows:


Sec. 1.152  Design drawings.

    The design must be represented by a drawing that complies with the 
requirements of Sec. 1.84 and must contain a sufficient number of views 
to constitute a complete disclosure of the appearance of the design. 
Appropriate and adequate surface shading should be used to show the 
character or contour of the surfaces represented. Solid black surface 
shading is not permitted except when used to represent the color black 
as well as color contrast. Broken lines may be used to show visible 
environmental structure, but may not be used to show hidden planes and 
surfaces that cannot be seen through opaque materials. Alternate 
positions of a design component, illustrated by full and broken lines 
in the same view are not permitted in a design drawing. Photographs and 
ink drawings are not permitted to be combined as formal drawings in one 
application. Photographs submitted in lieu of ink drawings in design 
patent applications must not disclose environmental structure but must 
be limited to the design claimed for the article.

    56. Section 1.154 is revised to read as follows:


Sec. 1.154  Arrangement of application elements in a design 
application.

    (a) The elements of the design application, if applicable, should 
appear in the following order:
    (1) Design application transmittal form.
    (2) Fee transmittal form.
    (3) Application data sheet (see Sec. 1.76).
    (4) Specification.
    (5) Drawings or photographs.
    (6) Executed oath or declaration (see Sec. 1.153(b)).
    (b) The specification should include the following sections in 
order:
    (1) Preamble, stating the name of the applicant, title of the 
design, and a brief description of the nature and intended use of the 
article in which the design is embodied.
    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or 
development.
    (4) Description of the figure or figures of the drawing.
    (5) Feature description.
    (6) A single claim.
    (c) The text of the specification sections defined in paragraph (b) 
of this section, if applicable, should be preceded by a section heading 
in uppercase letters without underlining or bold type.

    57. Section 1.155 is revised to read as follows:


Sec. 1.155  Expedited examination of design applications.

    (a) The applicant may request that the Office expedite the 
examination of a design application. To qualify for expedited 
examination:
    (1) The application must include drawings in compliance with 
Sec. 1.84;
    (2) The applicant must have conducted a preexamination search; and
    (3) The applicant must file a request for expedited examination 
including:
    (i) The fee set forth in Sec. 1.17(k); and
    (ii) A statement that a preexamination search was conducted. The 
statement must also indicate the field of search and include an 
information disclosure statement in compliance with Sec. 1.98.

[[Page 54675]]

    (b) The Office will not examine an application that is not in 
condition for examination (e.g., missing basic filing fee) even if the 
applicant files a request for expedited examination under this section.

    58. Section 1.163 is revised to read as follows:


Sec. 1.163  Specification and arrangement of application elements in a 
plant application.

    (a) The specification must contain as full and complete a 
disclosure as possible of the plant and the characteristics thereof 
that distinguish the same over related known varieties, and its 
antecedents, and must particularly point out where and in what manner 
the variety of plant has been asexually reproduced. For a newly found 
plant, the specification must particularly point out the location and 
character of the area where the plant was discovered.
    (b) The elements of the plant application, if applicable, should 
appear in the following order:
    (1) Plant application transmittal form.
    (2) Fee transmittal form.
    (3) Application data sheet (see Sec. 1.76).
    (4) Specification.
    (5) Drawings (in duplicate).
    (6) Executed oath or declaration (Sec. 1.162).
    (c) The specification should include the following sections in 
order:
    (1) Title of the invention, which may include an introductory 
portion stating the name, citizenship, and residence of the applicant.
    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or 
development.
    (4) Latin name of the genus and species of the plant claimed.
    (5) Variety denomination.
    (6) Background of the invention.
    (7) Brief summary of the invention.
    (8) Brief description of the drawing.
    (9) Detailed botanical description.
    (10) A single claim.
    (11) Abstract of the disclosure.
    (d) The text of the specification or sections defined in paragraph 
(c) of this section, if applicable, should be preceded by a section 
heading in upper case, without underlining or bold type.

    59. Section 1.173 is revised to read as follows:


Sec. 1.173  Reissue specification, drawings, and amendments.

    (a) Contents of a reissue application. An application for reissue 
must contain the entire specification, including the claims, and the 
drawings of the patent. No new matter shall be introduced into the 
application. No reissue patent shall be granted enlarging the scope of 
the claims of the original patent unless applied for within two years 
from the grant of the original patent, pursuant to 35 U.S.C. 251.
    (1) Specification, including claims. The entire specification, 
including the claims, of the patent for which reissue is requested must 
be furnished in the form of a copy of the printed patent, in double 
column format, each page on only one side of a single sheet of paper. 
If an amendment of the reissue application is to be included, it must 
be made pursuant to paragraph (b) of this section. The formal 
requirements for papers making up the reissue application other than 
those set forth in this section are set out in Sec. 1.52. Additionally, 
a copy of any disclaimer (Sec. 1.321), certificate of correction 
(Secs. 1.322 through 1.324), or reexamination certificate (Sec. 1.570) 
issued in the patent must be included. (See also Sec. 1.178).
    (2) Drawings. Applicant must submit a clean copy of each drawing 
sheet of the printed patent at the time the reissue application is 
filed. If such copy complies with Sec. 1.84, no further drawings will 
be required. Where a drawing of the reissue application is to include 
any changes relative to the patent being reissued, the changes to the 
drawing must be made in accordance with paragraph (b)(3) of this 
section. The Office will not transfer the drawings from the patent file 
to the reissue application.
    (b) Making amendments in a reissue application. An amendment in a 
reissue application is made either by physically incorporating the 
changes into the specification when the application is filed, or by a 
separate amendment paper. If amendment is made by incorporation, 
markings pursuant to paragraph (d) of this section must be used. If 
amendment is made by an amendment paper, the paper must direct that 
specified changes be made.
    (1) Specification other than the claims. Changes to the 
specification, other than to the claims, must be made by submission of 
the entire text of an added or rewritten paragraph, including markings 
pursuant to paragraph (d) of this section, except that an entire 
paragraph may be deleted by a statement deleting the paragraph without 
presentation of the text of the paragraph. The precise point in the 
specification must be identified where any added or rewritten paragraph 
is located. This paragraph applies whether the amendment is submitted 
on paper or compact disc (see Secs. 1.52(e)(1) and 1.821(c), but not 
for discs submitted under Sec. 1.821(e)).
    (2) Claims. An amendment paper must include the entire text of each 
claim being changed by such amendment paper and of each claim being 
added by such amendment paper. For any claim changed by the amendment 
paper, a parenthetical expression ``amended,'' ``twice amended,'' etc., 
should follow the claim number. Each changed patent claim and each 
added claim must include markings pursuant to paragraph (d) of this 
section, except that a patent claim or added claim should be canceled 
by a statement canceling the claim without presentation of the text of 
the claim.
    (3) Drawings. Any change to the patent drawings must be submitted 
as a sketch on a separate paper showing the proposed changes in red for 
approval by the examiner. Upon approval by the examiner, new drawings 
in compliance with Sec. 1.84 including the approved changes must be 
filed. Amended figures must be identified as ``Amended,'' and any added 
figure must be identified as ``New.'' In the event that a figure is 
canceled, the figure must be surrounded by brackets and identified as 
``Canceled.''
    (c) Status of claims and support for claim changes. Whenever there 
is an amendment to the claims pursuant to paragraph (b) of this 
section, there must also be supplied, on pages separate from the pages 
containing the changes, the status (i.e., pending or canceled), as of 
the date of the amendment, of all patent claims and of all added 
claims, and an explanation of the support in the disclosure of the 
patent for the changes made to the claims.
    (d) Changes shown by markings. Any changes relative to the patent 
being reissued which are made to the specification, including the 
claims, upon filing, or by an amendment paper in the reissue 
application, must include the following markings:
    (1) The matter to be omitted by reissue must be enclosed in 
brackets; and
    (2) The matter to be added by reissue must be underlined, except 
for amendments submitted on compact discs (Secs. 1.96 and 1.821(c)). 
Matter added by reissue on compact discs must be preceded with ``U>'' 
and end with ``/U>'' to properly identify the material being added.
    (e) Numbering of patent claims preserved. Patent claims may not be 
renumbered. The numbering of any claim added in the reissue application 
must follow the number of the highest numbered patent claim.

