[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]
[[Page 54603]]
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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.
[[Page 54605]]
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]
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