[[Page 54676]]

    (f) Amendment of disclosure may be required. The disclosure must be 
amended, when required by the Office, to correct inaccuracies of 
description and definition, and to secure substantial correspondence 
between the claims, the remainder of the specification, and the 
drawings.
    (g) Amendments made relative to the patent. All amendments must be 
made relative to the patent specification, including the claims, and 
drawings, which are in effect as of the date of filing of the reissue 
application.


Sec. 1.174  [Reserved]

    60. Section 1.174 is removed and reserved.
    61. Section 1.176 is revised to read as follows:


Sec. 1.176  Examination of reissue.

    (a) A reissue application will be examined in the same manner as a 
non-reissue, non-provisional application, and will be subject to all 
the requirements of the rules related to non-reissue applications. 
Applications for reissue will be acted on by the examiner in advance of 
other applications.
    (b) Restriction between subject matter of the original patent 
claims and previously unclaimed subject matter may be required 
(restriction involving only subject matter of the original patent 
claims will not be required). If restriction is required, the subject 
matter of the original patent claims will be held to be constructively 
elected unless a disclaimer of all the patent claims is filed in the 
reissue application, which disclaimer cannot be withdrawn by applicant.
    62. Section 1.177 is revised to read as follows:


Sec. 1.177  Issuance of multiple reissue patents.

    (a) The Office may reissue a patent as multiple reissue patents. If 
applicant files more than one application for the reissue of a single 
patent, each such application must contain or be amended to contain in 
the first sentence of the specification a notice stating that more than 
one reissue application has been filed and identifying each of the 
reissue applications by relationship, application number and filing 
date. The Office may correct by certificate of correction under 
Sec. 1.322 any reissue patent resulting from an application to which 
this paragraph applies that does not contain the required notice.
    (b) If applicant files more than one application for the reissue of 
a single patent, each claim of the patent being reissued must be 
presented in each of the reissue applications as an amended, unamended, 
or canceled (shown in brackets) claim, with each such claim bearing the 
same number as in the patent being reissued. The same claim of the 
patent being reissued may not be presented in its original unamended 
form for examination in more than one of such multiple reissue 
applications. The numbering of any added claims in any of the multiple 
reissue applications must follow the number of the highest numbered 
original patent claim.
    (c) If any one of the several reissue applications by itself fails 
to correct an error in the original patent as required by 35 U.S.C. 251 
but is otherwise in condition for allowance, the Office may suspend 
action in the allowable application until all issues are resolved as to 
at least one of the remaining reissue applications. The Office may also 
merge two or more of the multiple reissue applications into a single 
reissue application. No reissue application containing only unamended 
patent claims and not correcting an error in the original patent will 
be passed to issue by itself.

    63. Section 1.178 is revised to read as follows:


Sec. 1.178  Original patent; continuing duty of applicant.

    (a) The application for a reissue should be accompanied by either 
an offer to surrender the original patent, or the original patent 
itself, or if the original is lost or inaccessible, by a statement to 
that effect. The application may be accepted for examination in the 
absence of the original patent or the statement, but one or the other 
must be supplied before the application is allowed. If a reissue 
application is refused, the original patent, if surrendered, will be 
returned to applicant upon request.
    (b) In any reissue application before the Office, the applicant 
must call to the attention of the Office any prior or concurrent 
proceedings in which the patent (for which reissue is requested) is or 
was involved, such as interferences, reissues, reexaminations, or 
litigations and the results of such proceedings (see also 
Sec. 1.173(a)(1)).

    64. Section 1.181 is amended by revising paragraph (f) to read as 
follows:


Sec. 1.181  Petition to the Commissioner.

* * * * *
    (f) The mere filing of a petition will not stay any period for 
reply that may be running against the application, nor act as a stay of 
other proceedings. Any petition under this part not filed within two 
months of the mailing date of the action or notice from which relief is 
requested may be dismissed as untimely, except as otherwise provided. 
This two-month period is not extendable.
* * * * *

    65. Section 1.193 is amended by revising paragraph (b)(1) to read 
as follows:


Sec. 1.193  Examiner's answer and reply brief.

* * * * *
    (b)(1) Appellant may file a reply brief to an examiner's answer or 
a supplemental examiner's answer within two months from the date of 
such examiner's answer or supplemental examiner's answer. See 
Sec. 1.136(b) for extensions of time for filing a reply brief in a 
patent application and Sec. 1.550(c) for extensions of time for filing 
a reply brief in a reexamination proceeding. The primary examiner must 
either acknowledge receipt and entry of the reply brief or withdraw the 
final rejection and reopen prosecution to respond to the reply brief. A 
supplemental examiner's answer is not permitted, unless the application 
has been remanded by the Board of Patent Appeals and Interferences for 
such purpose.
* * * * *

    66. Section 1.303 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.303  Civil action under 35 U.S.C. 145, 146, 306.

    (a) Any applicant or any owner of a patent involved in a 
reexamination proceeding dissatisfied with the decision of the Board of 
Patent Appeals and Interferences, and any party to an interference 
dissatisfied with the decision of the Board of Patent Appeals and 
Interferences may, instead of appealing to the U.S. Court of Appeals 
for the Federal Circuit (Sec. 1.301), have remedy by civil action under 
35 U.S.C. 145 or 146, as appropriate. Such civil action must be 
commenced within the time specified in Sec. 1.304.
* * * * *

    67. Section 1.311 is amended by revising paragraph (b) to read as 
follows:


Sec. 1.311  Notice of allowance.

* * * * *
    (b) An authorization to charge the issue fee (Sec. 1.18) to a 
deposit account may be filed in an individual application only after 
the mailing of the notice of allowance. The submission of either of the 
following after the mailing of a notice of allowance will operate as a 
request to charge the correct issue fee to any deposit account 
identified in a previously filed authorization to charge fees:
    (1) An incorrect issue fee; or

[[Page 54677]]

    (2) A completed Office-provided issue fee transmittal form (where 
no issue fee has been submitted).
* * * * *

    68. Section 1.314 is revised to read as follows:


Sec. 1.314  Issuance of patent.

    If applicant timely pays the issue fee, the Office will issue the 
patent in regular course unless the application is withdrawn from issue 
(Sec. 1.313) or the Office defers issuance of the patent. To request 
that the Office defer issuance of a patent, applicant must file a 
petition under this section including the fee set forth in Sec. 1.17(h) 
and a showing of good and sufficient reasons why it is necessary to 
defer issuance of the patent.

    69. Section 1.322 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.322  Certificate of correction of Office mistake.

    (a)(1) The Commissioner may issue a certificate of correction 
pursuant to 35 U.S.C. 254 to correct a mistake in a patent, incurred 
through the fault of the Office, which mistake is clearly disclosed in 
the records of the Office:
    (i) At the request of the patentee or the patentee's assignee;
    (ii) Acting sua sponte for mistakes that the Office discovers; or
    (iii) Acting on information about a mistake supplied by a third 
party.
    (2)(i) There is no obligation on the Office to act on or respond to 
a submission of information or request to issue a certificate of 
correction by a third party under paragraph (a)(1)(iii) of this 
section.
    (ii) Papers submitted by a third party under this section will not 
be made of record in the file that they relate to nor be retained by 
the Office.
    (3) If the request relates to a patent involved in an interference, 
the request must comply with the requirements of this section and be 
accompanied by a motion under Sec. 1.635.
    (4) The Office will not issue a certificate of correction under 
this section without first notifying the patentee (including any 
assignee of record) at the correspondence address of record as 
specified in Sec. 1.33(a) and affording the patentee or an assignee an 
opportunity to be heard.
* * * * *

    70. Section 1.323 is revised to read as follows:


Sec. 1.323  Certificate of correction of applicant's mistake.

    The Office may issue a certificate of correction under the 
conditions specified in 35 U.S.C. 255 at the request of the patentee or 
the patentee's assignee, upon payment of the fee set forth in 
Sec. 1.20(a). If the request relates to a patent involved in an 
interference, the request must comply with the requirements of this 
section and be accompanied by a motion under Sec. 1.635.

    71. Section 1.324 is amended by revising its heading and paragraph 
(b)(1) and adding paragraph (c) to read as follows:


Sec. 1.324  Correction of inventorship in patent, pursuant to 35 U.S.C. 
256.

* * * * *
    (b) * * *
    (1) Where one or more persons are being added, a statement from 
each person who is being added as an inventor that the inventorship 
error occurred without any deceptive intention on his or her part;
* * * * *
    (c) For correction of inventorship in an application see Secs. 1.48 
and 1.497, and in an interference see Sec. 1.634.

    72. Section 1.366 is amended by revising paragraph (c) to read as 
follows:


Sec. 1.366  Submission of maintenance fees.

* * * * *
    (c) In submitting maintenance fees and any necessary surcharges, 
identification of the patents for which maintenance fees are being paid 
must include the patent number, and the application number of the 
United States application for the patent on which the maintenance fee 
is being paid. If the payment includes identification of only the 
patent number (i.e., does not identify the application number of the 
United States application for the patent on which the maintenance fee 
is being paid), the Office may apply the payment to the patent 
identified by patent number in the payment or may return the payment.
* * * * *

    73. Section 1.446 is amended by revising paragraph (a) and adding 
paragraph (b) to read as follows:


Sec. 1.446  Refund of international application filing and processing 
fees.

    (a) Money paid for international application fees, where paid by 
actual mistake or in excess, such as a payment not required by law or 
treaty and its regulations, may be refunded. A mere change of purpose 
after the payment of a fee will not entitle a party to a refund of such 
fee. The Office will not refund amounts of twenty-five dollars or less 
unless a refund is specifically requested and will not notify the payor 
of such amounts. If the payor or party requesting a refund does not 
provide the banking information necessary for making refunds by 
electronic funds transfer, the Office may use the banking information 
provided on the payment instrument to make any refund by electronic 
funds transfer.
    (b) Any request for refund under paragraph (a) of this section must 
be filed within two years from the date the fee was paid. If the Office 
charges a deposit account by an amount other than an amount 
specifically indicated in an authorization under Sec. 1.25(b), any 
request for refund based upon such charge must be filed within two 
years from the date of the deposit account statement indicating such 
charge and include a copy of that deposit account statement. The time 
periods set forth in this paragraph are not extendable.
* * * * *

    74. Section 1.497 is amended by revising paragraph (b)(2) and 
adding paragraphs (d) and (e) to read as follows:


Sec. 1.497  Oath or declaration under 35 U.S.C. 371(c)(4).

* * * * *
    (b) * * *
    (2) If the person making the oath or declaration or any 
supplemental oath or declaration is not the inventor (Secs. 1.42, 1.43, 
or Sec. 1.47), the oath or declaration shall state the relationship of 
the person to the inventor, and, upon information and belief, the facts 
which the inventor would have been required to state. If the person 
signing the oath or declaration is the legal representative of a 
deceased inventor, the oath or declaration shall also state that the 
person is a legal representative and the citizenship, residence and 
mailing address of the legal representative.
* * * * *
    (d) If the oath or declaration filed pursuant to 35 U.S.C. 
371(c)(4) and this section names an inventive entity different from the 
inventive entity set forth in the international application, the oath 
or declaration must be accompanied by:
    (1) A statement from each person being added as an inventor and 
from each person being deleted as an inventor that any error in 
inventorship in the international application occurred without 
deceptive intention on his or her part;
    (2) The processing fee set forth in Sec. 1.17(i); and
    (3) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b) of 
this chapter).
    (e) The Office may require such other information as may be deemed 
appropriate under the particular

[[Page 54678]]

circumstances surrounding the correction of inventorship.
* * * * *

    75. Section 1.510 is amended by revising paragraphs (b)(4) and (e) 
to read as follows:


Sec. 1.510  Request for reexamination.

* * * * *
    (b) * * *
    (4) A copy of the entire patent including the front face, drawings, 
and specification/claims (in double column format) for which 
reexamination is requested, and a copy of any disclaimer, certificate 
of correction, or reexamination certificate issued in the patent. All 
copies must have each page plainly written on only one side of a sheet 
of paper.
* * * * *
    (e) A request filed by the patent owner may include a proposed 
amendment in accordance with Sec. 1.530.
* * * * *

    76. Section 1.530 is amended by revising its heading and paragraph 
(d), and adding paragraphs (e) through (l) to read as follows:


Sec. 1.530  Statement; amendment by patent owner; inventorship change.

* * * * *
    (d) Making amendments in a reexamination proceeding. A proposed 
amendment in a reexamination proceeding is made by filing a paper 
directing that proposed specified changes be made to the patent 
specification, including the claims, or to the drawings. An amendment 
paper directing that proposed specified changes be made in a 
reexamination proceeding may be submitted as an accompaniment to a 
request filed by the patent owner in accordance with Sec. 1.510(e), as 
part of a patent owner statement in accordance with paragraph (b) of 
this section, or, where permitted, during the prosecution of the 
reexamination proceeding pursuant to Sec. 1.550(a).
    (1) Specification other than the claims. Changes to the 
specification, other than to the claims, must be made by submission of 
the entire text of an added or rewritten paragraph including markings 
pursuant to paragraph (f) of this section, except that an entire 
paragraph may be deleted by a statement deleting the paragraph, without 
presentation of the text of the paragraph. The precise point in the 
specification must be identified where any added or rewritten paragraph 
is located. This paragraph applies whether the amendment is submitted 
on paper or compact disc (see Secs. 1.96 and 1.825).
    (2) Claims. An amendment paper must include the entire text of each 
patent claim which is being proposed to be changed by such amendment 
paper and of each new claim being proposed to be added by such 
amendment paper. For any claim changed by the amendment paper, a 
parenthetical expression ``amended,'' ``twice amended,'' etc., should 
follow the claim number. Each patent claim proposed to be changed and 
each proposed added claim must include markings pursuant to paragraph 
(f) of this section, except that a patent claim or proposed added claim 
should be canceled by a statement canceling the claim, without 
presentation of the text of the claim.
    (3) Drawings. Any change to the patent drawings must be submitted 
as a sketch on a separate paper showing the proposed changes in red for 
approval by the examiner. Upon approval of the changes by the examiner, 
only new sheets of drawings including the changes and in compliance 
with Sec. 1.84 must be filed. Amended figures must be identified as 
``Amended,'' and any added figure must be identified as ``New.'' In the 
event a figure is canceled, the figure must be surrounded by brackets 
and identified as ``Canceled.''
    (4) The formal requirements for papers making up the reexamination 
proceeding other than those set forth in this section are set out in 
Sec. 1.52.
    (e) Status of claims and support for claim changes. Whenever there 
is an amendment to the claims pursuant to paragraph (d) of this 
section, there must also be supplied, on pages separate from the pages 
containing the changes, the status (i.e., pending or canceled), as of 
the date of the amendment, of all patent claims and of all added 
claims, and an explanation of the support in the disclosure of the 
patent for the changes to the claims made by the amendment paper.
    (f) Changes shown by markings. Any changes relative to the patent 
being reexamined which are made to the specification, including the 
claims, must include the following markings:
    (1) The matter to be omitted by the reexamination proceeding must 
be enclosed in brackets; and
    (2) The matter to be added by the reexamination proceeding must be 
underlined.
    (g) Numbering of patent claims preserved. Patent claims may not be 
renumbered. The numbering of any claims added in the reexamination 
proceeding must follow the number of the highest numbered patent claim.
    (h) Amendment of disclosure may be required. The disclosure must be 
amended, when required by the Office, to correct inaccuracies of 
description and definition, and to secure substantial correspondence 
between the claims, the remainder of the specification, and the 
drawings.
    (i) Amendments made relative to patent. All amendments must be made 
relative to the patent specification, including the claims, and 
drawings, which are in effect as of the date of filing the request for 
reexamination.
    (j) No enlargement of claim scope. No amendment may enlarge the 
scope of the claims of the patent or introduce new matter. No amendment 
may be proposed for entry in an expired patent. Moreover, no amendment, 
other than the cancellation of claims, will be incorporated into the 
patent by a certificate issued after the expiration of the patent.
    (k) Amendments not effective until certificate. Although the Office 
actions will treat proposed amendments as though they have been 
entered, the proposed amendments will not be effective until the 
reexamination certificate is issued.
    (l) Correction of inventorship in a reexamination proceeding. (1) 
When it appears in a patent being reexamined that the correct inventor 
or inventors were not named through error without deceptive intention 
on the part of the actual inventor or inventors, the Commissioner may, 
on petition of all the parties, including the assignees, and 
satisfactory proof of the facts and payment of the fee set forth in 
Sec. 1.20(b), or on order of a court before which such matter is called 
in question, include in the reexamination certificate to be issued 
under Sec. 1.570 an amendment naming only the actual inventor or 
inventors. The petition must be submitted as part of the reexamination 
proceeding, and must satisfy the requirements of Sec. 1.324.
    (2) Notwithstanding paragraph (l)(1) of this section, if a petition 
to correct inventorship satisfying the requirements of Sec. 1.324 is 
filed in a reexamination proceeding, and the reexamination proceeding 
is terminated other than by a reexamination certificate under 
Sec. 1.570, a certificate of correction indicating the change of 
inventorship stated in the petition will be issued upon request by the 
patentee.

    77. Section 1.550 is amended by revising paragraphs (a) and (b) to 
read as follows:


Sec. 1.550  Conduct of reexamination proceedings.

    (a) All reexamination proceedings, including any appeals to the 
Board of Patent Appeals and Interferences, will be conducted with 
special dispatch

[[Page 54679]]

within the Office. After issuance of the reexamination order and 
expiration of the time for submitting any responses thereto, the 
examination will be conducted in accordance with Secs. 1.104, 1.105, 
1.110 through 1.113, 1.115, and 1.116 and will result in the issuance 
of a reexamination certificate under Sec. 1.570.
    (b) The patent owner will be given at least thirty days to respond 
to any Office action. In response to any rejection, such response may 
include further statements and/or proposed amendments or new claims to 
place the patent in a condition where all claims, if amended as 
proposed, would be patentable.
* * * * *

    78. Section 1.565 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.565  Concurrent office proceedings.

    (a) In any reexamination proceeding before the Office, the patent 
owner must call the attention of the Office to any prior or concurrent 
proceedings in which the patent is or was involved such as 
interferences, reissue, reexaminations or litigation and the results of 
such proceedings.
* * * * *

    79. Section 1.666 is amended by revising paragraph (b) to read as 
follows:


Sec. 1.666  Filing of interference settlement agreements.

* * * * *
    (b) If any party filing the agreement or understanding under 
paragraph (a) of this section so requests, the copy will be kept 
separate from the file of the interference, and made available only to 
Government agencies on written request, or to any person upon petition 
accompanied by the fee set forth in Sec. 1.17(h) and on a showing of 
good cause.
* * * * *

    80. Section 1.720 is amended by revising paragraphs (b) and (g) to 
read as follows:


Sec. 1.720  Conditions for extension of patent term.

* * * * *
    (b) The term of the patent has never been previously extended, 
except for extensions issued pursuant to Secs. 1.701, 1.760, or 
Sec. 1.790;
* * * * *
    (g) The term of the patent, including any interim extension issued 
pursuant to Sec. 1.790, has not expired before the submission of an 
application in compliance with Sec. 1.741; and
* * * * *

    81. Section 1.730 is revised to read as follows:


Sec. 1.730  Applicant for extension of patent term; signature 
requirements.

    (a) Any application for extension of a patent term must be 
submitted by the owner of record of the patent or its agent and must 
comply with the requirements of Sec. 1.740.
    (b) If the application is submitted by the patent owner, the 
application must be signed either by:
    (1) The patent owner in compliance with Sec. 3.73(b) of this 
chapter; or
    (2) A registered practitioner on behalf of the patent owner.
    (c) If the application is submitted on behalf of the patent owner 
by an agent of the patent owner (e.g., a licensee of the patent owner), 
the application must be signed by a registered practitioner on behalf 
of the agent. The Office may require proof that the agent is authorized 
to act on behalf of the patent owner.
    (d) If the application is signed by a registered practitioner, the 
Office may require proof that the practitioner is authorized to act on 
behalf of the patent owner or agent of the patent owner.

    82. Section 1.740 is amended by removing paragraphs (a)(16) and 
(17) and by revising its heading, the introductory text of paragraph 
(a), and paragraphs (a)(9), (a)(10), (a)(14), (a)(15), (b) and (c) to 
read as follows:


Sec. 1.740  Formal requirements for application for extension of patent 
term; correction of informalities.

    (a) An application for extension of patent term must be made in 
writing to the Commissioner. A formal application for the extension of 
patent term must include:
* * * * *
    (9) A statement that the patent claims the approved product, or a 
method of using or manufacturing the approved product, and a showing 
which lists each applicable patent claim and demonstrates the manner in 
which at least one such patent claim reads on:
    (i) The approved product, if the listed claims include any claim to 
the approved product;
    (ii) The method of using the approved product, if the listed claims 
include any claim to the method of using the approved product; and
    (iii) The method of manufacturing the approved product, if the 
listed claims include any claim to the method of manufacturing the 
approved product;
    (10) A statement beginning on a new page of the relevant dates and 
information pursuant to 35 U.S.C. 156(g) in order to enable the 
Secretary of Health and Human Services or the Secretary of Agriculture, 
as appropriate, to determine the applicable regulatory review period as 
follows:
    (i) For a patent claiming a human drug, antibiotic, or human 
biological product:
    (A) The effective date of the investigational new drug (IND) 
application and the IND number;
    (B) The date on which a new drug application (NDA) or a Product 
License Application (PLA) was initially submitted and the NDA or PLA 
number; and
    (C) The date on which the NDA was approved or the Product License 
issued;
    (ii) For a patent claiming a new animal drug:
    (A) The date a major health or environmental effects test on the 
drug was initiated, and any available substantiation of that date, or 
the date of an exemption under subsection (j) of Section 512 of the 
Federal Food, Drug, and Cosmetic Act became effective for such animal 
drug;
    (B) The date on which a new animal drug application (NADA) was 
initially submitted and the NADA number; and
    (C) The date on which the NADA was approved;
    (iii) For a patent claiming a veterinary biological product:
    (A) The date the authority to prepare an experimental biological 
product under the Virus-Serum-Toxin Act became effective;
    (B) The date an application for a license was submitted under the 
Virus-Serum-Toxin Act; and
    (C) The date the license issued;
    (iv) For a patent claiming a food or color additive:
    (A) The date a major health or environmental effects test on the 
additive was initiated and any available substantiation of that date;
    (B) The date on which a petition for product approval under the 
Federal Food, Drug and Cosmetic Act was initially submitted and the 
petition number; and
    (C) The date on which the FDA published a Federal Register notice 
listing the additive for use;
    (v) For a patent claiming a medical device:
    (A) The effective date of the investigational device exemption 
(IDE) and the IDE number, if applicable, or the date on which the 
applicant began the first clinical investigation involving the device, 
if no IDE was submitted, and any available substantiation of that date;
    (B) The date on which the application for product approval or 
notice of completion of a product development protocol under Section 
515 of the Federal Food, Drug and Cosmetic Act was initially submitted 
and the number of the application; and

[[Page 54680]]

    (C) The date on which the application was approved or the protocol 
declared to be completed;
* * * * *
    (14) The prescribed fee for receiving and acting upon the 
application for extension (see Sec. 1.20(j)); and
    (15) The name, address, and telephone number of the person to whom 
inquiries and correspondence relating to the application for patent 
term extension are to be directed.
    (b) The application under this section must be accompanied by two 
additional copies of such application (for a total of three copies).
    (c) If an application for extension of patent term is informal 
under this section, the Office will so notify the applicant. The 
applicant has two months from the mail date of the notice, or such time 
as is set in the notice, within which to correct the informality. 
Unless the notice indicates otherwise, this time period may be extended 
under the provisions of Sec. 1.136.

    83. Section 1.741 is amended by revising its heading, the 
introductory text of paragraph (a) and paragraphs (a)(5) and (b) to 
read as follows:


Sec. 1.741  Complete application given a filing date; petition 
procedure.

    (a) The filing date of an application for extension of a patent 
term is the date on which a complete application is received in the 
Office or filed pursuant to the procedures set forth in Sec. 1.8 or 
Sec. 1.10. A complete application must include:
* * * * *
    (5) Sufficient information to enable the Commissioner to determine 
under subsections (a) and (b) of 35 U.S.C. 156 the eligibility of a 
patent for extension, and the rights that will be derived from the 
extension, and information to enable the Commissioner and the Secretary 
of Health and Human Services or the Secretary of Agriculture to 
determine the length of the regulatory review period; and
* * * * *
    (b) If an application for extension of patent term is incomplete 
under this section, the Office will so notify the applicant. If 
applicant requests review of a notice that an application is 
incomplete, or review of the filing date accorded an application under 
this section, applicant must file a petition pursuant to this paragraph 
accompanied by the fee set forth in Sec. 1.17(h) within two months of 
the mail date of the notice that the application is incomplete, or the 
notice according the filing date complained of. Unless the notice 
indicates otherwise, this time period may be extended under the 
provisions of Sec. 1.136.

    84. Section 1.760 is revised to read as follows:


Sec. 1.760  Interim extension of patent term under 35 U.S.C. 156(e)(2).

    An applicant who has filed a formal application for extension in 
compliance with Sec. 1.740 may request one or more interim extensions 
for periods of up to one year each pending a final determination on the 
application pursuant to Sec. 1.750. Any such request should be filed at 
least three months prior to the expiration date of the patent. The 
Commissioner may issue interim extensions, without a request by the 
applicant, for periods of up to one year each until a final 
determination is made. The patent owner or agent will be notified when 
an interim extension is granted and notice of the extension will be 
published in the Official Gazette of the United States Patent and 
Trademark Office. The notice will be recorded in the official file of 
the patent and will be considered as part of the original patent. In no 
event will the interim extensions granted under this section be longer 
than the maximum period for extension to which the applicant would be 
eligible.

    85. Section 1.780 is revised to read as follows:


Sec. 1.780  Certificate or order of extension of patent term.

    If a determination is made pursuant to Sec. 1.750 that a patent is 
eligible for extension and that the term of the patent is to be 
extended, a certificate of extension, under seal, or an order granting 
interim extension under 35 U.S.C. 156(d)(5), will be issued to the 
applicant for the extension of the patent term. Such certificate or 
order will be recorded in the official file of the patent and will be 
considered as part of the original patent. Notification of the issuance 
of the certificate or order of extension will be published in the 
Official Gazette of the United States Patent and Trademark Office. 
Notification of the issuance of the order granting an interim extension 
under 35 U.S.C. 156(d)(5), including the identity of the product 
currently under regulatory review, will be published in the Official 
Gazette of the United States Patent and Trademark Office and in the 
Federal Register. No certificate of, or order granting, an extension 
will be issued if the term of the patent cannot be extended, even 
though the patent is otherwise determined to be eligible for extension. 
In such situations, the final determination made pursuant to Sec. 1.750 
will indicate that no certificate or order will issue.

    86. Section 1.821 is amended by revising paragraphs (c), (e) and 
(f) to read as follows:


Sec. 1.821  Nucleotide and/or amino acid sequence disclosures in patent 
applications.

* * * * *
    (c) Patent applications which contain disclosures of nucleotide 
and/or amino acid sequences must contain, as a separate part of the 
disclosure, a paper or compact disc copy (see Sec. 1.52(e)) disclosing 
the nucleotide and/or amino acid sequences and associated information 
using the symbols and format in accordance with the requirements of 
Secs. 1.822 and 1.823. This paper or compact disc copy is referred to 
elsewhere in this subpart as the ``Sequence Listing.'' Each sequence 
disclosed must appear separately in the ``Sequence Listing.'' Each 
sequence set forth in the ``Sequence Listing'' must be assigned a 
separate sequence identifier. The sequence identifiers must begin with 
1 and increase sequentially by integers. If no sequence is present for 
a sequence identifier, the code ``000'' must be used in place of the 
sequence. The response for the numeric identifier 160> must include the 
total number of SEQ ID NOs, whether followed by a sequence or by the 
code ``000.''
* * * * *
    (e) A copy of the ``Sequence Listing'' referred to in paragraph (c) 
of this section must also be submitted in computer readable form (CRF) 
in accordance with the requirements of Sec. 1.824. The computer 
readable form must be a copy of the ``Sequence Listing'' and may not be 
retained as a part of the patent application file. If the computer 
readable form of a new application is to be identical with the computer 
readable form of another application of the applicant on file in the 
Office, reference may be made to the other application and computer 
readable form in lieu of filing a duplicate computer readable form in 
the new application if the computer readable form in the other 
application was compliant with all of the requirements of this subpart. 
The new application must be accompanied by a letter making such 
reference to the other application and computer readable form, both of 
which shall be completely identified. In the new application, applicant 
must also request the use of the compliant computer readable ``Sequence 
Listing'' that is already on file for the other application and must 
state that the paper or compact disc copy of the ``Sequence Listing'' 
in the

[[Page 54681]]

new application is identical to the computer readable copy filed for 
the other application.
    (f) In addition to the paper or compact disc copy required by 
paragraph (c) of this section and the computer readable form required 
by paragraph (e) of this section, a statement that the ``Sequence 
Listing'' content of the paper or compact disc copy and the computer 
readable copy are the same must be submitted with the computer readable 
form, e.g., a statement that ``the sequence listing information 
recorded in computer readable form is identical to the written (on 
paper or compact disc) sequence listing.''
* * * * *

    87. Section 1.823 is amended by revising its heading and paragraph 
(a) to read as follows:


Sec. 1.823  Requirements for nucleotide and/or amino acid sequences as 
part of the application.

    (a)(1) If the ``Sequence Listing'' required by Sec. 1.821(c) is 
submitted on paper: The ``Sequence Listing,'' setting forth the 
nucleotide and/or amino acid sequence and associated information in 
accordance with paragraph (b) of this section, must begin on a new page 
and must be titled ``Sequence Listing.'' The pages of the ``Sequence 
Listing'' preferably should be numbered independently of the numbering 
of the remainder of the application. Each page of the ``Sequence 
Listing'' shall contain no more than 66 lines and each line shall 
contain no more than 72 characters. A fixed-width font should be used 
exclusively throughout the ``Sequence Listing.''
    (2) If the ``Sequence Listing'' required by Sec. 1.821(c) is 
submitted on compact disc: The ``Sequence Listing'' must be submitted 
on a compact disc in compliance with Sec. 1.52(e). The compact disc may 
also contain table information if the application contains table 
information that may be submitted on a compact disc 
(Sec. 1.52(e)(1)(iii)). The specification must contain an 
incorporation-by-reference of the Sequence Listing as required by 
Sec. 1.52(e)(5). The presentation of the ``Sequence Listing'' and other 
materials on compact disc under Sec. 1.821(c) does not substitute for 
the Computer Readable Form that must be submitted on disk, compact 
disc, or tape in accordance with Sec. 1.824.
* * * * *

    88. Section 1.824 is revised to read as follows:


Sec. 1.824  Form and format for nucleotide and/or amino acid sequence 
submissions in computer readable form.

    (a) The computer readable form required by Sec. 1.821(e) shall meet 
the following requirements:
    (1) The computer readable form shall contain a single ``Sequence 
Listing'' as either a diskette, series of diskettes, or other 
permissible media outlined in paragraph (c) of this section.
    (2) The ``Sequence Listing'' in paragraph (a)(l) of this section 
shall be submitted in American Standard Code for Information 
Interchange (ASCII) text. No other formats shall be allowed.
    (3) The computer readable form may be created by any means, such as 
word processors, nucleotide/amino acid sequence editors' or other 
custom computer programs; however, it shall conform to all requirements 
detailed in this section.
    (4) File compression is acceptable when using diskette media, so 
long as the compressed file is in a self-extracting format that will 
decompress on one of the systems described in paragraph (b) of this 
section.
    (5) Page numbering must not appear within the computer readable 
form version of the ``Sequence Listing'' file.
    (6) All computer readable forms must have a label permanently 
affixed thereto on which has been hand-printed or typed: the name of 
the applicant, the title of the invention, the date on which the data 
were recorded on the computer readable form, the operating system used, 
a reference number, and an application number and filing date, if 
known. If multiple diskettes are submitted, the diskette labels must 
indicate their order (e.g. ``1 of X'').
    (b) Computer readable form submissions must meet these format 
requirements:
    (1) Computer Compatibility: IBM PC/XT/AT or Apple Macintosh;
    (2) Operating System Compatibility: MS-DOS, MS-Windows, Unix or 
Macintosh;
    (3) Line Terminator: ASCII Carriage Return plus ASCII Line Feed; 
and
    (4) Pagination: Continuous file (no ``hard page break'' codes 
permitted).
    (c) Computer readable form files submitted may be in any of the 
following media:
    (1) Diskette: 3.50 inch, 1.44 Mb storage; 3.50 inch, 720 Kb 
storage; 5.25 inch, 1.2 Mb storage; 5.25 inch, 360 Kb storage.
    (2) Magnetic tape: 0.5 inch, up to 24000 feet; Density: 1600 or 
6250 bits per inch, 9 track; Format: Unix tar command; specify blocking 
factor (not ``block size''); Line Terminator: ASCII Carriage Return 
plus ASCII Line Feed.
    (3) 8mm Data Cartridge: Format: Unix tar command; specify blocking 
factor (not ``block size''); Line Terminator: ASCII Carriage Return 
plus ASCII Line Feed.
    (4) Compact disc: Format: ISO 9660 or High Sierra Format.
    (5) Magneto Optical Disk: Size/Storage Specifications: 5.25 inch, 
640 Mb.
    (d) Computer readable forms that are submitted to the Office will 
not be returned to the applicant.

    89. Section 1.825 is amended by revising paragraphs (a) and (b) to 
read as follows:


Sec. 1.825  Amendments to or replacement of sequence listing and 
computer readable copy thereof.

    (a) Any amendment to a paper copy of the ``Sequence Listing'' 
(Sec. 1.821(c)) must be made by the submission of substitute sheets and 
include a statement that the substitute sheets include no new matter. 
Any amendment to a compact disc copy of the ``Sequence Listing'' 
(Sec. 1.821(c)) must be made by the submission of a replacement compact 
disc (2 copies) in compliance with Sec. 1.52(e). Amendments must also 
be accompanied by a statement that indicates support for the amendment 
in the application, as filed, and a statement that the replacement 
compact disc includes no new matter.
    (b) Any amendment to the paper or compact disc copy of the 
``Sequence Listing,'' in accordance with paragraph (a) of this section, 
must be accompanied by a substitute copy of the computer readable form 
(Sec. 1.821(e)) including all previously submitted data with the 
amendment incorporated therein, accompanied by a statement that the 
copy in computer readable form is the same as the substitute copy of 
the ``Sequence Listing.''
* * * * *

PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

    90. The authority citation for 37 CFR Part 3 is revised to read as 
follows:

    Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).

    91. Section 3.27 is revised to read as follows:


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

    Documents and cover sheets to be recorded should be addressed to 
the Commissioner, United States Patent and Trademark Office, Box 
Assignment, Washington, D.C. 20231, unless they are filed together with 
new applications or with a request under Sec. 3.81.

[[Page 54682]]


    92. Section 3.71 is revised to read as follows:


Sec. 3.71  Prosecution by assignee.

    (a) Patents--conducting of prosecution. One or more assignees as 
defined in paragraph (b) of this section may, after becoming of record 
pursuant to paragraph (c) of this section, conduct prosecution of a 
national patent application or a reexamination proceeding to the 
exclusion of either the inventive entity, or the assignee(s) previously 
entitled to conduct prosecution.
    (b) Patents--Assignee(s) who can prosecute. The assignee(s) who may 
conduct either the prosecution of a national application for patent or 
a reexamination proceeding are:
    (1) A single assignee. An assignee of the entire right, title and 
interest in the application or patent being reexamined who is of 
record, or
    (2) Partial assignee(s) together or with inventor(s). All partial 
assignees, or all partial assignees and inventors who have not assigned 
their right, title and interest in the application or patent being 
reexamined, who together own the entire right, title and interest in 
the application or patent being reexamined. A partial assignee is any 
assignee of record having less than the entire right, title and 
interest in the application or patent being reexamined.
    (c) Patents--Becoming of record. An assignee becomes of record 
either in a national patent application or a reexamination proceeding 
by filing a statement in compliance with Sec. 3.73(b) that is signed by 
a party who is authorized to act on behalf of the assignee.
    (d) Trademarks. The assignee of a trademark application or 
registration may prosecute a trademark application, submit documents to 
maintain a trademark registration, or file papers against a third party 
in reliance on the assignee's trademark application or registration, to 
the exclusion of the original applicant or previous assignee. The 
assignee must establish ownership in compliance with Sec. 3.73(b).

    93. Section 3.73 is revised to read as follows:


Sec. 3.73  Establishing right of assignee to take action.

    (a) The inventor is presumed to be the owner of a patent 
application, and any patent that may issue therefrom, unless there is 
an assignment. The original applicant is presumed to be the owner of a 
trademark application or registration, unless there is an assignment.
    (b)(1) In order to request or take action in a patent or trademark 
matter, the assignee must establish its ownership of the patent or 
trademark property of paragraph (a) of this section to the satisfaction 
of the Commissioner. The establishment of ownership by the assignee may 
be combined with the paper that requests or takes the action. Ownership 
is established by submitting to the Office a signed statement 
identifying the assignee, accompanied by either:
    (i) Documentary evidence of a chain of title from the original 
owner to the assignee (e.g., copy of an executed assignment). The 
documents submitted to establish ownership may be required to be 
recorded pursuant to Sec. 3.11 in the assignment records of the Office 
as a condition to permitting the assignee to take action in a matter 
pending before the Office; or
    (ii) A statement specifying where documentary evidence of a chain 
of title from the original owner to the assignee is recorded in the 
assignment records of the Office (e.g., reel and frame number).
    (2) The submission establishing ownership must show that the person 
signing the submission is a person authorized to act on behalf of the 
assignee by:
    (i) Including a statement that the person signing the submission is 
authorized to act on behalf of the assignee; or
    (ii) Being signed by a person having apparent authority to sign on 
behalf of the assignee, e.g., an officer of the assignee.
    (c) For patent matters only:
    (1) Establishment of ownership by the assignee must be submitted 
prior to, or at the same time as, the paper requesting or taking action 
is submitted.
    (2) If the submission under this section is by an assignee of less 
than the entire right, title and interest, such assignee must indicate 
the extent (by percentage) of its ownership interest, or the Office may 
refuse to accept the submission as an establishment of ownership.

    94. Section 3.81 is revised to read as follows:


Sec. 3.81  Issue of patent to assignee.

    (a) With payment of the issue fee: An application may issue in the 
name(s) of the assignee(s) consistent with the application's assignment 
where a request for such issuance is submitted with payment of the 
issue fee, provided the assignment has been previously recorded in the 
Office. If the assignment has not been previously recorded, the request 
should be accompanied by the assignment and either a direction to 
record the assignment in the Office pursuant to Sec. 3.28, or a 
statement under Sec. 3.73(b).
    (b) After payment of the issue fee: An application may issue in the 
name(s) of the assignee(s) consistent with the application's assignment 
where a request for such issuance along with the processing fee set 
forth in Sec. 1.17(i) of this chapter is submitted after the date of 
payment of the issue fee, but prior to issuance of the patent, provided 
the assignment has been previously recorded in the Office. If the 
assignment has not been previously recorded, the request should be 
accompanied by the assignment and either a direction to record the 
assignment in the Office pursuant to Sec. 3.28, or a statement under 
Sec. 3.73(b).
    (c) Partial assignees. (1) If one or more assignee(s) together with 
one or more inventor(s) hold the entire right, title, and interest in 
the application, the patent may issue in the names of the assignee(s) 
and the inventor(s).
    (2) If multiple assignees hold the entire right, title, and 
interest to the exclusion of all the inventors, the patent may issue in 
the names of the multiple assignees.

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

    95. 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 Commissioner (15 CFR 370.10(j), 22 CFR 125.04, and 
10 CFR 810.7).


    96. Section 5.1 is revised to read as follows:


Sec. 5.1  Applications and correspondence involving national security.

    (a) All correspondence in connection with this part, including 
petitions, should be addressed to ``Commissioner for Patents (Attention 
Licensing and Review), Washington, D.C. 20231.''
    (b) Application as used in this part includes provisional 
applications filed under 35 U.S.C. 111(b) (Sec. 1.9(a)(2) of this 
chapter), nonprovisional applications filed under 35 U.S.C. 111(a) or 
entering the national stage from an international application after 
compliance with 35 U.S.C. 371 (Sec. 1.9(a)(3)), or international 
applications filed under the Patent

[[Page 54683]]

Cooperation Treaty prior to entering the national stage of processing 
(Sec. 1.9(b)).
    (c) Patent applications and documents relating thereto that are 
national security classified (see Sec. 1.9(i) of this chapter) and 
contain authorized national security markings (e.g., ``Confidential,'' 
``Secret'' or ``Top Secret'') are accepted by the Office. National 
security classified documents filed in the Office must be either hand-
carried to Licensing and Review or mailed to the Office in compliance 
with paragraph (a) of this section.
    (d) The applicant in a national security classified patent 
application must obtain a secrecy order pursuant to Sec. 5.2(a). If a 
national security classified patent application is filed without a 
notification pursuant to Sec. 5.2(a), the Office will set a time period 
within which either the application must be declassified, or the 
application must be placed under a secrecy order pursuant to 
Sec. 5.2(a), or the applicant must submit evidence of a good faith 
effort to obtain a secrecy order pursuant to Sec. 5.2(a) from the 
relevant department or agency in order to prevent abandonment of the 
application. If evidence of a good faith effort to obtain a secrecy 
order pursuant to Sec. 5.2(a) from the relevant department or agency is 
submitted by the applicant within the time period set by the Office, 
but the application has not been declassified or placed under a secrecy 
order pursuant to Sec. 5.2(a), the Office will again set a time period 
within which either the application must be declassified, or the 
application must be placed under a secrecy order pursuant to 
Sec. 5.2(a), or the applicant must submit evidence of a good faith 
effort to again obtain a secrecy order pursuant to Sec. 5.2(a) from the 
relevant department or agency in order to prevent abandonment of the 
application.
    (e) A national security classified patent application will not be 
allowed pursuant to Sec. 1.311 of this chapter until the application is 
declassified and any secrecy order pursuant to Sec. 5.2(a) has been 
rescinded.
    (f) Applications on inventions made outside the United States and 
on inventions in which a U.S. Government defense agency has a property 
interest will not be made available to defense agencies.

    97. Section 5.2 is amended by adding a new paragraph (c) to read as 
follows:


Sec. 5.2  Secrecy order.

* * * * *
    (c) An application disclosing any significant part of the subject 
matter of an application under a secrecy order pursuant to paragraph 
(a) of this section also falls within the scope of such secrecy order. 
Any such application that is pending before the Office must be promptly 
brought to the attention of Licensing and Review, unless such 
application is itself under a secrecy order pursuant to paragraph (a) 
of this section. Any subsequently filed application containing any 
significant part of the subject matter of an application under a 
secrecy order pursuant to paragraph (a) of this section must either be 
hand-carried to Licensing and Review or mailed to the Office in 
compliance with Sec. 5.1(a).

    98. Section 5.12 is amended by revising paragraph (b) to read as 
follows:


Sec. 5.12  Petition for license.

* * * * *
    (b) A petition for license must include the fee set forth in 
Sec. 1.17(h) of this chapter, the petitioner's address, and full 
instructions for delivery of the requested license when it is to be 
delivered to other than the petitioner. The petition should be 
presented in letter form.
* * * * *

PART 10--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT 
AND TRADEMARK OFFICE

    99. The authority citation for 37 CFR Part 10 is revised to read as 
follows:

    Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 31, 
32, 41.


    100. Section 10.23 is amended by revising paragraph (c)(11) to read 
as follows:


Sec. 10.23  Misconduct.

* * * * *
    (c) * * *
    (11) Except as permitted by Sec. 1.52(c) of this chapter, knowingly 
filing or causing to be filed an application containing any material 
alteration made in the application papers after the signing of the 
accompanying oath or declaration without identifying the alteration at 
the time of filing the application papers.
* * * * *

    Dated: August 9, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 00-22392 Filed 9-7-00; 8:45 am]
BILLING CODE 3510-16-P